Ex Parte Sugimoto et al

Patent Trial and Appeal Board

Jul 28, 2017

12965763 (P.T.A.B. Jul. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/965,763 12/10/2010 Masahiro Sugimoto 10086453US01 7457
34904 7590 08/01/2017
CANON U.S.A. INC. INTELLECTUAL PROPERTY DIVISION
15975 ALTON PARKWAY
IRVINE, CA 92618-3731
EXAMINER
VALENCIA, ALEJANDRO
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
mklein@cusa.canon.com
skalmino v @cusa.canon.com
IPDocketing @cusa.canon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte MASAHIRO SUGIMOTO, AKIRA KID A, and
MASAHARU UEDA1
Appeal 2016-005385
Application 12/965,763
Technology Center 2800
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
MERRELL C. CASHION JR., Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s non-
final rejection of claims 1 and 4—6. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
As a preliminary matter, we note Appellants contend that claim 19 is
pending and is presumed to be rejected under 35 U.S.C. § 103(a) (App. Br.
9-10). Appellants attempted to add claim 19 to the application in the After-
1 According to Appellants, the real party in interest is Canon Kabushiki
Kaisha. See Appeal Br. 3.
Appeal 2016-005385
Application 12/965,763
Final Office Action Amendment filed January 23, 2013. The Examiner
indicated in the Advisory Action dated February 1, 2013 that the amendment
would not be entered.
Appellants subsequently filed a Request for Continued Examination
(RCE) dated February 5, 2013 and added claim 19 in an accompanying
amendment. In a Non-Final Office Action dated May 28, 2014, the
Examiner erroneously indicated that claim 19 was rejected on the Office
Action Summary form, but did not list claim 19 under any rejection in the
Office Action. Further, the Index of Claims dated September 9, 2014 filled
out by the Examiner indicated that claim 19 was drawn to a non-elected
invention. Moreover, the Examiner did not list claim 19 as rejected in the
Office Action Summary in Final Office Action dated September 9, 2014.
Though Appellants state that claim 19 is pending, they did not present any
argument that claim 19 was subject to any rejection in the Amendment filed
December 8, 2014 along with the Request for Continued Examination.
Although the Examiner erred in listing claim 19 as being rejected in
one Office Action, the Examiner indicated in subsequent Office Actions that
claim 19 was pending and not rejected. Appellants did not question the
Examiner as to the status of claim 19 or under what ground it is rejected in
the subsequent amendments and responses filed. Accordingly, we find the
Examiner’s error regarding the correct status of claim 19 to be harmless. It
was clear from the prosecution record that claim 19 was not included by the
Examiner in any rejection, and Appellants had the opportunity to raise this
issue, but did not, with the Examiner prior to appeal. We determine that
claim 19 is directed to a non-elected invention, and we will not consider it
on appeal.
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Application 12/965,763
Appellants’ invention is directed to a printing apparatus which
includes a recording head to which humidifying gas is supplied (Spec. 11).
Claim 1 is illustrative:
1. An apparatus, comprising:
a first recording head unit and a second recording head
unit arranged in a conveying direction, each of the recording
head units including a print head with ink nozzles and a head
housing accommodating the print head;
a conveying unit which includes a pair of rollers
consisting of a first roller and a second roller, the pair of rollers
supporting the sheet from both sides between a recording
position of the first recording head unit and a recording position
of the second recording head unit, the first roller being disposed
between the first and second recording head units;
a holder which holds the first and second recording head
units;
a recording housing which accommodates the first and
second recording head units and the holder;
a sealing member made of an elastic material, the sealing
member being disposed in a clearance between the holder and
each of the head housings of the first and the second recording
head units to form an airtight seal; and
a humidifying unit which supplies humidifying gas to a
narrow space where the ink nozzles of the first and the second
recording head units are exposed,
wherein the humidifying gas is introduced into the
recording housing and is not introduced into inside of each of
the head housings, and
wherein each of the head housings accommodates a
circuit board for the print head, and a drawing port is formed on
the head housing to draw out wire harnesses connected to the
circuit board from the head housing.
Appellants appeal the following rejections:
1. Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shimoda (US 2010/0079545 Al, published Apr. 1, 2010) in view of
Akune (US 2007/0070103 Al, published Mar. 29, 2007), Nagashima
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Application 12/965,763
(US 7,604,332 B2, issued Oct. 20, 2009), and Ninomiya (US
4,774,532, issued Sept. 27, 1988).
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shimoda in view of Akune, Nagashima, Ninomiya, and Kaye (US
6,409,251 Bl, issued June 25, 2002).
3. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Shimoda in view of Akune, Nagashima, Ninomiya, Kaye, and
the legal precedent set forth in the Manual of Patent Examining
Procedure (MPEP) § 2144.04.
FINDINGS OF FACT & ANAFYSIS
REJECTION (1)
Appellants argue that Shimoda, Akune, Nagashima, and Ninomiya
each are missing certain limitations required by claim 1 (App. Br. 6—7).
Appellants contend that Shimoda does not teach explicitly a sealing member
made of an elastic material with the sealing member being disposed in a
clearance between the holder and each of the head housings of the first and
second recording head units to form an airtight seal (id. at 6). Appellants
argue that modifying the bottom surface 500a of Shimoda’s head holder 500
to be an elastic material would have rendered Shimoda’s head holder
unsatisfactory for its intended purpose because Shimoda’s head holder
would not be rigid enough to hold the ink heads 110a (Reply Br. 5, 6—7).
Appellants argue that head holder surface 500a in Shimoda is not disposed
in a clearance between the holder and each of the head housings of the first
and second recording head units (id. at 7). Appellants contend that a
clearance is a gap between insertion opening 107 and side surfaces of the
recording head unit 2. Id. Appellants contend that, since head holder
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Application 12/965,763
bottom surface 500a is attached integrally to the head holder 500, the head
holder bottom surface 500a cannot form an airtight seal by being disposed in
a clearance between the head holder 500 and the recording unit head. Id.
Appellants argue the Examiner finds Shimoda’s rollers 161 and 162
correspond to the first and second recording head units (id. at 6). Appellants
contend that Shimoda’s Figure 2 shows that the bottom surface of head
holder 500a is located far away from rollers 161 and 162 and, thus, the
surface 500a cannot provide an airtight seal (id. at 7). Appellants argue that
the Examiner has not established via official notice that one of ordinary skill
would know that elastic materials are sealants, Akune teaches an elastic
material, and that Ninomiya would have suggested using an elastic sealant
(id. at 2-4).
Appellants’ arguments are not persuasive because they are based on a
misunderstanding of the Examiner’s rejection. The Examiner does not find
that Shimoda’s rollers 161 and 162 correspond to the ink heads. Rather, the
Examiner finds that Shimoda’s Figure 3B shows the first printhead is closest
to supply roller 161 and the second recording head unit is closest to take-up
roller 162 (Non-final Act. 3). Shimoda’s ink heads are labelled 110a, which
include a series of ink heads that are close to rollers 161 and 162. The ink
heads 110a are positioned in attachment openings 500b formed in the bottom
surface 500a (Shimoda 1 53). The Examiner’s rejection is not based upon
substituting Akune’s sponge-like material or Ninomiya’s elastic seal
material for the bottom surface 500a of the head holder in Shimoda. Instead,
the Examiner concludes that it would have been obvious to use rubber as a
sealing material in Shimoda’s device because rubber was well known as a
good moisture sealant (Non-final Act. 6). The Examiner finds that using
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Akune’s teaching to place a sponge-like sheet around the perimeter of the
insertion holes of each of the print heads and Ninomiya’s use of an elastic
seal to prevent moisture penetration to modify Shimoda’s sealing member
(i.e., 500a that has openings 500b) would have been obvious (Ans. 4). We
understand the Examiner’s rejection to propose using Akune’s sponge-like
sheet to surround Shimoda’s insertion holes 500b to provide a seal to block
ink mist. When Shimoda’s head holder is modified according to the
Examiner’s proposed combination of Akune’s sponge material with
Shimoda’s seal member (i.e., 500a), the sponge-like material would
surround the attachment openings 500b and be positioned between and in
any space that exists between a first ink head in an opening 500b and a
second ink head in an opening 500b adjacent to the first ink head.
Appellants argue that Nagashima’s use of a humidifying unit in a
printer does not recognize the problem of having ink mist penetrate into the
head via a gap formed between the recording head and the support member
that holds the recording head (App. Br. 7). Appellants contend that since
neither Nagashima nor any of the other references recognized the same
problem as Appellants, there is no reason to combine the teachings of
Akune, Nagashima, and Ninomiya with Shimoda absent hindsight. Id.
Contrary to Appellants’ arguments, the Examiner provides reasons for
the modification of Shimoda with the teachings of Akune, Nagashima, and
Ninomiya (Non-Final Act. 2—6). The Examiner’s reasons for combining the
prior art need not be the same Appellants. In re Beattie, 974 F.2d 1309,
1312 (Fed. Cir. 1992) (“[T]he law does not require that the references be
combined for the reasons contemplated by the inventors.”). Appellants do
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not specifically contest the Examiner’s proposed reasons for combining
Akune, Nagashima, and Ninomiya with Shimoda (App. Br. 6—8).
Appellants argue that Shimoda’s printer uses a belt with vacuum holes
so that if Nagashima’s humidification device is combined with Shimoda’s
printer, the humidified air would simply be sucked out through the holes in
the belt {id. at 7—8). Appellants contend that the pair rollers supporting the
sheet from both sides as recited in claim 1 in place of the vacuum-suction
belt prevent the removal of the humidified air (App. Br. 7; Reply Br. 5—6).
Appellants’ arguments attack the references individually instead of
addressing what the combined teachings of the prior art would have
suggested to the ordinarily skilled artisan. In re Keller, 642 F.2d 413, 425
(CCPA 1981). In this case, the Examiner finds that Ninomiya would have
suggested using rollers that support the material on both sides (Non-final
Act. 6). In other words, the Examiner modifies Shimoda’s printer to use
Ninomiya’s rollers that support the fed media and the vacuum belt on both
sides. Although Appellants’ argue that Ninomiya does not teach a
conveying device as recited in claim 1, Appellants’ arguments do not
address this combination of the prior art or specifically contest the
Examiner’s findings regarding Ninomiya (App. Br. 7).
On this record, we affirm the Examiner’s § 103(a) rejection over
Shimoda in view of Akune, Nagashima, and Ninomiya.
REJECTIONS (2) AND (3)
Regarding rejection (2), Appellants argue that Kaye (i.e., automobile
window) is not in the same field of endeavor as Appellants’ invention (i.e., a
printing apparatus) (App. Br. 8).
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Regarding rejection (3), in addition to arguing that Kaye is in a
different field of endeavor, Appellants further contend that the combined
teachings of Shimoda, Akune, Nagashima, Ninomiya, and Kaye fail to teach
all the structure recited by claim 6 {id. at 9).
The Examiner acknowledges that Kaye is directed to a window and
not an inkjet device (Non-final Act. 7). The Examiner finds that Kaye
teaches how to use a compliant material to seal any interface between two
bodies so as to join them in an airtight fashion. Id. In other words, the
Examiner finds that Kaye’s teachings are reasonably pertinent to Appellants’
problem of providing an airtight seal (Ans. 6). Appellants’ argument does
not show why Kaye’s teachings would not have been reasonably pertinent to
Appellants’ problem. Moreover, Akune teaches applying an elastic (i.e.,
sponge-like material) around the mounting hole to provide a seal and fill any
gap formed therebetween (Akune 1 57).
Regarding Appellants’ additional rejection (3) argument, Appellants
have not shown what structure of claim 6 is missing from the combination of
Shimoda, Akune, Nagahima, Ninomiya and Kaye. Although Appellants
argue that Akune’s structure is different, no specific difference between the
structure of claim 6 and the Akune is pointed out by Appellants.
On this record, we affirm the Examiner’s § 103 rejections (2) and (3).
DECISION
The Examiner’s decision 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)(l)(iv).
ORDER
AFFIRMED
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