Ex Parte Gravely et al

Patent Trial and Appeal Board

Feb 17, 2017

14486686 (P.T.A.B. Feb. 17, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/486,686 09/15/2014 John Willoughby Gravely JR. IMG. 183 8135
26984 7590 02/17/2017
WTT T TAMT T ONDON
EXAMINER
3010 LEE AVENUE TRAN, DUNG D
P.O. BOX 152
SANFORD, NC 27330 ART UNIT PAPER NUMBER
2675
MAIL DATE DELIVERY MODE
02/17/2017 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 JOHN WILLOUGHBY GRAVELY JR.,
RICHARD J. STIEVENART, and MICHAEL LARKIN SHELBY
Appeal 2016-007282
Application 14/486,6861
Technology Center 2600
Before HUNG H. BUI, ADAM J. PYONIN, and AMBER L. HAGY,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—13, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.2
1 According to Appellants, the real party in interest is Static Control
Components Inc. App. Br. 1.
2 Our Decision refers to Appellants’ Appeal Brief filed January 28, 2016
(“App. Br.”); Reply Brief filed July 14, 2016 (“Reply Br.”); Examiner’s
Answer mailed May 25, 2016 (“Ans.”); Final Office Action mailed August
28, 2015 (“Final Act.”); and original Specification filed September 15, 2014
(“Spec.”).
Appeal 2016-007282
Application 14/486,686
STATEMENT OF THE CASE
Appellants ’ Invention
Conventional toner cartridge for use in a printer is provided with non­
volatile memory modules to record usage information of components, i.e.,
remaining life of the toner cartridge. Spec. 12. Typically, a memory
module may contain multiple bit fields for recording the depletion of toner,
for example, 32 bit fields with each bit field capable of being “punched out,”
i.e., changing from an erased state to a programmed state, to indicate a
particular amount of toner depleted (e.g., 1/32 of total toner). Spec. 14. For
example, all 32 bit fields are “punched out” when all the toner is depleted.
However, when a bit field in the memory module is “punched out,” the
“punched out” bit field may prevent the toner cartridge from operating
properly unless authorized by original equipment manufacturers (OEMs).
Spec. H5—6.
As such, Appellants’ invention proposes to instruct the punching a bit
in a bit field of a memory module without actually punching the bit. Spec.
17. Instead, Appellants propose generating a value that is related to the bit
in the bit field of the memory module to be “punched out” and then storing
that value to indicate a particular amount of toner depleted without having to
actually punch out any bit field of the memory module and without
necessitating any permanent change associated with punching a bit. Spec.
117, 30.
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Application 14/486,686
Representative Claim
Claims 1,5, and 9 are independent. Representative claim 1 is
reproduced below with disputed limitations in italics'.
1. A method of updating a memory module in an imaging
device, comprising:
receiving, at a memory module, a command transmitted
from a processing device, wherein the command indicates to the
memory module to punch out a specified bit in a punch bit field;
determining a value representative of a location of the
specified bit; and
storing the value in the memory module, wherein the value
is stored in an array of bits within the memory module.
App. Br. 9 (Claims App’x).
Examiner’s Rejections and Reference
(1) Claims 2 and 7 stand rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA) second paragraph, as being indefinite. Ans. 2—3.
(2) Claims 1, 3—6, 8, 9, 11, and 12 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Booth et al. (US 2008/0276048 Al;
published on Nov. 6, 2008; “Booth”). Ans. 4—7.
(3) Claims 10 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Booth. Ans. 7—8.
Issues on Appeal
Based on Appellants’ arguments, the dispositive issues on appeal are
whether claims 2 and 7 are indefinite, and whether Booth discloses the
disputed limitation: “storing the value [representative of a location of the
specified bit] in the memory module, wherein the value is stored in an array
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Application 14/486,686
of bits within the memory module” as recited in claim 1, and similarly
recited in claim 9. App. Br. 6—8.
ANALYSIS
35 U.S.C. § 112, second paragraph: Claims 2 and 7
Independent claim 1 recites a method of updating a memory module
in an imaging device, comprising, inter alia: “receiving, at a memory
module, a command transmitted from a processing device, wherein the
command indicates to the memory module to punch out a specified bit in a
punch bit field.” Similarly, independent claim 5 contains a similar
limitation.
Claim 2 depends from claim 1, and further recites: “wherein the
specified bit in the punch bit field is not punched.” Likewise, claim 7
depends from claim 5, and further recites: “transmitting acknowledgement
that the specified bit in the punch bit field has been punched even though the
specified bit has not been punched.”
The Examiner asserts:
it is unclear about receiving a command to perform a function of
punching out when the specified bit is not to be punched.
Furthermore, it is not clear whether “the specified bit is not
punched” is referred to before or after receiving the punch out
command.
Ans. 3 (emphasis added).
Appellants argue “claims 2 and 7 are not indefinite” because
independent claims 1 and 5 only recite a command to instruct the memory
module but do not require the memory module to actually punch out the
specified bit in the bit field, whereas claims 2 and 7 require the memory
module to execute the command. App. Br. 3—A.
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Application 14/486,686
We agree with Appellants. Breadth of a claim should not be equated
with indefiniteness. In re Miller, 441 F.2d 689 (CCPA 1971). We find the
scope of the subject matter embraced by the claims is clear, i.e., claims 1 and
5 recite a command whereas claims 2 and 7 recite a memory module that
executes the command. Accordingly, we decline to sustain the Examiner’s
rejection of claims 2 and 7 under 35 U.S.C. § 112, second paragraph.
35 U.S.C. § 102(b): Claims 1, 3—6, 8, 9, 11, and 12 based on Booth
Independent claim 1 recites a method of updating a memory module
in an imaging device, comprising:
receiving, at a memory module, a command transmitted
from a processing device, wherein the command indicates to the
memory module to punch out a specified bit in a punch bit field;
determining a value representative of a location of the
specified bit; and
storing the value in the memory module, wherein the value
is stored in an array of bits within the memory module.
App. Br. 9 (Claims App’x). Claim 5 contains a similar limitation, except
that the value determined is “a decimal value representative of a location of
the specified bit” for storing in the memory module.
Independent claim 9 simply recites “at least one print cartridge having
a memory” and
a host device [which] transmits the command signals to the at
least one print cartridge . . . including a punch bit command that
indicates to the memory to punch out a specified bit in a punch
bit field, wherein a value indicative of a location of the specified
bit is stored in the memory in an array of bits.
The Examiner finds Booth discloses all aspects of Appellants’ claim 1
and similarly, claims 5 and 9, including: (1) “receiving, at a memory
module, a command . . . indicates to the memory module to punch out a
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Application 14/486,686
specified bit in a punch bit field” as shown in Booth’s Figures 1A and 4B;
(2) “determining a value representative of a location of the specified bit” in
the form of a bit field changing from an erased state to a programmed state,
shown in Booth’s Figure 4B; and (3) “storing the value in the memory
module, wherein the value is stored in an array of bits within the memory
module.” Ans. 4 (citing Booth, || 8, 30, 31, 57, Figs. 1A and 4B).
Appellants acknowledge Booth discloses (1) “a printing device that
includes a memory module having bit fields where each bit is ‘punched out, ’
thereby changing a state from an erased state to a programmed state” and
(2) “a memory module that punches a bit field in response to a punch out bit
field command.” App. Br. 6—7 (citing Booth || 29, 56). However,
Appellants argue “Booth does not disclose storing a value that is
representative of a location of a specified bit in a memory module, with the
value being stored in an array of bits within the memory module.” App. Br.
7.
In response, the Examiner takes the position that:
[i]n Booth, after receiving a punching out command from the
processing device 101, as shown in figures 1 A, 3, 4B and
paragraph 0057, the value of the particular bit in the memory (bit
field number 428) is punched out (changed from an erased state
to a programmed state; i.e., “0” or “1”), this new value is stored
in the memory in order to keep track of pages printed by the
imaging unit (paragraph 0030); therefore suggests storing the
value that is representative of a location of a specified bit in a
memory module.
Ans. 10-11.
We agree with the Examiner’s position. For additional emphasis, we
note Appellants’ claims 1,5, and 9 are written broadly and, as written, do
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Application 14/486,686
not define how “a value representative of a location of the specified bit [in a
punch bit field” is determined based on whether a specified bit in the punch
bit field is “punched out” or not. As such, Appellants’ claims 1,5, and 9 do
not distinguish over Booth as well as Appellants’ Admitted Prior Art, US
7,844,786, described in paragraph 4 of Appellants’ Specification. For
example, as correctly recognized by the Examiner, when a particular bit field
is “punched out” in response to receipt of a punch out command, shown in
Booth’s Figure 4B, the value of that particular bit field is also changed from
an erased state to a programmed state, i.e., from “0” to “1,” and that value is
then determined and stored in the memory module in the same manner
recited in Appellants’ claims 1, 5, and 9.
For the reasons set forth above, Appellants have not demonstrated
Examiner error. As such, we sustain the Examiner’s anticipation rejection of
independent claims 1,5, and 9, and the rejection of their respective
dependent claims 3, 4, 6, 8, and 10-13, which Appellants do not argue
separately. App. Br. 7—8.
CONCLUSION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting claims 2 and 7 under 35U.S.C. § 112 (pre-
AIA), second paragraph, but have not demonstrated the Examiner erred in
rejecting claims 1, 3—7, and 8—13 under 35 U.S.C. § 102(b) and § 103(a).
DECISION
As such, we REVERSE the Examiner’s final rejection of claims 2 and
7 under 35 U.S.C. § 112 (pre-AIA), second paragraph, but AFFIRM the
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Application 14/486,686
Examiner’s final rejection of claims 1, 3—7, and 8—13 under 35 U.S.C.
§ 102(b) and § 103(a).
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-IN-PART
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