Ex Parte Suzuki et al

Patent Trial and Appeal Board

Dec 16, 2013

90011817 (P.T.A.B. Dec. 16, 2013)

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.
90/011,817 08/01/2011 Takashi Suzuki 055988/405501 1705
26610 7590 12/16/2013
STROOCK & STROOCK & LAVAN LLP
180 MAIDEN LANE
NEW YORK, NY 10038
EXAMINER
RALIS, STEPHEN J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/16/2013 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 SEIKO EPSON CORPORATION
____________

Appeal 2013-001500
Reexamination Control No. 90/011,817
Patent 5,158,3771
Technology Center 3900
____________

Before MAHSHID D. SAADAT, KEVIN F. TURNER, STEPHEN C. SIU,
and DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued October 27, 1992, based on Application 07/620,411, filed
November 30, 1990.
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Reexamination Control No. 90/011,817
Patent 5,158,377

2
This is an appeal under 35 U.S.C. § 134(b) from the Examiner’s
rejection of claims 83 and 84 of Patent 5,158,377 (hereinafter “’377
Patent”). Final Office Action mailed February 9, 2012 (hereinafter “Final
Rej.”). An oral hearing was conducted with the Patent Owner on March 20,
2013.
We have jurisdiction under 35 U.S.C. §§ 6(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
This ex parte reexamination proceeding was initiated by a
“REQUEST FOR REEXAMINATION” filed on August 1, 2011, by Third-
Party Requester, Glory South Software Manufacturing, Inc. (hereinafter
“GSSM”).
The ’377 patent describes dot matrix printer ink-supply systems.
Claim 83 on appeal reads as follows:
83. An ink-supply system for a dot-matrix printer,
comprising:
an ink-supply tank formed with an ink-supply
delivery port having an opening for the passage of ink
from said ink-supply tank;
an ink absorbing member formed of a porous
material mounted within said tank, said ink absorbing
member having a region facing said opening and being
compressingly contained by the ink-supply tank against
the ink-supply delivery port so that at least the region of
the ink absorbing member facing said opening is
compressed relative to at least another region of the ink
absorbing member; and
said ink absorbing member substantially filling
said ink-supply tank, said ink-supply tank including an
inner wall surface having projections to provide a space
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between said ink absorbing member and said wall
surface.

Requester proposes rejections of the claims over the following prior
art references:
Lotfallah US 3,966,336 June 29, 1976

Barta F.R. 2,229,320 Nov. 25, 1974

Appellant/Patent Owner appeals the Examiner’s adoption of the
rejection of claims 83 and 84 under 35 U.S.C. § 103(a) as obvious over the
combination of Barta and Lotfallah.2 Ans. 2-5; Final Action 11-14.
ISSUE
Did the Examiner err in finding that Barta and Lotfallah are valid
prior art?
Did the Examiner err in finding that Lotfallah teaches “an inner wall
surface having projections to provide a space between said ink absorbing
member and said wall surface,” as recited in claim 83?

ANALYSIS

Valid Prior Art
Requester proposed the rejection of claims 83 and 84 under 35 U.S.C.
§ 103(a) as obvious over the combination of Barta and Lotfallah. Req. for

2 The Examiner withdrew the adoption of the rejections of claims 83 and 84
as anticipated by Marozzi; as obvious over the combination of Koto and
Barta; and as obvious over the combination of Amberntsson and Barta. Ans.
5-15.
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Reexam 25-28. The Examiner adopted Requester’s rejection of these claims
for the same reasons as indicated by Requester. Final Rej. 11-14. However,
Patent Owner argues that the adoption of the rejection is in error because
neither of these references qualifies as valid prior art. App. Br. 30-31 and
36-39. In support of this position, Patent Owner argues that the references
are non-analogous art because they are not from the same field of endeavor
as the ‘377 Patent and the references are not “reasonably pertinent to the
particular problem with which the inventor [of the ‘377 Patent] is involved.”
App. Br. 37-38 (citing In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). We
disagree.
The Examiner finds that the ‘377 Patent’s title, along with the claims,
indicate that the relevant field of endeavor is related to “ink-supply
system[s] or inking device.” Ans. 15. Patent Owner argues that Examiner’s
finding is impermissibly broad and the relevant field of endeavor should be
limited to “ink cartridges for use with dot matrix printers.” App. Br. 37;
Reply Br. 2. Thus, Patent Owner argues that Barta’s nib recorders that are
used to draw lines on a paper and Lotfallah’s pen would not be considered to
improve ink jet printer cartridges. App. Br. 31 and 37-38; Reply Br. 2 and 4.
However, “[a] reference is reasonably pertinent if . . . it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.” In re Clay at
659. One of the stated objects of the invention in the ‘377 Patent is the
ability to supply a stable and consistent amount of ink. Col. 2, ll. 12-18.
Barta teaches, in the Specifications and claims, “a continuous inking device”
and “an inking device having an ink reservoir.” See also Ans. 16. Lotfallah
teaches an ink marking instrument/device in its claims and a system that
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insures “continued uniform writing, without starvation.” Col. 1, ll. 55-57;
see also Ans. 18-19. Therefore, we find that the evidence suggests that both
Barta and Lotfallah are within the same field of endeavor as the claimed
invention because they are all concerned with ink supplying systems or
devices that enable a steady distribution of ink.

Argued Limitations

Patent Owner next argues that Lotfallah does not teach “an inner wall
surface having projections,” as recited in claim 83. App. Br. 39; Reply Br.
5. Patent Owner argues that this claim limitation should be interpreted to
mean “a part of the inner wall surface that juts out,” and as a result, is not
taught by Lotfallah. App. Br. 39-40; Reply Br. 6. In reviewing the disputed
claims and the ‘377 Patent, we do not find sufficient evidence that requires
the claim limitation to be interpreted as argued by Patent Owner. As such,
Patent Owner’s arguments are not commensurate with the scope of the
claim. Thus, we agree with the Examiner that Lotfallah’s barrel portion is
equivalent to the claimed inner wall surface and Lotfallah’s space ribs or
channels are equivalent to the claimed projections. Ans. 19. As a result, we
agree with the Examiner that Lotfallah teaches that which is claimed. Ans.
19.

Patent Owner also argues that Lotfallah does not teach “a space
between said ink absorbing member and said wall surface,” as recited in
claim 83. App. Br. 40; Reply Br. 6-7. Patent Owner contends that
Lotfallah’s reservoir portion would inherently contain “an impermeable
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nonporous sleeve or wall surrounding” it because, otherwise, ink would leak
and the pen would not work appropriately. App. Br. 41; Reply Br. 7.
However, we agree with the Examiner that there is nothing in Lotfallah’s
Specification or Drawings that supports Patent Owner’s assertion. Ans. 21.
Even if there was evidence to show that the reservoir portion had a sleeve
around it, we would not be persuaded that the Examiner’s finding that
Lotfallah teaches that which is claimed would be in error. Claim 83 does not
preclude a sleeve around the reservoir portion as long as there is a space
between the reservoir and the wall surface. Additionally, here, as found by
the Examiner, the ribs/channels provide a space for air to vent to the rear of
the pen. Ans. 21. Thus, a space does exist between the wall and the ink
reservoir in Lotfallah, as required by the claim.

Patent Owner also argues that the purpose of Lotfallah’s ribs/channels
is to provide air to the “rear” of the reservoir in order to solve the problem of
“stick-slip” or “air locks” when the pen is inverted. App. Br. 41-42.
Therefore, Patent Owner contends that since the ‘377 Patent uses the space
to eliminate “ink flow irregularities caused by the expansion and contraction
of air pockets trapped within the ink-absorbing member,” Lotfallah solves a
different problem and one of ordinary skill in the art would not have looked
to Lotfallah for a solution to the problem. App. Br. 42. However, we agree
with the Examiner (Ans. 22) that even though another advantage may be
recognized by Patent Owner, that “cannot be the basis for patentability when
the differences would otherwise be obvious.” (citing Ex parte Obiaya, 227
USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).

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In the Reply Brief, Patent Owner also contends that neither Lotfallah
nor Barta teach “an ink absorbing member . . . compressingly contained by
the ink-supply tank against the ink-supply delivery port,” as recited in claim
83. Rep. Br. 7. This argument was not provided prior to the Reply Brief, is
not timely presented, and is therefore not properly before us. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“the reply brief
[is not] an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
Even if we considered this argument, it would not be persuasive because
Barta explicitly teaches a “reservoir [that] has a wall that pre-compresses the
foam.” (Barta, p. 1, ll. 19-20.)
Lastly, Patent Owner argues that the combination of the references is
not obvious because the Examiner has not provided a “rational underpinning
to support the legal conclusion of obviousness” (Reply Br. 12), the
“combination would render Barta unsuitable for its intended purpose”
(Reply Br. 12), and one of ordinary skill in the art “would have no
reasonable expectation of success” in combining the references (Reply Br.
13.) Again, all of these arguments are not timely presented and is not
properly before us. Even so, the Examiner identifies the relevant portions of
each of the references relied on throughout the Examiner’s Answer. See
Ans. 11-14. To the extent that the Examiner relies on the knowledge of one
of ordinary skill in the art to combine the teachings of the references, this
practice is consistent with current case law. For example, the Supreme
Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
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the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
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).
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Ans. 11-14. Additionally, although not
required, the Examiner finds a specific motivation to combine the
references. Specifically, the Examiner finds that it would have been obvious
to combine Lotfallah with Barta in order to “provide[] a means to convey air
to the rear of the reservoir, thereby providing [a] uniform flow of ink.” Ans.
4. We find the Examiner has provided sufficient reasoning for combining
the references.
Additionally, we disagree with Patent Owner’s untimely argument
(Reply Br. 12) that the combination would render Barta unsuitable for its
intended purpose. The Examiner’s position is not based on combining every
aspect of Lotfallah with Barta. Instead, the Examiner is simply relying on
Lotfallah to show that it was known in the art to supply ambient air to a
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space between the wall surface and the ink absorbing member. Ans. 12-13.
As such, the combination of Lotfallah with Barta is nothing more than a
combination of familiar elements according to known methods that yield
predictable results. KSR Int’l Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
For all of the reasons stated supra, we sustain the Examiner’s
adoption of the rejection of claims 83 and 84.

CONCLUSION
The Examiner did not err in finding that Barta and Lotfallah are valid
prior art.
The Examiner did not err in finding that Lotfallah teaches “an inner
wall surface having projections to provide a space between said ink
absorbing member and said wall surface,” as recited in claim 83.
DECISION
We affirm the Examiner’s decision to adopt the rejection of claims 83
and 84 as obvious over the combination of Barta and Lotfallah.

AFFIRMED

alw

Appeal 2013-001500
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For Appellant/Patent Owner:

Seiko Epson Corporation
Stroock & Stroock & Lavan LLP
180 Maiden Lane
New York, NY 10038-4982

For Third Party Requester:

Glory South Software Manufacturing Inc.
Alston & Bird LLP
Bank of America Plaza
101 South Tryon Street, Suite 4000
Charlotte, NC 28280-4000