Ex Parte Schmidt et al

Patent Trial and Appeal Board

Jul 14, 2017

13055499 (P.T.A.B. Jul. 14, 2017)

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.
13/055,499 01/24/2011 Alfred Schmidt SCHM3020/TJM/TL 5988
23364 7590 07/18/2017
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
SHAPIRO, JEFFREY ALAN
ART UNIT PAPER NUMBER
3653
NOTIFICATION DATE DELIVERY MODE
07/18/2017 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):
MAIL @B ACONTHOMAS .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALFRED SCHMIDT, PETER DOPFER, and
ERWIN DEMMELER
Appeal 2015-005474
Application 13/055,499
Technology Center 3600
Before EDWARD A. BROWN, LYNNE H. BROWNE, and
BRANDON J. WARNER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
16—25 and 27—34. Appellants’ representative presented oral arguments on
July 6, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-005474
Application 13/055,499
CLAIMED SUBJECT MATTER
The claims are directed to a device for processing valuable documents
and a method for operating the device. Claims 16 and 25 are independent.
Claiml6, reproduced below, is illustrative of the claimed subject matter:
16. An apparatus for processing documents of value comprising:
several processing zones located on the apparatus and
arranged to process documents of value, each of said several
processing zones having at least one cover moveable between an
open and a closed position, said apparatus being arranged to
detect events which require an intervention of an operator of the
apparatus;
a control unit; and
at least one actuator associated with each cover of the
several processing zones arranged to open the cover under the
control of the control unit, and said control unit arranged to
automatically operate the at least one actuator of a respective
cover upon detection of an event associated with the respective
processing zone at which the cover is located, so that said cover
automatically opens without intervention of the operator so that
the opened cover is arranged to lead an operator directly to the
processing zone in which the intervention of the operator is
required.
The prior art relied upon by the Examiner in rejecting the claims on
1 The first named inventor is Ikeda; however, the Examiner and Appellants
both refer to this reference as “Shin” (the second named inventor). In the
interest of clarity, we do so as well.
REFERENCES
appeal is:
Genth
Bally
Mori
Kogo
Shin1
US 4,811,680 Mar. 14, 1989
US 2009/0159585 A1 June 25, 2009
US 2009/0293424 A1 Dec. 3, 2009
JP 4043500 A Dec. 4, 1992
JP 2004020804 A Jan. 22, 2004
2
Appeal 2015-005474
Application 13/055,499
REJECTIONS
I. Claims 16, 17, 19, 20, 25, 31, and 34 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mori and Koga.
II. Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mori, Koga, and Bally.
III. Claims 18—20, 22—24, 27—30, and 32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable Mori, Koga, and Shin.
IV. Claims 22—24, 27, 30, and 33 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Mori, Kogo, and Genth.
DISCUSSION
Rejection I
Claims 16, 17, 19, 25, 31, and 34
Appellants argue claims 16 and 25 together. See, e.g., Appeal Br. 9.
Appellants do not provide separate arguments with respect to dependent
claims 17, 19, 31, or 34. See, e.g., id. at 19-20. We select claim 16 as the
illustrative claim, and claims 17, 19, 25, 31, and 34 stand or fall with claim
16.
The Examiner finds that Mori discloses the limitations of claim 16
except for
at least one actuator associated with each cover of the
several processing zones arranged to open the cover under the
control of the control unit, and
said control unit arranged to automatically operate the at
least one actuator of a respective cover upon detection of an
event associated with the respective processing zone at which the
cover is located, so that the opened cover[ed] (s.i.c.) is arranged
to lead an operator directly to the processing zone in which the
intervention of the operator is required.
Final Act. 3 (emphasis omitted). The Examiner further finds that:
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Application 13/055,499
Koga discloses a control unit (29) and at least one actuator (21,
24) associated with a cover (2) of a processing zone represented
by element (28) as illustrated in figure 1 and mentioned in the
“constitution” section as the position where paper is jammed, as
detected by sensor (27), i.e., the processing zone arranged to
open the cover under the control of the control unit, and
said control unit arranged to automatically operate the at
least one actuator (21, 24) of a respective cover (2) upon
detection, i.e., by sensor (27), of an event, i.e., a paper jam,
associated with the respective processing zone (28) at which the
cover is located, so that said cover (2) automatically opens
without intervention of the operator, as mentioned at the
“constitution” section, so that the opened cover[ed] (s.i.c.) (2) is
arranged to lead an operator directly to the processing zone in
which the intervention of the operator is required, as illustrated
in figures 2—6.
Id. at 4 (emphasis omitted). Based on these findings, the Examiner
determines that it would have been obvious
to have provided a control system portion, sensors, door locks
and door actuators, as taught by Koga, in Mori’s apparatus for
processing documents for the purpose of automatically opening
one of Mori’s doors covering one of Mori’s processing zones,
thus alerting an operator to a malfunction of the processing
apparatus in a particular zone by not only displaying a notice on
a display, and not only by lighting a particular light near said
zone, but also automatically opening the cover to the zone where
the malfunction is located.
Id. (emphasis added). The Examiner further reasons that “[tjherefore,
Mori’s device would have been provided with additional functionality for
identifying the location of a malfunction to an operator.” Id. at 5.
Appellants contend that “1. The skilled person would not have been
motivated or led to modify the sheet processing apparatus of Mori in
accordance with the teachings of Koga to result in the features and steps
recited in claims 16 and 25” and “2. The proposed combination of the sheet
processing apparatus of Mori in accordance with the teachings of Koga
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Application 13/055,499
would have failed to result in each and every feature or step recited in claims
16 and 25.” Appeal Br. 9, 13; see also Reply Br. 4, 9.
Appellants’ arguments in support of these contentions are repetitive.
In the interest of brevity, we only address each argument once. Further,
most of Appellants’ arguments essentially attack the references separately
rather than address their combined teachings. See, e.g., Appeal Br. 11
(Appellants argue that “Mori only discloses an electromagnetic lock for
locking the stacking storage cover and a door detecting device for detecting
when a door is opened” and that “Kogo only discloses a single main door
that is opened to remove the jammed recording paper.”)2 However,
nonobviousness cannot be established by attacking the applied references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
As noted above, the Examiner determines that the combination of Mori and
Koga discloses all of the limitations of claim 16, and articulates reasons for
combining the teachings of Koga with Mori to result in the claimed
apparatus. Whether or not any particular limitation is missing from a single
applied reference is, therefore, irrelevant. As such arguments addressing the
references individually do not apprise us of any error in the Examiner’s
findings or articulated reasoning, we do not find them to be persuasive.
Appellants contend that “the Examiner fails to provide sufficient factual
evidence to show that it would have been obvious to modify the sheet
processing apparatus of Mori in accordance with the teachings of Koga to
2 We further note that many of these arguments contest facts that are not
relied on by the Examiner and, thus, are not in dispute. For example, the
Examiner acknowledges that Mori does not disclose actuators for opening
the covers for the processing zones and that Kogo discloses a single cover.
See Final Act. 3^4.
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Application 13/055,499
result in the features and steps recited in claims 16 and 25.” Appeal Br. 9,
12, 13; see also Reply Br. 9. However, Appellants do not identify, nor is it
readily apparent, what factual evidence is lacking in the rejection. Thus,
Appellants do not apprise us of error.
Appellants further argue that “the Examiner is using impermissible
hindsight bias to piece-meal the prior art teachings to result in the claimed
invention.” Id. However, Appellants do not identify any knowledge relied
upon by the Examiner that was gleaned only from Appellants’ disclosure
and was not otherwise within the level of ordinary skill at the time of the
invention, thereby obviating Appellants’ assertion of hindsight. See In re
McLaughlin, 443 F.2d 1392 (CCPA 1971).
Next, Appellants contend that “the Examiner has not provided the
necessary objective reasoning with rational underpinning to show that the
skilled person would have been motivated or led to modify the sheet
processing apparatus of Mori in accordance with the teachings of Koga.”
Appeal Br. 9, 12; see also Reply Br. 4, 5, 8.
In support of this contention, Appellants argue that the rejection does
not provide
evidence in the prior art references or that can be derived from
general knowledge and common sense that the skilled person
would have been led or motivated to have modified the doors
units of Mori so that all of the doors of the units would have the
actuator and fulcrum structure as disclosed in Koga so that all of
the doors of the units can be opened when a jam in the unit is
detected.
Id. at 12; see also Reply Br. 5.
Appellants’ contentions do not address the reasons articulated by the
Examiner (quoted supra) for the proposed modification. Rather, Appellants
baldly assert that the reasoning lacks rational underpinning without further
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explanation. Id. Moreover, to the extent that Appellants are asserting that
Kogo can only suggest automation of a cover for a control unit and not
automation of a cover of a production zone, Appellants do not explain why
Kogo’s teachings are so limited. Keeping in mind that “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton,” we
are not persuaded that Kogo’s teaching of automatically opening a single
main cover would not suggest the opening of multiple covers. KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
In addition, Appellants contend that
the Examiner has not provided the necessary evidence to
establish that the proposed modification of the sheet processing
apparatus of Mori in accordance with the teachings of Kogo
would have at least resulted in “said cover automatically opens
without intervention of the operator so that the opened cover is
arranged to lead an operator directly to the processing zone in
which the intervention of the operator is required,” as recited in
claim 16.
Appeal Br. 14, 15, 18 (emphasis omitted); see also Reply Br. 8, 10.
Again, Appellants do not identify what evidence is missing in the
proposed rejection. Rather, Appellants admit that
Mori discloses a sheet processing apparatus 100 composed of a
first unit 102, a second unit 103, a third unit 104, a fourth unit
105, and sixth unit 106, where each of the units is equipped with
doors 102a, 102b, 103a, 103b, and 104a, 104b, etc., so as to
access devices in the respective units.
Id. (citing Mori || 22—25, emphasis omitted). Appellants also admit that
Kogo “discloses a main door that is opened to remove the jammed recording
paper.” Id. at 17; see also Reply Br. 6—7. Thus, Appellants do not show that
the facts relied on in the rejection are insufficient to support a prima facie
case of obviousness.
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In the Reply Brief, Appellants essentially repeat the same arguments
raised in the Appeal Brief. See generally Reply Br. These arguments are
unconvincing for the reasons discussed supra.
For these reasons, we sustain the Examiner’s decision rejecting claim
16, and claims 17, 19, 25, 31, and 34, which fall therewith.
Claim 20
The Examiner finds that
Mori discloses wherein the apparatus is arranged to indicate the
automatic opening of the cover by one or more additional signals,
such as a signal to lamp (71m), as mentioned at paragraph 61,
through sensors (104c) arranged to detect the completely opened
and completely closed position of the cover (104a), as illustrated
in figure 3 and mentioned at paragraphs 46-48.
Final Act. 6.
Appellants contend that “the Examiner has improperly interpreted the
prior art to reach an implausible result.” Appeal Br. 20. In support of this
contention, Appellants note that
the skilled person would have appreciated that the cover
opening-closing permission display lamp 71m is only an
indication that access to the stacking device 71 is allowed (see
paragraph [0054]). Only after the opening of the door of the unit
is the cover opening-closing permission display lamp 71m
visible to notify that the stacking device 71 is in the unlocked
state and can be accessed to the operator (see paragraph [0060]).
Id. (emphasis omitted). Based on this observation, Appellants argue that
“Mori only discloses a cover opening-closing permission display lamp to
indicate whether access to the stacking device is allowed, but fails to
disclose ‘the apparatus is arranged to indicate the automatic opening of the
cover by one or more acoustic and/or visual signals’ as recited in claim 20.”
Id. at 21 (emphasis omitted).
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Appellants’ argument is not responsive to the rejection as articulated
by the Examiner. Claim 20 depends from claim 16. As discussed supra, in
the proposed combination, one of Mori’s zone covers is automatically
opened in response to an event detected in a zone. See Final Act. 4. Once
the appropriate cover is open, Mori’s permission display lamp 71m would be
visible to the operator, thus indicating that the cover has been automatically
opened. See Final Act. 6.
For this reason, we sustain the Examiner’s decision rejecting claim 20
as unpatentable over Mori and Kogo.
Rejections II—IV
Appellants do not present separate arguments contesting the rejections
of claims 18, 21—24, 27—30, 32, and 33 as set forth in Rejections II—IV. See
Appeal Br. 19-20. Accordingly, we sustain the Examiner’s decision
rejecting claim 21 as unpatentable over Mori, Kogo, and Bally, rejecting
claims 18—20, 22—24, 27—30, and 32 as unpatentable over Mori, Kogo, and
Shin, and rejecting claims 22—24, 27, 30, and 33 as unpatentable over Mori,
Kogo, and Genth.
DECISION
The Examiner’s rejections of claims 16—19, and 21—25 and 27—34 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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