Ex Parte Taig et alDownload PDFPatent Trial and Appeal BoardJun 29, 201611740642 (P.T.A.B. Jun. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111740,642 04/26/2007 22879 7590 07/01/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Elad Taig 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. 82228811 1554 EXAMINER FERGUSON SAMRETH, MARISSA LIANA ART UNIT PAPER NUMBER 2854 NOTIFICATION DATE DELIVERY MODE 07/01/2016 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ELAD TAIG, ZOHAR GOLDENSTEIN, HAGGAI ABBO, and GILAD TZORI Appeal2014-007870 Application 11/740,642 Technology Center 2800 Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1--4 and 6-16. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Background The subject matter on appeal relates to a printing assembly that enables closed loop control of the pressure along a nip defined between two drums. Spec. 1:5-8. Claim 1 is representative of the claims on appeal, and 1 Appellants identify Hewlett-Packard Development Company, LP as the real party in interest. App. Br. 2. Appeal2014-007870 Application 11/740,642 is reproduced below from the Claims Appendix to the Appeal Brief: 1. A printing assembly comprising: a drum; a pair of eccentric bearings between and on which the drum is mounted for rotation; and a pair of drives to effect independent rotation of the pair of eccentric bearings to adjust a pressure applied by the drum, wherein the printing assembly is configured to effect actuation of the pair of drives in response to torque based feedback derived from an electric current drawn by each of the pair of drives. Kelly Kobayashi Dittenhofer Fukukawa2 Toyoda The References US 6,641,245 Bl US 6,817,291 B2 US 7,533,610 B2 JP 04-37542A EP 0 786 341 A2 The Rejections Nov. 4, 2003 Nov. 16, 2004 May 19, 2009 Feb. 7, 1992 July 30, 1997 The Examiner maintains the following rejections on appeal: 1. Claims 1, 3, and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Toyoda, Fukukawa, and Kelly; 2. Claims 2, 4, and 7-12 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Toyoda, Fukukawa, Kelly, and Kobayashi; 2 In the Final Action, the Examiner refers to the reference as Numauchi. See, e.g., Final Action 2. In this decision, however, we refer to Fukukawa, the first listed inventor on the English translation made of record on May 8, 2013. 2 Appeal2014-007870 Application 11/740,642 3. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Toyoda, Fukukawa, Kelly, and Dittenhofer; 4. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Toyoda, Fukukawa, Kelly, Kobayashi, and Dittenhofer; and 5. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Toyoda, Fukukawa, Kelly, and Kobayashi. OPINION All of the rejections in this appeal present a single dispositive issue: whether the Examiner establishes through the teaching of Kelly that Toyoda would have inherently disclosed to one of ordinary skill in the art a printing assembly "configured to effect actuation of the pair of drives in response to torque based feedback derived from an electric current drawn by each of the pair of drives" as recited in independent claims 1, 15, and 16. The Examiner has the burden of establishing a prima facie case of obviousness in the first instance, which includes a showing that each of the claimed limitations are disclosed or suggested by the prior art. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a primafacie case ofunpatentability."). The Examiner acknowledges that Toyoda does not disclose explicitly that the torque based feedback is derived from an electric current drawn by the drive (i.e., motor), and relies on Kelly's teaching that a relationship exists between torque and current in a motor to support the finding that a torque sensor in combination with a motor and control system in a printing assembly necessarily encompasses 3 Appeal2014-007870 Application 11/740,642 torque based feedback derived from an electric current drawn by the motor. Final Action 3; Answer 3--4. In other words, the Examiner finds that "Toyoda inherently teaches the limitation 'torque feedback derived from an electric current' via the combination of elements of the torque sensor (21) and motor (12) provided in the printing system." Answer 4. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (citation omitted); see Par Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194--95 (Fed. Cir. 2014). "Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." In re Oelrich, 666 F.2d 578, 581(CCPA1981); see In re Rijckaert, 9 F.3d 1531, 1533-34 (Fed. Cir. 1993); Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (silence in a reference about an inherent characteristic may be explained by extrinsic evidence which "must make clear that the missing descriptive matter is necessarily present in the thing described in the reference"). The evidence on which the Examiner relies does not establish, by a preponderance of the evidence, that torque based feedback derived from an electric current drawn by a drive would necessarily result from following the teachings of the references. That is, the mere existence of a relationship between torque and the current of a motor, by itself, is not sufficient to show inherency here. As Appellants point out, see Reply Brief 2-3, "the mere fact that the torque measurement of Toyoda is affected by the current through the motor does not mean that the torque measurement is derived from the current through the motor" and "under the Examiner's interpretation, it 4 Appeal2014-007870 Application 11/740,642 would be impossible to differentiate the [recited] feedback signal from other types of torque measurements," such as the measurement described in Toyoda. Indeed, Toyoda discloses a torque sensor that measures the torque of a rotating shaft used to drive the rotation of the drum (i.e., wiping roller), not from the motor that is used to adjust the pressure. Toyoda 4:52-5:27, Abstract. Accordingly, the Examiner has not met the burden of establishing that the toque based feedback control of the printing assembly described in Toyoda necessarily encompasses torque based feedback derived from an electric current drawn by the motor as required by each of independent claims 1, 15, and 16. We, therefore, reverse the rejections of claims 1--4 and 6-16 under 35 U.S.C. § 103(a). DECISION/ORDER The Examiner's rejections of claims 1--4 and 6-16 under 35 U.S.C. § 103(a) are reversed. It is ordered that the Examiner's decision is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation