Ex Parte Park

Board of Patent Appeals and Interferences

Mar 31, 2003

08736042 (B.P.A.I. Mar. 31, 2003)

1 Application for patent filed October 21, 1996, which claims the
foreign filing priority benefit under 35 U.S.C. § 119 of Korean Application
No. 36343/1995, filed October 20, 1995.
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for publication and is not binding precedent of the Board.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. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DONG-HOON PARK
____________
Appeal No. 2001-1336
Application No. 08/736,0421
____________
HEARD: February 19, 2003
____________
Before GROSS, LEVY, and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-13 and 17-21. Claims 14-16 have been
canceled.
We reverse.
Appeal No. 2001-1336
Application No. 08/736,042
2
BACKGROUND
Appellant’s invention is directed to an image forming
apparatus and a method for adjusting the transfer voltage for
optimizing image density according to the path a sheet of
recording media takes. The path depends on the tray the sheet of
recording media originates from such as an automatic feeding
cassette and a manual feeding tray (specification, page 5). When
a sheet of recording medium is fed through the manual tray and is
conveyed toward the image forming unit, a sensor is triggered
(brief, page 9) and a signal is generated by an engine controller
(brief, page 10). This signal indicates that the recording
medium has a thickness greater than the standard thickness and
the transfer voltage should be adjusted accordingly (id.).
Representative independent claim 1 is reproduced below:
1. An image informing apparatus using an
electrophotographic developing system, comprising:
a photosensitive drum positioned along a path for
conveyance of articles of recording media through said
system;
a manual paper feed tray attachable to said system
while introducing the articles of recording media onto said
path via a first avenue;
a cassette associated with said system to introduce
other articles of recording media onto said path via a
second and different avenue;
Appeal No. 2001-1336
Application No. 08/736,042
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a manual paper feed sensor positioned along said first
avenue to automatically sense a passage of a sheet of
recording media fed from said manual paper feed tray and
produce a first signal when the sheet of recording medium is
fed into said path from said manual paper feed tray;
an engine controller generating one of a first control
signal and a second control signal in dependence upon
reception of said first signal sent from said manual paper
feed sensor;
a transfer voltage generator generating a first
transfer voltage when said first control signal is received
from said engine controller and generating a second transfer
voltage different from said first transfer voltage when said
second control signal is received from said controller;
a transfer unit receiving one of said first and second
transfer voltages applied from said transfer voltage
generator to transfer an image representing information,
formed by toner on said photosensitive drum to said sheet of
recording medium;
an operating panel;
a video controller comprising a computer interface a
video control unit, said computer interface being connected
between a host computer and said video control unit, said
computer interface providing an interface for an input and
an output signal between said host computer and said video
controller, said video controller comprising a memory
storing data input from said operating panel and from said
host computer and changing code data received from said
computer interface into image data; and
a print control unit comprising a video interface, said
engine controller, an input/output interface, a sensor
circuit, and said transfer voltage generator, said video
interface providing an interface transmitting and receiving
signals between said video controller and said engine
controller, said engine controller controlling each unit of
the print control unit and initiating printing of image data
received from the video controller on said recording media,
said input/output interface being connected between said
Appeal No. 2001-1336
Application No. 08/736,042
2 The English translation of this Kokai reference was provided by
DerwentTM, a copy of which was provided to Appellant as an attachment to paper
No. 7, mailed November 18, 1997.
3 Claim 8 is dependent upon independent claim 5 and should have
probably been grouped with its base claim.
4
engine controller and both said sensor circuit and said
voltage transfer generator, said sensor sensing operational
states of said print control unit.
The Examiner relies on the following references in rejecting
the claims:
U.S. Patents
Kimura et al. (Kimura) 5,250,999 Oct. 5, 1993
Lee 5,444,524 Aug. 22, 1995
Kanno et al. (Kanno) 5,486,903 Jan. 23, 1996
(filed Jul. 7, 1994)
Japanese Kokai2
Kono 6-83142 Mar. 25, 1994
Claims 1-7, 13 and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kimura in view of Kono and
Lee.
Claims 8-123 and 17-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kimura in view of Kono and
Lee and further in view of Kanno.
Rather than reiterate the viewpoints of the Examiner and
Appellant regarding the above-noted rejection, we make reference
to the answer (Paper No. 32, mailed July 31, 2000) for the
Appeal No. 2001-1336
Application No. 08/736,042
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Examiner’s reasoning and to the appeal brief (Paper No. 31, filed
May 11, 2000) and the reply brief (Paper No. 33, filed October 2,
2000) for Appellant’s arguments thereagainst.
OPINION
The Examiner relies on Kimura for teaching different
elements of a printer except for the claimed manual paper feed
tray (answer, pages 4 & 5). The Examiner, however, takes the
position that the use of a manual feed tray with a substantially
horizontal path is known in the art (answer, page 5). The
Examiner further relies on Kono for teaching a sensor in the
paper path adjacent the tray and on Lee for teaching a video
controller and a print control unit (id.).
Appellant argues that the Examiner, in relying on Kimura for
teaching adjustment of the transfer voltage, improperly
associates Kimura’s manual adjustment performed by the user with
the claimed changing of the transfer voltage depending on the
path a sheet of recording medium takes (brief, page 7).
Appellant further asserts that the proposed combination of Kimura
with Kono and Lee lacks proper motivation and would not have
resulted in the claimed structure (brief, pages 6 & 7 and reply
brief, pages 3 & 4).
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In response to Appellant’s arguments, the Examiner asserts
that Kimura teaches that the transfer voltage should be adjusted
when a user determines the use of transparencies and alerts the
printer (answer, page 7). Furthermore, the Examiner refers to
tray 7 of Kimura as the straight path tray for special recording
media which requires adjusting of the transfer voltage when tray
7 is used or when the type of the paper is sensed as special
(id.). The Examiner concludes that the claimed invention “does
not differ technically” from the prior art (id.).
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). To reach a conclusion of
obviousness under § 103, the examiner must produce a factual
basis supported by teaching in a prior art reference or shown to
be common knowledge of unquestionable demonstration. Our
reviewing court requires this evidence in order to establish a
prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984). The Examiner must not only
identify the elements in the prior art, but also show “some
objective teaching in the prior art or that knowledge generally
available to one of ordinary skill in the art would lead the
Appeal No. 2001-1336
Application No. 08/736,042
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individual to combine the relevant teachings of the references.”
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988).
A review of the applied prior art confirms that Kimura
relates to a printer that controls the printing parameters once
the overhead projection mode is selected (col. 1, lines 44-49).
However, as acknowledged by the Examiner, a user has to select
the overhead projector (OHP) mode selection key 18 in order to
adjust the transfer voltage (col. 3, lines 47-48). Although
Kimura teaches that the type of the recording media may be
detected automatically (col. 4, lines 31-38), the claimed sensor
for detecting the path through which a sheet of recording medium
fed from the manual paper feed tray passes is absent from the
reference.
Kono, on the other hand, discloses a paper-stuck detection
means in an image forming device (translation, section 0008) but
provides no further detail of a signal indicating which path the
paper is passing through or whether the detection results in
changing the transfer voltage. We also find that Lee, in figure
2, merely depicts a print engine controlling circuit and does not
teach or suggest the use of any sensors for detecting the passage
of a sheet of recording medium from the manual paper feed tray.
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Application No. 08/736,042
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Thus, although we agree with the Examiner that adjusting the
transfer voltage for a specific type of recording media is
recognized by Kimura, we do not find any specific teaching in the
reference that relates to the claimed sensor that automatically
senses the passage of a sheet of recording media fed from the
manual tray or to production of a first signal which determines
the control signal provided to the transfer voltage generator.
We agree with Appellant’s assertion (brief, page 7 and
reply brief, page 4) that the combination of Kimura with Kono and
Lee fails to teach or suggest changing the transfer voltage
depending on the path of a sheet of recording media, as recited
in claim 1. As discussed above, Kimura only senses the type of
paper and not the path the paper takes whereas Kono senses
whether a paper is stuck in the apparatus. In our view, even the
Examiner’s inference that the transfer voltage is adjusted
depending on the type of the recording media used (answer, page
7) is inconclusive because Kimura adjusts the transfer voltage
either based on the mode selected by a user or the sensed type of
the recording media. Thus, assuming, arguendo, that it would
have been obvious to combine Kono and Lee with Kimura, as held by
the Examiner, the combination would still fall short of teaching
or suggesting the claimed sensor that senses the path a sheet of
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Application No. 08/736,042
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recording media passes through for generating signals that
control the transfer voltage.
In view of our analysis above, we find that the Examiner has
failed to set forth a prima facie case of obviousness as the
necessary teachings and suggestions related to the claimed sensor
for sensing the path of the recording media, as recited in
independent claims 1, 3, 5, 13 and 21, are not shown.
Accordingly, we do not sustain the 35 U.S.C. § 103 rejection of
independent claims 1, 3, 5, 13 and 21, nor of claims 2, 4, 6 and
7 dependent thereon.
With respect to the rejection of claims 8-12 and 17-20, the
Examiner further relies on Kanno for teaching that the transfer
voltage should be increased for thick papers (answer, page 6).
However, Kanno provides no teaching related to the claimed
sensing unit along the path adjacent to a manual feeding tray and
fails to overcome the deficiencies of Kimura as discussed above
with respect to claim 1. Therefore, the 35 U.S.C. § 103
rejection of claims 8-12 and 17-20 cannot be sustained.
Appeal No. 2001-1336
Application No. 08/736,042
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-13 and 17-21 under 35 U.S.C. § 103 is
reversed.
REVERSED
ANITA PELLMAN GROSS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/dal
Appeal No. 2001-1336
Application No. 08/736,042
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Robert E. Bushnell
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