Ex Parte Clark

Board of Patent Appeals and Interferences

Sep 21, 2010

11088496 (B.P.A.I. Sep. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/088,496 03/24/2005 Robert A. Clark 2004 0618 US NP 9879
70537 7590 09/21/2010
Prass LLP
2661 Riva Road
Building 1000, Suite 1044
Annapolis, MD 21401
EXAMINER
MCCULLOUGH, MICHAEL C
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
09/21/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT A. CLARK
____________

Appeal 2009-008134
Application 11/088,496
Technology Center 3600
____________

Before: LINDA E. HORNER, WILLIAM F. PATE III, and JENNIFER D.
BAHR, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008134
Application 11/088,496
2
STATEMENT OF THE CASE
Robert A. Clark (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 17-24, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM-IN-PART.
THE INVENTION
Appellant’s claimed invention is a system for alternately feeding
unprinted media sheets from plural sheet stacks with plural sheet feeders,
and alternately merging the output paths of the sheets being fed into a single
sequential stream of print media sheets to a printing system. Spec. 1, para.
[0004]. Claim 17, reproduced below, is representative of the subject matter
on appeal.
17. A marking machine comprising a printing system, said
printing system comprising a predetermined printing rate and
an operably integrated sheets feeding system for unprinted
media sheets,
said operably integrated sheets feeding system feeding
said unprinted media sheets to said printing system at said pre-
determined printing rate of said printing system from at least
two separate sheet feeders feeding from at least two separate
stacks of said unprinted media sheets,
said at least two separate sheet feeders are controlled by a
system controller programmed with a sheet feeding algorithm
to alternately feed said unprinted media sheets to said printing
system from said at least two separate sheet feeders into at least
two separate fed sheets streams at a sheet feeding rate of
approximately one-half or less of said printing system printing
rate from each of said at least two separate sheet feeders,
wherein a sheet merging position is provided for merging
said at least two separate fed sheet streams, and

Appeal 2009-008134
Application 11/088,496
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wherein said system controller sheet feeding algorithm is
enabled to send sheet feeding commands to said at least two or
more sheet feeders at programmed times such that said at least
two separate sheet feeders feed sheets into said respective said
at least two fed sheet streams at times which allow said at least
two fed sheet streams to interleave into a single fed sheet
stream (54) at said predetermined printing rate of said printing
system feeding sheets at twice the ppm rate of the two sheet
feeders 26 and 36.

THE REJECTIONS
Appellant seeks review of the Examiner’s rejection of claims 17-24
under 35 U.S.C. § 102(b) as anticipated by Ehlscheid (US 3,523,685, issued
August 11, 1970).
The Examiner also rejected claim 21 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Appellant presents no arguments of error regarding this rejection (App.
Br. 9-10; Reply Br. 6), and thus we summarily sustain this rejection. See In
re Berger, 279 F.3d 975 (Fed. Cir. 2002) (holding that Board did not err in
sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
applicant failed to contest the rejection on appeal).
ISSUES
The issues presented by this appeal are:
1. Does Ehlscheid disclose merging at least two separate fed sheet
streams and interleaving those streams into a single fed stream?
2. Does claim 17 call for two separate fed sheet streams to merge
before entering the print system?
3. Does claim 18 call for the sheet merging position of the at least
two separate fed sheet streams to be before the printer?
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Application 11/088,496
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4. Does Ehlscheid disclose a sheet merging position between the at
least two separate sheet feeders and the printing system?

ANALYSIS
Claim 17
Appellant contends that the Examiner erred in rejecting claim 17
because Ehlscheid does not disclose merging at least two separate fed sheet
streams and interleaving those streams into a single fed sheet stream. App.
Br. 11; Reply Br. 9. We disagree.
Ehlscheid discloses an apparatus that feeds sheets of paper into a
rotary printing machine. Ehlscheid, col. 1. ll. 25-30. Ehlscheid discloses an
embodiment having first and second feeding devices directed towards each
other. Ehlscheid, col. 3, ll. 25-26; fig. 2. In operation, suction devices 5, 5"
of each feeding device alternately withdraw sheets from the bottom of stacks
3, 3", and pass the sheets to segments 8, 8". Ehlscheid, col. 2, ll. 50-52; col.
3, ll. 14-162; figs. 1, 2. From segment 8, sheets from stack 3 pass to disc
11", while from segment 8" sheets from stack 3" pass to disc 18 before
passing to disc 11". Ehlscheid, col. 3, ll. 36-37; 61-69; fig. 2. Thus,
contrary to Appellant's assertion, Ehlscheid discloses merging at least two
separate fed sheet streams (the streams of sheets from stacks 3 and 3") and
interleaving those streams into a single fed stream (at the point disc 18
cooperates with disc 11").
Appellant contends that claim 17 requires the at least two separate fed
sheet streams to merge before entering the printing system, and that

2 Reference is made to parts and operation of Figure 1 in reference to Figure
2 because the parts of the embodiment of Figure 2 are the same though
arranged differently. Ehlscheid, col. 3, ll. 34-36.
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Application 11/088,496
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Ehlscheid does not meet this limitation because Ehlscheid’s sheets are
transferred directly to “printing unit 11"”3 before being merged.4 App. Br.
11-12; Reply Br. 7-10. Appellant’s contention is not commensurate with the
scope of the claim.
Independent claim 17 is directed to a marking machine that includes a
system controller that controls a sheets feeding system to alternately feed
unprinted media sheets from at least two separate sheet feeders into at least
two separate fed sheets streams. Further, claim 17 calls for the controller to
control the at least two separate sheet feeders of the sheets feeding system to
interleave the at least two streams into a single fed sheet stream at a sheet
merging position. Claim 17 does not recite the location of the sheet merging
position. Similarly, Appellant’s Specification describes that the sheet
merging position “is provided for merging said at least two separate fed
sheet streams,” but does not describe the location of that sheet merging
position. Spec. 5-6, para. [0015]. Thus, claim 17 does not specify that the
sheet merging position be located before entering (upstream of) the printing
system. Further supporting this interpretation, claim 20, which depends
from claim 17, calls for the sheet merging position to be between the at least
two separate sheet feeders and the printing system. This implies that the
location of the sheet merging position of claim 17 is not restricted to being
between the at least two separate sheet feeders and the printing system. As

3 Ehlscheid refers to element 11" as disc 11", which may take the form of a
printing cylinder. Ehlscheid, col. 3, ll. 54-56.
4 Appellant asserts that the embodiment of Ehlscheid's Figure 1 also does not
meet this limitation. App. Br. 10-12; Reply Br. 7-10. This contention is not
relevant as the Examiner’s rejection is based on the embodiment of
Ehlscheid's Figure 2. Ans. 3-4.
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Application 11/088,496
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such, Appellant’s arguments do not persuade us of error in the Examiner’s
rejection of claim 17.
Claim 18
Similar to Appellant’s contention regarding the location of the sheet
merging position called for by claim 17, Appellant contends that the
merging position of the at least two separate fed sheet streams "must be
before the printer" because claim 18 calls for the print media sheets to be
“unprinted” when in the sheets feeding system. Reply Br. 10. Again,
Appellant’s contention is not commensurate with the scope of the claim.
Claim 18 recites:
The printing system and operably integrated unprinted print
media sheets feeding system of claim 17, wherein said operably
integrated print media sheets feeding system comprises at least
two said separate sheet separator/feeders in at least two separate
locations.
We agree with Appellant that claim 18 calls for the sheets to be
“unprinted” when entering the print system. In fact, this is perhaps clearest
in claim 17, from which claim 18 depends, reciting "said operably integrated
sheets feeding system feeding said unprinted print media sheets to said
printing system." Thus, both claim 17 and claim 18 require that the print
media sheets be “unprinted” when entering the printing system. However,
that limitation does not necessitate that the sheet merging position be before
the printer as Appellant contends. As we concluded in the analysis of claim
17, supra, claim 17 does not specify that the sheet merging position be
located before entering (upstream of) the printing system. We see nothing in
claim 18 that alters that interpretation.
Ehlscheid discloses that printing cylinder 11" cooperates with a
printing unit (not shown) located directly below disc 18. Ehlscheid, col. 3,
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ll. 54-58; fig. 2. Ehlscheid’s print media sheets (sheets from stacks 3, 3") are
unprinted when in the sheets feeding system, as called for in claim 18,
because Ehlscheid’s sheets feeding system ends at printing cylinder 11", and
the sheets become “printed” only once they enter the printing unit, which is
located downstream of printing cylinder 11". As such, Appellant’s
arguments do not persuade us of error in the Examiner’s rejection of claim
18.
Claim 19
Appellant contends that claim 19 defines at least two fed sheets
streams, and that “Ehlscheid has no ‘streams’ but feeds go directly to the
printer.” Reply Br. 10.
The limitation of having at least two fed sheets streams in claim 19
comes from claim 17, from which claim 19 depends. Claim 19 adds a
limitation that Appellant has not contested. Appellant’s contention that
Ehlscheid does not disclose at least two separate fed sheets streams was
addressed in our analysis of claim 17, supra. Appellant has not explained,
nor do we find, anything in claim 19 warranting a different conclusion.
Claims 20
Claim 20 depends from claim 17 and adds the limitation that the sheet
merging position is between the at least two separate sheet feeders and the
printing system.
Appellant contends that Ehlscheid’s at least two separate fed sheets
streams do not merge before the printer as called for by claim 20, but rather
merge at disc 11". App. Br. 11-12; Reply Br. 7-8.
As explained in the analysis of claim 17, supra, Ehlscheid’s at least
two fed sheets streams merge at the point disc 18 cooperates with disc 11".
Because disc 11" is a printing cylinder (Ehlscheid, col. 3, ll. 54-58; fig. 2),
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Application 11/088,496
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Ehlscheid’s sheet merging position (the point disc 18 cooperates with disc
11") is within the printing system,5 and is not between the at least two
separate sheet feeders and the printing system, as called for in claim 20. As
such, we cannot sustain the Examiner’s rejection of claim 20.
Claims 21-23
Appellants assert that claims 21-23 do not stand or fall together. App.
Br. 4. However, in the briefs Appellant simply recites the limitations of
claims 22 and 23 (App. Br. 12-13; Reply Br. 8-9), and such recitation is not
an argument for separate patentability of these claims. 37 C.F.R.
§ 41.37(c)(1)(vii) (“[a] statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”). Thus, we will treat claims 21-23 as argued as a group. We select
claim 21 as the representative claim, and claims 22 and 23 stand or fall with
claim 21. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant repeats the arguments made against independent claim 17
for the patentability of claim 21.
Independent claim 17 is directed to a marking machine, and
independent claim 21 is directed to a method of a marking apparatus.
Regarding the issues in contention, claim 21 otherwise parallels independent
claim 17. In particular, while claim 21 calls for controlling two or more
sheet separator/feeders to feed sheets into at least two fed sheet streams to
merge interleaved into a single fed sheet stream, claim 21 does not specify
the point of merger as being upstream of the printing system. For the
reasons explained in the analysis of claim 17, supra, we also sustain the
rejection of claim 21. Claims 22 and 23 fall with claim 21.

5 The Examiner found “[t]he printing system is printing cylinder 11"”.
Ans. 4.
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Application 11/088,496
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Claim 24
Claim 24 depends from claim 21, and adds the limitation that the
sheet merging position6 is between the at least two separate sheet feeders
and the printing system.
While claim 24 is a method claim, claim 24 otherwise parallels claim
20 regarding the issues in contention. For the reasons explained in the
analysis of claim 20, supra, we cannot sustain the rejection of claim 24.
CONCLUSIONS
Ehlscheid discloses merging at least two separate fed sheet streams
and interleaving those streams into a single fed stream.
Claim 17 does not call for two separate fed sheet streams to merge
before entering the print system.
Claim 18 does not call for the sheet merging position of the at least
two separate fed sheet streams to be before the printer.
Ehlscheid does not disclose a sheet merging position between the at
least two separate sheet feeders and the printing system.
DECISION
We AFFIRM the Examiner’s rejection of claim 21 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
We AFFIRM the Examiner’s decision to reject claims 17-19 and 21-
23 under 35 U.S.C. § 102(b) as anticipated by Ehlscheid.
We REVERSE the Examiner’s decision to reject claims 20 and 24
under 35 U.S.C. § 102(b) as anticipated by Ehlscheid.

6 The recitation in claim 24 of “said sheet merging position” appears to lack
adequate antecedent basis.
Appeal 2009-008134
Application 11/088,496
10
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

mls

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