HEWLETT-PACKARD INDIGO B.V.

Patent Trials and Appeals Board

Apr 5, 2021

2020000418 (P.T.A.B. Apr. 5, 2021)

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.
15/523,184 04/28/2017 Ron Emanueli 84618138 9398
22879 7590 04/05/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
ELEY, JESSICA L
ART UNIT PAPER NUMBER
2852
NOTIFICATION DATE DELIVERY MODE
04/05/2021 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RON EMANUELI, MICHAEL PLOTKIN,
HAIM LIVNE, and NAPOLEON J. LEONI
____________

Appeal 2020-000418
Application 15/523,184
Technology Center 2800
____________
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
PER CURIAM Opinion for the Board.
Opinion Dissenting in Part filed by Administrative Patent Judge BEST.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20 of Application 15/523,184. Final
Act. (October 1, 2018). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm in part.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies HP Indigo B.V. as the real party in interest. Appeal Br. 2.
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2
I. BACKGROUND
The ’184 Application describes an imaging and printing system
known as a liquid electro-photographic printing system. Spec. ¶ 11. In such
a system, a rotating polygonal mirror is used to repeatedly scan a laser beam
across a target, e.g., a portion of a photo conducting element of a printing
system. Id. ¶¶ 11–14. During each scan, the laser beam is modulated in
accordance with an image to be printed, causing selective discharge of
locations on the photoconducting element. Id. ¶ 14.
The mirror’s high-speed rotation causes turbulent air flow and may
consequently generate substantial noise. Id. ¶ 17. Moreover, the pressure
within the turbulent air varies by up to about 10%, which causes variations
in the air’s refractive index. Id. ¶ 42. The refractive index variation affects
the laser beam passing through the air, resulting in image quality problems.
Id. ¶¶ 40, 43.
The apparatus described and claimed in the ’184 Application is said to
reduce these image quality problems by reducing or eliminating optical
distortion effects due to air turbulence. Id. ¶ 55.
Independent claims 1, 10, and 16 are representative of the ’184
Application’s claims and are reproduced below from the Appeal Brief’s
Claims Appendix with the limitations that are significant to our analysis
italicized.
1. An imaging system, comprising:
a housing;
a rotatable polygon comprising multiple mirrored facets
located in the housing;
a laser to generate a laser beam to shine onto the polygon
mirror and to reflect onto a target;
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wherein, in use, the density of gas within the housing is
such that the turbulence-related optical distortion within the
housing is not greater than a predetermined limit.
Appeal Br. 20 (emphasis added).
10. An electronic printing system, comprising:
an imaging system housing;
a rotatable polygon comprising multiple mirrored facets
located in the housing;
a laser to generate a laser beam to shine onto the polygon
mirror and to reflect onto a photoconductor member;
wherein the density of gas within the housing is such that,
when the mirror is rotating at high-speed, turbulence-related
optical distortion within the housing does not adversely affect
the laser beam.
Id. at 21–22 (emphasis added).
16. An imaging system, comprising:
a sealed housing;
a rotatable polygon mirror comprising multiple mirrored
facets located in the housing;
a portion of the housing transparent to a laser;
a laser to generate a laser beam to shine through the
transparent portion of the housing onto the polygon mirror and
to be scanned by the polygon mirror over a target;
wherein, in use, a density of the gas within the housing is
reduced below atmospheric pressure to reduce turbulence-
related optical distortion within the housing.
Id. at 23 (emphasis added).
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1 and 10 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Date.2 Final Act. 3.
2. Claims 2–4, 11, 12, and 15–20 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Date and Obi.3 Final Act. 4.
3. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Date and Kamono.4 Final Act. 7.
4. Claims 7–9, 13, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Date and Suzuki.5 Final Act. 7.
III. DISCUSSION
A. Rejection of claims 1 and 10 as anticipated by Date
The Examiner rejected claims 1 and 10 as anticipated by Date. Final
Act. 3.
Appellant presents separate arguments for reversal of the rejection of
claims 1 and 10. Appeal Br. 9–12. After we briefly discuss Date’s apparatus,
we will address claims 1 and 10 individually.

2 US 6,285,482 B1, issued September 4, 2001.
3 US 2009/0185249 A1, published July 23, 2009.
4 US 2002/0192579 A1, published December 19, 2002.
5 US 2011/0025813 A1, published February 3, 2011.
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1. Date’s Apparatus
Date describes an improved optical deflecting-scanning apparatus
used in, e.g., laser printers or digital copiers. Date 1:7–9. For ease of
reference, we reproduce Date’s Figure 1A below.

Date’s Figure 1A shows a partial plan view of a
conventional optical deflecting-scanning
apparatus. Date 3:14–17.
According to Date, a conventional deflecting-scanning apparatus
includes a rotary polygonal mirror 103, which is housed within cover
member 104. Id. at 3:41–49. Cover member 104 includes opening 104a
which is covered by dustproof glass member 105. Id. at 1:51–57. Incident
laser light L0 passes through glass member 105, is reflected by one face of
polygonal mirror 103, and exits housing 104 by passing through glass
member 105 again. Id. at Figure 1A.
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Date describes the conventional technology as resulting in an
apparatus that creates a great deal of acoustic noise. Id. at 1:5–2:30. To
address this noise problem, Date changes the mirror assembly’s cover.
Date’s Figure 3B, reproduced below, shows the changes in the space around
the rotating mirror resulting from the altered cover design.

Date’s Figure 3B is a partial plan view of an
optical deflecting and-scanning apparatus with a
modified cover as described by Date. Date 3:21–
25, 3:37–4:26.
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As shown in Date’s Figure 5, the redesign results in a more uniform
pressure around the rotary polygonal mirror. Id. at 4:42–49. For ease of
reference, we reproduce Date’s Figure 5 below.

Date’s Figure 5 is a graph showing the pressure
amplitudes around the rotary polygon mirror in
Date’s design (A) and the conventional
embodiment (B). Date 4:27–54.
According to Date, the change in cover design “greatly decreases the
wind noise itself of the rotary polygon mirror and thus decreases the load on
the motor due to nonuniform pressure, thereby reducing the vibration of the
motor and also decreasing the vibration of the optical box etc. caused by
propagation of the vibration of the motor.” Id. at 4:49–54.
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2. Claim 1
Appellant argues that Date does not anticipate claim 1 because Date
does not describe the limitation “wherein, in use, the density of gas within
the housing is such that the turbulence-related optical distortion within the
housing is not greater than a predetermined limit.” Appeal Br. 9–11. In
particular, Appellant argues that Date “does not establish a predetermined
limit for turbulence-related optical distortion and does not seek to satisfy
such a limit through the density of gas within the housing.” Id. at 10.
In rejecting claim 1, the Examiner found that the structure of Date’s
apparatus inherently performs the function recited in the limitation at issue.
Final Act. 2.
We do not find Appellants’ argument persuasive. Claim 1 is directed
to an apparatus. “[A]pparatus claims cover what a device is, not what a
device does.” Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990). Thus, “[i]t is well settled that patentability of
apparatus claims must depend upon structural limitations and not upon
statements of function.” In re Michlin, 256 F.2d 317, 320 (CCPA 1958); see
also In re Danly, 263 F.2d 844, 848 (CCPA 1959); In re Gardiner, 171 F.2d
313, 315–16 (CCPA 1949). If the prior art structure possesses all the
claimed characteristics, including the capability of performing the claimed
function, then there is a prima facie case of unpatentability. In re Ludtke,
441 F.2d 660, 663-64 (CCPA 1971). Choosing to define an element in an
apparatus functionally—i.e., by what it does—as Appellant does here in
claim 1, carries with it a risk. Where there is reason to conclude that the
structure of the prior art is inherently capable of performing the claimed
function, the burden shifts to the applicant to show that the claimed function
patentably distinguishes the claimed structure from the prior art structure.
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See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman,
655 F.2d 212, 215 (CCPA 1981). Appellant has not met that burden here.
As discussed above, Date describes the reduction of wind noise
created by the rotating polygonal mirror due to the redesign of the mirror
housing cover. According to Date, the redesign reduces the wind noise by
creating smoother—i.e., less turbulent—air flow around the rotating mirror.
Because Date reduces turbulence in the air flow around the rotating mirror, it
necessarily reduces “turbulence-related optical distortion within the
housing” as required by claim 1.
Appellant argues that Date does not describe reducing the optical
distortion below a predetermined limit because Date does not recognize that
optical distortion is affected by the change in wind noise produced by its
redesign. Appeal Br. 10.
This argument is not persuasive. As the Examiner points out, the ’184
Application’s Specification is silent as to the details regarding the
predetermined limit for turbulence-related optical distortion. See Answer 10
(“Applicant never teaches or enables a specific predetermined limit.”). Thus,
the predetermined limit can have any arbitrary value. This renders the scope
of claim 1 sufficiently broad that it reads on Date’s apparatus. In other
words, the predetermined limit could be high enough that Date’s apparatus
necessarily achieves the required degree of reduction in turbulence-related
optical distortion. Appellants have not provided any persuasive reasoning or
credible evidence to refute the Examiner’s de facto determination that Date’s
apparatus as denominated by the Examiner is capable of having “in use, the
density of gas within the housing . . . such that the turbulence-related optical
distortion within the housing is not greater than a predetermined limit” (see
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generally Ans.). Attorney’s arguments in a brief cannot take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
In view of the foregoing, we affirm the rejection of claim 1 as
anticipated by Date.
3. Claim 10
According to Appellant, “claim 10 recites that ‘turbulence-related
optical distortion within the housing’ is recognized and is controlled to ‘not
adversely affect the laser beam.’ (Claim 10). This is achieved by controlling
‘the density of gas within the housing.’ (Claim 10). As demonstrated above,
there is no teaching or suggestion in Date.” Appeal Br. 12.
The Examiner found that Date inherently performs this function. Final
Act. 2. As discussed above, elements found to be inherently present must
necessarily be present in or result from the prior art. Montgomery, 677 F.3d
at 1379‒80.
We begin by considering the proper interpretation of the claim’s
language, focusing on the phrase “adversely affect.” The relevant portion of
the Specification states that “[b]y adversely affect is meant that the degree of
any optical distortion is not greater than a predetermined limit.” Spec. ¶ 55.
When the Specification defines the term this clearly, we give effect to that
definition. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996) (“[W]ords in a claim are generally given their ordinary and
customary meaning, [but] a patentee may choose to be his own
lexicographer and use terms in a manner other than their ordinary meaning,
as long as the special definition of the term is clearly stated in the patent
specification or file history.”).
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In view of the foregoing claim construction, claim 10 requires that the
turbulence-related optical distortion within the housing does not exceed a
predetermined limit. As we have previously discussed, we have determined
that the Examiner did not err in finding that Date inherently describes each
limitation of the having an optical distortion that does not exceed a
predetermined limit. Appellants have not provided any persuasive reasoning
or credible evidence to refute the Examiner’s de facto determination that
Date’s apparatus is capable of having “the density of gas within the housing
[be] such that, when the mirror is rotating at high-speed, turbulence-related
optical distortion within the housing does not adversely affect the laser
beam.” See generally Answer. Once again, an attorney’s arguments cannot
take the place of evidence. Pearson, 494 F.2d at 1405.
Thus, we also affirm the rejection of claim 10 as anticipated by Date.
B. Rejection of claims 2–4, 11, 12, and 15–20 as obvious over the
combination of Date and Obi
1. Claim 2–4
Claim 2 depends from claim 1. Claims 3 and 4 depend from claim 2.
Thus, we begin our analysis by considering claim 2.
We reproduce claim 2 below:
2. The imaging system of claim 1, wherein the housing is
hermetic or substantially hermetic, and where in the imaging
system further comprises:
a pump connected to the housing through a conduit; and
a pump controller to control the pump to remove air from
the housing to reduce the air pressure within the housing to a
predetermined level.
Appeal Br. 20.
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In rejecting claim 2, the Examiner found that Date describes or
suggests each limitation of claim 1. Final Act. 5. The Examiner relies upon
Obi as describing each of the additional limitations recited in claim 2. Id.
Appellant presents two arguments for reversal of the rejection of
claim 2.
First, Appellant argues that claim 2 is patentable for the same reasons
that claim 1 is patentable. Appeal Br. 12. As discussed above, we have
determined that claim 1 is anticipated by Date. Thus, Appellant’s first
argument for the patentability of claim 2 is not persuasive.
Second, Appellant argues that the Examiner erred by finding that Obi
describes or suggests the additional limitations recited in claim 2. Id. at 13–
17. In particular, Appellant argues that Obi does not describe or suggest
using a pump to reduce air pressure in a housing in which a rotatable
polygonal mirror is used to scan an optical beam. Id. at 13.
We find this argument persuasive.
In this rejection, the Examiner relied upon Obi’s paragraphs 105–108
as describing the limitations recited in claim 2. Final Act. 5–6. The
Examiner found that Obi describes a hermetically sealed housing comprising
a vacuum pump connected to the housing a conduit is used to remove air
from the housing. Id. at 5. The Examiner further found that it would have
been obvious to a person having ordinary skill in the art to combine Obi’s
vacuum system with Date’s rotating polygonal mirror so that the position of
the elements in the scanning unit could be maintained even in the event of an
abrupt stop. Id. (citing Obi ¶¶ 105–108).
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Obi describes a scanning unit that uses a pivoting mirror to scan a
laser beam and produce a projected image. Obi ¶¶ 1, 80–90. An embodiment
of Obi’s pivoting mirror is shown in Figure 5, which we reproduce below.
Figure 5 is a diagram showing a scan unit
described in Obi. Figure 5 (a) shows the scan unit
in normal operation. Figure 5B shows the scan unit
when the scan unit is not moving. Obi ¶ 36.
As depicted in Obi’s Figure 5, Obi’s scan unit 4 comprises reflecting
portion 21 for reflecting laser light 6, enclosure portion 17 in which a
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movable object 19 is enclosed, and suspensions 20 that pivotably support
scan unit 4. Obi ¶ 84. Movable object 19 is enclosed in hollow portion 18
which is defined by enclosure portion 17. Id. In use, actuators cause scan
unit 4 to oscillate. Id. ¶ 86. This oscillation results in an inertial force that
acts upon movable object 19 causing movable object 19 to shift toward the
outer periphery of hollow portion 18. Id. ¶ 88. When oscillation of scan unit
4 ceases, the inertial force acting on movable object 19 disappears, and
movable object 19 shifts toward the center of hollow portion 18, covering
reflecting portion 21. Id. ¶ 89. To lower the resistance to motion of movable
object 19, a vacuum pump may be used to remove gas from hollow portion
18 of scan unit 4. Id. ¶ 108. Obi also describes a use of the rotating polygon
mirror as an alternative to the pivoting mirror depicted in Figure 5. Id. ¶ 72.
Based upon our review of Obi, the Examiner reversibly erred in
rejecting claim 2 as obvious over the combination of Date and Obi.
First, the Examiner erred by finding that Obi describes a rotating
polygonal mirror within a hermetically sealed housing. Final Act. 5. Obi
does not describe an embodiment including a rotating polygonal mirror in
any detail. Obi ¶ 72. A person of ordinary skill in the art, however, would
have understood that an embodiment of Obi’s scan unit comprising a
rotating polygonal mirror would have had an enclosure portion 17 defining a
hollow 18 in front of each face of the polygonal mirror. Thus, Obi’s rotating
polygonal mirror is not enclosed within a housing.
Second, the Examiner erred by finding that the combination of Date
and Obi “would have yielded the predictable result, namely maintaining the
position of the elements in the scanning unit even in the event of an abrupt
stop (¶0105-¶0108).” Final Act. 5. This is precisely contrary to Obi’s
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15
description of its function. As Obi makes clear, in the event of an abrupt
stop, movable object 19 shifts position and covers reflecting portion 21. Obi
¶¶ 89–90. Thus, the Examiner erred in finding that a person of ordinary skill
in the art would have had a reason to combine Date and Obi in the manner
proposed in the rejection of claim 2.
For these reasons, we reverse the rejection of claim 2 as unpatentable
over the combination of Date and Obi.
Claims 3 and 4 depend from claim 2. For the reasons set forth above,
we have reversed the rejection of claim 2 as unpatentable over the
combination of Date and Obi. Thus, we also reverse the rejection of claims 3
and 4 as obvious over the combination of Date and Obi.
2. Claims 11, 12, and 15
Claims 11, 12, and 15 depend from claim 10. Appeal Br. 22. The
Examiner rejected these claims as obvious over the combination of Date and
Obi using the same findings and reasoning used to reject claims 2–4. Final
Act. 5–6.
We, therefore, reverse the rejection of these claims for the reasons set
forth in § III.B.1 above.
3. Claim 16–20
Claim 16 is an independent claim. Appeal Br. 23. Claims 17–20
depend from claim 16. Id. at 23–24. Appellant argues for reversal of this
rejection based on claim 16’s limitations. See id. at 17–18. We, therefore,
select claim 16 is representative of this group of claims. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner rejected claim 16 as obvious over the combination of
Date and Obi. Final Act. 6. In doing so, the Examiner found that Date
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describes each limitation recited in claim 16 except for the housing being
sealed and containing reduced density gas. Id. The Examiner further found
that Obi describes these missing limitations. Id. (citing Obi ¶¶ 91, 108, 151,
175).
We reverse the rejection of claim 16 for two reasons.
First, as discussed in § III.B.1, the Examiner erred by finding that Obi
describes a rotating polygonal mirror inside a sealed housing. Instead, Obi
describes a rotating polygonal mirror, each face of which is covered by an
enclosure portion that defines a hollow in front of that face. Obi describes
the use of its vacuum pump system to reduce resistance to motion of the
moving body that obscures the reflective surface when the polygonal mirror
is not rotating. Obi’s system does not reduce turbulence caused by rotation
of the polygonal mirror.
Second, the Examiner has not provided any reason why a person
having ordinary skill in the art would have combined Date and Obi to arrive
at the subject matter recited in claim 16. See Final Act. 6. Such an
explanation is a necessary part of the rejection under § 103.
Due to these errors, the Examiner has not demonstrated a prima facie
case that the subject matter of claim 16 would have been obvious to a person
having ordinary skill in the art at the time of the invention.
We, therefore, reverse the rejection of claims 16–20 as unpatentable
over the combination of Date and Obi.
C. Rejection of claims 5 and 6 as obvious over the combination of Date
and Kamono
The Examiner rejected claims 5 and 6 as unpatentable over the
combination of Date and Kamono. Final Act. 7. The Appeal Brief does not
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contain substantive argument for reversal of this rejection. Appellant’s
assertion that “the subject matter [of claim 5] is beyond the scope and
content of the cited references” is insufficient to amount to a separate
argument for patentability of claim 5. See 37 C.F.R. § 41.37(c)(1)(iv).
In view of the foregoing, we affirm the rejection of claims 5 and 6.
D. Rejection of claims 7–9, 13, and 14 as obvious over the combination
of Date and Suzuki
The Examiner rejected claims 7–9, 13, and 14 as obvious over the
combination of Date and Suzuki. Final Act. 7–8.
Appellant argues that the rejection should be reversed “for at least the
same reasons given above in favor of the patentability of the corresponding
independent claim.” Appeal Br. 19. Claims 7–9 depend from claim 1.
Claims 13 and 14 depend from claim 10. As discussed in § III.A, to reverse
the rejection of these independent claims. Thus, we also affirm the rejection
of claims 7–9, 13, and 14.
IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)
Basis Affirmed Reversed
1, 10 102(a)(1) Date 1, 10
2–4, 11,
12, 15–20 103 Date, Obi
2–4, 11, 12,
15–20
5, 6 103 Date, Kamono 5, 6
7–9, 13,
14 103 Date, Suzuki
7–9, 13,
14
Overall
Outcome
1, 5–10,
13, 14
2–4, 11, 12,
15–20
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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 IN PART

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BEST, Administrative Patent Judge, dissenting in part.
I respectfully dissent from the portions of the per curiam opinion
affirming the rejection of claims 1 and 10. For the reasons set forth below, I
would reverse the rejection of these claims.
The panel majority affirms the rejection of claims 1 and 10 because
they agree with the Examiner’s finding that the claim limitation requiring
that the optical distortion be “not greater than a predetermined limit” (claim
1) or “does not adversely affect the laser beam” (claim 10) is inherently
described by Date.
I respectfully disagree.
It has long been the law that elements found to be inherently present
must necessarily be present in or result from the prior art. In re Montgomery,
677 F.3d 1375, 1379‒80 (Fed. Cir. 2012). “Inherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient.” In re Olerich,
666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d
212, 214 (CCPA 1939)).
In considering the limitations identified above, the panel majority
explains that the predetermined limit could be set at a level high enough that
Date’s apparatus reduces optical distortion to a level below the limit. Of
course, if the limit could be set at a high enough level that Date’s apparatus
falls within the scope of the claim, the limit also might not be set at such a
high level.
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In my view, therefore, a finding of inherency is not proper in the
circumstance. In the absence of such a finding, the Examiner has not
established a prima facie case of obviousness for claims 1 and 10.