Ex Parte Quah et al

Patent Trial and Appeal Board

Jul 22, 2014

11829694 (P.T.A.B. Jul. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KIAN HONG QUAH,
BRADLEY THOMAS SMITH, and WEILONG CHEN
__________

Appeal 2012-003986
Application 11/829,694
Technology Center 2600
__________

Before DEMETRA J. MILLS, ERIC B. GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
for initializing an image scanner having a scanning module and an automatic
document feed glass. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 Appellants identify the Real Party in Interest as Hewlett-Packard
Development Company, L. P. (see App. Br. 3).
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Statement of the Case
Background
“[T]he flatbed image scanner 100 typically performs an initialization
process to determine the exact position of the scanning module 110. In the
initialization process, the image sensor 112 is employed to scan and capture
a series of patterns representing an origin mark 120” (Spec. 2 ¶ 0005). The
Specification teaches that “during the initialization process . . . the scanning
module 110 will position the image sensor 112 at an initial position 136,
which is relatively far away from the origin mark 120” (Spec. 3 ¶ 0008).
The Specification teaches that the “initialization process performed by
conventional flatbed image scanners 100 is therefore relatively long and
often extends the amount of time it takes for the flatbed image scanners 100
to boot up” (Spec. 3 ¶ 0008).
The Claims
Claims 1-20 are on appeal. Claim 1 is representative and reads as
follows:
1. A method for initializing an image scanner having a scanning module
and an automatic document feed (ADF) glass, said scanning module housing
an image sensor, said method comprising:
(a) moving the scanning module in a forward direction toward the
ADF glass to search for a reference mark, wherein the reference mark is
located within a relatively close proximity to the ADF glass;
(b) moving the scanning module forward to search for a black-white
transition in response to the reference mark being located;
(c) moving the scanning module in a backward direction away from
the ADF glass in response to the black-white transition being located;
(d) optically detecting an origin mark; and
(e) stopping the scanning module movement when the image sensor is
aligned with the optically detected origin mark to thereby accurately position
the scanning module.
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The issue
The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
obvious over Susaki2 and Naito3 (Ans. 4-14).
The Examiner finds that
Susaki discloses a method for initializing an image scanner
. . . comprising: moving the scanning module in a forward
direction toward the ADF glass to search for a reference
mark (e.g., as shown in Fig. 8, at step S21, detection of the
reference position member 43 (reference mark) is
performed, and at step S23, reference position member
(reference mark) is checked to see it is there (detected). If no
[sic] detected, then the control loop go back to step S21 to
continue search and step S23 until reference member
detected, and if reference position detected, it will go to step
S25 which move read head to normal standby position

(Ans. 4-5). The Examiner finds that “the read reference position 22 [in
Susaki] is analogous to a black-white transition” (Ans. 5). The Examiner
finds that “[d]uring detecting/searching reference points, the read head 50
must move forward and/or backward to search for the reference points
repeatedly including moving the scanning module in a backward direction
away from the ADF glass in response to the black-white transition being
located” (Ans. 6). The Examiner finds that “Susaki does not disclose
moving the scanning module forward to search for a black-white transition”
(Ans. 6).
The Examiner finds that “Naito discloses moving the scanning
module forward to search for a black-white transition” (Ans. 6). The

2 Susaki, Y., US 2005/0219646 A1, published Oct. 6, 2005.
3 Naito et al., US 2004/0223194 A1, published Nov. 11, 2004.
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Examiner finds it obvious to “have modified Susaki by the teaching of Naito
to accurately detect for a black-white transition and consequently have better
image quality” (Ans. 7).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Susaki and Naito render the
claims obvious?
Findings of Fact
1. Figure 5 of Susaki is reproduced below:

“FIG. 5 is a vertical sectional view [of] the image reader including a read
head and a platen glass” (Susaki 2 ¶ 0017).
2. Susaki teaches that:
as shown in FIG. 8, at the initialization of the flatbed
mechanism (S4), first, detection of the reference position
member 43 is performed (S21). At S21, regardless of the
current position of the read head 50 on the guide shaft 46,
the read head 50 moves toward the right part of the
multifunctional machine 1 (in the right direction in FIG. 5)
by at least a distance that corresponds to the distance
between the ADF-side read position 23 and the read
reference position 22. After that, the read head 50 moves
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toward the left part of the multifunctional machine 1 (in the
left direction in FIG. 5) to detect the reference position
member 43 (S23).

(Susaki 6 ¶ 0052).
3. Figure 8 of Susaki is reproduced below:

“FIG. 8 is a flowchart of initialization of a flatbed mechanism” (Susaki 2
¶ 0020).
4. Susaki teaches that:
At S23, when the read head 50 detects the reference position
member 43 (S23:YES), distance data, which represents a
distance from the read reference position 22 to the normal
standby position 21, is obtained at the read reference
position 22, which is the boundary position between the
white reference member 42 and the reference position
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member 43. Based on the obtained distance data, the read
head 50 moves to the normal standby position 21 (S25) and
flow goes back to the main flow of FIG. 6. When the read
head 50 cannot detect the reference position member 43
(S23:NO), flow goes back to S21. Until the read head 50
detects the reference position member 43, S21 and S23 are
repeatedly performed. By performing the above-described
processing, the read head 50 can be surely returned to the
normal standby position 21 through the initialization of the
flatbed mechanism.

(Susaki 6 ¶ 0054).
5. Figure 3 of Naito is reproduced below:

“FIG. 3 is an illustration showing the configuration of a home-position
detecting section of the image scanner” (Naito 3 ¶ 0033).
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6. Figure 4 of Naito is reproduced below:

“FIG. 4 is a flow chart showing a home-position detection control
sequence” (Naito 3 ¶ 0034).
7. Naito teaches that:
in step S6, the output of the CIS [contact image sensor] 101
is compared with a black decision level. When the output of
the CIS 101 is lower than the black decision level, that is,
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when the output satisfies a predetermined black decision
level, step S7 is started but step S3 is started when the output
does not satisfy the level. . . . CIS 101 is stopped in step S7
and is moved by the determined length in step S8 to obtain
the output of the CIS 101 in step 9 [sic, S9]. In step 10 [sic],
the output of the CIS 101 obtained in step 9 [sic] is
compared with a black decision level. When the output of
the CIS 101 is lower then the black decision level, step S11
is started but step S3 is started in a case other than above. . .
. The CIS 101 is moved by one line in the direction opposite
to the home position HP (upward in FIG. 3) in step S11 to
obtain the output of the CIS 101 in step S12.

(Naito 4 ¶¶ 0067-0069).
8. Naito teaches
to greatly decrease the probability of erroneously
recognizing the gap between a pressure plate and a housing
as the boundary between a white region and a black region
by moving an image sensor by a predetermined distance in
the forward direction, confirming that block [sic, black] is
repeatedly detected, and then moving the image sensor in
the reverse direction to detect white.

(Naito 4 ¶ 0072).
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992).
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
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of circumstances is not sufficient.” MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999).
Analysis
Claims 1 and 18
Appellants contend that “even if Susaki discloses that the read
reference position 22 (black-white transition) is located, Susaki fails to
disclose that the read head is moved in a backward direction away from the
ADF glass in response to the read reference position 22 (black-white
transition) being located, as recited in independent claim 1” (Reply Br. 7).
The Examiner finds that “[d]uring detecting/searching reference
points, the read head 50 must move forward and/or backward to search for
the reference points repeatedly including moving the scanning module in a
backward direction away from the ADF glass in response to the black-white
transition being located” (Ans. 6).
We find that Appellants have the better position. Even if we agree
with the Examiner that the scanning module may move in a forward and
reverse direction (see, e.g. open arrows in Figure 5 of Susaki) and we agree
that Susaki separately teaches movement of the read head 50 relative to the
boundary reference position 22, the Examiner still has not established that
Susaki or Naito suggest “moving the scanning module in a backward
direction away from the ADF glass in response to the black-white transition
being located” as required by claim 1 (emphasis added).
Even where Naito teaches moving the sensor in a forward and reverse
direction at the white/black boundary region (FF 8), this movement is not “in
response to the back-white transition being located” as required by step (c)
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of claim 1, but rather is performed in order to locate the black-white
transition itself, a subtle but important distinction.
We interpret the Examiner’s statement that the “read head 50 must
move . . . backward” as invoking the inherency doctrine. However, the
Examiner has not established, with any evidence, that the read head of a
scanner must necessarily move backward from the ADF glass in response to
locating the black-white transition (i.e. boundary reference position 22).
“The keystone of the inherency doctrine is inevitability. For anticipation by
inherency, a later-claimed invention must have necessarily resulted from the
practice of a prior art reference. Our precedent has been steadfast in this
strict requirement of inevitability.” In re Montgomery, 677 F.3d 1375, 1384
(Fed. Cir. 2012).
The Examiner does not provide any other specific evidence or
reasoning to establish why it would have been obvious, over Susaki and
Naito, to move “the scanning module in a backward direction away from the
ADF glass in response to the black-white transition being located” as
required by claim 1. In the absence of such evidence, we are constrained to
reverse the rejection.
Claim 10
Appellants contend that “Naito does not teach or suggest moving the
scanning module forward to search for a black-white transition, as presently
recited” (App. Br. 14). Appellants contend that “[m]ore particularly, for
instance, independent claims 1 and 18 describe an image scanner in which a
scanning module is positioned at an origin mark that is located to the right of
a black-white transition” (Reply Br. 9).
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The Examiner finds that “Naito discloses moving the scanning
module forward to search for a black-white transition” (Ans. 6).
We find that the Examiner has the better position. Claim 10 lacks the
limitation found in claims 1 and 18 for movement of the scanning module
“in a backward direction away from the ADF glass in response to the black-
white transition being located.” Instead, claim 10 is a device claim which
requires a controller which moves the scanning module to “move the
scanning module toward the ADF glass until a black-white transition is
located” and then move the scanning module “under an origin mark after the
black-white transition has been located.” Thus, claim 10 simply requires
movement to identify a black-white transition and subsequent movement to
an origin mark. Naito teaches movement of the scanning module forward to
identify a black-white transition point (FF 8) while Susaki teaches that after
identification of this transition point, the scanning module moves to normal
standby position 21 (FF 4).
Claim 10 also lacks the limitation argued by Appellants regarding “an
origin mark that is located to the right of a black-white transition” (see Reply
Br. 9). No specific relationship of the origin mark and the black-white
transition is required by claim 10. “[L]imitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Susaki and Naito render claims 1 and 18 obvious.
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The evidence of record supports the Examiner’s conclusion that
Susaki and Naito render claim 10 obvious.
SUMMARY
In summary, we reverse the rejection of claims 1-9 and 18-20 under
35 U.S.C. § 103(a) as obvious over Susaki and Naito.
We affirm the rejection of claim 10 under 35 U.S.C. § 103(a) as
obvious over Susaki and Naito. Pursuant to 37 C.F.R. § 41.37(c)(1), we also
affirm the rejection of claims 11-17 as these claims depend from claim 10
and were not argued separately.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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