Ex Parte Ernst et al

Patent Trial and Appeal Board

Oct 12, 2016

13042857 (P.T.A.B. Oct. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/042,857 03/08/2011 Larry Ernst
76073 7590 10/12/2016
InfoPrint Solutions/ Blakely
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
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.
8185Pl 13 7765
EXAMINER
MORGAN, JEFFREY CHAD
ART UNIT PAPER NUMBER
2864
MAILDATE DELIVERY MODE
10/12/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY ERNST and GEORGE PROMIS
Appeal2015-006706
Application 13/042,857
Technology Center 2800
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 1, 4--12, 14--17, and 22-24. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse the Examiner's rejection under 35 U.S.C. § 103(a) and
issue a new ground of rejection under 35 U.S.C. § 112, second paragraph.
1 The real party in interest is identified as InfoPrint Solutions Company
LLC. (Appeal Brief, dated December 15, 2014 ("App. Br."), 3.)
2 Final Rejection dated July 22, 2014 ("Final Act.").
Appeal2015-006706
Application 13/042,857
CLAIMED SUBJECT MATTER
The invention is directed to "ink jet printing systems" and is said to
address the need "to obtain defective jet detection information from the
printer." (Spec. i-fi-f l, 4.) 3 Claim 10, reproduced below, is illustrative of the
claimed subject matter:
10. A method comprising:
printing a flush line pattern on a medium;
capturing an image of the flush line pattern;
analyzing the image of the flush line pattern to extract
print quality information; and
detecting a density change and one or more color value
changes at a component of the flush line pattern corresponding
to an ink jet nozzle location to determine if a defective jet
condition has been detected, wherein detecting the density
change and color value changes comprises estimating original
optical density values for the color values in the flush line pattern
and comparing the values to measured color values.
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Ino
Teshigawara
US 2009/0189928 Al July30, 2009
US 2011/0211008 Al Sept. 01, 2011
3 Application 13/042,857, Detective Jet Detection Mechanism, filed
September 08, 2011. We refer to the '"857 Specification," which we cite as
"Spec."
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Application 13/042,857
REJECTION4
Claims 1, 4--12, 14--17, and 22-24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ino in view of Teshigawara. (Final Act.
3.)
OPINION
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Claim 105
The sole issue on appeal is whether the references teach or suggest "a
method comprising ... estimating original optical density values for the
color values in the flush line pattern and comparing the values to measured
color values" as recited in claim 10. (See App. Br. 8; see also Ans. 2-3.)6
For reasons explained below, we determine no reasonably definite
meaning can be ascribed to the claim phrase "estimating original optical
density values for the color values in the flush line pattern and comparing
the values to measured color values," which is recited in each of the
appealed independent claims (claims 1 and 10). Therefore, any
consideration of the merits of the outstanding rejections would be
improperly based on speculative assumptions as to the scope of the claims.
4 The rejection of claim 6 under 35 U.S.C. § 112, second paragraph was
withdrawn as a result of the after-final amendment filed August 12, 2014.
(Compare Final Act. 2 with Advisory Action dated September 16, 2014.)
5 Appellants do not present separate arguments for the remaining claims
including independent claim 1. These claims therefore stand or fall with
claim 10. (See App. Br. 7, 9; see also Reply Brief dated July 6, 2015
("Reply"), 2-3.)
6 Examiner's Answer dated May 6, 2015 ("Ans.").
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Appeal2015-006706
Application 13/042,857
See In re Wilson, 424 F.2d 1382, 1385 (CCP A 1970); In re Steele, 305 F.2d
859, 862---63 (CCPA 1962). We therefore decline to reach the merits, but
REVERSE pro forma all grounds of rejection and enter the following NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b):
Claims 1, 4--12, 14--17, and 22-24 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite due to the claim phrase "estimating original
optical density values for the color values in the flush line pattern and
comparing the values to measured color values."7
"A determination of claim indefiniteness is a legal conclusion that is
drawn from the court's performance of its duty as the construer of patent
claims." Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed.
7 Although Appellants state in the Appeal Brief that there are no known
"appeals ... related to the present appeal that will directly affect, be directly
affected by, or have a bearing on the Board's decision" (App. Br. 3), we note
that i\.ppeal No. 2015-004787 ("'4787 i\.ppeal") for i\.pplication No.
13/242,507 ("'507 Application" or "'507 Specification") is also pending
before the Board. The '507 Specification incorporates by reference the '857
Application at issue here. ('507 Spec. if 27.) The two applications do not
have any inventors in common - the '507 Application lists "Kartheek
Chandu" and "Carl Bildstein" as inventors whereas the '857 Application at
issue here lists "Larry Ernst" and "George Promis" as inventors. (Title
pages of the '507 Spec. and the '867 Spec.)
The rejections in the '4 7 84 Appeal are based on prior art that differs from
the art cited in the present case. The issue in the '4 784 Appeal is whether
the cited prior art "disclose[ s] or suggest[ s] a process of comparing optical
density values to measured color values to determine differences in order to
detect a density and color change." (Appellants' Brief in the '4784 Appeal
dated November 24, 2014, 9) (emphases in original).
In the event that prosecution continues, Appellants and/or the Examiner may
wish to consider the status and the disclosure of the '507 Application.
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Appeal2015-006706
Application 13/042,857
Cir. 2008) (quoting Personalized Media Commc ;ns, LLC v. Int? Trade
Comm 'n, 161 F.3d 696, 705 (Fed. Cir. 1998)). During examination, claim
terms must be given their broadest reasonable construction consistent with
the Specification. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). "If the claims do not 'particularly point[] out and distinctly
claim[ ]', in the words of section 112, ... the appropriate PTO action is to
reject the claims for that reason." In re Zietz, 893 F.2d 319, 322 (Fed. Cir.
1989).
In this case, the relevant disclosure of the '857 Specification is limited
to a single sentence that is almost identical to the claim language: "In one
embodiment, the print irregularities are determined by estimating original
optical density values for the color values in the flush line pattern and
comparing those values to the measured color values to determine
differences in order to detect a density and color change of the flush line
pattern." (Spec. i-f 30 (cited in App. Br. 4 as written description support).)
In the context of claim 10 and the '857 Specification, it is unclear
whether "those values" compared to "measured color values" are the
"original optical density values" or "the color values" or values for some
other parameter. The fact that "the color values" lacks clear antecedent basis
further obscures a reasonable understanding of the claim scope.
As a result, the ordinary artisan would not recognize whether the
claim phrase "estimating original optical density values for the color values
in the flush line pattern and comparing the values to measured color values"
excludes an analysis of "the ejection condition of each printer nozzle" by
"compar[ing] the measured values of the nozzle check pattern" to a
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Application 13/042,857
particular standard such as that shown and described in Ito. (See Ans. 3
(citing Ito iii! 59, 77, 78; Fig. 5).)
The USPTO is justified in using a lower threshold showing of
ambiguity to support a determination of indefiniteness under 35 U.S.C.
§ 112, second paragraph, because the applicant has an opportunity and a
duty to amend the claims during prosecution to more clearly and precisely
define the metes and bounds of the claimed invention and to more clearly
and precisely put the public on notice of the scope of the patent. Ex parte
Miyazaki, 89 USPQ2d 1207, 1211-12 (BPAI 2008) (precedential).
Because independent claim 1 also recites the limitation of "estimating
original optical density values for the color values in the flush line pattern
and comparing the values to measured color values," we conclude that claim
1 and its dependent claims also fail to meet the requirements under
35 U.S.C. § 112, second paragraph for the reasons provided supra.
DECISION
The Examiner's rejections of claims 1, 4--12, 14--17, and 22-24 are
reversed proforma.
Claims 1, 4--12, 14--17, and 22-24 are rejected, under a new ground,
for failure to comply with 35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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Application 13/042,857
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
REVERSED; NEW GROUND OF REJECTION
37 C.F.R. § 41.50(B)
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