Ex Parte Chandu et al

Patent Trial and Appeal BoardOct 12, 2016

13242507 (P.T.A.B. Oct. 12, 2016)

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. 13/242,507 09/23/2011 Kartheek Chandu 8185P130 7864 76073 7590 10/12/2016 InfoPrint Solutions/ Blakely 1279 Oakmead Parkway Sunnyvale, CA 94085-4040 EXAMINER THIES, BRADLEY W ART UNIT PAPER NUMBER 2853 MAIL DATE DELIVERY MODE 10/12/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KARTHEEK CHANDU and CARL BILDSTEIN ____________________ Appeal 2015-004787 Application 13/242,507 Technology Center 2800 ____________________ Before: LINDA M. GAUDETTE, WESLEY B. DERRICK, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection2 of claims 1–10 and 17–26. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection under 35 U.S.C. § 103(a) and issue a new ground of rejection under 35 U.S.C. § 112, second paragraph. 1 The real party in interest is identified as Ricoh Production Print Solutions LLC. (Appeal Brief, dated November 24, 2014 (“App. Br.”), 3.) 2 Final Rejection dated July 8, 2014 (“Final Act.”). Appeal 2015-004787 Application 13/242,507 2 CLAIMED SUBJECT MATTER The invention is directed to a dynamic inkjet nozzle flushing mechanism and seeks to address the need for “a mechanism to dynamically adjust nozzle flushing frequency during print production.” (Spec. ¶ 5.)3 Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: analyzing an image of a first flushing pattern applied on a medium during production of a print job to detect presence of one or more defective ink jet nozzles, by: measuring color values of the captured flushing pattern; estimating optical density values for the color values in the flushing pattern; and comparing the optical density values to the measured color values to determine differences in order to detect a density and color change; and adjusting to a second flushing pattern during the production of the print job upon detecting the presence of one or more defective print head nozzles. (Claim Appendix, App. Br. i (emphasis added).) REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Nishikawa US 2011/0234676 A1 Sept. 29, 2011 Chandu US 2010/005324 A1 Mar. 4, 2010 3 Application 13/242,507, Dynamic Inkjet Nozzle Flushing Mechanism, filed September 23, 2011. We refer to the “ʼ507 Specification,” which we cite as “Spec.” Appeal 2015-004787 Application 13/242,507 3 REJECTIONS Claims 1–3, 5, 7–10, 17, 18, 20–23, 25, and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Nishikawa. (Final Act. 3.) Claims 4, 6, 9, and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Nishikawa and Chandu. (Final Act.14.) OPINION Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Claim 14 The sole issue on appeal is whether Nishikawa teaches or suggests “a method comprising . . . comparing the optical density values to the measured color values to determine differences in order to detect a density and color change” as recited in claim 1. (See App. Br. 8; see also Ans. 2–3.)5 For reasons explained below, we determine no reasonably definite meaning can be ascribed to the claim phrase “to determine differences in order to detect a density and color change,” which is recited in each of the appealed independent claims (claims 1 and 17). Therefore, any consideration of the merits of the outstanding rejections would be improperly based on speculative assumptions as to the scope of the claims. 4 Appellants do not present separate arguments for the remaining claims including independent claim 17. These claims therefore stand or fall with claim 1. (See App. Br. 7, 10; see also Reply Brief dated March 24, 2015 (“Reply”), 4.) (The Reply Brief is without page numbers and we therefore supply our own.) 5 Examiner’s Answer dated February 19, 2015 (“Ans.”). Appeal 2015-004787 Application 13/242,507 4 See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). We therefore decline to reach the merits, but REVERSE pro forma all grounds of rejection and enter the following NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b): Claims 1–10 and 17–26 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite due to the claim phrase “to determine differences in order to detect a density and color change.”6 “A determination of claim indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the construer of patent claims.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008) (quoting Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998)). During examination, claim 6 Although Appellants state in the Appeal Brief that there are no known “appeals . . . related to the present appeal that will directly affect, be directly affected by, or have a bearing on the Board’s decision” (App. Br. 3), we note that Appeal No. 2015-006706 (“’6706 Appeal”) for Application No. 13/042,857 (“’857 Application”) is also pending before the Board. The ’507 Specification incorporates by reference the ’857 Application. (Spec. ¶ 27.) The two applications do not have any inventors in common – the ’507 Application lists “Kartheek Chandu” and “Carl Bildstein” as inventors whereas the ’857 Application at issue here lists “Larry Ernst” and “George Promis” as inventors. (Title pages of the ’507 Spec. and the ’867 Spec.) The rejections in the ’6706 Appeal are based on prior art that differs from that cited in the present case. The issue in the ’6706 Appeal is whether the cited prior art “disclose[s] or suggest[s] a process of detecting density change and color value changes by estimating original optical density values for the color values in a flush line pattern and comparing the values to measured color values.” (Appellants’ Brief in the ’6706 Appeal dated December 15, 2014, 9) (emphases added). In the event that prosecution continues, Appellants and/or the Examiner may wish to consider the status and the disclosure of the ’857 Application. Appeal 2015-004787 Application 13/242,507 5 terms must be given their broadest reasonable construction consistent with the Specification. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “If the claims do not ‘particularly point[] out and distinctly claim[ ]’, in the words of section 112,. . . the appropriate PTO action is to reject the claims for that reason.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). In this case, the relevant disclosure of the ’507 Specification is limited to a single sentence that is almost identical to the claim language: “In one embodiment, the print irregularities are determined by estimating original optical density values for the color values in the flushing pattern and comparing those values to the measured color values to determine differences in order to detect a density and color change of the flush line pattern.” (Spec. ¶ 27 (cited in App. Br. 4 as written description support).) In the context of claim 1 and the ’507 Specification, it is unclear whether the “differences” determined are the differences between the “original optical density values” and the “measured color values” – or the differences among “an image of a first flushing pattern,” “the captured flushing pattern,” and “the flushing pattern” as recited in claim 1, or other differences. The fact that “the captured flushing pattern” and “the flushing pattern” lack clear antecedent basis further obscures a reasonable understanding of the claim scope. Moreover, it is unclear that whether “the measured color values” are the same as “the color values” for which the “optical density” is estimated. It is unclear whether both “a density” and a “color change” are detected or whether respective changes in both “density” and “color” are detected. It is unclear whether “a density” is an optical density or another type of density such as color density or volumetric mass density. It is also unclear to what Appeal 2015-004787 Application 13/242,507 6 component the density applies – whether it is “a density” of “an image of a first flushing pattern applied on a medium” or other components recited in claim 1. As a result, the ordinary artisan would not recognize whether the claim phrase “to determine differences in order to detect a density and color change” excludes a detection of optical density based on a comparison to a baseline standard value such as that shown and described in Nishikawa. (See Ans. 2–3 (citing Nishikawa ¶¶ 211, 212).) The USPTO is justified in using a lower threshold showing of ambiguity to support a determination of indefiniteness under 35 U.S.C. § 112, second paragraph, because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent. Ex parte Miyazaki, 89 USPQ2d 1207, 1211–12 (BPAI 2008) (precedential). Because independent claim 17 also recites the limitation of “comparing the optical density values to the measured color values to determine differences in order to detect a density and color change,” we conclude that claim 17 and its dependent claims also fail to meet the requirements under 35 U.S.C. § 112, 2nd paragraph for the reasons provided supra. DECISION The Examiner’s rejections of claims 1–10 and 17–26 are reversed pro forma. Claims 1–10 and 17–26 are rejected, under a new ground, for failure to comply with 35 U.S.C. § 112, second paragraph. Appeal 2015-004787 Application 13/242,507 7 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . REVERSED; NEW GROUND OF REJECTION 37 C.F.R. § 41.50(B)