Ex Parte Kawai et al

Board of Patent Appeals and Interferences

Jun 16, 2009

10878531 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKAMITSU KAWAI and KAZUHITO ISHIDA
____________

Appeal 2009-001902
Application 10/878,531
Technology Center 3600
____________

Decided1: June 17, 2009
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/878,531

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STATEMENT OF THE CASE
Takamitsu Kawai and Kazuhito Ishida (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 6-9 and
11-21.2 We have jurisdiction under 35 U.S.C. § 6(b) (2002). An oral
hearing was conducted on May 19, 2009, with Jesse O. Collier, Esq.,
appearing on behalf of Appellants.

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to a sheet presser employed
to press down, onto a supporting surface, a portion of a document being fed
through, for example, an imaging device such as a fax machine. The sheet
presser has a pressing member and a biasing member which biases the
pressing member around a pivot shaft, such that, when the biasing member
biases the pressing member toward the sheet, an acute angle is formed
between a predetermined direction of conveyance of the sheet and a portion
of the pressing member that contacts the sheet. This aspect of the invention

2 Appellants state, in their Appeal Brief, that claims 1-9 and 11-22 are on
appeal, and the Examiner concurs, in the Examiner’s Answer, that this
statement as to the status of the claims is correct. However, the record
evidences that an Amendment after Final Rejection canceling claims 2-5
was filed on December 19, 2006, and was entered via an Advisory Action
mailed January 18, 2007. In addition, claim 22 is not rejected, but rather is
objected to as being dependent on a rejected base claim. (Appeal Br. 4).
Original claim 10 was canceled at an earlier stage in the prosecution of the
application. The decision on appeal is thus directed to pending and rejected
claims 1, 6-9 and 11-21.
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is alternatively claimed as forming a wedge-shaped space between the
supporting surface and a portion of the pressing surface of the pressing
member. (Appeal Br., Claims Appendix, claims 1, 9). Claims 1 and 9,
reproduced below, are representative of the claimed subject matter:
1. A sheet presser, comprising:

two pivot shaft portions fixedly disposed
substantially coaxially with each other and
substantially parallel to a sheet of a document as
conveyed in a predetermined direction;

a pressing member pivotably mounted on the pivot
shaft portions; and

a biasing member which biases the pressing
member around the pivot shaft portions in a
direction to press the sheet,

wherein the pressing member has a pair of
elongate bearing bores, each of which is long in a
direction substantially perpendicular to a surface of
the sheet, and which are formed in respective
portions which are distant in a lateral direction of
the pressing member to bear the respective pivot
shaft portions; and

the biasing member biases the pressing member
such that at least one of the pivot shaft portions is
held in contact with a remote end of the
corresponding beating bore which is one of
opposite ends of the bearing bore and away from
the sheet, so that an acute angle is formed, between
the predetermined direction of conveyance of the
sheet and a portion of the pressing member that
contacts the sheet, when the pressing member is
held within a predetermined range.

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9. A sheet presser for pressing onto a supporting
surface a portion of a sheet of a document which is
being fed in a predetermined conveyance direction
while the sheet being supported by the supporting
surface, the portion of the sheet being elongate in
the width direction of the sheet, the sheet presser
comprising:

a pressing member having a planar portion which
is provided with a pressing surface, the pressing
surface being long in the width direction of the
sheet;

a holding member which is disposed such that the
holding member is not movable relatively to the
supporting surface and which holds the pressing
member such that the pressing member is
pivotable about an axis which is substantially
parallel to the width direction, wherein a position
of the axis relative to the supporting surface is set
such that, while a contact end of the pressing
surface of the pressing member held by the holding
member, is held in contact with the supporting
surface, there is formed a wedge-shaped space
between the supporting surface and a portion of the
pressing surface in the conveyance direction, the
contact end being one of opposite ends of the
pressing surface;

a biasing member which biases the pressing
member in a manner to have the pressing member
pivot around the axis in a direction to move the
pressing surface toward the supporting surface;
and

a close contact keeping device which maintains
close contact between a substantially entire length
of the contact end and the supporting surface by a
biasing force of the biasing member, even when a
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parallelism between the contact end and the
supporting surface in the width direction is lost due
to a position error of the sheet presser relative to
the supporting surface.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hasegawa US 5,825,513 Oct. 20, 1998

The Examiner has rejected:
(i) claims 1, 9, 11, 13, 14, 17, and 19-21 under 35 U.S.C. § 102(b) as
being anticipated by Hasegawa; and
(ii) claims 6-8, 12, 15, 16, and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Hasegawa.
ISSUES
The Examiner found that the Hasegawa patent identically discloses a
sheet presser having a pressing member that, when biased toward the sheet,
forms an acute angle between a predetermined direction of conveyance of
the sheet and a portion of the pressing member that contacts the sheet; and
discloses that a portion of the pressing surface of the pressing member
contacts the supporting surface and forms a wedge-shaped space between
that contact portion and the supporting surface. The Examiner also
concluded that certain aspects of the invention as set forth in several
dependent claims would have been obvious in view of Hasegawa.
Appellants urge that no acute angle is disclosed as being formed in
Hasegawa between a direction of sheet conveyance and a portion of the
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pressing member that contacts the sheet, and that no wedge-shaped space is
formed between a sheet supporting surface and a portion of the pressing
surface that contacts the sheet supporting surface in the Hasegawa device.
The issue joined in this appeal is: have Appellants demonstrated that
these findings made by the Examiner are in error?

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. Hasegawa discloses a sheet feeding device in which an acute
angle is formed between a downwardly angled portion of a pressing member
(document guide member 32) and an underlying structure, namely, reading
surface 10a having spacing elements (protrusion 18a of longitudinal
document positioner 18, protrusion 19a of transverse document positioner
19) disposed on an upper surface thereof. (Hasegawa, Figs. 8, 9(a); col. 7, ll.
36-48).
FF 2. The direction of conveyance of the sheet in Hasegawa appears
to maintain the sheet in a parallel orientation to the pressing member as the
sheet is conveyed. (Hasegawa, Fig. 9(a)). As such, no acute angle is formed
between the direction of conveyance of the sheet and any portion of the
pressing member that may contact the sheet.
FF 3. Hasegawa employs the document positioners or guide members
18, 19, and especially protrusions 18a, 19a thereof, on the upper surface of
the document sheet supporting surface 10a, so as to ensure that an
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appropriate gap between the supporting surface and the document guide
member (corresponding to the claimed pressing member) is established and
maintained. (Hasegawa, Figs. 8, 9(a); col. 7, ll. 46-51). This establishment
and maintenance of a gap between these two elements in the Hasegawa
device results in a structure in which no portion of the document guide
member (pressing member) is in contact with the document sheet supporting
surface.
FF 4. The Examiner’s findings do not address what portion or
portions of the Hasegawa pressing member contact the sheet being fed
through the device. (Answer, passim).

PRINCIPLES OF LAW
Anticipation under 35 U.S.C. § 102 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.” Verdegaal Bros., Inc. v. Union
Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987).
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” The question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S.
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398, 406-07 (2007)(“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”).

ANALYSIS
Claims 1, 9, 11, 13, 14, 17 and 19-21
The Examiner’s position is that the Hasegawa reference identically
discloses all claim elements set forth in these claims. Appellants argue that
Hasegawa does not disclose, relative to independent claim 1, that “an acute
angle is formed, between the predetermined direction of conveyance of the
sheet and a portion of the pressing member that contacts the sheet, …”.
(Appeal Br. 10 (emphasis omitted)). Appellants further argue, relative to
independent claim 9, that Hasegawa does not disclose, “a contact end of the
pressing surface of the pressing member … held in contact with the
supporting surface, [such that] there is formed a wedge-shaped space
between the supporting surface and a portion of the pressing surface in the
conveyance direction …”. (Id. (emphasis omitted)).
The Examiner’s position as to Appellants’ contentions is best
articulated at pages 8 and 9 of the Examiner’s Answer. There, the Examiner
reproduces Figures 9(a) and 9(b) of Hasegawa, and adds annotations to
clarify which portions of the Hasegawa structure are asserted to read on the
claim elements at issue.
Taking first the issue joined with respect to claim 1, the Examiner
points to a region in the Hasegawa device where an acute angle is formed
between a downwardly angled portion of a pressing member (document
guide member 32) and the underlying structure, a reading surface 10a
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having spacing elements (protrusion 18a of longitudinal document
positioner 18, protrusion 19a of transverse document positioner 19) disposed
on an upper surface thereof. (FF 1). Claim 1, however, requires that the
acute angle be formed “between the predetermined direction of conveyance
of the sheet and a portion of the pressing member that contacts the sheet”.
(Appeal Br., Claims Appendix, claim 1). The Examiner addresses this claim
limitation by asserting that, “the pressing member has to be merely capable
of forming an acute angle with a support surface that is not part of the
claim”, and that, “[I]f the document positioner were not there, the pressing
member would form an acute angle with the support surface, and therefore
the pressing member is capable of forming such an angle.” (Answer 9).
Appellants point out, in describing a further annotated version of
Hasegawa’s Figure 9(a)(see, Reply Br. 2), that the pressing member in
Hasegawa and the direction of conveyance of the sheet in Hasegawa are
intended to maintain the sheet in a parallel orientation to the pressing
member as the sheet is conveyed. (Id.). As such, no acute angle is formed
between the direction of conveyance of the sheet and any portion of the
pressing member that may contact the sheet.3 (FF 2). Moreover, we find the
Examiner’s contentions regarding the alleged capability of the Hasegawa
pressing member to form an acute angle with an unclaimed support surface,
were the document positioning parts of the Hasegawa device removed, to be
(a) not germane to the actual claim language present in claim 1, (b)
speculative and not supported by any persuasive reasoning, and (c) not

3 The Examiner’s findings do not address what portion or portions of the
Hasegawa pressing member contact the sheet being fed through the device.
(FF 4).
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apropos to a rejection grounded in anticipation under 35 U.S.C. §102(b), as
the proposed modification is not disclosed as an alternative embodiment in
Hasegawa.
Independent claim 9 is worded somewhat differently from
independent claim 1, specifically reciting a supporting surface which
supports the document sheet being fed through the sheet presser, and a
“wedge-shaped space [formed] between the supporting surface and a portion
of the pressing surface in the conveyance direction”. (Appeal Br., Claims
Appendix, claim 9). This pressing surface is recited as being a planar
portion of the pressing member, and has a contact end that is held in contact
with the supporting surface. (Id.).
The Examiner here also points to the region in the Hasegawa device
where an acute angle is formed between a downwardly angled portion of the
pressing member and the underlying structure, a document sheet supporting
surface having spacing elements disposed on an upper surface thereof. (FF
1).
Appellants emphasize that the Figure 9(a) embodiment of Hasegawa
employs document guide members, and especially protrusions 18a, 19a
thereof, on the upper surface of the document sheet supporting surface, so as
to ensure that an appropriate gap between the supporting surface (referred to
as reading surface 10a) and the document guide member (corresponding to
the claimed pressing member) is established and maintained. (Appeal Br.
8)(FF 3). This establishment and maintenance of a gap between these two
elements in the Hasegawa device means that no portion of the document
guide member (pressing member) is in contact with the document sheet
supporting surface. (FF 3). As noted previously, claim 9 requires that a
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contact end of a pressing surface of the pressing member be held in contact
with the supporting surface, and that a wedge-shaped space be maintained
between the two. The Hasegawa device thus fails to identically disclose this
aspect of the invention of claim 9.
Claims 11, 13, 14, 17 and 19-21 depend from claim 9 and include the
claim limitations found in claim 9 that are not found in Hasegawa.
The rejection of claims 1 and 9, and of claims 11, 13, 14, 17 and 19-
21, as being anticipated by Hasegawa, will not be sustained.
Claims 6-8, 12, 15, 16, and 18
Appellants do not present any additional arguments assigning error to
the Examiner’s rejection of claims 6-8, 12, 15, 16 and 18 as being obvious in
view of Hasegawa. However, nothing in the grounds of rejection of these
claims addresses the shortcomings of the Hasegawa disclosure in failing to
teach or suggest the claim elements discussed above with respect to
independent claims 1 and 9. Since each of claims 6-8, 12, 15, 16 and 18
depends from one of these two independent claims, the rejection of the
claims under 35 U.S.C. § 103(a) is in error.
Accordingly, the rejection of claims 6-8, 12, 15, 16 and 18 as being
obvious in view of Hasegawa will not be sustained.

CONCLUSION
Appellants have established that reversible error exists in the rejection
of claims 1, 9, 11, 13, 14, 17, and 19-21 under 35 U.S.C. § 102(b) and in the
rejection of claims 6-8, 12, 15, 16, and 18 under 35 U.S.C. § 103(a).
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ORDER
The decision of the Examiner to reject claims 1, 6-9 and 11-21 is
reversed.

REVERSED

LV

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