Ex Parte Ishii et al

Board of Patent Appeals and Interferences

Feb 28, 2011

11484619 (B.P.A.I. Feb. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TAKAYUKI ISHII and YOSHITAKA SHIMADA
____________________

Appeal 2010-001675
Application 11/484,6191
Technology Center 2600
____________________

Before MAHSHID D. SAADAT, MARC S. HOFF, and BRADLEY W.
BAUMEISTER, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge HOFF.
Dissenting Opinion filed by Administrative Patent Judge BAUMEISTER.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Seiko Epson Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-001675
Application 11/484,619

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4, and 5.3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention concerns a fixed material (i.e., paper)
transportation apparatus that prevents paper cockling. Suction holes are
provided on a portion of the material transportation surface, operative to
suck the material down to the surface as it is being transported. A step
portion is formed between a liquid fixing area and a downstream portion of
the transportation path (Spec. 6-7).
Claim 1 is exemplary of the claims on appeal:
1. A fixed material transportation apparatus comprising:
a transportation surface on which a fixed material is transported in a
transportation direction while being sucked,
wherein the transportation surface includes:
a first surface;
a second surface located downstream of the first surface in the
transportation direction; and
a step portion through which the first surface is connected to the
second surface,
wherein the second surface is formed such that the fixed material is
transported on the transportation surface at the second surface,
wherein the first surface includes an area in which liquid is fixed to
the fixed material and extends to the step portion,
wherein, in the transportation direction, a length of the second surface
is longer than a length of the first surface, and
wherein a plurality of sucking holes are formed on the first surface
and the second surface.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:

3 Claims 3, 6, and 7 have been cancelled.
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Application 11/484,619

Miyasaka US 6,270,215 B1 Aug. 7, 2001
Izuma US 6,752,495 B2 Jun. 22, 2004
Wasyliw WO 00/34158 Jun. 15, 2000
Claims 1, 2, and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Izuma in view of Miyasaka.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Izuma in view of Miyasaka and Wasyliw.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed July 2, 2009), the Reply Brief (“Reply Br.,” filed
November 12, 2009) and the Examiner’s Answer (“Ans.,” mailed September
15, 2009) for their respective details.

ISSUES
Appellants argue that Miyasaka only teaches sucking holes on the first
surface, and that neither reference teaches sucking holes on the second
surface (App. Br. 9).
Appellants further argue that providing suction in the downstream
region would degrade transport accuracy and printing precision, and thus
that one of skill in the art would not be motivated to perform the sucking
operation in the downstream region of either Izuma or Miyasaka (App. Br.
10).
Last, Appellants assert that region 23 of Miyasaka fails to include
both the claimed first and second surface, because Miyasaka does not teach
the step portion recited in claim 1 through which the first surface is
connected to the second surface.
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Appellants’ contentions and the Examiner’s findings present us with
the following issues:
1. Does Miyasaka teach suction holes on a second surface located
downstream of the first surface?
2. Would the person having ordinary skill in the art be motivated to
modify Izuma to include the downstream suction region taught by
Miyasaka?
3. Does Miyasaka teach a transportation surface including a first
surface and a second surface downstream therefrom, as claimed?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Izuma
1. Izuma teaches a step region between first and second surfaces (near
the head of arrow 18, Fig. 4).
Miyasaka
2. Miyasaka teaches suction holes throughout range 23 (col. 3, ll. 57-
62).
3. Recording head 22 reciprocates in the Y-direction, discharging ink
droplets onto the recording medium 10 (col. 4, ll. 54-59).

PRINCIPLES OF LAW
The determination of obviousness must consider, inter alia, whether a
person of ordinary skill in the art would have been motivated to combine the
prior art to achieve the claimed invention and whether there would have
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been a reasonable expectation of success in doing so. Brown & Williamson
Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir. 2000).
Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). Where
the teachings of two or more prior art references conflict, the Examiner must
weigh the power of each reference to suggest solutions to one of ordinary
skill in the art, considering the degree to which one reference might
accurately discredit another. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991). If the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court has held
that “[a] reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d 1085,
1090 (Fed. Cir. 1995).

ANALYSIS
CLAIMS 1, 2, AND 5
We select claim 1 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded by Appellants’ argument that neither Izuma nor
Miyasaka disclose the claimed sucking holes provided on a second surface
(App. Br. 9). We concur with the Examiner’s finding (Ans. 5) that Izuma
teaches the limitations of claim 1, including the step region between first and
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second surfaces (FF 1), lacking only the claimed sucking holes. The
Examiner relies on Miyasaka’s teaching of suction holes throughout range
23 (FF 2).
Figure 3 of Miyasaka, reproduced below, illustrates range 23:

Figure 3 illustrates a side cross section of the inkjet printer.
Range 23, the portion of the paper transportation path between the
arrowheads, includes both a first surface (in which liquid is fixed to the fixed
material, as claimed) and a second surface downstream from the first surface
(Ans. 10). We disagree with Appellants that region 23 merely discloses the
first claimed surface, or that Miyasaka’s suction holes are formed only on a
region directly below the printing head (App. Br. 9). We agree with the
Examiner’s finding that the suction region encompasses feed rollers 34, 20,
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printhead 22 (see FF 3), cutter 28, and regions downstream therefrom (Ans.
10).
We disagree with Appellants’ further argument that the references
teach away from extending the suction region. Appellants’ argument that
such suction downstream of the printing region would cause large
transportation resistance to a leading end of the paper (App. Br. 10) lacks
evidentiary support. Further, we agree with the Examiner’s finding that
Miyasaka discloses a suction region extending well beyond the printing
region (Ans. 11).
Appellants’ argument that Miyasaka does not teach sucking holes in a
second region because Miyasaka does not teach the claimed step region
delineating first and second regions (Ans. 11) is not germane to the rejection
at issue. The Examiner relied upon Izuma, rather than Miyasaka, to teach the
claimed step region, and turned to Miyasaka for the suggestion that suction
be performed downstream from the first region. We further disagree with
Appellants’ characterization of the first region in Miyasaka as corresponding
to the entire transportation path beneath carrier 26 (App. Br. 9).
Representative claim 1 limits the first region only as including “an area in
which liquid is fixed to the fixed material and extend[ing] to the step
portion.” It is therefore reasonable for the Examiner to construe the first
region as being the region of the paper transportation path directly under
recording head 22 (Ans. 10; see FF 3). The portion of Miyasaka’s paper path
downstream of that region, but within region 23, may fairly be construed as
the “second region.” (As noted supra, the Examiner relies on Izuma to teach
the step portion.)
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Because Appellants’ arguments have not persuaded us that that the
Examiner erred in concluding that claims 1, 2, and 5 are unpatentable over
Izuma in view of Miyasaka, we will sustain the § 103 rejection.
Claim 4
Appellants’ sole argument with respect to claim 4 is that Wasyliw
fails to cure the deficient teachings of Izuma and Miyasaka. Because we find
supra that no such deficiency exists, we will sustain the § 103 rejection of
claim 4 for the same reasons expressed with respect to parent claim 1, supra.

CONCLUSION
1. Miyasaka teaches suction holes on a second surface located
downstream of the first surface.
2. The person having ordinary skill in the art would be motivated to
modify Izuma to include the downstream suction region taught by Miyasaka.
3. Miyasaka teaches a transportation surface including a first surface
and a second surface downstream therefrom, as claimed.

ORDER
The Examiner’s rejection of claims 1, 2, 4, and 5 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

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BAUMEISTER, Administrative Patent Judge, dissenting.
I respectfully dissent. I would reverse the rejection of claims 1, 2, 4,
and 5 for the following reasons.
The dispositive facts are undisputed. Independent claim 1 recites a
fixed material transportation apparatus (such as a printer). The apparatus
comprises a transportation surface that includes (1) “a first surface [that]
includes an area in which liquid is fixed to the fixed material” (e.g., an area
where ink is applied to paper); (2) “a second surface” on which the fixed
material is transported; and (3) “a step portion through which the first
surface is connected to the second surface.” Independent claim 1 further
requires “a plurality of sucking holes . . . formed on the first surface and the
second surface.” In the context of the cited prior art printers, claim 1 would
require that suction holes be disposed on a first portion of a platen’s surface
that includes a printing area or image forming zone, and also on another
portion of the platen surface that is separated from the image forming zone
by “a step portion.”
Neither of the cited prior art references teaches or suggests that
suction holes may be disposed on what claim 1 refers to as “a second
surface.” Izuma discloses (see Figs. 3 and 4) suction holes (34) disposed
only in the image forming zone (32) of the platen (22), upstream of the step
depicted in Figure 4. Izuma does not disclose suction holes disposed
downstream of the step, so as to be in the discharge guide region (38) that
has the recessed surface. Likewise, Miyasaka discloses (see Figs. 1-3)
suction holes (21) disposed only within the predetermined range (23) of the
platen (2), upstream of the step depicted in Figure 3. Miyasaka does not
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disclose any sucking holes disposed beyond the step, so as to be in the
recessed downstream portion (4b) of the platen.
The only suggestion to place suction holes downstream of the prior
art’s steps come from Appellants’ own disclosure. This is a textbook case of
impermissible hindsight reasoning.
The Majority finds a lack of evidentiary support for Appellants’
argument that placing suction holes in the second surface of either prior art
reference would result in an unduly large transportation resistance at the
leading end of the paper (Maj. Op. 7, citing App. Br. 10). I agree with the
Majority that Appellants’ arguments are not supported by evidence, but this
fact is irrelevant. The Examiner has not established a prima facie case of
obviousness. As such, the burden of rebuttal has never shifted to Appellants.

ELD
SUGHRUE-265550
2100 PENNSYLVANIA AVE. NW
WASHINGTON, DC 20037-3213
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