Ex Parte Moore

Patent Trial and Appeal BoardDec 14, 2012

11514276 (P.T.A.B. Dec. 14, 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. 11/514,276 09/01/2006 Lee Coy Moore XX0603D [20052315] 6702 70537 7590 12/14/2012 Prass LLP 2661 Riva Road Building 1000, Suite 1044 Annapolis, MD 21401 EXAMINER PHAM, ANDY L ART UNIT PAPER NUMBER 2854 MAIL DATE DELIVERY MODE 12/14/2012 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 PATENT TRIAL AND APPEAL BOARD _____________ Ex parte LEE COY MOORE _____________ Appeal 2010-006748 Application 11/514,276 Technology Center 2800 ______________ Before ROBERT E. NAPPI, DEBRA K. STEPHENS and HUNG H. BUI, Administrative Patent Judges. Per Curiam DECISION ON APPEAL Appeal 2010-006748 Application 11/514,276 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claim 32. We affirm. INVENTION The invention is directed a system to provide proper alignment of an image of an original document on an image scanner. See pages 3 and 4 of Appellant’s Specification. Claim 32 is representative of the invention and reproduced below: 32. An electrostatic copy system comprising an image exposure station, said image exposure station comprising: a platen glass in said image exposure station, and alignment members selected from the group consisting of alignment marks on said platen and flood lamps or lights positioned above and below said platen, said flood lamps configured to illuminate an original document and said platen with said substrate alignment marks both from below and above said platen sufficient to show a back lit image on said original document placed on said platen, wherein said alignment members are configured to align said document and permit a proper copying alignment of said image on said original document to be transferred to and reproduced on a receiving surface, and provide an image that is squared with said original document, said flood lamps that are positioned above and below said platen glass are configured with said alignment marks to align said original document that is placed upon said platen glass, said alignment marks on said platen providing a grid configured to align said document, said flood lamps configured to illuminate said platen glass from both above and below the platen glass during scanning of said platen glass and said original document. Appeal 2010-006748 Application 11/514,276 3 REJECTION AT ISSUE The Examiner has rejected claim 32 under 35 U.S.C. § 112 first paragraph as failing to comply with the written description requirement. Answer 3-4.1 The Examiner has rejected claim 32 under 35 U.S.C. § 103(a) as unpatentable over Batten (US 6,614,563 B1) in view of Wu (2005/0094216 A1). Answer 4-6. ISSUES Rejection under 35 U.S.C. § 112 Appellant argues on pages 6 and 7 of the Appeal Brief that the Examiner’s rejection under 35 U.S.C. § 112 is in error.2 These arguments present us with the issue: did the Examiner err in finding that the originally filed disclosure does not provide support for both flood lights and alignment marks being used together? Rejection under 35 U.S.C. § 103(a) Appellant argues on pages 7 through 9 of the Appeal Brief that the Examiner’s rejection under 35 U.S.C. § 103(a) is in error. These arguments present us with the issues: a) Did the Examiner err in finding that Batten teaches illuminating the documents during scanning from both above and below? 1 Throughout this opinion we refer to the Examiner’s Answer mailed on March 16, 2010. 2 Throughout this opinion we refer to Appellants’ Appeal Brief filed on February 1, 2010, and Reply Brief filed on March 24, 2010. Appeal 2010-006748 Application 11/514,276 4 b) Did the Examiner err in finding that the combination of Batten and Wu teaches using both the flood lights above and below the alignment marks? ANALYSIS Rejection under 35 U.S.C. § 112 We have reviewed the Examiner’s rejections in light of Appellant’s contentions that the Examiner has erred. Further, we have reviewed the Examiner’s response to Appellant’s arguments. We agree with Appellant’s conclusion that the Examiner erred in finding that the originally filed disclosure does not provide support for both flood lights and alignment marks being used together. The written description requirement “serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed.” Capon v. Eshhar 418 F. 3d 1349, 1357 (Fed Cir. 2005). Appellant has identified several citations in the originally filed disclosure which state that “platen glass together with at least one member selected ….” Brief 7 (citing Specification page 6 and 7). We consider this to suggest to a skilled artisan that Appellant possessed using one or more elements of the list, thus demonstrating possession of using flood lights and alignment marks together. Accordingly, we will not sustain the Examiner’s rejection of claim 32 under 35 U.S.C. § 112. Appeal 2010-006748 Application 11/514,276 5 Rejection under 35 U.S.C. § 103(a) We have reviewed the Examiner’s rejections in light of Appellant’s contentions that the Examiner has erred. Further, we have reviewed the Examiner’s response to Appellant’s arguments. We disagree with Appellant’s conclusion that the Examiner erred in finding that Batten teaches illuminating the documents from above and below during scanning and that the Examiner erred in finding that Batten and Wu disclose using both flood lights and alignment marks. App. Br. 7-9. The Examiner has provided a comprehensive response, supported by ample evidence, to each issue raised by Appellant. Answer 6-8. As noted, by the Examiner, Appellant’s arguments are not commensurate with the scope of the claim, and the art teaches all of the argued limitations. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur with the conclusion reached by the Examiner and sustain the Examiner’s rejection under 35 U.S.C. § 103(a). DECISION We do not sustain the Examiner’s rejection of claim 32 under 35 U.S.C. § 112. We sustain the Examiner’s rejection of claim 32 under 35 U.S.C. § 103(a) Appeal 2010-006748 Application 11/514,276 6 ORDER The decision of the Examiner to reject claim 32 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)(1)(iv)(2011). AFFIRMED ELD