Ex Parte Mandel et al

Board of Patent Appeals and Interferences

May 22, 2012

11141545 (B.P.A.I. May. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/141,545 05/31/2005 Barry Paul Mandel 1776-0046 5430
76360 7590 05/23/2012
MAGINOT, MOORE & BECK LLP
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
GOKHALE, PRASAD V
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
05/23/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BARRY PAUL MANDEL, JOANNES N. M. DEJONG, and
LLOYD A. WILLIAMS
____________________

Appeal 2010-004199
Application 11/141,545
Technology Center 3600
____________________

Before: JOHN C. KERINS, WILLIAM V. SAINDON, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004199
Application 11/141,545
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The claimed invention involves a paper transport device (e.g., a
printer or copier) having a de-skewing feature. “Skew” is the angle of the
leading edge of a sheet being transferred with respect to the direction of
transfer. Spec. 1:9-14. Claim 1, reproduced below, is illustrative of the
claimed subject matter.
1. A sheet transport system comprising:
a nip and idler roller assembly for moving a sheet along a
sheet transport path, the nip and idler roller assembly having a
length that substantially spans the sheet transport path;
a lateral motion motor coupled to the nip and idler roller
assembly for moving the nip and idler roller assembly along an
axis substantially crosswise to the sheet transport path to
provide lateral alignment of the sheet; and
a de-skew assembly coupled to the nip and idler roller
assembly for pivoting the lateral motion motor and the nip and
idler roller assembly about a pivot axis that extends
perpendicular to the sheet transport path and proximate to the
lateral motion motor, to de-skew the sheet.

The Examiner relies upon the following prior art references:
Wong
Herrmann
US 4,836,527
US 6,736,394 B2
Jun. 6, 1989
May 18, 2004
Suga US 2005/0035536 A1 Feb. 17, 2005
Appeal 2010-004199
Application 11/141,545
3

The Examiner makes the following rejections:
I. Claim 13 is rejected under 35 U.S.C. § 112, second paragraph, for
being indefinite.1
II. Claims 1-3, 7-10, 13, 15-18, and 20 are rejected under § 102(a) as
anticipated by Suga.
III. Claims 4 and 11 are rejected under § 103(a) as unpatentable over Suga
and Wong.
IV. Claims 5, 6, 12, 14, and 19 are rejected under § 103(a) as unpatentable
over Suga and Herrmann.

OPINION
Rejection II: Anticipation by Suga
Independent claims 1, 7, and 17 require, in some form, a de-skew
assembly having a pivot axis proximate to a lateral motion motor. The
Examiner found that Suga anticipates this limitation; Appellants challenge
the Examiner’s finding. Ans. 4, 5-6, 7-8; App. Br. 12-13. The issue turns
on the meaning of the term “proximate.” We first look at the Suga device.
Suga’s frame 10 houses roller pair 2 (which convey the sheets) and
lateral motion motor 20 (which adjusts the sheet transverse to the conveying
direction). See fig. 8. The de-skew assembly in Suga works by pivoting
frame 10 about pivot shaft 14, correcting the condition (“skew”) leading to
one corner of a conveyed sheet reaches the rollers first. See Suga, paras.
[0103]-[0106] and fig. 14C vs. 15A. Frame 10 is pivoted about shaft 14 by
the motion of de-skew motor 24 to effect the de-skew operation. Suga, para.
[0069]; see also fig. 21A. Notably, pivot shaft 14 is located towards the
middle of frame 10 while lateral motion motor 20 is mounted to one end of

1 Appellants present no arguments in response to Rejection I. Therefore, we
summarily sustain it.
Appeal 2010-004199
Application 11/141,545
4
the frame 10. See fig. 3. The point of contention revolves around this last
fact.
The Examiner finds that the pivot shaft 14 and lateral motion motor
20 are “proximate” because they are “close to” each other. Ans. 15. The
Examiner reasons that the middle of the frame is close to the end of the
frame. Ans. 15-16. Appellants argue that the Examiner has not given
appropriate weight to the term “proximate.” Appellants hinge their
argument on portions of the Specification that allegedly serve to distinguish
between systems having a pivot axis “proximate” a lateral motion motor and
those having a pivot axis in the middle of the transport path. Ans. 8-10.
Appellants first point to page 4, lines 3-8 of the Specification:
The problem of pivoting the additional mass
is compounded by any distance between the mass
and the pivot axis. Specifically, the pivot for the
registration system is generally located underneath
and toward the middle of the transfer path. Thus,
the pivot axis is toward the middle of the transfer
path. The motors, however, are located at the side
of the transfer path. This separation creates a
mechanical disadvantage both when starting the
rotation and when stopping the rotation.

And then page 4, lines 16-18, under the heading “Summary”:
A sheet registration system and method that
addresses limitations of previously known systems
includes a lateral motion assembly that is located
close to the axis of rotation of a nip and idler roller
assembly.

Given these passages, Appellants contend that a pivot axis “proximate” to
the lateral motion motor is distinguishable from a pivot axis in the middle of
the transfer path. App. Br. 8-10. We are persuaded by this argument.
Appeal 2010-004199
Application 11/141,545
5
A particular embodiment appearing in the written description may not
be read into a claim when the claim language is broader than the
embodiment. SuperGuide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875
(Fed. Cir. 2004). In this case, however, we are not reading an embodiment
into the claims; rather, we are interpreting the meaning of a particular claim
limitation in light of the Specification. See In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (claim limitations must be read
“in light of the specification as it would be interpreted by one of ordinary
skill in the art.”). Even if “proximate” is not specifically defined in the
Specification, the term must be given some meaning. See Stumbo v.
Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing
claim constructions that render phrases in claims superfluous). Accordingly,
there must be afforded some difference between otherwise similar sheet
transport systems having a pivot axis and a lateral motion motor, wherein
one has the axis and motor “proximate” each other and the other does not.
Here, we find the Specification provides guidance to this effect by calling
out prior art devices having the pivot in the middle deficient (Spec., 4:8-10)
and addressing this deficiency by moving the pivot near the lateral motion
assembly (Id. 4:16-18). Accordingly, the term “proximate,” when read in
light of the Specification, distinguishes the present invention from those
having a pivot in the middle of the transport path (e.g., Suga).
Consequently, Suga does not anticipate the claimed subject matter
because the pivot 14 is in the middle of the transport path. As such, we
cannot sustain the Examiner’s anticipation rejection of claims 1-3, 7-10, 13,
15-18, and 20.

Appeal 2010-004199
Application 11/141,545
6
Rejection III: Obviousness in view of Suga and Wong
Claims 4 and 11 specifically require the pivot axis to be located
outwardly of the sheet transport path. The Examiner found that Wong
teaches this limitation. Ans. 9-10; see also Wong, fig. 1 (noting pivot 30).
The Examiner concluded that it would have been obvious to modify the
Suga device to have its pivot axis alongside the transport path, as taught in
Wong, near lateral moving motor 20. Ans. 9, 10. The Examiner reasons, for
claim 4, that this modification would be “for the purpose of obtaining
sufficient leverage with which to deskew the skewed sheet.” Ans. 9. For
claim 11, the Examiner reasons that this modification is obvious because
“both inventions are of registration systems using a pivoting device that
provides lateral registration as well as deskewing capabilities.” Ans. 10.
Appellants argue that the Examiner has not, for either claim, properly
articulated why the claimed invention would have been obvious. Reply Br.
6-7. In particular, for claim 4, Appellants argue that Suga already de-skews
a sheet, calling into question why Wong’s teaching (providing sufficient
leverage for de-skewing) would be obvious to include. Reply Br. 6. For
claim 11, Appellants argue that the Examiner has merely pointed out that
both devices provide similar capabilities but has failed to articulate why one
would want to combine the two. Reply Br. 7. Both of these arguments are
persuasive.
For claim 4, it is not clear how moving the pivot 14 in Suga would
allow sufficient leverage to de-skew the sheet. The Wong de-skewing
device operates by a nip located at the end of an arm drawing paper against
an edge to de-skew the paper. Wong, col. 6, ll. 36-68. The particular
arrangement in Wong achieves sufficient force to de-skew the sheet by
placing the pivot upstream from the nip. Wong, col. 7, ll. 51-55. The Suga
Appeal 2010-004199
Application 11/141,545
7
device operates in a different fashion. The rollers in Suga extend across the
sheet, and the paper is de-skewed by rotating these rollers. See, e.g., fig. 21.
The de-skewing action itself is not caused by the location of the pivot in
Suga, as it is in Wong. Accordingly, it is not clear how Wong’s teaching of
“sufficient leverage” by moving the pivot is relevant. In light of this, the
Examiner’s rejection of claim 4 is not premised on a reason having rational
underpinning and cannot be sustained.
For claim 11, the Examiner has not articulated any reason for
combining the references except that they are in the same field of endeavor.
Accordingly, we cannot sustain the Examiner’s rejection of claim 11.

Rejection IV: Obviousness in view of Suga and Herrmann
As Appellants point out (App. Br. 18), Rejection IV does not cure the
underlying deficiencies of Rejection II. Specifically, Rejection II is
deficient for not properly addressing the “proximate” limitation and nothing
in Rejection IV addresses this.

DECISION
We reverse the Examiner’s decision regarding Rejections II-IV and
affirm the Examiner’s decision regarding Rejection I. No time period for
taking any subsequent action in connection with this appeal may be extended
under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

hh