Ex Parte Kanamori

Board of Patent Appeals and Interferences

Mar 7, 2003

09110128 (B.P.A.I. Mar. 7, 2003)

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for publication and is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YOSHIO KANAMORI
___________
Appeal No. 2002-0146
Application No. 09/110,128
__________
HEARD:
January 22, 2003
__________
Before JERRY SMITH, RUGGIERO, and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-7, which
constituted all the claims in the application. An amendment
after final rejection was filed on March 30, 2001 and was entered
by the examiner. This amendment added claims 8 and 9.
Therefore, this appeal is directed to the rejection of claims 1-
9.
The disclosed invention pertains to a master making
device, including a thermal head including a plurality of heating
Appeal No. 2002-0146
Application No. 09/110,128
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elements arranged in an array in a main scanning direction, and a
platen roller forming a nip between the platen roller and the
thermal head and adapted for pressing a stencil.
Representative claim 1 is reproduced as follows:
1. A master making device, comprising:
a thermal head including a plurality of heating elements
arranged in an array in a main scanning direction; and
a platen roller forming a nip between said platen roller and
said thermal head and adapted for pressing a stencil, said
platen roller being rotatable and adapted for moving a
stencil in a subscanning direction perpendicular to the main
scanning direction;
wherein a position of said array in the subscanning
direction is downstream by 0.2 mm to 0.8 mm from a center of
said platen roller in the subscanning direction and wherein
said array is located entirely in a perpendicular projection
of an area formed by said nip to thereby reduce a length of
a perforated portion of the stencil to be moved in said nip.

The examiner relies on the following references:
Iwakawa et al. (Iwakawa) JP 3-175056 July 30, 1991
Kobayashi JP 7-156520 June 20, 1995
The admitted prior art described in appellant’s specification.
Claims 1-9 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers the admitted prior
art in view of Iwakawa with respect to claims 1, 4 and 7-9, and
the examiner adds Kobayashi with respect to claims 2, 3, 5 and 6.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
Appeal No. 2002-0146
Application No. 09/110,128
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OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in
the art the obviousness of the invention as set forth in claims
1-7. We reach the opposite conclusion with respect to claims 8
and 9. Accordingly, we affirm-in-part.
Appellant has indicated that for purposes of this appeal
the claims will stand or fall together in the following three
groups: Group I has claims 1-3, Group II has claims 4-7, and
Group III has claims 8 and 9 [brief, page 4]. Consistent with
this indication appellant has made no separate arguments with
respect to any of the claims within each group. Accordingly, all
Appeal No. 2002-0146
Application No. 09/110,128
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the claims within each group will stand or fall together. Note
In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir.
1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed.
Cir. 1983).
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
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These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden 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 Id.; 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, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
We consider first the rejection of claims 1, 4 and 7-9
based on the admitted prior art and Iwakawa. The examiner has
indicated how he finds the invention of these claims to be
obvious over the admitted prior art and Iwakawa [answer, page 3].
With respect to claim 1, appellant argues that the deviation of
the center line of the thermal head from the axis of the platen
roller in the claimed range solves a different problem than the
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deviation disclosed by Iwakawa. Thus, appellant argues that the
claimed invention is patentable over the admitted prior art and
Iwakawa because the claimed invention solves a completely
different problem than the device of the applied prior art.
Appellant also argues that he has shown that the claimed range is
critical by showing that the claimed range achieves unexpected
results relative to the range disclosed in the applied prior art
[brief, pages 5-9]. The examiner responds that it is enough that
Iwakawa teaches a range which overlaps or touches the claimed
range. The examiner also responds that the criticality argument
is not persuasive because the applied prior art discloses a
deviation of the array within or touching the claimed range
[answer, pages 4-5].
We will sustain the examiner’s rejection of claim 1.
Appellant’s argument that the deviation of the heating array in
Iwakawa is made for a different reason than in the claimed
invention is not persuasive. Regardless of the reason for moving
the heating array, the invention of claim 1 includes within its
scope structures which are clearly taught by Iwakawa. The test
for obviousness is whether the references would have suggested
doing what appellants have done. In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). Thus, the absence of express
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suggestion or motivation in the applied prior art is not alone
determinative. The prior art need not suggest solving the same
problem set forth by appellants. In re Dillon, 919 F.2d 688,
692-693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (in banc)
(overruling in part In re Wright, 848 F.2d 1216, 1220, 6 USPQ2d
1959, 1962 (Fed. Cir. 1988)), cert. denied, 500 U.S. 904 (1991).
Under the facts of this case, the prior art would have suggested
moving the heating array downstream from the center of the platen
even though the prior art moves the heating array in order to
solve a different problem than the problem disclosed by
appellant.
Thus, Iwakawa discloses moving the heating array
downstream by 0.1-0.3 mm whereas claim 1 recites moving the
heating array downstream by 0.2-0.8 mm. The range disclosed in
Iwakawa, therefore, overlaps with the range of claim 1. As noted
by the examiner, the overlapping of ranges is sufficient to
establish a prima facie case of obviousness. Appellant’s
application presents a table in Figure 9 which shows that the
range from 0.2-0.8 mm produces no unacceptable results with
respect to the parameters of image dimension reproducibility,
creasing, and local image omission. Appellant argues that this
table is evidence of the criticality of the claimed range and
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that this claimed range achieves unexpected results relative to
the prior art range. With respect to the criticality argument,
the examiner has essentially ignored this data because the
examiner finds that the prior art discloses a range within or
touching the claimed range [answer, pages 4-5].

It was improper for the examiner to fail to consider the
data submitted by appellant and appellant’s arguments related to
criticality and unexpected results. The overlapping ranges of
the prior art and the claimed invention only establish a prima
facie case of obviousness which can be overcome by appellant with
evidence showing non-obviousness. Thus, appellant’s evidence
must be considered to determine if it overcomes the prima facie
case of obviousness.
Despite the examiner’s failure to consider the data
submitted by appellant, we find that the evidence filed as part
of appellant’s specification does not establish the criticality
of the claimed range nor does the data demonstrate that the
results obtained over the claimed range are unexpected. The
table of data merely indicates whether or not the movement of the
heating array downstream from the center of the platen roller for
certain distances produced desired, acceptable or unacceptable
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results. There is no discussion of what criteria were used to
determine whether a given result was acceptable or not. There is
also no comparison of the submitted data with equivalent tests
using the prior art devices. The range described in Iwakawa may
be limited to the desirable range rather than an acceptable range
as used by appellant. Without a comparison of the claimed device
with the prior art device and without a discussion of what type
of result is deemed acceptable, there can be no determination
made as to whether or not the data submitted in appellant’s
Figure 9 constitutes unexpected results for the claimed range.
Therefore, appellant’s arguments fail to overcome the examiner’s
prima facie case that the invention of claim 1 would have been
obvious to the artisan over the applied prior art. Since claims
2 and 3 are grouped with claim 1, we sustain the examiner’s
rejection of claims 1-3.
With respect to claims 4-7, appellant argues that
Kobayashi does not overcome the deficiencies of Iwakawa discussed
above. Thus, appellant argues that these claims are patentable
for the same reasons discussed above with respect to claim 1
[brief, pages 9-10].
Since appellant essentially relies on the patentability
of claim 1 for these claims, and since we have determined that
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claim 1 is not patentable over the applied prior art for reasons
discussed above, we also sustain the rejection of claims 4-7 for
the reasons discussed above with respect to claim 1.
With respect to claims 8 and 9, appellant again notes
that Kobayashi does not overcome the deficiencies of Iwakawa
discussed above, however, Kobayashi was not applied in the
rejection of claims 8 and 9. Appellant also argues that the
applied prior art does not disclose or suggest moving the array
downstream from the center of the platen roller by a range
greater than 0.3 mm to 0.8 mm as claimed [brief, page 10].
The examiner never specifically addresses this
limitation. In the rejection the examiner simply states that
ranges that touch can render the claimed invention obvious
[answer, page 3]. This statement is not understood because the
claimed range of greater than 0.3 mm to 0.8 mm does not touch the
range of Iwakawa which is 0.1 mm to 0.3 mm. In the answer the
examiner simply states that the prior art need only disclose a
range overlapping or touching the claimed range [id., page 4].
As just discussed, however, the claimed range does not overlap or
touch the range disclosed in Iwakawa. Finally, the examiner
states that the artisan would have a reasonable degree of
expectation that numbers touching or only very slightly outside
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of the disclosed range would provide beneficial results [id.,
page 5].
We are of the view that the examiner’s rejection of
claims 8 and 9 fails to establish a prima facie case of
obviousness. The examiner has failed to provide any support for
his position that the non-overlapping and non-touching range of
claims 8 and 9 would have been obvious over the range of Iwakawa.
As argued by appellant, the range in Iwakawa is determined to
solve a completely different problem than the range of the
claimed invention. The examiner has provided no evidence or
persuasive arguments as to why it would have been obvious to the
artisan to move the array in Iwakawa outside the disclosed range.
There is no reason to expect a beneficial result outside the
range disclosed by Iwakawa. Since the examiner has not properly
considered the range as claimed in claims 8 and 9, we do not
sustain the examiner’s rejection of these claims.
In summary, we have sustained the examiner’s rejection of
claims 1-7, but we have not sustained the rejection of claims 8
and 9. Therefore, the decision of the examiner rejecting claims
1-9 is affirmed-in-part.

Appeal No. 2002-0146
Application No. 09/110,128
12
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).

AFFIRMED-IN-PART
Jerry Smith )
Administrative Patent Judge)
) BOARD OF PATENT
)
Joseph F. Ruggiero )
Administrative Patent Judge) APPEALS AND
)
)
Lance Leonard Barry ) INTERFERENCES
Administrative Patent Judge)
JS/eld
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