Hiromitsu Tamura et al.

Patent Trials and Appeals Board

Mar 23, 2020

13811055 - (D) (P.T.A.B. Mar. 23, 2020)

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.
13/811,055 03/14/2013 Hiromitsu Tamura SIG-127 8018
32628 7590 03/23/2020
KANESAKA BERNER AND PARTNERS LLP
2318 MILL ROAD
SUITE 1400
ALEXANDRIA, VA 22314-2848
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
03/23/2020 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):
docketing@ipfirm.com
office@uspatentagents.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROMITSU TAMURA, TSUYOSHI KUBOTA, and
YUICHI AIHARA
Appeal 2018-003750
Application 13/811,055
Technology Center 2800
Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 3–6, 19–25, and 27–39.3

1 This Decision includes citations to the following documents: Specification
filed January 18, 2013 (“Spec.”); Final Office Action dated April 7, 2017
(“Final”); Appeal Brief filed August 29, 2017 (“Appeal Br.”); Examiner’s
Answer dated December 15, 2017 (“Ans.”); and Reply Brief filed February
15, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Toppan
Printing Co., Ltd. and Nisca Corporation. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).

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We AFFIRM IN PART.
CLAIMED SUBJECT MATTER
The invention relates to a printing device and a method for
transferring an image on a transfer film to a recording medium such as a
plastic card. Spec. ¶¶ 1, 2. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A printing device for forming an image on a card-shaped
recording medium, comprising:
a medium transport path in which the recording medium
is transported;
an image formation section, provided on the medium
transport path, having a platen;
a medium transport device for transporting the recording
medium to the image formation section;
a film unit for transporting a transfer film to the image
formation section, having a guide member supporting the
transfer film;
a transfer roller for transferring an image formed on the
transfer film to the recording medium;
a transfer roller up-and-down device for moving the
transfer roller up and down between an actuation position in
press-contact with the recording medium in the image
formation section and a retracted position separated therefrom;
a peeling member disposed on a downstream side in a
medium transport direction of the transfer roller, and adapted to
support the transfer film with the guide member, the peeling
member being adapted to peel off the transfer film of which the
image is transferred in the image formation section from the
recording medium;
a peeling member up-and-down device for moving the
peeling member up and down between an actuation position for
peeling off the transfer film of which the image is transferred to
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the recording medium in which the peeling member contacts
the recording medium through the transfer film, and a retracted
position for supporting the transfer film in which the peeling
member is separated from the recording medium; and
a control device for controlling the transfer roller up-and-
down device and the peeling member up-and-down device,
wherein the control device transports the peeling member
from the retracted position to the actuation position when the
recording medium approaches the image formation section,
performs an alignment processing for the recording medium
and the transfer film to align, shifts the transfer roller to the
actuation position, shifts the transfer roller from the actuation
position to the retracted position after a rear end of the
recording medium passes through the transfer roller, and shifts
the peeling member from the actuation position to the retracted
position after the rear end of the recording medium passes
through the peeling member, and
when the peeling member is in the retracted position, the
transfer film is positioned away from the medium transport
path, and when the peeling member is in the actuation position,
the transfer film is positioned in the medium transport path.
Appeal Br. 19–20 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
Name Reference Date
Baumgartner US 2,737,089 March 6, 1956
Asakura US 4,887,096 December 12, 1989
Miyaji US 6,157,399 December 5, 2000
Kosaka US 6,640,717 B2 November 4, 2003
Araki US 6,801,236 B2 October 5, 2004
Honma US 2003/0025781 A1 February 6, 2003

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REJECTIONS
1. Claims 1, 3–6, 19, 23–25, and 27–39 are rejected under 35
U.S.C. § 103(a) as unpatentable over Miyaji in view of Honma, Asakura,
and Araki.
2. Claims 20 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Miyaji in view of Honma, Asakura, Araki, and Kosaka.
3. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Miyaji in view of Honma, Asakura, Araki, and Baumgartner.
OPINION
Claims 1, 3, 4, 6, 19, 23, 24, and 27–39
Independent claim 1 recites a printing device and independent claims
19 and 27 recite printing methods that use a printing device. Appeal Br. 19,
21, 24 (Claims Appendix). Each of these claims requires that the printing
device include a peeling member up-and-down device for moving a peeling
member to an actuation position and to a retracted position. See id. at 19, 21,
25. The claims recite that in the actuation position, the peeling member
contacts the recording medium through the transfer film, and in the retracted
position, the peeling member supports the transfer film and is separated from
the recording medium. Id. Independent claim 1 requires that “when the
peeling member is in the retracted position, the transfer film is positioned
away from the medium transport path.” Id. at 20. Independent claims 19 and
27 also recite a step of shifting the peeling member from the actuation
position to the retracted position in which “the transfer film is positioned
away from the medium transport path.” Id. at 22, 25.
The Examiner found that Miyaji discloses a printing device for
forming an image on a recording medium that includes a peeling member up
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and down means for moving the peeling member (14) between actuation and
retracted positions. Final 3. The Examiner found that Miyaji does not
disclose that the transfer film is positioned away from the medium transport
path when the peeling member is in the retracted position. Id. at 4. The
Examiner found that Asakura discloses a printing device that includes a
peeling member up-and-down device (peeling lever 58) for moving the
peeling member (peeling roller 54) between actuation and retracted
positions. Id. at 5. The Examiner found that in the retracted position, the
transfer film (ink ribbon 1) is positioned away from the medium transport
path. Id. The Examiner found that the ordinary artisan at the time of the
invention would have modified Miyaji’s peeling member up and down
means such that the transfer film was moved away from the medium
transport path, as taught by Asakura, “in order to more efficiently replace the
transfer film in the apparatus and move the peeling roller into and out of an
operative position.” Id. at 6.
The Appellant’s sole argument in support of patentability of
independent claims 1, 19, and 27 is that the applied prior art fails to disclose
or suggest that in the retracted position, the peeling member supports the
transfer film and is separated from the recording medium. See Appeal Br.
10–15. The Appellant argues that when Asakura’s peeling roller 54 is in the
retracted position, the transfer film (ink ribbon 1) is held in contact with the
medium transport path (platen 10) by thermal head 25. Id. at 13 (providing
an annotated copy of Asakura Figure 19A).
In response to the Appellant’s argument, the Examiner argues that the
claim language does not require a complete separation of the transfer film
from the medium support path. Ans. 3. We agree. We have reviewed the
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Specification and do not find any disclosure that supports the Appellant’s
narrow interpretation of the claim language as requiring a separation
between the entire transfer film and the medium support path. In the Reply
Brief, the Appellant does not dispute the Examiner’s claim interpretation,
but raises a new argument in support of patentability of independent claims
1, 19, and 27. See Reply Br. 1–3. We decline to consider this argument
because the Appellant has not explained why the argument was not made in
the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (“The reply brief is not an opportunity to make
arguments that could have been made during prosecution, but were not. Nor
is the reply brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s rejections, but
were not.”).
The Appellant does not present separate arguments in support of
patentability of dependent claims 3, 4, 6, 23, 24, and 28–39. Accordingly,
for the reasons stated above, in the Final Office Action, and in the Answer,
we sustain the rejection of claims 1, 3, 4, 6, 19, 23, 24, and 27–39 under 35
U.S.C. § 103(a) as unpatentable over Miyaji in view of Honma, Asakura,
and Araki.
Claims 5 and 25
Dependent claims 5 and 25 depend indirectly from claims 1 and 19,
respectively, and recite that the transfer roller comprises a heat transfer roller
that includes a cover member. See Appeal Br. 20, 24. As to the cover
member, the Examiner found that “this would be a common and obvious
addition to the combined invention.” Final 11; see also Ans. 4.
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We agree with the Appellant that the Examiner’s statement is
insufficient to satisfy the USPTO’s burden of establishing a prima facie case
of obviousness. See Appeal Br. 15. As explained by our reviewing court,
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35
U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original).
Accordingly, we reverse the rejection of claims 5 and 25 under 35
U.S.C. § 103(a) as unpatentable over Miyaji in view of Honma, Asakura,
and Araki.
Claims 20 and 21
Claim 20 depends from claim 1 and recites “wherein the peeling
member is in the retracted position for preventing the recording medium
from colliding with the peeling member when the recording medium is
transported toward the reverse unit for printing on said another side of the
recording medium.” Appeal Br. 22 (Claims Appendix). Claim 21 depends
from claim 19 and recites a step of “transporting the recording medium
toward a reverse unit after the transfer roller retracting step, . . . wherein the
peeling member is in the retracted position for preventing the recording
medium from colliding with the peeling member when transporting the
recording medium toward the reverse unit.” Id. The Appellant argues that
the Examiner failed to identify a prior art teaching of these claim limitations.
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As to claim 20, the Examiner found that the ordinary artisan at the
time of the invention would have modified Miyaji to include a reverse unit,
as taught by Kosaka, in order to enable printing on both sides of the
recording medium. Final 18. The Examiner further found that
the combined teachings of the cited prior art would [have]
suggest[ed] that the peeling member be in the retracted position
for preventing the recording medium from colliding with the
peeling member when the recording medium is transported
toward the reverse unit for printing on said another side of the
recording medium in order to maintain the integrity of the
recording medium.
Id. The Examiner made similar findings as to claim 21. See id. at 18–20.
Specifically, the Examiner found that the ordinary artisan would have
modified Miyaji’s method to include Kosaka’s reverse unit operational
steps. Id. at 19. The Examiner found that “the combined teachings of the
cited prior art would [have] suggest[ed] the claimed steps of moving the
peeling member and the transfer roller in order to appropriately carry out the
transfer and printing operations while maintaining the integrity of the
recording medium.” Id. at 19–20.
Claim 20 is an apparatus claim. The claim 20 “wherein” clause recites
a function of the peeling member. The patentability of an apparatus claim
depends only on the claimed structure, not on the use or purpose of that
structure, Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002), or the function or result of that structure, In re
Danly, 263 F.2d 844, 848 (CCPA 1959). Courts have interpreted functional
language in an apparatus claim as requiring that the apparatus possess the
capability of performing the recited function. See Intel Corp. v. U.S. Int’l
Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991).
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The Examiner’s finding that the prior art peeling member is capable
of moving in the manner recited in the claim 20 “wherein” clause (see Final
3) is, therefore, sufficient to support a conclusion of obviousness as to claim
20. The Appellant has not explained why Miyaji’s device, as modified by
the secondary references, would not have been capable of preventing a
collision between the recording medium and the peeling member when the
peeling member is in the retracted position. Accordingly, we are not
persuaded of reversible error in the Examiner’s rejection of claim 20.
Unlike claim 20, claim 21, as a method claim, requires that the
peeling member is moved to a retracted position during transport of the
recording medium toward a reverse unit. We agree with the Appellant that
the Examiner’s unsupported statement that the prior art’s combined
teachings would have suggested moving the peeling member in the manner
recited in claim 21 (see Final 19–20) is insufficient to satisfy the USPTO’s
burden to establish a prima facie case of obviousness. See discussion of
claims 5 and 25 supra pp. 6–7. Accordingly, we sustain the rejection of
claim 20 under 35 U.S.C. § 103(a) as unpatentable over Miyaji in view of
Honma, Asakura, Araki, and Kosaka, but reverse the rejection of claim 21
over the same references.
Claim 22
The Appellant argues that Baumgartner fails to cure the deficiencies
in the Examiner’s rejection of claim 1 from which claim 22 depends. Appeal
Br. 17. Because we are not convinced of reversible error in the Examiner’s
rejection of claim 1, we sustain the rejection of claim 22 under 35 U.S.C.
§ 103(a) as unpatentable over Miyaji in view of Honma, Asakura, Araki, and
Baumgartner.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6, 19,
23–25, 27–
39
103(a) Miyaji, Honma,
Asakura, Araki
1, 3, 4, 6,
19, 23, 24,
27–39
5, 25
20, 21 103(a) Miyaji, Honma,
Asakura, Araki,
Kosaka
20 21
22 103(a) Miyaji, Honma,
Asakura, Araki,
Baumgartner
22
Overall
Outcome:
1, 3, 4, 6,
19, 20, 22–
24, 27–39
5, 21, 25

TIME PERIOD FOR RESPONSE
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