Ex Parte Ruhe et al

Patent Trial and Appeal Board

Nov 29, 2012

10463484 (P.T.A.B. Nov. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOM RUHE, JIANGXIAO MO, SCOTT SMITH
and GARY MILLER
____________

Appeal 2010-001699
Application 10/463,484
Technology Center 2600
____________

Before CARL W.WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 7-161. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Claims 23-27 are withdrawn, claim 32 is cancelled. Claims 1-21 and 28-31
are rejected; however, Appellants have neither appealed nor argued claims
1-6, 17-21, and claims 28-31. Accordingly we confine our decision to claims
7-16. See Ex parte Ghuman, 88 USPQ2d 1478 (BPAI 2008) (precedential).
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STATEMENT OF THE CASE
Appellants’ invention is directed to a sheet media input structure. See
Spec. 18, Abstract of the Disclosure.
Claim 7 is illustrative, with key disputed limitations emphasized:
7. A sheet media input structure for a sheet media processing device
having a pick/feed mechanism operative to move media sheets from
the input structure along a media path, the input structure comprising:

a sheet media supporting surface; and

a movable face positioned downstream from the supporting surface
and the pick/feed mechanism along the media path, the face movable
between a first position in which the face protrudes into the media
path to block a leading edge of media sheets supported on the
supporting surface and a second position in which the face does not
protrude into the media path and media sheets are free to move from
the supporting surface along the media path past the face.

The Examiner relies on the following as evidence of unpatentability:
Olson US 5,316,285 May 31, 1994
Chang US 6,536,757 B2 Mar. 25, 2003
Applicants’ Admitted Prior Art (hereinafter “APA”)

THE REJECTIONS
1. The Examiner rejected claims 7, 8, and 11-14 under 35 U.S.C.
§103(a) as unpatentable over APA and Olson. Ans. 4-12.2
2. The Examiner rejected claims 9, 10, 15, and 16 under 35 U.S.C.
§103(a) as unpatentable over APA, Olson, and Chang. Ans. 16-17.

2 Throughout this opinion, we refer to the Appeal Brief filed July 21, 2008;
the Examiner’s Answer mailed May 21, 2009; and, the Reply Brief filed
December 15, 2008.
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ISSUES
Based upon our review of the record, the arguments proffered by
Appellants and the findings of the Examiner, we find the following issues to
be dispositive of the claims on appeal:
1. Under § 103, has the Examiner erred in rejecting claims 7, 8, and
11-14 by finding that APA and Olson, collectively, teach or
suggest:
a movable face positioned downstream from the supporting
surface and the pick/feed mechanism along the media path,
the face movable between a first position in which the face
protrudes into the media path to block a leading edge of
media sheets supported on the supporting surface and a
second position in which the face does not protrude into the
media path and media sheets are free to move from the
supporting surface along the media path past the face

as set forth in independent claims 7 and 11.

2. Under § 103, has the Examiner erred in rejecting claims 9, 10, 15,
and 16 by improperly combining Olson and Chang?

ANALYSIS
Appellants argue that the Examiner erred in relying upon the
teaching of lever 22 of Olson to show or suggest: “a movable face
positioned downstream from the supporting surface …to move
from the supporting surface along the media path past the face,”
urging that lever 22 of Olson “always protrudes into the media
path even when it is in the extreme forward/downstream position”
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and that lever 22 “is always in contact with the sheet feeding along
the media path.” App. Br. 5.
Appellants also argue that the position of lever 22 within Figure
4 of Olson does not “block” a leading edge of media sheets; it still
protrudes into the media path. Reply Br. 1.
The Examiner finds that in the depiction within Figure 4 of
Olson, lever 22 does not protrude into the media path. Ans. 17.
A portion of Figure 4 of Olson is depicted
below:

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Figure 4 of Olson depicts a fourth phase of operation of Olson
wherein lever 22 is urged farther forwardly by the pivot mounted strut.
As illustrated, the media path depicted for sheet S1 is between the
depicted roller and contacting edge 22f of lever 22. Consequently we find
that lever 22 does not “protrude” into the media path under a broad but
reasonable interpretation of “media path.”
We therefore find that the Examiner did not err in rejecting claims 7,
8, and 11-14 as unpatentable over admitted prior art (APA) and Olson.
Appellants argue, with respect to the Examiner’s rejection of claims 9,
10, 15, and 16, that the Examiner erred in combining the Olson reference
with Chang. Appellants urge that the stepped face of Chang is inconsistent
with the teaching of Olson that the contacting edge 22f of Olson is
“smoothly rounded” and that the proposed combination would render Olson
largely ineffective for its intended purpose. App. Br. 7, Reply Br. 2.
The Examiner finds that Chang teaches that in addition to the stepped
face disclosed, Chang discloses a guide projection 320 in Figure 3 thereof
which adds “almost no resistance to the top sheet.” Ans. 18.
“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983 (citing Orthopedic Equip. Co. v.
United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391
F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”). “The test for obviousness is
not whether the features of a secondary reference may be bodily
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incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted).
Here, the Examiner does not propose that the stepped face feature of
Chang, be physically incorporated into the structure of Olson. Instead, the
Examiner concludes that the combined teachings of the references would
have suggested to one of ordinary skill in the art the Appellant's invention.
Appellants’ argument overlooks “the relevant combined teachings of the . . .
references.” Andersen, 391 F.2d at 958 (dismissing the argument that a
combination would result in an inoperative structure).
Therefore, we conclude that the Examiner did not err in finding reason
to combine the teachings from Chang with Olson to reject claims 9, 10, 15,
and 16.

CONCLUSION
The Examiner did not err in rejecting claims 7- 16 under § 103.

ORDER
The Examiner’s decision rejecting claims 7-16 is affirmed.

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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).

AFFIRMED

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