Ex Parte Sekino et al

Patent Trial and Appeal Board

Aug 15, 2016

12497932 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/497,932 0710612009
23623 7590 08/17/2016
AMIN, TUROCY & WATSON, LLP
127 Public Square
57th Floor, Key Tower
CLEVELAND, OH 44114
FIRST NAMED INVENTOR
Toshiharu Sekino
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.
TOSHP187USA 7494
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
docketl@thepatentattorneys.com
swati@thepatentattorneys.com
hmckee@thepatentattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIHARU SEKINO, KENJI EOKA, KOUSUKE
TAKAHASHI, TAKESHI HIYOSHI, TSUYOSHI SANADA, and AK.IRA
SUZUKI
Appeal2015-002551
Application 12/497,932
Technology Center 2800
Before ROBERT E. NAPPI, JOHNNY A. KUMAR and
TERRENCE W. McMILLIN, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 4 and 7.
We affirm.
INVENTION
Appellants' invention relates to a printer that can print on both sides
of a paper. The printer has a main unit, a cover, a first print head provided
in the cover, a second print head provided in the main unit, and a hinge
mechanism. Abstract, Specification 5.
Claim 4 is illustrative of the invention and reproduced below:
Appeal 2015-002551
Application 12/497,932
4. A method for opening or closing a cover of a
printer comprising the cover, a main unit, and a hinge
between the cover and the main unit, comprising:
opening the cover with respect to the main unit;
rotating a first print head located in the cover in a
first direction along a rotation locus of the hinge upon the
openmg;
rotating a second print head located in the main
unit and upstream from the first print head in a second
direction along a rotation locus of the cover in an
opposite direction to the rotating of the first print head
upon the opening; and
replacing rolled paper,
wherein the first print head is located in a second
half of the cover, the second print head is located in a
second half of the main unit, the hinge connects the first
half of the cover and the first half of the main unit and
the rolled paper is located near the hinge, and
wherein a distance between a first printing-start
position of the first print head and a second printing start
position of the second print head is less than the diameter
of the first platen roller.
REJECTIONS AT ISSUE
The Examiner has rejected claims 4 and 7 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 2. 1
The Examiner has rejected claims 4 and 7 under 35 U.S.C. § 103(a) as
being unpatentable over Lyons et al. (US 2007/0211132 Al, published Sept.
13, 2007) and Shiozaki et al. (US 6,068,416, issued May 30, 2000). Final
Act. 3-7.
1 Throughout this opinion we refer to the Appeal Brief dated August 4, 2014,
the Reply Brief dated January 5, 2015, the Final Action mailed February 3,
2014, and the Examiner's Answer mailed November 5, 2014.
2
Appeal 2015-002551
Application 12/497,932
ISSUES
Appellants argue, on pages 4 through 6 of the Appeal Brief that the
Examiner's rejection under 35 U.S.C. § 112, first paragraph is in error. The
issue presented by these arguments is whether the Examiner erred by not
considering Appellants' originally filed Specification demonstrates
Appellants had possession of the claims 4 and 7 limitation directed to the
distance between the starting printing position of one print head being less
than the diameter of the platen roller from the starting printing position of
the other print head?
Appellants argue, on pages 6 through 8 of the Appeal Brief that the
Examiner's rejection under 35 U.S.C. § 103, first paragraph, is in error. The
issues presented by these arguments are:
a) Did the Examiner err in finding the combination of Lyons and
Shiozaki render obvious the limitation directed to the distance
between the starting printing position of one print head being less
than the diameter of the platen roller from the starting printing
position of the other print head?
b) Did the Appellants' invention solve a long-felt need in the
industry?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner has erred. Further, we have reviewed the
Examiner's response to Appellants' arguments. We agree with the
Examiner's finding that the specification does not demonstrate possession of
the claimed invention and that the disputed claim limitation is obvious.
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Appeal 2015-002551
Application 12/497,932
Appellants' arguments directed to the Examiner's rejection under
35 U.S.C. § 112 cite to numerous portions of the Appellants' originally filed
Specification to provide support for the disputed limitation. App. Br. 4--6,
Reply Br. 2-3. The Examiner has provided a detailed response addressing
why each of the passages is insufficient to demonstrate possession. Answer
2--4. We have reviewed Appellants' Specification and concur with the
Examiner. Appellants' Specification, recites a desire to decrease the amount
of wasted paper (see e.g. pp. 4--5, and p. 44 of Appellants' Specification),
where the printer cannot print on both sides, but does not recite the claimed
distance relationship between the print heads. Accordingly, we sustain the
Examiner's written description rejection.
Appellants' arguments directed to the Examiner's obviousness
rejection assert that neither of Lyons and Shiozaki teaches the claimed
distance relationship between the print heads. App Br. 6-7. In response, the
Examiner finds that while the references do not explicitly teach the claim
distance relationship, moving the print heads does not change the operation
of the device in an un-expected manned and as such is obvious. Answer 4--
5. We concur and note that Lyons teaches many arrangements of the print
heads in which the print heads are of differing distances from each other
See e.g. Figs. IA, IB and 2A-2G. We note that the arrangement in Lyons'
Fig. 2F, has the writing portion of the print heads separated by
approximately the thickness of the paper such that the print heads can print
on both sides of the paper. (See also paras. 75-78). This arrangement,
clearly suggests minimizing the amount of wasted paper and suggest the
heads should be closer than the diameter of the platen wheel. Thus, we
concur with the Examiner that the claimed limitation directed to the distance
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Appeal 2015-002551
Application 12/497,932
between the starting printing position of one print head is less than the
diameter of the platen roller from the starting printing position of the other
print head is obvious. Further, Appellants' arguments directed to a long felt
need, is not persuasive as Appellants have cited insufficient evidence to
support the assertion and the teachings of Lyons Figure 2F appear to at odds
with Appellants' assertion. Accordingly, Appellants' arguments have not
persuaded us of error in the Examiner's obviousness rejection.
We note that Appellants for the first time in the Reply Brief, assert
that the Examiner has not provided sufficient motivation to combine the
references. Appellants have not shown good cause as to why these
arguments could not be presented earlier. Thus, the arguments directed to
the motivation to combine the references, have not been considered, as they
are waived. See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010)
(informative) (absent a showing of good cause, the Board is not required to
address arguments in Reply Brief that could have been presented in the
principal Appeal Brief).
DECISION
We affirm the Examiner's rejections of claims 4 and 7 under
35 U.S.C. § 112 and 35 U.S.C. § 103.2
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
2 We have reviewed this appeal considering claim 4 as represented. Should
there be further prosecution of this application the Examiner should consider
an indefiniteness rejection of claim 7 as it recites the first platen roller is on
both the cover and the main unit on which the cover is hinged.
5