Ex Parte Yamada et alDownload PDFPatent Trial and Appeal BoardNov 6, 201712691116 (P.T.A.B. Nov. 6, 2017) Copy Citation 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. 12/691,116 01/21/2010 Satoshi Yamada TOSHP185USB 9120 23623 7590 11/08/2017 AMIN, TUROCY & WATSON, LLP 127 Public Square 57 th Floor, Key Tower CLEVELAND, OH 44114 EXAMINER CULLER, JILL E ART UNIT PAPER NUMBER 2854 NOTIFICATION DATE DELIVERY MODE 11/08/2017 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): hmckee@thepatentattomeys.com rveri@thepatentattorneys.com docket @ thepatentattorney s. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SATOSHI YAMADA and HIROYUKI TAGUCHI Appeal 2016-006280 Application 12/691,116 Technology Center 2800 Before BRADLEY R. GARRIS, GEORGE C. BEST, and CHRISTOHER C. KENNEDY, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1, 3—5, and 10 of Application 12/691,116 under 35 U.S.C. § 103(a) as obvious. Final Act. (March 18, 2015). Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we affirm. 1 Appellants have not complied with our rule requiring them to identify the real party in interest. 37 C.F.R. § 41.37(c)(l)(i) (2015). PTO records indicate that Toshiba Tec Kabushiki Kaisha is the assignee. Assignment recorded at Reel/Frame 023824/0321 (January 21, 2010). Appeal 2016-006280 Application 12/691,116 BACKGROUND The ’116 Application2 describes a printer system that carries out thermo-sensitive printing onto a thermal recording paper having thermo sensitive layers on both its sides, and a control method for such a printer system. Spec. 1. Claim 1, the sole independent claim on appeal, is representative of the ’116 Application’s claims and is reproduced below from the Claims Appendix: 1. A double-side printer system comprising: a paper-feed unit which feed a thermal recording paper in which thermo-sensitive layers are formed on a front face and a back face serving as a first recording surface and a second recording surface, in a direction of paper feeding determined in advance; a first thermal head which has a first plurality of heater elements arrayed in a line form in a direction perpendicular to the direction of paper feeding, and which prints first information at a first print density on the first recording surface of the thermal recording paper; a second thermal head which has a second plurality of heater elements arrayed in a line form in a direction perpendicular to the direction of paper feeding, and which prints second information at a second print density on the second recording surface of the thermal recording paper, wherein the first thermal head and the second thermal head are arranged such that the second thermal head prints before the first thermal head; 2 On January 25, 2016, we affirmed the Examiner’s final rejection of claims 1,3,5, 8, and 21—26 of Application 11/681,902. See Ex parte Yamada, No. 2014-002302, slip op. (Jan. 25, 2016) (available at http://bit 1 y/2yTqzQV). The ’116 Application, which was filed on June 21, 2010, is a division of the ’902 Application. The ’902 Application became abandoned on April 1, 2016. 2 Appeal 2016-006280 Application 12/691,116 a first temperature sensor attached to the first thermal head which senses a temperature of the first thermal head; a second temperature sensor attached to the second thermal head which senses a temperature of the second thermal head; a control unit that retrieves print data from a memory associated with the control unit, splits the print data to the first information and the second information, receives the temperature of the first thermal head and the temperature of the second thermal head to facilitate individually setting a first print density achieved by the first thermal head and a second print density achieved by the second thermal head, wherein the control unit further retrieves a plurality of reference electrical connection times, wherein the control unit determines a first electrical connection on time to the first print head necessary to achieve a first print density and determines a second electrical connection on time to the second print head necessary to achieve a second print density, wherein the control unit determines the first electrical connection on time based on a first reference electrical connection time from the plurality of reference electrical connection times to reach the first print density determined from a table, the temperature of the first thermal head and a first rate of increase, wherein the table determines the first reference electrical connection time based at least in part on a set print speed, wherein the control unit determines the second electrical connection on time based on a second reference electrical connection time from the plurality of reference electrical connection times to reach the second print density determined from a table, the temperature of the second thermal head and a second rate of increase, wherein the table determines the second reference electrical connection time based at least in part on the set print speed, wherein the first rate of increase is positive or negative and the second rate of increase is positive or negative, 3 Appeal 2016-006280 Application 12/691,116 wherein the control unit comprises a control circuit is housed in a host device that comprises a processing unit that executes an electrical connection control process to facilitate the determining of the first electrical connection on time and the second electrical connection on time, and wherein the first set temperature and the second set temperature are the same temperature. Appeal Br. 13—14. REJECTION On appeal, the Examiner maintains the following rejection: Claims 1, 3—5, and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Stephenson,3 Oka,4 Mitsushima,5 Katsurai,6 and LeBlanc.7 Final Act. 2. DISCUSSION Appellants argue for reversal of the rejection of claims 1, 3—5, and 10 on the basis of the limitations in claim 1. Appeal Br. 4—12. Dependent claims 3—5 and 10 are alleged to be patentable based upon their dependency from claim 1. Id. at 12. Accordingly, we limit our discussion to claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015). Claims 3—5 and 10 will stand or fall with claim 1. 3 US 5,284,816, issued February 8, 1994. 4 US 5,452,959, issued September 26, 1995. 5 US 4,845,514, issued July 4, 1989. 6 US 4,679,053, issued July 7, 1987. 7 US 2006/0290770 Al, published December 28, 2006. 4 Appeal 2016-006280 Application 12/691,116 Appellants advance multiple arguments for reversal of the rejection of claim 1. See Appeal Br. 4—12. For the reasons set forth below, we do not find any of Appellants’ arguments persuasive. We, therefore, affirm the rejection of claim 1. First, Appellants advance several arguments regarding the Examiner’s reliance upon Stephenson, Oka, and Mitsushima. See id. at 4—9. The Examiner argues that these attacks on the rejection are precluded by our decision on Appellants’ appeal of the rejection of the ’902 Application, which is the parent of the ’116 Application. See Answer 2 (citing MPEP § 706.03(w)). Appellants do not respond to this argument. See generally Reply Br. Appellants, therefore, have conceded that the doctrines of res judicata and collateral estoppel preclude the arguments they have advanced in this appeal regarding the Examiner’s reliance upon Stephenson, Oka, and Mitsushima. Second, Appellants attack the Examiner’s use of Katsurai in the rejection of claim 1. Appeal Br. 9—10. In particular, Appellants argue that (1) Katsurai teaches away from the claimed method of varying the electrical on times of the first and second print heads to produce the desired first and second print densities, id. at 9, and (2) the Examiner has not explained how Katsurai’s teachings could be functionally incorporated into Mitsushima’s methods to arrive at the claimed features, id. at 9—10. For the following reasons, we are not persuaded by these arguments. Appellants’ argument that Katsurai teaches away from the claimed invention is not persuasive. A reference used in a § 103 rejection teaches away from the claimed invention when it criticizes, discredits or otherwise discourages the claimed solution to a particular problem. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 5 Appeal 2016-006280 Application 12/691,116 1994). In this case, Appellants do not direct us to any portion of Katsurai which discredits the claimed solution. Rather, they argue that Katsurai teaches away because it describes a different method for a treatment achieving desired print densities. Appeal Br. 9. A reference’s mere disclosure of an alternative solution does not, in and of itself, teach away from the claimed solution. See Fulton, 391 F.3d at 1201. Appellants argue that the rejection of claim 1 should be reversed because the Examiner has not explained how Katsurai’s teachings could be functionally incorporated into Mitsushima’s methods, Appeal Br. 9—10, is not persuasive. The Examiner relied upon Katsurai for its description of calculating a reference time for activating a thermal print head based upon a set speed for printing. See Final Act. 6 (citing Katsurai col. 2,11. 18-41; col. 3,11. 15—20, col. 3, line 65—col. 4, line 5; Figs. 5—7). We agree with the Examiner that a person of ordinary skill in the art, at the time of the invention, would have been able to modify Mitsushima to account for variations in printing speed as described by Katsurai. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.†KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Finally, we note that Appellants’ arguments are rendered much less persuasive because the Appeal Brief does not include any citations to the record. Not only are such citations required by our rules, see 37 C.F.R. § 41.37(c)(l)(iv) (2015), the failure to include the citations transforms the entirety of the brief into unsupported attorney argument. As the Federal Circuit has explained repeatedly, unsupported attorney argument is insufficient to establish facts which may be required to demonstrate reversible error in the Examiner’s rejection. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 6 Appeal 2016-006280 Application 12/691,116 1984). Furthermore, we are not required to search through the record to find material that should have been cited in Appellants’ brief. “Judges are not like pigs, hunting for truffles buried in the record.†Gross v. Town of Cicero, 619 F.3d 697, 702 (7th Cir. 2010) (internal brackets omitted) (citing U.S. v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991)). Third, Appellants argue that the rejection of claim 1 should be reversed due to Examiner’s misuse of LeBlanc in the rejection of claim 1. Appeal Br. 10—12. In particular, Appellants argue that (1) LeBlanc fails to disclose a look up table with the claimed features, (2) “the cited art teaches away from the alleged combination,†(3) a person of ordinary skill in the art would have had to engage in undue experimentation to combine Mitsushima and LeBlanc successfully, and (4) the Examiner has not identified a reason to combine LeBlanc with Mitsushima. Id. at 10—11. None of these arguments is persuasive. As the Examiner explains, see Final Act. 6—8; Answer 3—4, LeBlanc is cited for its disclosure that look up tables can be used instead of a calculated data curve to determine the electrical connection on times. At the time of the invention, a person having ordinary skill in the art would have been able to incorporate LeBlanc’s look up table in the place of Mitsushima’s reference curve because this merely involved replacement of one means for performing a task with a known alternative means. As the Supreme Court’s explained, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.†KSR, 550 U.S. at 416. Appellants’ argument that “the cited art teaches away from the alleged combination,†Appeal Br. 11, is not persuasive. Appellants have not directed our attention to any particular portion of either LeBlanc or 7 Appeal 2016-006280 Application 12/691,116 Mitsushima that discourages substitution of a calculated reference curve with a look up table or vice versa. Finally, Appellants’ argument that the Examiner has not identified a reason to combine LeBlanc with Mitsushima is not persuasive because an “[e]xpress suggestion to substitute one equivalent for another need not be present to render such substitution obvious.†In re Font, 675 F.2d 297, 301 (CCPA 1982). CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1, 3— 5, and 10 of the ’116 Application as unpatentable over the combination of Stephenson, Oka, Mitsushima, Katsurai, and LeBlanc. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 8 Copy with citationCopy as parenthetical citation