Ex Parte Kawano et al

Patent Trial and Appeal Board

Mar 22, 2018

14340183 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/340,183 07/24/2014
127226 7590 03/26/2018
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Masahiro KAWANO
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.
0951-0258PUS2 1171
EXAMINER
SEVERSON, JEREMY R
ART UNIT PAPER NUMBER
3653
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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 MASAHIRO KAW ANO, TAKASHI MATSUDA,
NAOKI SAITO, and KENJI OHTA
Appeal2017-006089
Application 14/340, 183 1
Technology Center 3600
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Masahiro Kawano et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision, as set forth in the Final Office
Action dated April 12, 2016 ("Final Act."), rejecting claims 1--4, 6, 9, 10,
14--16, and 19--21 as unpatentable over Mitsuhashi (US 7 ,3 86,245 B2,
issued June 10, 2008) and Kunugi (US 7,062,197 B2, issued June 13, 2006).
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify Sharp Kabushiki Kaisha as the real party in interest.
Br. 1.
Appeal2017-006089
Application 14/340, 183
CLAIMED SUBJECT MATTER
Claims 1, 6, and 10 are independent. Claim 1 is illustrative of the
claimed subject matter, and reads:
1. An image processing apparatus, comprising:
an apparatus main body whose external appearance is
configured from an upper casing that contains an image capture
portion, a lower casing that contains an image forming portion,
and a link casing that vertically links the upper casing and the
lower casing on at least one side of the image processing
apparatus in a lateral direction thereof;
a paper discharge portion provided between the upper
casing and the lower casing, the paper discharge portion that is
to store paper discharged from a paper discharge opening
provided on the link casing, and that has a space open on a front
side to pick up the stored paper; and
an operation panel portion that is disposed in a vertically
tiltable manner on a front face of the apparatus main body,
wherein an open space is provided between the operation
panel portion and the link casing, and
wherein an inclined face that is inclined toward the paper
discharge portion is formed in a lower portion of the front face
of the upper casing defining the open space.
Br. 16 (Claims App.).
ANALYSIS
Each of claims 1, 6, and 10 recites the limitation of "an inclined face
that is inclined toward the paper discharge portion is formed in a lower
portion of the front face of the upper casing defining the open space." Br.
16, 17, 18 (Claims App. (emphasis added)). The Examiner finds that
Mitsuhashi discloses this limitation. Final Act. 3. In support, the Examiner
provides a first annotated version of Figure 2(a), identifying the "first
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Application 14/340, 183
inclined face," which the Examiner finds to correspond to the claimed
"inclined face." Id. at 4.
Appellants contend that the "first inclined face" in Mitsuhashi is not
formed in the upper casing, but rather, is formed in the link casing that
vertically links the image capture portion to the image forming portion.
Br. 7. In response, the Examiner provides a second annotated version of
Figure 2(a) of Mitsuhashi, showing the locations of the "inclined face" and
the "upper casing." Ans. 5. The "inclined face" appears to correspond to
the same region of the apparatus as the "first inclined face" in first annotated
Figure 2(a). The Examiner maintains that the "inclined face" is "formed in a
lower portion of the front face of the upper casing defining the open space."
Id. at 5.
Mitsuhashi does not describe the apparatus shown in Figure 2(a) with
the term "link casing" or "upper casing." Nor does Mitsuhashi appear to
describe the illustrated region of the "first inclined face" or "inclined face,"
as identified by the Examiner. See Final Act. 4; Ans. 5. Nonetheless,
Appellants do not explain persuasively why the "first inclined face" or the
"inclined face" cannot be considered as formed in the "upper casing" of the
Mitsuhashi apparatus, as identified by the Examiner. See Ans. 5.
Furthermore, even if a portion of the "first inclined face" or "inclined face"
is formed in the link casing, we decline to narrowly construe the language in
claims 1, 6, and 10 that recites the inclined face "is formed in a lower
portion of the front face of the upper casing" to preclude the inclined face
from also being formed, at least partially, in the link casing. Neither the
plain meaning of this claim language nor any description in the Specification
identified by Appellants provides a clear indication the invention is limited
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Application 14/340, 183
to an inclined face that is formed solely within the lower portion of the upper
casing. Accordingly, we are not persuaded by Appellants' contention that
Mitsuhashi does not disclose the "inclined face" as recited in these claims.
However, each of claims 1, 6, and 10 also recites the limitation of "a
paper discharge portion provided between the upper casing and the lower
casing, the paper discharge portion that is to store paper discharged from a
paper discharge opening provided on the link casing." Br. 16, 17, 18
(Claims App. (emphases added)). The Examiner finds Mitsuhashi discloses
a paper discharge portion that stores paper discharged from a paper
discharge opening and is provided between an upper casing and a lower
casing (Final Act. 3), but finds Mitsuhashi does not disclose that the paper
discharge opening is provided on the link casing (id. at 4 ). The Examiner
relies on Kunugi to teach a paper discharge opening (at ejection rollers 16)
"on the side of the machine" to eject paper sheets onto an ejection tray. Id.
(citing Kunugi, col. 4, 11. 33-37). The Examiner reasons that it would have
been obvious to one of ordinary skill in the art to modify Mitsuhashi to
provide the paper discharge portion on the link casing, as taught by Kunugi,
to eject the paper sheets onto the ejection tray. Id.
Appellants disagree with the Examiner's position. Particularly,
Appellants contend Figure 1 of Kunugi shows that the link casing is on the
back (rear) side of the image forming apparatus. Br. 9, 10 (Appellants'
annotated version of Kunugi Fig. 1 identifying the "link casing").
Appellants also contend that Figure 3 of Kunugi shows that the printed
sheets are discharged from the discharge opening defined by rollers 16
provided in the lower casing. Id. at 10, 11 (Appellants' annotated version of
Figure 3 of Kunugi identifying the "Link casing," "Paper Discharge
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Application 14/340, 183
opening," and "Lower casing"). Appellants thus contend that Kunugi does
not disclose or suggest a discharge opening "provided on the link casing that
vertically links the upper casing and the lower casing," (emphasis added), as
claimed. Id. Therefore, Appellants contend, the combination of the
Mitsuhashi and Kunugi fails to disclose or suggest a paper discharge portion,
as claimed. Id.
In response, the Examiner explains that Kunugi is relied on for
teaching that the paper discharge portion is located at the side of the machine
to eject the paper sheets onto the ejection tray. Ans. 6 (citing Kunugi, col. 4,
11. 33-37). As such, the Examiner concludes that it would have been
obvious to locate the paper discharge portion in Mitsuhashi at the side of the
machine, that is, at the link casing, in view of Kunugi. Id.
Appellants have the better position as to the paper discharge portion
limitation. Each of claims 1, 6, and 10 requires the paper discharge portion
to be provided between the upper casing and the lower casing, and a paper
discharge opening to be provided on the link casing. The Examiner does not
indicate with specificity, and we are unable to determine, where the paper
discharge opening is located in Mitsuhashi's apparatus. We agree with the
Examiner insofar as Kunugi teaches locating the paper discharge opening
near the side of the apparatus to eject paper sheets via ejection rollers 16 into
an ejection space 26. See Kunugi, Figs. 1-3. However, we observe that
Kunugi' s paper discharge opening is located in the lower casing, although
the apparatus also includes a link casing. See Br. 11 (Appellants' annotated
version of Figure 3 of Kunugi). Kunugi teaches that placing the discharge
opening near the side, not on the link casing, still enables paper sheets to be
ejected from the lower casing into an ejection space. In view of this
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Application 14/340, 183
teaching, the Examiner does not explain adequately why one of ordinary
skill in the art would have instead provided the discharge opening on a link
casing in Mitsuhashi to eject paper onto an ejection tray. Accordingly, the
Examiner has not articulated an adequate reason with rational underpinning
for modifying Mitsuhashi to include "a paper discharge opening provided on
the link casing." Therefore, we do not sustain the obviousness rejection of
claims 1, 6, and 10, or of dependent claims 2--4, 9, 14--16, and 19-21.
DECISION
We reverse the Examiner's decision to reject claims 1--4, 6, 9, 10, 14--
16, and 19-21.
REVERSED
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