Ex Parte Kim

Board of Patent Appeals and Interferences

Aug 22, 2002

08998781 (B.P.A.I. Aug. 22, 2002)

1 Application for patent filed December 29, 1997, entitled
"Method for Adjusting an Optimum Printing Speed," which claims
the foreign filing priority benefit under 35 U.S.C. § 119 of
Republic of Korea Application 74197/1996, filed
December 27, 1996.
- 1 -
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and is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte SUNG-JAE KIM

Appeal No. 2001-0865
Application 08/998,7811

HEARD: August 15, 2002

Before BARRETT, LEVY, and BLANKENSHIP, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
final rejection of claims 1-20.
We affirm-in-part.
Appeal No. 2001-0865
Application 08/998,781
- 2 -
BACKGROUND
The invention relates to a method for achieving an optimum
printing speed by performing a print environment recognition
operation (e.g., sensing of temperature) at a print recognition
time determined in accordance with the transmission time it takes
to transmit data to the printer.
Claim 1 is reproduced below.
1. A method for printing at an optimum printing speed,
comprising the steps of:
converting image data from a host computer into print
data having a predetermined size;
calculating a transmission time required for
transmitting the print data to a printer from said host
computer according to a predetermined formula comprising
said predetermined size of the print data divided by a
predetermined transmission speed of signals transmitted from
said host computer to said printer;
determining an optimum printing speed according to said
transmission time;
performing a print environment recognition operation at
a print recognition time, said print recognition time being
determined in accordance with said transmission time, said
print environment recognition operation being performed
while the print data are being received by said printer,
said print environment recognition operation sensing
information to be used to prepare said printer to record the
print data on a recordable medium; and
recording the print data onto the recordable medium at
the optimum printing speed.
The examiner relies on the following references:
Saruwatari 5,170,210 December 8, 1992
Zimmerman et al. (Zimmerman) 5,490,237 February 6, 1996
Appeal No. 2001-0865
Application 08/998,781
- 3 -
Wakabayashi et al. (Wakabayashi) 5,537,517 July 16, 1996
Claims 1-5, 7-17, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zimmerman and Saruwatari.
Claims 6, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Zimmerman and Saruwatari as applied in
the rejection of claim 5, further in view of Wakabayashi.
We refer to the final rejection (Paper No. 11) and the
examiner's answer (Paper No. 19) (pages referred to as "EA__")
for a statement of the examiner's rejection, and to the brief
(Paper No. 18) (pages referred to as "Br__") and reply brief
(Paper No. 21) (pages referred to as "RBr__") for a statement of
appellant's arguments thereagainst.
OPINION
Grouping of claims
It is argued that none of the claims stand or fall together.
However, only claims which are separately argued are entitled to
be treated separately. See 37 CFR § 1.192(c)(8)(iii) (1998)
(argument section of brief must specify the errors in the
rejection and the specific limitations in the claims which are
not described in the prior art).
Appellant argues (Br8-11) that Zimmerman fails to teach or
suggest at least the following three features set forth in
independent claims 1, 3, 5, 7, and 13 (the limitations of claim 1
are quoted as representative): (1) "performing a print
Appeal No. 2001-0865
Application 08/998,781
- 4 -
environment recognition operation at a print recognition time";
(2) "said print recognition time being determined in accordance
with said transmission time"; and (3) "said print environment
recognition operation being performed while the print data are
being received by said printer." No other limitations of the
independent claims are argued. Arguments not raised are waived.
Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391,
21 USPQ2d 1281, 1285 (Fed. Cir. 1991) ("It is not the function of
this court to examine the claims in greater detail than argued by
an appellant, looking for nonobvious distinctions over the prior
art."); In re Wiseman, 596 F.2d 1019, 1022, 201 USPQ 658, 661
(CCPA 1979) (arguments must first be presented to the Board
before they can be argued on appeal). Therefore, the independent
claims are treated as standing or falling together with claim 1
based on these three argued limitations (although we mention a
slight difference in wording in claim 13).
Appellant separately mentions claims 2, 6, 9 and, thus,
these claims will be grouped separately.
Thus, we find the following groups: (1) claims 1, 3-5, 7, 8,
13, 16, 17, and 20 stand or fall with claim 1; (2) claims 2, 14,
and 15 stand or fall with claim 2; (3) claims 6, 18, and 19 stand
or fall with claim 6; and (4) claims 9-12 stand or fall with
claim 9.
Appeal No. 2001-0865
Application 08/998,781
- 5 -
Claims 1, 3-5, 7, 8, 13, 16, 17, and 20
Appellant argues (Br8-11) that Zimmerman fails to teach or
suggest at least the following three features in independent
claims 1, 3, 5, 7, and 13 (the limitations of claim 1 are quoted
as representative): (1) "performing a print environment
recognition operation at a print recognition time"; (2) "said
print recognition time being determined in accordance with said
transmission time"; and (3) "said print environment recognition
operation being performed while the print data are being received
by said printer."
The examiner admits that Zimmerman does not teach these
limitations (EA4). We agree. Zimmerman discloses a print engine
start operation, but does not disclose sensing of any
environmental conditions as part of the printer operation.
Appellant finds that Saruwatari discloses detecting
environmental conditions around the photosensitive drum of an
image formation apparatus, but argues that it does not teach or
suggest that detection of the environmental conditions is to be
performed at a print recognition time, wherein the print
recognition time is determined in accordance with a transmission
time, as recited in claims 1, 3, 5, 7, and 13 (Br11-12); i.e., it
does not teach differences (1) and (2). It is argued that
Saruwatari never describes that a print environment recognition
operation is performed while print data are being received by a
Appeal No. 2001-0865
Application 08/998,781
- 6 -
printer (claims 1, 3, 5, and 7) and it never describes that a
print environment recognition operation commences before the
expiry of the transmission time, wherein the transmission time is
the time required to transmit data to a printer (claim 13)
(Br12); i.e., it does not teach difference (3).
The examiner finds that Saruwatari teaches (abstract;
col. 1, lines 60-65) detecting environmental conditions such as
temperature, humidity, and atmospheric pressure at the time of
forming an image, which the examiner interprets to be the print
recognition time (EA4). Thus, the examiner states, "Saruwatari
has at least disclosed the claim limitation 'a detection of the
environmental conditions is to be performed at a print
recognition time' and the print recognition time is the time that
the image forming apparatus forms an image" (EA9). Presumably,
the examiner refers to the limitation "performing a print
environment recognition operation at a print recognition time."
The examiner states that in order to form an image in
Zimmerman, image data would have to be transmitted from the host
to the printer and, therefore, the image forming time would have
to depend on (be determined by) the transmission time, and the
print environment recognition operation would be performed during
that transmission time (EA4-5; EA9). It is further stated that
the "optimum" time for a printer to print a page is the time
(transmission time) that it takes to transmit the print data for
Appeal No. 2001-0865
Application 08/998,781
- 7 -
a page; e.g., it is not possible to print a page in 12 seconds
while it takes 13 seconds to transmit the page. Therefore, the
examiner concludes (EA9) that the combination of Zimmerman and
Saruwatari discloses "a print environment recognition operation
at a print recognition time, said print recognition time being
determined in accordance with said transmission time." The
examiner further finds (EA9) that the print recognition operation
would be performed during the transmission time and, thus, the
combination of Zimmerman and Saruwatari disclose the limitation
of "said print environment recognition operation being performed
while the print data are being received by said printer."
Saruwatari discloses, with reference to figure 4, measuring
temperature, humidity, and atmospheric pressure conditions;
adjusting the amount of charge added to the drum by the
electrification charger in response to the temperature and
atmospheric pressure conditions; adjusting the amount of toner
supplied to the developing unit (the toner density) in response
to the humidity condition; and adjusting both the amount of
charge and the toner density in response to detected image
densities. We find that the temperature, humidity, and
atmospheric pressure (three environmental conditions) are
detected at least from the time the print engine is started,
while the image density (another environmental condition) must,
of course, be measured sometime after printed has begun and the
Appeal No. 2001-0865
Application 08/998,781
- 8 -
image has been formed. The examiner considers the time of
forming an image in Saruwatari to be a "print recognition time";
see EA4. However, since "print recognition time" has a specific
meaning in the claims and is "determined in accordance with said
transmission time" which time is not discussed in Saruwatari, it
is more accurate to say that Saruwatari discloses "performing a
print environment recognition operation" at a print engine start
time because it checks environmental conditions when the print
engine is started. The fact that Saruwatari also teaches
performing an additional print environment recognition operation
(sensing the image density) after the print engine is started is
not precluded by the claim language.
Saruwatari discloses that control of the image forming
apparatus based on the detection of environmental conditions
allows formation of a high quality image even if environmental
conditions change over time (abstract; col. 4, lines 32-41). We
find that this constitutes a suggestion to modify the printer of
Zimmerman to use the print environment recognition operations of
Saruwatari, at the print engine start time (the "print
recognition time") for the purpose of maintaining a high quality
image in the printer. Thus, we are not persuaded by appellant's
arguments (e.g. Br16) that there is no motivation for the
proposed combination. Nor do we agree that the combination is
Appeal No. 2001-0865
Application 08/998,781
- 9 -
based on an obvious-to-try argument (e.g., Br28-29) because there
is a certainty that the combination will work.
The print engine start time in Zimmerman, which is the time
of "performing a print environment recognition operation at a
print recognition time" as modified by Saruwatari, is the time
when the I/O buffer reaches the buffer threshold. This "print
recognition time" is "determined in accordance with said
transmission time." That is, the system calculates the
transmission time, which is how long it takes to send the data
for a certain transmission speed (e.g., 8.0 million pixels/page
(1.0 million bytes/page) and a data transfer rate of 50
Kbytes/sec would take 20 seconds), and determines an appropriate
buffer threshold "in accordance with" this time (e.g., 400,000
bytes to store 40% of the page) (see col. 5, lines 26-39, and
note 50 Kbyte data rate at line 39). The buffer threshold is
"determined in accordance with said transmission time" because
the size of the buffer threshold is dependent on the transmission
time; longer transmission times (due to slower transmission data
rates) require larger buffer thresholds and vice versa. Thus, we
conclude that the combination of Zimmerman and Saruwatari would
have suggested "performing a print environment recognition
operation at a print recognition time, said print recognition
time being determined in accordance with said transmission time."
Appeal No. 2001-0865
Application 08/998,781
- 10 -
The print engine starts when the buffer threshold is
reached, at the "print recognition time," and this time is always
less than the transmission time. Thus, the "print environment
recognition operation," which is performed at the same time as
the print engine start in the combination of Zimmerman and
Saruwatari, is performed while the print data is being received
by the printer and before the expiry of the transmission time.
Accordingly, we conclude that the combination of Zimmerman and
Saruwatari teaches "said print environment recognition operation
being performed while the print data are being received by said
printer" (claims 1, 3, 5, and 7) and "said print environment
recognition operation being commenced before the expiry of [the
transmission time]" (claim 13).
For the reasons stated above, we conclude that the
combination of Zimmerman and Saruwatari are sufficient to
establish a prima facie case of obviousness. Appellant's
arguments as to the individual teachings of the references
(Br8-12) are merely an attack on the references individually
rather than the combination and are not persuasive. See
In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed.
Cir. 1986) (one cannot show non-obviousness by attacking the
references individually where the rejection is based on a
combination of references). Appellant's arguments (e.g.,
Br13-14) that there is no motivation for the combination and that
Appeal No. 2001-0865
Application 08/998,781
- 11 -
the combination fails to suggest all the limitations of the
claims have been considered en route to our decision as discussed
above and are not persuasive.
Appellant argues that the examiner never made a finding on
the level of ordinary skill in the art (RBr3-5).
We find that the references are representative of the level
of ordinary skill in the art. See In re Oelrich, 579 F.2d 86,
91, 198 USPQ 210, 214 (CCPA 1978) ("the PTO usually must evaluate
both the scope and content of the prior art and the level of
ordinary skill solely on the cold words of the literature");
In re GPAC Inc., 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed.
Cir. 1995) (the Board did not err in adopting the approach that
the level of skill in the art was best determined by the
references of record); Okajima v. Bourdeau, 261 F.3d 1350, 1355,
59 USPQ2d 1795, 1797 (Fed. Cir. 2001) ("[T]he absence of specific
findings on the level of skill in the art does not give rise to
reversible error 'where the prior art itself reflects an
appropriate level and a need for testimony is not shown.'").
Appellant has not said what he considers to be the level of skill
in the art, how such would be determined to his satisfaction, or
how a different level of skill would affect the outcome.
For the reasons stated above, we conclude that appellant has
failed to show error in the prima facie case of obviousness. The
Appeal No. 2001-0865
Application 08/998,781
- 12 -
rejection of claims 1, 3-5, 7, 8, 13, 16, 17, and 20 is
sustained.
Claims 2, 14, and 15
Appellant argues that the examiner erred in the finding that
claim 2 is taught by Zimmerman (Br12-13; RBr19-22). Although
this argument is right at the edge of failing to address why the
limitation in claim 2 is patentable, we address it.
We find that the combination of Zimmerman and Saruwatari do
not teach a "printer preparation period, said printer preparation
period corresponding to a period of time for preparing said
printer to form an image on the recordable medium." The time
that elapses until the buffer threshold is reached is not used to
prepare the printer for recording. Accordingly, the examiner has
failed to establish a prima facie case of obviousness as to
claim 2. The rejection of claims 2, 14, and 15 is reversed.
Claims 9-12
The examiner finds that Zimmerman does not mention the
limitations of claim 9, but concludes that it would "have been
obvious that the preparation time is to be transmitted first
before data is transmitted because the printer has to know the
time first before it can start the print engine" (EA6).
Appellant argues that the examiner erred as to the rejection
of claim 9 because the printer does not need to know the
Appeal No. 2001-0865
Application 08/998,781
- 13 -
transmission time before it can start the print engine (Br31;
RBr22-25).
Zimmerman does not transmit the transmission time, but only
uses the transmission time to set the buffer threshold.
Zimmerman starts the print engine at a time when the buffer
threshold is reached (the "print recognition time") and does not
need to know the transmission time. Thus, we conclude that the
examiner has failed to establish a prima facie case of
obviousness as to claim 9. The rejection of claims 9-12 is
reversed.
Claims 6, 18, and 19
The examiner finds that the combination of Zimmerman and
Saruwatari do not teach use of a counter to track data of a
predetermined size but, because Zimmerman is a page printer, he
must have a counting device to track a page of data (EA7). The
examiner finds that Wakabayashi teaches use of a counter to count
the amount of data transmitted and concludes that it would have
been obvious to use a counter to track a page of data "because a
counter is an efficient way of counting the amount of data and
efficiency is desirable in Zimmerman's print system" (EA7).
Appellant argues that the examiner erred as to the rejection
of claim 6 because the fact that a counter is known per se is not
evidence of obviousness (Br29-30; RBr25-27).
Appeal No. 2001-0865
Application 08/998,781
- 14 -
Zimmerman does not need a counter to determine when to print
the print data; Zimmerman prints when the buffer is filled to the
buffer threshold. Thus, we find no motivation to add a print
transmittal routine, which functions as claimed, to Zimmerman.
We conclude that the examiner has failed to establish a prima
facie case of obviousness as to claim 6. The rejection of
claims 6, 18, and 19 is reversed.
Argument that final rejection was premature
Appellant argues that the final rejection is premature and
should be withdrawn (Br17-25). This is a procedural issue that
is not within the Board's jurisdiction, which is limited to those
matters involving the rejection of claims. In re Hengehold,
440 F.2d 1395, 1404, 169 USPQ 473, 480 (CCPA 1971). Such matters
are reviewable by petition to the Commissioner.
Appeal No. 2001-0865
Application 08/998,781
- 15 -
CONCLUSION
The rejection of claims 1, 3-5, 7, 8, 13, 16, 17, and 20 is
sustained.
The rejections of claims 2, 6, 9-12, 14, 15, 18, and 19 are
reversed.
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
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2001-0865
Application 08/998,781
- 16 -
ROBERT E. BUSHNELL
1522 K STREET, N.W.
SUITE 300
WASHINGTON, DC 20005-1202