Ex Parte Forgacs et al

Patent Trial and Appeal Board

Jul 12, 2016

13054005 (P.T.A.B. Jul. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/054,005 01/13/2011
22879 7590 07114/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Peter Forgacs
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.
82611799 3716
EXAMINER
DELOZIER, JEREMY A
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
07/14/2016 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 APPEALS BOARD
Ex parte PETER FORGACS, NETA FILIP-GRANIT,
STELLA STOLIN RODITI, DAVID LEV ANON, LIAT SZAPIRO,
YOSSI MOR, MARK SANDLER, ITZHAK ASHKENAZI, MEIR SORIA,
and MARC KLEIN
Appeal2015-000350
Application 13/054,005
Technology Center 2800
Before TERRY J. OWENS, KAREN M. HASTINGS, and
MONTE T. SQUIRE, Administrative Patent Judges.
TT A. n r-T-iT-.i. TI"\ n ' 1 • • , , • T'lo , , T 1
ttA~ 111'\Ju~, Aamznzsrranve rarem Juage.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-20 under 35 U.S.C. § 103(a) as being unpatentable
over at least the basic combinations ofKokikk (JP 05-177571, published
July 20, 1993; as translated) with Yasuhiro (JP 08-012108 A, published Jan.
Appeal2015-000350
Application 13/054,005
16, 1996; as translated). 1 We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Claims 1 and 12 are representative of the claimed subject matter
(emphasis added to highlight key limitations):
1. A suction cup for a printer, the suction cup comprising:
a cup portion that includes a contact surface adapted to contact print
media within the printer, the contact surface being formed by a low surface
energy material, and the contact surface including an outer ring-shaped
portion and a plurality of central wedge-shaped portions, wherein the contact
surface of the outer ring-shaped portion coincides with the contact surface
of the central wedge-shaped portions.
12. A suction cup for a printer, the suction cup comprising:
a neck portion;
a cup portion connected to the neck portion that includes a rough
contact surface adapted to contact print media \~1ithin the printer, the contact
surface being formed by a low surface energy material; and
an opening that extends through the neck and cup portions through
which air can flow,
wherein the cup portion includes an X-shaped channel that
communicates with the opening and a circular channel that surrounds and
communicates with the X-shaped channel, wherein a depth of the circular
channel corresponds to a depth of the X-shaped channel.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence
1 We refer to the Examiner's Final Action for a full listing of all the
rejections. Appellants' arguments are similar for all of the rejections.
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Appeal2015-000350
Application 13/054,005
supports the Examiner's conclusion that the subject matter of Appellants'
claims is unpatentable under 35 U.S.C. § 103 over the applied prior art. We
sustain all of the § 103 rejections based on the findings of fact, conclusions
of law, and rebuttals to arguments expressed by the Examiner in the Final
Action and the Answer.
We add the following for emphasis.
Appellants do not specifically refute the Examiner's modification of
Kokikk with Yasuhiro (Briefs, generally). Rather, Appellants' main
argument is that the highlighted claim phrases including "coincides with"
(claim 1) and "corresponds to" (claim 12) do not encompass the
features/shape ofYasuhiro's suction cup (e.g., App. Br. 8, 10-12). This
argument is not persuasive of reversible error.
It is well established that "the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) ("[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.")
Here, as the Examiner aptly points out, Appellants' Specification
lacks any limiting definitions (e.g., Ans. 3, 5), and indeed the Specification
is devoid of these disputed phrases to describe the features and shape of their
suction cup depicted at Figure 1 (Spec. generally). Notably, the
Specification does not describe any physical configuration of the suction cup
as critical or even as inventive; rather, Appellants' describe that in the prior
art, "suction cups, such as those similar to the suction cup 10 of FIG. 1, can
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Appeal2015-000350
Application 13/054,005
leave marks on printed media" (Spec. 3:3--4; emphasis added). Appellants
then describe as their invention to use a low surface energy material for the
contact surface of the suction cup (Spec. 3:17-24).
The Examiner reasonably determined that the disputed claim
recitations highlighted in claims 1 and 12 above encompass the
features/shape ofYasuhiro's suction cup (Ans. generally), or alternatively
are obvious and unpatentable over Yasuhiro's suction cup (e.g., Final Action
4, de facto stating that it would have been an obvious change in shape "to
make these portions [the contact portions of the ring and the wedge shapes]
coincide and be plush (sic, flush) on the medium," (claim 1) and Final
Action 6, stating it would have been obvious "to make the channels depth
correspond in order to best communicate between the channel[ s] and the
opening" (claim 12)).
While Appellants have focused on the recessed liner 3 of Y asuhiro' s
suction cup as a distinction over their suction cup (e.g., i~\'.l.pp. Br. 9), a cup
shape by definition has a bottom of the cup that is recessed relative to the top
of the cup in order to provide a volume. Appellants' Specification lacks any
specific limiting definitions for "coincides" and "corresponds" (e.g., Ans. 3,
5); indeed, the Specification is devoid of the disputed phrases (Spec.
generally). To the extent Appellants may be arguing that their suction cup
shape as claimed is different because their cup is formed of a continuously
tapered surface but for the interruptions of the suction air flow channels
(and, even assuming arguendo, that the claimed phrases define over the cup
shape of Y asuhiro ), Appellants have not directly addressed and therefore
have shown no error in the Examiner's alternative obviousness
determination (e.g., Final Action 4, 6). Cf In re Dailey, 357 F.2d 669, 676
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Appeal2015-000350
Application 13/054,005
( CCP A 1966) (It has been generally held that changes in shape of a known
element are obvious. The court held that the configuration of the claimed
disposable plastic nursing container was a matter of choice which a person
of ordinary skill in the art would have found obvious absent persuasive
evidence that the particular configuration of the claimed container was
significant). Therefore, Appellants have not shown any error in the
Examiner's de facto determination that any modification of the shape of the
suction cup in the applied prior art (e.g., to be more like a shallow bowl
shaped cup) is prima facie obvious (assuming arguendo that the claimed
features do not encompass the shape of the applied prior art suction cup).
Accordingly, a preponderance of the evidence supports the
Examiner's broadest reasonable interpretation of the disputed claim terms,
and/or alternatively, a preponderance of the evidence supports the
Examiner's obviousness determinations regarding the suction cup structural
features/ shape.
To the extent that any of the dependent claims are argued separately
(e.g., claims 17 and 20), a preponderance of the evidence supports the
Examiner's position for similar reasons as discussed above.
The decision of the Examiner is affirmed.
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
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