Ex Parte Inoue

Patent Trial and Appeal Board

Oct 25, 2012

10902267 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEIICHI INOUE
____________

Appeal 2010-006598
Application 10/902,267
Technology Center 2600
____________

Before BRUCE R. WINSOR, ANDREW CALDWELL, and
DAVID C. MCKONE, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-28, which constitute all the claims pending in this application. See
App. Br. 4, 141. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).

1 Throughout this opinion, we refer to the Final Rejection mailed May 7,
2009, the Appeal Brief filed October 26, 2009, the Examiner’s Answer
mailed January 27, 2010, and the Reply Brief filed March 25, 2010.
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STATEMENT OF THE CASE
Appellant’s invention relates to inkjet printers for forming three-
dimensional (3D) images. See, e.g., Spec. 1:3-7. Claims 1 and 13, which
are illustrative of the invention, read as follows:
1. A method for forming a three-
dimensional image by ejecting ink with an ink jet
system on a supporting member and
superimposing the ejected ink thereon, comprising
the steps of:
preparing two or more kinds of ink that each
contain three-dimensional image forming particles
different from each other in diameter;
ejecting said two or more kinds of ink with
said ink jet system on said supporting member;
superimposing said ejected two or more
kinds of ink on said supporting member; and
forming said three-dimensional image on
said supporting member with said two or more
kinds of ink ejected and superimposed on said
supporting member.

13. A method for forming a three-
dimensional image by ejecting ink with an ink jet
system on a supporting member and
superimposing the ejected ink thereon, comprising
the steps of:
preparing a first kind of ink containing solid
particles and a second kind of ink having physical
properties that are different from physical
properties of said solid particles;
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ejecting said first and second kinds of ink
with said ink jet system on said supporting
member;
superimposing said ejected first and second
kinds of ink on said supporting member; and
forming said three-dimensional image on
said supporting member with said first and second
kinds of ink ejected and superimposed on said
supporting member,
wherein said three-dimensional image
formed on said supporting member has been
increased in filling factor.

THE REJECTIONS
Claims 1-14 and 18-28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gothait (US 6,259,962 B1, Jul. 10, 2001) and Huang (US
6,233,061 B1, May 15, 2001). See Ans. 3-14.
Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Gothait, Huang, and Kaga (US 6,572,228 B2, Jun. 3, 2002). See Ans.
14-15.

ISSUES
Appellant contends that neither Gothait nor Huang discloses
“preparing two or more kinds of ink that each contain three-dimensional
image forming particles different from each other in diameter” as recited in
claim 1. Independent claim 9 also recites this limitation. Accordingly, for
claims 1 and 9, the issue raised by Appellant’s contention is whether the
Examiner erred in finding that the combination of Gothait and Huang
teaches or suggests “preparing two or more kinds of ink that each contain
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three-dimensional image forming particles different from each other in
diameter.”
Although Appellant argues independent claims 1, 9, and 13 together
as a group, see App. Br. 16-23, we note that claim 13 does not recite
“preparing two or more kinds of ink that each contain three-dimensional
image forming particles different from each other in diameter.” Rather, it
recites “preparing a first kind of ink containing solid particles and a second
kind of ink having physical properties that are different from physical
properties of said solid particles.” Accordingly, the issue as to claim 13 is
whether the Examiner erred in finding that the combination of Gothait and
Huang teaches or suggests “preparing a first kind of ink containing solid
particles and a second kind of ink having physical properties that are
different from physical properties of said solid particles.”

ANALYSIS
REJECTION OF CLAIMS 1-14 AND 18-28 UNDER 35 U.S.C. § 103(a)
Claims 1-12 and 18-28
Appellant’s Specification describes an ink jet printer system for
printing 3D images. See Spec. 20:4-24. In one example, an ink jet printer
embosses a recording medium with projections and depressions formed with
solid 3D particles of different sizes. See Spec. 30:6-23. This is illustrated in
Appellant’s figure 4:

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Figure 4 shows a recording medium P onto which formations of different
colors and shapes is accomplished using spherical ink particles of small and
large diameters stacked in various combinations. See also Spec. 34:1-13.
The Examiner found that Gothait discloses an ink jet system that
forms a 3D image by superimposing ink on a supporting member. See Ans.
3. However, the Examiner conceded that Gothait does not disclose
“preparing two or more kinds of ink that each contain three-dimensional
image forming particles different from each other in diameter” as recited in
claim 1. See Ans. 4.
The Examiner found that Huang teaches this limitation. See Ans. 4-5.
Huang discloses a technique for “reduc[ing] the excess color ink placed on a
substrate without impairing the visually distinguishable color range of the
printer . . . .” Huang, col. 2, ll. 47-52. Huang’s method measures a color
difference between a “full ink wedge” and a “reduced ink wedge.” Huang,
col. 2, ll. 56-60. According to Huang, “the method of determining an
amount of ink to be used to print a color uses a plurality of full ink color
wedges represented by a plurality of full ink peak points, and a plurality of
reduced ink wedges represented by a reduced ink peak points.” Huang, col.
3, ll. 12-16. Printing using the “full ink peak points” can result in bleed
through and smearing. See Huang, col. 2, ll. 60-62. Reducing the amount of
ink to the “reduced ink peak points” can reduce bleeding and smearing, but
might not noticeably affect the color. See Huang, col 2, ll. 62-65. The
Examiner reasons that “[b]ecause there are differences in the amount of ink
to be used, the image forming particles of the ink are different in diameter.”
Ans. 16. According to the Examiner, “[a]s reasonably interpreted, ‘Amount’
means the quantity, size or measurement.” Ans. 21.
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Appellant contends that Huang does not teach 3D image forming
particles different from each other, and indeed does not teach 3D printing at
all. See App. Br. 17. Instead, Appellant argues that Huang discloses a two-
dimensional printing technique. See id. According to Appellant, although
Huang teaches reducing the amount or volume of ink used, it “is completely
silent on any three-dimensional aspect2 of the ink particles and the formation
of a three-dimensional image.” Id. (internal citation omitted).
We agree with Appellant. A disclosure of reducing a volume of ink
does not constitute a disclosure of individual ink particles of a reduced
diameter. While reducing the volume of ink used in printing will
presumably reduce the number of ink particles used, it does not follow that
the individual particles making up the ink will be different in diameter.
Huang’s “amount” of ink may indeed represent the quantity, size, or
measurement of the aggregate of the ink used in printing a wedge, where a
full wedge would have a higher aggregate volume than a reduced wedge. To
the extent that the Examiner has construed “different from each other in
diameter” to modify “two or more kinds of ink,” we conclude that such a
construction is unreasonably broad in light of the Specification’s focus on
the differences in diameters and physical properties of the individual
particles that make up the ink. See Spec. 30:6-37:21. Huang is silent as to
the sizes and shapes of the individual ink particles that make up the

2 We do not read Appellant’s argument to contend that Huang’s ink particles
have no three-dimensional aspect. Of course, all particles will have some
three-dimensional aspect. Rather, we understand Appellant to be arguing
that Huang contains no disclosure of the size(s) of its ink particles and that
the ink particles and any resulting image printed by Huang’s technique are
not expected to be visually perceived as 3D.
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aggregate. Thus, neither Gothait nor Huang teaches or suggests “preparing
two or more kinds of ink that each contain three-dimensional image forming
particles different from each other in diameter.”
The Examiner also cites to figures 3 and 5-7 of Huang, arguing that
those figures support a finding that Huang discloses 3D printing. See Ans.
4, 17. The Examiner argues that Huang’s figure 3 “shows the peak colorant
points when a three-dimensional image is formed.” Ans. 4 (citing Huang
col. 6, ll. 3-8, and col. 2, ll. 47-53). Figure 3 is a flowchart showing Huang’s
general method. Neither of the Examiner’s cites to Huang refers to forming
3D images. The Examiner also contends that “Huang Figs. 5-7 are
representations of three-dimensional images formed on a recording medium
by the printing device of Huang.” Ans. 19. We disagree. Huang’s figures
5-7 are graphical representations of color variables, in “three-dimensional
colorant space.” See Huang, col. 6, ll. 12-22, col. 7, ll. 5-25. A point
somewhere in the cube of figure 5 represents certain percentages of cyan,
magenta, and yellow color components to an ink sample. See id. (e.g., point
G0 is 100% cyan + 100% yellow, which produces a near-green color).
However, figure 5 does not represent the physical dimensions of an ink
particle. The graph is 3D not because the printing is 3D, but because there
are three different variables representing the three color components to the
ink, and thus three separate vectors to graph.
Accordingly, we do not sustain the rejection of (1) claim 1; (2) claim
9, which includes a recitation substantially the same as that we find to not be
taught or suggested by the cited prior art; (3) claims 2-8, 18, and 20-28
which depend from claim 1; and (4) claims 10-12, and 19, which depend
from claim 9.
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Claims 13 and 14
Both the Examiner and Appellant treated claim 13 as commensurate
in scope with claim 1. See Final Rej. 16 (“Independent claim[] 13 contains
substantially similar features as that of claim 1. Thus, claim 13 is rejected
on the same ground as claim 1.”); App. Br. 23 (“It is noted that claims 9 and
13 include analogous, though not necessarily coextensive features recited in
claim 1, and therefore, claims 9 and 13 are patentable for reasons similar to
those discussed above for claim 1.”). However, claim 13 differs from claim
1 in that it does not recite a difference in particle diameter and instead recites
“preparing a first kind of ink containing solid particles and a second kind of
ink having physical properties that are different from physical properties of
said solid particles.” Neither the Examiner nor Appellant explicitly
addresses this limitation.
However, we understand the Examiner to have implicitly found that
the “particles different from each other in diameter” recited in claim 1 are
encompassed by the term “physical properties” in claim 13. See Final Rej.
8, 16. We further understand that the Examiner has implicitly relied on the
same teaching in Huang cited as teaching inks having “particles different
from each other in diameter,” as recited in claim 1, as teaching “a first kind
of ink containing solid particles and a second kind of ink having physical
properties that are different from physical properties of said solid particles,”
as recited in claim 13. Id. We further understand Appellant to contend that
Huang does not teach “particles different from each other in diameter,” as
recited in claim 1, and therefore the Examiner has not shown that Huang
teaches “a first kind of ink containing solid particles and a second kind of
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ink having physical properties that are different from physical properties of
said solid particles,” as recited in claim 13. App. Br. 18, 23.
We note that claim 13 also recites “wherein said three-dimensional
image formed on said supporting member has been increased in filling
factor.” Thus, reading claim 13 as a whole, we conclude that the broadest
reasonable interpretation of the recited “physical properties that are different
from physical properties of said solid particles” encompasses those
properties that affect filling factor. See, e.g., Spec. 38:1-39:16 and Figs. 8,
9. The Examiner has not identified a persuasive teaching in either Huang or
Gothait of “preparing a first kind of ink containing solid particles and a
second kind of ink having physical properties [that affect filling factor] that
are different from physical properties of said solid particles.”
Accordingly, we do not sustain the rejection of (1) claim 13; and (2)
claim 14, which depends on claim 13.

REJECTION OF CLAIMS 15-17 UNDER 35 U.S.C. § 103(a)
Claims 15, 16, and 17 depend on claims 13, 1, and 9 respectively.
Thus, each includes a recitation substantially the same as that we find to not
be taught or suggested by the cited prior art. Accordingly, we do not sustain
the rejection of claims 15, 16, and 17.

NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claims 1-12 and 16-28 are rejected on a new ground of rejection
under 35 U.S.C. § 112, second paragraph. “[I]f a claim is amenable to two
or more plausible claim constructions, the USPTO is justified in requiring
the applicant to more precisely define the metes and bounds of the claimed
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invention by holding the claim unpatentable under 35 U.S.C. §112, second
paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential).
The language “two or more kinds of ink that each contain three-
dimensional image forming particles different from each other in diameter,”
appearing in claims 1 and 9, is amenable to at least two plausible claim
constructions. It can be construed to mean a first ink that includes three-
dimensional image forming particles of a first diameter and a second ink that
includes three-dimensional image forming particles of a second diameter
different from the first diameter. It also can be construed to mean a first ink
that contains three-dimensional image forming particles different from each
other in diameter and a second ink that contains three-dimensional image
forming particles different from each other in diameter. Thus, claims 1 and
9 each are amenable to at least two plausible claim constructions. None of
claims 2-8, 16, 18, and 20-28, which depend from claim 1, and claims 10-12,
17, and 19, which depend from claim 9, resolves this ambiguity.
This new ground of rejection does not affect our reversal of the
Examiner’s rejections of claims 1-12 and 16-28, detailed above, as neither
Gothait nor Huang teaches or suggests “two or more kinds of ink that each
contain three-dimensional image forming particles different from each other
in diameter” under either construction.

ORDER
The decision of the Examiner to reject claims 1-28 is reversed.
We enter a new ground of rejection for claims 1-12 and 16-28 under
35 U.S.C. § 112, second paragraph.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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.
37 C.F.R. § 41.50(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

REVERSED
37 C.F.R. § 41.50(b)

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