Ex parte Kagayama

Board of Patent Appeals and Interferences

Nov 8, 2001

08321324 (B.P.A.I. Nov. 8, 2001)

An amendment after the final rejection was filed as paper1
no. 18 and its entry was approved by the examiner, see paper
no. 21.
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SHIGERU KAGAYAMA
_____________
Appeal No. 1999-1574
Application No. 08/321,324
______________
HEARD: OCTOBER 10, 2001
_______________
Before FLEMING, LALL, and BARRY, Administrative Patent Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 1 through 19 which1
constitute all the claims in the application.
The invention relates to an image forming apparatus with
time-divisional electric-field control of data and selection
Appeal No. 1999-1574
Application No. 08/321,324
2
electrodes. In conventional image forming apparatuses, each
apparatus is controlled in accordance with the voltage to be
applied to each control electrode. Thus, a problem arises
that the cost of the driving circuit is high.
The image forming apparatus according to the present
invention includes a carrier for carrying charge particles,
and electric-field controller that is disposed so as to face
the carrier and for directly controlling the charge particles
within the electric field, and a back electrode that is
disposed so as to face the carrier through the electric-field
controller. Electric-field controller has openings through
which the charge particles pass. The apparatus also includes
a plurality of electrode units that are disposed adjacent the
openings, the plurality of electrode units being time-
divisionally driven. The plurality of electrodes are time-
divisionally driven, and electric-field control operation is
effectively performed. Accordingly, if data electrodes and
selection electrodes are used, an image recording operation
can be properly performed because both of the electrodes can
provide sufficient toner flying (supplying) force to the
toner, and in addition, the number of driving ICs can be
Appeal No. 1999-1574
Application No. 08/321,324
Our decision takes into account the English translation2
of these two Japanese references. These two translations are
enclosed with this decision.
3
reduced, resulting in a reduction of cost. A further
understanding of the invention can be achieved by the
following claim.
1. An image forming apparatus comprising:
carrying means for carrying charged toner particles;
electric-field control means for controlling a flow
of the charged toner particles; and
a back electrode disposed facing said carrying means
through said electric-field control means wherein said
electric-field control means comprises an electrode unit
including a plurality of openings through which the
charged toner particles pass, a data electrode adjacent
at least two of the plurality of openings, and a
selection electrode adjacent at least one of the
plurality of openings; and
means for time-divisionally driving said data
electrode and said selection electrode.
The examiner relies on the following references:2
Saito et al. (Saito) 59214053 Dec. 03,
1984 (published Japanese Patent Application)
Kitamura 5-84963 Apr. 06,
1993
(published Japanese Patent Application)
Claims 1 to 3, 7 to 13 and 17 to 19 stand rejected under
35 U.S.C. § 102 as being anticipated by Kitamura.
Appeal No. 1999-1574
Application No. 08/321,324
4
Claims 4 to 6 and 14 to 16 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Kitamura in view of Saito.
Appeal No. 1999-1574
Application No. 08/321,324
A reply brief was filed as paper no. 24 on May 7, 1999. 3
The examiner noted the entry of the reply brief but filed no
further response to the arguments in the reply brief, see
paper no. 27.
The rejection based on 35 U.S.C. § 112, second paragraph, 4
has been overcome and is not on appeal, see answer at page 2.
5
Rather than repeat the arguments of appellant and the
examiner, we make reference to the briefs and the answer for3
the respective details thereof.
OPINION
We have considered the rejections advanced by the
examiner
and the supporting arguments. We have, likewise, reviewed the
appellant’s arguments set forth in the briefs.
We reverse.
We note that there are two separate statutory grounds of
rejection which we consider below. 4
Rejection under 35 U.S.C. § 102
A prior art reference anticipates the subject of a claim
when the reference discloses every feature of the claimed
invention, either explicitly or inherently. See Hazani v.
United States Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44
USPQ2d 1358, 1361 (Fed. Cir. 1997), and RCA Corp. v. Applied
Appeal No. 1999-1574
Application No. 08/321,324
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Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir. 1984).
The examiner rejects claims 1 to 3, 7 to 13, and 17 to 19
under this ground of rejection at pages 3 and 4 of the
examiner’s answer. We take claim 1 as illustrative of this
group. On pages 16 to 19 of the brief, appellant argues how
the Kitamura reference does not disclose the features recited
in claim 1. More specifically, appellant argues, brief at
page 19, that:
Appellant’s specification discloses that the
respective data for two apertures are alternately
supplied to each data electrode 5 through an on/off
operation of an applied voltage, and at the same time,
a selection voltage for selecting one of the two
apertures to be switched on is applied to the selection
electrodes 4A, 4B. That is, an on/off voltage is applied
to the selection electrodes 4A, 4B in synchronism
with the transmitted data, and in this case, a time-
divisional driving of ½ duty can be performed.
Therefore, the number of driving circuits used for the
data electrodes can be reduced to a half, and the cost of
the driving circuits can be greatly reduced.

Furthermore, at the oral hearing, held on October 10,
2001, the appellant’s attorney represented that the recited
“means for time-divisionally driving said data electrode and
said selection electrode” clause in claim 1 should be
interpreted in light of the disclosure in the specification
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stated above and also at page 8, lines 17-28 of the
specification. In view of this interpretation of the “time-
divisionally driving” phrase, the examiner’s position, that
any image forming apparatus such as Kitamura’s system would
have a time-divisional application of the voltage to the
various electrodes in order for the system to operate,
otherwise there will be blobs of ink all at one time if all
the electrodes were applied the charge voltage at the same
time, is not sustainable to meet the limitation recited in the
claim.
Appellant further argues, brief at page 18, that “[n]o
explanation has ever been provided throughout prosecution as
to how the gate electrodes 3 and data electrodes 4 of JP 963
[Kitamura], which are vertically spaced apart from each other,
can possibly be interpreted as being adjacent the same opening
of an aperture.” Appellant’s attorney reiterated the argument
at the oral hearing that the recited clause “wherein said
electric-field control means comprises an electrode unit
including a plurality of openings through which the charged
toner particles pass, a data electrode adjacent at least two
of the plurality of openings, and a selection electrode
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Application No. 08/321,324
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adjacent at least one of the plurality of openings;” implies
that the data electrode and the selection electrode are in the
same plane and are adjacent to the same opening in the
appellant’s disclosure, see Figure 3A and Figure 3B, whereas
in Kitamura (Figure 1) selection (i.e., gate) electrodes 3 and
data electrodes 4 are at the opposite planes of the opening 5
which is clearly different from the appellant’s disclosure.
With this interpretation of the location of the data
electrodes and the selection electrodes, we agree with the
appellant’s argument that Kitamura does not disclose the
physical structure which appellant has recited in claim 1 as
supported by the disclosure of Figures 3A and 3B of the
specification.
Therefore we do not sustain the anticipation rejection of
claim 1 by Kitamura.
With respect to the other independent claim, claim 11, it
also contains the same two limitations discussed above.
Furthermore, Appellant’s attorney at the hearing advocated the
interpretation of the phrase “circuitry” to be the same as the
means-plus-function phrase, and also the same interpretation
of the recitation of the location of the data electrode and
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Application No. 08/321,324
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the selection electrode being on the same plane, as
interpreted in regard to claim 1. Therefore, for the same
rationale, we do not sustain the anticipation rejection of
claim 11 by Kitamura. Since claims 2 to 3, 7 to 10, 12, 13,
and 17 to 19 are dependent
on the independent claims 1 and 11, they also contain the same
limitations, and therefore, the anticipation rejection of
these claims by Kitamura is also not sustained.
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Application No. 08/321,324
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Rejection under 35 U.S.C. § 103
As a general proposition, in an appeal involving a
rejection under 35 U.S.C. § 103, an examiner is under a burden
to make out a prima facie case of obviousness. If that burden
is met, the burden of going forward then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness, is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1051-52, 189 USPQ
143, 147 (CCPA 1976).
The examiner rejects claims 4 to 6, and 14 to 16 under
this ground at pages 4 and 5 of the examiner’s answer. The
examiner has used Saito for the teaching of two selection
electrodes for each of said data electrodes recited in claim
4, for example. However, Saito does not cure the deficiency
of Kitamura noted
above. Therefore, we do not sustain the obviousness rejection
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Application No. 08/321,324
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of claims 4 to 6, and 14 to 16 over Kitamura and Saito.
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The decision of the examiner rejecting claims 1 to 3, 7
to 13, and 17 to 19 under 35 U.S.C. § 102, and claims 4 to 6,
and
14 to 16 under 35 U.S.C. § 103 is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
PSL:hh
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