Ex Parte Clark et al

Patent Trial and Appeal Board

Sep 19, 2018

13800555 (P.T.A.B. Sep. 19, 2018)

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.).
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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).
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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
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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
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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
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