Ex Parte Baggs

Board of Patent Appeals and Interferences

Jul 12, 2012

09885900 (B.P.A.I. Jul. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SCOTT BAGGS
____________________

Appeal 2010-005161
Application 09/885,900
Technology Center 2800
____________________

Before ALLEN R. MacDONALD, BRYAN F. MOORE, and MICHAEL J.
STRAUSS, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005161
Application 09/885,900

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-13, 15-34, 36, 40-43, 45-72, 74, and 75. Claims 14, 35, 37-39, 44,
73, 76, and 77, are not currently rejected by the Examiner. We have
jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim(s)
Exemplary claims 1, 3, 5, 9, and 15 under appeal read as follows:
1. A space-saving scanner assembly, comprising:
a housing having a substantially vertical source-contact surface
with a member forming a channel that protrudes from the housing,
said member having a first side that is substantially parallel to, and
opposed from, said source-contact surface, said member having a
second side substantially orthogonal to the first side, wherein the
member extends to an exterior surface of said housing; and
a flap coupled to the source-contact surface, the flap having a
source-backing surface substantially parallel to the source-contact
surface of the housing, wherein the source-contact surface, the source-
backing surface, and the first and second sides of the member form an
aperture for receiving an edge of a source to be scanned.
3. The assembly of claim 1, wherein a front panel of the
housing comprises an inclined surface adjacent to the aperture.
5. The assembly of claim 1, wherein the flap comprises a slot.
9. The assembly of claim 3, wherein the member has a first end
proximal to the front panel of the housing and a distal end that extends
at least to an edge of the platen.
15. The assembly of claim 9, wherein the member is coated
with a layer of material having a relatively low coefficient of friction.
Appeal 2010-005161
Application 09/885,900

3
Rejections on Appeal
The Examiner rejected claims 1, 2, 8, 16, 17, 26, 32, 40-43, 55, 56,
59, 64, 70, and 75 under 35 U.S.C. § 102(e) as being anticipated by Onoda
(US 6,433,941 B1). 1
The Examiner rejected claims 3, 9, 19, 27, 45, 58, and 65 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Onoda
and Nagano (US 6,331,886 B2). 2
The Examiner rejected claims 4, 28, 46, and 66 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Onoda and Minowa
(JP 2000-209408). 3
The Examiner rejected claims 7, 13, 15, 31, 34, 36, 52-54, 69, 72, and
74 under 35 U.S.C. § 103(a) as being unpatentable over Onoda. 4
The Examiner rejected claims 60-63 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Onoda, Minowa (JP), and
Minowa (US 6,408,161 B1). 5

1 Separate patentability is not argued for claims 2, 8, 16, 17, 26, 32, 40-43,
55, 56, 59, 64, 70, and 75. Therefore, we treat claim 1 as representative for
purposes of this rejection.
2 Separate patentability is not argued for claims 9, 19, 27, 45, 58, and 65.
Therefore, we treat claim 3 as representative for purposes of this rejection.
3 Separate patentability is not argued for claims 4, 28, 46, and 66. Therefore,
they stand or fall with the claim(s) from which they depend.
4 Separate patentability is not argued for claims 7, 13, 31, 34, 36, 52-54, 69,
72, and 74. Therefore, they stand or fall with the claim(s) from which they
depend.
5 Separate patentability is not argued for claims 60-63. Therefore, they stand
or fall with the claim(s) from which they depend.
Appeal 2010-005161
Application 09/885,900

4
The Examiner rejected claims 5, 6, 10-12, 18, 20-25, 29, 30, 33,
47-51, 57, 67, 68, and 71 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Onoda and Minowa (US). 6
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
because:
In forming the rejection of claim 1 (Office Action, page 3, first
paragraph), the Examiner has mixed and matched components
from FIGs. 2B and 3 (an embodiment of the invention of
Onoda) with the different invention of FIG. 6, which is
designated as "prior art" to the invention of Onoda. With regard
to the prior art embodiment of FIG. 6, this embodiment is
substantially unrelated to the embodiments of the presently
claimed invention, as the embodiment of FIG. 6 (of Onoda) is
directed to a horizontally-disposed scanner, as opposed to a
vertically-disposed scanner of embodiments of the present
invention (the horizontal orientation of the scanner of FIG. 6 is
readily verified by the underlying support surface in Onoda,
which is designated by cross-hatching). As the components
within Onoda that are being combined are from two
independent "inventions" (one prior art to the other), then "the
invention" is not described in Onoda, and the corresponding
rejection under 35 U.S.C. § 102 is misplaced and should be
overturned.
(App. Br. 11) (Emphasis omitted).

6 Only claim 5 is specifically argued. Separate patentability is not argued for
claims 6, 10-12, 18, 20-25, 29, 30, 33, 47-51, 57, 67, 68, and 71. Therefore,
we treat claim 5 as representative of claims 12, 18, 20-25, 29, 30, 47, 48, 57,
67, and 68, for purposes of this rejection. Claims 6, 10, 11, 33, 49-51, and
71, do not share the argued limitations of representative claim 5, and thus are
not argued therewith. Therefore, they stand or fall with the claim(s) from
which they depend.
Appeal 2010-005161
Application 09/885,900

5
2. Appellant also contends that the Examiner erred in rejecting
claims 1 because:
The Examiner cites element 21 of Onoda as constituting the
claimed "member" and element 21a as constituting the second
side of the member. However, as is clear from zoomed portion
of the illustration in FIG. 6, the edge 21a is NOT substantially
orthogonal to any other edge of that element.
(App. Br. 12).
3. Appellant contends that the Examiner erred in rejecting claim 3
because Nagano does not teach an inclined surface adjacent to the aperture.
(App. Br. 14).
4. Appellant contends that the Examiner erred in rejecting claim
15 because:
The Examiner [has] alleged that the combination would have
been obvious because it is allegedly "well know [sic] in the art
to use materials with relatively low coefficient of friction to
facilitate the insertion and removal of objects into slots."
Applicant respectfully submits that this rationale embodies
improper hindsight reasoning or is otherwise contra to the well-
established law (relevant to the motivation to combine under 35
U.S.C. § 103(a), which was set forth above.
(App. Br. 19).
5. Appellant contends that the Examiner erred in rejecting claim 5
because Minowa (US) does not teach the flap comprising a slot. (App. Br.
19-20).

Appeal 2010-005161
Application 09/885,900

6
Issues on Appeal
Did the Examiner err in rejecting claims 1-13, 15-34, 36, 40-43,
45-72, 74, and 75 as being anticipated or obvious because the cited
references fail to teach or suggest the argued limitations?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
As to above contention 1, the Examiner correctly points out that
Onoda describes his invention in the context of the image scanner as
described with respect to the prior art. (Ans. 17). An artisan reading the
Onoda reference would understand the features of Onoda’s device which are
not shown in figures 1A, 1B, 2A, 2B, to be those of the prior art. We find
Appellant’s argument to be without merit. We concur with the conclusion
reached by the Examiner.
As to above contention 2, the Examiner did not rely on Fig. 6 of
Onoda to teach limitation 21a. Rather, the Examiner relied on Fig. 2B
which teaches a different item 21a. (Ans. 3 and 17-18).
As to above contention 3, we agree with the Examiner’s reasoning at
18-19 of the Answer. Separately, we note that the use of an inclined surface
adjacent to an aperture is well-known to aid paper insertion into the aperture.
See for example, Hongoh (US 5,115,374) at item 3 in Fig. 3; Coy (US
5,072,923) at item 22 in Fig. 2; and Aharanson (US 5,477,238) at item 14 in
Fig. 2.
As to above contention 4, Appellant does not challenge the
Examiner’s finding that it is “well known in the art to use materials with
Appeal 2010-005161
Application 09/885,900

7
relatively low coefficient of friction to facilitate the insertion and removal of
objects into slots.” Rather, Appellant argues that improper hindsight is
required to apply this well-known use of materials to the image reader in
Onoda. We disagree. We conclude that the Examiner did not resort to
improper hindsight.
We agree with Appellant’s above contention 5.

CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 5, 12, 18, 20-25, 29, 30, 47, 48, 57, 67, and 68 as being unpatentable
under 35 U.S.C. § 103(a).
(2) The Examiner did not err in rejecting claims 1-4, 6-11, 13, 15-17,
19, 26-28, 31-34, 36, 40-43, 45, 46, 49-56, 58-66, 69-72, 74, and 75.
(3) On this record, claims 5, 12, 18, 20-25, 29, 30, 47, 48, 57, 67, and
68 have not been shown to be unpatentable.
(4) Claims 1-4, 6-11, 13, 15-17, 19, 26-28, 31-34, 36, 40-43, 45, 46,
49-56, 58-66, 69-72, 74, and 75 are not patentable.

DECISION
The Examiner’s rejection of claims 5, 12, 18, 20-25, 29, 30, 47, 48,
57, 67, and 68 is reversed.
The Examiner’s rejections of claims 1-4, 6-11, 13, 15-17, 19, 26-28,
31-34, 36, 40-43, 45, 46, 49-56, 58-66, 69-72, 74, and 75 are affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
Appeal 2010-005161
Application 09/885,900

8

AFFIRMED-IN-PART

tj