Ex Parte Walsh et alDownload PDFPatent Trial and Appeal BoardMar 23, 201713407871 (P.T.A.B. Mar. 23, 2017) Copy Citation 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. 13/407,871 02/29/2012 Martin R Walsh 20110508-US-NP 6063 71903 7590 03/27/2017 WILLIAM A. HENRY , II XEROX CORPORATION PATENT DOCUMENTATION CENTER 100 CLINTON AVE SOUTH , XRX2-020 ROCHESTER, NY 14644 EXAMINER CICCHINO, PATRICK D ART UNIT PAPER NUMBER 3653 NOTIFICATION DATE DELIVERY MODE 03/27/2017 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): u sa. ogc. docket @ xerox .com Office Action @ xerox, com Gail. Mcmillan @ xerox .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN R. WALSH, IAN A. PARKS, COLIN JON PARTRIDGE, JUSTIN CHASE, and MARTIN LLOYD Appeal 2015-002858 Application 13/407,871 Technology Center 3600 Before JENNIFER D. BAHR, BRANDON J. WARNER, and ARTHUR M. PESLAK, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Martin R. Walsh et al. (Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—3 and 6—8, which are the only pending claims, under 35 U.S.C. § 103(a) as unpatentable over Watase (US 2005/0073088 Al, pub. Apr. 7, 2005) and Kim (US 7,296,790 B2, iss. Nov. 20, 2007). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is the Xerox Corporation. Br. 1. Appeal 2015-002858 Application 13/407,871 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A media transport jam clearance system for engaging a media sheet fed from a stack of media sheets and returning the engaged sheet to the media stack, the system comprising: a feed roll, carried on a feed roll shaft adjacent the stack; a retard roll, carried on a retard roll shaft, the retard roll being loaded against the feed roll to create a feed nip lying in a media transport path; a nudger roll, carried on a nudger roll shaft positioned above the media stack; a drive motor operatively coupled to the feed roll shaft, retard roll shaft and the nudger roll shaft; a feed clutch engageably coupling the feed roll shaft to drive the feed roll shaft in a feed direction to propel media sheets from the media stack to the media transport path; a slip clutch engageably coupling the retard roll shaft to drive the retard roll shaft in a direction opposite the feed direction, the slip clutch breakaway torque being below the torque imposed by the media sheet; and wherein, in a clear jam state, the feed clutch is disengaged from the feed roll shaft and the nudger roll shaft, and the slip clutch is engaged to the retard roll shaft to rotate the retard roll and drive the sheet in the direction opposite the feed direction; and wherein said nudger roll is simultaneously raised in response to said clear jam state to facilitate driving said sheet in said direction opposite to the feed direction. DISCUSSION Appellants do not present any separate arguments for dependent claims 2, 3, and 6—8 apart from their dependence from independent claim 1. Appeal Br. 13. We select claim 1 as representative of this group, and claims 2, 3, and 6—8 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). 2 Appeal 2015-002858 Application 13/407,871 The Examiner finds that Watase discloses a media transport jam clearance system as recited in claim 1, including a nudger roll in a raised position when the apparatus is in a clear jam state, except that “Watase fails to specifically disclose when and how the nudger [roll] is raised.” Final Act. 5; Ans. 2—3 (citing Figs. 11—14 of Watase as showing the apparatus in a clear jam state, with the nudger roll raised); see Watase, paras. 35 (disclosing that, when the driving motor initially starts, “pickup roller 2 is kept separated from the uppermost sheet P on the sheet feeding tray 1,” and the feed clutch is “turned OFF”), 38 (disclosing that, after feed and reverse rollers 3 and 4 pinch sheet P fed from sheet feeding tray 1, “pickup roller 2 may preferably be separated from the uppermost sheet P on the sheet feeding tray”). The Examiner finds that “Kim discloses a similar feeding device wherein when power is not transmitted to the feed roller (i.e. [,] during a jam/re versing of the sheet), the nudger [roll] is raised.” Final Act. 5—6. The Examiner determines it would have been obvious to modify Watase’s device “with the nudger taught by Kim to achieve the predictable result of preventing interference of the nudger when reversing a sheet (as taught by Watase, see figures 11-14).” Id. at 6. The Examiner explains that such a device of the combination of Watase and Kim would raise the nudger roll automatically at the determination of a clear jam state (i.e., jam detection), by stopping or reversing the drive, and “therefore simultaneously raise the nudger [roll] due to the construction of the sheet feeding device.” Ans. 2 (citing Kim, Fig. 3). Appellants emphasize that claim 1 requires “a nudger roll to be SIMULTANEOUSLY raised IN RESPONSE TO a clear jam state,” and contend that “Kim teaches away from what [A]ppellants claim by raising the 3 Appeal 2015-002858 Application 13/407,871 pickup roller after each pickup operation . . . and has nothing to do with a nudger being raised in response to a jam state as claimed.” Appeal Br. 12—13 (citing Kim 2:6—9, 5:60-63). Kim discloses disengaging the feed clutch (power switching means 120) after each pickup operation, once a predetermined time has elapsed after detecting the fed document at feed roller 106, which causes bracket 130 to rotate in second direction 302 under the biasing force of elastic member 140 to separate (i.e., raise) the nudger roll (pickup roller 103) from the document stack. Kim 7:1—10; Figs. 2, 3. Thus, at least in the case of a proper document feed, Appellants are correct that Kim discloses raising the nudger roll (pickup roller 103) after each pickup. Kim also discloses, however, that when a document is jammed between ADF roller 104 and feed roller 106, as determined using detecting sensor 109A, the feed clutch (power switching means 120) is disengaged, thereby disconnecting shaft 110 from driving means 100, which simultaneously causes bracket 130 to rotate in second direction 302 under the biasing force of elastic member 140. Id. 4:22—25, 9:25—27, 7:3—10, Figs. 3,8. Thus, contrary to Appellants’ contention, Kim does teach raising the nudger roll (pickup roller 103) simultaneously in response to a clear jam state. The limitation in claim 1 relied on by Appellants to distinguish over the combination of Watase and Kim (i.e., “wherein said nudger roll is simultaneously raised in response to said clear jam state to facilitate driving said sheet in said direction opposite to the feed direction”) specifies that the nudger roll be raised in response to a clear jam state, but does not specify explicitly with respect to what other occurrence the nudger roll is raised 4 Appeal 2015-002858 Application 13/407,871 simultaneously. The first “wherein” clause of claim 1 does not specify that the feed clutch switches into a disengaged state and the slip clutch switches into an engaged state simultaneously either with each other or with the occurrence of a clear jam state, only that they be disengaged and engaged, respectively, in a clear jam state. Thus, when considered in context with the “wherein” clauses of claim 1 as a whole, the “simultaneously in response to said clear jam state” limitation could be read as requiring the nudger roll to be raised simultaneously with the feed clutch being disengaged from the feed roll shaft, simultaneously with the slip clutch being engaged to the retard roll shaft, simultaneously with the feed clutch being disengaged and the slip clutch being engaged, simultaneously with the occurrence of a clear jam state, or simultaneously with all three other occurrences (i.e., feed clutch disengagement, slip clutch engagement, and a clear jam state). Turning to Appellants’ Specification for guidance, we find that the Specification does not use the term “simultaneously” in describing Appellants’ invention, much less mention that the nudger roll, in particular, is raised simultaneously with any other occurrence.2 Spec, passim. The Specification discloses that Figure IB shows “a nudger roll in a raised position in response to a downstream jam” (para. 11) and that “if desired, the 2 The Examiner alludes to this gap in the disclosure, hinting that the Specification lacks support for the “simultaneously” limitation, but does not reject the claims under 35U.S.C. § 112, first paragraph, as failing to comply with the written description and/or enablement requirements. Ans. 3. In the event of further prosecution of the claimed subject matter, including the “simultaneously” limitation, the Examiner may wish to consider whether a rejection under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description and/or enablement requirements, might be appropriate. 5 Appeal 2015-002858 Application 13/407,871 nudger roll could be moveable between positions in contact with the top sheet and raised out of such contact” (para. 17). The Specification contains no other disclosure of the nudger roll being raised. Thus, Appellants’ Specification provides no guidance favoring any one of the aforementioned possible interpretations of the “simultaneously” limitation of claim 1 over the others. Based on our findings above, Kim teaches disengaging the feed clutch (power switching means 120) and, consequently, simultaneously raising the nudger roll (pickup roller 103) in response to detecting a document jam. Thus, Kim does not teach away from raising the nudger roll in response to a clear jam state, as Appellants contend (Appeal Br. 12). Further, in the combination of Watase, which discloses engaging the slip clutch (torque limiter 6) when the feed clutch is disengaged (Watase, para. 35), with Kim’s bracket/pickup roll raising/lowering arrangement, as proposed by the Examiner, the nudger roll would be raised simultaneously with all three other occurrences (i.e., feed clutch disengagement, slip clutch engagement, and a clear jam state) mentioned in the “wherein” clauses of claim 1 in response to a clear jam state, and thus, satisfies the “simultaneously” limitation under any of the aforementioned interpretations.3 3 As discussed above, the combination of Watase and Kim set forth in the rejection affirmatively performs the steps/functions set forth in the “wherein” clauses of claim 1 under even the most restrictive/narrow interpretation of the “simultaneously” limitation. Thus, we are able to reach a conclusion that the combined teachings of Watase and Kim render obvious the claimed subject matter without making a determination as to which of the aforementioned possible interpretations is the broadest reasonable interpretation. However, in the event of further prosecution of the claimed subject matter, the Examiner may wish to consider, for clarification of the record, whether the language in the “wherein” clauses of claim 1 is definite 6 Appeal 2015-002858 Application 13/407,871 For the above reasons, Appellants fail to apprise us of error in the Examiner’s rejection of claim 1. Accordingly, we sustain the rejection of claim 1 and claims 2, 3, and 6—8, which fall with claim 1, under 35 U.S.C. § 103(a) as unpatentable over Watase and Kim. DECISION The Examiner’s decision rejecting claims 1—3 and 6—8 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED and, more particularly: (1) whether the scope of the “simultaneously” limitation is clear, (2) whether the recitations in the “wherein” clauses are method steps or functional language, and (3) if the recitations are functional language, what structure, if any, is recited in the claim for performing these functions. 7 Copy with citationCopy as parenthetical citation