10732047 (P.T.A.B. Oct. 12, 2012)

Ex Parte Anderson et al

Patent Trial and Appeal BoardOct 12, 2012

10732047 (P.T.A.B. Oct. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DARYL E. ANDERSON, ANDREW L. VAN BROCKLIN, PAUL LIEBERT, DANNY KUGLER, and CARIS DORSH ____________________ Appeal 2010-004446 Application 10/732,047 Technology Center 2800 ____________________ Before ROMULO H. DELMENDO, ALLEN R. MacDONALD and JOHNNY A. KUMAR, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004446 Application 10/732,047 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim(s) Exemplary independent claim 1 under appeal reads as follows (emphasis added): 1. A method for enhancing optical density on print media darkened by exposure to electromagnetic radiation, the method comprising: dividing the print media into at least one track, creating a defocused spot of electromagnetic radiation at a location of the at least one track to result in a darkened mark at the defocused spot, the defocused spot at the location permitting the darkened mark at the defocused spot of electromagnetic radiation to have a maximum optical density. Rejections on Appeal 1 The Examiner rejected claims 1, 2, 4, 7, 10-18, 21, 24, 25, 27, and 30 under 35 U.S.C. § 102(e) as being anticipated by Morishima (US 7,050,365 B2). 2 1 The Examiner rejected claims 1-30 as being indefinite under 35 U.S.C. § 112, second paragraph. Based on an amendment filed after the final rejection, the § 112 rejection was withdrawn. 2 The Examiner also rejected claims 3, 5, 6, 8, 9, 19, 20, 22, 23, 26, 28, and 29 as being unpatentable under 35 U.S.C. § 103(a) over Morishima alone or in combination with other references. Separate patentability is not argued for claims 2-30. Appeal 2010-004446 Application 10/732,047 3 Appellants’ Contentions Appellants contend that the Examiner erred in rejecting claim 1 because: As the Examiner has stated, the spot A has a focus error of zero - per the second line in FIG. 14, which shows the focus error at point A being zero. Also as the Examiner has stated, the spot Z has the maximum optical density - per the first line in FIG. 14, the total amount of return light is at a minimum at the spot Z. However, FIG. 14 clearly shows that the spot Z, like the spot A, has a focus error of zero. That is, the second line in FIG. 14 shows that the focus error at spot Z is zero, no different than the focus error at point A being zero. The claimed invention is limited to the "defocused spot ... permitting the darkened mark at the defocused spot ... to have a maximum optical density. "However, in Morishima by comparison, the perfectly focused spot Z permits the darkened mark at this spot to have a maximum optical density. That is, Morishima discloses exactly the opposite of the claimed invention. In the claimed invention, it is a defocused spot that permits a darkened mark at this spot to have a maximum optical density, whereas in Morishima, it is a perfectly focused spot (spot Z) - i.e., a focus error of zero means that the spot Z is a perfectly focused spot - that permits a darkened mark to have a maximum optical density. (App. Br. 7). Issue on Appeal Did the Examiner err in rejecting claim 1 because Morishima fails to teach a defocused spot? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions (Appeal Brief and Reply Brief) that the Examiner has erred. Appeal 2010-004446 Application 10/732,047 4 We disagree with Appellants’ conclusions. We 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 set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur with the conclusions reached by the Examiner. We note that Appellants do not dispute that Morishima achieves a maximum optical density; rather, Appellants admit the “spot Z permits the darkened mark at this spot to have a maximum optical density.” (App. Br. 7). The essence of Appellants’ argument is that the Examiner was mistaken to rely on the “offset voltage” in Fig. 14 to show defocusing at spot Z. Appellants argue that the Examiner must rely on the focus error, and since the focus error at Z is zero, Z must be “a perfectly focused spot.” Appellants’ argument is inconsistent with their own Specification. First, Appellants state “[t]he defocusing is done by creating an offset signal that is added to the focusing servo of the laser which normally maintains a constant best focus as discussed in the related cases [incorporated by reference at page 1 of Appellants’ Specification and now US 20050058031 A1, US 7177246 B2, and US 7084894 B2].” (Spec. 4:1-3). Second, at column 2, lines 49-51, Appellants’ US 7177246 B2 shows the same focus error (labeled FES by Appellants) that Morishima teaches at column 12, line 40. Appellants then state at column 2, lines 52-55, that FES being zero indicates that the spot is circular. (“Reflected light 700 is seen in a generally circular configuration, which implies that each sensor is similarly affected. Accordingly, the FES signal is approximately zero (0) volts.”). Appeal 2010-004446 Application 10/732,047 5 Appellants’ argument, that the “focus error” in Morishima means something different than the identical “focus error” in their own application, is unpersuasive. A focus error value of “zero” in Morishima merely requires a circular spot, just as it does in Appellants’ own application, and does not preclude a defocused yet circular spot. We conclude that the Examiner did not err in relying on the “offset voltage” of Morishima to show defocusing at spot Z. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1, 2, 4, 7, 10-18, 21, 24, 25, 27, and 30 as being anticipated under 35 U.S.C. § 102(e). (2) The Examiner has not erred in rejecting claims 3, 5, 6, 8, 9, 19, 20, 22, 23, 26, 28, and 29 as being unpatentable under 35 U.S.C. § 103(a). (3) Claims 1-30 are not patentable. DECISION The Examiner’s rejections of claims 1-30 are affirmed. 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 3 ELD 3 We have decided the appeal before us. However, should there be further prosecution of these claims; the Examiner’s attention is directed to the fact that Appellants Specification provides no fixed meaning for the claim term “maximum optical density.” We intend this statement to cover both “no fixed meaning” between laser types (45mWatt versus 70mWatt), and “no fixed meaning” even when limited to any individual one of the laser types.