XEROX CORPORATION

Patent Trials and Appeals Board

Jul 8, 2021

2020004137 (P.T.A.B. Jul. 8, 2021)

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.
15/424,958 02/06/2017 Gilles DiDomenico 1776-0835 4492
76360 7590 07/08/2021
MAGINOT, MOORE & BECK LLP
ONE INDIANA SQUARE
SUITE 2200
INDIANAPOLIS, IN 46204
EXAMINER
VALENCIA, ALEJANDRO
ART UNIT PAPER NUMBER
2853
MAIL DATE DELIVERY MODE
07/08/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GILLES DIDOMENICO
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Appeal 2020-004137
Application 15/424,958
Technology Center 2800
____________
Before JAMES C. HOUSEL, GEORGE C. BEST, and JANE E. INGLESE,
Administrative Patent Judges.
BEST, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–7 of Application 15/424,958.
Final Act. (July 30, 2019). Claims 2 and 8–23 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we reverse.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Xerox Corporation as the real party in interest. Appeal Br. 3.
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I. BACKGROUND
In high-volume printing processes—especially those using jet
printing—the printed ink must be dried quickly. Spec. ¶ 3. The ’958
Application’s Specification describes a dryer module suitable for use in
large-scale, high-volume printing processes. Id. ¶ 2.
Claim 1—the only independent claim on appeal—represents the ’958
Application’s claims and is reproduced below from the Appeal Brief’s
Claims Appendix. We have italicized claim limitations that are of particular
interest.
1. A dryer module for use in printing comprising:
a cabinet having a plurality of walls that form a
rectangular chamber, a first wall of the cabinet has a first slot at
a first predetermined distance from where a longest side of the
first wall of the cabinet joins a second wall of the cabinet, and a
third wall of the cabinet that is directly opposite the first wall of
the cabinet has a second slot at the first predetermined distance
from where a longest side of the third wall joins the second wall
so the second wall extends from the first wall to the third wall,
a horizontal only sheet path extends from the first slot to the
second slot so sheets enter the chamber through the first slot in
the first wall of the cabinet and pass along the horizontal only
sheet path through the chamber in a process direction to the
second slot in the third wall and then exit the chamber from the
second slot in the third wall of the cabinet;
a first plate that extends from the first wall of the cabinet
to the third wall of the cabinet defines a first air opening and a
fourth wall of the cabinet defines a second air opening that is
opposite the first air opening so a first airflow passes through
the chamber from the first air opening in the first plate over the
horizontal only sheet path in the chamber in a direction that is
perpendicular to the process direction and then exits through the
second air opening in the fourth wall of the cabinet, the fourth
wall of the cabinet also defines a third air opening that is
vertically displaced from the second air opening in the fourth
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wall and the first wall of the cabinet defines a fourth air
opening that is vertically displaced from the first slot in the first
wall of the cabinet, the third air opening being configured to
receive air exiting the second air opening in the fourth wall and
directs the air from the second air opening in the fourth wall
into the chamber within the cabinet below the horizontal only
sheet path so the air flows beneath the horizontal only sheet
path in a direction opposite the first airflow before exiting the
chamber through the fourth air opening in the first wall;
a manifold having at least one wall that defines an
enclosed volume, the manifold having a first opening that
fluidly communicates with the fourth air opening in the first
wall of the cabinet to direct air exiting the chamber from the
fourth air opening into the first opening of the manifold and
then through the manifold in a direction that is parallel to the
first airflow to a second opening in the manifold;
a lamp mount configured to hold one or more lamps, the
lamp mount being positioned between the horizontal only sheet
path and the air flow between the third air opening and the
fourth air opening; and
a second plate positioned between the lamp mount and
the air flow between the third air opening in the fourth wall and
the fourth air opening in the first wall, the second plate having a
plurality of air openings that move air from the air flow
between the third air opening in the fourth wall and the fourth
air opening in the first wall through the air openings in the
second plate and past the lamps in the lamp mount before
passing through the horizontal only sheet path.
Appeal Br. 17–18 (emphasis added).
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1 and 3–7 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the enablement requirement. Final
Act. 2.
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2. Claim 5 is rejected under 35 U.S.C. § 112(b) as indefinite. Final
Act. 4.
3. Claims 1, 3–5, and 7 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Grossman2 and Ericsson.3
Final Act. 4. Claim 6 is rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Grossman, Ericsson, and
Sasaki.4 Final Act. 9.
III. DISCUSSION
A. Rejection of claims 1 and 3–7 as not enabled
The Examiner rejected claims 1 as not enabled. Final Act. 2–3. Claims
3–7 were rejected based upon their dependence from claim 1. Id. at 3. We,
therefore, limit our discussion to claim 1.
In particular, the Examiner concludes that the claim limitation “the
first wall of the cabinet defines a fourth air opening that is vertically
displaced from the first slot in the first wall of the cabinet” is not enabled.5
Id. According to the Examiner, “[i]t is unclear to what exactly this fourth air
opening refers.” Id. The Examiner further argues that “the figures
themselves are relatively uninformative. Thus, one of ordinary skill in the art
would not be able to make and use the claimed invention without undue
experimentation.” Id.

2 US 8,026,493 B2, issued September 27, 2011.
3 US 4,545,131, issued October 8, 1985.
4 US 6,278,472 B1, issued August 21, 2001.
5 In an Advisory Action, the Examiner withdrew a second basis for this
rejection. Advisory Action 3 (October 7, 2019).
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A specification enables a claim if it allows a person having ordinary
skill in the art to make and use the full scope of the claimed invention
without undue experimentation. See In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d
1569, 1576 (Fed. Cir. 1984). Factors to be considered in determining
whether a disclosure would require undue experimentation include (1) the
quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples,
(4) the nature of the invention, (5) the state of the prior art, (6) the relative
skill of those in the art, (7) the predictability of the art, and (8) the claims’
breadth. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Enablement is a
question of law based upon underlying factual determinations. In re Swartz,
232 F.3d 862, 863 (Fed. Cir. 2000).
In this case, the Examiner did not set forth a detailed analysis of the
Wands factors. See Final Act. 3. While such an analysis is not required, see
Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991), it
is a helpful exercise in reaching a legal conclusion regarding the enablement
of a claim. We, therefore, will discuss those factors which are particularly
relevant and for which there is evidence in the record.
First, although neither the Examiner nor Appellants so state, we infer
from Appellants’ Specification and the prior art that the level of skill in the
art is moderately high. See Ex parte Jud, Appeal No. 2006-1061, 2006 WL
4080053 (BPAI Jan. 30, 2007) (informative) (inferring level of skill in the
art from the Specification). Having reviewed the Specification, we determine
that a person of ordinary skill in the art would have a mechanical
engineering degree and several years of experience designing components of
high-speed printing systems.
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Second, the claimed apparatus is a machine that operates in a
predictable manner.
Third, the amount of direction or guidance provided by the
Specification is relatively minimal. See Spec. ¶ 17 (“[T]he drawn air is
effectively recirculated through path 88 to re-enter the lower portion of
cabinet 50 through inlet manifold 90. This air is ultimately drawn through
side manifold 96 and out of cabinet 50 as shown by arrow 98.”). Moreover,
the Specification’s Figure 3 only arguably shows the claimed fourth air
opening. Compare Appeal Br. 9–10, with Final Act. 3. For ease of reference,
we reproduce Figure 3 below.
Figure 3 of the ’958 Application is an exploded
view of dryer module 42. Spec. ¶ 17.
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Appellant argues that “[a] PHOSITA would have sufficient
knowledge to . . . see in FIG. 3 the lines forming the opening to the manifold
that is located slightly to the left of reference number 96 and its lead line.”
Appeal Br. 9. We understand this to be a reference to the unlabeled
trapezoidal shaped structure shown on the edge of cabinet 50 and within
manifold 96.
Fourth, claim 1 is lengthy and specifies the relative locations of the
various recited elements of the claimed drying apparatus in great detail.
In view of the foregoing, we conclude undue experimentation would
not be required for a competent mechanical engineer to locate the recited
fourth air opening in the first wall of the cabinet so that air can be drawn
from cabinet 50 into manifold 96 and ultimately exhausted from the drying
apparatus.
For the reasons set forth above, we reverse the enablement rejection of
claim 1.
B. Rejection of claim 5 as indefinite
For ease of reference, we reproduce claim 5 below.
5. The module of claim 4 wherein the first air opening in
the first plate is a plurality of air openings that enable air to
flow into the chamber to the second air opening in the fourth
wall of the cabinet.
Appeal Br. 19 (emphasis added).
The Examiner rejected claim 5 as indefinite because of the phrase
“wherein the first air opening in the first plate is a plurality of air openings.”
Final Act. 4. According to the Examiner, “a singular thing cannot be a
plurality of things identical to the singular thing.” Id.
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In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014), defines the
standard we apply in prosecution. Ex parte McAward, No. 2015-006416,
2017 WL 3669566 (PTAB August 25, 2017) (precedential in relevant part).
During prosecution, a rejection for indefiniteness is appropriate if, after the
broadest reasonable interpretation has been applied to the claims, the metes
and bounds of the claimed invention are not clear. Packard, 751 F.3d at
1310.
While the Examiner’s objection to the claim language may be correct
as a matter of pure logic, we conclude that the limitation recited in claim 5
would not have been unclear to a person having ordinary skill in the art in
view of the ’958 Application’s Specification and Figures. We, therefore,
reverse the rejection of claim 5 as indefinite.
C. Rejection of claims 1, 3–5, and 7 over the combination of Grossman
and Ericsson
Appellant presents specific arguments for reversal of the rejection of
claims 1 and 3–5. Appeal Br. 11–16.
We have considered the rejection as set forth in the Final Action, the
Appeal Brief, and the Examiner’s Answer. Having done so, we reverse the
rejection of claim 1 for the reasons set forth in the Appeal Brief. See id. at
11–14.
Because we reverse the rejection of claim 1, we reverse the rejection
of claims 3–5 and 7, which depend therefrom. We need not consider and do
not express any opinion regarding Appellant’s arguments with respect to
claims 3–5.
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D. Rejection of claim 6 over the combination of Grossman, Ericsson, and
Sasaki
Claim 6 depends from claim 1. The Examiner did not make any
factual findings regarding Sasaki’s content that remedies defects in the
rejection of claim 1. Because we have reversed the rejection of claim 1, we
also reverse the rejection of claim 6.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1, 3–7 112(a) Non-enablement 1, 3–7
5 112(b) Indefiniteness 5
1, 3–5, 7 103 Grossman, Ericsson 1, 3–5, 7
6 103 Grossman, Ericsson, Sasaki 6
Overall Outcome 1, 3–7
REVERSED