Ex Parte Chandu et al

Patent Trial and Appeal Board

Oct 12, 2016

13242507 (P.T.A.B. Oct. 12, 2016)

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.
13/242,507 09/23/2011 Kartheek Chandu 8185P130 7864
76073 7590 10/12/2016
InfoPrint Solutions/ Blakely
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
THIES, BRADLEY W
ART UNIT PAPER NUMBER
2853
MAIL DATE DELIVERY MODE
10/12/2016 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 KARTHEEK CHANDU and CARL BILDSTEIN
____________________

Appeal 2015-004787
Application 13/242,507
Technology Center 2800
____________________

Before: LINDA M. GAUDETTE, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 1–10 and 17–26. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s rejection under 35 U.S.C. § 103(a) and
issue a new ground of rejection under 35 U.S.C. § 112, second paragraph.

1 The real party in interest is identified as Ricoh Production Print Solutions
LLC. (Appeal Brief, dated November 24, 2014 (“App. Br.”), 3.)
2 Final Rejection dated July 8, 2014 (“Final Act.”).
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Application 13/242,507
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CLAIMED SUBJECT MATTER

The invention is directed to a dynamic inkjet nozzle flushing
mechanism and seeks to address the need for “a mechanism to dynamically
adjust nozzle flushing frequency during print production.” (Spec. ¶ 5.)3
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
analyzing an image of a first flushing pattern applied on a
medium during production of a print job to detect presence of
one or more defective ink jet nozzles, by:
measuring color values of the captured flushing pattern;
estimating optical density values for the color values in the
flushing pattern; and
comparing the optical density values to the measured
color values to determine differences in order to detect a density
and color change; and
adjusting to a second flushing pattern during the
production of the print job upon detecting the presence of one or
more defective print head nozzles.
(Claim Appendix, App. Br. i (emphasis added).)

REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Nishikawa US 2011/0234676 A1 Sept. 29, 2011
Chandu US 2010/005324 A1 Mar. 4, 2010

3 Application 13/242,507, Dynamic Inkjet Nozzle Flushing Mechanism, filed
September 23, 2011. We refer to the “ʼ507 Specification,” which we cite as
“Spec.”
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Application 13/242,507
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REJECTIONS
Claims 1–3, 5, 7–10, 17, 18, 20–23, 25, and 26 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Nishikawa. (Final Act. 3.)
Claims 4, 6, 9, and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nishikawa and Chandu. (Final Act.14.)

OPINION
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Claim 14
The sole issue on appeal is whether Nishikawa teaches or suggests “a
method comprising . . . comparing the optical density values to the measured
color values to determine differences in order to detect a density and color
change” as recited in claim 1. (See App. Br. 8; see also Ans. 2–3.)5
For reasons explained below, we determine no reasonably definite
meaning can be ascribed to the claim phrase “to determine differences in
order to detect a density and color change,” which is recited in each of the
appealed independent claims (claims 1 and 17). Therefore, any
consideration of the merits of the outstanding rejections would be
improperly based on speculative assumptions as to the scope of the claims.

4 Appellants do not present separate arguments for the remaining claims
including independent claim 17. These claims therefore stand or fall with
claim 1. (See App. Br. 7, 10; see also Reply Brief dated March 24, 2015
(“Reply”), 4.) (The Reply Brief is without page numbers and we therefore
supply our own.)
5 Examiner’s Answer dated February 19, 2015 (“Ans.”).
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See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d
859, 862–63 (CCPA 1962). We therefore decline to reach the merits, but
REVERSE pro forma all grounds of rejection and enter the following NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b):
Claims 1–10 and 17–26 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite due to the claim phrase “to determine differences in
order to detect a density and color change.”6
“A determination of claim indefiniteness is a legal conclusion that is
drawn from the court’s performance of its duty as the construer of patent
claims.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed.
Cir. 2008) (quoting Personalized Media Commc’ns, LLC v. Int’l Trade
Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998)). During examination, claim

6 Although Appellants state in the Appeal Brief that there are no known
“appeals . . . related to the present appeal that will directly affect, be directly
affected by, or have a bearing on the Board’s decision” (App. Br. 3), we note
that Appeal No. 2015-006706 (“’6706 Appeal”) for Application No.
13/042,857 (“’857 Application”) is also pending before the Board. The ’507
Specification incorporates by reference the ’857 Application. (Spec. ¶ 27.)
The two applications do not have any inventors in common – the ’507
Application lists “Kartheek Chandu” and “Carl Bildstein” as inventors
whereas the ’857 Application at issue here lists “Larry Ernst” and “George
Promis” as inventors. (Title pages of the ’507 Spec. and the ’867 Spec.)

The rejections in the ’6706 Appeal are based on prior art that differs from
that cited in the present case. The issue in the ’6706 Appeal is whether the
cited prior art “disclose[s] or suggest[s] a process of detecting density
change and color value changes by estimating original optical density
values for the color values in a flush line pattern and comparing the values
to measured color values.” (Appellants’ Brief in the ’6706 Appeal dated
December 15, 2014, 9) (emphases added).

In the event that prosecution continues, Appellants and/or the Examiner may
wish to consider the status and the disclosure of the ’857 Application.
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terms must be given their broadest reasonable construction consistent with
the Specification. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “If the claims do not ‘particularly point[] out and distinctly
claim[ ]’, in the words of section 112,. . . the appropriate PTO action is to
reject the claims for that reason.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir.
1989).
In this case, the relevant disclosure of the ’507 Specification is limited
to a single sentence that is almost identical to the claim language: “In one
embodiment, the print irregularities are determined by estimating original
optical density values for the color values in the flushing pattern and
comparing those values to the measured color values to determine
differences in order to detect a density and color change of the flush line
pattern.” (Spec. ¶ 27 (cited in App. Br. 4 as written description support).)
In the context of claim 1 and the ’507 Specification, it is unclear
whether the “differences” determined are the differences between the
“original optical density values” and the “measured color values” – or the
differences among “an image of a first flushing pattern,” “the captured
flushing pattern,” and “the flushing pattern” as recited in claim 1, or other
differences. The fact that “the captured flushing pattern” and “the flushing
pattern” lack clear antecedent basis further obscures a reasonable
understanding of the claim scope.
Moreover, it is unclear that whether “the measured color values” are
the same as “the color values” for which the “optical density” is estimated.
It is unclear whether both “a density” and a “color change” are detected or
whether respective changes in both “density” and “color” are detected. It is
unclear whether “a density” is an optical density or another type of density
such as color density or volumetric mass density. It is also unclear to what
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Application 13/242,507
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component the density applies – whether it is “a density” of “an image of a
first flushing pattern applied on a medium” or other components recited in
claim 1.
As a result, the ordinary artisan would not recognize whether the
claim phrase “to determine differences in order to detect a density and color
change” excludes a detection of optical density based on a comparison to a
baseline standard value such as that shown and described in Nishikawa.
(See Ans. 2–3 (citing Nishikawa ¶¶ 211, 212).)
The USPTO is justified in using a lower threshold showing of
ambiguity to support a determination of indefiniteness under 35 U.S.C. §
112, second paragraph, because the applicant has an opportunity and a duty
to amend the claims during prosecution to more clearly and precisely define
the metes and bounds of the claimed invention and to more clearly and
precisely put the public on notice of the scope of the patent. Ex parte
Miyazaki, 89 USPQ2d 1207, 1211–12 (BPAI 2008) (precedential).
Because independent claim 17 also recites the limitation of
“comparing the optical density values to the measured color values to
determine differences in order to detect a density and color change,” we
conclude that claim 17 and its dependent claims also fail to meet the
requirements under 35 U.S.C. § 112, 2nd paragraph for the reasons provided
supra.

DECISION
The Examiner’s rejections of claims 1–10 and 17–26 are reversed pro
forma.
Claims 1–10 and 17–26 are rejected, under a new ground, for failure
to comply with 35 U.S.C. § 112, second paragraph.
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This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 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. . . .

REVERSED; NEW GROUND OF REJECTION
37 C.F.R. § 41.50(B)