Ex Parte Johnston et al

Patent Trial and Appeal Board

Aug 4, 2016

12560902 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/560,902 09/16/2009
70537 7590 08/04/2016
Prass LLP
2661 Riva Road
Building 1000, Suite 1044
Annapolis, MD 21401
FIRST NAMED INVENTOR
Donald E. Johnston
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.
056-0339 1253
EXAMINER
PARCO JR, RUBEN C
ART UNIT PAPER NUMBER
2854
MAILDATE DELIVERY MODE
08/04/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD E. JOHNSTON and JOSEPH J. FERRARA
Appeal2013-010948
Application 12/560,902
Technology Center 2800
Before ERIC S. FRAHM, JOHN G. NEW, and NATHAN A. ENGELS,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5-12, and 14--18. Final Act. 2-14. Claims 4 and 13
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2013-010948
Application 12/560,902
Appellants' Disclosed Invention
Appellants disclose a paper registration device for a paper-handling
system in an electrostatic marking system (claims 1 and 1 O; Spec. 1, i-f 1 ).
Exemplary Claim
Claims 1 and 10 are the independent claims on appeal, and each
recites a paper registration device. Exemplary independent claim 10 under
appeal, with emphasis added to disputed portions of the claim, reads as
follows:
10. A paper registration device comprising:
a paper sheet transport with a beginning positioned pre-
registration nip, the pre-registration nip comprising a pre-
registration roller pair;
a stalled roll registration nip, the stalled roll registration
nip comprising a stalled roll roller pair, said stalled roll
registration nip being position on said paper sheet transport;
a first upstream contact image sensor (CIS) positioned on
said paper sheet transport at a point before said stalled roll
registration nip;
a second downstream CIS positioned on said paper sheet
transport at a location after said stalled roll registration nip;
a buckle control sensor positioned between said pre-
registration nip and said stalled roll registration nip;
a first motor configured to translate at least one roller of
the stalled roll roller pair axially along center axis of the at least
one roller of the stalled roll roller pair;
a second motor configured to rotate the at least one roller
of the stalled roll roller pair between a first position and a second
position of the at least one roller of the stalled roller pair;
a skew adjustment cam operatively coupled to said second
motor, the skew adjustment cam being configured to cause said
rotation of the at least one roller of the stalled roll roller pair when
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Application 12/560,902
said second motor causes said skew adjustment cam to move
from a first position to a second position; and
a controller operatively connected to said first upstream
CIS, said second downstream CIS, said buckle sensor, said first
motor, and said second motor, the controller being configured to
determine a degree of skew of a paper sheet based, at least in
part, on proportional feedback information provided by the first
upstream CIS and second downstream CIS,
wherein said stalled roll registration nip is configured to
cause a buckle in said paper sheet as a leading edge of said paper
sheet enters said stalled roll registration nip, said buckle control
sensor collects data related to said buckle, said controller causes
a velocity of the stalled roll registration nip to change to register
the leading edge of said paper sheet based on the collected data
related to said buckle, and said controller causes the first motor
and the second motor to respectively simultaneously translate
and rotate the at least one roller of the stalled roll roller pair to
correct the determined skew of said paper sheet to thereby
deskew at least one side of said paper sheet.
Exarniner 's Rejections
(1) The Examiner rejected claims 1, 2, 5-11, and 14--18 as being
unpatentable under 35 U.S.C. § 103(a) over Choi (US 2009/0194936 Al;
published Aug. 6, 2009), Yeo et al. (US 6,276,586 Bl; published Aug. 21,
2001) ("Yeo"), Quesnel et al. (US 5,775,690 A; published July 7, 1998)
("Quesnel"), Takeda (JP 2003-226446 A; published Aug. 12, 2003),
Takahashi et al. (US 2007/0242997 Al; published Oct. 18, 2007)
("Takahashi"), Yamane et al. (US 2006/0285903 Al; published Dec. 21,
2006) ("Yamane"), and Matsumura (JP 10-167527 A; published June 23,
1998). Final Act. 2-13.
(2) The Examiner rejected claims 3 and 12 as being unpatentable
under 35 U.S.C. § 103(a) over Choi, Yeo, Quesnel, Takeda, Takahashi,
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Application 12/560,902
Yamane, Matsumura, and further in view of Williams et al. (US 5,715,514
A; published Feb. 3, 1998) ("Williams"). Final Act. 13-14.
Appellants' Contentions
Appellants contend (App. Br. 19-28; Reply Br. 6-12) that the
Examiner erred in rejecting claims 1and10 under 35 U.S.C. § 103(a) over
Choi, Yeo, Quesnel, Takeda, Takahashi, Yamane, and Matsumura for
numerous reasons including:
(1) There is no motivation to combine (i) Choi with Yeo or Takeda
(App. Br. 18-20; Reply Br. 5-7), (ii) Choi and Yeo with Quesnel (App. Br.
20-22), and (iii) Choi, Yeo, Quesnel, and Takeda with Takahashi or Yamane
(App. Br. 22-25; Reply Br. 8-9);
(2) the Examiner has picked and chosen from the seven references in a
piecemeal fashion without considering the references as a whole, and has not
provided a proper rationale or motivation other than impermissible hindsight
(App. Br. 26-28; Reply Br. 11-12);
(3) Choi and each of the subsequently applied references fail to teach
"a stalled roll registration nip" as claimed (App. Br. 17, 25-26, and 29), and
each of the combinations separately would have impermissibly changed
Choi's principle of operation (App. Br. 25-26); and
(4) the Examiner's progression of substitutions is similar "to add[ing]
a turbocharger to a dump truck to make a race car" which Appellants proffer
is illogical (Reply Br. 11-12).
Issue on Appeal
Appellants presents arguments to claims 1-3, 5-12, and 14--18 as a
group (App. Br. 11). Accordingly, we select claim 10 as representative of
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Application 12/560,902
the group of claims consisting of claims 1-3, 5-12, and 14--18, and we will
address representative independent claim 10, in our analysis infra.
Based on Appellants' arguments, the following issue is presented for
appeal:
Did the Examiner err in rejecting claims 1-3, 5-12, and 14--18 as
being obvious because the applied references are (1) not properly
combinable, and/or (2) the combination of Choi, Yeo, Quesnel, Takeda,
Takahashi, Yamane, and Matsumura fails to teach or suggest the limitations
of representative claim 10 at issue?
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). The
Examiner's articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. KSR Int 'l Co.
v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441F.3d977,
988 (Fed. Cir. 2006)).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions in the Appeal Brief (App. Br. 17-29) and the Reply Brief (Reply
Br. 5-12) that the Examiner has erred.
We disagree with Appellants' conclusions. With regard to
representative claim 10, we adopt as our own ( 1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
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Application 12/560,902
Act. 2-14), and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellants' Appeal Brief (see Ans. 2-13). We
concur with the conclusions reached by the Examiner.
The Examiner has provided a factual basis and has articulated
reasoning with a rational underpinning to support the conclusion of
obviousness with regard to claim 10 (see Final Act. 2-10). See KSR, 550
U.S. at 418. We agree with the Examiner that a person of ordinary skill in
the art would know how to (i) add a first upstream sensor and a second
downstream sensor as taught by Yeo (Fig. 2; col. 3, 11. 40-57; Ans. 2--4)),
(ii) modify existing sensors to contact image sensors as taught by Takeda
(Fig. 4; i-f 50; Ans. 3--4), (iii) substitute an existing buckle magnitude
detector with to buckle control sensor as taught by Quesnel (col. 6, 11. 23-27;
Ans. 4--5), (iv) modify an existing registration device with the stalled
registration roller pair, first motor, second motor, and skew adjustment gear
as taught by Yamane (Fig. 2b; i-f 95; Ans. 6-8), and (v) change the angle of
the existing stalled roll registration nip using a skew adjustment cam as
taught by Takahashi (Figs. 3a and 3c; Ans. 8-9 and 11-12), and (vi) use the
existing structure to perform deskewing and lateral registration
simultaneously as taught by Matsumura (Abs.; Ans. 10-11). We also agree
with the Examiner that to do so would have been obvious (i) to provide
successful determinations and corrections of sheet skew (Final Act. 6), (ii) to
provide enhancements to determinations and corrections of sheet skew
(Final Act. 6-7), (iii) to keep the buckle at an optimal level (Final Act. 7),
(iv) for the benefit that the motor control for causing deskewing is made
simpler, (v) for changing the angle of a nip to successfully deskew a sheet
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Application 12/560,902
(Final Act. 8), and (vi) to make the step of deskewing and laterally
registering the sheet more efficient (Final Act. 8-9).
Appellants' arguments that (i) the Examiner has picked and chosen
from the seven references in a piecemeal fashion (App. Br. 26-31 ); and (ii)
that the Examiner relied on impermissible application of hindsight
reasoning, are unpersuasive for at least the following reasons. First, reliance
on a large number of references in a rejection does not, without more, weigh
against the obviousness of the claimed invention. In re Gorman, 933 F.2d
982 (Fed. Cir. 1991) (affirming a rejection based on thirteen prior art
references). See also MPEP 2145(V). Second, all of the references of Choi,
Yeo, Quesnel, Takeda, Takahashi, Yamane, and Matsumura pertain to the
field of electrophotography. Third, we agree with the Examiner that (i) a
person of ordinary skill in the art would know how to add structures and
functions of Yeo, Quesnel, Takeda, Takahashi, Yamane, and Matsumura to
the registration device taught by Choi, and (ii) to do so would have been
obvious (Final Act. 6-9; Ans. 9-10). Fourth, Appellants do not adduce any
evidence that the knowledge relied upon by the Examiner could only have
been gleaned from the disclosures of Appellants' Specification or from
knowledge outsidethe level of ordinary skill at the time the claimed
invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)
The Examiner is correct that Choi teaches a stalled roll registration
nip as required by the claim language (Final Act. 3--4; Ans. 5, 7-8). We
note that each reference cited by the Examiner must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One
cannot show non-obviousness by attacking references individually where the
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Appeal2013-010948
Application 12/560,902
rejections are based on combinations of references) (citation omitted). In
this light, we are not persuaded by Appellants' argument (App. Br. 25-26)
that the combination of Choi, Yeo, Quesnel, Takeda, Takahashi, Yamane,
and Matsumura fail to teach the limitation in claim 10 of a "stalled roll
registration nip." Further, we disagree with Appellants' argument that the
combination suggested by the Examiner would require a substantial
reconstruction of the drive rolls of Choi to include a stalled roll roller pair,
and that this "would have changed its principle of operation from a sheet
registration system that does not need to stall its registration roll to a stalled
roll registration nip paper registration system" (App. Br. 26; Reply Br. 8-9).
After all, Choi discloses nip rolls 26 and 28 above drive rolls 14 and 16 at
paragraph 21 as cited by the Examiner (Final Act. 3). The combination set
forth in the rejection, however, does not require a substantial reconstruction
of Choi' s registration device. Rather, as the Examiner states (Ans. 8), the
"nip formed with roller sections 14 and 16 reads on the claimed stalled roll
registration nip because it is a nip used for deskewing and registration in a
similar manner to the disclosed stalled roll registration nip 33 of the instant
application" (Ans. 8). The Examiner's proposed modification is thus a mere
substitution of one element for another known in the field to yield a
predictable result. KSR, 550 U.S. at 416 (citing United States v. Adams, 383
U.S. 39, 50-51 (1966)).
In the Reply Brief, Appellants argue that the Examiner's progression
of substitutions is similar "to add[ing] a turbocharger to a dump truck to
make a race car" which Appellants contend is an illogical substitution
(Reply Br. 11-12). This argument is, however, waived as it was raised for
the first time in the Reply Brief without a showing of good cause. See 3 7
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Application 12/560,902
C.F.R. § 41.41(b)(2) (2012); see also Ex parte Borden, 93 USPQ2d 1473,
1474 (BPAI 2010) (informative) ("[T]he reply brief [is not] an opportunity
to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner's rejections, but were not.").
Even assuming arguendo that this argument were timely, we disagree
with Applicants' conclusion that the Examiner's combination is an illogical
substitution analogous "to add[ing] a turbocharger to a dump truck to make a
race car" (Reply Br. 11-12). To address Appellants' analogy, it is not
enough to say adding a turbocharger to a dump truck to make a race car is
illogical. First, the turbocharger was invented for diesel engines in 1905 by
Alfred Biichi who was the head of diesel engine research for Sulzer
Brothers, Ltd. 1 Second, dump trucks are generally powered by diesel
engines for their exceptional efficiency in high torque applications. 2 Third,
both Banks Power3 and Diesel Power Products4 are American companies
devoted to designing and/ or selling turbo systems for diesel engines
including the Ford F450 platform which is commonly used for dump trucks.
Fourth, racing is commonly defined as competing with another to determine
1 M. Hanlon, The turbocharger turns 100 years old this week. Gizmag. Nov.
17, 2005, http://www.gizmag.com}go/4848/
2 C. J. Baker, Why diesels make so much torque, Banks Power, Sept. 27,
2008, http://bankspower.com/techarticles/show/27-why-diesels-make-so-
much-torque (last visited July 18, 2016).
3 Banks Power Factory Direct, http://shop.bankspower.com/ (last visited July
18, 2016).
4 Diesel Power Products America's Diesel SuperstoreTM,
h1112;li~1Y:w:,_di~_§_~l:RQ~Y~nn:Q_Q!!9-!!~U~Q_ml (last visited July 18, 2016).
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Appeal2013-010948
Application 12/560,902
who is the fastest and it is a common practice for racetracks to invite
turbocharged dump trucks to race. 5 Indeed, absent some countervailing
evidence, for example that a turbocharger would not predictably work when
added to a dump truck's engine, these four facts together likely make it an
obvious and logical substitution to add a known turbocharger to a known
dump truck to make a turbocharged dump truck suitable for some type of
racing. See KSR, 550 U.S. at 416. Here, Appellants have not presented
persuasive evidence that it would have been illogical to turbocharge a dump
truck for racing or to substitute known components of electrophotographic
devices, and we therefore do not agree with Appellants' argument that both
hypothetical combinations are similarly illogical (Reply Br. 11-12).
In view of the foregoing, Appellants have not sufficiently shown that
the Examiner erred in finding that (i) it would have been obvious to modify
Choi with the teachings of Yeo, Quesnel, Takeda, Takahashi, Yamane, and
Matsumura, or (ii) the combination of Choi, Yeo, Quesnel, Takeda,
Takahashi, Yamane, and Matsumura teaches or suggests the stalled roll
registration nip recited in representative claim 10. Accordingly, we sustain
the obviousness rejection of representative claim 10 based upon the
combined teachings and suggestions of Choi, Yeo, Quesnel, Takeda,
5 See e.g., Dump Truck Drag Races, truckerfunlive,
https://www.youtube.com/watch?v=NhkxXDrQl\!1gw, last visited July 18,
2016).
Dump Truck Race, jboog957,
https://www.youtube.com/watch?v=OEmYoFBrr 4, (last visited July 18,
2016).
Dump Truck Drag Racing El Patron Del Mal, mundodieseltv.com,
httQs://www.youtube.com)watch?v=SHyKSgsqVU (last visited July 18,
2016) ..
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Application 12/560,902
Takahashi, Yamane, and Matsumura. Because Appellants assert that claims
2, 5-9, 11 and 14--18 stand or fall with claims 1 and 10 from which these
claims ultimately depend, and for similar reasons as discussed with regard to
representative claim 10, we also sustain the obviousness rejection of claims
2, 5-9, 11, and 14--18 over the combination of Choi, Yeo, Quesnel, Takeda,
Takahashi, Yamane, and Matsumura. For similar reasons, and because
Appellants do not present separate arguments as to claims 3 and 12, we also
sustain the obviousness rejection of claims 3 and 12 over the combination of
Choi, Yeo, Quesnel, Takeda, Takahashi, Yamane, Matsumura, and
Williams.
CONCLUSION
The Examiner did not err in rejecting claims 1-3, 5-12, and 14--18 as
being unpatentable under 35 U.S.C. § 103(a), because (a) Choi, Yeo,
Quesnel, Takeda, Takahashi, Yamane, and iviatsumura are properly
combinable; and (b) the combination of Choi, Yeo, Quesnel, Takeda,
Takahashi, Yamane, and Matsumura teaches or suggests the limitations of
representative claim 10.
DECISION
The Examiner's rejections of claims 1-3, 5-12, and 14--18 are
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)(l )(iv).
AFFIRMED
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