Ex Parte Carter et al

Board of Patent Appeals and Interferences

Jan 28, 2009

10991166 (B.P.A.I. Jan. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD ALAN CARTER and DENNIS LEE WAKE
____________

Appeal 2008-6099
Application 10/991,166
Technology Center 3600
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Decided: January 29, 2009
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Before JAMESON LEE, SALLY G. LANE and SALLY C. MEDLEY,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

DECISION ON APPEAL
A. Statement of the Case
Goss International Americas, Inc. (“Goss”), the real party in interest,
seeks review under 35 U.S.C. § 134(a) of a Final Rejection of claims 1-9, 16
and 17. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
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Referring to figure 1, [numbers from figure 1 inserted], Goss’ first
invention is a sheet material conveying apparatus that includes a plurality of
pockets [10] each with a first bottom [16] and a second bottom [20]. The
first bottom and the second bottom are movable between a first location
where the second bottom is located over the first bottom and a second
location where the second bottom is not located over the first bottom. (Spec.
2, 4-5, 10).
Figure 1, reproduced from Goss’ figures 1 and 2, is below.

Figure 1 depicts a pocket with movable first bottom and second bottoms.
Referring to figure 2, [numbers from figure 2 inserted], Goss’ second
invention is a sheet material conveying apparatus that includes a plurality of
pockets that move along on a track and a rotatable paddle [40] having a
convex outer surface [48] that moves laterally compared to the pocket
moving direction. The paddle [40] pushes a printed product in the pocket
laterally. (Spec. 5-6).
Figure 2, reproduced from Goss’ figure 5, is below.
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Figure 2 depicts a rotatable paddle with a convex outer surface.
Representative claim 1, reproduced from the Claim Appendix of the
Appeal Brief, reads as follows:
A sheet material conveying apparatus comprising:
a plurality of pockets running along a track, each pocket
having a first bottom and a second bottom movable between a
first location where the second bottom is over the first bottom,
and a second location where the second bottom is not located
over the first bottom, the first bottom defining a first stop for
collected sheet material of a first format, and the second bottom
defining a second stop for collected sheet material of a second
format.

Representative claim 16, reproduced from the Claim Appendix of the
Appeal Brief, reads as follows:
A sheet material conveying apparatus comprising:
a plurality of pockets running along a track, the pocket
moving in a moving direction; and
a rotatable paddle having: a convex outer surface for
pushing a printed product in the pocket laterally, the rotatable
paddle movable laterally with respect to the moving direction.

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The Examiner relies on the following prior art in rejecting the claims on
appeal:
King et al. (“King”) 6,199,354 Mar. 13, 2001
Klopfenstein 5,911,416 Jun. 15, 1999
Müller 4,124,203 Nov. 07, 1978

The Examiner rejected claims 1-4, 8, 9 and 17 under 35 U.S.C. § 102(b)
as anticipated by Müller.
The Examiner rejected the following claims as unpatentable under
35 U.S.C. § 103(a):
claim 5 over Müller and King;
claims 6-7 over Müller and Klopfenstein;
claim 16 over Müller and Goss’ admitted prior art.
B. Issues
Does Goss show that the Examiner erred in finding that claims 1-4, 8, 9
and 17 are anticipated by Müller?
Does Goss show that the Examiner erred in determining that claim 5 is
unpatentable over Müller and King?
Does Goss show that the Examiner erred in determining that claims 6-7
are unpatentable over Müller and Klopfenstein?
Does Goss show that the Examiner erred in determining that claim 16 is
unpatentable over Müller and Goss’ admitted prior art?
C. Findings of Fact (“FF”)
Müller
1. Referring to figure 3 [numbers from figure 3 inserted], Müller describes
a newspaper stuffing apparatus that includes a plurality of pockets [2],
each with a stationary first wall [11] and a movable second wall [12] for
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receiving a newspaper jacket [40] from a feeder [8]. (Col. 3, ll. 61-66;
col. 4, l. 15-col. 5, l. 2).
2. A carrier of the plurality of pockets (not shown) includes a shaft [21]
that is rigid with and supports two spaced apart intercepting levers [22].
(Col. 5, ll. 3-14).
3. When the shaft [21] is pivoted, each corresponding lever [22] pivots
from a first position, in which the levers [22] extend close to the
corresponding first walls [11], to a second position, in which the levers
[22] are remote from the corresponding first walls [11]. (Col. 5, ll. 14-
21).
4. In their operative positions, the levers [22] insure that a newspaper,
which is located in the pocket [2], cannot escape by sliding between the
walls [11] [12]. (Col. 5, ll. 21-24)
5. The carrier shaft [21] also includes two rotatable braking members [47]
which resemble pawls that are biased by prestressed torsion springs (not
shown). (Col. 5, ll. 38-40).
6. Braking members [47] are turned in a clockwise direction toward lower
panel [11a] of first wall [11] and into engagement with the outer side of
the corresponding mobile second wall [12]. (Col. 5, ll. 35-47).
7. When a braking member [47] abuts adjacent mobile wall [12], a portion
of the braking member extends beyond the lower edge and beyond the
inner side of wall [12] and toward first wall [11]. (Col. 5, ll. 47-51).
8. When the feeder [8] propels a jacket [40] toward the space between
walls [11] and [12], the braking members [47] frictionally engage and
brake the jacket [40] so that it comes to a full stop in a predetermined
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position with respect to the walls [11], [12]. (Col. 5, l. 61-col. 6, l. 9;
col. 7, ll. 30-34).
9. The levers [22] extend across the gap between the lowermost panel
[12a] of the wall and the lower panel [11b] of wall [11] and
automatically intercept and hold the introduced jacket in a
predetermined position with respect to the walls [11], [12]. (Col. 7, ll.
24-30).
10. The braking members [47] can move close to wall [11] and frictionally
engage the descending jacket [40] with a force which does not suffice to
prevent the jacket folded edge [40A] from reaching the corresponding
intercepting levers [22] but is sufficient to prevent an rebounding of the
jacket [40] in response to the impact of its folded edge [40a] against
levers [22]. (Col. 7, ll. 16-23).
11. Müller depicts braking member [47] as having a convex outer surface
that engages jacket [40]. (fig. 4).
Figure 3, reproduced from Müller’s figure 4 is below.

Figure 3 depicts a pocket, intercepting lever and braking member.
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Goss’ Admitted Prior Art
12. Goss describes that flat rotating paddles are known for use on pockets to
laterally register the printed products. (¶ 5).
D. Principles of Law
“Anticipation under 35 U.S.C. § 102(e) requires that ‘each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.’” In re Robertson, 169 F.3d. 743,
745 (Fed. Cir. 1999) (quoting Verdegaal Bros., Inc. v. Union Oil Co.,
814 F.2d 628, 631 (Fed. Cir. 1987)).
If the prior art reference does not expressly set forth a
particular element of the claim, that reference still may
anticipate if that element is ‘inherent’ in its disclosure. To
establish inherency, the extrinsic evidence ‘must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill.’ ‘Inherency, however,
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.’

Id. (citations omitted). In re Robertson, 169 F.3d. 743, 745 (Fed. Cir.
1999) (citation omitted).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness.” In re Rijckaert, 9
F.3d 1531, 1532 (Fed. Cir. 1993).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
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E. Analysis
Anticipation of claims 1-4, 8, 9 and 17
Representative claim 1 recites “each pocket having a first bottom and a
second bottom . . . the first bottom defining a first stop for collected sheet
material of a first format, and the second bottom defining a second stop for
collected sheet material of a second format.” (Claim Appx. 1).
The Examiner finds that Müller’s intercepting lever [22] meets the
limitation of a first bottom defining a first stop and the braking member [47]
meets the limitation of a second bottom defining a second stop. (Final
Rejection 2; Ans. 3). The Examiner further finds that Müller’s braking
member [47] is capable of performing as a second stop for collected sheet
material of a second format so long as the collected sheet material is light
enough. (Ans. 6). The Examiner further finds that braking member must
necessarily be capable of stopping collected sheet material because
prestressed torsion spring [49] exerts a nonzero torque on braking member
[47] and the collected sheet material can have a weight approaching zero as
the paper’s size approaches zero. (Ans. 6).
Goss argues that the Müller’s braking member [47] is not a second
bottom defining a second stop. (App. Br. 5). Goss argues that Müller
describes that braking member [47] can move close to wall [11] of pocket
[2] and frictionally engage the descending jacket [40] with a force that does
not suffice to prevent the folded edge [40A] of the jacket from reaching the
intercepting levers [22]. (App. Br. 5-6, (emphasis in original); FF1 10).
Müller’s braking members [47] frictionally engage and brake the jacket
[40] so that it comes to a full stop in a predetermined position with respect to

1 FF denotes Finding of Fact.
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the walls [11], [12]. (FF 8). As shown in two left-most illustrations of
figure 4, the breaking member [47] holds the jacket [40] in the
predetermined position, but lever [22] serves as a bottom and prevents or
stops the jacket [40] from slipping between walls [11] and [12]. (FFs 4, 8).
As explained by Goss, braking members [47] can move close to wall [11]
and frictionally engage the descending jacket [40] with a force which does
not suffice to prevent the jacket folded edge [40A] from reaching the
intercepting levers [22] but is sufficient to prevent rebounding of the jacket
[40] in response to the impact of its folded edge [40a] against levers [22].
(FF 10). Thus, Müller’s intercepting levers [22] serve as a bottom for the
pocket because the newspaper jacket [40] reaches and contacts the
intercepting levers [22] which also prevent the newspaper jacket [40] from
slipping between the walls [11], [12]. Müller does not describe that the
breaking member [47] prevents or stops the newspaper jacket [40] from
slipping between walls [11] and [12].
The Examiner does not demonstrate that Müller’s braking member [47] is
necessarily a second bottom that defines a second stop for collected sheet
material in Müller’s pocket [2]. The Examiner’s findings are based on the
possibility that the collected sheet material can be so light that it will be
stopped and rest upon breaking member [47] due to the force exerted by the
prestressed torsion spring. Inherency may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient. Therefore, the Examiner does not
establish a prima facie case of anticipation.
For these reasons, the Examiner erred in finding claims 1-4, 8, 9 and 17
anticipated by Müller.
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Obviousness of Claims 5-7
Claim 5 is ultimately dependent on independent claim 1. As applied by
the Examiner, King does not remedy the deficiencies of Müller. (Final
Rejection 3-4; Ans. 4). For the same reasons explained above, the Examiner
erred in determining that claim 5 is obvious over Müller and King.
Claims 6-7 are also ultimately dependent on claim 1. As applied by the
Examiner, Klopfenstein does not remedy the deficiencies of Müller. (Final
Rejection 4; Ans. 4). For the same reasons explained above, the Examiner
erred in determining that claim 5 is obvious over Müller and Klopfenstein.
Claim 16
Claim 16 recites “a plurality of pockets running along a track, the pocket
moving in a moving direction; and a rotatable paddle having a convex outer
surface for pushing a printed product in the pocket laterally, the rotatable
paddle movable laterally with respect to the moving direction.” (Claim
Appx. 2). We interpret “movable laterally with respect to the moving
direction” to mean that the rotatable paddle is movable across the pocket.
The Examiner finds that Müller describes a rotatable paddle [47] (i.e.,
braking member) having a convex outer surface. (Final Rejection 4-5; Ans.
5). The Examiner finds that Müller does not describe the paddle as movable
laterally. (Final Rejection 5; Ans. 5). The Examiner finds that Goss’
Specification describes that rotating paddles are known for use on pockets to
laterally register printed products. (Final Rejection 5; Ans. 5, FF 12). The
Examiner determined that it would have been obvious to one of ordinary
skill in the art at the time the invention was made to add a convex rotating
paddle that laterally registers the printed products to Müller’s apparatus in
order to laterally register the printed products. (Final Rejection 5; Ans. 5).
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Goss argues that neither Müller nor Goss’ admitted prior art show a
rotatable paddle movable laterally. (App. Br. 8). Goss’s arguments attack
the references individually instead of addressing the combination of the
references. Goss does not address why the Examiner’s findings (1) that
Müller describes a rotatable paddle (i.e., braking member [47]) and (2) the
admitted prior art describes a paddle movable laterally are in error. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” Goss also does not address why the Examiner erred in
determining obviousness based on the combined teachings of Müller and the
admitted prior art.
Goss further argues that neither Müller nor Goss’ admitted prior art show
a rotatable paddle having a convex outer surface. (Reply Br. 3 (emphasis
in original)). Goss argues that it would not have been obvious to one of skill
in the art to provide a rotatable paddle having a convex outer surface. Goss’
arguments are unpersuasive because Goss has not explained why the
Examiner’s finding that Müller’s braking member [47] is a rotatatable
paddle having a convex outer surface is in error. (FF 11).
For all these reasons, Goss does not demonstrate that the Examiner erred
in determining that claim 16 is obvious over Müller and Goss’ admitted
prior art.
F. Conclusions of Law
Based on the Findings of Fact and the Analysis above, the Examiner
erred in finding claims 1-4, 8, 9 and 17 anticipated by Müller. Further, the
Examiner erred in determining claim 5 is unpatentable over Müller and King
and claims 6-7 are unpatentable over Müller and Klopfenstein. The
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Examiner did not err in determining that claim 16 is unpatentable over
Müller and Goss’ admitted prior art.
G. Decision
The decision of the Examiner rejecting claims 1-4, 8, 9 and 17 under 35
U.S.C. § 102(b) as anticipated by Müller is reversed.
The decision of the Examiner rejecting claim 5 as unpatentable under
35 U.S.C. § 103(a) over Müller and King is reversed.
The decision of the Examiner rejecting claims 6-7 as unpatentable under
35 U.S.C. § 103(a) over Müller and Klopfenstein is reversed.
The decision of the Examiner rejecting claim 16 as unpatentable under
35 U.S.C. § 103(a) over Müller and Goss’ admitted prior art is 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).
AFFIRMED-IN-PART

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