Ex Parte BaggsDownload PDFBoard of Patent Appeals and InterferencesJul 12, 201209885900 (B.P.A.I. Jul. 12, 2012) Copy Citation 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 Copy with citationCopy as parenthetical citation