Ex Parte Tsuchiyama et al

Board of Patent Appeals and Interferences

Jan 17, 2012

10580211 (B.P.A.I. Jan. 17, 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.
10/580,211 05/23/2006 Yoshiki Tsuchiyama 1919.1009 1850
21171 7590 01/17/2012
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
SEVERSON, JEREMY R
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
01/17/2012 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 YOSHIKI TSUCHIYAMA, SATOSHI ISHIDA,
YASUNORI MIYAUCHI, and SHUUICHI MORIKAWA
____________________

Appeal 2010-001762
Application 10/580,211
Technology Center 3600
____________________

Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001762
Application 10/580,211

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and denominate our affirmance as a new grounds of
rejection pursuant to 37 C.F.R. § 41.50(b).

The claims are directed to an automatic paper feeder. Claim 1,
reproduced below, is illustrative of the claimed subject matter:

1. An automatic paper feeder supplying
paper to an apparatus, comprising:
a separation pad, pressing the paper against
a pick roller so as to feed the paper one by one;
and
pad pressing means, applying pressure to the
separation pad so as to press the separation pad
against a surface of the pick roller, the pad
pressing means having a reverse U-shape to press
the separation pad against the surface of the pick
roller at two portions, a front portion and a rear
portion, along a rotating direction of the pick roller
thereof, and the pad pressing means being
configured to be rotatable back and forth with
respect to the rotating direction of the pick roller
about a fulcrum where pressure is applied to the
pad pressing means.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Murayoshi US 4,674,737 Jun. 23, 1987
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Application 10/580,211

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REJECTIONS
Claims 1-8 are rejected under 35 U .S.C. 102(b) as being anticipated
by Murayoshi.

OPINION
In rejecting claims 1-8 the Examiner relies upon the figure 12
embodiment of Murayoshi. The Examiner cites the figure 3 embodiment of
Murayoshi as evidence of how certain features of the figure 12 embodiment
operate. Ans. 6. The Examiner does not propose to combine features of the
figure 12 embodiment with the figure 3 embodiment. See Reply Br. 2.
Appellants raise four issues regarding the Examiner’s rejection of claim 11:
First, Appellants contend Murayoshi’s bar 552 is not a “fulcrum.” App. Br.
6; See Ans. 3. Second, Appellants contend Murayoshi’s pressing plate 14,
interpreted by the Examiner as the “pad pressing means” (Ans. 3), is not
configured to be “rotatable back and forth with respect to the rotating
direction of the pick roller” about Murayoshi’s bar. App. Br. 7, Reply Br. 2.
Third, Appellants contend Murayoshi’s bar 552 is not “where pressure is
applied to the pad pressing means.” App. Br. 7; Reply Br. 3. And, fourth,
Appellants contend it was unreasonable for the Examiner to interpret the

1 We note that claims 1-8 employ means-plus-function language. However,
neither the Appellants nor the Examiner provide an analysis of this language
under In re Donaldson Co. 16 F.3d 1189 (Fed. Cir. 1994) (In order for a
prior art element to meet a section 112, paragraph 6 means-plus-function
limitation, the prior art element must either be the same as the disclosed
structure or be a section 112, paragraph 6 equivalent.) We therefore confine
our analysis to the issues raised by Appellants concerning the interpretation
of any disputed claim terms. See 37 C.F.R. § 41.37(c)(1)(vii) (“Any
arguments or authorities not included in the brief or a reply brief will be
refused consideration by the Board, unless good cause is shown.”).
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Application 10/580,211

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portions 228, 229 of Murayoshi’s pressing plate 14 that join at ridge R2 as
forming the claimed “U-shape,” because those portions join to form a V-
shape. App. Br. 7; Reply Br. 3. Appellants’ argument concerning claim 2,
pointing out that rotatability must be about a “predetermined position” is an
extension of Appellant’s second argument. App. Br. 8.
We are persuaded by Appellants’ fourth argument that it was
unreasonable for the Examiner to interpret the portions 228, 229 of
Murayoshi’s pressing plate 14 that join at ridge R2 (See Ans. 7) as forming
the claimed “U-shape.” Appellant’s Specification has consistently referred
to the pad pressing means 3, formed by two parallel portions joined by a
third, perpendicular portion, as structure having a “U-shape.” Murayoshi
refers to the end portion 554 of bracket 550, a structure similar in shape to
Appellants’ pad pressing means, as in the form of a U. Col. 18, ll. 7-11; fig.
12. This provides additional evidence as to how one of ordinary skill in the
art would understand the term. We agree with Appellants that one of
ordinary skill in the art would not understand “U-shape” to include two
sections joined by a generally sharp angle.
While we are persuaded that the Appellants have demonstrated error
in the Examiner’s rejection, we agree that the embodiment depicted in figure
3 of Murayoshi still anticipates claims 1 and 2. Support portions 230 of
pressing plate 14 form a “reverse U-shape” to press the separation member
13 against the roller 12. Even under this interpretation it remains reasonable
to interpret one of the parallel sides of this structure bestriding slot 231 as a
“rotating arm,” as the Examiner did regarding claim 2. See Ans. 8. We
agree with the Examiner’s remaining findings and analysis concerning
claims 1 and 2 and with the Examiner’s response to Appellants’ first, second
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and third arguments. We hereby modify the Examiner’s analysis such that
reference to those structures depicted in figure 12 is replaced by reference to
the corresponding structure depicted in figure 3, e.g., reference to bar 552
(fig. 12) is replaced by reference to guide shaft 233 (fig. 3). We adopt the
Examiner’s response to Appellants’ first three arguments (Ans. 6, 8-9) as our
own. We emphasize that Murayoshi’s bar 552/guide shaft 233 supports
pressing plate 14 for pivotal, i.e., “rotatable back and forth,” and
translational movement towards and away from the separation roller 12. Col.
18, ll. 5-7; col. 7, ll. 40-45. We agree this is sufficient to render it
reasonable to interpret Murayoshi’s bar 552/guide shaft 233 as a “fulcrum.”
Further, although Appellants have disclosed structures in the Specification
for applying a force directly upon the fulcrum 5 to urge it towards or away
from the pick roller 1, e.g., spring 4 or rotating arm 7 (Spec. 10 paras.
[0041], [0042]), such structures are notably absent from claim 1. Thus,
although the “pressure” “applied” by the fulcrum “to the pressing plate” is
due to a reactionary force in Murayoshi (See Ans. 8), we cannot discern any
claim limitations excluding such an arrangement.
Regarding claim 7, the Examiner interprets the bracket 550 supporting
the bar 552 as the “pressing unit applying the pressure to the fulcrum of the
pad pressing means.” Appellants contend that “the bracket 550 does not
serve to apply pressure in Murayoshi’s device.” App. Br. 9. While
Appellants appear to contest the Examiner’s position, they have not offered
any arguments or evidence to demonstrate why the Examiner erred by
determining that, by virtue of its supporting role, bracket 550 applies
pressure to bar 552. See Ans. 9. Accordingly, we will sustain this rejection
based upon the corresponding bracket 19 in the figure 3 embodiment, which
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supports guide shaft 233 via upright portions 2322. Additionally, in light of
the breadth of the pressure applying limitation, as discussed above, we note
that Murayoshi’s pressure applying arm 15 also meets this limitation.
For the above reasons, we sustain the Examiner’s rejection of claims
1, 2 and 7. However, since we have relied upon findings and reasoning
different from that of the Examiner, we denominate this affirmance a new
grounds of rejection under 37 C.F.R. § 41.50(b) so that Appellants may be
afforded a full and fair opportunity to respond.
Each of claims 3-6 and 8 require movement of the fulcrum or the
capability therefor. As discussed above, Murayoshi’s support portion 230
translates and pivots about guide shaft 233, the structure interpreted as the
claimed “fulcrum.” Like Appellants (App. Br. 3-9), we can discern no
evidence in the portions of Murayoshi cited by the Examiner (See Ans. 5-6
citing portions of Murayoshi cols. 17-19) indicating that Murayoshi’s guide
shaft 233 can, or does, move as required by claims 3-6 and 8. Accordingly,
we are constrained to reverse the Examiner’s rejection of claims 3-6 and 8.

DECISION
We sustain the Examiner’s rejection of claims 1, 2 and 7. However,
we denominate this affirmance a new grounds of rejection under 37 C.F.R.
§ 41.50(b).
We reverse the Examiner’s rejection of claims 3-6 and 8.

2 Note that there appears to be a typographical error in column 7, line 38 of
Murayoshi referencing numeral 23 in place of numeral 232.
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37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”37 C.F.R.
§ 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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