Ex Parte Kendall

Patent Trial and Appeal Board

May 14, 2014

11606724 (P.T.A.B. May. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID R. KENDALL
____________

Appeal 2012-007031
Application 11/606,724
Technology Center 2800
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 2, 4-9, 15, 16, 18-21 and 26 under
Appeal 2012-007031
Application 11/606,724

2
35 U.S.C. § 102(b) as anticipated by Boockholdt.1 We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative (emphasis added):
1. A method of estimating toner remaining in a toner
cartridge installed in a printer, the method comprising:
estimating toner remaining in said toner cartridge
installed in said printer using an adaptive term, said adaptive
term being an expression comprising a value that is adjusted
based on actual printer toner usage for a different toner
cartridge previously installed in said printer.
Independent claims 15 and 26 are respectively drawn to a
corresponding printer control and system using an adaptive term for
estimating toner remaining in a toner cartridge.

ANALYSIS
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we determine that a preponderance of the evidence
supports the Examiner’s finding that the claimed subject matter of the
rejected claims is anticipated within the meaning of § 102 in view of the
applied prior art of Boockholdt. Accordingly, we will sustain all of the
Examiner’s rejection for essentially those reasons expressed in the Answer,
including the Examiner’s Response to Argument section, and we add the
following primarily for emphasis.

1 Boockholdt et al., US 5,794,094, patented Aug. 11, 1998 (shares the
common assignee of Hewlett-Packard Co. with the instant case on appeal)
Appeal 2012-007031
Application 11/606,724

3
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id.
The only limitation in dispute is whether Boockholdt’s description of
using artificial intelligence based on historical usage information from
previous toner cartridges to estimate toner remaining in a cartridge
encompasses using “an adaptive term,” with “said adaptive term being an
expression comprising a value that is adjusted” based on actual prior printer
toner usage as recited in claim 1 (and corresponding similar language in
claims 15 and 26).
A preponderance of the evidence supports the Examiner’s position
that the artificial intelligence model of Boockholdt would inherently include
an adaptive term since Boockholdt discusses that the artificial intelligence
model includes historical information of previous toner usage (e.g., Ans. 5,
12). Notably, Appellant has not directed our attention to any persuasive
reasoning or credible evidence to establish that the Examiner’s interpretation
is unreasonable, and/or to establish that the Examiner’s position that such an
adaptive term would have been inherent in such an artificial intelligence
model is unreasonable. Appellant has also not directed us to any portion of
the Specification that limits the definition of “adaptive term” to exclude the
type of historical usage information found in Boockholdt’s artificial
intelligence model as pointed out by the Examiner (id. at 12).
Appeal 2012-007031
Application 11/606,724

4
Appellant’s arguments further focus on the use of a toner sensor in
Boockholdt (App. Br. 9, 10). As pointed out by the Examiner, however,
Appellant’s Specification also includes the use of a toner level sensor (Ans.
11; Spec. para. [0052]). Each independent claim uses the term
“comprising,” and thus does not preclude the use of a toner level sensor.
Accordingly, we affirm the Examiner’s anticipation rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

cdc