Ex Parte Waidman et al

Patent Trial and Appeal Board

Dec 26, 2012

11412008 (P.T.A.B. Dec. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAN WAIDMAN, SHLOMO HARUSH,
GREGORY BRAVERMAN, MAYA SHALEV,
EYAL SHELEF, and MICHAEL PLOTKIN
____________________

Appeal 2010-008339
Application 11/412,008
Technology Center 2800
____________________

Before KALYAN K. DESHPANDE, ERIC B. CHEN, and JOHN G. NEW,
Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008339
Application 11/412,008

2
STATEMENT OF CASE
1

The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1, 4-8, 11-17, and 19, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b).
We AFFIRM.

The Appellants invented a method of laser power uniformity
calibration, comprising: printing a first pattern by a first laser beam; moving
the first laser beam to print a second pattern such that the second pattern is
located at a predetermined distance from the first pattern; printing the first
and second patterns by a second laser beam; comparing the first and second
patterns printed by the first and second laser beams; and optionally adjusting
a power in the first and second laser beams. Specification 3.
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 8, which are reproduced below:
1. A method of laser power uniformity calibration, comprising:
printing a first pattern by a first laser beam;
moving the first laser beam;
printing a second pattern such that the second pattern is located
at a predetermined distance from the first pattern;
printing the first and second patterns by a second laser beam;
comparing the first pattern printed by the first laser beam to the
second pattern printed by the second laser beam;
using results of the comparing to make predetermined
adjustments to a first power in the first laser beam and a second

1
Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 25, 2009) and Reply Brief (“Reply Br.,” filed October 14,
2009), and the Examiner’s Answer (“Ans.,” mailed August 14, 2009) and
Final Rejection (“Final Rej.,” mailed November 28, 2008).
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power in the second laser beam without using an iterative
process to estimate laser power changes; and
utilizing a mirror to dynamically shift the first laser beam to
print the second pattern at a predetermined distance away from
the first pattern.

8. A program storage medium readable by a computer,
embodying a computer-implemented program of instructions
executable by the computer to perform computer-implemented
method steps for a method of laser power uniformity
calibration, comprising:
[1] printing a first pattern by a first laser beam;
[2] moving the first laser beam;
[3] printing a second pattern such that the second pattern is
located at a predetermined distance from the first pattern;
[4] printing the first and second patterns by a second laser
beam;
[5] comparing the first pattern printed by the first laser beam
to the second pattern printed by the second laser beam;
[6] using results of the comparing to make predetermined
adjustments to a first power in the first laser beam and a second
power in the second laser beam without using an iterative
process to estimate laser power changes; and
[7] utilizing a mirror to dynamically shift the first laser beam
to print the second pattern at a predetermined distance away
from the first pattern.

REFERENCES
The Examiner relies on the following prior art:
Watanabe
Brown
Suzuki
US 4,733,307
US 6,618,158 B1
US 6,750,892 B2
Mar. 22, 1988
Sep. 9, 2003
Jun. 15, 2004

REJECTIONS
Claims 8 and 11-14 stand rejected under 35 U.S.C. § 101 as being
directed towards non-statutory subject matter.
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Application 11/412,008

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Claims 1, 7, 8, and 14-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Suzuki and Watanabe.
Claims 4-6, 11-13, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Suzuki, Watanabe, and Brown.

ISSUES
The issue of whether the Examiner erred in rejecting claims 8 and 11-
14 stand rejected under 35 U.S.C. §101 as being directed towards non-
statutory subject matter turns on whether a “program storage medium” that
can be paper is statutory subject matter.
The issue of whether the Examiner erred in rejecting claims 1, 4-8,
11-17, and 19 under 35 U.S.C. § 103(a) turns on whether Watanabe
describes “utilizing a mirror to dynamically shift the first laser beam to print
the second pattern at a predetermined distance away from the first pattern,”
whether the Examiner has relied on Brown to describe “to make
predetermined adjustments… without using an iterative process to estimate
laser power changes,” whether Brown teaches away from “to make
predetermined adjustments… without using an iterative process to estimate
laser power changes,” and whether the Examiner has relied on impermissible
hindsight.
ANALYSIS
Claims 8 and 11-14 rejected under 35 U.S.C. §101 as being directed
towards non-statutory subject matter
The Examiner found that claims 8 and 11-14 recite a “program
storage medium readable by a computer,” where the Specification includes
that the “program storage medium” encompasses a paper. Ans. 8-9 (citing
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Specification 9). As such, the Examiner found that claims 8 and 11-14 are
directed towards non-statutory subject matter.
Appellants agree that claims 8 and 11-14 recite a medium that may be
paper, but contend that claims 8 and 11-14 recite functional program
instructions that are executable by a computer and therefore are not merely
attempting to claim operation on a paper. App. Br. 9 and Reply Br. 4.
Appellants argue that the claims recite “structurally and functionally
interrelated elements that are capable of causing a functional change in the
claimed computer system.” App. Br. 9.
We disagree with Appellants. The claims are directed towards a
“program storage medium” and the Specification unambiguously specifies
that the program medium can be “paper.” Specification 9. The claims are
not directed towards a “computer system” or a “computer executing
instructions on a medium.” As such, under the broadest reasonable
interpretation the claims require nothing more than text on a piece of paper.
We have previously held that printing on a piece of paper constitutes non-
statutory subject matter. See Ex parte Shealy, No. 2006-1601, at 36 (BPAI
Apr. 23, 2007) (informative) (An expanded panel of this tribunal sustained
the Examiner's rejection of the claims under 35 U.S.C. § 101 as being
directed to non-statutory subject matter because the Specification expressly
stated that “the computer-readable medium could even be paper.”).
Furthermore, the Specification discloses that the “computer-readable
medium” can be any means that propagates a program for use. Specification
9. Under the broadest reasonable interpretation, a “computer-readable
medium” that propagates data includes a transitory, propagating signal.
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Transitory embodiments are not directed to statutory subject matter. In re
Nuijten, 500 F.3d 1346, 1353-54 (Fed. Cir. 2007).
As such, we agree with the Examiner that claims 8 and 11-14 are
directed towards non-statutory subject matter.

Claims 1, 7, 8, and 14-17 rejected under 35 U.S.C. §103(a) as being
unpatentable over Suzuki, and Watanabe
Appellants first contend that Suzuki and Watanabe fail to teach or
suggest using results of the comparing to make predetermined adjustments
to a first power in the first laser beam and a second power in the second laser
beam without using an iterative process to estimate laser power changes and
utilizing a mirror to dynamically shift the first laser beam to print the second
pattern at a predetermined distance away from the first pattern. Appellants
specifically argue that Watanabe describes a laser beam that is deflected by
the multi-face rotating mirror and passes through an image forming lens 4
for main scanning such as an f0 lens positioned in the optical path, and is
then reflected by a reflection surface 10a of a long sub-scanning mirror 10
extending in the main scanning direction. App. Br. 10-11 (citing Watanabe
14:50-54 and Fig. 1). Appellants contend that this disclosure is
distinguished from the claim that requires “a mirror to dynamically shift the
first laser beam to print the second pattern at a predetermined distance away
from the first pattern.” App. Br. 11 and Reply Br. 3.
We disagree with Appellants. As found by the Examiner, Watanabe
describes a mirror, specifically long sub-scanning mirror 10, to dynamically
shift a laser beam from printing a first position to printing a second at a
second position. Ans. 9-10 (citing Watanabe Fig. 1). Specifically:
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long sub-scanning mirror 10 is inclined with respect to the
optical path of the laser beam 2 so that the laser beam 2
impinges upon the reflection surface 10a at an incidence angle
α, and the laser beam is reflected downwardly by the sub-
scanning mirror 10. An image of the laser beam 2 reflected by
the sub-scanning mirror 10 is formed at an image forming
position P2 conjugate with the imagine forming position P1.

Watanabe 15:3-30 and Fig. 2. That is, position P2 is a predetermined
distance away, based on angle α, from position P1. As such, we are not
persuaded by Appellants’ contention.

Claims 4-6, 11-13, and 19 rejected under 35 U.S.C. §103(a) as being
unpatentable over Suzuki, Watanabe, and Brown.
Appellants contend that Brown merely discloses calibrating a laser
imaging device using “an iterative process to make calibration adjustment
estimations” and therefore does not disclose making “predetermined
adjustments without using an iterative process to estimate laser power
changes.” App. Br. 11-12 and Reply Br. 5 (citing Brown 6:17-26). We do
not find this argument persuasive because this limitation is recited in
independent claims 1 and 8 and the Examiner has relied on Suzuki to
describe this limitation. Ans. 5 and 10. As such, Appellants’ contention
does not persuade us of error on the part of the Examiner because the
Appellants are responding to the rejection by attacking the references
separately, even though the rejection is based on the combined teachings of
the references. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
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Appellants further contend that Brown teaches away from making
“predetermined adjustments without using an iterative process to estimate
laser power changes.” App. Br. 12-13 and Reply Br. 6. We disagree. As
discussed supra, the Examiner has not relied on Brown in rejecting this
limitation of independent claims 1 and 8 and as such, the argument that
Brown teaches away from such a limitation is not apposite. Furthermore,
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.’ Ricoh Co., Ltd. v. Quanta Computer,
Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A reference
does not teach away if it merely expresses a general preference for an
alternative invention from amongst options available to the ordinarily skilled
artisan, and the reference does not discredit or discourage investigation into
the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, Brown expresses a general preference to use an iterative process and
Appellants have not provided any evidence that Brown discourages or
discredits making adjustments without using an iterative process. As such,
Appellants’ argument is not persuasive.
Appellants also contend that the Examiner uses impermissible
hindsight in Reply Br. 6-7. We are not persuaded by this argument.
Appellants provide several citations to relevant case law regarding
impermissible hindsight, but fail to provide any evidence or rationale to
demonstrate that the Examiner has only gleaned knowledge from
Appellants’ disclosure. Absent any evidence to support an argument of
impermissible hindsight, we are not persuaded by the Appellants’ argument.
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CONCLUSIONS
The Examiner did not err in rejecting claims 8 and 11-14 under 35
U.S.C. §101 as being directed towards non-statutory subject matter.
The Examiner did not err in rejecting claims 1, 7, 8, and 14-17 under 35
U.S.C. §103(a) as being unpatentable over Suzuki and Watanabe.
The Examiner did not err in rejecting claims 4-6, 11-13, and 19 under 35
U.S.C. §103(a) as being unpatentable over Suzuki, Watanabe, and Brown.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 8 and 11-14 under 35 U.S.C. §101 as being
directed towards non-statutory subject matter is sustained.
 The rejection of claims 1, 7, 8, and 14-17 under 35 U.S.C. §103(a) as
being unpatentable over Suzuki and Watanabe is sustained.
 The rejection of claims 4-6, 11-13, and 19 under 35 U.S.C. §103(a) as
being unpatentable over Suzuki, Watanabe, and Brown is sustained.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

ELD