Ex Parte Tobita

Board of Patent Appeals and Interferences

Oct 20, 2005

09886200 (B.P.A.I. Oct. 20, 2005)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte ISAMU TOBITA

Appeal No. 2005-1384
Application 09/886,200

ON BRIEF

Before THOMAS, SAADAT, and NAPPI, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
ON REQUEST FOR REHEARING
In a paper received by facsimile communication on September
21, 2005, Appellant requests that we rehear our decision dated
August 23, 2005, wherein we affirmed all rejections of the claims
on appeal under 35 U.S.C. § 103.
Appeal No. 2005-1384
Application 09/886,200
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We have carefully reviewed our original opinion in light of
appellant’s request, but we find no point of law or fact which we
overlooked or misapprehended in arriving at our original
decision. Even in light of appellant’s current arguments set
forth in the Request for Rehearing, we find no error in the
analysis or logic set forth in our original opinion.
With respect to appellant’s first position under topic A at
page 2 of the request, we reemphasize again our remarks at page 5
of our original opinion which affirmed the examiner’s remarks at
page 11 of the answer that appellant effectively was inviting us
to limit the scope of meaning of the term “character set” by
essentially urging us to read disclosed limitations thereof into
the claims on appeal which are not specifically claimed.
Contrary to the belief apparently set forth at the bottom of page
2 of the request, we did not misunderstand the disclosed meaning
of the term “character set”. Nor do we deny appellant’s right to
be his own lexicographer. Claims are to be given their broadest
reasonable interpretation during prosecution, and the scope of a
claim cannot be narrowed by reading disclosed limitations into
the claim. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ 1023,
1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404-
05, 162 USPQ 541, 550 (CCPA 1969). “[D]uring patent prosecution
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Application 09/886,200
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when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification
imposed.” In re Zletz, 893 F.2d at 321, 13 USPQ2d at 1322.
Next we treat appellant’s urging that Kikuchi and Kobayashi
do not teach or suggest the limitations of claims 8 and 9. We
treated this third stated rejection of claims 7 through 9
rejected under 35 U.S.C. § 103 over these references at pages 11
through 14 of our prior opinion. In doing so, we expanded upon
the examiner’s rationale of combinablitiy and, contrary to the
urging at page 3 of the Request for Rehearing, we did address the
mode change capability in accordance with a number of dots that
are arranged across the width of the lines forming an object
image. A careful reading of the paragraph bridging pages 12 and
13 of our original opinion at least emphasizes this language from
the claims.
Under topic C at page 4 of the Request for Rehearing
appellant urges again that the combination of Kikuchi with Ohsawa
would change the principle of operation of Kikuchi. This first
stated rejection is discussed in detail in our prior opinion at
pages 3 through 9. We simply did not agree with appellant’s
initial urging in the brief as to this argument in accordance
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Application 09/886,200
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with the discussion in the paragraph of page 7 of our prior
decision. There we considered the argument misplaced to the
extent that appellant urged that the combination of these two
references would have changed the operation of Kikuchi such that
it would be unable to form its intended purpose. We viewed
appellant’s argument as arguing the structural combinablitiy of
the references would have lead to the inoperablity of the Kikuchi
reference. We did not and continue not to agree with a basic
urging in appellant’s views upon the noted court case at page 4
of the Request for Rehearing that substantial reconstruction and
redesign would be necessary as well as changing the basic
principle of operation. We stated at the bottom of page 6 in a
summary manner that “Plainly, Ohsawa adds a capability to
Kikuchi’s teachings that is not readily recognized within its own
content.” We repeatedly emphasized this in a lengthy discussion
since we considered the teachings of Ohsawa to add to the
teachings of Kikuchi in an advantageously enhancing manner.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure
of a primary reference. It is also not that the claimed
invention must be expressly suggested in any one or all of the
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Application 09/886,200
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references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art. In re Keller, 642 F.2d 414, 425, 208 USPQ 871, 881
(CCPA 1981); In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991).
Turning to topic D at page 5 of the Request for Rehearing,
the focus of the reasoning here is the examiner’s alleged failure
to present a reasonable expectation of success of combining
Kikuchi with the IBM disclosure bulletin. This is not the
rejection the examiner set forth under the second stated
rejection which we discussed at pages 9 through 11 of our prior
decision. We affirmed the rejection alternatively in view of
Kikuchi and Ohsawa or Kikuchi in view of Ohsawa, further in view
of IBM. We considered IBM to be cumulative to what was already
taught in the other two references. Appellant’s arguments here
did not question our own analysis on Request for Rehearing but
only that of the examiner. Appellant’s urging at page 15 of the
principal brief on appeal makes no mention of Ohsawa as a
reference which is a part of the rejection. Our extensive
analysis from pages 3 through 11 in our prior decision relating
to the combination of Kikuchi and Ohsawa plainly sets forth a
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Application 09/886,200
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reasonable expectation of success when combining these two
references. We explained in greater detail at pages 9 through 11
of our prior decision a pertinent feature of both references to
the extent that they related to the argued features of claims 12
and 13 in the second stated rejection.
Lastly, under topic E at pages 5 and 6 of the Request for
Rehearing, appellant wrongly urges again that examiner has not
identified any source of motivation for combining the respective
references. Again, the focus of the arguments is upon the
examiner’s alleged deficiencies rather than any argued deficiency
with respect to our reasoning set forth in our prior opinion.
Moreover, when viewed from a motivational perspective, our
analysis in the prior decision greatly emphasizes the
combinablitiy of Kikuchi with Ohsawa and optionally with the IBM
Technical Disclosure Bulletin as well as Kikuchi with Kobayashi
in the respective rejections.
At this point, it also deserves mention as stated at the top
of page 3 of our earlier opinion, that we sustained the three
separately stated rejections of the examiner “for the reasons set
forth by the examiner as embellished upon here.” Contrary to the
view expressed at the bottom of page 6 of the Request for
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Rehearing, appellant had the opportunity in the form of filing
the brief and a reply brief to respond and assess the strength of
the examiner’s rejections. Moreover, a Request for Rehearing
permits appellant to ask for rehearing of our prior decision.
The evidence of unpatentablity of appellant’s claims presented on
appeal is based primarily upon the applied prior art and to a
much lesser extent the examiner’s arguments.
In view of the forgoing, appellant’s Request for Rehearing
is granted the extent that we have in fact reviewed our findings
but is denied as to making any change therein.
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Application 09/886,200
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
DENIED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
JDT:pgc
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Application 09/886,200
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IBM Corporation
P.O. Box 12195
Dept 9CCA, BLDG 002
Research Triangle Park, NC 27709