Ex Parte Yamada et al

Patent Trial and Appeal Board

Nov 6, 2017

12691121 (P.T.A.B. Nov. 6, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/691,121 01/21/2010 Satoshi Yamada TOSHP185USD 9131
23623 7590 11/08/2017
AMIN, TUROCY & WATSON, LLP
127 Public Square
57 th Floor, Key Tower
CLEVELAND, OH 44114
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
11/08/2017 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):
hmckee@thepatentattomeys.com
rveri@thepatentattorneys.com
docket @ thepatentattorney s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATOSHI YAMADA and HIROYUKI TAGUCHI
Appeal 2016-006282
Application 12/691,121
Technology Center 2800
Before BRADLEY R. GARRIS, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—4, 6, 7, 9, 11, and 12 of
Application 12/691,121 under 35 U.S.C. § 103(a) as obvious. Final Act.
(March 18, 2015). Appellants1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.
1 Appellants have not complied with our rule requiring them to identify the
real party in interest. 37 C.F.R. § 41.37(c)(l)(i) (2015). The ’121
Application appears to be assigned to Toshiba Tec Kabushiki Kaisha. See
USPTO assignment records at reel/frame 023824/0348, recorded January 21,
2010.
Appeal 2016-006282
Application 12/691,121
BACKGROUND
The ’121 Application describes a printer system for thermo-sensitive
printing on a thermal recording paper having thermo-sensitive layers on both
sides and a control method for such a printer system. Spec. 1.
Claim 1 is representative of the ’121 Application’s claims and is
reproduced below from the Claims Appendix:
1. A double-side printer system comprising:
a first thermal head that print first data at a first density
onto a first side of a thermal recording paper;
a second thermal head that prints second data at a second
density onto a second side of a thermal recording paper;
an attribute managing system comprising a first character
attribute setting unit that specifies a first registration for the first
data and a second character attribute setting unit that specifies a
second registration for the second data; and
a control unit that retrieves print data that has been
provided by a host device from a memory associated with the
control unit, divides the print data into the first data and the
second data, edits the first data and the second data according to
the first registration and the second registration and individually
sets the first density and the second density based on the first
registration and the second registration, wherein the control unit
stores a plurality of reference electrical connection times,
wherein a first on time of the first thermal head is
calculated based on a first reference electrical connection time
from the plurality of electrical connection times and a
temperature required to achieve the first print density, the first
reference electrical connection time determined based on a first
temperature of the first thermal head and a set print speed, and
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Appeal 2016-006282
Application 12/691,121
the first temperature of the first thermal head recorded by a first
sensor attached to the first thermal head,[2]
wherein a second on time of the second thermal head is
calculated based on a second reference electrical connection time
from the plurality of electrical connection times and a
temperature required to achieve the second print density, the
second reference electrical connection time determined based on
a second temperature of the second thermal head and the set print
speed, and the second temperature of the second thermal head
recorded by a second sensor attached to the second thermal
head,[3]
2 As written, this claim limitation may be unclear. For the purpose of this
opinion, we are interpreting this claim limitation as if it read:
wherein a first on time of the first thermal head is calculated
based on a first reference electrical connection time from the
plurality of electrical connection times and a first set
temperature required to achieve the first print density, the first
reference electrical connection time determined based on a set
print speed and the first thermal head’s temperature as recorded
by a first sensor attached to the first thermal head,
If prosecution of the ’121 Application continues, Appellants and the
Examiner should address this issue.
3 As written, this claim limitation may be unclear. For the purpose of this
opinion, we are interpreting this claim limitation as if it read:
wherein a second on time of the second thermal head is
calculated based on a second reference electrical connection
time from the plurality of electrical connection times and a
second set temperature required to achieve the second print
density, the second reference electrical connection time
determined based on the set print speed and the second thermal
head’s temperature as recorded by a second sensor attached to
the second thermal head,
If prosecution of the ’121 Application continues, Appellants and the
Examiner should address this issue.
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Application 12/691,121
wherein the control unit comprises a control circuit is
housed[4] in a host device that comprises a processing unit that
executes an electrical connection control process to facilitate the
determining of the first electrical connection on time and the
second electrical connection on time, and
wherein the first set temperature and the second set
temperature are the same temperature.[5]
Appeal Br. 14—15.
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1—4, 6, 7, 9, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Oka,4 5 6 Mitsushima,7 Katsurai,8 and
LeBlanc.9 Final Act. 2.
4 For the purpose of this opinion, we are interpreting the phrase “the control
unit comprises a control circuit is housed” as if it read “the control unit
comprising a control circuit is housed.” If prosecution of the ’121
Application continues, Appellants should clarify this portion of claim 1 by
amendment.
5 We note that the terms “the first set temperature” and “the second set
temperature” lack an antecedent basis in claim 1. If prosecution of the ’121
Application continues, Appellants and the Examiner should address this
issue.
6 US 5,452,959, issued September 26, 1995.
7 US 4,845,514, issued July 4, 1989.
8 US 4,679,053, issued July 7, 1987.
9 US 2006/0290770 Al, published December 28, 2006.
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Application 12/691,121
DISCUSSION
The ’121 Application has two independent claims: Claims 1 and 2.
Appellants advance substantive arguments for reversal of the rejection of
claim 1. See Appeal Br. 5—11. Appellants’ arguments with respect to claim
2 consist of the following statement: “For at least the reasons discussed
above with regard to claim 1, Oka, Mitsushima, Katsuari, [sic] and LeBlanc,
alone or in combination, fail to teach or suggest these features of claim 2.”
Id. at 12—13. Appellants do not advance any separate arguments for reversal
of the rejection of any of the dependent claims. We, therefore, select claim 1
as representative of the claims on appeal. 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
Appellants present multiple arguments for reversal of the rejection of
independent claim 1. Appeal Br. 5—11. For the reasons set forth below, we
are not persuaded by any of these arguments. We, therefore, affirm the
rejection of claim 1.
First, Appellants advance several arguments regarding the
combination of Oka and Mitsushima. See id. at 6—8. The Examiner
responds to these arguments by asserting that our decision in Ex parte
Yamada, No. 2014-002302, slip op. (January 25, 2016) (available at
http://bit.lv/2vTqzOV),10 moots these arguments. See Answer 2 (“Because
these arguments have been previously adjudicated and the examiner’s
rejection affirmed, the Examiner is precluded by the doctrines of res
10 In that decision, we affirmed the Examiner’s rejection of claims 1, 3, 5, 8,
and 21—26 of Application No. 11/681,902. The ’902 Application became
abandoned on April 1, 2016. The ’121 Application, which was filed on
January 21, 2010, is a division of the ’902 Application.
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Application 12/691,121
judicata and collateral estoppel from rehearing these arguments (see MPEP
706.03(w)).”). Appellants do not respond to the Examiner’s assertion of
claim preclusion. See Reply Br. We, therefore, determine that Appellants
have acquiesced to the Examiner’s assertion.
Second, Appellants attack the Examiner’s use of Katsurai in the
rejection of claim 1. Appeal Br. 9—10. In particular, Appellants argue that
(1) Katsurai teaches away from the claimed method of varying the electrical
on times of the first and second print heads to produce the desired first and
second print densities, id. at 9, and (2) the Examiner has not explained how
Katsurai’s teachings could be functionally incorporated into Mitsushima’s
methods to arrive at the claimed features, id. at 9-10.
For the following reasons, we are not persuaded by these arguments.
Appellants’ argument that Katsurai teaches away from the claimed
invention is not persuasive. A reference used in a § 103 rejection teaches
away from the claimed invention when it criticizes, discredits or otherwise
discourages the claimed solution to a particular problem. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). In this case, Appellants do not direct us to any portion of Katsurai
which discredits the claimed solution. Rather, they argue that Katsurai
teaches away because it describes a different method for a treatment
achieving desired print densities. Appeal Br. 9. A reference’s mere
disclosure of an alternative solution does not, in and of itself, teach away
from the claimed solution. See Fulton, 391 F.3d at 1201.
Appellants’ argument, that the rejection of claim 1 should be reversed
because the Examiner has not explained how Katsurai’s teachings could be
functionally incorporated into Mitsushima’s methods, Appeal Br. 9—10, is
not persuasive. The Examiner relied upon Katsurai for its description of
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Application 12/691,121
calculating a reference time for activating a thermal print head based upon a
set speed for printing. See Final Act. 6 (citing Katsurai col. 2,11. 18-41; col.
3,11. 15—20, col. 3, line 65—col. 4, line 5; Figs. 5—7). We agree with the
Examiner that a person of ordinary skill in the art, at the time of the
invention, would have been able to modify Mitsushima to account for
variations in printing speed as described by Katsurai. “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Finally, we note that Appellants’ arguments are rendered much less
persuasive because the Appeal Brief does not include any citations to the
record. Not only are such citations required by our rules, see 37 C.F.R.
§ 41.37(c)(l)(iv) (2015), the failure to include the citations transforms the
entirety of the brief into unsupported attorney argument. As the Federal
Circuit has explained repeatedly, unsupported attorney argument is
insufficient to establish facts which may be required to demonstrate
reversible error in the Examiner’s rejection. See, e.g., In re Huang, 100 F.3d
135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). Furthermore, we are not required to search through the record to find
material that should have been cited in Appellants’ brief. “Judges are not
like pigs, hunting for truffles buried in the record.” Gross v. Town of
Cicero, 619 F.3d 697, 702 (7th Cir. 2010) (internal brackets omitted) (citing
U.S v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991)).
Third, Appellants argue that the rejection of claim 1 should be
reversed due to Examiner’s misuse of LeBlanc in the rejection of claim 1.
Appeal Br. 10-12. In particular, Appellants argue that (1) LeBlanc fails to
disclose a look up table with the claimed features, (2) “the cited art teaches
away from the alleged combination,” (3) a person of ordinary skill in the art
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Application 12/691,121
would have had to engage in undue experimentation to combine Mitsushima
and LeBlanc successfully, and (4) the Examiner has not identified a reason
to combine LeBlanc with Mitsushima. Id. at 10—11.
None of these arguments is persuasive. As the Examiner explains, see
Final Act. 6—8; Answer 3—4, LeBlanc is cited for its disclosure that look up
tables can be used instead of a calculated data curve to determine the
electrical connection on times. At the time of the invention, a person having
ordinary skill in the art would have been able to incorporate LeBlanc’s look
up table in the place of Mitsushima’s reference curve because this merely
involved replacement of one means for performing a task with a known
alternative means. As the Supreme Court’s explained, “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416.
Appellants’ argument that “the cited art teaches away from the alleged
combination,” Appeal Br. 10, is not persuasive. Appellants have not
directed our attention to any particular portion of either LeBlanc or
Mitsushima that discourages substitution of a calculated reference curve
with a look up table or vice versa.
Finally, Appellants’ argument that the Examiner has not identified a
reason to combine LeBlanc with Mitsushima is not persuasive because an
“[ejxpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Font, 675 F.2d 297, 301
(CCPA 1982).
Because we have affirmed the Examiner’s rejection of claim 1, we
also affirm the rejection of claims 2—4, 6, 7, 9, 11, and 12.
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CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1—4,
6, 7, 9, 11, and 12 of the ’121 Application.
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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