General Plastic Industrial Co., Ltd.v.Canon Kabushiki Kaisha

Patent Trial and Appeal Board

Mar 9, 2016

13617050 (P.T.A.B. Mar. 9, 2016)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: March 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GENERAL PLASTIC INDUSTRIAL CO., LTD.,
Petitioner

v.

CANON INC.,
Patent Owner
____________

Case IPR2015-01954
Patent 8,909,094 B2
____________

Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
A. Background
On September 25, 2015, General Plastic Industrial Co., Ltd.
(“Petitioner”) filed a Petition pursuant to 35 U.S.C. § 311 and 37 C.F.R.
§ 42.1 to institute inter partes review of claims 1, 7–9, 11, 16–18, 29 and 38
of U.S. Patent No. 8,909,094 B2 (Ex. 1001, “the ’094 patent”). Paper 2
(“Pet.”). Canon Inc. (“Patent Owner”) filed a Preliminary Response on
December 22, 2015. Paper 10 (“Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
inter partes review may not be instituted “unless . . . the information
presented in the petition . . . shows that there is a reasonable likelihood that
the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.”
Upon consideration of the arguments and evidence presented by
Petitioner and Patent Owner, we are not persuaded that Petitioner has
demonstrated a reasonable likelihood that it would prevail in showing the
unpatentability of any one of claims 1, 7–9, 11, 16–18, 29, and 38 of the
’094 patent. For reasons discussed below, we deny the Petition as to all
challenges.
B. Related Matters
Petitioner indicates that the ’094 patent was the subject of an ITC
Investigation: In the Matter of Certain Toner Supply Containers and
Components Thereof, Inv. No. 337-TA-960 (U.S. Int’l Trade Comm’n).
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C. The ’094 Patent
The ’094 patent describes a toner supply container for use in an
electro-photographic image forming apparatus, such as a copier or a printer.
Ex. 1001, 1:26–36, claims 1, 7–9, 11, 16–18, 29, and 38.
Figure 3 of the ’094 patent illustrates such a toner supply container
(toner bottle) relative to a copier, as reproduced below with additional
markings, inserted in red, for illustration.

Figure 3 depicts toner supply container (toner bottle) 1 relative to
copier 100.

As shown in Figure 3, toner supply container (toner bottle) 1 is
installed in copier 100 by inserting the same in the direction indicated by
arrow (a). Ex. 1001, Fig. 3.
Figure 8 provides a perspective view of toner bottle 1, as reproduced
below with additional markings, in red, for illustration.
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Figure 8 depicts a perspective view of toner bottle 1 including sealing
member 2.

As shown in Figure 8, toner bottle 1 is provided with two main
components: (1) rotatable container body 1 provided with an opening 1a at
one end through which toner may flow, and (2) sealing member 2. Id. at
9:37–39. Opening 1a is plugged with sealing member 2 for sealing opening
1a of toner bottle 1. Opening 1a is unsealed and resealed by the sliding
motion of sealing member 2 relative to toner bottle 1 in the longitudinal
direction (arrow a  b) of toner bottle 1. Id. at 9:41–47.
Opening 1a is sealed, via sealing member 2, when toner bottle 1 is
outside copier 1. Id. When toner bottle 1 is installed in copier 100, shown
in Figure 1, two things happen: (1) opening 1a is unsealed; and (2) when
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copier 100 is being used, toner bottle 1 is rotated. Id. at 7:24–8:54. The
rotation of toner bottle 1 causes the toner to be fed out of opening 1a and
into a toner hopper (not shown) within copier 100 when container body 1 is
rotated. Id. at 9:64–10:37, Fig. 8.
According to the ’094 patent, sealing member 2 performs the
following functions: (1) sealing opening 1a of toner bottle 1, (2) receiving
the rotational driving force from a main assembly of copier 100, and (3)
transmitting the rotational driving force to toner bottle 1. Id. at 8:37–41.
The challenged claims are directed to the embodiment of sealing
member 2, shown in Figures 23A–23B, which are reproduced below with
additional markings, in red.

Fig. 23A Fig. 23B
Figure 23A shows a side view of sealing member 2, while Figure 23B
shows a front view of sealing member 2.

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As shown in Figures 23A–23B, sealing member 2 has two main
components: (1) sealing portion 2b, and (2) coupling portion 2c. Id. at
11:21–25. Sealing portion 2b fits snugly within opening 1a in order to seal
the toner within toner bottle 1. Id. at 11:28–30. Coupling portion 2c is
engageable with a main assembly of copier 100 in order to (1) move sealing
member 2 and toner bottle 1 relatively away from each other to unseal
opening 1a of toner bottle 1, and (2) receive rotational drive force from
copier 100, via hollow cylinder driving portion 20 driven by a motor (not
shown) and provided in the main assembly of copier 100. Id. at 11:31–
12:18.
Coupling portion 2c includes three sub-components: (1) supporting
portions 2f, (2) engaging portions 3, and (3) releasing force receiving
portions 4, as shown in Figures 23A–23B. These sub-components are
integrally molded (id. at 13:49–52, 14:26–28) and are constructed as
follows:
(1) Supporting portions 2f, which are not labeled but are shown in
Figure 13, are elastically displaceable in an inward direction and elastically
restorable in an outward direction. Id. at 11:63–65, 12:57–13:7, 13:40–64,
18:28–32, claims 1, 11, 29, 38, Fig. 13.
(2) Engaging portions (a.k.a., projections) 3 are provided at the free
ends of supporting portions 2f and displace inwardly and outwardly along
supporting portions 2f. Each engaging portion 3 also has two sub-portions:
(2a) rotational force receiving portion 3a for receiving the rotational driving
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force from the main assembly of copier 100; and (2b) locking portion 3b for
snap-fit type locking of sealing member 2 into the main assembly of copier
100, as shown in Figures 12 and 13. Id. at 11:63–65, claims 1, 11, 29, 38,
Figs. 12–13.
(3) Releasing (a.k.a. “displacing”) force receiving portions 4 lie
between engaging portions 3 and sealing portion 2, i.e., they are closer to
container body 1 than are engaging portions 3. Each of displacing force
receiving portions 4 extends radially outwardly to a greater extent than the
radially outermost part of each engaging portion 3, as shown in Figure 13.
Id. at 18:33–36, claims 1, 11, 29, 38, Fig. 13.
Figures 12 and 13 are reproduced below with additional markings, in
red.

Fig. 12 Fig. 13

Figure 12 shows a side view of sealing member 2, while Figure 13
shows engaging portions 3 of sealing member 2 elastically deformed to
engage with a main assembly of copier 100.

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As shown in Figures 12 and 13, engaging portions 3 of sealing
member 2 perform three different functions: (1) a coupling function for
receiving the rotational driving force from the main assembly of copier 100;
(2) a transmitting function for transmitting the rotation to toner bottle 1; and
(3) a locking function for permitting relative sliding motion between sealing
member 2 and the main body of toner bottle 1 so as to automatically open
and close opening 1a. Id. at 12:11–18.
Coupling portion 2c of sealing member 2 is to be engaged with a main
assembly of copier 100 referred to as “hollow cylindrical driving portion
20.” Id. at 7:31–34, 9:58–60. An example of such hollow cylindrical
driving portion 20 provided in the main assembly of copier 100 is depicted
in the left-hand portion of Figure 14, which is reproduced below with
additional markings, in red.

Fig. 14
Figure 14 shows how sealing member 2 of toner bottle 1 is driven to rotate,
via hollow cylindrical driving portion 20 provided in the main assembly of
copier 100.
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As shown in Figure 14, hollow cylindrical driving portion 20 (part of
copier 100, and not part of toner bottle 1) contains locking slot 20h that
extends in a circumferential direction. Id. at 14:29–32. Slot 20h is
interrupted by a pair of ribs 20a, which are spaced approximately 180
degrees apart. A motor (not shown) within copier 100 rotates driving
portion 20. Id. at 7:35–38. Driving portion 20 (part of copier 100), in turn,
rotates toner bottle 1 through the abutment of one or both ribs 20a, via one
or more engaging portions 3 of sealing member 2. Id. at 14:41–45.
When toner bottle 1 is installed in copier 100, supporting portions 2f
of sealing member 2 first elastically displace inwardly so that coupling
portion 2c of sealing member 2 can enter driving portion 20 (part of the
copier 100), and then elastically restore outwardly (that is, back to their
original position) so that engaging portions 3 can engage with slot 20h
through the abutment of one or both ribs 20a in driving portion 20 provided
in the main assembly of copier 100. Id. at 12:57–13:7, 18:28–32.
To remove toner bottle 1 from copier 100, engaging portions 3 of
sealing member 2 are disengaged from slot 20h in driving portion 20 (part of
copier 100) and sealing portion 2b of sealing member 2 is resealed within
opening 1a of toner bottle 1. Id. at 18:64–19:15, Figs. 25B–25C.
D. Illustrative Claim
Of the challenged claims, claims 1, 11, 29, and 38 are independent.
Claims 7–9 depend, directly or indirectly, from claim 1. Claims 16–18
depend, directly or indirectly, from claim 11. Challenged claim 1 is
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illustrative and is reproduced below:
1. A toner supply container comprising:
i) a container body configured to contain toner and rotatable
about an axis thereof, the container body including a cylindrical
portion and an opening provided at one axial end portion thereof
and configured to permit discharge of the toner contained in the
container body; and
ii) a sealing member provided at the one axial end portion of the
container body, the sealing member being movable relative to the
container body in an axial direction of the container body, the
sealing member including:
ii-i) a sealing portion provided at a side adjacent the
container body and configured to seal the opening when the
sealing member and the container body are in a first position
relative to one another, the opening becoming unsealed by
relative movement of the sealing member and the container body
away from one another from the first position to a second
position relative to one another; and
ii-ii) a coupling portion provided at a side remote from the
container body and configured and positioned to receive a
rotational drive force for rotating the sealing member and the
container body about the rotation axis of the container body, the
coupling portion including:
ii-ii-i) a supporting portion provided on the sealing
portion, the supporting portion being elastically displaceable in
an inward direction toward the rotation axis of the container body
and elastically restorable in an outward direction away from the
rotation axis of the container body;
ii-ii-ii) an engaging portion provided at a free end
of the supporting portion and being displaceable with the
supporting portion, the engaging portion including:
ii-ii-ii-i) a rotational force receiving portion
capable of being abutted in a direction that is concentric with a
circumference of the cylindrical portion of the container body to
receive a rotational drive force for rotating the sealing member
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and the container body; and
ii-ii-ii-ii) a locking portion capable of being
abutted in a direction parallel to the rotation axis of the container
body to enable the relative movement of the sealing member and
the container body from the first position, in which the opening
is sealed, to the second position, in which the opening is
unsealed; and
ii-ii-iii) a displacing force receiving portion
provided on the supporting portion at a position closer to the
container body than the engaging portion, the displacing force
receiving portion being displaceable with the supporting portion
and having a radially outermost part that is more remote from the
rotation axis of the container body than a radially outermost
part of the engaging portion,
wherein the supporting portion, the engaging portion, and
the displacing force receiving portion are integrally molded.

Ex. 1001, 24:15–25:5.
Claim 11 is substantially identical to claim 1, except that “at least two
supporting portions provided on the sealing member” are recited in claim 11
instead of “a supporting portion provided on the sealing member” recited in
claim 1. Ex. 1001, 25:61–67. Similarly, claims 29 and 38 are substantially
identical to claim 1, except that “a projecting portion” is recited in those
claims instead of “a displacing force receiving portion” recited in claim 1.
Ex. 1001, 28:36–44, 29:46–55. Claim 38 also recites “at least two
supporting portions provided on the sealing member” instead of “a
supporting portion provided on the sealing member” recited in claim 1. Ex.
1001, 29:36–42.

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E. Evidence Relied Upon
Petitioner relies on the following prior art reference:
Reference Date Exhibit
Matsuoka U.S. Patent No. 5,903,806 May 11, 1999 Ex. 1006

Petitioner further relies on the testimony of Dr. Brian Springett.
Ex. 1007.
F. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability:
Challenged Claims Basis References
1, 8, 9, 11, 17, 18, 28, and 38 § 102(b) Matsuoka
1, 7–9, 11, 16–18, 29, and 38 § 103(a) Matsuoka

II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281–1282 (Fed. Cir.
2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
890 (mem.) (2016). Even under the rule of broadest reasonable
interpretation, claim terms are given their ordinary and customary meaning,
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as would be understood by one of ordinary skill in the art in the context of
the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007).
Petitioner and Patent Owner have proposed constructions for several
claim terms. See Pet. 17–22; Prelim. Resp. 19–31. At this stage of the
proceeding, neither party has identified a term for construction that is
dispositive on any of the challenges. For the purposes of this Decision, and
on this record, we determine that no claim term needs express construction
and claim terms proposed by Petitioner will be given their ordinary and
customary meaning. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in
controversy need to be construed, and only to the extent necessary to resolve
the controversy).
B. Legal Standard for 35 U.S.C. §§ 102(b) & 103(a)
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987).
Obviousness is determined on the basis of underlying factual
inquiries, including: (1) the scope and content of the prior art; (2) differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) secondary considerations of nonobviousness.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A patent claim is
unpatentable under 35 U.S.C. § 103 if the differences between the claimed
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subject matter and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). However, a conclusion
of obviousness “cannot be sustained with mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
For this decision, we determine that no express finding on the level of
ordinary skill in the art is necessary, and that the level of ordinary skill in the
art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).

C. Alleged Anticipation of Claims 1, 8, 9, 11, 17, 18, 29, and 38 based
on Matsuoka
Petitioner contends that claims 1, 8, 9, 11, 17, 18, 29, and 38 are
anticipated by Matsuoka under 35 U.S.C. § 102(b). Pet. 23–56. To support
its contention, Petitioner provides a claim chart and detailed explanations as
to how Matsuoka allegedly meets each claim limitation. Id. at 34–56.
Petitioner also relies upon the Springett Declaration. Ex. 1007.
We have considered Petitioner’s analysis and supporting evidence, as
well as Patent Owner’s arguments presented in the Preliminary Response
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(Prelim. Resp. 33–41), and are not persuaded that Petitioner has
demonstrated a reasonable likelihood that it would prevail on this challenge.
(1) Matsuoka: Exhibit 1006
Matsuoka discloses developing agent (toner) replenishing apparatus
40 (part of copier) and toner cartridge (toner supply container) 30, as shown
in Figures 3, 4(a), 4(d), 5(a), 6, 9(a)–7(b), 10(b) and 11. Ex. 1006, Abstract.
Matsuoka’s Figure 3 shows a copier’s developing agent replenishing
apparatus 40 including multiple toner cartridges 30, as reproduced below
with additional markings, in red, for illustration.

Figure 3 of Matsuoka depicts copier’s developing agent replenishing
apparatus 40 including multiple toner cartridges 30.

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As shown in Figure 3, multiple toner cartridges 30 (Y, M, C and K)
are inserted into a copier’s developing agent replenishing apparatus 40, via
receiving ports 42. Ex. 1006, 7:1–14.
Matsuoka’s Figure 4(d) shows each toner cartridge 30, as reproduced
below with additional markings, in red.

Matsuoka’s Figure 4(d) depicts each toner cartridge 30 usable in copier’s
developing agent replenishing apparatus 40.

As shown in Figure 4(d), each toner cartridge 30 includes two main
components: (1) container main body 31 provided with opening 312, and (2)
fixed cover 32 “which is fixed solidly with opening 312 of the container
main body 31” and includes opening/closing cover 33 “which is engaged
inside the fixed cover 32” in the form of expandable/compressible bellows.
Id. at 7:22–30.
Matsuoka’s Figure 6 shows toner cartridge 30 inserted into the
copier’s developing agent replenishing apparatus 40, via receiving port 42,
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and rotated by rotary power transmitting member 44 within the copier’s
developing agent replenishing apparatus 40, as reproduced below with
additional markings, in red.

Figure 6 of Matsuoka depicts toner cartridge 30 inserted in copier’s
developing agent replenishing apparatus 40 and its fixed cover 32
(highlighted in yellow) engaged with rotary power transmitting member 44
(highlighted in red) within developing agent replenishing apparatus 40.

As shown in Figure 6, when toner cartridge 30 is inserted into the
copier’s developing agent replenishing apparatus 40, bellows of
opening/closing cover 33 and opening/closing cover 45 are compressed,
creating replenishment opening 321 for toner to be dispensed. Toner
cartridge 30 is rotated by rotary power transmitting member 44 within
developing agent replenishing apparatus 40 to dispense toner through
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opening 321. Id. at 8:5–7, 33–37; see also id. at 8:45–50 (explaining how
portions within the rotary power transmitting member 44 also “engage on a
detachable basis” with a portion within fixed cover 32 of toner cartridge 30).
(2) Analysis of Anticipation
Each of independent claims 1, 11, 29, and 38 recites a “toner supply
container” comprising two main components: (i) a container body, and (ii) a
sealing member provided at an axial end of the container body with a
specific configuration, shown in Figs. 23A–23B of the ’094 patent. Ex.
1001, 24:15–24. That “sealing member” includes: (ii-i) “a sealing portion,”
and (ii-ii) “a coupling portion” which, in turn, includes: (ii-ii-i) “a supporting
portion,” (ii-ii-ii) “an engaging portion,” and (ii-ii-iiii) “a displacing force
receiving portion” with several corresponding functions. Ex. 1001, 24:24–
25:5.
Petitioner contends that the “sealing member” recited in the
challenged claims as part of the “toner supply container” is met by what
Petitioner refers to as “Matsuoka’s integrally combined fixed cover 32 and
rotary power transmitting member 44.” Pet. 23–27 (citing Matsuoka’s Figs.
6, 7(a)–7(b)). Matsuoka’s fixed cover 32 is a part of Matsuoka’s toner
cartridge 30, and Matsuoka’s rotary power transmitting member 44 is a fixed
part of Matsuoka’s copier’s developing agent replenishing apparatus 40.
Petitioner argues that when Matsuoka’s toner cartridge 30 is inserted into the
copier’s developing agent replenishing apparatus 40 with rotary power
transmitting member 44 engaged with fixed cover 32 of Matsuoka’s toner
cartridge 30, “Matsuoka’s integrally combined fixed cover 32 and rotary
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power transmitting member 44” can be considered as a part of Matsuoka’s
toner cartridge 30. Pet. 25, 27, 34, 40, 47, 51.
Patent Owner responds that: (1) Matsuoka’s toner cartridge 30 does
not include rotary power transmitting member 44; and (2) because rotary
power transmitting member 44 is a fixed part of Matsuoka’s copier’s
developing agent replenishing apparatus 40, Matsuoka’s rotary power
transmitting member 44 cannot be integrally combined with fixed cover 32
and cannot be considered as a part of Matsuoka’s toner cartridge 30. Prelim.
Resp. 33–36 (citing Ex. 1005, Fig. 6, 7:53–8:7).
We agree with Patent Owner. Matsuoka’s toner cartridge 30, shown
in Figure 4(a), contains only two main components: (1) container main body
31 provided with opening 312, and (2) fixed cover 32 including
opening/closing cover 33 “which is engaged inside the fixed cover 32” in the
form of expandable/compressible bellows. Ex. 1006, 7:22–30, Fig. 4(d). As
recognized by Patent Owner, Matsuoka’s toner cartridge 30 does not include
rotary power transmitting member 44. Prelim. Resp. 34 (citing Ex. 1005,
Fig. 6, 7:53–8:7).
Fixed cover 32 and rotary power transmitting member 44, as shown in
Figure 4(d) and Figure 6 of Matsuoka, are separate, distinct components
from two different apparatuses, i.e., Matsuoka’s toner cartridge 30 and
Matsuoka’s copier’s developing agent replenishing apparatus 40. Fixed
cover 32 and rotary power transmitting member 44 are merely engageable
“on a detachable basis” only when Matsuoka’s toner cartridge 30 is inserted
into a copier’s developing agent replenishing apparatus 40. Id. at 35 (citing
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Ex. 1006, 7:38–56, 8:5–7, 33–37, 45–50). Even when engaged with toner
cartridge 30, rotary power transmitting member 44 remains a part of
Matsuoka’s copier’s developing agent replenishing apparatus 40, and does
not become a part of Matsuoka’s toner cartridge 30. Id. at 36.
On this record, we are not sufficiently persuaded that Matsuoka’s
“integrally combined fixed cover 32 and rotary power transmitting member
44” can be said to meet the “sealing member” recited in the challenged
claims as a part of the “toner supply container.”
Even if Matsuoka’s alleged “integrally combined fixed cover 32 and
rotary power transmitting member 44” can be said to meet the “sealing
member” limitation of the challenged claims, the challenged claims also
require the “sealing member” to include:
“a sealing portion provided at a side adjacent the container body
and configured to seal the opening when the sealing member and
the container body are in a first position relative to one another,
the opening becoming unsealed by relative movement of the
sealing member and the container body away from one another
from the first position to a second position relative to one
another.”

Ex. 1001 at 24:25–32, 25:47–54, 28:15–22, 29:24–31 (emphasis added).
Petitioner argues the “sealing portion” recited in the challenged claims
is met by Matsuoka’s fixed cover’s opening/closing cover 33. Pet. 27–29
(citing Ex. 1006, Fig. 7(a)). According to Petitioner, fixed cover’s
opening/closing cover 33 seals opening 312 in Matsuoka’s toner cartridge
30, in a first position, shown in Figure 10(b), and is compressed to unseal or
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form opening 321 in Matsuoka’s toner cartridge 30, in a second position,
shown in Figure 11. Id. at 28–29 (citing Ex. 1006, 9:28–47, 50–54).
Patent Owner responds that the “sealing portion” recited in each of
independent claims 1, 11, 29, and 38 is not met by Matsuoka’s fixed cover’s
opening/closing cover 33. According to Patent Owner, Matsuoka’s toner
cartridge’s opening 321 is unsealed by relative movement of part of the
alleged “sealing member” (rotary power transmitting member 44) toward the
“container body” (cartridge 30 having container main body 31), which is the
opposite of what the challenged claims require. Prelim. Resp. 37–40.
We agree with Patent Owner. At the outset, we note the challenged
claims require that the container’s opening becomes unsealed by relative
movement of the sealing member and the container body away from each
other. As explained by Patent Owner, this relative movement is illustrated,
for example, in Figures 7(B) and 7(C) of the ’094 patent, which show how
opening 1a is unsealed by the relative movement of toner bottle main body
1a away from sealing member 2, specifically, by moving toner bottle main
body 1a in the direction of arrow “b” while sealing member 2 is held fixed
or locked with the main assembly of copier 100. Prelim. Resp. at 37–38
(citing Ex. 1001, 9:25–32, 9:41–7, 13:8–16, 16:67–17:5); see also Ex. 1001,
8:9–17, 11:13–12:18, 13:8–16, 15:4–13, 18:61–19:38, Figs. 24–25A
(describing the “relative movement” between sealing member 2 and toner
bottle 1).
In contrast, Matsuoka’s toner cartridge 30 is unsealed by advancing
toner cartridge 30 with its fixed cover 32 toward rotary power transmitting
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member 44, which causes the expandable bellows of opening/closing cover
33 to compress and unseal opening 321. Ex. 1006, 8:5–7, 33–37, 45–50; see
also Pet. at 28–29. Thus, in Matsuoka, toner cartridge’s opening 321 is
unsealed by relative movement of part of the alleged “sealing member”
(rotary power transmitting member 44) toward the “container body”
(cartridge 30 having container main body 31), which is the opposite of what
the challenged claims require, i.e., the container’s opening becomes unsealed
by relative movement of the sealing member and the container body away
from each other. Id. at 39.
On this record, we are not sufficiently persuaded that Matsuoka’s
fixed cover’s opening/closing cover 33 can be said to meet the “sealing
portion” limitation of the challenged claims.
For these reasons, we are not persuaded that Petitioner has established
a reasonable likelihood that claims 1, 8, 9, 11, 17, 18, 29, and 38 are
anticipated by Matsuoka under 35 U.S.C. § 102(b).
D. Alleged Obviousness of Claims 1, 7–9, 11, 16–18, 29, and 38
based on Matsuoka

Petitioner argues that claims 1, 7–9, 11, 16–18, 29 and 38 would have
been obvious under 35 U.S.C. §103 over Matsuoka. Pet. 16, 56–59. We
understand Petitioner’s argument as this: First, Matsuoka’s toner cartridge
30 is alleged to include every claim limitation except for the “sealing
member” of independent claims 1, 11, 29, and 38; second, assuming that
Matsuoka’s toner cartridge 30 cannot be deemed as including rotary power
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transmitting member 44 of the copier to meet the “sealing member”
limitation, toner cartridge 30 can still be made to include in its structure
rotary power transmitting member 44 such that member 44 would be a part
of toner cartridge 30. In particular, Petitioner, relying on Dr. Springett’s
testimony, argues that: (1) Matsuoka’s fixed cover 32 and Matsuoka’s rotary
power transmitting member 44 can be combined as a single piece
construction, and (2) such a single piece construction “would be merely a
matter of obvious engineering choice” to a person of ordinary skill. Pet. 56–
58 (citing Ex. 1007 ¶¶ 73–76).
Patent Owner responds that: (1) Petitioner fails to present an
articulated reason with rational underpinnings to properly support its
assertions of obviousness, and (2) Petitioner’s proposed modification of
Matsuoka’s toner cartridge to incorporate rotary power transmitting member
44 from the copier’s developing agent replenishing apparatus 40 does not
render the challenged claims obvious, as the prior art does not describe
certain claim limitations. Prelim. Resp. 41–45.
We agree with Patent Owner. A determination of unpatentability on a
ground of obviousness must include “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR,
550 U.S. at 418 (quoting Kahn, 441 F.3d at 988). Petitioner does not
provide articulated reasoning with rational underpinnings as to why one of
ordinary skill in the art would have been motivated to modify Matsuoka’s
toner cartridge 30 to incorporate rotary power transmitting member 44 from
the copier’s developing agent replenishing apparatus 40 in order to arrive at
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the claimed subject matter. Instead, Petitioner proffers only conclusory
obviousness assertions that Matsuoka’s fixed cover 32 and Matsuoka’s
rotary power transmitting member 44 can be combined as a single piece
construction. Pet. 56–57. Petitioner’s obviousness arguments lack any
persuasive reason why a skilled artisan would be motivated to modify
Matsuoka’s toner cartridge 30 to incorporate rotary power transmitting
member 44 from the copier’s developing agent replenishing apparatus 40.
As discussed supra, Matsuoka’s toner cartridge 30 contains only two
main components: (1) container main body 31 provided with opening 312,
and (2) fixed cover 32 including opening/closing cover 33 “which is
engaged inside the fixed cover 32” in the form of expandable/compressible
bellows. Ex. 1006, 7:22–30, Fig. 4(d). Matsuoka’s toner cartridge 30 does
not include rotary power transmitting member 44, which is a fixed part of
the copier’s developing agent replenishing apparatus 40. Ex. 1006, Figs. 3,
4(d), 6. Fixed cover 32 and rotary power transmitting member 44 are merely
engageable “on a detachable basis” when Matsuoka’s toner cartridge 30 is
inserted into the copier’s developing agent replenishing apparatus 40, as
shown in Figure 6 of Matsuoka. Ex. 1006, 7:38–56, 8:5–7, 33–37, 45–50.
In order to seal and unseal Matsuoka’s toner cartridge 30, fixed cover
32 must be able to engage and disengage from rotary power transmitting
member 44. Id. at 8:60–9:6, 9:45–54, 11:31–12:18, Figs. 23A–23B. If fixed
cover 32 and rotary power transmitting member 44” were to be combined as
a single piece in the manner proposed by Petitioner, we are persuaded by
Patent Owner that a permanently engaged rotary power transmitting member
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44 would result in a permanently unsealed cartridge, i.e., toner cartridge 30
would not be sealed and whatever toner remains in the toner cartridge 30
would scatter in the copier or soil the operator’s hands, especially during
removal of the toner cartridge from the copier. This is because, as a single
piece construction, fixed cover 32 and rotary power transmitting member 44
are permanently attached and are no longer able to engage and disengage
from each other in order to seal and unseal Matsuoka’s toner cartridge 30.
In his declaration, Dr. Springett testifies that Matsuoka’s fixed cover 32 (part
of toner cartridge) and Matsuoka’s rotary power transmitting member 44
(part of copier) can be combined as a single piece, but does not explain how
Matsuoka’s toner cartridge 30 can be sealed and unsealed if fixed cover 32
and rotary power transmitting member 44 were a single piece. Ex. 1007
¶¶ 72–75.
On this record, we are not sufficiently persuaded that a skilled artisan
would have had a reason to modify Matsuoka’s toner cartridge 30 to
incorporate rotary power transmitting member 44, and that the proposed
modification of Matsuoka’s toner cartridge 30 would arrive at the claimed
subject matter. Petitioner does not explain why Matsuoka’s toner cartridge
30 would be suitable for its intended purposes if Matsuoka’s toner cartridge
30 were modified to incorporate rotary power transmitting member 44 (part
of copier). To the contrary, it appears that the proposed modification of
Matsuoka’s toner cartridge 30 to incorporate rotary power transmitting
member 44 (part of the copier) would render Matsuoka’s toner cartridge 30
unsuitable for its intended purposes. In re Gordon, 733 F.2d 900, 902 (Fed.
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Cir. 1984) (if proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, then there is no
suggestion or motivation to make the proposed modification); see also In re
Ratti, 270 F.2d 810, 813 (CCPA 1959) (If the proposed modification or
combination of the prior art would change the principle of operation of the
prior art invention being modified, then the teachings of the references are
not sufficient to render the claims prima facie obvious.). Because the
proposed modification of Matsuoka’s toner cartridge 30 would likely render
toner cartridge 30 unsuitable for its intended purposes, we are not persuaded
that a single piece construction of Matsuoka’s fixed cover 32 and rotary
power transmitting member 44 would have been “a matter of obvious
engineering choice” as Petitioner argues. Pet. 56–58 (citing Ex. 1007 ¶¶ 73–
76).
Lastly, even if Matsuoka’s toner cartridge 30 were modified to
incorporate rotary power transmitting member 44 in the manner suggested
by Petitioner, it appears the redesigned toner cartridge 30 would be in a
permanently unsealed state, and none of the rotary power transmitting
member 44, the fixed cover 32, or the opening/closing cover 33 would move
relative to the container main body 31 in the manner required by the
“relative movement” limitation of the challenged claims as discussed supra.
For these reasons, we are not persuaded that Petitioner has established
a reasonable likelihood that claims 1, 7–9, 11, 16–18, 29, and 38 are
unpatentable under 35 U.S.C § 103(a) as obvious over Matsuoka.

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III. CONCLUSION
For the foregoing reasons, and having considered the Petition and all
of the arguments presented in the Preliminary Response, we determine the
information presented in the Petition does not establish a reasonable
likelihood that Petitioner would prevail in showing the unpatentability of
any one of claims 1, 7–9, 11, 16–18, 29, and 38 of the ’094 patent.

IV. ORDER
Accordingly, it is:
ORDERED that the Petition is denied as to all challenged claims and
no trial is instituted.

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For PETITIONER:
Steven F. Meyer
Tim Tingkang Xia
LOCKE LORD LLP
smeyer@lockelord.com
ptopatentcommunication@lockelord.com

For PATENT OWNER:
Justin J. Oliver
Edmund J. Haughey
FITZPATRICK, CELLA, HARPER & SCINTO
Canon094IPR@fchs.com