Laura Portela Mata et al.

Patent Trials and Appeals Board

Aug 13, 2019

13726345 - (D) (P.T.A.B. Aug. 13, 2019)

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.
13/726,345 12/24/2012 Laura Portela Mata 83115035 2398
22879 7590 08/13/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
KEMATHE, LILY K
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
08/13/2019 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):
barbl@hp.com
ipa.mail@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LAURA PORTELA MATA, ADRIAN LIGA GONDAWIJAYA, and
CARLOS LAHOZ BUCH
____________

Appeal 2018-009004
Application 13/726,345
Technology Center 2800
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE,
and JEFFREY T. SMITH, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–20.3
We AFFIRM-IN-PART.

1 This Decision includes citations to the following documents: Specification filed
December 24, 2012 (“Spec.”); Final Office Action dated Sept. 18, 2017 (“Final”);
Appeal Brief filed Feb. 26, 2018 (“Appeal Br.”); Examiner’s Answer dated July
25, 2018 (“Ans.”); and Reply Brief filed Sept. 20, 2018 (“Reply Br.”).
2 The Appellant is the Applicant, Hewlett-Packard Development Company, L.P.,
also identified as the real party in interest. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2018-009004
Application 13/726,345

2
The claimed invention is said to address the problem of vapor release by
certain inks during printing or curing. Spec. ¶ 1. Independent claims 1 and 2 are
representative of the appealed claims, and are reproduced below.
l. A non-transitory computer readable medium, storing
a threshold corresponding to a vapor density, and
instructions to
compare an incoming signal that corresponds to a
detected vapor density with the threshold, and
intervene in a printer operation to reduce vapor density
when the detected signal exceeds the threshold for a specified period
of time.
2. A printer comprising
an ink transfer device,
a vapor sensor to detect a density of vapor that is released from
transferred ink,
a memory storing a threshold, and
a control circuit to trigger a vapor control instruction to reduce
vapor production when a detected vapor density exceeds the
threshold,
wherein the threshold comprises multiple thresholds in a look-
up table, wherein the control instruction is different for different
thresholds.
Appeal Br. 20 (Claims Appendix). Claim 9, the only other independent claim on
appeal, recites a “[m]ethod of printer vapor control.” Id. at 21.
The Examiner relies on the following references as evidence of
unpatentability:
DeVore US 2008/100647 A1 May 1, 2008
Frydman US 2014/0125719 A1 May 8, 2014
Cha US 5,089,830 Feb. 18, 1992
Doshoda US 2009/0290897 A1 Nov. 26, 2009
Appeal 2018-009004
Application 13/726,345

3
Yokota US 2001/0026696 A1 Oct. 4, 2001
Chang US 7,850,274 B1 Dec. 14, 2010
Mauze US 6,276,196 B2 Aug. 21, 2001
Sasanuma US 5, 856,876 Jan. 5, 1999
The Examiner rejected claims 2 and 12 under 35 U.S.C. § 112, second
paragraph as indefinite, claim 1 under 35 U.S.C. § 103(a) as unpatentable over
DeVore, and claims 2–20 under 35 U.S.C. § 103(a) as unpatentable over Frydman
alone or in combination with one or more references. A detailed list of the
rejections is provided in the table at the end of the decision. See infra p. 8.
Rejection under 35 U.S.C. § 112, second paragraph
Independent claim 2 recites “a memory storing a threshold, . . . wherein the
threshold comprises multiple thresholds in a look-up table.” Appeal Br. 20 (Claims
Appendix). Claim 12 depends from independent claim 9, and similarly recites
“wherein the threshold [of claim 9] comprises a series of thresholds.” Id. at 22. The
Examiner contends the recitation of a threshold comprising multiple, or a series of,
thresholds renders the claims indefinite because “[i]t’s unclear if ‘a threshold’ is a
given range or a particular value.” Final 4.
We agree with the Appellant that the Examiner’s rejection is based on an
erroneous interpretation of the claim term “a threshold” (claims 2, 9 (emphasis
added)) as meaning a single threshold. Appeal Br. 10; see Final 3 (“[T]he
specification does not enable an artisan with ordinary skills in the art to determine
what establishes a single threshold to have multiple threshold[s], or how a single
threshold has multiple thresholds.”). “As a general rule, the words ‘a’ or ‘an’ in a
patent claim carry the meaning of ‘one or more.’” TiVo, Inc. v. EchoStar
Commc’ns Corp., 516 F.3d 1290, 1303 (Fed. Cir. 2008) (citation omitted).
Appeal 2018-009004
Application 13/726,345

4
The exceptions to this rule are extremely limited: a patentee must
evince a clear intent to limit “a” or “an” to “one.” . . . The subsequent
use of definite articles “the” or “said” in a claim to refer back to the
same claim term does not change the general plural rule, but simply
reinvokes that non-singular meaning. . . . An exception to the general
rule arises only “where the language of the claims themselves, the
specification, or the prosecution history necessitate a departure from
the rule.”
01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir. 2012)
(quoting Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–1343
(Fed. Cir. 2008) (internal quotation marks and citation omitted))
We find nothing in the claim language or written description that compels a
departure from this general rule. To the contrary, we determine that one of ordinary
skill in the art would understand from the claim language itself that the recitation
of “a threshold” in claims 2 and 9 means one or more threshold(s), and the
subsequent recitations in claims 2 and 12—“wherein the threshold comprises
multiple thresholds” (claim 2) or a “series of thresholds” (claim 12)—specify that
the claims require more than one threshold. The written description supports this
interpretation. See Spec. ¶ 16 (“For example, the memory 9 stores a vapor density
threshold. For example, the vapor density threshold corresponds to a
predetermined maximum or minimum density of vapor. . . . For example the
memory 9 stores multiple thresholds, for example in a look-up table, that
correspond to different levels of vapor.”).
Because we determine the meaning of the argued claim language is not
unclear, see In re Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014), we do not
sustain the rejection of claims 2 and 12 under 35 U.S.C. § 112, second paragraph.

Appeal 2018-009004
Application 13/726,345

5
Rejections under 35 U.S.C. § 103(a) over Frydman
The Examiner rejected independent claim 2 as obvious over Frydman, and
independent claim 9 as obvious over Fydman and Cha. The Examiner rejected
dependent claims 3–8 and 10–20 over Frydman alone, or in combination with
various secondary references.
As to claims 2 and 9, the Appellant argues Frydman4 fails to teach or
suggest “a vapor sensor to detect a density of vapor” (claim 2) or “detecting a
density of the vapor” (claim 9). Appeal Br. 11–12, 18. This argument is not
persuasive. Frydman discloses that “[i]f the concentration of ink carrier vapor
exceeds a second threshold, the controller increases the fan speed to a maximum
speed to reduce the ink carrier concentration to below the second threshold.”
Frydman ¶ 20. The Appellant has not explained sufficiently why the Examiner
erred in finding that “one of ordinary skill in the art . . . [would have] recognize[d]
the concentration of ink carrier vapor can be considered as ‘a vapor density.’”
Final 6; see Ans. II(3) (quoting Spec. ¶ 15); Spec. ¶ 15 (“For example the detected
vapor density approximately correlates with a relative amount of vapor that is
present in the air. For example the detected density correlates with air humidity. . .
. For example the density correlates with droplet sizes and vapor amounts in the
air.”); see generally Reply Br. 6–8.
The Appellant also argues that the Examiner relied on Frydman’s teaching
of a single threshold to trigger a controller instruction that reduces vapor density,
whereas claim 2 requires a control circuit that triggers a control instruction to

4 In arguing the patentability of claim 9, the Appellant refers to DeVore, rather than
to Frydman. See Appeal Br. 18. We view this as an inadvertant error. See id.
(presenting arguments under the heading “Claims 9 and 11–13 are patentable over
Frydman and Cha”).
Appeal 2018-009004
Application 13/726,345

6
reduce vapor production when detected vapor density exceeds a “threshold
compris[ing] multiple thresholds in a look-up table” (claim 2 (emphasis added)).
Appeal Br. 12. The Appellant’s argument is persuasive of error in the Examiner’s
rejection of claim 2, as further explained below.
The Examiner found that the claim phrase “a control circuit to trigger a
vapor control instruction to reduce vapor production when a detected vapor density
exceeds the threshold” reads on Frydman’s disclosure that “[i]f the concentration
of ink carrier vapor exceeds a second threshold, the controller increases the fan
speed to a maximum speed to reduce the ink carrier concentration to below the
second threshold” (Frydman ¶ 20 (emphasis added)). See Final 6; Ans. II(2). The
Examiner found the claim limitation “multiple thresholds” reads on Frydman’s
first and second thresholds. Final 6. As to the first threshold, Frydman discloses
that “[c]ontroller 502 adjusts the speed of the fan to maintain the ink carrier vapor
concentration above a first threshold value.” Frydman ¶ 20 (emphasis added).
In other words, the Examiner’s rejection is based on an interpretation of claim 2 as
encompassing a look-up table containing two threshold values, only one of which
results in the triggering of a vapor control instruction to reduce vapor production
when that value is exceeded by a detected vapor density. As discussed above in
connection with the rejection under 35 U.S.C. § 112, second paragraph, claim 2
defines “the threshold” as meaning multiple thresholds. The Examiner has not
identified disclosure in the Specification that supports interpreting claim 2 as
requiring a look-up table containing only one threshold value that, when exceeded
by a detected vapor density, would result in the control circuit triggering a vapor
control instruction to reduce vapor production.
Accordingly, for the reasons discussed above, we do not sustain the Section
103(a) rejections of claim 2 and its dependent claims 3–8 and 16–20. We do
Appeal 2018-009004
Application 13/726,345

7
sustain, however, the Section 103(a) rejections of claim 9 and its dependent claims
10–15, as the Appellant does not separately argue the patentability of dependent
claims 10–15. See Appeal Br. 18–19.
Rejection under 35 U.S.C. § 103(a) over DeVore
The Examiner rejected independent claim 1 as obvious over DeVore. As to
the claim 1 recitation requiring a non-transitory computer readable medium that
stores “a threshold corresponding to a vapor density,” the Examiner found that
although “DeVore fails to explicitly teach a vapor density . . . , DeVore teaches the
degree of vapor accumulation, . . . [and] one of ordinary skill in the art [would
have] recognize[d] the degree of vapor accumulation can be considered as ‘a vapor
density.’” Final 5. The Appellant disagrees with this finding. See Appeal Br. 13–
15.
As discussed above in connection with similar arguments made by the
Appellant in support of patentability of claims 2 and 9 over Frydman, we are not
persuaded of reversible error in the Examiner’s conclusion of obviousness because
the Appellant has not explained sufficiently why the Examiner erred in this finding
given the Examiner’s explanation in Section II(3) of the Answer and the
Specification’s disclosure that “the detected vapor density approximately correlates
with a relative amount of vapor that is present in the air.” (Spec. ¶ 15). See
generally Reply Br. 10–11.
The Appellant also argues the Examiner reversibly erred in finding DeVore
discloses “instructions to . . . intervene in a printer operation to reduce vapor
density when the detected signal exceeds the threshold for a specified period of
time” (claim 1). Appeal Br. 15–17. The Appellant contends this claim limitation
requires instructions that, upon detection of a signal that exceeds the threshold, do
not start countermeasures until a period of time has passed. Id. at 16. The
Appeal 2018-009004
Application 13/726,345

8
Appellant argues DeVore does not meet this claim limitation because DeVore
“suggest[s] that printing is inhibited until vapor is dispersed. This is a period
of time that occurs after countermeasures against the vapor have been triggered,
i.e., inhibiting printing.” Id.
The Appellant’s argument is not persuasive. As found by the Examiner
(Ans. II(3)), DeVore discloses that “[i]f the controller 14 determines that one or
more signals are indicative of an accumulation of vapor surpassing a
predetermined threshold, the controller 14 may stop the printing sequence.”
DeVore ¶ 31. Claim 1 does not specify a particular period of time. The Appellant
has not explained sufficiently why DeVore’s instruction to stop the printing
sequence following detection of a signal that exceeds a threshold—i.e., some
amount of time has passed between detection and intervention—does not meet the
argued claim limitation. See, e.g., Reply Br. 11 (“One of skill in the art would
understand claim 1 as recit[ing] that the response to vapor density is not
immediately at the threshold of elevated vapor density.”).
Because the Appellant has not identified reversible error in the Examiner’s
conclusion of obviousness as to claim 1, we sustain the rejection of claim 1 as
unpatentable over DeVore.
ORDER
Claims
Rejected
Basis Reference(s) Affirmed Reversed
2, 12 § 112, 2nd 2, 12
1 § 103(a) DeVore 1
2, 4, 7, 17 § 103(a) Frydman 2, 4, 7, 17
3 § 103(a) Frydman, Doshoda 3
5, 6 § 103(a) Frydman, Yakota 5, 6
8 § 103(a) Frydman, Chang 8
20 § 103(a) Frydman, Cha 20
16, 18 § 103(a) Frydman, DeVore 16, 18
Appeal 2018-009004
Application 13/726,345

9
Claims
Rejected
Basis Reference(s) Affirmed Reversed
19 § 103(a) Frydman, Mauze 19
9, 11–13 § 103(a) Frydman, Cha 9, 11–13
10 § 103(a) Frydman, Cha, Yokota 10
14 § 103(a) Frydman, Cha,5 DeVore 14
15 § 103(a) Frydman, Cha, Sasanuma 15
Outcome 1, 9–15 2–8, 16–20

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-IN-PART

5 The Examiner failed to list Cha in this ground of rejection. See Final 20. We view
this omission as harmless error, as the Examiner clearly references Frydman as
modified by Cha. See id.