Ex Parte Kuwahara

Board of Patent Appeals and Interferences

Jan 16, 2009

10466661 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SOICHI KUWAHARA
__________

Appeal 2008-5347
Application 10/466,661
Technology Center 2800
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Decided: January 16, 2009
____________

Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

INTRODUCTION
Appellant claims a liquid discharge apparatus and method (e.g.,
claims 1 and 11). The disclosed invention achieves a picture quality having
less defects so that stripes apt to take place when a portion of an image or
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Application 10/466,661

the entirety thereof is printed by one scanning operation are made
inconspicuous (Spec. 1).
Claims 1 and 18 are illustrative:
1. A liquid discharge apparatus including a liquid discharge head
having a liquid discharge unit and liquid discharge head controller for
controlling the liquid discharge head to discharge one or more droplets from
the liquid discharge unit onto a recording medium surface to form a pixel,
wherein the liquid discharge head includes a plurality of said liquid
discharge units arranged in a direction perpendicular to a movement
direction of the recording medium and where the recording medium is
relatively moved with respect to the liquid discharge head; and

wherein the liquid discharge head controller controls discharge timings
of the droplets in the movement direction of the recording medium, and both
the number of droplets and the relative discharge time for the droplets
forming a pixel are varied, thereby adjusting both a relative size and a
relative position of a resultant pixel such that the relative position can be
varied between a first pixel at a first size and a subsequent pixel of
substantially the same size centered at a different location.

18. A liquid discharge apparatus including a liquid discharge head
having a liquid discharge unit and liquid discharge head controller for
controlling the liquid discharge head to discharge a pre-determined
maximum number of droplets per pixel from the liquid discharge unit onto a
recording medium surface, wherein the liquid discharge head
includes a plurality of said liquid discharge units arranged in a direction
perpendicular to a movement direction of the recording medium and where
the recording medium is relatively moved with respect to the liquid
discharge head; and

wherein the number of dispersions per pixel can be varied in order to
vary the size of the pixel formed on the recording medium, and when the
number of dispersions determined necessary to form a pixel of a particular
size is determined to be less than the pre-determined maximum number of
droplets per pixel, the relative timing of the dispersions can be varied from
pixel to pixel in order to relatively offset the resulting pixel in a direction
parallel to the movement direction of the recording medium.
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Application 10/466,661

The Examiner relies on the following prior art references as evidence
of unpatentability:
Campbell 6,027,203 Feb. 22, 2000
Ando EP 1157844 A1 Nov. 28, 20011

Appellant appeals the following rejections:
1. Claims 1-9, 11-16, and 18-20 are rejected under 35 U.S.C. § 102(e) as
being unpatentable over Ando. 2
2. Claims 10 and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ando in view of Campbell.

With regard to rejection 1, Appellant argues claims 1-9 and 11-16 as one
group, and claims 18-20 as a second group (App Br. 11). Appellant’s
arguments regarding these claim groupings focus on the functional aspects
of the apparatus features (App. Br. 12 and 18). Pursuant to 37 C.F.R. §
41.37(c)(1)(vii), we select claims 1 and 18 as the representative claims from
each of the groups, respectively, on which to decide the appeal.
With regard to rejection 2, Appellant relies on the same arguments made
in traversing rejection 1, i.e., regarding the apparatus features of claim 1

1 Ando US 6,631,963 B2 Oct. 14, 2003 (filed Dec. 1, 2000) is the U.S.
counterpart of the European publication.
2 Appellant correctly points out that the European publication (EP 1157844
A1) does not qualify as prior art under § 102(e) (App. Br. 10). However,
Appellant further indicates that the § 102(e) rejection is proper over EP
1157844 A1’s US counterpart (i.e., US 6,631,963 to Ando) (App. Br. 10).
Appellant does not contest that Ando EP 1157844 and Ando US 6,631,963
B2 contain the same disclosure. In light of Appellant’s understanding, we
determine that the Examiner committed harmless error in citing Ando EP
1157844 in the § 102(e) rejection. As Appellant has done for clarity and
consistency with the record, we cite to Ando’s EP 1157844 disclosure in this
decision.
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(App. Br. 17-18). We have, however, separately considered these arguments
as they relate to limitations found in claims 10 and 17.

STATEMENT OF THE CASE
The Examiner finds Ando discloses all the features recited in claim 1,
including a liquid discharge head controller to control discharge timings of
the droplets in the movement direction of the recording medium (Ans. 4).
Appellant’s argument focuses on the functional limitations of the
apparatus features found in claims 1 and 18 (App. Br. 12, 18-19).
Specifically, Appellant argues with regard to claim 1 that Ando fails to teach
a controller which controls discharge timings of droplets in the movement
direction of the recording medium and both the number of droplets and the
relative discharge timing for the droplets forming a pixel are varied (App.
Br. 14-15). Similarly, Appellant argues with regard to claim 18 that Ando
fails to teach determining when a number of dispersions is less than a
predetermined maximum number of droplets per pixel and varying the
relative timing of the dispersions from pixel to pixel in order to relatively
offset the resulting pixel in a direction parallel to the movement direction of
the recording medium (App. Br. 19).
Appellant argues that “the heart of the claimed invention is the ability
to adjust the center of the adjacent pixels of the same size by changing the
discharge timing of the droplets (App. Br. 15). Appellant further argues that
Ando “teaches away” from the claimed invention because Ando does not
have the ability to alter the center position of adjacent pixels of substantially
the same size by modifying the timing of the dispersions (App Br. 15-16, 20-
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21). Appellant argues, with regard to claims 1 and 18, that Ando is
incapable of altering the center position of the pixel (App. Br. 16-17, 21-22).

ISSUE
Did Appellant show that the Examiner reversibly erred in finding that
Ando teaches a structure that is capable of controlling the relative discharge
timings (or relative timing of the dispersions of claim 18) and the number of
droplets forming a pixel? We answer this question in the negative.

PRINCIPLES OF LAW
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The question whether a
claim limitation is inherent in a prior art reference is a factual issue on which
evidence may be introduced. Id.
A patent applicant is free to recite features of an apparatus either
structurally or functionally, however, where the Patent and Trademark
Office has reason to believe that a functional limitation asserted to be critical
for establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on. Schreiber, 128 F.3d at 1478.
Where a prior art reference discloses all the structural features of a claimed
apparatus, the absence of disclosure in the prior art reference relating to a
functional limitation recited in the apparatus claim does not defeat a finding
of anticipation. Schreiber, 128 F.3d at 1477.
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The question whether a reference “teaches away” from the invention
is inapplicable to an anticipation analysis. Celeritas Tech. Ltd. v. Rockwell
Int’l Corp., 150 F.3d 1354, 1361(Fed. Cir. 1998) (The prior art was held to
anticipate the claims even though it taught away from the claimed invention.
“The fact that a modem with a single carrier data signal is shown to be less
than optimal does not vitiate the fact that it is disclosed.”).
During examination, claim terms are given their broadest reasonable
interpretation consistent with the Specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Patent and Trademark
Office applies to the claim terms the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s Specification. In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
A “whereby” or “wherein” clause may indicate that the structure or
elements previously enumerated will necessarily give the result which
follows, in which case no further structural limitations are implied. See
Texas Instruments, Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165,
1172 (Fed. Cir. 1993) (“A ‘whereby’ clause that merely states the result of
the limitations in the claim adds nothing to the patentability or substance of
the claim.”)
FACTUAL FINDINGS (FF)
1. The Specification does not define the claim 1 phrases “substantially
the same size” or “discharge timings”, or the claim 18 phrase “relative
timings.”
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2. The Specification describes that the head drive signal shifts ink
droplet discharge timing of the ink discharge unit of the line head 120
every one pixel in the print direction such that the impact position of
the dot is changed to connect dots of two pixels so that there can result
one large dot (Spec. 25).
3. The Specification describes that discharge timings (or relative
timings) includes the time (and thus location within the pixel) at
which an ink drop is dispensed during the 8 pulses making up a pixel
during Pulse Number Modulation (PNM) (Spec. 12, 26-27).
4. Ando discloses an inkjet printer and a method of driving the print
head in an ink jet printer for ejecting ink drops to record characters (¶
[0001]).
5. Ando discloses that the diameter of the ink drop may be modulated by
the number of ink drops (¶ [0012]).
6. Ando discloses using PNM to correct unevenness in the print density
(¶¶ [0082], [0087]).
7. Ando discloses that ink jet printer 100 determines the pulse number
for each nozzle on the basis of the correction data and controls the
quantity of ejection ink drips so as to carry out recording (¶¶ [0090],
[0091]).
8. Ando discloses that:
However, in carrying out PNM, if the pulse number is increased from
a reference time point without considering the recording direction
(opposite the paper feed direction) indicated by an arrow R in Fig.
22A, the center of the dot D1 with a large diameter is not recorded on
the predetermined lattice point G1 where it should be recorded, as
shown in Fig. 22B. That is, the dot D1 is shifted in the direction of the
arrow R in Fig. 22B. As a result, the dot D1 is recorded, overlapping
the next recorded dot D2.
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(¶ [0097]).
9. In other words, FF 8 states that the timing (i.e., the reference time
point and location) of the ink drop dispersion and the recording
direction are controlled to provide the proper relative position of one
dot to another dot.
10. Ando discloses to achieve accurate recording using PNM the ink jet
printer distributes ink drops in the paper feed direction from the lattice
point as the center (¶ [0099]).
11. Ando discloses that for a character formed with an even number of
pulses (e.g., 2, 4, 6, 8) the drops are distributed around the lattice
point (¶ [0100]; Fig. 23A).
12. Ando discloses that for a character formed with an odd number of
pulses (e.g., 1, 3, 5, 7) the drop is dispersed on the lattice point (¶
[0101]; Fig. 23B).
13. Ando discloses that by controlling the deposition around the lattice
point the ink jet printer 100 can minimize the deviation of the formed
dot from the lattice point and can prevent curving of a straight line
and unwanted overlapping of dots (¶ [0102]).

ANALYSIS
Appellant does not dispute that Ando discloses all the structural
features of the argued apparatus features. Rather, Appellant argues the
“wherein the liquid discharge head controller controls” feature (claim 1), and
“wherein the number of dispersions per pixel” feature (claim 18) of the
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claims (App. Br. 12-15, 18-21). These features are functional.3 Where the
prior art discloses all the structural features of the claimed apparatus, the
absence of disclosure in the prior art relating to a functional limitation does
not defeat a finding of anticipation. Schreiber, 128 F.3d at 1477. In other
words, prior art that discloses all the claimed structural features must merely
be capable of performing the functional recitation.
The Examiner finds, and Appellant does not dispute, that Ando
structurally disclosed all the features of the disputed claims (Ans. 3-6, 11-
12). Accordingly, the burden properly shifted to Appellant to prove that the
prior art is incapable of performing the disputed functional characteristics.
Schreiber, 128 F.3d at 1477.
Appellant has not submitted any evidence or persuasive argument that
Ando is not capable of performing the disputed functions. Appellant argues,
with regard to claims 1 and 18, that Ando is incapable of altering the center
position of the pixel (App. Br. 16-17, 21-22). However, we agree with the
Examiner that claims 1 and 18 do not require that the center position of the
pixel be altered (Ans. 14-15). Claim 1 merely requires that the “relative
position can be varied between a first pixel at a first size and a subsequent
pixel of substantially the same size centered at a different location” (claim
1). Similarly, claim 18 merely requires that the “relative timing of the
dispersions can be varied from pixel to pixel in order to relatively offset the
resulting pixel in a direction parallel to the movement direction of the

3 The disputed features are included in “wherein” clauses which merely state
the result of control of the liquid discharge apparatus by the controller. The
Federal Circuit has held that “whereby” or “wherein” clauses that merely
state the result of the limitations of a claim add nothing to the patentability
or substance of a claim. Texas Instruments, 988 F.2d at 1172.
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recording medium” (claim 18). Accordingly, Appellant argues features that
are not in the claim. Appellant has not carried the burden of showing that
Ando is incapable of performing the functions recited in claims 1 and 18.
Further regarding Appellant’s argument that Ando fails to teach the
functional features of controlling the “discharge timings” (claim 1) (or
“relative timings” in claim 18) and the pixels are “substantially the same
size” (claim 1), we note that Appellant does not define any of these claim
phrases in the Specification (FF 1). However, the Specification describes
that the discharge timing of the drops is controlled to shift the deposition
location of the ink drops (FF 2). Accordingly, the broadest reasonable
construction of “discharge timings” (or “relative timings”) is the time (and
thus location) at which an ink drop is dispensed during the 8 pulses making
up a pixel during Pulse Number Modulation (PNM) (FF 3).
With regard to the claim phrase “substantially the same size”,
Appellant does not define or describe what is meant by the claim phrase.
Accordingly, giving the phrase its plain meaning, we construe it as including
two dots formed from substantially the same number of pulses. For
example, a 3 pulse dot and a 4 pulse dot would be considered “substantially
the same size.”
Based on this claim construction, we agree with the Examiner that
Ando anticipates the argued functional features of claims 1 and 18. Ando
describes using PNM to control the number, and thus size of the pixel, and
that the position of the ink dots is controlled such that the timing of the pulse
is manipulated to center the dot on or around the lattice point depending on
the number of drops (FF 8-12). In other words, Ando discloses that the
timing (i.e., the reference time point and location) of the ink drop dispersion
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and the recording direction are controlled to provide the proper relative
position of one dot to another dot (FF 9).
For example, Ando discloses that a PNM of 4 would be deposited
around a lattice point, and if the subsequent pixel is a PNM of 3 (i.e.,
substantially the same size) the deposition timing (and thus location) of the
ink drops would be controlled relative to the recording direction such that
the PNM 3 pixel is deposited on the lattice center. By so doing the
discharge timings of the PNM 4 and PNM 3 pixels are controlled so that
they are “substantially the same size centered at a different location” such
that the centers are aligned (i.e., avoiding curving of a straight line) (FF 13).
Moreover, Ando’s control of the ink drop deposition (i.e., relative timings of
discharge) around a lattice point based on the recording direction relatively
offsets the resulting pixel in a direction parallel to the movement direction of
the recording medium as recited in claim 18.
We further note that Appellant’s argument that Ando “teaches away
from any ability to alter the relative center position of the adjacent pixels of
same size by modifying the time of the dispersions” is inapplicable to an
anticipation analysis. Celeritas, 150 F.3d at 1361.
Accordingly, we conclude that Appellant has not shown reversible
error in the Examiner’s finding that Ando teaches a structure that is capable
of controlling the relative discharge timings (claim 1, or relative timing of
the dispersions of claim 18) and the number of droplets forming a pixel. In
the absence of additional arguments directed to the limitations found in
claims 10 and 17, we likewise find that Appellants have not identified
reversible error in the Examiner’s obviousness rejection.
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DECISION
We affirm the § 102(e) rejection of claims 1-9, 11-16, and 18-20 over
Ando.
We affirm the § 103 rejection of claims 10 and 17 over Ando in view
of Campbell.

ORDER
The Examiner’s decision 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

PL Initial:
sld

ROBERT J. DEPKE
LEWIS T. STEADMAN
ROCKEY, DEPKE & LYONS, LLC
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