Ex Parte NISHI et al

Patent Trial and Appeal Board

Jul 31, 2018

14450876 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/450,876 08/04/2014
32628 7590 08/02/2018
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
FIRST NAMED INVENTOR
Yuki NISHI
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.
SIG-182 2982
EXAMINER
SUAREZ, ERNESTO A
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
office@uspatentagents.com
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUKI NISHI and T ATSUY A SHIMIZU
Appeal2017-010746
Application 14/450,876
Technology Center 3600
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yuki Nishi and Tatsuya Shimizu ("Appellants") 1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-5, 7, 9,
10, and 13-15. 2 We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellants, the real parties in interest are Canon Finetech
Inc. and Nisca Corporation. Appeal Br. 2.
2 Claims 6, 11, and 12 are cancelled. See Amendment (Sept. 14, 2016).
Appeal2017-010746
Application 14/450,876
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A sheet conveying apparatus, comprising:
a first conveying path through which a sheet is conveyed;
a second conveying path through which a sheet is
conveyed;and
a stack portion includes a first stack portion and a second
stack portion, the second stack portion moving independently
from the first stack portion around an axis intersecting with a
sheet conveyance direction of a sheet conveyed to the second
conveying path, the second stack portion stacking sheets
conveyed through the second conveying path in cooperation with
the first stack portion, the second stack portion having a part
arranged on an upstream side from the axis in the sheet
conveyance direction, the part moving around the axis between
a first position where a sheet is conveyed through the first
conveying path and a second position where the first conveying
path is exposed to outside,
wherein the second stack portion is located at an upstream
side of the first stack portion in the sheet conveyance direction,
and
when the part is seen in an extending direction of the axis
such that the part is located on a right side of the axis and is
located above the first conveying path, the part moves counter
clockwise from the first position and then is located in the second
position.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kato
Watanabe
Nagata
us 6,112,047
US 6,340,157 B 1
US 6,824,128 B2
2
Aug.29,2000
Jan.22,2002
Nov. 30, 2004
Appeal2017-010746
Application 14/450,876
REJECTIONS
I. Claims 1-5, 9, 10, and 13-15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Kato and Watanabe. Final Act. 2---6.
II. Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable over
Kato, Watanabe, and Nagata. Id. at 7.
OPINION
Rejection I
The Examiner finds that Kato teaches most of the limitations of
independent claim 1, including, inter alia,
a second stack portion (188), the second stack portion moving
independently from the first stack portion around an axis (191)
... [and] having a part arranged on an upstream side from the
axis in the sheet conveyance direction, the part moving around
the axis between a first position (Fig. 18) where a sheet is
conveyed through the first conveying path and a second position
(Fig. 20) where the first conveying path is exposed to outside,
(Cl 1/L41 +)[, and] ... wherein the part is seen in an extending
direction of the axis such that the part is located on a right side
of the axis and is located above the first conveying path, the part
moves clockwise from the first position and then is located in the
second position.
Final Act. 3. The Examiner acknowledges that "Kato does not explicitly
recite wherein the part moves counter clockwise." Id. However, the
Examiner finds that Watanabe
teaches an equivalent structure where a stack portion (33)
includes a part (Figs. 1-2) arranged on an upstream side of a
pivot axis (34) in a sheet conveying direction and above a first
conveying path (32), wherein the stack portion moves from an
equivalent first position (Fig. 1) to an equivalent second position
(Fig. 2) to expose the first conveying path to the outside, and
when the part is seen in an extending direction of the axis such
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Application 14/450,876
that the part is located on right side (back view; 180 rotation
about vertical axis of the front view shown in Figs. 1-2) above a
first conveying path (32), the part moves counter clockwise from
the first position to the second position.
Id. at 3--4. The Examiner determines that it would have been obvious
to alternatively arrange Kato's second stack portion, axis and part
thereof such that when the part is seen in an extending direction
of the axis, where the part is located on a right side of the axis
and is located above the first conveying path, the part moves
counter clockwise from the first position to the second position,
as taught by Watanabe, for the purpose of attaining the desired
result of exposing the first conveying path to the outside to
remove any jammed sheets and maintain parts of the first
conveying path.
Id. at 4.
Appellants argue that it would not have been obvious to modify
Kato' s second stack ( element 188) to rotate in a counter-clockwise direction,
as proposed by the Examiner. Appeal Br. 5-9; Reply Br. 3--4. In particular,
Appellants assert that such a modification would impede Kato's objectives
of fully opening the first conveying path 180 and obtaining the same jam
processing space. Appeal Br. 6-8 (citing Kato, col. 11, 11. 24--34, 39--44).
According to Appellants, changing the rotation direction of Kato' s cover
part 188 would prevent conveying path 180 from substantially fully opening
because the rotational axis would block part of path 180. Id. at 7-8
(including Appellants' "Fig. A," an annotated reproduction of Kato, Fig. 21 ).
Appellants also maintain that such a modification would result in a much
narrower jam processing space. Id. at 8-9 (including Appellants' "Fig. B"
and "Fig. C," annotated reproductions of Kato, Fig. 21).
We are not persuaded by Appellants' argument. Here, the Examiner
takes the position that the proposed modification of Kato would "maintain[]
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Appeal2017-010746
Application 14/450,876
the original functionality while providing the added benefit of exposing the
upstream portion of the path near guide 186 to a user to remove a jammed
sheet." Ans. 3--4 (emphasis added). That the proposed modification may
impact the manner in which, and the extent to which, the first conveying
path is opened and jam processing space is obtained suggests that the
Examiner's proposed modification of Kato involves tradeoffs; however,
such considerations do not necessarily preclude the proposed combination.
See Medichem, S. A. v. Rolabo, S. L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
("a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine"); Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense
of another benefit, however, should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.").
Given this acceptable consideration of tradeoffs, and Appellants' failure to
specifically address or identify effor in the Examiner's position that
modifying Kato 's transport cover part 188 to rotate counter-clockwise would
advantageously expose the upstream portion of the conveyance path near
guide 186 for removing a jam (Ans. 4), we are unpersuaded by Appellants'
argument .._,
Moreover, to the extent Appellants are arguing that the proposed
modification would render Kato unsatisfactory for its intended purpose, such
an argument is unpersuasive because Appellants too narrowly define the
intended purpose of Kato. We agree with the Examiner that, even after the
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Application 14/450,876
Examiner's proposed modification, "the original purpose of exposing the
first conveying path in Kato is still accomplished." Adv. Act. 2.
For the foregoing reasons, Appellants do not apprise us of error in the
Examiner's conclusion that the combination of Kato and Watanabe renders
obvious the subject matter of independent claim 1. We sustain the rejection
of claim 1, and of claims 2-5, 9, 10, and 13-15, for which Appellants rely
on the same arguments and reasoning as claim 1 (Appeal Br. 10), under
35 U.S.C. § 103 as unpatentable over Kato and Watanabe.
Rejection II
In contesting the rejection of claim 7, Appellants rely on the same
arguments and reasoning we found unpersuasive in connection with
independent claim 1, from which this claim depends. Id. Accordingly, we
also sustain the rejection of claim 7 under 35 U.S.C. § 103 as unpatentable
over Kato, Watanabe, and Nagata.
DECISION
The Examiner's decision to reject claims 1-5, 9, 10, and 13-15 under
35 U.S.C. § 103 as unpatentable over Kato and Watanabe is affirmed.
The Examiner's decision to reject claim 7 under 35 U.S.C. § 103 as
unpatentable over Kato, Watanabe, and Nagata is 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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