Ex Parte Suzuki

Patent Trial and Appeal Board

Nov 24, 2015

12327903 (P.T.A.B. Nov. 24, 2015)

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.
12/327,903 12/04/2008 Yasuo Suzuki 09792909-7472 6019
26263 7590 11/24/2015
DENTONS US LLP
P.O. BOX 061080
CHICAGO, IL 60606-1080
EXAMINER
KOCH, GEORGE R
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
11/24/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YASUO SUZUKI
__________

Appeal 2013-010584
Application 12/327,903
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) the Examiner’s rejection
of claims 1–4 under 35 U.S.C. § 102(b), as being anticipated by Aroneo (US
2002/0097315 A1, published July 25, 2002). The Examiner also added a
new ground of rejection of claims 1–4 under 35 U.S.C. § 103(a) as obvious
over Aroneo.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

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Claim 1 is illustrative of the claimed subject matter (emphasis added):

1. A printer apparatus comprising:
a printing-medium conveying unit configured to convey a printing
medium;
a sheet conveying unit configured to convey a thermal transfer sheet
having at least an image protecting layer to be thermally transferred onto an
image on the printing medium;
a plurality of heating elements;
a thermal head in which the heating elements are linearly arranged in
a direction orthogonal to a conveyance direction in which the printing
medium is conveyed; and
a control unit operatively coupled to the thermal head and configured
to selectively apply different amounts of energy to the heating elements in
the thermal head so as to form an uneven pattern on the image protecting
layer,
wherein,
the control unit, in applying different amounts of energy to the
heating elements, is further configured to:
randomly divide a row of the heating elements in the thermal
head into a plurality of heating element groups each including at least
two adjacent heating elements,
apply the same amount of energy to heating elements included
in the same heating element group, and
apply different amounts of energy to respective adjacent
heating element groups.

App. Br. 13 (Claims Appendix).

ANALYSIS
After review of the respective positions provided by Appellant and the
Examiner, we agree with Appellant that the Examiner has not met the
burden of establishing anticipation in this case for the reasons stated by
Appellant in their Briefs. On the other hand, Appellant has not shown
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reversible error in the Examiner’s conclusion that the claimed subject matter
would have been obvious over the applied prior art.
We add the following for emphasis.
In the anticipation rejection, the Examiner interprets the claim
limitations “configured to” as language that does not add any structure (e.g.,
software or hardware programming) to the “control unit” element of claim 1
(Ans. 5, 6). We disagree.
Although it is well established that claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997),
in order to satisfy the functional limitations in an apparatus claim, however,
the prior art apparatus must be capable of performing the claimed function.
Id. at 1478. As such, to be capable of performing the functional limitations
in claim 1, the control unit must possess the necessary structure, hardware or
software, for example, the programming, to function as claimed. The
Examiner does not find that Areneo is programmed or otherwise structured
to function as claimed (Ans. 6 (the functional limitations do “not further
structurally define the claimed apparatus”)).
While it is possible to install software and/or hardware that would
allow Aroneo’s control unit to perform the functions of the control unit as
required in claim 1, the “configured to” language requires that the prior art
structure be capable of performing the function without further
programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v.
Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the
functional language is associated with programming or some other structure
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required to perform the function, that programming or structure must be
present in order to meet the claim limitation. Id.
As the Examiner has not established that Aroneo’s apparatus is
structurally identical to the claimed apparatus, we reverse the Examiner’s
§ 102(b) rejection.
However, the Examiner alternatively relies upon reasoning why one
of ordinary skill in the art would have been motivated to have configured the
control unit of Aroneo to function as claimed (see Ans. 3, 6).
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 Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). It is also well settled that a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom. See In re Fritch,
972 F.2d 1260, 1264–65 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826
(CCPA 1968).
As the Examiner points out, Aroneo does describe turning the heating
elements on and off to create any desired printed shape (Aroneo ¶ 30, 31;
Ans. 3, 6). Appellant’s arguments that the Examiner improperly concludes
that it was known to use random image data in order to create a desired
finish (e.g., glossy, matte, or textured finish) and that “‘uneven data can be
used to provide these finishes, and random pattern data can serve as a
minimum unit for forming such an uneven pattern.’” (Reply Br. 5; quoting
Ans. 3) is not persuasive. Notably, Appellant describes similar known prior
art (Spec. 1, 4 in its entirety (e.g., “select a desired finish, such as a glossy
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finish or a textured finish”; “uneven pattern for each printing line . . . so that
a desired uneven pattern is formed”; “ random pattern data . . . can be
generated”)). An applicant cannot defeat an obviousness rejection by
asserting that the cited reference(s) fail to teach or suggest elements which
the applicant has acknowledged are taught by the prior art. Constant v.
Advanced Micro-Device, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) and In
re Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (A statement by an applicant
that certain matter is prior art is an admission that the matter is prior art for
all purposes).
Accordingly, the Examiner’s determination that it would have been
within the level of ordinary skill in the art, using no more than ordinary
creativity, to have configured the control unit to randomly divide the heating
elements to create groups of two or more with different amounts of heat
applied to each group in order to have created a desired random pattern
appears to be well founded. See KSR, 550 U.S. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”);
Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009). (Under the flexible inquiry set forth by the
Supreme Court, the PTO must take account of the “inferences and creative
steps,” as well as routine steps, that an ordinary artisan would employ).
Thus, we affirm the Examiner’s § 103 rejection

DECISION
The Examiner’s decision is affirmed.

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ORDER
AFFIRMED

KRH