OCHI, KAZUHIRO et al.

Patent Trials and Appeals Board

Dec 26, 2019

15115268 - (D) (P.T.A.B. Dec. 26, 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.
15/115,268 07/29/2016 KAZUHIRO OCHI 64145-US-988-PCT 1010
31561 7590 12/26/2019
JCIPRNET
P.O. Box 600 Taipei Guting
Taipei City, 10099
TAIWAN
EXAMINER
VALENCIA, ALEJANDRO
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
Belinda@JCIPGROUP.COM
USA@JCIPGROUP.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAZUHIRO OCHI and AKIRA TAKEUCHI
____________

Appeal 2019-001450
Application 15/115,268
Technology Center 2800
____________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
JEFFREY R. SNAY, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1–8. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Appellant states the real parties in interest are Kazuhiro Ochi, the first
named inventor, and MIMAKI ENGINEERING CO. LTD. Appeal Brief,
filed August 2, 2018 (“Appeal Br.”) 1.
2 Non-Final Action, mailed April 3, 2018 (“Non-Final Act.”).
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STATEMENT OF THE CASE
Background
The subject matter on appeal “relates to an inkjet printing apparatus, a
program, and a recording medium.” Specification, filed July 29, 2016
(“Spec.”) ¶ 1. According to the Specification, an inkjet printer can eject ink
and radiate ultraviolet light on an outward direction and on a homeward
direction. Id. ¶ 4. However, the diameter of formed ink dots are different if
the outward direction and the homeward direction have a difference in the
time between ink ejection and irradiation. Id. ¶ 5. The Specification states
that such a difference in ink dot diameter deteriorates image quality. Id.
The Specification discloses an inkjet printing apparatus including,
among other things, an irradiation control means configured to perform
control for selecting an irradiation element for the homeward way that has a
distance from a certain nozzle smaller than a distance for an irradiating
element having a maximum distance difference with respect to the distance
between the certain nozzle and an irradiating element selected for the
outward way. Id. ¶ 7. The Specification states that such an apparatus makes
it possible to reduce the time difference from ink ejection to irradiation
between the outward way and homeward way, which makes it possible to
suppress variation in dot diameter. Id. ¶ 8.
Of the appealed claims, claim 1 is independent. Claim 1 is
representative of the subject matter on appeal, and reproduced below:
1. An inkjet printing apparatus comprising:
a head configured to eject ink which hardens if being
subjected to irradiation with light, onto a recording medium;
a plurality of irradiators configured to irradiate the ink
ejected from the head, with light; and
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an irradiation controller configured to control light
irradiation of the plurality of irradiators,
wherein the head is configured to relatively reciprocate in
a scan direction with respect to a mounting table for mounting
the recording medium,
the plurality of irradiators is disposed, such that the
plurality of irradiators is aligned in the scan direction and the
head is disposed between at least two of the irradiators, and is
configured to relatively reciprocate in the scan direction with
respect to the mounting table, together with the head,
on each of the plurality of irradiators, a plurality of
irradiating elements is mounted, such that at least two
irradiating elements of the plurality of irradiating elements are
disposed at different distances from each other from at least one
nozzle of the nozzles of the head in the scan direction,
the irradiation controller is configured to perform control
to select a first irradiating element to irradiate the ink ejected
from a certain nozzle with light when the head is reciprocating
in a first direction away from an initial position, whereas other
unselected irradiating elements in between the first irradiating
element and the certain nozzle do not irradiate light, and a
distance between the first irradiating element and the certain
nozzle is defined as a first distance X1;
the irradiation controller is then configured to perform
control to select a second irradiating element to irradiate the ink
ejected from the certain nozzle with light when the head is
reciprocating in a second direction opposite to the first
direction, whereas other unselected irradiating elements in
between the second irradiating element and the certain nozzle
do not irradiate light, and a distance between the second
irradiating element and the certain nozzle is defined as a second
distance X2, and a distance difference (X2 minus X1) between
the second distance X2 and the first distance X1 is smaller than
a maximum distance difference (X3 minus X1) between a third
distance X3 and the first distance X1, such that the third
distance X3 is a distance between another irradiating element
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that do not irradiate light and the certain nozzle when the head
is reciprocating in the second direction.
Appeal Br. 13–14 (Claims App’x).
The Reference
Usuda US 8,746,824 B2 June 10, 2014
The Rejections
The Examiner maintains the following rejections on appeal:
1. Claims 1 and 5 are rejected under 35 U.S.C. § 112(b) as
indefinite; and
2. Claims 1–8 are rejected under 35 U.S.C § 102(a)(1) as
anticipated by Usuda.
Non-Final Act. 2–7.
OPINION
Indefiniteness rejection
In rejecting claims 1 and 5, the Examiner concludes the limitation
“unselected irradiating elements in between the second irradiating element
and the certain nozzle do not irradiate light” recited in claim 1 is indefinite
because Appellant’s invention (for example, the portion of the apparatus in
Figure 2) does not appear to contain irradiating elements in between the
second irradiating element and a certain nozzle. Non-Final Act. 2. The
Examiner further explains in the Answer that the intended meaning of the
claim language is not clear “given the fact that such an ‘other irradiating
element’ could exist only in a fraction of the configurations possible
according to Appellant’s specification and could not exist at all in the
embodiment of Appellant’s figure 2.” Examiner’s Answer, dated October 4,
2018 (“Ans.”) 2–3.
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After having considered the evidence presented in this appeal and
each of Appellant’s contentions, we are persuaded that Appellant identifies
reversible error with respect to the Examiner’s rejection of claims 1 and 5
under 35 U.S.C. § 112(b). Because claim 5 depends from claim 1, we need
only address independent claim 1. We reverse the Examiner’s rejection for
the reasons explained below.
Appellant asserts that Figure 2 depicts one embodiment and that the
first irradiating element and second irradiating element may be altered
within the scope of claim 1 in order to fulfill the distance difference
conditions recited in claim 1. Appeal Br. 5–6. We reproduce Appellant’s
Figure 2 below.

Figure 2 is a view that schematically illustrates the structure of carriage 10,
which is included in printing apparatus 1. Spec. ¶ 15. Carriage 10 includes
head 11, which has nozzles n formed therein for ejecting ink, and two
irradiating units, 12A and 12B, for irradiating ultraviolet light onto ink
ejected from head 11. Id. ¶¶ 22–23, 25. Each of irradiating units 12A and
12B has a plurality of irradiating elements, e.g., E1, E2, E3. Id. ¶ 27. As
depicted in Figure 2, the distances of irradiating elements E1, E2, and E3
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from selected or certain nozzle n are L1, L2, and L3, respectively, and the
distances differ (distance L1 is shorter than distance L2, and distance L2 is
shorter than distance L3). Id. ¶ 29. In the Figure 2 embodiment, the
distance difference between L3 (the distance from irradiating element E3 to
nozzle n) and L1 (the distance from irradiating element E1 to nozzle n) is
larger than the distance difference between L2 (the distance from irradiating
element E2 to nozzle n) and L1 (the distance from irradiating element to
nozzle n). Id. ¶ 35. In other words, L3 minus L1 is larger than L2 minus
L1. Thus, E2 would be selected as the second irradiating element. See
Appeal Br. 13–14 (claim 1). In this embodiment, there are no irradiating
elements between the second irradiating element and the certain nozzle.
To illustrate that the irradiating elements may be altered in other
embodiments that claims 1 and 5 encompass, Appellant modifies Figure 2 to
select nozzle n in a near right position and E1 as the first irradiating element.
Appeal Br. 6. We reproduce Appellant’s Modified Figure 2 below.

Like Figure 2, Modified Figure 2 is a view that schematically illustrates the
structure of carriage 10, which is included in printing apparatus 1. In
Modified Figure 2, selected or certain nozzle n is different than in
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unmodified Figure 2, resulting in different distances (L1, L2, L3) between
irradiating elements (E1, E2, E3) and nozzle n than in Figure 2. See id.
Appellant asserts that, in Modified Figure 2, the selected second irradiating
element must be E3 and not E2, because L1 minus L2 is larger than L3
minus L1. Id. In other words, irradiating element E3 satisfies the condition
recited in claim 1 that “a distance difference (L1 minus L3) between the
second distance L3 and the first distance L1 is smaller than a maximum
distance difference (L1 minus L2).” Id. Appellant contends that, in this
example, irradiating element E2 is unselected, is between second irradiating
element E3 and the certain nozzle, and does not irradiate light. Id.
Appellant’s arguments are persuasive. Claim 1 recites “whereas other
unselected irradiating elements in between the second irradiating element
and the certain nozzle do not irradiate light.” The Examiner appears to
construe this limitation as requiring that there are always unselected
irradiating elements between the second irradiating element and the certain
nozzle. See Final Act. 2; Ans. 3. However, we determine that the limitation
contains conditional language. That is, the claim does not require unselected
irradiating elements in between the second irradiating element and the
certain nozzle, but if there are such unselected irradiating elements, then the
unselected irradiating elements do not irradiate light. Thus, we agree with
Appellant that one of ordinary skill in the art would be able to understand
the meaning of claim 1.
Accordingly, we reverse the Examiner’s rejection of claims 1 and 5
under § 112(b).

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Anticipation rejection
The Examiner rejects claims 1–8 as anticipated by Usuda. Non-Final
Act. 3–7. As to claim 1, the Examiner finds Usuda discloses an inkjet
printing apparatus comprising, among other things, a head, a plurality of
irradiators, and an irradiation controller. Non-Final Act. 3–4. The Examiner
finds Usuda’s irradiation controller is configured to perform control to,
among other things, select a first irradiating element to irradiate ink ejected
from a certain nozzle when the head is reciprocating in a first direction away
from an initial position. Id. at 4–5. The Examiner also finds the irradiation
controller is configured to perform control to select a second irradiating
element based upon the distance conditions claim 1 recites. Id. at 5.
Appellant contends Usuda does not teach selecting irradiating
elements based upon the distance differences recited in claim 1. Appeal
Br. 8. Specifically, Appellant argues that Usuda merely detects a fault in a
light emitting element, enters a fault mode in which the row of the light
emitting element is turned off, and performs recording with the remaining
light emitting element rows. Id. at 8, 10–11. Appellant also argues that
Usuda discloses a partially-in-use mode in which one or a combination of
three light emitting element rows can be used, but the rows are not selected
based on a distance difference. Id. at 9.
Appellant’s arguments are unpersuasive. “A patent applicant is free
to recite features of an apparatus either structurally or functionally.” In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Swinehart, 439 F.2d
210, 212 (CCPA 1971) (“there is nothing intrinsically wrong with the use of
[functional language] in drafting patent claims”). In order to be accorded
patentable weight, however, functional language in an apparatus claim must
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limit the claim in terms of structure that provides functionality not inherent
in the prior art. Schreiber, 128 F.3d at 1477–78; MPEP § 2114. Further, a
claim containing a “recitation with respect to the manner in which a claimed
apparatus is intended to be employed does not differentiate the claimed
apparatus from a prior art apparatus” if the prior art apparatus teaches all the
structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647
(BPAI 1987).
Here, claim 1 recites, among other things, an “irradiation controller.”
Usuda discloses control unit 21 that, in a fault mode, stops using the light
emitting element row in which the fault is detected and changes the row used
to another light emitting element row. Usuda 10:33–37, 12:57–62. Further,
as Appellant notes, Usuda also discloses a partially-in-use mode in which
control unit 21 selects one or two light emitting element rows from the three
light emitting element rows. Id. at 10:12–18. Therefore, Usuda discloses an
irradiation controller.
Claim 1 also recites that the irradiation controller “is configured to
perform control to select a first irradiating element to irradiate the ink
ejected from a certain nozzle with light when the head is reciprocating in a
first direction away from an initial position,” and “a distance between the
first irradiating element and the certain nozzle is defined as a first distance
X1.” And claim 1 recites that the irradiation controller also is “configured to
select a second irradiating element to irradiate the ink ejected from the
certain nozzle with light when the head is reciprocating in a second direction
opposite to the first direction,” whereas “other unselected irradiating
elements in between the second irradiating element and the certain nozzle do
not irradiate light, and a distance between the second irradiating element and
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the certain nozzle is defined as a second distance X2,” and a distance
difference between the second distance and the first distance is smaller than
a maximum distance difference.
The “configured to” language of claim 1 regards the irradiation
controller’s functions. Appellant does not persuasively argue that these
functions limit claim 1’s structure beyond that which the Examiner finds in
Usuda. We, therefore, do not accord the functions patentable weight over
the structure described in Usuda. See Schreiber, 128 F.3d at 1477–78.
The question is whether Usuda’s apparatus is capable of performing
the recited selections. See id. at 1478 (explaining that where there is reason
to conclude that the structure of the prior art is inherently capable of
performing the recited function, the burden shifts to the applicant to show
that the recited function patentably distinguishes the claimed structure from
the prior art structure). Here, the Examiner has a reasonable basis for
finding that Usuda’s apparatus is capable of performing the selections. As
noted above, Usuda discloses a fault mode in which control unit 21 turns off
one row of light emitting elements containing a fault and selects or uses a
different row of light emitting elements that has the recited distance
difference. Usuda 10:33–37, 12:57–62; see Non-Final Act. 4–5 (explaining
how Usuda’s apparatus can carry out the recited selections with reference to
Usuda’s Figure 3). When Usuda’s apparatus selects or uses a different row
of light emitting elements in the fault mode, there are unselected light
emitting elements between the first light emitting element and the certain
nozzle and between the second light emitting element and the certain nozzle
that do not irradiate light. Usuda 10:33–37, 12:57–62, Fig. 3. And the
second row of irradiating elements has the distance difference recited in
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claim 1. Usuda Fig. 3. Usuda’s apparatus also is capable of performing the
recited selections in the partially-in-use mode. Usuda 10:12–25.
Appellant appears to argue that claim 1 requires the irradiation
controller to select an irradiation element on the basis of whether the
irradiating element has a distance difference that meets certain criteria.
Appeal Br. 10–11. We disagree. Claim 1 recites that an irradiation
controller is configured to select a second irradiating element and the second
irradiating element has the claimed distance difference due to the second
irradiating element being positioned a distance from a certain nozzle that
more closely matches a distance between a first irradiating element and the
certain nozzle than the maximum distance difference recited by claim 1. For
the reasons noted above and those the Examiner provides, Usuda’s control
unit 21 is configured to select a second irradiating element having such a
position and distance difference.
Appellant also asserts that Usuda’s apparatus can result in light
emitting elements having a smaller distance difference being turned off due
to a fault, which results in the selection of light emitting elements with a
larger distance difference. Appeal Br. 8. Appellant argues that in light of
the many possibilities that can occur, the Examiner has chosen specific rows
of Usuda’s light emitting elements in an act of impermissible hindsight. Id.
at 8–9.
Appellant’s arguments are unpersuasive. First, we note that hindsight
is not relevant to anticipation. Cf. Seachange Int’l, Inc. v. C-Cor, Inc., 413
F.3d 1361, 1380 (Fed. Cir. 2005). Further, it is not necessary for a reference
to disclose specific examples of the claimed subject to anticipate. Rather, to
anticipate, one skilled in the art must be able to “at once envisage” the
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claimed subject matter in the prior art disclosure. In re Petering, 301 F.2d
676, 681 (CCPA 1962). Here, we find that one of ordinary skill in the art
would at once envisage specific rows that Usuda’s fault and partially-in-use
modes select. As we explain above, in Usuda’s fault mode, control unit 21
stops using a light emitting element row in which the fault is detected and
changes the row used to another light emitting element row. Usuda 10:33–
37, 12:57–62. Given that Usuda discloses only three rows of light emitting
elements (i.e., rows 39A, 39B, and 39C of light emitting elements 19A or
19B in Usuda’s Fig. 3) and one row is turned off when a fault occurs in that
row (e.g., row 39A), only two rows are left to select from for use (e.g., row
39B or 39C). Thus, one of ordinary skill in the art can easily envisage two
specific scenarios after a row of light emitting elements is turned off due to a
fault and Usuda’s control unit 21 selects another individual row. Id. at
10:33–37. Similarly, an ordinarily skilled artisan can at once envisage the
limited scenarios in which Usuda’s partially-in-use mode selects one of the
three rows (i.e., one of rows 39A, 39B, and 39C) for a given set of light
emitting elements (i.e., 19A or 19B). Id. at 10:12–18.
Accordingly, we affirm the Examiner’s rejection of claim 1 under
35 U.S.C. § 102(a)(1) as anticipated by Usuda. Appellant does not argue
claims 2–8 separately from claim 1. Appeal Br. 8–11. Thus, we also affirm
the Examiner’s rejection of claims 2–8 under 35 U.S.C. § 102(a)(1) as
anticipated by Usuda.
CONCLUSION
The Examiner’s rejection of claims 1 and 5 under 35 U.S.C. § 112(b)
is reversed and the Examiner’s rejection of claims 1–8 under 35 U.S.C.
§ 102(a)(1) is affirmed.
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In summary:
Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 5 112(b) 1, 5
1–8 102(a)(1) Usuda 1–8
Overall
Outcome
1–8

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