Ex Parte Spencer

Board of Patent Appeals and Interferences

Mar 23, 2009

11158149 (B.P.A.I. Mar. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STAN A. SPENCER
____________

Appeal 2009-1650
Application 11/158,149
Technology Center 2800
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Decided:1 March 23, 2009
____________

Before CHUNG K. PAK, KAREN M. HASTINGS and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-1650
Application 11/158,149

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 17-19. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

Appellant claims a color printing system of integrated plural printers.
Representative claim 17 reads as follows:
17. A color printing system of integrated plural printers of different
color print engines comprising:

an interconnecting internal sheet path system in which a single color
imaging bar accessible to all said print engines and positioned to receive, via
an internal sheet path, original documents or sheets of said different color
print engines to be electronically imaged from an external sheet feeder, and

said color imaging bar to function in a separate mode as a color
spectrophotometer enabled to ensure color printing consistency between
respective said sheets printed by said plural printers and different color print
engines,

said consistency provided by calibration of said sheets being fed
from the said various color print engines to the same color imaging bar and
bar location.

The prior art set forth below is applied by the Examiner in the § 103
rejection before us as evidence of unpatentability:
Keller US 5,568,246 Oct. 22, 1996
Mestha US 5,884,118 Mar. 16, 1999

The Examiner rejected claims 17-19 under 35 U.S.C. § 103(a) as
being unpatentable over Mestha in view of Keller.
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Appellant has not separately argued any of the claims therein with any
reasonable degree of specificity (App. Br. 5-10; Reply Br. 5-7). In this
regard, Appellant in essence merely points out what each of dependent
claims 18 and 19 recite, which is not a separate argument for patentability
(App. Br. 10). 2 Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we
select claim 17 as the representative claim on which our discussion will
focus.
ISSUE
The sole issue on appeal is: has Appellant shown that the Examiner
reversibly erred in finding the cited references collectively disclose or
suggest the use of “a single color imaging bar accessible to all [i.e., more
than one] print engines” as required by claim 17?
We answer this question in the negative.
FINDINGS OF FACT (FF)
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact as necessary appear in the Analysis
portion of the opinion.
Appellant’s Specification states that the terms “in-line sensor array,
bar or scanner” are used interchangeably and that such a device is “capable
of electronically capturing the image of an original document” (Spec. 1,
para. [0003]).
Mestha describes a full width array color scanner 10 (i.e., a color bar;
see col. 2, ll. 36-44) which electronically images original documents and

2 As set out in 37 C.F.R. § 41.37(c)(1)(vii), “A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”
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Application 11/158,149

also functions in a separate mode as a color spectrophotometer to ensure
color printing consistency (col. 6, ll. 15-30).
Mestha fails to explicitly teach a plurality of print engines.
Keller exemplifies that printing systems comprising a plurality of
color print engines (200, 200a) with internal sheet feed paths (e.g., 112,
113), an external sheet feeder (123), and sheet inverters with sheet inversion
chutes (136) are known (see, e.g., Fig. 1; col. 4, ll. 46-50; col. 5, ll. 18-20).
Indeed, Appellant admits that tightly integrated plural printers or print
engines (TIPP) systems are known as exemplified in Keller (Spec. 2, para.
[0005]).
While Keller describes that the plural printers may be the same, Keller
also states “but they need not be” (col. 4, ll. 1-4; emphasis added).
The Examiner correctly found that Keller also teaches “that the
output of both print engines shares a single output or shares another system
(column 1, lines 34-37)” (Ans. 6; see also Ans. 10), which Appellant does
not dispute.
As also correctly found by the Examiner, one of ordinary level of skill
in the art would have inferred from the collective teachings of Mestha and
Keller that “when replacing the single print engine of Mestha . . . with plural
engines of Keller . . ., the sheets from the plural engines will be fed to the
same [single] output or system such as the same color imaging bar of
Mestha” (id.).
PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
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2006). Therefore, we look to Appellant’s Brief to determine if Appellant
has shown error in the proffered prima facie case.
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1734 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 3
(1966).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966).
It is a basic principle that the question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made. See Merck & Co. Inc., v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989).
Nor is it necessary that suggestion or motivation be found within the
four corners of the references themselves. “The obviousness analysis cannot
be confined by [the] formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of . . . the
explicit content of issued patents.” KSR, 127 S. Ct. at 1741. The Supreme
Court also noted in KSR that an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 1740-1741. See
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also, DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation need not be
found in the references sought to be combined, but may be found in any
number of sources, including common knowledge, the prior art as a whole,
or the nature of the problem itself.”).
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425
(CCPA 1981); See also, In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is
well settled that the mere duplication of parts has no patentable significance
unless a new and unexpected result is produced . . . .”).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
ANALYSIS
We agree with the Examiner that the claimed invention would have
been obvious over the combined teachings of Mestha and Keller.
A person having ordinary skill in the art would have found it obvious
to modify Mestha to use plural print engines in order to gain the known
advantages and efficiencies of plural color print engines as taught in Keller.
and thus arrive at Appellant's claimed invention as set forth in claim 17
(Ans. 3-4).
The arguments made by Appellant focus on the point that each cited
reference individually fails to disclose all the elements of the present claims.
In particular, they contend that “Mestha is completely void of a system to
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ensure color printing consistency of a plurality of different print engines”
(App. Br. 6; emphasis in original; see also Reply Br. 6) and that “Keller . . .
does not teach or address anywhere the problem or issue of calibration of
these engines or their prints using a single color imaging bar for all print
engines” (App. Br. 9, emphasis in original; see also Reply Br. 6).
Appellant’s contentions, as well as their conclusion that the
combination would not result in the limitations of claim 17, but rather would
result in a system wherein each print engine had its own color bar (App. Br.
9) are not persuasive of reversible error. Appellant is attacking the
obviousness of the combination merely by improperly attacking the
references individually, when the rejection is instead based upon the
combined teachings of the references.
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. The
Supreme Court noted in KSR that although the teaching, suggestion, and
motivation test “captured a helpful insight,” an obviousness analysis “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 127 S.
Ct. at 1741.
Appellant’s contention that Keller teaches that each printer must be
identical and thus each must have its own color bar is not well taken (App.
Br. 9; Reply Br. 6). To the contrary, Keller describes that the printers “need
not be” the same (col. 4, ll. 1-4). Furthermore, one of ordinary skill in the
art “is also a person of ordinary creativity, not an automaton”. KSR, 127 S.
Ct. at 1742. The combined teachings of Mestha and Keller would have led
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one of ordinary skill in the art, through no more than ordinary creativity, to
use the plural print engines of Keller to replace the single print engine of
Mestha, for the expected improvements of a plural print engine as taught in
Keller, especially since both Mestha’s single print engine and Keller’s
plural print engines can share the same [single] output or system, such as
the same color imaging bar. See KSR, 127 S. Ct. at 1741 (a “court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ”).
Further, one of ordinary skill in the art is presumed to have skills apart
from what the prior art references expressly disclose. See In re Sovish, 769
F.2d 738, 742 (Fed. Cir. 1985).
One of ordinary skill in the art would have appreciated that the use of
a common calibration device for multiple color print engines would have
been desirable in order to ensure consistency in the color printing. Appellant
did not dispute the Examiner’s finding that Keller teaches “that the output of
both print engines shares a single output or shares another system (column 1,
lines 34-37)” (Ans. 6; see also Ans. 10). This finding implies that a single
color bar may be used for multiple print engines. Accordingly, one of
ordinary level of skill in the art would have appreciated that “when replacing
the single print engine of Mestha . . . with plural engines of Keller . . . , the
sheets from the plural engines will be fed to the same output or system such
as the color imaging bar of Mestha”, as stated by the Examiner (id.).
Appellant has not addressed the Examiner’s reasonable position in this
regard, and accordingly has failed to provide any credible reasoning or
evidence to dispute the Examiner’s findings. We note that Keller is
commonly assigned to the same assignee (Xerox Corp.) as the present case
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on appeal. Appellant would therefore be in the best position to explain why
Keller’s description “to a shared single output and/or finisher” (col. 1, ll. 34-
37) does not reasonably support the aforementioned Examiner’s findings and
conclusion.
Furthermore, Appellant has presented no evidence that the use of
plural print engines all calibrated via a single color bar was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” See, e.g., Leapfrog Enter., Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007).
We have considered Appellant’s other arguments in the Appeal Brief
and Reply Brief, but do not find any of them persuasive.
We therefore determine that Appellant has not shown that the
Examiner reversibly erred in establishing a prima facie case of obviousness
for claim 17.
ORDER
The rejection of claims 17-19 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Mestha and Keller is affirmed.
The decision of the Examiner is affirmed.

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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
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JAMES J. RALABATE
5792 MAIN ST.
WILLIAMSVILLE, NY 14221
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