Ex Parte Melia et al

Patent Trial and Appeal Board

Feb 5, 2016

12788047 (P.T.A.B. Feb. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121788,047 05/26/2010
22879 7590 02/09/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Francese Melia
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.
82260779 5803
EXAMINER
SMITH, CHAD
ART UNIT PAPER NUMBER
2874
NOTIFICATION DATE DELIVERY MODE
02/09/2016 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 FRANCESC MELIA, LL UIS HIERRO, and
XAVIER GAROLERA
Appeal2014-001654
Application 12/788,047 1
Technology Center 2800
Before JOSEPH L. DIXON, NATHAN A. ENGELS, and
CARLL. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-18. Final Act. 1. Claim 19 is withdrawn. App. Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The real party in interest is identified as Hewlett-Packard Development
Company, LP. Br. 2.
Appeal2014-001654
Application 12/788,047
The invention relates to a reference strip, including transmission
windows, used with a print head carriage. Abstract. Claims 1 and 1 7 are
exemplary of the subject matter on appeal:
1. A print head carriage feedback system, comprising
a reference strip arranged along a scan axis of a print head
carriage, the reference strip comprising transmission windows for
transmitting detector signals,
the print head carriage arranged to move with respect to the
reference strip, along the scan axis, and
a detector arranged to detect the transmission windows for
determining a position of the print head carriage with respect to the
scan axis, wherein
the transmission windows comprise a bridge extending across
the width of the respective transmission windows between edge zones
of the reference strip.
App. Br. 15 (Claims Appendix).
1 7. Print system, comprising
a print head carriage arranged to move along a scan axis,
a reference strip arranged parallel to the scan axis,
an emitter arranged on one side of the reference strip, and
a receiver arranged on the opposite side of the reference strip
for receiving an emitter signal, wherein
the reference strip comprises transmission windows arranged
along the length of the reference strip, having a width so as to allow
signal transmission while preventing that print ink aerosol affects the
receiver function, and
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Application 12/788,047
the transmission \'l1indo\'l/S comprise at least t\'l/O portions
interrupted by bridges that are arranged to reinforce the reference strip
while allowing reception of the emitter signal by the receiver.
App. Br. 17 (Claims Appendix).
THE REJECTIONS
Claims 1-13 and 18 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Murakami et al. (U.S. Patent 7,419,258 B2; Sept. 2, 2008).
Final Act. 6.
Claims 1and14--162 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Eade et al. (U.S. Patent 6,302,514 Bl; Oct. 16, 2001). Final
Act. 9.
Claim 17 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Watanabe (U.S. Patent 6,264,303 Bl; July 24, 2001). Final
Act. 10.
ANALYSIS
Murakami
The Examiner and Appellants dispute whether Murakami discloses
the claim 1 limitation "the transmission windows comprise a bridge
extending across the width of the respective transmission windows between
edge zones of the reference strip." App. Br. 7-9; Ans. 4; Reply Br. 2-3.
2 We note that claim 14 depends from claim 12 which was not rejected as
anticipated by Eade. We leave it to the Examiner to consider the dependency
in any further prosecution.
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Appeal2014-001654
Application 12/788,047
The Examiner finds !vfurakami teaches a reference strip 50 \'l1ith
transmission windows 500 in which the areas above and below the windows
correspond to the "bridge extending across the width of the respective
transmission windows." Final Act. 6-7 (citing Murakami Fig. 3 and
Examiner annotated Fig. 3); Ans. 3. The Examiner interprets the "ends of
the strip 50" not shown in Murakami Figure 3 as "edges zones" and,
therefore, the "bridges" are "between edge zones of the reference strip."
Ans. 3. The Examiner finds Appellants do "not define the location of the
edge zones in structural relation with [the] bridges." Ans. 3.
Appellants argue, and we agree, one of ordinary skill in the art would
not consider the [left and right] ends of Murakami' s strip 50 as the claimed
"edge zones." App. Br. 8-9. According to Appellants:
The recited reference strip provides functionality as the print head
moves lengthwise along the scanning axis of the reference strip. For
such an object, it is commonly understood that the edge would refer to
the sides that r11n length\'l1ise along the functional axis. For example,
the edge of a road is commonly understood to refer to the sides of the
road, which run longitudinally along the length of the road. Similarly,
if one were to refer to the edge of a ruler, one would not think that
reference was being made to the end of the ruler. Based on the
[S]pecification and the plain meaning of the words, a person of
ordinary skill in the art would not interpret the ends of a strip to be
edges.
App. Br. 9.
Appellants argue, and we agree, the Examiner's findings are not
consistent with the Specification. App. Br. 7- 9; Reply Br. 3. The
Specification describes edge zones run lengthwise along the functional axis.
Spec. p. 5, 11. 12-27, p. 6, 11. 18-21, Fig. 3. Claim terms in a patent
application are given the broadest reasonable interpretation consistent with
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Appeal2014-001654
Application 12/788,047
the specification, as understood by one of ordinaf'J skill in the art. In re
Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). However, great care should be
taken to avoid reading limitations of the Specification into the claims. E-
Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
We are persuaded by Appellants' arguments as the Examiner does not
present sufficient evidence required for anticipation. In particular, the
Examiner presents insufficient evidence to support the finding that the ends
of Murakami' s strip fall within a reasonable interpretation of the claimed
"edge zones" and, therefore, there is no disclosure of the "bridge extending .
. . between edge zones." A claim is anticipated only if each and every
element as set forth in the claims is found, either expressly or inherently
described in a single prior art reference, and arranged as required by the
claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F .2d 628, 631
(Fed. Cir. 1987).
In vie\'X/ of the above, \Y..fe do not sustain the rejection of claim 1, and
claims 2-13 as these claims depend from claim 1. Cf In re Fritch, 972 F .2d
1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious ifthe
independent claims from which they depend are nonobvious. ").
Independent claim 18 recites substantially the same limitation as claim 1
("between edge zones of the reference strip") and, therefore, for the same
reason, we do not sustain the rejection of 18.
Eade
The Examiner finds Eade teaches a reference strip 40 with
transmission windows (vertical slits) 42 and the area 40 above 42 is a bridge
extending across the width of the respective transmission windows. Final
Act. 10 (citing Eade Fig. 1 ). The Examiner finds the bridges extending
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Appeal2014-001654
Application 12/788,047
betv,reen edge zones of the reference strip (the ends of 40).
Substantially the same arguments are presented regarding the rejection of
claim 1 over Eade as discussed above regarding the rejection of claim 1 over
Murakami. App. Br. 10-11; Reply Br. 2-3. Therefore, for the same
reasons, we do not sustain the rejection of claim 1, and dependent claims
14--16, over Eade.
Watanabe
Regarding independent claim 17, the Examiner finds Watanabe's
reference strip discloses the disputed limitation "the transmission windows
comprise at least two portions interrupted by bridges that are arranged to
reinforce the reference strip while allowing reception of the emitter signal by
the receiver." Final Act. 10-11; Ans. 7-8. In particular, the Examiner finds
the grooves 12a constitute transmission portions (and the spaces between the
grooves constitute bridges). Ans. 8 (citing Watanabe Fig. 10). The
Examiner finds the grooves 12a separate a window into portions. Final Act.
11 (citing Watanabe Fig. 10, annotated by the Examiner). The Examiner
finds Watanabe teaches reinforcement of the strip because the bridges have
added thickness as compared to the rest of the strip. Ans. 8.
Appellants argue Watanabe's grooves 12a prevent transmission, the
grooves do not interrupt a single window comprising two portions, and the
grooves do not provide reinforcement. App. Br. 12-13; Reply Br. 3-5.
We are not persuaded by Appellants' arguments and instead agree
with the Examiner's findings above. The Examiner's findings are not
unreasonable and, therefore, we sustain the rejection of claim 17. Mere
lawyer's arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
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Application 12/788,047
1465, 1470 (Fed. Cir. 1997) ("ii .. n assertion of v,rhat seems to follow from
common experience is just attorney argument and not the kind of factual
evidence that is required to rebut a prima facie case of obviousness."); see
also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
DECISION
We reverse the Examiner's decision rejecting claims 1-16 and 18.
We sustain the Examiner's decision rejecting claim 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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