Ex Parte Atsuumi et al

Patent Trial and Appeal Board

Feb 27, 2013

11404913 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HIROMICHI ATSUUMI and TAKU AMADA
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Appeal 2010-007465
Application 11/404,913
Technology Center 2800
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Before DAVID M. KOHUT, BRYAN F. MOORE, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007465
Application 11/404,913

2
STATEMENT OF CASE
1

Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-12.
2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
The claims are directed to scanning optical system that includes a kink
in the scanning lens to deflect light flux on a surface to be scanned through a
scanning lens. Spec., Abstract. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A scanning optical system that deflects a light flux
emitted by a light source by an optical deflector, and focuses
the light flux on a surface to be scanned through a scanning
lens, the scanning optical system comprising:
a kink producing unit configured to produce a kink in the
scanning lens by contacting a middle portion that is a
substantially middle portion of the scanning lens, the scanning
lens having three portions comprised of first and second side
portions and the middle portion, the first side portion closer to a
surface to be scanned and the second side portion closer to the
optical deflector on a path of the light flux,
wherein the middle portion includes a first middle
portion and a second middle portion along an optical axis
direction, the first middle portion is a portion closer to the first
side portion, the second middle portion is a portion closer to the
second side portion, and the contacting includes contacting the
first middle portion at a first pressure and contacting the second
middle portion at a second pressure that is different from the
first pressure.

1
Throughout the Decision, we refer to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 26, 2009), and Reply Brief (“Reply Br.,” filed Jun. 29,
2009), and the Examiner’s Answer (“Ans.,” mailed May 4, 2009).
2
The real party in interest is Ricoh Company LTD. App. Br. 1.
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Application 11/404,913

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Rejections
The Examiner made the following rejections:
Claims 1-7, 9, 11, and 12 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Masataka (JP 2001-166235 A). Ans. 3-11.
Claims 8 and 10 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Masataka in view of Tomohiro (JP 10-268217 A). Ans.
12.

ANALYSIS
Claim 1 – 35 U.S.C. § 103(a)
Issue: Did the Examiner err in finding that Masataka teaches or
suggests:
a kink producing unit configured to produce a kink in the
scanning lens by contacting a middle portion that is a
substantially middle portion of the scanning lens . . . , the
contacting including the first middle portion at a first pressure
and contacting the second middle portion at a second pressure
that is different from the first pressure
as recited in claim 1?
Appellants contend that the screws 32a-32c and the leaf springs 31a-
31c disposed above them in Masataka do not teach or suggest a kink
producing unit as recited in claim 1. App. Br. 9. Appellants also contend
that the Examiner’s shifting or rearranging the location of the screw
elements in Masataka, modifies the operation of the device rendering it
unsatisfactory for its intended purpose. App. Br. 10. Appellants assert that
it is not obvious to move a screw to the back of the lens closest to the
scanning light source because it would disrupt the designed convergence
created by the long length of the lens in the scanning direction. App. Br. 13-
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Application 11/404,913

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14. Appellants argue that in Masataka, the screws on the lens run
perpendicular to the line running between the light source and the middle of
the lens and not the front and back middle portions as recited in claim 1.
App. Br. 11, 14. Finally Appellants argue that the Examiner’s stated
rationale for shifting the screws in Masataka, which is to deform the lens to
correct the shape of the scanning lines, would change the principle operation
of the device, creating a bowed lens and never producing a kink in the lens
as claimed. App. Br. 16
The Examiner responds that Masataka teaches or suggests all the
limitations of independent claim 1 except for the exact positioning of the
first and second middle portions for contacting the lens. Ans. 13. The
Examiner found that “[s]hifting the location of the screws, or middle
portions, either forward or backwards from the central line of the lens [in
Masataka] is a mere rearrangement of an element that does not impart
modification of the operation of the device.” Ans. 13-14 (citing In re
Japikse 181 F.2d 1019 (CCPA 1950)). The Examiner found that:
it would have been obvious to a person of ordinary skill in the
art at the time of the invention was made that shifting the
location of the middle portions would enable a user to adjust a
scanning lens over a larger surface area of the lens in order to
compensate for line bending.
Ans. 15-16.
Having reviewed Appellants’ arguments that the Examiner erred and
the Examiner’s response, we agree with the Examiner. We agree with the
Examiner’s findings that the screws in Masataka (32a-32c) along the middle
portion “are used to deform the lens to correct the shape of the scanning
lines.” Ans. 14. We also agree with the Examiner that Appellants claim
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does not specify any particular distance between the first middle and second
middle portion. Id. Thus, the screws identified in Masataka need only be
shifted slightly to teach or suggest the limitations of the claim.
We are not persuaded by Appellants contention that shifting or
rearranging the location of the screw elements in Masataka, would modify
the operation of the device rendering it unsatisfactory for its intended
purpose. App. Br. 10; Reply 3. While the Examiner’s reasoning cannot
have a rational underpinning if the proposed modification would render the
reference being modified unsatisfactory for its intended purpose (See Tec
Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)
(finding where a proposed modification renders the prior art invention being
modified unsatisfactory for its intended purpose, the proposed modification
would not have been obvious)), Appellants do not provide sufficient
persuasive evidence that shifting the contact points in Masataka by even a
small amount would render it unsatisfactory for its intended use. Instead,
Appellants agree with the Examiner that shifting the screws in Masataka
away from the central line of the lens would modify the operation and could
correct for scanning line errors. Reply 3. We agree with the Examiner’s
reasoning that modification of the screw location contact points in Masataka
“continue to function to deform the lens to correct the shape of the scanning
lens,” which “allows for an additional degree of freedom when modifying
the lens shape to correct for scanning errors.” Ans. 14.
We are also not persuaded by Appellants’ argument that modification
of Masataka relies on impermissible hindsight. First, as explained in In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971):
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Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.

Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
ordinary skill at the time of the Appellants’ invention and does not include
knowledge gleaned only from the Appellants’ disclosure. The Examiner’s
stated motivation, that “[a] person of ordinary skill in the art at the time the
invention was made would have been motivated to shift locations of the
middle portions so the scanning lens could be adjusted over a larger surface
area of the lens,” Ans. 14, provides a rational underpinning for the proposed
modification.
Appellants also argue that the Examiner’s modification of Masataka
would produce a bow as opposed to a kink recited in claim 1. App. Br. 14-
16; Reply 4. Appellants admit, both bowing and kinking are types of
bending. Reply 4. Appellants’ claim 1 states no requirement on the degree
of bending and Appellants’ Specification does not provide a specific
definition for the term “kink”. Therefore, given the broadest reasonable
interpretation of the claim term “kink,” we find that the bow or deformity
produced by shifting the screws in Masataka encompasses the kink
producing limitation of claim 1. Ans. 16.
Based on the foregoing, we find that the Examiner did not err in
finding that Masataka teaches or suggests:
a kink producing unit configured to produce a kink in the
scanning lens by contacting a middle portion that is a
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substantially middle portion of the scanning lens . . . , the
contacting including the first middle portion at a first pressure
and contacting the second middle portion at a second pressure
that is different from the first pressure
as recited in claim 1. Accordingly, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C § 103(a) as being unpatentable over Masataka.
Claims 2, 7, 8, 9, 10, 11 and 12 – 35 U.S.C. § 103(a)
Appellants argue that claims 2, 7, 9, 11 and 12 rejected under 35
U.S.C § 103(a) as being unpatentable over Masataka recite similar features
as claim 1 and relies on the arguments presented for claim 1. App. Br. 17;
Reply 4. Appellants also make no separate arguments for claims 8 and 10
rejected under 35 U.S.C § 103(a) as being unpatentable over Masataka and
Tomohiro. Accordingly, we sustain the Examiner’s rejection of claims 2
and 7-12 under 35 U.S.C § 103(a).

DECISION
For the above reasons, the Examiner’s rejection of claims 1-12 is
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

ELD