Ex Parte Sekino et al

Patent Trial and Appeal Board

Jan 8, 2016

12898081 (P.T.A.B. Jan. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/898,081 10/05/2010
23623 7590 01/12/2016
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.
TOSHP189USF 3157
EXAMINER
EV ANIS KO, LESLIE J
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
01112/2016 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,
KIYOT AKA NIHASHI, TAKE SHI HIYOSHI,
TSUYOSHI SANADA, and AK.IRA SUZUKI
Appeal2014-002918
Application 12/898,081
Technology Center 2800
Before: CATHERINE Q. TIMM, BEYERL YA. FRANKLIN, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek review under 35 U.S.C. § 134 from the Examiner's
final rejection of claims 1-3 under 35 U.S.C. § 103(a). We have jurisdiction
under 35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
1 In our opinion below, we refer to the Final Office Action filed on March
28, 2013 (Final), the Appeal Brief filed August 28, 2013 (Br.), and the
Examiner's Answer filed October 9, 2013 (Ans.).
2 Appellants identify the real party in interest as Toshiba Tee Kabushiki
Kaisha (Japan), the assignee of the subject patent application. Br. 2.
Appeal2014-002918
Application 12/898,081
STATEMENT OF CASE
The claims are directed to printing apparatus. Br. 3. Claim 1 is
illustrative of the claimed subject matter and is reproduced below, with the
disputed claim limitation emphasized:
1. A printing apparatus comprising:
a thermal recording paper conveyance mechanism which
conveys thermal recording paper along a paper conveyance
path;
a first thermal head which is provided along the paper
conveyance path, and is arranged to face a first surface side of
the paper conveyance path;
a first platen roller which is arranged to face the first
thermal head across the paper conveyance path;
a second thermal head which is provided along the paper
conveyance path and on a supply side of the thermal recording
paper with respect to the first thermal head, and is arranged to
face a second surface side of the paper conveyance path;
a second platen roller which is arranged to face the
second thermal head across the paper conveyance path;
a first drive mechanism which drives the first platen
roller;
a second drive mechanism which drives the second
platen roller; and
a control mechanism which drives the first drive
mechanism and the second drive mechanism in a synchronous
manner, wherein the first platen roller differs from the second
platen roller in a feed speed of the thermal recording paper, and
wherein the first platen roller applies tension to the thermal
recording paper so that the thermal recording paper is
provided to the second platen roller in a first paper feed
position and the thermal recording paper is provided to the first
platen roller in a second paper feed position.
Claims Appendix at Br. 8
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Appeal2014-002918
Application 12/898,081
Claim 1 stands rejected under 35 U.S.C §103(a) as being unpatentable
over the combination of Mitsushima 3 and Y ahagi. 4 In addition, claims 2 and
3 stand rejected under 35 U.S.C. §103(a) as being unpatentable over
Mitsushima in view of Y ahagi and in further view of Imaseki. 5
Appellants provide no substantive argument as to the separate
patentability of claims 2 and 3 and instead, Appellants confine their
argument to the emphasized language found in claim 1 above. The issue
arising is the same for all the claims, and it will suffice for us to focus our
discussion on the rejection of claim 1 to resolve the issue on appeal.
OPINION
Claim 1 recites a printing apparatus comprising eight structural
components: a thermal recording paper conveyance mechanism, a first
thermal head, a first platen roller, a second thermal head, a second platen
roller, a first drive mechanism, a second drive mechanism and a control
mechanism. Claims Appendix at Br. 8.
There is no dispute that Mitsushima teaches the structural limitations
ofClaim 1, with the exception of a control mechanism. Final 2-3. The
Examiner finds, and Appellants do not dispute, that the control mechanism is
inherently present in Mitsushima by virtue of the synchronous drive of the
two drive mechanisms. Id. at 3. The Examiner also finds that Mitsushima
3 Mitsushima et al., JP 59-68273, published April 18, 1984. In this Decision
on Appeal, we refer to the English translation of the Abstract, which is of
record in the instant Appeal (hereinafter "Mitsushima").
4 Yahagi et al., JP 2000-034043, published February 2, 2000. In this
Decision on Appeal we refer to the English translation dated March 15,
2012, which is of record in the instant Appeal (hereinafter "Yahagi").
5 Imaseki et al., U.S. 5,172,989, issued December 22, 1992 (hereinafter
"Imaseki ").
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Appeal2014-002918
Application 12/898,081
teaches that the first platen roller inherently applies tension to the thermal
paper and provides the paper to the second platen roller in a first paper feed
position and to the first platen roller in a second feed position. Final 3--4.
Mitsushima however fails to teach "the first and second platen rollers
differing in feed speed of the recording paper." Final 4. But, according to
the Examiner, Yahagi teaches that a control mechanism that places "priority
on a feed operation of one of the platen rollers to a feed operation of the
other platen roller, when the first platen roller differs from the second platen
roller in a feed speed is well known in the art." Final 4. Appellants do not
oppose this finding.
Appellants maintain that neither Mitsushima nor Yahagi, taken alone
or in combination, teach the above-emphasized language of Claim 1. Br. 4.
Specifically, Appellants argue that merely disclosing that the paper is (1)
rightwardly fed by the first platen roller or (2) fed to a second platen roller
and a first platen roller in a horizontal position, does not establish "wherein
the first platen roller applies tension to the thermal recording paper so that
the thermal recording paper is provided to the second platen roller in a
first paper feed position and the thermal recording paper is provided to the
first platen roller in a second paper feed position, as presently claimed."
Id. 4-5 (emphasis in original).
Thus, the issue on appeal becomes whether the Examiner reversibly
erred in finding that Mitsushima inherently discloses a printing apparatus
"wherein the first platen roller applies tension to the thermal recording paper
so that the thermal recording paper is provided to the second platen roller in
a first paper feed position and the thermal recording paper is provided to the
first platen roller in a second paper feed position."
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Appeal2014-002918
Application 12/898,081
Based upon a preponderance of the evidence, we determine that
Appellants have not shown a reversible error in the Examiner's rejection.
Our reasons follow.
As correctly observed by the Examiner, the two paper feed positions
are undefined with respect to the arrangement or location of the positions
relative to the other disclosed structures. Ans. 2-3. As a result, the
Examiner reasonably interprets (and Appellants do not disagree) the first and
second feed positions to essentially be the printing nip formed between each
of the printheads and its respective platen roller. Id. at 3. As correctly found
by the Examiner, "the driving of the platen rolls of Mitsushima et al. will
inherently apply tension to the paper to at least some extent and the paper is
clearly provided to the first and second platen rolls at each of the printing
nips (i.e., paper feed positions)." Id. Moreover, the figures of Mitsushima
visually depict tension applied to the paper by the platen rollers-the paper
is held taut between the platen rollers. Thus, the Examiner has established a
prima facie case of inherency.
Appellants' reliance on functional features of the claimed apparatus to
overcome the prior art does not meet this requisite burden. It has long been
held that "apparatus claims cover what a device is, not what a device does."
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). An inventor of a structure (machine or article of manufacture) is
entitled to benefit from all of its uses, even those not described, Roberts v.
Ryer, 91 U.S. 150, 157 (1875), and conversely, patentability of the structure
cannot tum on the use or function of the structure. In re Michlin, 256 F.2d
317, 320 (CCPA 1958). Structures such as machines and articles of
manufacture must be distinguished from the prior art on the basis of
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Appeal2014-002918
Application 12/898,081
structure, and where there is reason to believe that the structure of the prior
art is inherently capable of performing the claimed function, the burden
shifts to the applicant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d
212, 215 (CCPA 1981). Here, Appellants failed to show how the claimed
function patentably distinguishes the Appellants' printing apparatus from
that of Mitsushima. Accordingly, Appellants have not carried their burden.
CONCLUSION
For the reasons provided in the Examiner's Answer and the reasons
stated above, we sustain the Examiner's obviousness rejection of claims 1-3
over Mitsushima and Y ahagi.
DECISION
The decision of the Examiner to reject claims 1 through 3 is 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) (2009).
AFFIRMED
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