Ex Parte Auslander et al

Board of Patent Appeals and Interferences

Jun 20, 2012

10929824 (B.P.A.I. Jun. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUDITH D. AUSLANDER and ROBERT A. CORDERY
____________

Appeal 2010-002778
Application 10/929,824
Technology Center 2800
____________

Before JOHN A. JEFFERY, ERIC B. CHEN, and
STANLEY M. WEINBERG, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-9, 14, 17-23, 28-31, 34, and 35. Claims 10-13, 15, 24-
27, and 32 were withdrawn from consideration, and claims 16, 33, and 36-38
were cancelled. Br. 3.1 We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

1 Throughout this opinion, we refer to the Appeal Brief filed February 19,
2009 (supplemented April 20, 2009) and the Examiner’s Answer mailed July
24, 2009.
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2
STATEMENT OF THE CASE
Appellants’ invention identifies the presence or absence of a particular
type of printer ink. See generally Spec. ¶¶ 0001, 0004-06. Claim 1 is
illustrative:
1. A printer ink identification system comprising:

a detector adapted to detect an excitable very narrow band
luminescent taggant signal feature of an ink consisting of a less than 25nm
bandwidth signal, wherein the ink exhibits a background luminescent
spectral output at a first maximum intensity level that is relatively wideband
compared to the narrow band taggant signal, that overlaps the narrow band
taggant wavelength when excited and wherein the ink also exhibits the
relatively narrow band luminescent taggant signal feature spectral output at a
higher second intensity level when excited, wherein the second intensity
level is at least three times higher than an intensity level adjacent to the very
narrow band luminescent taggant signal;

an excitation source adapted to cause excitation of the excitable
taggant signal feature of the ink; and

a controller coupled to the detector, wherein the controller is adapted
to initiate a predetermined task based, at least partially, upon input from the
detector, wherein

the detector is adapted to provide said input to the controller only if
the second intensity is detected even when the first intensity is detected.

THE REJECTIONS
1. The Examiner rejected claim 14 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Ans. 3-4.
2. The Examiner rejected claim 14 under 35 U.S.C. § 112, second
paragraph as indefinite. Ans. 4.
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3. The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Wen (EP 0 875 384 A2; Nov. 4, 1998) and Jalon (US
4,921,534; May 1, 1990). Ans. 5-7.
4. The Examiner rejected claims 2-9 under 35 U.S.C. § 103(a) as
unpatentable over Wen, Jalon, and Oshima (US 6,303,929 B1; Oct. 16,
2001). Ans. 7-10.
5. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Wen, Jalon, and Naka (US 6,502,916 B1; Jan. 7, 2003).
Ans. 10-11.
6. The Examiner rejected claims 17, 18, and 20-23 under 35 U.S.C.
§ 103(a) as unpatentable over Berson (US 5,502,304; Mar. 26, 1996) and
Wen. Ans. 11-13.
7. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Berson, Wen, and Oshima. Ans. 13-14.
8. The Examiner rejected claim 28 under 35 U.S.C. § 103(a) as
unpatentable over Berson, Wen, and Naka. Ans. 14-15.
9. The Examiner rejected claims 29 and 34 under 35 U.S.C. § 103(a)
as unpatentable over Wen and Naka. Ans. 15-17.
10. The Examiner rejected claims 30 and 31 under 35 U.S.C. § 103(a)
as unpatentable over Wen, Naka, and Berson. Ans. 17-18.
11. The Examiner rejected claim 35 under 35 U.S.C. § 103(a) as
unpatentable over Wen, Naka, and Elgee (US 6,779,862 B2; Aug. 24, 2004).
Ans. 18-19.

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THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that the originally-filed disclosure does not
support the features of claim 14 combined with those of claim 1 from which
claim 14 depends. Ans. 4, 19-20. According to the Examiner, claim 1 was
amended during prosecution to add that the detector is adapted to provide
input to the controller only if the second intensity is detected even when the
first intensity is detected—a feature that is said to not be originally disclosed
in connection with the controller activating a communications section to
send information to a remote location as claimed. Ans. 19-20.
Appellants argue that since claim 14 was never amended, they
possessed the claimed invention when it was filed. Br. 10.

ISSUE
Under § 112, first paragraph, has the Examiner erred in rejecting
claim 14 by finding that the originally-filed disclosure did not reasonably
convey to skilled artisans that Appellants possessed, when the application
was filed, a controller coupled to a detector, the controller adapted to initiate
a predetermined task based at least partially upon input from a detector, the
detector adapted to provide input to the controller only if the second
intensity is detected even when the first intensity is detected, where the
controller is adapted to activate a communications section, as the
predetermined task, to send information to a remote location?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
written description rejection of claim 14 for the reasons indicated by the
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Examiner. Ans. 4, 19-20. Although the actual wording of claim 14 was
never amended as Appellants contend (Br. 10), claim 14 depends from claim
1 and therefore includes the limitations of claim 1. As the Examiner
correctly indicates (Ans. 19), claim 1 was amended during prosecution to
add the last clause reciting that the detector is adapted to provide input to the
controller only if the second intensity level is detected even when the first
intensity is detected. Amd’t filed June 16, 2008. Therefore, when
considered as a whole, claim 14 was effectively amended via the amendment
to its parent claim 1.
Appellants therefore do not persuasively rebut the Examiner’s finding
that Paragraph 0025 of the Specification fails to support the collective
limitations of claims 1 and 14. To be sure, this paragraph notes that “[t]he
detector 122 can detect a strong signal and send it to the controller 116 if the
taggant is present in the ink, and otherwise detects and sends a weak signal.”
Spec. ¶ 0025 (emphases added). The paragraph also notes that “[t]here can
be several options for the meter if the signal is too low, such as those noted
above.” Id. (emphasis added). The paragraph later indicates various
adaptations to the controller in connection with the predetermined task,
including activating a communications section to send information to a
remote location—the feature recited in claim 14.
Notably, however, Paragraph 0025 does not clearly tie this activation
feature to detecting the second intensity as claimed. Nor have Appellants
shown that the originally-filed disclosure teaches such a connection on this
record. To the extent that such a feature may be obvious from this
disclosure, such considerations are hardly sufficient under § 112, for it is
well settled that while the Specification need not recite the claimed invention
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verbatim, a description that merely renders the invention obvious does not
satisfy the written description requirement. Ariad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc).
On this record, we are unpersuaded of error in the Examiner’s finding
that the originally-filed disclosure does not reasonably support the recited
controller’s communications section activation in connection with detecting
the second intensity as recited in claim 14.2

THE INDEFINITENESS REJECTION
For similar reasons, we likewise sustain the Examiner’s indefiniteness
rejection under § 112, second paragraph for the reasons indicated by the
Examiner. Ans. 4, 20. Apart from merely asserting that the Examiner
“appears to admit” that the claim is clear on Page 3 of the Final Office
Action (Br. 11) (an allegation that is unsubstantiated), Appellants do not
address—let alone persuasively rebut—the Examiner’s finding that
Appellants’ original disclosure is unclear regarding whether or not the
claimed controller is adapted to activate a communications section as
claimed when the detector provides input to the controller. Ans. 20. At
best, the disclosure is ambiguous on this point: an ambiguity amply
justifying the Examiner’s indefiniteness rejection of claim 14. See Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim
is amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and

2 Appellants’ contention that the Examiner failed to establish a prima facie
anticipation rejection (Br. 10-11) is inapposite to the Examiner’s written
description and indefiniteness rejections under § 112.
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bounds of the claimed invention by holding the claim unpatentable under
35 U.S.C. § 112, second paragraph, as indefinite.”).

THE OBVIOUSNESS REJECTION OVER WEN AND JALON
The Examiner finds that Wen discloses every recited feature of claim
1 except for the detector details recited in the claim’s first clause, but cites
Jalon as teaching these features in concluding that the claim would have
been obvious. Ans. 5-7, 21-22. In reaching this conclusion, the Examiner
does not give the particulars of the recited second intensity level patentable
weight since they pertain to the spectral output of the ink which is said to not
be part of the recited identification system or otherwise structurally limit the
associated detector. Ans. 6-7, 22.
Appellants argue that there is no reason to combine the references as
proposed. Br. 12-13. According to Appellants, Jalon is non-analogous since
it pertains to a document security thread—not printer ink—and is
temperature dependent nor does Jalon teach or suggest the recited
background signal. Br. 12-13. Appellants add that not only does Wen not
involve identification taggant signaling over a baseline luminance, the
Examiner improperly ignored a positively-recited element pertaining to the
second intensity level that is said to describe the detector’s set threshold. Id.

ISSUE
(1) Under § 103, has the Examiner erred in rejecting claim 1 by
finding that Wen and Jalon collectively would have taught or suggested a
detector adapted to detect an excitable very narrow band luminescent
taggant signal feature of an ink, where, when excited, the ink’s taggant
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signal spectral output has a second intensity level at least three times higher
than an intensity level adjacent to the taggant signal, the detector adapted to
provide input to a controller only if the second intensity is detected even
when the first intensity is detected?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
Based on the record before us, we find error in the Examiner’s
obviousness rejection of independent claim 1. Although we find no error
with the Examiner’s position regarding the respective teachings of Wen and
Jalon and their combinability (Ans. 5-6, 21-22), we nonetheless find the
Examiner’s not giving the recited second intensity level patentable weight
(Ans. 7, 22) problematic. The second intensity level is three times higher
than an adjacent level, and is directly tied to the detector in the last clause of
claim 1 as Appellants indicate. Br. 13. That clause requires that the detector
is adapted to provide input to the controller only if the second intensity is
detected even when the first intensity is detected. Thus, the detector must be
capable of detecting the particular second intensity level specified in claim
1—a finding that has not been made on this record in view of the
Examiner’s ignoring the second intensity level limitation. See Ans. 7, 22.
Nor will we speculate here in the first instance on appeal regarding the
viability of this rejection when the disputed phrase is given patentable
weight.
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That the controller initiates the predetermined task based, at least in
part, upon input from this detector—input provided only if the second
intensity is detected—underscores the requirement that the detector be at
least capable of detecting the second intensity level as claimed to achieve the
recited functionality. In short, the detector’s ability to detect spectral output
at the recited second intensity level (i.e., three times higher than an adjacent
level) is crucial to the controller’s initiating a predetermined task responsive,
at least in part, to that detection as claimed. Therefore, ignoring this critical
aspect of the detector renders the Examiner’s rejection erroneous.
We are therefore persuaded that the Examiner erred in rejecting
independent claim 1.

THE REJECTION OF CLAIMS 2-9 AND 14
Since the Examiner has not shown that the additional cited references
cure the deficiencies noted above regarding independent claim 1, we
likewise reverse the rejections of dependent claims 2-9 and 14 (Ans. 7-11)
for similar reasons. Since this issue is dispositive of our reversing these
claims, we need not reach Appellants’ other arguments regarding these
claims. Br. 14-15.

THE OBVIOUSNESS REJECTION OVER BERSON AND WEN
Regarding representative claim 17, the Examiner finds that Berson
discloses a postage meter with every recited feature except for a response
system adapted to perform a predetermined task based upon the detector not
detecting a threshold value of an identifying feature in the ink, but cites Wen
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as teaching this feature in concluding that the claim would have been
obvious. Ans. 11-12, 24.
Appellants argue that not only do the cited references not detect only
the second intensity level, but they are not combinable as proposed since
Berson senses ink after printing, but Wen senses ink before printing. Br. 16.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claim 17 by
finding that Berson and Wen collectively would have taught or suggested a
detector section adapted to detect the identifying feature of the ink when
above a threshold set at the recited second intensity level?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
We begin by noting that, unlike claim 1, the Examiner treats the
limitation in representative claim 17 reciting that the second intensity level is
at least three times higher than an adjacent level and refers to Berson’s
Figure 6 as teaching this limitation. Ans. 11. We see no error in this
finding, or the Examiner’s other findings regarding Berson. Ans. 11-12.
Nor are we persuaded of error in the Examiner’s citing Wen merely to show
that performing a predetermined task upon the detector not detecting a
threshold value of an identifying feature in the ink as claimed would have
been obvious. Ans. 12, 24 (citing Wen, col. 8, ll. 27-34). That Wen detects
whether the correct ink is installed before printing does not obviate its
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fundamental teaching of performing a predetermined task based on the
detector’s not detecting the identifying feature’s threshold value as claimed.
Providing such a feature in Berson’s system which detects particular printed
inks merely predictably uses prior art elements according to their established
functions—an obvious improvement. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). Nor have Appellants shown that such a combination
would render Berson inoperable or otherwise unsuitable for its intended
purpose and instead rely on unsubstantiated attorney argument. But,
arguments of counsel cannot take the place of factually supported objective
evidence. See In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See Br.
16. We therefore find the Examiner’s reason to combine the teachings of
Berson and Wen supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 17, and claims 18 and 20-23 not separately argued.

THE OBVIOUSNESS REJECTION OVER BERSON, WEN, AND OSHIMA
The Examiner finds that Berson and Wen disclose every recited
feature of claim 19 except for the recited optical bandpass filter, but cites
Oshima as teaching this feature in concluding that the claim would have
been obvious. Ans. 13-14, 24-25. Appellants argue that Oshima does not
teach or suggest an optical bandpass filter of approximately 25nm wide. Br.
16.

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ISSUE
Under § 103, has the Examiner erred in rejecting claim 19 by finding
that Berson, Wen, and Oshima collectively would have taught or suggested
an optical bandpass filter of approximately 25nm wide?

ANALYSIS
We sustain the Examiner’s rejection of claim 19. Not only do
Appellants fail to explain why Oshima does not disclose the recited
bandpass filter (see Br. 16), Appellants do not squarely address the
Examiner’s position based on the collective teachings of the references,
namely (1) Berson’s detecting taggant signal features with less than 25nm
bandwidth, and (2) Oshima’s use of optical bandpass filters. Ans. 24-25.

THE OBVIOUSNESS REJECTION OVER BERSON, WEN, AND NAKA
The Examiner finds that Berson and Wen disclose every recited
feature of claim 28 except for the response system adapted to send
information to a remote location, but cites Naka as teaching this feature.
Ans. 14-15. Appellants reiterate the arguments made for claim 17, and add
that Naka does not teach or suggest a remote host, but rather a local host.
Br. 17.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 28 by finding
that Berson, Wen, and Naka collectively would have taught or suggested a
response system adapted to send information to a remote location?

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ANALYSIS
We sustain the Examiner’s rejection of claim 28 for the reasons
indicated by the Examiner. Ans. 14-15, 25. As the Examiner explains in
connection with claim 14 (reciting a similar limitation), nothing in the claim
precludes the Examiner’s interpretation of “remote” to mean a location that
is separated from the printer ink identification system. Ans. 23. As such,
Appellants do not persuasively rebut the Examiner’s reliance on Naka’s
sending information to a “remote” host computer for at least suggesting the
disputed limitation. Ans. 15 (citing Naka, col. 8, ll. 8-16).

THE OBVIOUSNESS REJECTION OVER WEN AND NAKA
The Examiner finds that Wen discloses every recited feature of claims
29 and 34 except for sending information to a remote location, but cites
Naka as teaching this feature. Ans. 15-16, 25-26. Appellants argue that
Naka not only fails to teach a remote host computer, but the references are
not properly combined since Naka only identifies a cartridge—not a
particular ink in the cartridge. Br. 18. Appellants add that Wen does not
teach or suggest multi-signal transmissions as claimed. Id.

ISSUES
(1) Under § 103, has the Examiner erred in rejecting claims 29 and 34
by finding that Wen and Naka collectively would have taught or suggested
(a) sensing an identification characteristic of the ink comprising multi-signal
transmissions, and (b) a printer sending information to a remote location?
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(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

ANALYSIS
We sustain the Examiner’s rejection of claims 29 and 34 for the
reasons indicated by the Examiner. Ans. 25-26. We add that we find no
error in the Examiner’s reliance on Naka for teaching sending information to
a “remote” host computer for the reasons indicated previously.

THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 30,
31, and 35. Ans. 17-19. Appellants do not particularly identify errors in the
Examiner’s reasoning to overcome the Examiner’s obviousness conclusion
for these claims, but reiterate similar arguments made previously. Br. 19.
We are not persuaded by these arguments for the reasons previously
discussed.

CONCLUSION
The Examiner did not err in rejecting claim 14 under § 112, ¶¶ 1 and
2. Under § 103, the Examiner did not err in rejecting claims 17-23, 28-31,
34, and 35, but erred in rejecting claims 1-9 and 14.

ORDER
The Examiner’s decision rejecting claims 1-9, 14, 17-23, 28-31, 34,
and 35 is affirmed-in-part.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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