Ex Parte Clark

Patent Trial and Appeal Board

Feb 5, 2016

12339144 (P.T.A.B. Feb. 5, 2016)

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.
12/339,144 12/19/2008 Robert Alan CLARK 056-0105 6671
70537 7590 02/08/2016
Prass LLP
2661 Riva Road
Building 1000, Suite 1044
Annapolis, MD 21401
EXAMINER
TANKERSLEY, BLAKE A
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
02/08/2016 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 ROBERT ALAN CLARK
____________

Appeal 2014-003329
Application 12/339,1441
Technology Center 2800
____________

Before KRISTEN L. DROESCH, CATHERINE SHIANG, and
TERRENCE W. McMILLIN, Administrative Patent Judges.

McMILLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision2 on appeal under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1, 4–8, 11–15, and 18–21, which are
all the pending claims.3 Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 According to Appellant, the real party in interest is Xerox Corporation.
App. Br. 2.
2 Our decision refers to the Final Office Action mailed March 5, 2013 (“Final
Act.”); Appellant’s Appeal Brief filed September 16, 2013 (“App. Br.”); the
Examiner’s Answer mailed October 10, 2013 (“Ans.”); Appellant’s Reply
Brief filed December 10, 2013 (“Reply Br.”); and the Specification filed
December 19, 2008 (“Spec.”).
3 Claims 2, 3, 9, 10, 16, and 17 are cancelled. App. Br. 4, 21, 23, and 24.
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REJECTIONS ON APPEAL
Claims 8 and 11–14 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention. Final Act. 2.
Claims 1, 4, 5, 7, 8, 11, 12, 14, 15, 18, 19, and 21 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Matsumoto et al. (US
7,016,641 B2; Mar. 21, 2006) (“Matsumoto”); Matsumura et al. (JP 2001-
048366; Feb. 20, 2001) (“Matsumura”); Miller, Drying Wood: Humidity
Explored (“Miller”) and Ampunan et al. (US 2006/0064232 A1, Mar. 23,
2006) (“Ampunan”). Final Act. 3.
Claims 6, 13, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsumoto, Matsumura, Miller, Ampunan, and Koga et
al. (US 2007/0045932 A1; Mar. 1, 2007) (“Koga”). Final Act. 13.

THE CLAIMED INVENTION
According to Appellant, the present application is directed to, “[a]
method and apparatus for fluffer environmental control in an image
production device.” Spec. 1. Independent claim 1 is directed to a method,
independent claim 8 is directed to an image production device, and
independent claim 15 is directed to a computer-readable medium. App. Br.
20–24. Claim 1 recites:
1. A method for fluffer environmental control in an image
production device, comprising:
determining a media type to be used for processing a
print job;

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measuring an ambient temperature and an ambient
relative humidity with sensors at a feeder section of the image
production device;
using instruction from a memory to cause a processor to
determine if the fluffer air needs to be heated by:
calculating an ambient saturation vapor pressure based on
the measured ambient temperature;
determining target relative humidity for the determined
media type;
determining whether air blown from a media stack fluffer
needs to be heated based on the determined target relative
humidity, the measured ambient temperature, the measured
relative humidity, and the calculated ambient saturation vapor
pressure;
calculating the target saturation vapor pressure from ƿws(2)
= ƿws(1), where the ambient relative humidity is (1), the
target relative humidity is 2 , and the ambient saturation
vapor pressure is ƿws(1);
calculating a target temperature for the fluffer air to reach
the target relative humidity based on the calculated target
saturation vapor pressure;
wherein one or more of the calculations are made using
one or more look-up table;
IF it is determined that air blown from the media stack
fluffer needs to be heated;
THEN heating the fluffer air to reach and maintain the
target relative humidity; and
processing the print job.

App. Br. 20–21.
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ANALYSIS
We have reviewed the rejections of claims 1, 4–8, 11–15, and 18–21
in light of Appellant’s arguments presented in the Appeal Brief and Reply
Brief. We are not persuaded that Appellant identifies reversible error. We
agree with and adopt the Examiner’s findings, reasoning, and conclusions as
set forth in the Final Action (Final Act. 2–16) and the Examiner’s Answer
(Ans. 2–10). We highlight the following for emphasis.

Indefiniteness Rejection
Claims 8 and 11–14
Claims 8 and 11–14 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 2. Appellant lists this rejection under
the heading, “GROUNDS OF REJECTIONS TO BE REVIEWED ON
APPEAL,” in the Appeal Brief on page 10 but does not present any
arguments relating to this rejection. App. Br. 11–18. The Examiner’s
Answer states, “[i]t is noted that Applicant does not address the 112, 2nd
paragraph rejections of claims 8 and 11–14.” Ans. 2. Under the heading,
“Argument,” the Reply Brief states, “[t]he use of the term ‘such as’ does not
in itself render the claims indefinite. MPEP § 2173.02(II). Appellant’s
specification clearly conveys to those in the art that the ‘control unit’
performs operations like calculating, determining, and applying conditional
logic.” Reply Br. 2. The indefiniteness rejection is not otherwise addressed
by Appellant. Reply Br. 2–6. This “argument” is untimely. See 37 C.F.R.
§ 41.41 (b)(2) (“Any argument raised in the reply brief which was not raised
in the appeal brief . . . will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”). Appellant fails to show
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good cause (or to even argue good cause exists) for not including this
argument in the Appeal Brief. Moreover, this “argument” is deficient as it is
not explained or supported by citations to the Specification. See 37 C.F.R.
§ 41.37 (c)(1)(iv). Accordingly, we affirm the rejection of claims 8 and 11–
14 under 35 U.S.C. § 112, second paragraph, as indefinite.

Obviousness Rejections
Claims 1, 4, 5, 7, 8, 11, 12, 14, 15, 18, 19, and 21
Claims 1, 4, 5, 7, 8, 11, 12, 14, 15, 18, 19, and 21 are subject to the
same obviousness rejection. Final Act. 3. Appellant presents arguments
relating only to independent claims 1, 8, and 15. App. Br. 11, 18; Reply Br.
3.
With regard to independent claims 1, 8, and 15, Appellant argues that
Matsumoto fails to disclose a controller that can be programmed to
determine the desired fluffer air temperature. App. Br. 11–17; Reply Br. 3–
5. With regard to this argument, the Reply Brief states:
Independent claims 1, 8, and 15 all require that a
processor or control unit be able to perform certain calculations
and perform certain logic as directed by instruction from a
memory. It is Appellant’s position that Matsumoto does not
perform the recited calculations and that Matsumoto does not
contain the infrastructure capable of receiving such instructions
so as to perform the recited functions. Matsumoto does not
disclose a memory with instructions. While it is noted that
controller 16 is performing various hardwired functions. [sic]
The controller does not appear to be a general purpose
computer or a programmable controller. See Column 6, lines
64–67, where Matsumoto discloses that “invention may also be
implemented as a computer program corresponding to the
above-described control processes.”

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Reply Br. 3–4. Appellant fails to identify the limitations or language in
claims 1, 8, and 15 that relate to and support the distinction Appellant argues
with regard to “a processor or control unit” and “a memory with
instructions.” The terms “processor,” “memory,” and “instructions” are only
used in method claim 1 in the following limitation: “using instructions from
a memory to cause a processor to determine if the fluffer air needs to be
heated by. . . .” App. Br. 20 (emphasis added). The term “control unit” does
not appear in claim 1. Id. The terms “control unit,” “memory,” and
“instructions” are only used in device claim 8 in the following limitation: “a
fluffer environmental control unit connected to a memory that stores
instructions, which when accessed, cause the fluffer environmental control
unit to perform operations such as . . . .” Reply Br. 9 (emphasis added).4
The term “processor” does not appear in claim 8. Id. The term
“instructions” only appears in the preamble of computer-readable medium
claim 5 which states, “[a] non-transitory computer-readable medium storing
instructions for controlling a computing device for fluffer environmental
control in an image production device, the instructions comprising . . . .”
App. Br. 23–24. The terms “processor,” “control unit,” and “memory” do
not appear in claim 15. Appellant does not argue that any limiting definition
or description is provided for any of these terms in the Specification. And,
during examination, claims are given their broadest reasonable interpretation
consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d

4 We cite the Reply Brief because the version of claim 8 included in
Appendix A to the Appeal Brief is incorrect. It contains amendments which
were not entered. Advisory Action mailed September 4, 2013. See, also,
Ans. 2 (“[T]he Amendment filed on August 5, 2013 was not entered because
the amendment did not comply with 37 CFR § 41.33(b) and (c), as
evidenced in the Advisory Action mailed on September 4, 2013.”)
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1359, 1364 (Fed. Cir. 2004). These terms describe common computing
components and are used to perform common computing functions in
independent claims 1, 8, and 15 and the Specification.
Moreover, Appellant fails to distinguish Matsumoto on this basis.
The Examiner cites column 4, line 66 through column 5, line 2, of
Matsumoto. Ans. 8. This passage from Matsumoto states, “[t]he controller
16 determines the desired heater temperature on the basis of a program for
executing a determination flow corresponding to the charts shown in FIGS.
3A and 3B.” (Matsumoto, col. 4, l. 66 – col. 5, l. 2.) The Examiner finds,
“Matsumoto discloses the controller (16) is controlled by a program, and
therefore Matsumoto must have a memory which stores this program.” Ans.
8. We agree with the Examiner that Matsumoto teaches or suggests the
common computing components used to describe the common computing
functions of claims 1, 8, and 15.
This argument is also contradicted by the holding in KSR Intern. Co.
v. Teleflex Inc., 550 US 398, 413 (2007) that the “predictable use of prior art
elements according to their established functions” is obvious. Specifically,
the following statement from KSR at 418 applies to Appellant’s argument,
“the [obviousness] analysis need not seek out precise teachings directed to
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Therefore, Appellant’s arguments are not persuasive of
error.
The only limitations from independent claims 1, 8, and 15, which
Appellant specifically argues are not taught or suggested by the cited
combination of references are, “IF it is determined that air blown from a
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media stack fluffer needs to be heated; THEN heating the fluffer air to reach
[and maintain the] target relative humidity.” App. Br. 14. With regard to
this argument, we note that, in the “Background” section of the
Specification, the Appellant acknowledges, “[c]ertain image production
devices utilize air heaters incorporated in the feeder media fluffing
subsystems to reduce the relative humidity of the air jets emanating from the
fluffers so that coated media can be reliably separated.” Spec. 1. And, the
Examiner’s Answer states Matsumoto, “discloses controlling the air
temperature in order to obtain the proper relative humidity (see FIG. 3A),”
in a sheet feeding device, and Matsumura, “discloses controlling the air
temperature in order to attain the proper relative humidity (see FIG 8),” in a
sheet feeder and image forming device. Ans. 3. The Appellant has not
shown that these findings are in error. We are not persuaded by this
argument.
For these reasons, we affirm the rejection of claims 1, 4, 5, 7, 8, 11,
12, 14, 15, 18, 19, and 21.

Claims 6, 13, and 20
Claims 6, 13, and 20 are rejected as obvious over Matsumoto,
Matsumura, Miller, Ampunan, and Koga. Final Act. 13. The only separate
argument presented by Appellant in addressing this rejection is, “Koga does
not disclose controlling the relative humidity by a raising or maintaining a
certain temperature at the fluffer section of an image reproduction unit.”
App. Br. 18.5 This argument is misdirected. Koga was not relied upon for

5 The obviousness rejection of claims 6, 13, and 20 is not separately
addressed in the Appellant’s Reply Brief. Reply Br. 6.
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these teachings by the Examiner. See Final Act. 13 (“Koga discloses that the
fluffer air is heated using a heater which is separate from the fluffer (see
paragraph [0084])”). In response to this argument, the Examiner’s Answer
states:
Appellant also argues that Koga does not disclose
controlling the relative humidity by a raising or maintaining a
certain temperature at the fluffer section of an image
reproduction unit. However, the rejection never asserts that
Koga discloses these features. Instead, Matsumoto in view of
Miller is relied upon for these features. It is noted that one
cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 208 USPQ 871
(CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ
375 (Fed. Cir. 1986).

Ans. 10. We agree with the Examiner and find Appellant’s argument to be
non-persuasive. We affirm the rejection of claims 6, 13, and 20.

DECISION
The rejections of claims 1, 4–8, 11–15, and 18–21 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