Ex Parte Vega et al

Patent Trial and Appeal Board

Jun 27, 2013

10697010 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAMON VEGA, GONZALO GASTON, and
JOSE LUIS VALERO
____________________

Appeal 2013-006101
Application 10/697,010
Technology Center 2600
____________________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 In prior Decision Appeal No. 2010-000161(Application No. 10/697,010)
(notification Date: December 1, 2011),
http://efoia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd201000016
1-11-29-2011-1) (“Decision”), we reversed, pro forma, the Examiner’s
rejections of claims 1, 2, 6-12, and 16-20 under 35 U.S.C. § 103(a) and
entered a new group of rejection of claims 1, 2, 6-12, and 16-20 under 35
U.S.C. § 112, second paragraph, as being indefinite.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 6-12, and 16-20. Claims 3-5 and 13-15 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
Appellants invented a method of “operating a printer of the kind
comprising an array of dot printing elements extending in a first direction
relative to a page to be printed and which prints at least a part of the page
during relative movement between the printhead and page in a second
direction substantially normal to the first direction” (Spec. 1, ll.6-12).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method of operating a printer, said printer
comprising an array of dot printing elements extending in a first
direction relative to a page to be printed and which prints at
least a part of the page during relative movement between the
array and the page, the array comprising a plurality of groups of
elements with redundancy among the elements of the group, the
method comprising,
in respect of at least one of said groups, initially
commencing printing of an image using a subset of the
elements in the group and, during the course of printing said
image, increasing the number of elements available to print in
the group;
wherein each element newly made available to the group
is initially, for a period of time, used less frequently than the
existing element(s) in the group that are already in use to print
said image; and
wherein the number of elements in the group available to
print is increased as a function of the number of firing pulses
sent to the elements of the group.
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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fuse US 5,673,071 Sept. 30, 1997
Girones US 6,238,112 B1 May 29, 2001
Audi US 6,705,697 B2 Mar. 16, 2004
Masuyama US 6,871,934 B2 Mar. 29, 2005

Claims 1, 2, 6-12, and 16-20 stand rejected under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out and distinctly
claim the subject matter which Appellants regard as their invention.
Claims 1, 2, 6, 7, 10-12, 16, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Masuyama and Fuse.2
Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Masuyama, Fuse, and Audi.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Masuyama, Fuse, and Girones.

II. ISSUE
The main issue before us is whether the Examiner has erred in
determining that the combination of Masuyama and Fuse teaches or would

2 Although claim 8 is listed in the Final Office Action (Final Rej. 8) and thus
the Appeal Brief (App. Br. 8) as being rejected over Masuyama and Fuse,
the Examiner does not provide any detailed rejection of the claim. Instead,
the Examiner provides a detailed rejection of claim 8 over Masuyama, Fuse
and Girones (Final Rej. 17-20). Thus, we consider the listing of claim 8
with the rejection over only Masuyama and Fuse to be a typographical error.
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have suggested “during the course of printing said image, increasing the
number of elements available to print in the group” wherein “each element
newly made available to the group is initially, for a period of time, used less
frequently than the existing element(s) in the group that are already in use to
print said image” (claim 1, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Masuyama
1. Masuyama discloses a printing operation that scans a print head
over the print medium a plurality of times in a direction different from a
nozzle array direction and ejects ink from the nozzles onto the print medium
in each scan (col. 3, ll. 30-34), wherein the ink jet printing apparatus enables
those nozzles that have been kept out of use in the preceding scans to eject
ink stably from the current scan in which they begin to be used for the first
time (col. 2, ll. 34-39).

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2. Masuyama’s Figure 4 is reproduced below:

Figure 4 shows relative positions of a nozzle column as it prints on a print
medium from the front end area to the normal area, wherein, in scans from
(N-3) to (N), only a part of the nozzle column (nozzles No. 1-4) of the print
head is used (col. 5, ll. 59-62). At the (N+1)st scan, nozzles No. 5-7
(marked with X), which have not been used up to the (N)th scan are used
and only the nozzles No. 5- 7 are subjected to the preliminary ejection prior
to this scan. Then at the (N+2)nd scan, since the nozzles No. 8-10 were kept
out of use in the preceding scan, these nozzles undergo the preliminary
ejection prior to this scan (col. 6, ll. 3-11).
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Fuse
3. Fuse discloses a preparatory head drive method for an ink jet printer
(Abstract), wherein, to cure clogged nozzles, when the head temperature rise
value exceeds a certain value, the number of ink discharging may be reduced
to zero, while when the temperature rise value is relatively small, the
number of ink discharging actions varies depending on the value of the drive
frequency (col. 12, ll. 20-37).
Girones
4. Girones discloses error hiding in a multi-pass printmode (col. 26, ll.
24-26), wherein a prinkmask is used to ‘mix up’ the nozzle used, as between
passes, in such a way as to reduce undesirable printing artifacts (col. 26, ll.
53-60).
IV. ANALYSIS
35 U.S.C. § 112, second paragraph
The Examiner rejects claims 1, 2, 6-12, and 16-20 under 35 U.S.C.
§ 112, second paragraph, for “failure to particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his
invention” (Ans. 4). In particular, the Examiner finds that “‘less frequently’
remains undefined” (Ans. 5). However, Appellants contend that “claim 1
makes clear that an element which is newly made available is ‘used less
frequently than the existing element(s) in the group that are already in use to
print said image’” (claim 1) (App. Br. 11). According to Appellants, “the
metes and bounds of these claims are perfectly clear to those of skill in the
art” (id.). After reviewing the record on appeal, we agree with Appellants.
Although we found in our prior Decision that it is unclear how a
nozzle is “available” for use “less frequently” in “a” pass, as the Examiner
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points out (Ans. 5), Appellants filed an amendment “to address” the § 112,
second paragraph, rejection we raised (App. Br. 10). Thus, we disagree with
the Examiner’s finding that the claim is indefinite because “‘less frequently’
remains undefined” (Ans. 5).
While the claims are written very broadly in reciting that the newly
made available nozzles are used “less frequently,” which can be by any
means, such broad language does not in itself make the claim indefinite.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed.”
Orthokinetics, Inc., v. Safety Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir.
1986)(citations omitted).
Accordingly, we conclude that claims 1, 2, 6-12, and 16-20 do
reasonably apprise those skilled in the art of their scope. Because we
conclude that there are no ambiguities with respect to “less frequently”, we
find that the Examiner erred in rejecting claims 1, 2, 6-12, and 16-20 under
35 U.S.C. § 112, second paragraph.
35 U.S.C. § 103(a)
Appellants contend that Fuse “is directed to a ‘preparatory discharge’”
and thus, Fuse does not disclose “during the course of printing said image,
increasing the number of elements available to print in the group; wherein
each element newly made available to the group is initially, for a period of
time, used less frequently than the existing elements(s) . . . that are already
in use to print said image” (App. Br. 13) (quoting claim 1). Further,
Appellants contend that because “Fuse refer to clearing clogging from all the
nozzles,” Fuse does not disclose “that individual printing elements, ‘for a
period of time, [are] used less frequently than the existing element(s) in the
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group that are already in used to print said image” (App. Br. 14) (citing
claim 1).
Although Appellants contend that Fuse does not teach the claimed
features (App. Br. 13-14), the test for obviousness is not what Fuse shows
individually but what the combined teachings of Masuyama and Fuse would
have suggested to one of ordinary skill in the art. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner relies upon Masuyama to disclose “multi-pass printing”
wherein “it initially commence printing using a subset of nozzles and
increasing the number of nozzles available to print during the course of
printing” and wherein Masuyama “prepares newly introduced nozzles made
available for a subsequent pass of printing to perform a series of preliminary
ejections prior to the subsequent pass of print,” and “[a]s a result, newly
introduced nozzles are fully operational at the beginning of the subsequent
pass of printing” (Ans. 21) (citations omitted). The Examiner concludes that
it would have been obvious to combine Masuyama and Fuse “to prepare
printhead for printing with reduced ink and preparation time consumption”
(Ans. 7) (citation omitted). We find no error in the Examiner’s findings and
conclusion.
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 does not provide any definition for “less frequently” other
than each newly made available element is used less frequently than the
existing elements already in use, initially, for a period of time. Thus, we
give “less frequently” its broadest reasonable interpretation as less usage
during the initial period of time.
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Masuyama discloses scanning a print head over the print medium a
plurality of times, wherein nozzles that have been kept out of use in the
preceding scans are subjected to preliminary ejection prior to beginning to
be used for the first time (FF 1). In an embodiment, in scans from (N-3) to
(N), only nozzles No. 1-4 are used, while for the (N+1)st scan, nozzles No.
5-7, which have not been used up to the (N)th scan are used and are
subjected to the preliminary ejection prior to this scan, and then at the
(N+2)nd scan, nozzles No. 8-10 which were kept out of use in the preceding
scan undergo the preliminary ejection prior to this scan (FF 2) (citations
omitted).
Since the number of nozzles are increased during the course of
printing the image from scans (N+1) on, Masuyama discloses “during the
course of printing said image, increasing the number of elements available to
print in the group” as required by claim 1. Further, since Masuyama
discloses that each nozzle newly made available initially, for a period of
time, is not used but rather is subjected to a preliminary ejection, Masuyama
at least suggests that “each element newly made available to the group is
initially, for a period of time, used less frequently [i.e., not at all] than the
existing element(s) in the group that are already in use to print said image”
as recited in claim 1.
Furthermore, Fuse discloses a preparatory head drive method for an
ink jet printer (Abstract), wherein, to cure clogged nozzles, the number of
ink discharging is reduced to zero depending on the head temperature rise
value (FF 3). That is, Fuse teaches that a number of nozzles has less usage
for a period of time, and thus, Fuse also at least suggests that “each element
newly made available to the group is initially, for a period of time, used less
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frequently than the existing element(s) in the group that are already in use to
print said image” as required by claim 1.
Thus, we find no error in the Examiner’s conclusion that the
combination of Masuyama and Fuse would at least have suggested the
limitations of claim 1. The Supreme Court has determined that the
conclusion of obviousness can be based on the interrelated teachings of
multiple patents, the effects of demands known to the design community or
present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). The skilled artisan would “be able to fit the teachings
of multiple patents together like pieces of a puzzle” since the skilled artisan
is “a person of ordinary creativity, not an automaton.” Id. at 420-21.
We are not persuaded and Appellants have presented no persuasive
evidence that combining the teaching of using a number of nozzles less
frequently than others for a period of time, as taught by Fuse, with the
teaching of increasing the number of elements during the course of printing
an image and then subjecting the added nozzles to preliminary ejection (i.e.,
not used/less usage during a period of time) as taught by Masuyama was
“uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR at 418). Therefore, we find the Examiner’s proffered
combination of familiar prior art elements according to their established
functions would have conveyed a reasonable expectation of success to a
person of ordinary skill having common sense at the time of the invention.
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 1 over Masuyama and Fuse. Appellants
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do not provide arguments for claim 11 separate from those of claim 1 (App.
Br. 15), and thus, claim 11 and claims 2, 6, 7, 10, 12, 16, and 18-20
depending from claims 1 and 11 respectively fall with claim 1 over
Masuyama and Fuse.
Appellants also do not provide arguments for claims 9 and 17
depending from claims 1 and 11, respectively (App. Br. 15). Thus,
Appellants also have not shown that the Examiner erred in rejecting claims 9
and 17 over Masuyama and Fuse, in further view of Audi.
As for claim 8, Appellants contend that, in Girones, “there is no
discussion of (i) excluding faulty printing elements from being made
available to the group, or (ii) a faulty printing element database” (App. Br.
17). However, the Examiner finds that Girones’ “error hiding technique”
comprises such limitations (Ans. 23-24). In particular, the Examiner finds
that Girones discloses “using information derived from drop detections to
determine the probabilities that nozzles will fail to work” (Ans. 23)
(emphasis omitted), and “a database maintained in memory storing health
information for each nozzle obtained from drop detections” (Ans. 24)
(emphasis omitted). We find no error with the Examiner’s findings.
Girones discloses error hiding in a multi-pass printmode, wherein a
printmask is used to ‘mix up’ the nozzle used to reduce undesirable printing
artifacts (FF 4) (citations omitted). Thus, Girones at least suggests that
faulty nozzles/printing elements are excluded from being made available.
Accordingly, we find no error with the Examiner’s rejection of claim
8 over Masuyama, Fuse, and in further view of Girones.
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V. CONCLUSION AND DECISION
The Examiner’s rejections of claims 1, 2, 6-12, and 16-20 under 35
U.S.C. § 103(a) are affirmed but the Examiner’s rejection of claims 1, 2,
6-12, and 16-20 under 35 U.S.C. § 112, second paragraph, is reversed.
Because we have affirmed at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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