Ex parte Sokac et al.

Board of Patent Appeals and Interferences

Jun 4, 1998

08354387 (B.P.A.I. Jun. 4, 1998)

Application for patent filed December 12, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RUSSELL J. SOKAC, KATHLEEN M. MARTIN,
MICHAEL J. MARTIN and LLOYD W. DURFEY
____________
Appeal No. 97-2720
Application No. 08/354,3871
____________
ON BRIEF
____________
Before ABRAMS, McQUADE, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 12, which are all of the claims
pending in this application.
Appeal No. 97-2720
Application No. 08/354,387
We AFFIRM-IN-PART.
Appeal No. 97-2720 Page 3
Application No. 08/354,387
BACKGROUND
The appellants' invention relates to a sheet feeder with
a variable length sheetpath. An understanding of the
invention can be derived from a reading of exemplary claim 1,
which appears in the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Scott 760,402 May 17,
1904
DuBois 4,702,466 Oct. 27,
1987
Paxon 5,050,859 Sep. 24,
1991
Watanabe 5,101,241 Mar. 31,
1992
Claims 1, 4, 6 and 9 stand rejected under 35 U.S.C. §
102(b) as being anticipated by DuBois.
Claims 2, 3, 7 and 8 stand rejected under 35 U.S.C. § 103
as being unpatentable over DuBois in view of Watanabe.
Appeal No. 97-2720 Page 4
Application No. 08/354,387
Claims 5 and 10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over DuBois in view of Scott.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over DuBois in view of Paxon.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 10, mailed February 14, 1997) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
brief (Paper No. 9, filed November 29, 1996) for the
appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 97-2720 Page 5
Application No. 08/354,387
The anticipation issue
We sustain the examiner's rejection of claims 1, 4, 6 and
9 under 35 U.S.C. § 102(b) as being anticipated by DuBois.
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Claim 1
Claim 1 is drawn to a sheet feeding apparatus comprising,
inter alia, a fixed support for supporting a stack of sheets;
a movable feedhead contacting the stack of sheets; and a
variable length sheetpath between the feedhead and a sheet
delivery area.
DuBois discloses a sheet material feeder. As shown in
Figures 1, 5 and 6, the sheet material feeder includes a feed
Appeal No. 97-2720 Page 6
Application No. 08/354,387
tray 11, which includes a paper storage well 12, a sheet
separator mechanism in the form of a vertically movable
separator 13, and a transfer table 14. The feed tray 11 feeds
the separated sheet to main feed roller 25 of copier 10.
Sheet separator 13 is vertically movable under the force of
gravity on vertical guides 15. Transfer table 14 is pivotally
mounted to attachment members 16 by means of pins 30 carried
by each of attachment members 16. Transfer table 14 comprises
upper and lower guide members 31 and 32, each of which have
flared paper receiving ends 33 and 34, respectively, defining
a mouth or throat 35 adapted to receive a sheet of paper S
from stack ST. An arm 36 is secured to upper guide member 31
and extends beneath separator 13. Arm 36 is configured to
guide a sheet S to mouth 35. Separator 13 will move
downwardly on guides 15 under the force of gravity and by
virtue of arm 36 transfer table 14 will move downwardly
therewith, so that the mouth 35 between upper and lower table
members 31 and 32 is always positioned to receive a sheet S
from stack ST. Separator 13, as seen from the underside in
Figure 7, includes a drive motor 38 which through a gear train
39 and a one way clutch (not shown) drives a shaft 40 having
Appeal No. 97-2720 Page 7
Application No. 08/354,387
feed rollers 41 and 42 at opposite ends thereof. The feed
rollers 41 and 42 engage a sheet S on stack ST at spaced apart
points adjacent to leading edge thereof to feed one sheet S of
the stack ST at a time. Pivotally mounted at each side of
separator 13 by means of pins 43 are sheet corner separators
44 including a tang 45 which rest on top of the sheet stack
ST. The separator tangs rest on the leading corners of the
stack ST and allow only one sheet to be fed at a time.
The appellants argue (brief, pp. 4-5) that DuBois does
not anticipate claim 1 since the sheetpath in DuBois does not
have a variable length between the feedhead and a sheet
delivery area.
We do not agree. We agree with the examiner's reasoning
(answer, pp. 6-7), which we adopt as our own, that the
distance between the feedhead (i.e., separator 13) of DuBois
and the sheet delivery area at the main feed roller 25 of the
copier 10 changes as the stack ST is depleted. Thus, DuBois
discloses a variable length sheetpath between his feedhead
(i.e., separator 13) and a sheet delivery area (i.e., the main
feed roller 25 of the copier 10).
Appeal No. 97-2720 Page 8
Application No. 08/354,387
See page 4 of the appellants' brief.2
Since each element of claim 1 is found in DuBois, the
decision of the examiner to reject claim 1 under 35 U.S.C.
§ 102(b) is affirmed.
Claims 4, 6 and 9
The appellants have grouped claims 1, 4, 6 and 9 as
standing or falling together. Thereby, in accordance with 2
37 CFR § 1.192(c)(7), claims 4, 6 and 9 fall with claim 1.
Thus, it follows that the decision of the examiner to reject
claims 4, 6 and 9 under 35 U.S.C. § 102(b) is also affirmed.
The obviousness issues
We sustain the examiner's rejection of claims 2, 3, 5, 7,
8 and 10 under 35 U.S.C. § 103, but not the rejection of
claims 11 and 12.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
Appeal No. 97-2720 Page 9
Application No. 08/354,387
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Moreover, in
evaluating such references it is proper to take into account
not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be
expected to draw therefrom. In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
Claim 2
Dependent claim 2 adds to parent claim 1 the limitation
that the variable length sheet path comprises "a telescoping
sheet guide."
Watanabe discloses a telescopic paper guide means movable
to selected receiving trays. As shown in Figure 4, a feeding
mechanism 33 delivers sheets of paper to various trays 15a-15f
of a tray unit 15. The feeding mechanism 33 includes a
movable guide 65 and a movable unit 69 which is connected to
the outlet of the movable guide and vertically movable beside
the tray unit 15. The movable guide 65 comprises a pair of
Appeal No. 97-2720 Page 10
Application No. 08/354,387
parallel guide plates 67 which horizontally extend from the
discharging
rollers 32, a pair of first parallel movable guide plates 68
which are respectively pivoted on the extended ends of the
guide plates 67, a pair of parallel guide plates 70 which are
integrally formed with the movable unit 69 and extend from the
unit 69 towards the discharging rollers 32, and a pair of
second parallel movable guide plates 71 which are respectively
pivoted on the extended ends of the guide plates 70. The
first guide plates 68 are slidably fitted into the second
guide plates
71. Therefore, the movable guide 65 contracts or extends
while it swings upward or downward in response to the upward
or downward movement of the movable unit 69.

In applying the above-noted test for obviousness, we
reach the conclusion that it would have been obvious to one of
ordinary skill in the art at the time the invention was made
to have provided the sheetpath of DuBois with telescoping
sheet guide as suggested by Watanabe's movable telescoping
guide 65 to provide precise passage of a sheet over the
Appeal No. 97-2720 Page 11
Application No. 08/354,387
An artisan must be presumed to know something about the3
art apart from what the references disclose (see In re Jacoby,
309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962)) and the
conclusion of obviousness may be made from "common knowledge
and common sense" of the person of ordinary skill in the art
(see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
1969)). Moreover, skill is presumed on the part of those
practicing in the art. See In re Sovish, 769 F.2d 738, 743,
226 USPQ 771, 774 (Fed. Cir. 1985).
variable length sheetpath from DuBois' feedhead (i.e.,
separator 13) to his sheet delivery area (i.e., the main feed
roller 25 of the copier 10).
The argument advanced by the appellants (brief, p. 6)
does not convince us that the subject matter of claim 2
patentably distinguishes over the applied prior art. As to
the argued deficiencies of each reference on an individual
basis, we note that nonobviousness cannot be established by
attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See
In re Merck & Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380
(Fed. Cir. 1986). As to the argued lack of a suggestion to
combine the prior art disclosures, it is our opinion that an
artisan would have recognized the self-evident advantage3
Appeal No. 97-2720 Page 12
Application No. 08/354,387
provided by Wantanabe's precise passage of sheets over a
variable length sheetpath (i.e., movable guide 65) and would
have been motivated by that advantage to modify DuBois in the
manner set forth above.
For the reasons set forth above, the decision of the
examiner to reject claim 2 under 35 U.S.C. 103 is affirmed.
Claim 3
Dependent claim 3 adds to parent claim 2 the limitation
that the apparatus further comprises "a controller, in
communication with said feedhead, for actuating said feedhead
to advance a sheet from the stack of sheets to insure delivery
to the delivery area at a selected time."
The appellants argue (brief, pp. 6-7) that this
limitation is not taught or suggested by the applied prior
art.
Appeal No. 97-2720 Page 13
Application No. 08/354,387
The examiner responded to the appellants' argument by
stating (answer, p. 8) that "[i]n the photocopier of DuBois
the selected time would be when someone wants a photocopy."
In our view, the subject matter of claim 3 reads on the
device of DuBois as modified by Watanabe as set forth above
with respect to claim 2. DuBois' feed rollers 41 and 42 are
only driven to feed a new sheet when the motor 38 is energized
when the switch 73 (see Figure 11 of DuBois) is closed to feed
the sheet to the transfer table 14. Thus, the switch 73 is a
controller, in communication with the rollers 41 and 42 in
separator 13, for actuating the rollers 41 and 42 to advance a
sheet from the stack of sheets. DuBois' transfer table
utilizes feed rollers 64 and 65 driven by motor 66 to feed the
sheet from the transfer table 14 to the photocopier feed
roller 25. DuBois' feed rollers 64 and 65 are only driven to
feed the sheet from the transfer table 14 when the motor 66 is
energized when the switch 72 (see Figure 11 of DuBois) is
closed. In our view, this feeding of the sheet from the
transfer table to the photocopier feed roller 25 (i.e., the
delivery area) insures delivery of a sheet to the photocopier
Appeal No. 97-2720 Page 14
Application No. 08/354,387
feed roller 25 at the time the switch 72 is closed (i.e., a
selected time).
For the reasons set forth above, the decision of the
examiner to reject claim 3 under 35 U.S.C. 103 is affirmed.
Claim 5
Dependent claim 5 adds to parent claim 1 the limitation
that the apparatus further comprises "an access door enclosing
an area of the sheet stack, said access door operatively
associated with said feed head [sic, feedhead], to retract
said feed head [sic, feedhead] from the stack of sheets in
response to the door being opened."
Scott discloses a toilet paper cabinet. As shown in
Figures 1 and 3, the cabinet comprises a back A having a
tongue G, a front frame B hinged at C to back A, a feeding
roller J mounted on the front frame B, a hand wheel M to
operate the feeding roller J, and a package of toilet paper O
having a stack of paper sheets secured together by fastener R.
Appeal No. 97-2720 Page 15
Application No. 08/354,387
In applying the above-noted test for obviousness, we
reach the conclusion that it would have been obvious to one of
ordinary skill in the art at the time the invention was made
to have mounted the separator 13 of DuBois on a plate to cover
the top of the stack of sheets in the paper storage well as
suggested by Scott's mounting of his feeding roller on the
front frame.
The argument advanced by the appellants (brief, p. 7)
does not convince us that the subject matter of claim 5
patentably distinguishes over the applied prior art.
First, the appellants argue that Scott is unrelated to
the art area of the present invention. We do not agree. The
test for non-analogous art is first whether the art is within
the field of the inventor's endeavor and, if not, whether it
is reasonably pertinent to the problem with which the inventor
was involved. In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171,
174 (CCPA 1979). In the present instance, we are informed by
the appellants' originally filed specification (p. 1) that
this invention relates generally to a sheet feeder. Scott
Appeal No. 97-2720 Page 16
Application No. 08/354,387
teaches a sheet feeder and thus falls into the former category
of the Wood test. Thus, we conclude that Scott is analogous
art.
Second, the appellants argue that the feeding roller does
not retract and that the limitations of claim 5 are not taught
or suggested by the applied prior art. We do not agree. From
the teachings of Scott, an artisan would have understood that
to refill the cabinet with a new package of paper sheets that
one would pivot front frame B about hinge C to gain access to
the tongue G to install the new package of paper sheets.
Thus, in our view, the feeding roller J of Scott does retract
from the stack of sheets when the frame B is pivoted about
hinge C to gain access to the tongue G to install a new
package of paper sheets. Accordingly, it is our opinion that
Scott does supply sufficient suggestion and motivation for one
of ordinary skill in the art to modify DuBois in the manner
set forth above.
For the reasons set forth above, the decision of the
examiner to reject claim 5 under 35 U.S.C. 103 is affirmed.
Appeal No. 97-2720 Page 17
Application No. 08/354,387
See page 4 of the appellants' brief.4
Claims 7, 8 and 10
The appellants have grouped claims 2 and 7; claims 3 and
8; and 5 and 10 as standing or falling together. Thereby, in4
accordance with 37 CFR § 1.192(c)(7), claims 7, 8 and 10 fall
with claims 2, 3 and 5. Thus, it follows that the decision of
the examiner to reject claims 7, 8 and 10 under 35 U.S.C. §
103 is also affirmed.
Claims 11 and 12
Dependent claim 12 adds to parent claim 1 the limitation
that the apparatus further comprises "a variable speed drive
for feeding sheets through said variable length sheetpath to
said sheet delivery area." Dependent claim 11 adds the same
limitation to its parent claim 6.
Paxon discloses a variable speed sheet transport system
used to compensate for slippage between the sheets on the
belts.
Appeal No. 97-2720 Page 18
Application No. 08/354,387
The examiner determined (answer, pp. 5-6) that
[i]t would have been obvious to one of ordinary skill in
the art to provide the device of DuBois with a variable
speed drive to compensate for slippage in view of the
showing and teaching of Paxon.
The appellants argue (brief, pp. 7-8) that the subject
matter of claims 11 and 12 is not taught or suggested by the
applied prior art. We agree.
These claims recite that the variable speed drive is for
feeding sheets through the variable length sheetpath to the
sheet delivery area. Their parent claims recite that the
variable length sheetpath is between the feedhead and the
sheet delivery area. Thus, these claims require that the
variable speed drive is for feeding sheets from the feedhead
to the sheet delivery area. An artisan would understand that
DuBois differs from the claimed subject matter by having his
feed rollers 41, 42, 64, 65 rotate at a single speed when
feeding sheets instead of the claimed variable speed. The
teachings of Paxon, in our view, would not have provided any
suggestion to drive DuBois' feed rollers 41, 42, 64, 65 at
variable speeds. Furthermore, although the provision of a
Appeal No. 97-2720 Page 19
Application No. 08/354,387
variable speed sheet transport system as taught by Paxon
downstream of DuBois's main feed roller 25 may have been
obvious to an artisan, the claimed subject matter of claims 11
and 12 does not read on such a modification since it would not
result in a variable speed drive for feeding sheets from the
feedhead (i.e., DuBois' separator 13) to the sheet delivery
area.
For the reasons set forth above, the decision of the
examiner to reject claims 11 and 12 under 35 U.S.C. 103 is
reversed.
Appeal No. 97-2720 Page 20
Application No. 08/354,387
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 4, 6 and 9 under 35 U.S.C. § 102(b) is affirmed; the
decision of the examiner to reject claims 2, 3, 5, 7, 8 and 10
under
35 U.S.C. § 103 is affirmed; and the decision of the examiner
to reject claims 11 and 12 under 35 U.S.C. § 103 is reversed.
Appeal No. 97-2720 Page 21
Application No. 08/354,387
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2720 Page 22
Application No. 08/354,387
RONALD ZIBELLI
XEROX CORPORATION
XEROX SQUARE 020
ROCHESTER, NY 14644
APPEAL NO. 97-2720 - JUDGE NASE
APPLICATION NO. 08/354,387
APJ NASE
APJ ABRAMS
APJ McQUADE
DECISION: AFFIRMED-IN-PART
Prepared By: Delores A. Lowe
DRAFT TYPED: 01 Jun 98
FINAL TYPED: