Ex Parte Watanabe et al

Board of Patent Appeals and Interferences

Apr 30, 2003

09106281 (B.P.A.I. Apr. 30, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 17

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HITOSHI WATANABE,
TETSUYA HASHIMOTO and YOSHIKAZU HARA
_____________
Appeal No. 2001-1209
Application No. 09/106,281
______________
ON BRIEF
_______________
Before HAIRSTON, FLEMING and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 2-9, which are all of the claims pending in the present
application. Claim 1 has been canceled. An amendment filed July
24, 2000 after final rejection was denied entry by the Examiner.
Appeal No. 2001-1209
Application No. 09/106,281
2
The claimed invention relates to a sheet carrier apparatus
including a platen roller with a circumferential surface made of
elastic material, the platen roller being rotated to convey a
sheet, such as a stencil sheet, between the platen roller and a
thermal head. Further provided is a processor which regulates
the rotational speed of the platen roller based on a signal from
a temperature sensor which detects the temperature of the platen
roller, thereby transferring the sheet at a constant speed
regardless of the temperature of the platen roller.
Claim 2 is illustrative of the invention and reads as
follows:
2. A sheet carrier apparatus for conveying a sheet,
comprising:
a thermal head,
a platen roller having a cylindrical
circumferential surface made of an elastic material and
pressed against the thermal head, said platen roller
being rotated to convey said sheet between said platen
roller and said thermal head,
a temperature sensor for detecting a temperature
of said platen roller,
processing means electrically connected to the
temperature sensor for setting a rotational speed of
said platen roller based on a detection signal from
said temperature sensor, and
Appeal No. 2001-1209
Application No. 09/106,281
1 The Examiner submitted the Supplemental Examiner’s Answer in response
to a remand from the Board. In this decision, we will refer to the
Supplemental Examiner’s Answer as simply the Answer.
3
a motor connected to the platen roller for
rotating the same at a speed set by the processing
means so that the sheet is transferred by the platen
roller at a predetermined speed regardless of a
temperature of the platen roller.
The Examiner relies on the following prior art:
Fukumoto et al. (Fukumoto) 5,160,944 Nov. 03, 1992
Pfeuffer 5,170,215 Dec. 08, 1992
Masaru JP 08-090747 Apr. 09, 1996
(Published Japanese Patent Application)
Claims 2-9 stand finally rejected under 35 U.S.C. § 103(a).
As evidence of obviousness, the Examiner offers Fukumoto in view
of Pfeuffer with respect to claims 2-8, and adds Masaru to the
basic combination with respect to claim 9.
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the Brief (Paper No. 13) and the
Supplemental Examiner’s Answer (Paper No. 16) for the respective
details.1
OPINION
We have carefully considered the subject matter on appeal,
the rejections advanced by the Examiner and the evidence of
obviousness relied upon by the Examiner as support for the
Appeal No. 2001-1209
Application No. 09/106,281
4
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellants’ arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejections and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in
the art the obviousness of the invention as recited in claims 2-4
and 6-9. We reach the opposite conclusion with respect to the
Examiner’s obviousness rejection of claim 5. Accordingly, we
affirm-in-part.
Appellants’ arguments in response to the Examiner’s
obviousness rejections of the appealed claims are organized
according to a suggested grouping of claims indicated at page 4
of the Brief. We will consider the appealed claims separately
only to the extent separate arguments for patentability are
presented. Any dependent claim not separately argued will stand
or fall with its base claim. Note In re King, 801 F.2d 1324,
1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702
F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Appeal No. 2001-1209
Application No. 09/106,281
2 Although Appellants’ grouping at page 3 of the Brief does not include
dependent claim 6, which is not separately argued in the Brief, as part of any
group, it is apparent that claim 6 should properly be including in this
grouping with its base claim, i.e., independent claim 2.
5
With respect to independent claim 2, the representative claim
for Appellants first suggested grouping (including claims 2-4 and
6-8)2, the Examiner, as the basis for the obviousness rejection
proposes to modify the sheet carrier apparatus disclosure of
Fukumoto. According to the Examiner, although Fukumoto expresses
a desire to maintain a constant speed of the sheet conveying
platen roller, Fukumoto is “... silent on whether or not the
variation in diameter of the platen roller 1 due to temperature
change during the printing operation has been taken into
consideration....” (Answer, page 4). To address this
deficiency, the Examiner turns to Pfeuffer which describes a
sheet carrier apparatus in which a detected sheet conveying
roller temperature signal is used to adjust the rotational speed
of the roller speed control motor to maintain an optimum constant
velocity. In the Examiner’s analysis (id.), the skilled artisan
would have been motivated and found it obvious to provide the
system of Fukumoto with the temperature dependent roller speed
Appeal No. 2001-1209
Application No. 09/106,281
6
control taught by Pfeuffer “... in order to maintain a constant
sheet conveying speed regardless of temperature fluctuations in
the platen roller so as to ensure the quality of sheet printing
and conveying operation.”
After reviewing the Examiner’s analysis, it is our view that
such analysis carefully points out the teachings of the Fukumoto
and Pfeuffer references, reasonably indicates the perceived
differences between this prior art and the claimed invention, and
provides reasons as to how and why the prior art teachings would
have been modified and/or combined to arrive at the claimed
invention. In our opinion, the Examiner's analysis is
sufficiently reasonable that we find that the Examiner has at
least satisfied the burden of presenting a prima facie case of
obviousness. The burden is, therefore, upon Appellants to come
forward with evidence and/or arguments which persuasively rebut
the Examiner’s prima facie case of obviousness. Only those
arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but
chose not to make in the Brief have not been considered [see 37
CFR § 1.192(a)].
Appeal No. 2001-1209
Application No. 09/106,281
7
Appellants’ arguments in response to the obviousness
rejection initially assert that the Examiner has failed to
establish a prima facie case of obviousness since all of the
claimed limitations are not taught or suggested by the applied
prior art references. After careful review of the applied
Fukumoto and Pfeuffer references in light of the arguments of
record, we find Appellants’ assertions to be unpersuasive. In
our view, Appellants’ arguments unpersuasively focus on the
individual differences between the limitations of representative
claim 2 and each of the applied references. It is apparent,
however, from the Examiner’s line of reasoning in the Answer,
that the basis for the obviousness rejection is the combination
of Fukumoto and Pfeuffer. One cannot show nonobviousness by
attacking references individually where the rejections are based
on combinations of references. In re Keller, 642 F. 2d 413, 425,
208 USPQ 871, 881(CCPA 1981); In re Merck & Co., Inc., 800 F. 2d
1091, 1096, 231 USPQ 375, 380 (Fed. Cir. 1986).
In other words, while Appellants contend that Fukumoto “...
does not have a temperature sensor, nor the processing means for
setting the rotational speed of the platen roller based on the
Appeal No. 2001-1209
Application No. 09/106,281
8
detection signal from the temperatures sensor” (Brief, page 5),
the feature of temperature dependent control of a platen roller
is clearly taught by Pfeuffer. Further, although Appellants
argue (id., at 5 and 6) that Pfeuffer heats a fuser roller and
therefore fails to teach the heating of a thermal head which in
conjunction with a platen roller transfers a sheet, this teaching
is specifically provided by Fukumoto.
We further find to be unpersuasive Appellants’ assertion
(Brief, page 7) that, even if combined, the resultant structure
would not satisfy the claimed requirements. In Appellants’ view,
if the temperature sensor of the heat source in Pfeuffer, i.e.,
the fuser roller, were combined with Fukumoto the result would be
that the temperature sensor would detect the temperature of the
thermal head, not the platen roller as claimed. It is apparent
to us, however, from the line of reasoning expressed in the
Answer that the Examiner is not suggesting the bodily
incorporation of Pfeuffer’s temperature based speed controller
into the system of Fukumoto. Rather, it is the disclosed
technique in Pfeuffer of providing for constant speed control of
a sheet transfer roller in dependence upon detected temperature
Appeal No. 2001-1209
Application No. 09/106,281
9
changes that is being relied upon as a suggestion for the
proposed combination. “The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated
into the structure of the primary reference....Rather, the test
is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” In re Keller,
supra. See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385,
389 (Fed. Cir. 1983) and In re Nievelt, 482 F.2d 965, 967, 179
USPQ 224, 226 (CCPA 1973). Further, we agree with the Examiner
(Answer, page 6) that the platen roller 1 in Fukumoto and the
fuser roller 44 in Pfeuffer have similar functions, i.e., to
transfer the print media during the printing operation.
For the above reasons, since it is our opinion that the
Examiner’s prima facie case of obviousness has not been overcome
by any convincing arguments from Appellants, the Examiner’s 35
U.S.C. § 103(a) rejection of representative independent claim 2,
as well as claims 3, 4, and 6-8 which stand with claim 2, is
sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection of claim 9 in which the Masaru reference is
Appeal No. 2001-1209
Application No. 09/106,281
10
added to the combination of Fukumoto and Pfeuffer to address the
stencil sheet limitation of this claim, we sustain this rejection
as well. In our view, Appellants’ arguments (Brief, page 9)
focus unpersuasively on the failure of Masaru to teach the
claimed thermal head and platen roller temperature dependent
speed control features, features which are disclosed by Fukumoto
and Pfeuffer. We find no convincing arguments from Appellants
that would convince us of any error in the Examiner’s assertion
of the obviousness to the skilled artisan of applying the platen
roller temperature sensor and speed control teachings of Fukumoto
and Pfeuffer to a stencil making apparatus such as that disclosed
in Masaru.
Turning to a consideration of dependent claim 5, grouped and
argued separately by Appellants, we note that, while we found
Appellants’ arguments to be unpersuasive with respect to the
Examiner’s obviousness rejection of claims 2-4 and 6-9 discussed
supra, we reach the opposite conclusion with respect to the
obviousness rejection of claim 5. As indicated by Appellants
(Brief, pages 3-8), claim 5 is directed to the feature in which
the platen roller expansion coefficient factor
, a component of
Appeal No. 2001-1209
Application No. 09/106,281
11
the platen roller speed computing equation, is reduced for
temperature ranges above a predetermined value. We don’t
necessarily disagree with the Examiner’s assertion (Answer, page
5) that, given Pfeuffer’s disclosed recognition of the
relationship between platen roller speed and roller temperature
variations, the skilled artisan would find it obvious to derive a
mathematical equation to compute the corrected roller speed
values. We find no teaching or suggestion, however, in Pfeuffer,
or in any of the other prior art of record, that would support
the Examiner’s conclusion of the obviousness to the skilled
artisan of adjusting the expansion coefficient of the platen
roller at temperature ranges above and below a predetermined
temperature as claimed. The Examiner must not only make
requisite findings, based on the evidence of record, but must
also explain the reasoning by which the findings are deemed to
support the asserted conclusion. See In re Lee, 277 F.3d 1338,
1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002). Accordingly,
since all of the claimed limitations are not taught or suggested
by the applied prior art references, the Examiner’s 35 U.S.C.
§ 103(a) rejection of claim 5 is not sustained.
Appeal No. 2001-1209
Application No. 09/106,281
12
In summary, with respect to the Examiner’s 35 U.S.C.
§ 103(a) rejections of the appealed claims, we have sustained the
rejection of claims 2-4 and 6-9, but have not sustained the
rejection of claim 5. Therefore, the Examiner’s decision
rejecting claims 2-9 is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
jfr/vsh
Appeal No. 2001-1209
Application No. 09/106,281
13
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