CANON KABUSHIKI KAISHA

Patent Trials and Appeals Board

Jan 10, 2022

2021000150 (P.T.A.B. Jan. 10, 2022)

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. 15/142,034 04/29/2016 Hidekazu Nakashio 00862.176796.1 7218 5514 7590 01/10/2022 Venable LLP 1290 Avenue of the Americas New York, NY 10104-3800 EXAMINER ZHANG, FAN ART UNIT PAPER NUMBER 2674 MAIL DATE DELIVERY MODE 01/10/2022 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 HIDEKAZU NAKASHIO Appeal 2021-000150 Application 15/142,034 Technology Center 2600 Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 4-7, 10-14, and 21-23. App. Br. 5. Claims 16 and 17 are objected to, but otherwise indicated as being drawn to allowable subject matter, and therefore are not before us on appeal. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Canon Kabushiki Kaisha. Appeal Br. 3. Appeal 2021-000150 Application 15/142,034 2 STATEMENT OF THE CASE2 The claimed subject matter is directed to “an image processing apparatus, control method, and computer-readable medium for generating a print image by compositing an image such as a copy-forgery-inhibited pattern image.” See Spec. ¶ 1. Exemplary Claim Claim 21, reproduced below, is representative of the subject matter on Appeal (formatting, labeling, and emphases added to contested prior-art limitations): 21. A copier comprising: an operation panel that receives a user instruction for adding additional image data including letters that are difficult to recognize on a print having the additional image data printed thereon, but which appear when the print is copied; a scanner that scans a document to obtain main image data; a printer; and a controller that obtains a main toner amount for printing the obtained main image data and an additional toner amount for printing the additional image data; [L1] compares a sum of the main toner amount and the additional toner amount with a limit value for preventing a fixing error of the printer; [L2] in a first case that the sum is determined to be greater than the limit value by the comparison, corrects the main image 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed March 6, 2020); Examiner’s Answer (“Ans.,” mailed June 10, 2020); Non- Final Office Action (“Non-Final Act.,” mailed Oct. 9, 2019); and the original Specification (“Spec.,” filed April 29, 2016). Appellant has not submitted a Reply Brief. Appeal 2021-000150 Application 15/142,034 3 data to reduce the main toner amount without correcting the additional image data; in a second case that the sum is determined to be less than the limit value by the comparison, corrects neither the main image data nor the additional image data; and combines the additional image data not corrected and the main image data corrected in the first case or not corrected in the second case to obtain combined image data; wherein the printer is configured to print the combined image data. REFERENCES The Examiner relies upon the following prior art as evidence: Name Reference Date Yoshida US 2008/0055679 A1 Mar. 6, 2008 Yamaguchi et al. (“Yamaguchi”) US 2008/0158576 A1 July 3, 2008 Imai US 2008/0158280 A1 July 3, 2008 Ono US 2008/0310873 A1 Dec. 18, 2008 Ohta et al. (“Ohta”) US 2009/0097046 A1 Apr. 16, 2009 Nagao JP 2009027225A Feb. 5, 2009 Appeal 2021-000150 Application 15/142,034 4 REJECTIONS R1. Claims 4-6, 10, 12, 14, and 21-233 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Ohta, Yamaguchi, and Nagao. Non-Final Act. 3. R2. Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Ohta, Yamaguchi, Nagao, and Imai. Non-Final Act. 7. R3. Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Ohta, Yamaguchi, Nagao, and Ono. Non-Final Act. 8-9. R4. Claim 13 stands rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Ohta, Yamaguchi, Nagao, and Yoshida. Non-Final Act. 10. CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 21) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness Rejection R1 of independent claims 21, 22, and 23, and not separately argued dependent claim 4-6, 10, 12, and 14 on the basis of representative 3 The Examiner includes claims 7, 11, and 13 in the explicit statement of Rejection R1 (Non-Final Act. 3), but these claims are not addressed in the detailed rejection because of what we assume to be administrative oversight. Claims 7, 11, and 13 are rejected under Rejections R2, R3, and R4, respectively. Appeal 2021-000150 Application 15/142,034 5 claim 21.4 We address Rejections R2 through R4 of dependent claims 7, 11, and 13, not separately argued, infra. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We disagree with Appellant’s arguments with respect to claim 21 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer in response to Appellant’s arguments. We highlight and address specific findings and arguments regarding claim 21 for emphasis as follows. 1. § 103 Rejection R1 of Claims 4-6, 10, 12, 14, and 21-23 Issue 1 Appellant argues (Appeal Br. 16-21) the Examiner’s rejection of claim 21 under 35 U.S.C. § 103 as being obvious over the combination of 4 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2021-000150 Application 15/142,034 6 Ohta, Yamaguchi, and Nagao is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a method that includes the limitations of: [L1] compares a sum of the main toner amount and the additional toner amount with a limit value for preventing a fixing error of the printer; [L2] in a first case that the sum is determined to be greater than the limit value by the comparison, corrects the main image data to reduce the main toner amount without correcting the additional image data; as recited in claim 21? Principles of Law “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Id. at 425. In KSR, the Court stated “[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 Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 Appeal 2021-000150 Application 15/142,034 7 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill . . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Further, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2021-000150 Application 15/142,034 8 Analysis Limitation L1 - comparing with a limit value Limitation L1 recites “compares a sum of the main toner amount and the additional toner amount with a limit value for preventing a fixing error of the printer.” Claim 21. The Examiner finds Ohta teaches or suggests this limitation. Non- Final Act., citing Ohta ¶¶ 44-48. The Examiner further finds: Ohta et al applies copy-forgery-inhibited pattern data in a form of transparent-toner pattern to print image data in [p0063, p0066, p0067] and compares the sum of amount of toner applied to the copy-forgery-inhibited pattern data and the print image data to a predetermined amount. Ohta et al further restricts amount of toner applied to the copy-forgery-inhibited pattern data so that the sum of amount of toner applied does not exceed the predetermined amount [p0044-p0048]. Ans. 3-4. Appellant argues, “the proposed combination of Ohta et al. in view of Yamaguchi et al. and Nagao does not disclose or suggest, among other features, a controller that (i) compares a sum of the main toner amount and the additional toner amount with a limit value for preventing a fixing error of the printer”. Appeal Br. 17-18. Responsive to Appellant’s contentions, the Examiner further finds: Ohta et al applies copy-forgery-inhibited pattern data in a form of transparent-toner pattern to print image data in [p0063, p0066, p0067] and compares the sum of amount of toner applied to the copy-forgery-inhibited pattern data and the print image data to a predetermined amount. Ohta et al further restricts amount of toner applied to the copy-forgery-inhibited Appeal 2021-000150 Application 15/142,034 9 pattern data so that the sum of amount of toner applied does not exceed the predetermined amount [p0044-p0048]. Ans. 3. The Examiner further explains Yamaguchi’s restricting the toner applied to both print data and form data when the total amount of toner exceeds a predetermined amount also teaches or at least suggests limitation L1. Ans. 4, citing Yamaguchi ¶¶ 80-83. Appellant does not respond to the Examiner’s additional clarifications in the Answer as Appellant does not file a Reply Brief. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Furthermore, Appellant does not advance substantive arguments regarding limitation L1 in the Appeal brief, but instead presents conclusory contentions that limitation L1 is not taught, without addressing the Examiner’s specific findings, and without any substantive argument or rebuttal evidence in support. Mere attorney arguments and conclusory statements unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). We agree with the Examiner’s findings regarding limitation L1, i.e., “compares a sum of the main toner amount and the additional toner amount with a limit value for preventing a fixing error of the printer” because, under the broadest reasonable interpretation, limitation L1 may broadly, but reasonably be construed as reading on Ohta’s sum of its amount of transparent toner and the total amount of toner of the four colors not exceeding an upper limit (240%). See Ohta ¶ 48. Appeal 2021-000150 Application 15/142,034 10 Limitation L2 - corrects the main image data . . .without correcting the additional image data Appellant contends limitation L2, which recites “in a first case that the sum is determined to be greater than the limit value by the comparison, corrects the main image data to reduce the main toner amount without correcting the additional image data,” is not taught by the cited references. Appeal Br. 16-18. Appellant summarily asserts that both Ohta and Yamaguchi fail to disclose this limitation. Appeal Br. 16-17. Appellant then argues Nagao’s description of reducing the amount of toner used “is not based on a comparison to a limit value or . . . preventing a fixing error.” Appeal Br. 17 (emphasis omitted). We are not persuaded by Appellant’s arguments because Appellant is arguing the references separately when the rejection for obviousness is based upon what the reference combination would have suggested to a person of ordinary skill in the art. “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” Keller, 642 F.2d at 426. The Examiner cites to Ohta and Yamaguchi for teaching or at least suggesting limitation L2. See Ans. 3-5, Non-Final Act. 3-4. Furthermore, Appellant advances conclusory statements without addressing the Examiner’s specific findings and does not file a Reply Brief to rebut or otherwise dispute the Examiner’s additional findings and clarifications. Appeal Br. 17. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). We agree with the Examiner’s findings because the Examiner cites to Nagao for correcting only the toner amount applied to the main image data Appeal 2021-000150 Application 15/142,034 11 in order to maintain the total toner sum within a limit. Ans. 5. The Examiner cites to Ohta for correcting the toner amount applied to the additional image data, and to Yamaguchi for restricting the toner amount if it exceeds a predetermined limit amount. Ans. 4. Appellant next argues “the technique recited in independent Claim 21 would have been counterintuitive to one of ordinary skill in the art and that neither Ohta et al. alone or in combination with other cited art would have led one of ordinary skill in the art to try the opposite technique to what is disclosed in Ohta et al.” Appeal Br. 19. Appellant bases this contention on Ohta’s description of reducing the toner amount of the additional image because it is less important than the main image. Id. Appellant then contends, based on Ohta, one of ordinary skill in the art would not have tried reducing the main image data and preserve the additional data. Id. Appellant further argues Yamaguchi reduces both the main image data and the additional image data so Yamaguchi does not prefer one over the other. Appeal Br. 20. Appellant then argues Nagoya would not lead one of ordinary skill in the art to modify Ohta, because Nagoya has nothing to do with preventing a fixing error or comparing a sum of toner amounts to a limit value for preventing a fixing error. Id. Appellant avers that Nagoya is directed to merely reducing the consumption of the toner. Id. We are not persuaded by Appellant’s arguments because Nagoya teaches reducing the density of the printed image without reducing the density of the ground tint pattern itself, and reducing the amount of consumption of toner in the ground tint print when printing the pattern Appeal 2021-000150 Application 15/142,034 12 without reducing the copy suppression function of the pattern discloses the disputed limitation “correcting the main image data . . . without correcting the additional image data.” Ans. 4. The Examiner further explains that there are three finite options of limiting the toner amount between the two images and Nagao clearly teaches reducing the main image data instead of reducing the additional image data. Ans. 6. Appellant does not traverse the Examiner’s additional findings and clarifications (Ans. 6-7) regarding this combination argument. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance upon the cited prior art combination to teach or suggest the disputed limitations of claim 21, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of independent claim 21, and grouped independent claims 22 and 23, and grouped dependent claims 4-6, 10, 12, 14, 16, and 17, which fall therewith. See Claim Grouping, supra. 2. § 103 Rejections R2-R4 of Claims 7, 11, and 13 Appellant does not separately argue obviousness Rejections R2-R4 of dependent claims 7, 11, and 13 under § 103. Therefore, we sustain the Examiner’s rejection of these claims 7, 11, and 13. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSIONS Appellant has not persuasively argued that the Examiner erred with respect to obviousness Rejections R1-R4 of claims 4-7, 10-14, and 21-23 Appeal 2021-000150 Application 15/142,034 13 under 35 U.S.C. § 103 over the cited prior art combinations of record, and we sustain the rejections. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/ Basis Affirmed Reversed 4-6, 10, 12, 14, 21-23 103 Ohta, Yamaguchi, Nagao 4-6, 10, 12, 14, 21-23 7 103 Ohta, Yamaguchi, Nagao, Imai 7 11 103 Ohta, Yamaguchi, Nagao, Ono 11 13 103 Ohta, Yamaguchi, Nagao, Yoshida 13 Overall Outcome 4-7, 10-14, 21-23 TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED