Ex Parte Chang et al

Patent Trial and Appeal Board

Dec 26, 2018

14374230 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/374,230 07/24/2014
22879 7590 12/28/2018
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Seongsik Chang
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
83992390 9670
EXAMINER
SCHMITT, BENJAMIN R
ART UNIT PAPER NUMBER
2852
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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):
ipa.mail@hp.com
barbl@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 SEONGSIK CHANG, MICHAEL H. LEE, OMER GILA, and
PAUL F. MATHESON
Appeal2018-002239
Application 14/374,230
Technology Center 2800
Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
DEBRA L. DENNETT, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from
the Primary Examiner's final decision to reject claims 1---6, 9, 11, 12, 14--16,
22-26, and 28-34. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 The Appellants identify the real party in interest as "Hewlett-Packard
Development Company, L.P." (Appeal Brief filed August 28, 2018 ("Appeal
Br.") 3).
2 Appeal Br. 6-31; Reply Brief filed December 21, 2017 ("Reply Br.") 2-1 O;
Final Office Action entered March 28, 2017 ("Final Act.") 2-16; Examiner's
Answer entered November 2, 2017 ("Ans.") 2-10.
Appeal2018-002239
Application 14/374,230
I. BACKGROUND
The subject matter on appeal relates to a printing system with a metal-
surface charge element including a metal external surface in a charge-
transferring relation with an imaging surface and is in a glow discharge
regime during printing (Specification filed July 24, 2014 ("Spec."), ,r 18 and
Abstract). Representative claim 1 is reproduced from the Claims Appendix
to the Appeal Brief, with key limitations emphasized, as follows:
1. A printing system comprising a metal-surface
charge element that includes at least one metal charge roller to
deposit electric charge on an imaging surface, each metal charge
roller including a metal external surface in charge-transferring
relation with the imaging surface and in a glow discharge regime
during operation of the printing system for printing, wherein the
glow discharge regime excludes filamentary streamer
discharges.
(Appeal Br. 32.)
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections listed as
follows:
A. Claims 1-6, 9, 11, 12, 14--16, 22-26, and 28-34 under 35
U.S.C. § 112, ,r 1, as failing to comply with the enablement
requirement;
B. Claims 1-6,3 9, 11, 12, 14--16, 18-26, and 28 under 35 U.S.C.
§ 112, ,r 2, as indefinite;
3 The statement of the rejection indicates that claim 7 is also rejected (Ans.
2; Final Act. 6). Claim 7, however, was canceled (Amendment filed March
15, 2017 at 2).
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Appeal2018-002239
Application 14/374,230
C. Claim 22 under 35 U.S.C. § 112, ,r 4, as being in improper
dependent form for failing to further limit the subject matter of
the claim upon which it depends or for failing to include all the
limitations of the claim upon which it depends;
D. Claims 1, 2, 5, 9, 22, 29, and 31-33 under 35 U.S.C. § I02(b)
as anticipated by Kitazawa et al. 4 ("Kitazawa");
E. Claims 3, 23, and 24 under 35 U.S.C. § I03(a) as unpatentable
over Kitazawa in view of Ueno et al. 5 ("Ueno");
F. Claim 11 under 35 U.S.C. § I03(a) as unpatentable over
Kitazawa in view of Oron et al. 6 ("Oron"); and
G. Claim 30 under 35 U.S.C. § I03(a) as unpatentable over
Kitazawa in view of Watanabe et al. 7 ("Watanabe").
(Ans. 2-10; Final Act. 2-16.)
III. DISCUSSION
Rejection A (Enablement). The Examiner's position is premised on
the belief that "[t]he breadth of the claims is extremely broad" given that
thresholds for glow discharge and streamer discharge regimes depend on
several identified parameters, and, therefore, a multitude of variables must
be considered in evaluating the scope of "glow discharge regime" (Final
Act. 3--4). According to the Examiner, none of the parameters are disclosed
4 US 2008/0085131 Al, published April 10, 2008.
5 US 4,387,980, issued June 14, 1983.
6 US 2008/0267646 Al, published October 30, 2008.
7 US 2004/0213600 Al, published October 28, 2004.
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Appeal2018-002239
Application 14/374,230
in any specific or quantifiable way, and, therefore, one skilled in the relevant
art would be subject to undue experimentation (id. at 5---6).
We agree with the Appellants that the Examiner's position is not well-
founded. Because we are in substantial agreement with the reasons given by
the Appellants, we adopt those reasons as our own (Appeal Br. 8-23). As
the Examiner acknowledges, "the basic idea of charging an imaging surface
by a metal charge roller held at a certain voltage is known" (Final Act. 4).
In addition, the Examiner finds that the level of predictability in the art is
"high" (id.). Given the knowledge or state of the art, the high level of
predictability in the art, and the actual guidance provided in the
Specification in terms of exemplified voltages (Spec. ,r,r 18-24; Drawings,
Figs. 2-3), it would reasonably appear that one skilled in the relevant art
would be able to determine-through nothing more than routine
experimentation-the voltages and other parameters necessary to operate the
printing system in a glow discharge regime for a given metal-surface charge
element. In this regard, even a considerable amount of experimentation is
permissible ifit is merely routine. In re Wands, 858 F.2d 731,737 (Fed.
Cir. 1988).
The Examiner states that the phrase "glow discharge regime" is not
commonly found in the art (Final Act. 4). The description in the
Specification, however, provides sufficient guidance on what constitutes a
"glow discharge regime," in which the metal external surface of the metal
charge roller makes rolling physical contact with, and deposits electric
charge on, an imaging surface while avoiding non-uniform distribution of
the charge on the imaging surface (i.e., "streamer discharge region") (Spec.
,r,r 18-19, 21).
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Appeal2018-002239
Application 14/374,230
For these reasons, and those given by the Appellants, we do not
sustain Rejection A.
Rejection B (Indefiniteness). The Examiner states that the phrase
"glow discharge regime" in claim 1 is indefinite because the thresholds for
glow discharge and streamer discharge depend on various parameters, but
none of these parameters are disclosed in any specific or quantifiable way
(Final Act. 6).
Again, we agree with the Appellants (Appeal Br. 23-24). As we
discussed above in our discussion of Rejection A, the Specification
reasonably apprises one skilled in the relevant art as to what constitutes a
"glow discharge regime" (Spec. ,r,r 18-19, 21 ).
Accordingly, we do not sustain Rejection B.
Rejection C (Improper Dependent Claim). Claim 22 recites: "The
printing system of claim 1, wherein at least some of the excluded
filamentary streamer discharges have an amplitude of current that is at least
one order of magnitude greater than an amplitude of current in the glow
discharge regime" (Appeal Br. 35).
The Examiner finds that claim 22 is an improper dependent claim
because its limitations are directed to elements (i.e., filamentary streamer
discharges), which are explicitly excluded by claim 1 (Final Act. 7).
We disagree with the Examiner. As the Appellants argue, claim 22
further defines the scope of the term "glow discharge regime [which]
excludes filamentary streamer discharges" recited in claim 1 by reciting a
specific relationship between the current amplitude in the glow discharge
regime and that in the streamer discharge region (Appeal Br. 24--25).
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Appeal2018-002239
Application 14/374,230
Therefore, claim 22 further limits the scope of claim 1 as required under 3 5
U.S.C. § 112, if 4.
Accordingly, we do not sustain Rejection C.
Rejection D (Anticipation). The Appellants rely on the same
arguments for all claims subject to this rejection (Appeal Br. 25-28). 8
Therefore, we confine our discussion to claim 1, which we select as
representative pursuant to 37 C.F.R. § 4I.37(c)(l)(iv). As provided by this
rule, claims 2, 5, 9, 22, 29, and 31-33 stand or fall with claim 1.
The Examiner finds that Kitazawa describes a printing system
including a charging roller 231 having a metallic external surface in charge-
transferring relation with an imaging surface 21 (Final Act. 8) (referring to
Kitazawa's Figs. 1-3 and, e.g., ,r 33). The Examiner finds that Kitazawa's
charging roller 231 has a voltage of -600V, which creates a potential
difference that falls within a range exemplified in the current Specification
as suitable for providing a "glow discharge regime" condition during
operation (Final Act. 8) ( citing Kitazawa ,r 49). In addition, the Examiner
finds that Kitazawa describes a procedure for detecting abnormally large
discharges between the charging roller and the imaging surface, which
would avoid filamentary streamer discharges (Final Act. 8; Ans. 9) (citing
Kitazawa ,r,r 52-54, 80).
8 Merely pointing out what a claim recites and arguing-without any
analysis-that the prior art does not disclose or suggest certain claim
limitations are insufficient to warrant separate consideration of such a claim.
Cf In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board
reasonably interpreted Rule 41.3 7 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.").
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Appeal2018-002239
Application 14/374,230
The Appellants contend that "Kitazawa fails to address a printing
system operable in a glow discharge regime" as recited in claim 1 (Appeal
Br. 25; emphasis added). Specifically, the Appellants argue that Kitazawa's
disclosure of -600V does not describe the "glow discharge regime"
limitation because it encompasses more than a single example of a numeric
voltage range (id.). According to the Appellants, a "glow discharge regime"
as recited in claim 1 is affected by various parameters and excludes any
filamentary streamer discharge behavior (id. at 25-26).
The Appellants' arguments fail to identify any reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Consistent with the Examiner's position (Ans. 8), Appellants fail to
specifically point out any structural limitation in claim 1 that is lacking in
Kitazawa's printing system. Claim 1 is directed to a printing system.
Therefore, the manner of its operation does not confer patentability to the
claimed system (i.e., apparatus) over Kitazawa's printing system, which, as
in the claimed system, includes a charging roller 231 with an outer surface
made of a metallic material (Kitazawa Fig. 3 and ,r 33). See, e.g., In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citing, e.g., In re Sinex,
309 F.2d 488, 492 (CCP A 1962)).
Here, the Appellants' Specification reasonably informs one skilled in
the relevant art that for a given metal charge roller made of a particular
metallic material with specific geometric characteristics, an operating
voltage range and other environmental parameters may be selected to allow
the printing system to operate within a "glow discharge regime" without any
streamer discharge (Spec. ,r,r 29-30). The Appellants offer no evidence to
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Application 14/374,230
show that Kitazawa's printing system could not be operated in a "glow
discharge regime" without any filamentary streamer discharge.
Moreover, consistent with the Examiner's position, Kitazawa's
charging roller 231 is operated under conditions that are comparable to those
disclosed as suitable in the current Specification (compare Kitazawa ,r,r 49,
53-54, 80 with Spec. ,r 29). Therefore, it would reasonably appear that
Kitazawa's printing system would inherently operate in a "glow discharge
regime" without any filamentary streamer discharge, as recited in the
intended use or operational limitations of claim 1. The Appellants offer no
evidence to the contrary.
For these reasons, we uphold Rejection D.
Rejections E--G (Obviousness). The Appellants' principal
arguments against Rejections E through Gare the same as those offered
against Rejection D (Appeal Br. 28-30). Therefore, we sustain Rejections E
through G for the same reasons given for Rejection D.
IV. SUMMARY
Rejections A through Care not sustained. Rejections D through Gare
sustained. Therefore, the Examiner's final decision to reject claims 1-3, 5,
9, 11, 22-24, and 29-33 is affirmed, but the decision to reject claims 4, 6,
12, 14--16, 25, 26, 28, and 34 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
8