Ex Parte Higashiura et al

Patent Trial and Appeal Board

Mar 16, 2018

14390191 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/390,191 10/02/2014
127226 7590 03/20/2018
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Masaki HIGASHIURA
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. CONFIRMATION NO.
5174-0lSOPUS 1 1027
EXAMINER
PACHOL, NICHOLAS C
ART UNIT PAPER NUMBER
2672
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAKI HIGASHIURA and TAKE SHI TANI
Appeal2017-010353
Application 14/390,191 1
Technology Center 2600
Before CARL W. WHITEHEAD JR., NABEEL U. KHAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3, 4, and 8-10. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify SHARP KABUSHIKI KAISHA as the real party in
interest. App. Br. 1.
Appeal2017-010353
Application 14/390, 191
BACKGROUND
THE INVENTION
According to Appellants, the invention relates to "an image forming
apparatus capable of inserting an insert-sheet indicating separation, at any
position designated on a copy-by-copy basis, among a plurality of sheets of
paper discharged after image formation" Spec. i-f 1.
Exemplary independent claim 1 is reproduced below with the disputed
limitation emphasized.
1. An image forming apparatus allowing insertion of an
insert-sheet indicating separation between a plurality of
sheets of recording paper each having an image formed on its
surface and then discharged, comprising:
an image forming device forming an image on the
recording paper;
an input device designating insertion positions to insert
said insert-sheet at said designated insertion positions;
a discharge device discharging said recording paper
having the image formed thereon and said insert-sheet; and
one or more processing devices and one or more memory
devices storing instructions to control said discharge device to:
discharge said insert-sheet at said designated insertion
positions and discharge every other insert-sheet with an offset in
a prescribed direction, and discharge sheets of recording paper,
following an insertion-sheet discharged with the offset, with the
offset in the prescribed direction until a following insertion-sheet
is discharged.
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Appeal2017-010353
Application 14/390, 191
REFERENCES AND REJECTIONS
1. Claims 1, 3, and 8-10 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Yokomizo (US 2009/0230606 Al, Sept. 17, 2009) and
Matoba (US 2009/0304409 Al, Dec. 10, 2009). Final Act. 4--8.
2. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Y okomizo, Matoba, and Truong (US 2009/0201534, Aug.
13, 2009). Final Act. 8-10.
DISCUSSION
Claim 1 recites "discharge every other insert-sheet with an offset in a
prescribed direction, and discharge sheets of recording paper, following an
insertion-sheet discharged with the offset, with the offset in the prescribed
direction until a following insertion-sheet is discharged." Appellants argue
the cited references do not disclose the disputed limitation. App. Br. 5-13.
The Examiner finds Matoba teaches that different sets of sheets can be
separated by a separator sheet (the claimed "insert-sheet") and that "the user
can designate the insertion position of the insert sheets and offset of the
insert sheets to help distinguish them." Ans. 10. The Examiner relies on
Figure 8 of Matoba as illustrating that every other insert-sheet and its
corresponding recording sheets are offset from adjacent insert-
sheet/recording sheet sets. Ans. 11. This is based on a finding that Figure 8
illustrates bolded separator sheets. Ans. 11 ("As has been previously
established, the insert sheets for the sets are bolded. Upon examination of
Fig. 8, it is clear that there are bolded pages within the set.").
We disagree with the Examiner's findings. In particular, we disagree
that Figure 8 of Matoba includes bolded pages indicating separator sheets.
See Matoba Fig. 8. Matoba attempts to distinguish between adjacent copy
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Appeal2017-010353
Application 14/390, 191
sets and adjacent post-processing sets. In Figures 6 and 7 of Matoba, the
copy sets are distinguished by use of a bolded separator sheet, while post-
processing sets are distinguished by offsetting them with respect to each
other. See e.g. Matoba Figs. 6, 7, i-fi-1 87-88 ("A separator sheet 603 is offset-
inserted between each set of a copy so that sets of sheets of a copy are
distinguishable. In addition, by offsetting adjacent sets of sheets to be post-
processed in the same batch, the sets of sheets to be post-processed in the
same batch are distinguishable."). In Figure 8, however, copy sets are
distinguished from each other using a first offset, rather than a separator
sheet, and post-processing sets are distinguished from each other using a
second offset. See Matoba Fig. 8, i191 ("when adjacent sets of sheets to be
post-processed 801 are offset from each other using a certain offset distance
and sets of copies 802 are offset from each other using different offset
values."). There are no separator sheets in Figure 8. Thus, we disagree that
Figure 8 of Matoba teaches or suggests "discharge[ing] every other insert-
sheet with an offset in a prescribed direction, and discharge[ing] sheets of
recording paper, following an insertion-sheet discharged with the offset,
with the offset in the prescribed direction until a following insertion-sheet is
discharged," as claim 1 recites.
Accordingly, constrained by the record before us, we do not sustain
the Examiner's rejection of independent claim 1, and independent claim 10,
which was rejected on the same basis. See Final Act. 8. For the same
reasons, do not sustain the Examiner's rejection of the pending claims that
depend therefrom.
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Appeal2017-010353
Application 14/390, 191
DECISION
The Examiner's rejection of claims 1, 3, 4, and 8-10 is reversed.
REVERSED
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