Ex Parte Gila et al

Patent Trial and Appeal Board

May 26, 2017

12792301 (P.T.A.B. May. 26, 2017)

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.
12/792,301 06/02/2010 Omer Gila 82263713 4462
22879
HP Tnr
7590 05/31/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
MISERY, RAM A
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2691
NOTIFICATION DATE DELIVERY MODE
05/31/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OMER GILA, NAPOLEON J. LEONI, HENRYK BIRECKI,
and STEVEN T. ROSENBERG
Appeal 2014-008474
Application 12/792,301
Technology Center 2600
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
MELISSA A. HAAPALA, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 5—7, 11, 18, 19, 21, and 23—25.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP (App. Br. 2).
2 Claims 3, 4, 8—10, and 22 have been withdrawn from consideration and
claims 12—17 and 20 have been canceled. See Final Act. 1; App. Br. 18—20.
Appeal 2014-008474
Application 12/792,301
STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to systems and methods for writing on
electronic paper (see Spec. 2:26—27).
Claim 1 is illustrative of the invention and reads as follows:
1. A system for writing information to electronic
paper comprising:
a writing module positioned to face an outer surface of an
insulating layer of the electronic paper;
an erasing unit connected to the writing module and
configured to erase information stored in the electronic paper;
and
a writing unit connected to a same side of the writing
module as the erasing unit and configured to write information
to the electronic paper, wherein writing information to the
electronic paper includes the writing module oriented so that
the electronic paper passes the erasing unit prior to passing the
writing unit.
The Examiner’s Rejections
Claims 1, 5—7, 11,21, and 23—25 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Miyamoto (US 6,515,790 B2; Feb. 4, 2003)
(see Ans. 2—5).
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miyamoto and Sato (US 6,424,387 B2; July 23, 2002)
(see Ans. 5—6).
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miyamoto and Gelbman (US 2001/0020935 Al; Sept. 13,
2001) (see Ans. 6—7).
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Application 12/792,301
Appellants ’ Contentions
1. With respect to independent claim 1, Appellants contend that
(a) Miyamoto does not disclose an erasing unit and instead shows element
21 which is a charger that is opposed to the surface of medium 12 (App. Br.
9-10); and (b) the pair of rollers described in Miyamoto is not shown to be
connected to the CR1 device which the Examiner characterized as the
claimed writing module (App. Br. 10).
2. Regarding claim 11, Appellants rely on the arguments
presented for claim 1 (App. Br. 11—12).
3. Regarding claim 6, Appellants contend Miyamoto does not
teach “the corona is suspended above the electronic paper from the writing
module” because the erasing unit in Miyamoto is not shown to be suspended
above the electronic paper and the erasing unit or the corona is not
connected to the writing module (App. Br. 12). Appellants further assert in
Miyamoto the corona is not part of element 21 which the Examiner
characterized as the claimed erasing unit (App. Br. 13).
4. With respect to claim 2, Appellants contend Sato does not teach
or suggest the claimed “discharging unit connected to the writing module”
because the disclosed discharge-use rollers are not connected to light
projecting unit 504 which the Examiner characterized as the claimed writing
module (App. Br. 13—14).
5. Regarding claims 18 and 19, Appellants argue the Examiner
has not shown where Miyamoto teaches or suggests “wherein information is
written on the electronic paper by the process of claim 11” because
Miyamoto does not teach the limitations of base claim 11 (App. Br. 15).
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Appeal 2014-008474
Application 12/792,301
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
35 U.S.C. § 102(b) Rejection
With respect to the 35 U.S.C. § 102(a) rejections of independent claim
1 and dependent claims 6 and 11, we are unpersuaded by Appellants’
contentions 1(a), 1(b), 2, and 3. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (see Final Act. 2-4) and (2) the rebuttals to arguments expressed by
the Examiner in the Examiner’s Answer in response to Appellants’ Appeal
Brief (see Ans. 7—10).
Regarding claim 1, the Examiner has identified the relevant portions
of Miyamoto and has properly mapped the claimed erasing unit to charging
device 21 in Figure 31, which replaces the image erasing device ELI in
Figure 21 and erases medium 12 by depositing charges of the opposite
polarity (Ans. 7 (citing Miyamoto col. 49,11. 13—18, 36-42)). As further
explained by the Examiner, charging device 21 erases medium 12 by
depositing negative charges whereas image forming device CR1 deposited
positive charges (id.; see also Miyamoto col. 49,11. 43—63).
We also agree with the Examiner that “the claimed term ‘connected’
is a broad term that can include a variety of connection interfaces (e.g.,
electrical, physical, infrared, direct, audible, etc.), none of which are
specified in the claim” (Ans. 8). As found by the Examiner, the
electrophoretic display of Miyamoto provides at least one type of physical
connection among its components including charging device 21 and image
forming device CR1 that would encompass at least an electrical connection
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Appeal 2014-008474
Application 12/792,301
for receiving control signals from a processing unit (Ans. 8—9). In other
words, the recited “an erasing unit connected to the writing module”
limitation reads on the type of connection between charging device 21 and
image forming device CR1 of Miyamoto.
Regarding claim 6, the Examiner refers to charging unit 21, including
the corona for generating electric charges that migrate to the surface of
medium 12, and its position above electronic paper 12 to show that the
recited position of the corona as suspended above the electronic paper (Final
Act. 3; Ans. 10 (citing Miyamoto Fig. 31)). We are unpersuaded by
Appellants’ assertion that the corona is not part of the erasing unit because
the Examiner sufficiently establishes the charging unit 21 (erasing unit)
includes the recited corona.
35 U.S.C. § 103(a) Rejection
With respect to the 35 U.S.C. § 103(a) rejections of claims 2, 18, and
19, we are unpersuaded by Appellants’ contentions 4 and 5. We adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (see Final Act. 5—7) and (2) the rebuttals to
arguments expressed by the Examiner in the Examiner’s Answer in response
to Appellants’ Appeal Brief (see Ans. 10).
In addition to the teachings of Miyamoto, the Examiner has further
provided sufficient explanation with corresponding citations to various
portions of Sato for teaching a discharging unit connected to the writing
module (Final Act. 5—6; Ans. 10).
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Appeal 2014-008474
Application 12/792,301
CONCLUSIONS
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1, 5—7, 11,21, and 23—25 as being anticipated under
35 U.S.C. § 102 and claims 2, 18, and 19 as being unpatentable under
35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s decision to reject claims 1, 2, 5—7, 11, 18,
19, 21, and 23-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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