Ex Parte Yamada et al

Patent Trial and Appeal Board

Nov 6, 2017

12691112 (P.T.A.B. Nov. 6, 2017)

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.
12/691,112 01/21/2010 Satoshi Yamada TOSHP185USA 9113
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 2016-006385
Application 12/691,112
Technology Center 2800
Before BRADLEY R. GARRIS, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 4, and 5 of Application
12/691,112 under 35 U.S.C. § 103(a) as obvious. Final Act. (March 16,
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). The ’112
Application appears to be assigned to Toshiba Tec Kabushiki Kaisha. See
USPTO assignment records at reel/frame 023824/0297, recorded January 21,
2010.
Appeal 2016-006385
Application 12/691,112
BACKGROUND
The ’112 Application describes a printer system for thermo-sensitive
printing on a thermal recording paper having thermo-sensitive layers on both
sides and a control method for such a printer system. Spec. 1.
Claim 1 is representative of the ’112 Application’s claims and is
reproduced below from the Claims Appendix:
1. A method for controlling a double-side printer system
which prints print data on a thermal recording paper in which
thermo-sensitive layers are formed on front and back faces
serving as a first recording surface and a second recording
surface, the method comprising:
retrieving print data from storage, wherein the print data
includes information about: a first print density setting for
printing the print data by a first thermal head, a second print
density setting for printing the data by a second thermal head,
and a plurality of reference electrical connection times;
sorting the print data into a first print data for printing on
the first recording surface and second print data for printing on
the second recording surface according to a set condition for
sorting;
sensing a first temperature of the first thermal head by a
first temperature sensor attached to the first thermal head;
sensing a second temperature of the second thermal head
by a second temperature sensor attached to the second thermal
head;
controlling an on time of a first electrical connection with
respect to heating elements of the first thermal head by
comparing the first temperature to a first upper limit
temperature, wherein the on time of the first electrical
connection is set so that the first temperature reaches a first set
temperature to print at the first print density setting on the first
recording surface, wherein the on time of the first electrical
connection is determined by a control unit to increase or
decrease with respect to a first reference electrical connection
time from the plurality of reference electrical connection times
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Application 12/691,112
based on the first print density setting, the first set temperature
and the first temperature, wherein the first reference electrical
connection time is based on the first temperature and a set
speed for printing, wherein the first temperature increases or
decreases in response to the first set temperature;
controlling an on time of a second electrical connection
with respect to heating elements of the second thermal head
independently from the on time of the first electrical connection
by comparing the second temperature to a second upper limit
temperature, wherein the on time of the second electrical
connection is set so that the second temperature reaches a
second set temperature to print at the second print density
setting on the second recording surface, wherein the on time of
the second electrical connection is determined to increase or
decrease with respect to the second reference electrical
connection time from the plurality of reference electrical
connection times based on the second print density setting, the
second set temperature and second temperature, wherein the
second reference electrical connection time is based on the
second temperature and the set speed for printing, wherein the
second temperature increases or decreases based on the second
set temperature; and
printing the second print data on the second recording
surface at the density for the on time of the second electrical
connection before printing the first print data on the first
recording surface at the density for the on time of the first
electrical connection,
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.
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Application 12/691,112
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1, 4, and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Stephenson,2 Mitsushima,3 Katsurai,4 Oka,5 and
Nakano,6 and LeBlanc.7 Final Act. 2.
DISCUSSION
Appellants present substantive argument for the reversal of
independent claim 1. See Appeal Br. 4—12. They do not present any
separate arguments for patentability of claim 4 or 5. Id. We, therefore, of
the claims on appeal and limit our discussion accordingly. 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
Appellants advance several arguments for reversal of the rejection of
claim 1. We address these arguments seriatim.
First, Appellants advance several arguments regarding the
combination of Stephenson and Mitsushima. Appeal Br. 5—8. Appellants
also advance arguments regarding the combination of Stephenson,
Mitsushima, Oka, and Nakano. See id. at 10. The Examiner responds to
these arguments by asserting that our decision in Ex parte Yamada, No.
2 US 5,284,816, issued February 8, 1994.
3 US 4,845,514, issued July 4, 1989.
4 US 4,679,053, issued July 7, 1987.
5 US 5,452,959, issued September 26, 1995.
6 US 5,353,044, issued October 4, 1994.
7 US 2006/0290770 Al, published December 28, 2006.
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Application 12/691,112
2014-002302, slip op. (January 25, 2016) (available at
http://bitly/2yTqzQV),8 moots these arguments. See Answer 2 (“Because
these arguments have been previously adjudicated and the examiner’s
rejection affirmed, the Examiner is precluded by the doctrines of res
judicata and collateral estoppel from rehearing these arguments (see MPEP
706.03(w)).”). Appellants do not respond to the Examiner’s assertion of
claim preclusion. See Reply Br. We, therefore, determine that Appellants
have acquiesced to the Examiner’s assertion.
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.
1994). In this case, Appellants do not direct us to any portion of Katsurai
8 In that decision, we affirmed the Examiner’s rejection of claims 1, 3, 5, 8,
and 21—26 of Application No. 11/681,902. The ’902 Application became
abandoned on April 1, 2016. The ’121 Application, which was filed on
January 21, 2010, is a division of the ’902 Application.
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Application 12/691,112
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’ argument, 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.
1984). Furthermore, we are not required to search through the record to find
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Application 12/691,112
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
Mitsushima that discourages substitution of a calculated reference curve
with a look up table or vice versa.
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Application 12/691,112
Finally, Appellants’ argument that the Examiner has not identified a
reason to combine LeBlanc with Mitsushima is not persuasive because an
“[ejxpress 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
We affirm the rejection of claims 1, 4, and 5 of the ’112 Application.
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
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