Ex Parte Clark et alDownload PDFPatent Trial and Appeal BoardSep 19, 201813800555 (P.T.A.B. Sep. 19, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/800,555 03/13/2013 Robert A. Clark 76527 7590 09/21/2018 ALIX, YALE & RISTAS, LLP 750 MAIN STREET SUITE 1400 HARTFORD, CT 06103-2721 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. 20121378-US-NP XEROX183US CONFIRMATION NO. 2692 EXAMINER PALMER, LUCAS EA ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 09/21/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ip@pctlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT A. CLARK, WILLIAM J. NOWAK, and WILLIAM J. HANNAWAY Appeal2018-001249 1 Application 13/800,5552 Technology Center 3700 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 2, 4, 5, 7-12, 15-19, and 21. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed July 24, 2017) and Reply Brief ("Reply Br.," filed November 17, 2017), the Examiner's Answer ("Ans.," mailed September 19, 2017), and Final Office Action ("Final Act.," mailed January 26, 2017). 2 Appellants identify Xerox Corporation as the real party in interest. Appeal Br. 5. Appeal2018-001249 Application 13/800,555 THE INVENTION Independent claim 1, reproduced below with added emphasis, is illustrative of the subject matter on appeal. 1. An apparatus comprising: a cutting and creasing tool configured to move in an X direction but not in a Y direction during use, the cutting and creasing tool including a cut-crease head comprising a non-rotatable cutting blade with a cutting edge and a terminal end, the cutting blade being moveable between an engaged position in which the terminal end is below a sheet of media and a non-engaged position in which the terminal end is above the sheet of media, and a non-rotatable creasing tip spaced from the cutting blade, a cutting and creasing platform having a generally planar upper surface configured to support the sheet of media during cutting and creasing, the platform including an elastically deformable creasing portion disposed beneath the creasing tip, and a non-deformable cutting portion disposed adjacent to the creasing portion and beneath the cutting blade, the cutting portion having an elongated channel formed therein to receive the cutting blade when the cutting blade is in the engaged position, a positioner configured to draw the sheet of media along the cutting and creasing platform in a Y-direction while shifting the sheet back and forth along the Y-direction in response to at least one of a cutting order and a creasing order, and a computerized processor configured to operate the cutting and creasing tool and the positioner. Appeal Br. 24 (Claims Appendix.). 2 Appeal2018-001249 Application 13/800,555 THE REJECTIONS I. Claims 1, 2, 4, 7-9, 11, 12, 15, and 17-19 are rejected under 35 U.S.C. § I03(a) as unpatentable over Kelley (US 6,926,400 B2, iss. Aug. 9, 2005) and Rosenberg (US 4,415,515, iss. Nov. 15, 1983). II. Claim 5 is rejected under 35 U.S.C. § I03(a) as unpatentable over Kelley, Rosenberg, and Brunlid (US 5,509,885, iss. Apr. 23, 1996). III. Claims 10 and 16 are rejected under 35 U.S.C. § I03(a) as unpatentable over Kelley, Rosenberg, and Croft (US 6,190,297 B 1, iss. Feb. 20, 2001). IV. Claim 21 is rejected under 35 U.S.C. § I03(a) as unpatentable over Kelley, Rosenberg, and Crystal et al. (US 2011/0052301 Al, pub. Mar. 3, 2011) (hereinafter "Crystal"). ANALYSIS Rejection I Independent claims 1, 12, and 17 and dependent claims 2, 4, 7-9, 11, 15, 18, and 19 Independent claim 1 requires, in part, "a positioner configured to draw the sheet of media along the cutting and creasing platform in a Y-direction while shifting the sheet back and forth along the Y-direction in response to at least one of a cutting order and a creasing order." See Appeal Br. 24 (Claims Appendix.). The Examiner takes the position that the print medium feed mechanism disclosed in Kelley meets the claimed "positioner" of claim 1. Final Act. 3 (citing Kelley col. 4, 11. 47-52). 3 Appeal2018-001249 Application 13/800,555 Appellants argue, inter alia, that the Examiner has not established a prima facie case of obviousness because "the media in Kelley only moves forward in the Y direction and does not move backward in the Y direction." Appeal Br. 19. Responding to Appellants' arguments in the Answer, the Examiner explains the rejection: Col 4 lines 24-60 [of Kelley] discuss that the media is [fed] by a feed mechanism which is controlled by the printer controller and moves in response to the instruction signal from a host device or operator. The feeding device is capable of performing the claimed function of shifting the sheet material back and forth along the Y-axis given that the instruction to do so are sent to the feeding device. The feeding device is described as rollers. Rollers by design are capable of rolling in a forward and reverse direction. Ans. 4. We agree with Appellants. As the Court in KSR made clear, "[r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner has the initial duty of supplying the factual basis for the rejection and may not resort to speculation, unfounded assumptions, or impermissible hindsight reconstruction to supply deficiencies in its factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) ("[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to 4 Appeal2018-001249 Application 13/800,555 arrive at the claimed invention."); see also InTouch Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014). Claim 1 calls for a positioner configured to draw the sheet of media along the cutting and creasing platform in a Y-direction while shifting the sheet back and forth along the Y-direction. The Examiner has not adequately explained how Kelley discloses the claimed configuration, or why the modification of Kelley's device to perform the above limitation would have been obvious. Kelley discloses that the print media 28 is fed from the feed tray 36 through a print medium feed mechanism, and then advanced by rollers "in a direction perpendicular to a guide rod 40." See Kelley, col. 4, 11. 47-52. See also, Kelley col. 4, 11. 8-11 ("The print media handling system 26 moves the print media 28 into a print zone 34 from a feed tray 36 to an output tray 38, for instance, using a series of conventional motor-driven rollers"). As Appellants point out (Appeal Br. 19), the direction of advancement of print media 28 in Kelley is consistently shown as forward only. See Kelley Figures 2, 4, 8, 12, 14, and 15 depicting media path 102. The Examiner's position is that the feeding device of Kelley "is capable of performing the claimed function of shifting ... given that the instruction to do so are sent to the feeding device." ( Ans. 4) ( emphasis added). That may be true. But we do not see, and the Examiner does not adequately explain, why it would have been obvious to configure Kelley's feed mechanism "to draw the sheet of media along the cutting and creasing platform in a Y-direction while shifting the sheet back and forth" as required by claim 1. For example, the Examiner offers no explanation as to why a person of ordinary skill in the art would have modified Kelley's printer 5 Appeal2018-001249 Application 13/800,555 controller to send an instruction to the feed mechanism to perform the claimed shifting of the sheet in response to a cutting order or a creasing order. The Examiner's reliance on Rosenberg does not remedy the deficiency discussed above. Cf In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("the examiner bears the initial burden ... of presenting a primafacie case ofunpatentability .... "). Accordingly, we do not sustain the rejection of independent claim 1, and independent claims 12 and 17, which contain a substantially similar limitation. For the same reasons, we also do not sustain the rejection of dependent claims 2, 4, 7-9, 11, 15, 18, and 19. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Re} ections II-IV Dependent claims 5, 10, 16, and 21 Rejections II, III, and IV rely on the same deficient finding in Kelley discussed above, and the Examiner's use of the disclosures of Brunlid, Crystal, and Croft do not remedy that deficiency. See Final Act. 9-11. For the same reasons discussed above with respect to independent claims 1, 12, and 17, we do not sustain the rejections of dependent claims 5, 10, 16, and 21. DECISION The Examiner's rejections of claims 1, 2, 4, 5, 7-12, 15-19, and 21 under 35 U.S.C. § 103(a) are reversed. REVERSED 6 Copy with citationCopy as parenthetical citation