Ex parte Compton

Board of Patent Appeals and Interferences

Aug 21, 1998

08322971 (B.P.A.I. Aug. 21, 1998)

Application for patent filed October 13, 1994. According to appellant, the1
application is a continuation of Application 07/968,952, filed October 29, 1992, now
abandoned.
Claims 1, 6, 10 and 12 have been amended subsequent to final rejection.2
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN T. COMPTON
_____________
Appeal No. 96-3102
Application 08/322,9711
______________
ON BRIEF
_______________
Before MEISTER, FRANKFORT and NASE, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
John T. Compton (the appellant) appeals from the final
rejection of claims 1-3 and 5-12. Claim 13, the only other2
claim remaining in the application, stands allowed.
Appeal No. 96-3102
Application 08/322,971
2
We REVERSE.
The appellant's invention pertains to a thermal printing
system adapted to compensate for changes in power supply
voltage as a function of the number of resistance elements
that are simultaneously energized, and to a method of
operating such a thermal printing system. Independent claims
1 and 10 are further illustrative of the appealed subject
matter and copies thereof may be found in the appendix to the
brief.
The references relied on by the examiner are:
Sasaki 5,109,235 Apr. 28, 1992
Bruch 0 458 507 Nov. 27, 1991
(European Patent Application)
Claims 1-3 and 5-12 stand rejected under 35 U.S.C. § 103
as being unpatentable over the European patent application in
view of Sasaki.
The examiner's rejection is explained on pages 3-5 of the
answer. The arguments of the appellant and examiner in
support of their respective positions may be found on pages 4-
Appeal No. 96-3102
Application 08/322,971
3
6 of the brief and pages 5 and 6 of the answer.
OPINION
Having carefully considered the respective positions
advanced by the appellant in the brief and the examiner in the
answer, it is our conclusion that the above-noted rejection is
not sustainable. In rejecting claims under 35 U.S.C. § 103
the examiner bears the initial burden of presenting a prima
facie case of obviousness. In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Only if that burden is met does the burden of coming forward
with evidence or argument shift to the applicant. Id. If the
examiner fails to establish a prima facie case, the rejection
is improper and will be overturned. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Each of the independent claims on appeal requires that
the energy applied to the resistance elements during
Appeal No. 96-3102
Application 08/322,971
4
successive drive pulses be determined or measured. The
examiner recognizes that the European patent application does
not teach such an arrangement and relies on Sasaki to overcome
this deficiency. According to the examiner:
The secondary reference to Sasaki is also
concerned with calculating and determining
an appropriate amount of energy to apply to
a thermal print element. Sasaki is added
for completeness to explicitly shown [sic,
show] an energy or heating determining
means (see figures 1, 2, 4 and 8) as
claimed. As shown in figure 8 and
described in columns 6-7, Sasaki employs a
"heating amount calculating section" (12)
and a "pulse number converting section"
(29) that perform the broadly recited
function of determining the energy applied
to the print elements as found in claim 1.
Therefore given that both the primary and
secondary references are concerned with
thermal print pulse compensation as is
conventional, it would have been obvious to
one of ordinary skill in the art to modify
'507 [the European patent application] with
the energy determining means of Sasaki so
that energy levels may be determined with a
simple circuit and a detailed table of
values requiring substantial memory space
would be unnecessary. [Answer, pages 4 and
5.]
We will not support the examiner's position. In
particular, we cannot agree with the examiner's finding that
Appeal No. 96-3102
Application 08/322,971
5
the "heating amount calculating section" (12) depicted by
Sasaki in Fig. 8 (and described in columns 6 and 7), and the
pulse number converting section (29) "perform the broadly
recited function of determining the energy applied to the
print elements as found in claim 1." As we have noted above,
each of the independent claims on appeal (including claim 1)
require that the energy applied to the resistance elements
during successive drive pulses be determined or measured. The
"heating amount calculating section" (12) depicted by Sasaki
in Fig. 8 (and described in columns 6 and 7), however,
performs no such function as the examiner apparently believes.
That is, in column 6, lines 60-62, Sasaki states (with respect
to the embodiment of Fig. 8) that the "heating amount
calculating section 12 have constructions similar to those in
the above-mentioned embodiment." This "heat amount
calculating section" 12 is in more detail described in the
following manner:
Heating amount calculating section 12 is
composed of a heating element (or heating
resistor) number calculating section and
calculates the number of operated heating
elements at each gradation level on the
Appeal No. 96-3102
Application 08/322,971
6
basis of the level frequency counted by
level frequency counter 11. [Column 3,
lines 62-67.]
See also Fig. 4 and column 4, line 56 through column 5, line
16, of Sasaki. As to the pulse number converting section
(29), this section merely accumulates the pulse numbers
calculated by the heating amount calculating section 12 (see
Sasaki, column 6, line 62 through column 7, line 7).
From the above, it is readily apparent that the heat
amount calculating section 12 of Sasaki simply calculates the
number of heating elements operated at each gradation level
and the pulse number converting section 29 merely accumulates
the numbers calculated by the heat amount calculating section
12, and these sections do not measure or determine the energy
applied to the resistance elements during successive drive
pulses. This being the case, the examiner has not established
a prima facie case of obviousness with respect to the subject
matter defined by the claims on appeal.
The decision of the examiner to reject claims 1-3 and 5-
Appeal No. 96-3102
Application 08/322,971
7
12 under 35 U.S.C. § 103 is reversed.
REVERSED
)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Leonard W. Treash, Jr.
Patent Legal Staff
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