Francisco Gomez

Patent Trials and Appeals Board

Dec 19, 2019

15113171 - (D) (P.T.A.B. Dec. 19, 2019)

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.
15/113,171 07/21/2016 Francisco Gomez 84487113 5236
22879 7590 12/19/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
SANDERS, HOWARD J
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
12/19/2019 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):
barbl@hp.com
ipa.mail@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCISCO GOMEZ
Appeal 2019-002919
Application 15/113,171
Technology Center 3600
Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9, 11–13, and 15–22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Hewlett-
Packard Development Company, LP, which is a wholly owned affiliate of
HP Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a media processing device
comprising a flexion component for use in creating a flexion in media so as
to cause a trailing portion of the media, which has just emerged from the
feed area, to move away from the feed area so that the media will not “be
‘recaptured’ by the feed area” and “fed back into the media feed path or
another part of the media processing device.” Spec. ¶¶ 18, 24. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. Apparatus comprising:
a support portion configured to couple the apparatus to a
media processing device, the media processing device having a
media path along which media is transported, the media path
having a feed area comprising a feeding mechanism for feeding
media to an output area;
a flexion component configured to apply a force to a first
portion of media that is beneath the flexion component and
thereby cause a flexion in the media, the flexion moving a
second and trailing portion of the media away from the feeding
mechanism of the feed area of the media path to prevent
unintended further contact of the media with the feeding
mechanism of the feed area.
EVIDENCE
The prior art relied upon by the Examiner is:
Tahara
Sugimoto
US 5,518,229
US 6,648,328 B2
May 21, 1996
Nov. 18, 2003
Onishi US 2012/0112402 A1 May 10, 2012

REJECTION
I. Claims 1–5, 9, 11, 13, 15, 16, 18, 19, 21, and 22 stand rejected
under 35 U.S.C. § 102(a)(1) as anticipated by Onishi.
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II. Claims 7, 8, 17, and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Onishi and Sugimoto.
III. Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable
over Onishi, Sugimoto, and Tahara.
IV. Claim 12 stands rejected under 35 U.S.C. § 103 as unpatentable
over Onishi.
OPINION
Rejection I—Anticipation Based on Onishi
Claims 1–5, 16, 18, 19, and 21
The Examiner finds that Onishi discloses an apparatus as recited in
claim 1 including, in pertinent part, a support portion configured to couple
the apparatus to a media processing device having a media path having a
feed area comprising a feeding mechanism (sheet delivery roller pair 51) for
feeding to an output area (delivery tray 60), and a flexion component (sheet
presser member 61) configured to apply a force as called for in claim 1. See
Final Act. 2–3 (citing Onishi, Fig. 12 for the support portion).
Appellant argues that Onishi’s sheet presser member 61 does not act
on one portion of the sheet to move another portion away from a feeding
mechanism. Appeal Br. 11. According to Appellant, sheet presser member
61 is pushed out of the way by sheet P exiting delivery port 53, such that
sheet presser member 61 does not place any downward force on the exiting
media, and applies a pressing force to the trailing end of the sheet only after
it has been stacked and is no longer exiting the delivery port. Id. at 12.
The Examiner responds,
[I]t is clear from Onishi that the sheet presser member is pushed
by a sheet of media being ejected. The presser member rests its
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weight on the sheet as the sheet is discharged. It is therefore
pushing the ejected media from above in a manner not only
satisfying the claim language but in a manner that is analogous
to the pressing member of the instant application.
Ans. 4.
Onishi discloses that, in a default state (i.e., with no external forces
applied), “before delivering the sheet, . . . the sheet presser member 61 has
its center of gravity decentered on the downstream side in the sheet delivery
direction,” such that, in a state in which sheet presser member 61 remains
still by its own weight, bottom surface portion 61b of presser member 61 “is
inclined downwardly toward the downstream side in the sheet delivery
direction.” Onishi ¶ 61. Onishi discloses that, as each sheet P is delivered
from sheet delivery roller pair 51, the leading end of the sheet contacts side
surface 61a of presser member 61, causing presser member 61 to swing
toward the downstream side in the sheet delivery direction. Id. ¶ 62. Onishi
also discloses that “sheets P are stacked under a state in which the trailing
ends thereof are slid under the bottom surface portion 61b of the sheet
presser member 61” and that “the trailing end of the sheet P delivered from
the sheet delivery port 53 is pressed by the bottom surface portion 61b from
above.” Id. ¶ 63.
The above disclosure of Onishi is sufficient to establish, by a
preponderance of the evidence, that bottom surface portion 61b of presser
member 61 applies a downward reactive force to successive portions of
sheet P from the leading end portion to the middle portion, and eventually to
the trailing end portion, as the sheet is delivered from sheet delivery port 53
to delivery tray 60, causing flexion of the sheet around roller 73 at the
intersection of side surface portion 61a and bottom surface portion 61b. As
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the trailing end of the sheet exits the nip between sheet delivery roller pair
51, the flexion causes the trailing end portion to move away from sheet
delivery roller pair 51 (the feeding mechanism).
Onishi’s disclosure that leading ends of sheets P contact presser
member 61 causing presser member 61 to swing in the downstream direction
does not undermine the Examiner’s finding that presser member 61 applies a
downward force to portions of sheet P as the sheet is in the process of being
delivered from sheet delivery port 53 to delivery tray 60. As discussed
above, the center of gravity of Onishi’s presser member 61, like that of
Appellant’s flexion component 70, is decentered relative to its coupling axis.
See Onishi ¶ 61; Spec. ¶ 32. Furthermore, sheets delivered from the feeding
mechanism, under force imparted by delivery roller pair 51, cause Onishi’s
presser member 61 to swing toward the downstream side, much like forces
applied by the rollers of Appellant’s feed area 30 move the media and
displace Appellant’s flexion component 70, allowing it to rotate upwards
(i.e., in the downstream direction). Onishi ¶ 62; Spec. ¶ 33. Thus, Onishi’s
presser member 61, like Appellant’s flexion component 70, is biased to
rotate under the force of gravity towards its equilibrium position, and it is
this biasing/reaction force that applies a force to the sheets as they slide
under bottom surface portion 61b of presser member 61. See Onishi ¶ 63
(disclosing the pressing force applied by bottom surface portion 61b); Spec.
¶ 33 (disclosing a force applied to media 40 by flexion component 70 due to
gravity). Although Onishi only expressly discusses, and is primarily
concerned with, the force applied by presser member 61 to the trailing ends
of the sheets P after they are stacked in delivery tray 60 (see Onishi ¶¶ 63,
65), for the above reasons, presser member 61 also applies pressing force to
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sheets P as they slide under bottom surface portion 61b of presser member
61 during delivery.
Appellant, therefore, fails to apprise us of error in the rejection of
claim 1. Accordingly, we sustain the rejection of claim 1, as well as claims
2–5, 16, 18, 19, and 21, for which Appellant does not present any separate
arguments and which, thus, fall with claim 1, as anticipated by Onishi.
Claims 9, 11, and 13
The Examiner finds that Onishi discloses the method recited in claim
9. Final Act. 3–4.
Relying on the aforementioned arguments asserted for claim 1,
Appellant argues:
Onishi fails to teach or suggest, “wherein the force results in a
flexion in the media which draws a second portion of the media
not underneath the flexion component laterally away from a
feed area of the media feed path along the media path to prevent
further interaction between the media and a feeding
mechanism.” (Claim 9).
Appeal Br. 13.
Aside from merely reciting elements of claim 9, Appellant’s statement
does not add anything to the arguments presented for claim 1, which, for the
reasons discussed above, fail to apprise us of error in the rejection of claim
1. Appellant’s statement, thus, does not constitute a separate argument for
patentability of claim 9 pursuant to 37 C.F.R. § 41.37(c)(1)(iv). See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had
reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) (the predecessor to
§ 41.37(c)(1)(iv)) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
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the corresponding elements were not found in the prior art”). For the
reasons discussed above, Appellant’s arguments fail to apprise us of error in
the rejection of claim 1 and, likewise, fail to apprise us of error in the
rejection of claim 9, which falls with claim 1. Accordingly, we sustain the
rejection of claim 9, as well as claims 11 and 13, for which Appellant does
not present any separate arguments and which, thus, fall with claims 1 and 9,
as anticipated by Onishi.
Claim 15
The Examiner finds that Onishi discloses a media processing
apparatus as called for in claim 15. Final Act. 4–5. The Examiner reads the
claimed flexion component on Onishi’s presser member 61, including roller
73. Id. at 4. With respect to the recitation in claim 15 that the flexion draws
a trailing edge of the media laterally away and upwards from the feed area to
prevent an unintended re-feeding of the sheet into the media processing
apparatus, the Examiner finds:
[S]ince the member 61 pushes a discharged media sheet, such
that it moves the trailing end of the sheet such that it prevents
unintended further contact of the media with the feeding
mechanism, the region within which the trailing edge is drawn
is upwards from the feed area of the media path, seen in Figures
1 and 6.
Id. at 4–5.
Relying on the aforementioned arguments presented for claim 1,
Appellant submits:
Onishi fails to teach or suggest: a flexion component configured
to apply a force to a first portion of the sheet of media that is
beneath the flexion component at the media output tray when a
second portion of the sheet of media remains within the media
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path and thereby cause a flexion in the media, the flexion
drawing a trailing edge of the media laterally away and upwards
from the feed area of the media path along the media path to
prevent an unintended re-feeding of the sheet of media into the
media processing apparatus.
Appeal Br. 14.
Aside from merely reciting elements of claim 15, Appellant’s
statement does not add anything to the arguments presented for claim 1,
which, for the reasons discussed above, fail to apprise us of error in the
rejection of claim 1. Appellant’s statement, thus, does not constitute a
separate argument for patentability of claim 15 pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv). See In re Lovin, 652 F.3d at 1357.
Accordingly, we sustain the rejection of claim 15, which falls with
claim 1.
Claim 22
Claim 22 depends from claim 1 and further recites, “wherein the
flexion component is in a retracted position when a cover to the media
processing device is opened.” Appeal Br. 23 (Claims App.).
Citing Onishi, paragraph 65, the Examiner finds that presser member
61 may be in a retracted position, “including when a cover (30) to the media
processing device is opened.” Final Act. 5 (emphasis added). Onishi
identifies item 30 as “a document cover.” Onishi, para. 34; see id., Fig. 1.
Paragraph 65 of Onishi discloses that presser member 61 is pushed by the
upper surface of sheet P so as to pivot toward the downstream side, but
mentions nothing about a cover.
Appellant argues that “there is no link between a cover being open or
closed and the relative position of the flexion component.” Appeal Br. 15.
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This argument is not commensurate in scope with claim 22, which does not
recite a link between the cover being open or closed and the relative position
of the flexion component. See Ans. 5 (stating, “[t]he claim fails to include
any link between the cover and the position of the flexion – structural or
otherwise. Instead, the claim simply requires the flexion to be retracted at a
same time when a cover is in an open position.”). Thus, Appellant’s
argument fails to apprise us of error in the rejection of claim 22. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the
claims cannot be relied upon for patentability). Accordingly, we sustain the
rejection of claim 22 as anticipated by Onishi.
Rejection II—Obviousness Based on Onishi and Sugimoto
In contesting the rejection of claims 7, 8, 17, and 20, which depend
from claim 1, Appellant relies solely on the arguments presented for claim 1.
Appeal Br. 15. For the reasons discussed above, these arguments fail to
apprise us of error in the rejection of claim 1 and, likewise, fail to apprise us
of error in the rejection of claims 7, 8, 17, and 20 as unpatentable over
Onishi and Sugimoto, which we, thus, sustain.
Rejection III—Obviousness Based on Onishi, Sugimoto, and Tahara
Claim 6 depends from claim 1 and recites:
the flexion component is coupled, via an axle, to an axle
aperture of the support portion, and wherein the axle aperture is
configured such that the flexion component can be retracted
into a portion of the axle aperture, such that the flexion
component is maintained in a position in which it no longer
applies a force to the media.
Appeal Br. 20 (Claims App.).
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The Examiner applies Sugimoto’s teaching of flexion component 30
coupled via an axle to axle aperture 26 (Fig. 1) and Tahara’s teaching to
retract a flexion component (42) so it no longer applies force to the media.
Final Act. 7–8; see Sugimoto, Fig. 1; id. 5:63–6:3; Tahara, Figs. 2, 3A, 3B.
The Examiner determines it would have been obvious to modify Onishi “to
combine the flexion components to provide the [axle] aperture detail while
allowing the component to be retracted for easier removal of sheets.” Id. at
8.
Appellant does not identify any deficiency in either the Examiner’s
findings regarding Sugimoto and Tahara or the Examiner’s reasoning in
combining them with Onishi. See Appeal Br. 16. Instead, Appellant
appears to attack Tahara individually and, thus, fails to apprise us of error in
the rejection of claim 6. See id. (asserting that Tahara “does not make any
mention at all of an axle aperture nor retraction into such an axle aperture”).
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Accordingly, we sustain the rejection of claim 6 as unpatentable over
Onishi.
Rejection IV—Obviousness Based on Onishi
Claim 12, which depends from claim 9, recites “retracting the flexion
component from the media path whereby to stop applying the force to the
first portion of media.” Appeal Br. 21 (Claims App.).
The Examiner finds that Onishi’s flexion component (presser member
61) is resident within the media path and “is retractable from the media
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path.” Final Act. 8 (citing Onishi ¶ 54). The Examiner finds that “[i]t is
unclear whether Onishi can be considered as endorsing retracting the flexion
component.” Id. However, the Examiner reasons that it would have been
obvious “to use the teachings of Onishi and retract the flexion component by
moving it along its pivoting path from the media path to stop applying the
force to the first portion of media to reach in and remove a sheet that was
stuck in that area.” Id.
Appellant submits that paragraph 54 of Onishi merely states that sheet
presser member 61 “is supported so as to be swingable in the sheet delivery
direction,” but “does not mention retraction of the sheet presser member.”
Appeal Br. 17. Appellant argues that “being swingable merely indicates it
can rotate, but does not teach or suggest an active retraction of the
component so as to ‘stop applying the force to the first portion of media.’”
Id.
Appellant’s argument is not responsive to the rejection articulated by
the Examiner. The Examiner does not find that paragraph 54 of Onishi
teaches or suggests an active retraction of sheet presser member 61. See
Ans. 8 (agreeing with Appellant’s acknowledgement that “Onishi teaches
the flexion component is swingable. That is, that it can rotate, but not
actively rotating the flexion component to stop applying the force to the
media.”). However, the Examiner determines that it would have been
obvious to modify Onishi’s method by having a user actively “retract the
flexion component [(i.e., sheet presser member 61)] from the media path to
stop applying the force to the media in order to better access and free a
jammed sheet” because “it is commonplace for the user/operator to remove
the jammed sheet by opening the sheet path in whatever way enabled by the
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manufacturer” and “Onishi provided a sheet presser member in the vicinity
of the discharge port that is freely swingable.” Id.
Appellant responds by contending that an active retraction would not
be obvious because Onishi describes passive action. Reply Br. 10. This
response does not specifically address, much less refute, the Examiner’s
articulated reason for modifying Onishi by actively retracting the sheet
presser member—namely, to clear the media path to remove a jammed
sheet, which is a commonplace practice. Thus, Appellant fails to apprise us
of error in the Examiner’s rejection of claim 12. Accordingly, we sustain the
rejection of claim 12 as unpatentable over Onishi.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–5, 9, 11,
13, 15, 16,
18, 19, 21,
22
102(a)(1) Onishi 1–5, 9, 11,
13, 15, 16,
18, 19, 21,
22

7, 8, 17, 20 103 Onishi, Sugimoto  7, 8, 17, 20
6 103 Onishi, Sugimoto,
Tahara 
6
12 103 Onishi  12
Overall
Outcome
1–9, 11–13,
15–22

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TIME PERIOD FOR RESPONSE
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