Ex Parte Sekino et alDownload PDFPatent Trial and Appeal BoardFeb 29, 201611681910 (P.T.A.B. Feb. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/681,910 0310512007 23623 7590 03/03/2016 AMIN, TUROCY & WATSON, LLP 127 Public Square 57th Floor, Key Tower CLEVELAND, OH 44114 FIRST NAMED INVENTOR Toshiharu Sekino 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. TOSHP187US 8136 EXAMINER CULLER, JILL E ART UNIT PAPER NUMBER 2854 NOTIFICATION DATE DELIVERY MODE 03/03/2016 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): docketl@thepatentattorneys.com swati@thepatentattorneys.com hmckee@thepatentattorneys.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOSHIHARU SEKINO, KENJI EOKA, KOUSUKE TAKAHASHI, TAKESHI HIYOSHI, TSUYOSHI SANADA, and AKIRA SUZUKI Appeal2014-005954 Application 11/681,910 Technology Center 2800 Before JON M. JURGOV AN, KEVIN C. TROCK, and MICHAEL M. BARRY, Administrative Patent Judges. JURGOV AN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek review under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 2, and 21-24, the only claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. Appeal2014-005954 Application 11/681,910 STATEMENT OF THE CASE The claims are directed to a printer including platen rollers and thermal heads connected to harnesses. (Spec. 10-12). Claim 1, the only independent claim, is reproduced below with argued limitation emphasized, and is illustrative of the claimed subject matter: 1. A printer comprising: a first print unit comprising a first thermal head configured to print first data on a first side of a rolled paper at a first angle to a paper feeding path, a first harness secured to the first thermal head such that the first harness projects away from the paper feeding path due to the first angle to the paper feeding path of the first thermal head and a first platen roller; a second print unit located downstream from the first print unit comprising a second thermal head configured to print second data on a second side of the rolled paper at a second angle to the paper feeding path, a second harness secured to the second thermal head such that the second harness projects away from the paper feeding path due to the second angle to the paper feeding path of the second thermal head and a second platen roller; a main unit, comprising a first main unit half which is configured to hold the rolled paper and a second main unit half which is configured to eject the rolled paper comprising the first platen roller and the second thermal head; a cover which covers the main unit and includes an upper frame, comprising a first cover half and a second cover half which is configured to eject the rolled paper comprising the first thermal head and the second platen roller; and a hinge mechanism located between the first main unit half and the first cover half, which allows the cover to rotate along a rotation locus between an open state and a closed state, wherein the first thermal head and the first harness are rotatable in a first direction along the rotation locus and the second thermal head and the second harness are rotatable in a second direction along the rotation locus opposite to the first direction, and wherein a distance between a first printing-start position of the first thermal head and a second printing start position of 2 Appeal2014-005954 Application 11/681,910 the second thermal head is less than the diameter of the first platen roller. REJECTIONS Claims 1, 2, and 21-24 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (Final Act. 2). Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) based on Shiozaki (US 6,068,419; May 30, 2000) and Oka (US 5,452,959; Sept. 26, 1995). (Final Act. 3---6). Claims 1, 2, and 21-24 stand rejected under 35 U.S.C. § 103(a) based on Lyons (US 2007/0211132 Al; Sept. 13, 2007) and Oikawa (US 5,422,660; June 6, 1995). (Final Act. 6-9). Claims 21-24 stand rejected under 35 U.S.C. § 103(a) based on Shiozaki, Oka, and Baranyi (US 4,685,815; Aug. 11, 1987). (Final Act. 9- 1 {\\ lVJ. ANALYSIS Reviewing Appellants' arguments, we are not persuaded the Examiner errs in the rejections. We adopt as our own the findings and reasons set forth by the Examiner in the Final Office Action and the Examiner's Answer in response to Appellant's Appeal Brief (see Final Act. 2-10; Ans. 2-5) unless otherwise indicated. We highlight and address specific findings and arguments for emphasis as follows. 35 US.C. § 112, First Paragraph Appellants argue the Specification provides adequate support under § 112, first paragraph, for the limitation "wherein a distance between a first 3 Appeal2014-005954 Application 11/681,910 printing start position [of the first thermal head and a second printing start position] of the second thermal head is less than the diameter of the first platen roller." (App. Br. 4) (emphasis added). As support for the claimed limitation, Appellants cite the Background section of the Specification stating the printing-start positions of the first and second print rollers can be decreased to reduce the unprintable region by reducing the diameter of the platen roller of the second printing unit. (Spec. 4). However, according to the Specification, this results in the problem that the nip between the platen roller and thermal head of each printing unit cannot be wide enough to accomplish high quality printing. (Id.). Elsewhere, the Specification states the width of the second platen 321 is smaller than the diameter of platen roller 311 to bring the heat-generating elements of the thermal heads closer together. (Spec. 44). To satisfy the written description requirement, a specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir. 1991). Specifically, the specification must describe the claimed invention in a manner understandable to a person of ordinary skill in the art and show that the inventor actually invented the claimed invention. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). The cited sections of the Specification fall short of providing a written description supporting the claimed limitation. As the Examiner noted, the cited sections fail to relate distance between print start positions of the 4 Appeal2014-005954 Application 11/681,910 thermal heads to the first roller's diameter. Thus, we are not persuaded the Examiner errs in the rejection. 35 US. C. § 103 (a) - Shiozaki and Oka Claims 1, 2 Appellants contend Shiozaki and Oka cannot be combined to show a printer with the distance between the printing start positions as recited in the claimed limitation. (App. Br. 6). Appellants also argue claim 1 solves a long-felt but unsolved need in the printing industry by reducing the unprintable region of a paper. (Id.). Reducing the distance between thermal heads is more than mere design choice, according to Appellants, because the unprintable region can be reduced thereby without impairing printing performance. (App. Br. 7). The Examiner states the distance between print heads is a relative matter, dependent on the size and shape of the remaining parts of the system. (Ans. 3--4). Therefore, according to the Examiner, their placement is a design choice, based on rearrangement of parts, which would not change the operation of the apparatus in any unexpected way. (Id.). Regarding long- felt need, the Examiner states reducing distance between the two printing start points merely states an obvious solution to the problem without presenting any structure that makes this possible. (Ans. 4). Also, the Examiner notes the claimed limitation could be satisfied by enlarging the size of the platen rollers, which would not solve the problem. Furthermore, the Examiner notes that the problem may be solved by printing at different times, which does not require moving the print heads at all. (Id.). The Examiner's position is the more persuasive. The argued limitation does not establish the printing start positions of the thermal heads are necessarily any closer together than in the prior art, or that certain nip 5 Appeal2014-005954 Application 11/681,910 characteristics between the platen rollers and thermal heads are obtained to achieve high quality printing. Thus, Appellants have not established the claimed printing start positions, thermal heads, and platen rollers solve the stated problem of reducing the unprintable region to avoid wasted paper. As claimed, these elements are a mere matter of design choice in the implementation of teachings of Shiozaki and Oka. See In re Kuhle, 526 F.2d 553 (CCPA 1975). Furthermore, what Appellants argue the claimed invention solves as a long-felt need in industry, namely, reducing the distance between thermal print heads while achieving high quality printing, cannot be accomplished necessarily by what is claimed. Objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support. In re Law, 303 F.2d 951, 954 (CCPA 1962); In re Kennedy, 436 F.2d 1394, 1399(CCPA1971); andin re McLaughlin, 443 F.2d 1392, 1396-97 (CCPA 1971). Moreover, "[e]stablishing long-felt need requires objective evidence that an art-recognized problem existed in the art for a long period of time without solution." Ex Parte Jell a, 90 USPQ2d 1009, 1019 (BPAI 2008), 2008 WL 5693899 (precedential). Appellants identify no such evidence in the record. Mere arguments of counsel cannot take the place of factually supported objective evidence. In re Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996). Accordingly, we are not persuaded by Appellants' arguments that the Examiner errs in the rejection. 35 USC§ 103(a)-Lyons and Oikawa Claims 1, 2, and 21-24 Appellants assert the argued limitation is not obvious over Lyons and Oikawa. (App. Br. 7-8). Appellants argue Lyons and Oikawa fail to teach 6 Appeal2014-005954 Application 11/681,910 or suggest a printer with distance between the printing start positions as defined in claim 1. (Id.). Appellants argue this feature satisfies a long-felt need in industry by reducing the unprintable region and its accompanying wasted paper. (Id. at 8). We agree with the Examiner that reducing the distance between print start points is an obvious solution, and that the argued limitation fails to state any particular structure that necessarily makes it possible to reduce this distance. For the reasons set forth by the Examiner, we are not persuaded of error in finding claims 1, 2, and 21-24 are obvious as mere design choice in view of the reference teachings. See Kuhle, supra. Moreover, Appellants' assertion the claimed limitation meets a long-felt need in the industry, is not commensurate in scope with the claims as written because they do not recite any structure that necessarily satisfies the stated long-felt need. See Law, Kennedy, and McLaughlin, supra. Accordingly, we are not persuaded of Examiner error. "l ~ T T r1 r--, t' 'f r\ "l / \ r11 • 1 • /""'\ 1 1 T\ • jJ U.L). c. s 1 Uj (a) - L)nzoza1a, u1w, ana liaranyz Claims 1, 2, and 21-24 Appellants argue Baranyi fails to teach or suggest the deficiencies of Shiozaki and Oka. (App. Br. 9). The Examiner responds, and we agree, the argued limitations are met by Shiozaki and Oka. Accordingly, there is no deficiency in the rejection of claim 1 that the Examiner needed Baranyi to supplement. Reply Brief Arguments Appellants present new arguments and evidence in the Reply Brief that were not raised earlier on appeal. Specifically, Appellants argue the cited references fail to teach the limitation of claim 1 reciting "wherein the first thermal head and the first harness are rotatable in a first direction 7 Appeal2014-005954 Application 11/681,910 along the rotation locus and the second thermal head and the second harness are rotatable in a second direction along the rotation locus opposite to the first direction" in addition to the limitation argued above. (Reply Br. 8-11). Reviewing the Appeal Brief, we see no place where these Reply Brief arguments are raised, and these arguments appear not to be responsive to any new argument raised in the Examiner's Answer. The Examiner has not had any opportunity to respond to these arguments. Furthermore, Appellants provide no showing of good cause to explain the late submission of these arguments. Given the circumstances, we do not consider these arguments. (See 37 C.F.R. § 41.41(b)(2)). Appellants' remaining Reply Brief arguments were addressed previously, and we are not persuaded of Examiner error for the reasons stated. DECISION For the above reasons, the Examiner's rejections of claims 1, 2, and 21-24 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation