Ex Parte Herrmann et al

Patent Trial and Appeal Board

Mar 28, 2014

11714971 (P.T.A.B. Mar. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD

____________

Ex parte WILLIAM HERRMANN, BRADLEY J. ANDERSON,
and LEONARD SCHROATH
__________

Appeal 2011-013044
Application 11/714,971
Technology Center 2800
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 4-7, and 9-16. The Examiner withdrew the rejection and allowed the
subject matter of claims 15 and 16. Accordingly, the claims on appeal are
claims 1, 4-7, and 9-14. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
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We REVERSE.
Appellants’ invention is directed to a photocopier device that reduces
the likelihood that a user will discard or forget an original document after
photocopies are made of that document (Spec. para. [0013]).
Claims 1 and 9 are illustrative:
1. A photocopier apparatus, comprising:
a scanning module configured to scan an original document;
a document feeder configured to individually feed pages of a multiple-
page original document to said scanning module;
a printing module configured to print a copy of said original document
using output from said scanning module; and
a media feed path configured to transport all pages of said multiple-
page original document and said copy to a single output receptacle, where
said pages of said multiple-page original document are delivered together to
said single output receptacle separate from said copy.

9. A photocopier apparatus, comprising:
an original document feed path having a first exit;
a photocopy feed path having a second exit, wherein said second exit
is separate from said first exit; and
a diverter device configured to divert an original document from said
original document feed path to exit said photocopier apparatus at said second
exit.

Appellants appeal the following rejections:
1. Claims 1, 4, and 7 are rejected under 35 U.S.C. § 102(b) as being
unpatentable over Isogai et al. (US 6,181,884 B1, patented Jan. 30,
2001).
2. Claims 9-14 are rejected under 35 U.S.C. § 102(b) as being
unpatentable over Funahashi (US 5,982,510, patented Nov. 9, 1999).
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3. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Isogai in view of Romanowski (US 4,433,837,
patented Feb. 28, 1984).

REJECTION (1): Claim 1
ISSUE
Did the Examiner reversibly err in concluding that Isogai’s fax/copier
device is structured such that it is capable of providing “a media feed path
configured to transport all pages of said multiple-page original document
and said copy to a single output receptacle, where said pages of said
multiple-page original document are delivered together to said single output
receptacle separate from said copy” as required by claim 1? We decide this
issue in the affirmative.

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings regarding Isogai are located on pages 3-4
and 8-10 of the Answer. The Examiner finds that Isogai discloses a
facsimile/printer device that is capable of copying and printing multiple page
documents (Ans. 4 & 10). The Examiner finds that the multiple-page
original document limitation is merely an intended use of the device (Ans. 4,
10).
Appellants argue that Isogai is configured to copy only a one page
document at a time and does not contain a structure capable of copying a
multi-page original document as required by claim 1 (Reply Br. 7).
Appellants contend that there is nothing in Isogai’s column 5, lines 15-25
that teaches or suggests scanning a number of pages sequentially in a multi-
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page document, holding the scanned images electronically and then printing
an entire copy of the multi-page document after scanning has been
completed (Reply Br. 7).
The preponderance of the evidence favors Appellants’ argument of
novelty. Isogai discloses conveying a “document” in an image reading
operation (col. 1, ll. 12-14). Isogai further discloses that a “document”
placed on the manual paper-feed unit 4 is sent into the paper passage route 7,
read out by the image reading unit 8, and then discharged into the discharge
unit 5 (col. 3, ll. 17-23). Isogai discloses that “when a command of reading
out images is received from the input unit, the document which is loaded on
the manual paper[-]feed unit 4 (first paper), is fed, and images of it are read
out by the image reading unit 8” (col. 3, ll. 42-45).
Based on the above disclosures, Isogai teaches that a “document” can
be printed, but is silent if the document is multi-page or a single piece of
paper. Citing to column 5, lines 12-25, the Examiner finds that Isogai’s
printer device is capable of printing a multi-page document by feeding the
document through the device one page at a time (Ans. 9). The Examiner
finds that Isogai’s photocopier under the control of a user and control device
17 as described at column 4, line 50 to column 5, line 26 is capable of
transporting, copying and printing multi-page documents (Ans. 9).
However, we find that Isogai at column 4 to column 5 cited by the Examiner
fails to describe specifically that the data storage device that forms part of
the structure of the photocopier is capable of storing images of sequentially
presented multi-page documents for print out later. Rather, Isogai’s
description bridging the bottom of column 4 through line 26 of column 5
discloses imaging, storing, and printing a “document.”
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The Examiner’s anticipation rejection is faulty in that it fails to
explain how Isogai’s teachings to image, store and print a “document”
identically disclose the claimed photocopier apparatus that includes a
scanning module that scans and retains the image data for each page of a
multi-page original document. While the Examiner finds that Isogai’s
disclosure includes imaging and saving the data for a multi-page original
document, nowhere does Isogai disclose that the “document” is a multi-page
document or that the memory of the imager retains the images of multiple
pages multi-page original document. “‘[R]ejections under 35 U.S.C. § 102
are proper only when the claimed subject matter is identically disclosed or
described in the prior art.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1371 (Fed. Cir. 2008). Because the claimed subject matter is not
identically disclosed by Isogai, we reverse the Examiner’s § 102 rejection.
We further reverse the Examiner’s § 103 rejection of claims 5 and 6
over Isogai in view of Romanowski. The Examiner does not provide any
analysis regarding how Isogai’s device would have been modified in light of
Romanowski’s teachings to arrive at the subject matter of claim 1.

REJECTION (2): Claim 9
ISSUE
Did the Examiner reversibly err in finding that Funahashi discloses a
device having a paper diverter 47 that is capable of diverting an original
document from said original document feed path to exit said photocopier
apparatus at the second exit as required by claim 9? We decide this issue in
the affirmative.

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FINDINGS OF FACT & ANALYSIS
Claim 9 recites that an original document feed path has a first exit and
a photocopy feed path has a second exit such that the first and second exits
are separate from each other. Claim 9 further requires a diverter configured
to divert an original document from said original document feed path to exit
said photocopier apparatus at the second exit. In other words, claim 9
requires that the original document and the copies of the original document
are routed via a diverter to the same exit (i.e., the second exit).
The Examiner finds that Funahashi discloses the photocopier structure
recited in claim 9, including a diverter device configured to divert an
original document from said original document feed path to exit said
photocopier apparatus at said second exit (Ans. 5-6). The Examiner explains
that the claim language “‘configured to divert an original document from
said original document feed path to exit said photocopier apparatus at said
second exit,’ is a functional statement that adds no further structure to the
claim” (Ans. 6). The Examiner finds that Funahashi’s diverter 47 is capable
of carrying out the recited function. Id.
Appellants argue that Funahashi discloses diverter 47 is configured to
operate so that the original papers in original paper tray 41 are sent via
diverter 47 to original paper tray 48 while the copies are sent via diverter 47
to recorded paper trays 50 or 51 (Reply Br. 13). Appellants argue that
Funahashi’s disclosure regarding how the device functions demonstrates that
Funahashi’s diverter is not structured to perform the claimed function (Reply
Br. 13).
The preponderance of the evidence favors Appellants’ argument of
novelty. Funahashi discloses that diverter 47 is controlled by a CPU 14 that
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manipulates the solenoid 49 to move the diverter 47 to the proper location
(Fig 2; col. 9, ll. 9-38; col. 11, ll. 7-11). In other words, Funahashi’s diverter
structure includes not just the solenoid 49 and paper guide plate 47, but also
the computer programming and control structure that controls the diverter.
In other words, Funahashi’s paper guide plate 47 and solenoid 49 is
controlled by CPU 14, which is a special purpose computer by virtue of the
programming that is used to effect control of the solenoid 49 and guide plate
47. In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994).
As noted supra, claim 9 requires that the diverter direct the original
document and copies to the same exit. Funashashi’s guide plate 47 must be
reprogrammed to cause such control because the patent discloses that the
original documents are sent to a different exit than the copies. That
Funahashi’s structure requires modification to meet the claimed structure
necessary to achieve the recited functional limitations does not constitute
anticipation. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (The
court held that an oil can with a conically shaped top with an opening was
identical to the structure recited in applicant’s claims to a popcorn dispenser
such that the identical structure would have been capable of performing the
popcorn kernel dispensing function).
On this record, we reverse the Examiner’s § 102 rejection over
Funahashi.

DECISION
The Examiner’s decision is reversed.

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ORDER
REVERSED

cdc