13100741 (P.T.A.B. Jan. 6, 2017)

Ex Parte Mui et al

Patent Trial and Appeal BoardJan 6, 2017

13100741 (P.T.A.B. Jan. 6, 2017)

United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/100,741 05/04/2011 Paul K. Mui 82663355 3606 22879 HP Tnr 7590 01/10/2017 EXAMINER 3390 E. Harmony Road Mail Stop 35 DOTTIN, DARRYL V FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 2673 NOTIFICATION DATE DELIVERY MODE 01/10/2017 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 y vonne.bailey @ hp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL K. MUI, ERIC L. ANDERSEN, JENNIFER L. CLARK, and SCOTT A. PUTZ Appeal 2016-000306 Application 13/100,7411 Technology Center 2600 Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1—9 and 16—24, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Technology The application relates to mechanisms to physically attach together different containers of imaging devices, such as printers, scanners, or copiers. Spec. 1:4—18, Abstract. 1 According to Appellants, the real party in interest is Hewlett-Packard Development Company, LP, which is a wholly-owned affiliate of Hewlett- Packard Company. App. Br. 3. Appeal 2016-000306 Application 13/100,741 Representative Claim Claim 1 is representative and reproduced below with the limitations at issue emphasized: 1. A multifunction imaging device comprising: a first imaging module frame defining a container including a bottom wall, a pair of side walls spaced apart from and opposite to each other, a front wall and a back wall spaced apart from and opposite to each other, wherein the bottom wall extends transversely between the side walls and extends from the front wall to the back wall, and wherein the plurality of walls defines an interior of the container to contain at least circuitry; and a second imaging module frame including a top wall portion, a front wall portion, a back wall portion spaced apart from and opposite the front wall portion, and a pair of side wall portions spaced apart from and opposite each other, wherein the top wall portion extends transversely between the side wall portions and extends from the front wall portion to the back wall portion, and wherein the top wall portion of the second imaging module generally faces the bottom wall of the first imaging module frame, wherein the first imaging module frame is directly fixed to the second imaging module frame via at least one first attachment member, which includes: a base portion positioned within the interior of the container of the first imaging module frame and extending generally against the bottom wall of the first imaging module; and at least one protrusion extending from the base portion, within the interior of the first imaging module frame, through the bottom wall of the first imaging module frame to be exposed external to the bottom wall of the first imaging module frame, wherein the at least one protrusion is releasably connected relative to the top wall portion of the second imaging module frame. 2 Appeal 2016-000306 Application 13/100,741 Rejections Claims 1—3, 5—8, 16—18, 20, 21, and 24 stand rejected under 35 U.S.C. § 103(a) as obvious over Ariyama et al. (US 5,162,845; Nov. 10, 1992) and Kim et al. (US 7,315,709 B2; Jan. 1, 2008). Final Act. 3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Ariyama, Kim, and Hasegawa et al. (US 2006/0099004 Al; May 11, 2006). Final Act. 16. Claims 9, 19, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Ariyama, Kim, and Otsuka et al. (US 7,957,667 B2; June 7, 2011). Final Act. 18. ISSUE Did the Examiner err in finding Kim teaches or suggests “at least one first attachment member, which includes: a base portion positioned within the interior of the container of the first imaging module frame and extending generally against the bottom wall of the first imaging module,” as recited in claim 1? ANALYSIS Claim 1 recites “at least one first attachment member, which includes: a base portion positioned within the interior of the container of the first imaging module frame and extending generally against the bottom wall of the first imaging module.” The other independent claims (18 and 24) recite commensurate limitations. The Examiner relies on Kim for teaching these limitations. Ans. 30— 34; Final Act. 5—6. Kim teaches “modularized image forming apparatuses” such as “printers” and “copiers.” Kim 1:57—61, 1:22—27. Kim’s module can be “removably installed on the top of’ another such module. Id. at 3:43 44. 3 Appeal 2016-000306 Application 13/100,741 Figure 3 of Kim is reproduced below. FIG. 3 “FIG. 3 is an exploded perspective view” of several modular components stacked on top of each other. Kim 3:26—27. Specifically, printer 20 is stacked on top of printer 10. Id. at 7:11—16. Each printer has projections at each comer of its top surface (e.g., projections 62) and has grooves at each comer of its bottom surface (e.g., grooves 63). Id. at 5:37— 65. The projections on top of a printer fit into the grooves of a printer placed 4 Appeal 2016-000306 Application 13/100,741 above it. Id. For example, in Figure 3, projections on the top of printer 10 (part of label 64) fit into grooves 63 on the bottom of printer 20. Id. Kim also groups certain projections and grooves under collective labels. For example, “the first positioning part 61” includes the projections 62 and grooves 63 on the top printer 20; “the second positioning part 64” includes the projections on the top of the bottom printer 10; and “the first alignment unit 60” includes both 61 and 64. Id. at 5:42—55. The Examiner identifies Kim’s “first alignment unit 60” as the claimed “first attachment member.” Ans. 32. As discussed above, 60 consists of the grooves and projections on both the top and bottom printers. Kim 5:42—55. The Examiner next maps the claimed “base portion” to Kim’s “lower interior surface of the upper image module frame of the sub image forming unit 20.” Ans. 33. However, we agree with Appellants that this ignores the express claim language that the first attachment member “includes” the base portion. App. Br. 13; Reply Br. 6. The grooves 63 do not “include” the lower interior surface of the top printer. If anything, the lower interior surface of the top printer would include the grooves, not the other way around. Thus, the Examiner has not sufficiently addressed all the limitations in the claims, including that the “first attachment member . . . includes: a base portion.”2 2 Although we do not agree with all of Appellants’ other arguments, similar concerns may exist for other elements, such as the Examiner ignoring the word “scanner” in claim 2 and not sufficiently explaining “releasably connected relative to the top wall portion” for claim 1. However, because we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants’ other arguments. 5 Appeal 2016-000306 Application 13/100,741 In determining obviousness, “it is the claims that measure and define the invention,” not the “gist” or “heart” of the invention. W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983); 35 U.S.C. § 103 (requiring “the subject matter as a whole would have been obvious”) (emphasis added). Accordingly, we are constrained to reverse the Examiner’s rejection of independent claims 1,18, and 24, as well as their respective dependent claims 2—9, 16, 17, and 19-23. This reversal does not imply that the claims at issue are necessarily patentable. To the contrary, the independent claims are written so broadly that screwing two printers together with a simple screw and nut may render them obvious. But no matter how obvious a claim may appear, the burden remains on the Examiner—not the Appellants or the PTAB—to set forth in the first instance a prima facie case mapping the prior art to all elements of the claims. The Examiner has not done so here. DECISION For the reasons above, we reverse the Examiner’s decision rejecting claims 1—9 and 16—24. REVERSED 6