Ex Parte Martin et al

Patent Trial and Appeal Board

Sep 21, 2016

13164267 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/164,267 06/20/2011
22879 7590 09/23/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Scott Martin
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
82663161 1518
EXAMINER
VALENCIA, ALEJANDRO
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
09/23/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT MAR TIN, LYNN A. COLLIE,
and ERIC BERNER STROM
Appeal2015-003157
Application 13/164,267
Technology Center 2800
Before: MARK NAGUMO, MONTE T. SQUIRE, and A VEL YN M.
ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 3-7, 27, 29-33, and 49-51. We have jurisdiction
under 35 U.S.C. § 6(b ).
1 In our Decision below, we refer to the Specification mailed June 20, 2011
(Spec.), the Final Office Action appealed from, mailed July 11, 2014 (Final
Act.), the Appeal Brief filed October 9, 2014 (Appeal Br.), the Examiner's
Answer mailed November 19, 2014 (Ans.), and the Reply Brief filed
January 15, 2015 (Reply Br.).
2 Appellants identify the real party in interest as Hewlett-Packard
Development Company, L.P., the assignee of the instant application. Appeal
Br. 2.
Appeal2015-003157
Application 13/164,267
We REVERSE.
STATEMENT OF CASE
The claims are directed to low-profile service stations for use with
printers. Spec. i-f23. The Specification explains that the "pump drive [is]
positioned such that at least one of the shuttle drive and the pump drive does
not extend between a first and a second side of the shuttle" nor does the
shuttle drive and pump drive "span an area underneath a cap sled." Id. i-f24.
As a result, the number of components is reduced, the height of the printer is
reduced, and manufacturing costs are lowered. Id. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A service station for use with a printer comprising:
a shuttle to support a cap sled, the shuttle having a shuttle
drive positioned on a first side of the shuttle, the shuttle drive
including a track; and
a pump drive positioned adjacent the track and the first
side of the shuttle such that the shuttle drive and the pump drive
do not extend between the first side of the shuttle and a second
side of the shuttle opposite the first side, the shuttle drive to be
coupled to a printer drive to move the shuttle between a first
position and a second position.
Claims Appendix at Appeal Br. 41.
REJECTIONS
The Examiner maintains the following rejections:
A. Claim 51 stands rejected under 35 U.S.C. §112 second
paragraph as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
inventors regard as the invention. Final Act. 2.
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Application 13/164,267
B. Claims 1, 3, 27, 29, and 49-51 stand rejected under 35
U.S.C. §102(b) as being unpatentable over Balcan3 or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over
Balcan in view of Uchida.4 Id. at 3.
C. Claims 4--7 and 30-33 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Balcan in view of
Uchida and further in view ofUchikata. 5 Id. at 7.
Appellants seek our review of Rejections A---C. Because we reverse
the rejections by the Examiner, we address only independent claims 1 and 27
below-as the error in the independent claims is not cured by the Examiner
in addressing the dependent claims-as well as the indefiniteness rejection
of dependent claim 51.
OPINION
Claims 1 and 2 7
The Examiner rejects claims 1 and 27, as well as their dependent
claims, as anticipated by Balcan, or alternatively, rendered obvious by
Balcan in view of Uchida. Final Act. 3.
Anticipation
The Examiner finds that Balcan teaches each limitation of claims 1
and 27. Final Act. 3--4. Specifically, and relevant to Appellants' arguments,
3 Balcan et al., US 2009/0174748 Al, published July 9, 2009 (hereinafter
"Balcan").
4 Haruo Uchida, US 2005/0219309 Al, published October 6, 2005
(hereinafter "Uchida").
5 Uchikata et al., US 2002/0015076 Al, published February 7, 2002
(hereinafter "U chikata").
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Application 13/164,267
the Examiner finds that the shuttle drive of Balcan is positioned on a first
side of the shuttle and that
a pump drive (fig. 14, items 344, 345, 346) positioned adjacent
the track and the first side of the shuttle (fig. 15, note that the
pump drive 346/344 is located "adjacent" the track, which would
be on the side of the shuttle where item 315 is located) such that
the shuttle drive and the pump drive do not extend between the
first side of the shuttle and a second side of the shuttle opposite
the first side (figs. 8, 15, note that neither drive "extends
between" the two sides in that neither spans from one side to the
other), the shuttle drive to be coupled to a printer (note that the
shuttle is "coupled to a printer") to move the shuttle between a
first position and a second position (compare figs. 7, 8).
Id. The Examiner defines "adjacent" as "not distant" and "[b ]ecause the
pump drive train and the track/first side are 'not distant' from each other, the
two are indeed adjacent." Id. at 4. The Examiner also determines that pump
drive and shuttle drive mean "the gear train transmitting a drive force to the
[pump and shuttle respectively,]" and the Examiner specifically excludes a
drive shaft from the definition of drive. Final Act. 4--5 and 9-10.
Appellants argue that the Examiner reversibly erred for two reasons.
First, Appellants contend that because Balcan does not teach "[a] shuttle
having a shuttle drive positioned on a first side of the shuttle, the shuttle
drive including a track" and "a pump drive positioned adjacent the track and
the first side of the shuttle"-i.e., the shuttle drive and pump drive are not
both on the same side of the shuttle-Balcan cannot anticipate claims 1 and
27 as an element is missing. Appeal Br. 19; Reply Br. 5. Appellants argue
further that the Examiner's definition of "adjacent" is too broad and is
inconsistent with the claim language. Appeal Br. 20-21.
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Application 13/164,267
In response, the Examiner explains that "the claim requires that the
two be 'adjacent,' not 'on the same side' of the shuttle" and that "adjacency
is relative, but being located on one side of something is not." Ans. 4.
According to the Examiner, "Appellant's argument is not based on what is
claimed." Id.
During prosecution, an application's claims are given their broadest
reasonable scope consistent with the specification. In re Am. A cad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been interpreted
by one of ordinary skill in the art at the time of the invention. Id.
During patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow. When the
applicant states the meaning that the claim terms are intended to
have, the claims are examined with that meaning, in order to
achieve a complete exploration of the applicant's invention and
its relation to the prior art.
In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989)
In this case, Appellants have shown reversible error. Specifically, we
conclude that the Examiner's determination that something "adjacent" can
be something "opposite" is not reasonable in light of the claim language and
as understood by one of ordinary skill in the art in light the Specification.
The claim language requires that the pump drive be positioned adjacent the
track and the first side of the shuttle. Claims Appendix at Appeal Br. 41 and
42. But, the claim continues to state that "the shuttle drive and the pump
drive do not extend between the first side of the shuttle and a second side of
the shuttle opposite the first side .... " Id. (emphasis added). Thus, it is
clear from the claim language that the second side of the shuttle is opposite
to the first side and not adjacent to the first side. This understanding is
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Application 13/164,267
consistent with Specification which clearly describes a structural
relationship where the pump drive and shuttle drive are located on a first
side and do not extend between the first and second side of the shuttle. See
e.g., Spec. at i-f20 (comparing to prior art systems), i-f24 (comparing to prior
art systems), and i-f43.
The Examiner relies upon Balcan in rejecting claims 1 and 27 as
anticipated. Final Act. 3. In contrast, however, to the instant application,
Balcan teaches a pump drive on a side opposite from the shuttle drive and
similar to the prior art or conventional systems the instant application seeks
to improve upon. See Figs. 12 and 15. We therefore do not sustain the
Examiner's rejection of claims 1 and 27, as well as those claims depending
from claims 1 and 27, as anticipated by Balcan.
Second, Appellants contend that Balcan does not teach "that the
shuttle drive and the pump drive do not extend between the first side ... and
a second side." Appeal Br. 21. Rather, Appellants explain that Balcan
teaches a shuttle drive and a pump drive that are interconnected by a shaft-
that is, the shuttle and pump drives extend between the first and second side.
Id. at 22. Appellants argue that the Examiner's rejection ignores other pump
drive components necessary for operation and direct attention to shaft 333
and gear 338 as necessary for operation. Id. Appellants urge that the
Examiner's findings "mistakenly re-defines the components of Balcan in a
manner clearly driven by the teachings of the claim under examination
instead of relying on the actual teachings of Balcan as a whole." Id. at 23.
Appellants also contend that their proposed inclusion of shaft 333 and gear
338 are consistent with the Examiner's proposed definition of pump drive
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Application 13/164,267
and shuttle drive as "a gear train transmitting a drive force to the [pump or
shuttle, respectively]." Id. at 24. According to Appellants, this is because
the gear 338 supplies power to the tube pump 170 via the gears
344, 345 and 346 when the sled drive gear 330 is rotated via the
feed roller 312. (Balcan, ifif[0050]-[0055]). The sled drive gear
330 of Balcan is mounted to a first end of the shaft 333 and the
gear 338 is mounted to a second end of the drive shaft 333.
Id. And, the Examiner's use of a dictionary to provide an additional
definition for "drive" to mean "a means for giving motion to a machine or
machine part," likewise supports including shaft 333 as part of the pump
drive. Id. at 24--25. This is because a person of ordinary skill in the art
would have understood that the pump drive must include components
supplying the drive force or means for giving motion to the machine. Id.
And, because required shaft 333 extends underneath the shuttle from the first
side of the shuttle to an opposite, second side of the shuttle, Balcan cannot
anticipate claims 1 and 27. Id. at 25-26.
The Examiner acknowledges that
Appellant relies on Balcan's teaching that the shaft 333 is
essential to operation of both Balcan's shuttle drive and Balcan's
pump drive. While that may be the case in practice, Appellant
has recited nothing in the claim that requires the use of a drive
shaft to power the drives. Further, as mentioned above, the plain
dictionary definition of "drive" doesn't require the use of a shaft.
While trying to keep the claim language broad, Appellant has
simply created an argument for why Balcan does not anticipate,
but Appellant's argument is not based on what is claimed.
Ans. 4. Moreover, the Examiner explains that because Appellants use
"comprising" or "open ended" language to define the invention, the
"Appellant[ s] cannot claim only the components recited can be taught by a
properly anticipating reference." Id. at 3.
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Application 13/164,267
Here, Appellants have shown reversible error by the Examiner.
Specifically, we find that drive shaft 333 is an integral part of the pump
drive ofBalcan, without which, the drive would not operate. The
Examiner's position that the Appellants do not claim a shaft and therefore a
shaft is not required to anticipate the claims is unpersuasive because the
claims do require a "drive." Ans. 4. The Examiner determines that a
"drive" is a "gear train transmitting a drive force" or "a means for giving
motion to a machine or machine part." Final Act. 4--5. Shaft 333 of Balcan,
in combination with gears 338, 344, 345 and 346, transmits the drive force
and gives motion to the device ofBalcan. Balcan, i-fi-150-51. As shown
below in Figures 12 and 15 of Balcan, shaft 333, extends under the shuttle
between the first side of the shuttle and the second side of the shuttle.
FIG. 15
Id. at Figs, 12 and 15. Accordingly, Balcan does not anticipate claims 1 and
27 (and claims depending therefrom).
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Application 13/164,267
Obviousness
The Examiner finds, alternatively, that Balcan in combination with
Uchida renders the claims obvious. Final Act. 3. In particular, the Examiner
finds that Uchida teaches system having a pump drive and a shuttle drive on
the same side of the shuttle so that neither the pump drive nor the shuttle
drive extend between a first and second side of the shuttle. Final Act. 5.
The Examiner further finds that
[i]t would have been obvious to one of ordinary skill in the art to
apply the same-side configuration of drives taught by Uchida in
the device taught by Balcan because doing so would amount to
the use of a known technique to improve a similar device in the
same way. In other words, locating all of the drives on one side
of the shuttle would allow for a shorter transmission route from
the motor to the pump thereby reducing the number of
transmission elements needed.
Final Act. 5.
Appellants argue that "the Examiner incorrectly alleges that Uchida
teaches a pump drive on the same side as the shuttle drive and that neither
the shuttle drive nor the pump drive extends from one side to the other."
Appeal Br. 28. According to Appellants, Uchida includes main cam 111, an
"integral part of the drive of Uchida" and without which 'none of the ...
movements would be accomplished." Id. at 29. And, this main cam 111, as
well as levers 114, do extend between the first and second sides of the
shuttle. Id. Thus, Appellants urge that because Balcan and Uchida
individually each lack the same elements, i.e., "a shuttle having a shuttle
drive positioned on a first side of the shuttle ... [and] a pump drive
positioned adjacent the track and the first side of the shuttle such that the
shuttle drive and pump drive do not extend between the first side ... and
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Application 13/164,267
second side of the shuttle," the combination of Balcan and Uchida
necessarily lacks these elements as well. Reply Br. 11. In addition,
Appellants argue that the Examiner has neglected to provide an adequate
rationale for the modification as proposed-because, "one does not combine
two references with drive shafts/cams and eliminate their structure for no
reason." Id. at 11-12 and Appeal Br. 30. Thus, Appellants maintain that
the Examiner has failed to establish a prima facie case of obviousness.
For the reasons discussed above (see supra p. 6-8), we find, as do
Appellants, that main cam 111 of Uchida is part of the shuttle drive.
Moreover, Uchida explains that
the rotation of the main cam 111 is converted to linear back and
forth motions of the wiper 39 by an another cam, rack and pinion,
and the like. Further, the rotation of the main cam 111 is
converted to up and down movements of the cap 13 by an another
cam and a lever 14.
Uchida, i-f54. Thus, main cam 111 is responsible for giving motion to the
machine. As shown below in Figure 10 of Uchida, main cam 111 extends
from the first side of the shuttle to the opposite side, i.e., the second side of
the shuttle.
FIG.10
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Uchida, Fig. 10. Because neither Balcan nor Uchida suggest an arrangement
where "the shuttle drive and the pump drive do not extend between the first
side of the shuttle and a second side of the shuttle opposite the first side," as
required by the claims, and because the Examiner provides no reason to
modify Balcan and Uchida in such a manner, we cannot sustain the
Examiner's rejection of claims 1 and 27 and their dependent claims as
obvious over the combination of Balcan and Uchida.
Rearrangement of the Parts
The Examiner also finds that the principle of rearrangement of the
parts applies here. Final Act. 5. Specifically, the Examiner finds that "[the]
Applicant has claimed the same configuration as that disclosed by Balcan
except for the fact that the pump drive has been moved from a side opposite
the shuttle drive to the same side as the shuttle drive." Id. at 6. The
Examiner concludes that because modifying Balcan in accordance with
claims 1 and 27 would not modify the operation of the device, claims 1 and
27 are unpatentable as obvious. Id.
Appellants contend that a mere rearrangement of the parts in Balcan
would not result in the structure of claims 1 and 2 7. Appeal Br. 31. This is
because many of the components of Balcan are not present in the instant
claims and therefore, the instant claims are structurally different than
Balcan. Id. In addition, Appellants argue that "the rationale provided by the
Examiner lacks a showing of a motivation or reason why one skilled in the
art would modify Balcan as suggested by the Examiner." Id. at 30.
The principle of "rearrangement of the parts" finds its roots in In re
Japikse, 181F.2d1019, 1023 (CCPA 1950). There, claims were held
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Application 13/164,267
unpatentable because rearranging the position of a starting switch would not
have modified the operation of the device. Id. But, Japikse does not stand
for a per se rule of obviousness simply through rearrangement of individual
parts nor does it displace the requirement of an articulated reason to support
the proposed modification. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992).
Here, we again agree with Appellants. The Examiner has not
provided sufficient underlying reasoning or analysis to support a conclusion
that it would have been obvious to modify the prior art in the manner
proposed in the rejection. Accordingly, we do not sustain the rejection of
claim 1 and its dependent claims.
Claim 51
The Examiner rejects claim 51 as indefinite, among other rejections,
for failing to particularly point out and distinctly claim the subject matter
Appellant regards as the invention. Final Act. 2. The Examiner concludes
claim 51 is indefinite because claim 51
creates confusion between two different meanings. It could be
construed as that none of the drives extends from the first side to
the second side. On the other hand, it could also be construed to
mean that none of the drives extend across the first side and also
extends across the second side.
Id. at 2-3. The Examiner further explains that "the use of the terms 'across,'
'side,' and 'extend,' not being well-defined in the claims, leads to more than
one reasonable interpretation." Ans. 6.
Appellants argue that the Examiner's conclusion is in error, that the
Examiner offers only conclusory statements unsupported by facts, and that
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"the Examiner has not explained, let alone established, why the claimed
features are believed indefinite from the perspective of one of ordinary skill
in the art." Appeal Br. 11. Appellants further argue that the claim language
is clear and fully supported and described by the original specification. Id.
at 12.
During prosecution, a claim is examined for compliance with 35
U.S.C. § 112, i-f 2 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting MPEP § 2173.02). Although exact precision is not
required, the claim language must be as reasonably precise as the subject
matter permits. In re Packard, 751F.3d1307, 1313 (Fed. Cir. 2014). The
test for definiteness is whether one skilled in the art, at the time the
application was filed, would understand the bounds of the claim when read
in light of the specification and prosecution history. Nautilus, Inc. v. Biosig
Inst., Inc., _U.S._, 134 S.Ct. 2120, 2128 (2014).
In this instance, we agree with Appellants and conclude that those
skilled in the art would have no uncertainty concerning the subject matter
and scope of the claims. Claim 51, depending from claim 1, additionally
requires that "no portions of the shuttle drive, the pump drive and the printer
drive extend across the first side of the shuttle and the second side of the
shuttle." The Specification makes clear that this language means that none
of the drives extend across from the first side of the shuttle to the second
(and opposite) side of the shuttle. For example, paragraph 43 of the
Specification explains that "both the shuttle drive assembly 232 and the
pump drive assembly 234 of the illustrated example are positioned such that
shuttle drive assembly 232 and the pump drive assembly 234 do not extend
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between thejzrst side 214 an the second side 216 of the shuttle 210." Spec.
i-f43 (emphasis added); see also id. at i-f24 ("does not extend between"). This
is in contrast to "conventional service stations" that "employ a shuttle drive
and a pump drive extending between a first side ... and a second side of the
service station opposite the first side." Id. at i-f20; see also id. at i-f24 (same).
Thus, we do not sustain the Examiner's rejection.
CONCLUSION
The Examiner reversibly erred in rejecting claim 51, under 35 U.S.C.
§ 112 second paragraph, as being indefinite.
The Examiner reversibly erred in rejecting claims 1, 3, 27, 29, and
49-51, under 35 U.S.C. §102(b), as being unpatentable over Balcan or, in
the alternative, under 35 U.S.C. § 103(a) as obvious over Balcan in view of
Uchida.
The Examiner reversibly erred in rejecting claims 4--7 and 30-33,
under 35 U.S.C. § 103(a), as being unpatentable over Balcan in view of
Uchida and further in view of U chikata.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 3-7, 27,
29-33, and 49-51 is reversed.
REVERSED
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