Ex Parte McNestry et al

Patent Trial and Appeal Board

Apr 12, 2016

12043200 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/043,200 03/06/2008
29391 7590 04/12/2016
BEUS SE WOLTER SANKS & MAIRE, PLLC
390 NORTH ORANGE A VENUE
SUITE 2500
ORLANDO, FL 32801
FIRST NAMED INVENTOR
Martin McNestry
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Z-019 (005) 4867
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
MAILDATE DELIVERY MODE
04/12/2016 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 MARTIN MCNESTRY and KEITH BUXTON
Appeal2014-004703
Application 12/043,200
Technology Center 2800
Before CARL W. WHITEHEAD JR., ADAM J. PYONIN, and
NABEEL U. KHAN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a Non-
Final Rejection1 of claims 22, 25, 29-31, and 33-36, which are all pending
claims. App. Br. 11-12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 We refer to the Non-Final Office Action ("Non-Final Act.") mailed July
16, 2013.
Appeal2014-004703
Application 12/043,200
STATEMENT OF THE CASE
Introduction
Appellants' disclosure is directed to a tape drive. Title; Abstract.
Claim 22, the sole independent claim, is reproduced below for reference:
22. A thermal transfer printer for selectively transferring a
meltable ink material carried on a tape to a substrate intended to
receive ink for printing an image on the substrate, the printer
compnsmg:
two spool supports for spools of tape carrying ink material,
with the tape being wound on the spools and with a span of tape
being held in tension between the spools, the tape spools being
carried on and driveable by the respective spool supports and the
tape being of the single strike type for which a region of unused
tape is made available for printing each image on the substrate;
a print head positioned at the span of tape between the tape
spools, the print head being mounted for selective movement
between an extended position adjacent the span of tape between
the spools and a retracted position spaced apart from the span of
tape between the tape spools and comprising heating elements
selectively energized for transferring ink material on the span of
tape between the tape spools to the substrate when the print head
is moved to its extended position and into contact with the span
of tape while the tape is in contact with the substrate to print an
image, wherein the print head is moved to its retracted position
during each time period between printing of consecutive adjacent
images on the substrate;
a tape drive for selectively transporting tape between the
spools of tape comprising first and second motors, the first motor
being a torque-controlled motor and the second motor being a
position-controlled motor, each spool support being drivable by
a respective motor, each spool support being coupled to a
respective motor by a drive coupling providing at least one fixed
transmission ratio;
the tape drive further comprising a controller being
configured to control energization of the motors to transport the
tape in the first direction between spools mounted on the spool
supports relative to the print head for printing an image on the
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Application 12/043,200
substrate and in a second direction opposite to the first direction
when the print head is in its retracted position;
the controller further being configured to energize the
torque-controlled motor to rotate in a first rotational direction for
movement of the tape in said first direction to drive a spool to
take up tape in the first direction and control tension in the span
of tape extending from one spool to the other spool, and
energizing said torque-controlled motor for movement of the
tape in said second direction by rotating the torque-controlled
motor in a second rotational direction for an initial part of said
movement and then energizing the motor to apply torque to the
spool support in the first rotational direction for generating tape
tension for another part of said movement;
the controller further configured to energize the position-
controlled motor to rotate its spool support to a commanded
angular position in the direction of movement of the tape to
supply a predetermined length of tape when the tape is moving
in the first direction and to energize the position-controlled motor
to rotate its spool support to a commanded angular position in
the direction of movement of the tape to take up a predetermined
length of tape when the tape is moving in the second direction;
wherein during the movement of the tape in the second
direction the print head is in its retracted position spaced apart
from the tape between printings of consecutive adjacent images
on the substrate; and,
the controller further being configured to monitor tension
in the span of tape extending from one spool to the other spool
and to energize the torque-controlled motor to maintain a
monitored tension in the span of tape extending from one spool
to the other spool at an acceptable level when the tape is moving
in the first direction or second direction.
The Examiners Rejection
Claims 22, 25, 29-23, and 33-36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over McNestry (US 2004/0146331 Al; July
29, 2004), Silver (US 3,926,513; Dec. 16, 1975), Steele (US 4,692,819;
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Application 12/043,200
Sept. 8, 1987), and Goodwin (US 5,788,384; Aug. 4, 1998). Non-Final Act.
3.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments the Examiner has erred. We adopt the Examiner's findings and
conclusions (see Non-Final Act. 3-10; Ans. 2-5) as our own, and we add the
following primarily for emphasis.
Appellants argue the Examiner's rejection of independent claim 22 is
m error, as:
the Rejection fails to set forth a prima facie case of obviousness
because i) McNestry teaches away from pull-drag tape transport
as set forth in claim 22; ii) modifying McNestry to include pull-
drag tape transport would destroy the fundamental principal of
invention of McNestry, which is based on push-pull tape
transport; iii) Silver does not teach the claimed feature of the
same motor being energized to maintain a monitored tension in
the span of tape extending between the spools when the tape is
moving in either a first or second direction; iv) the web drive
system of Silver is not analogous to the claimed thermal transfer
printer tape drive and controller; v) the McNestry tape drive
could not be modified to incorporate position control as taught
by Steele, which discloses a magnetic tape drive; and, vi) the
Goodwin reference does not disclose the claimed rotation of the
torque controlled motor in a second direction to overcome inertia
when reversing tape direction between printings of consecutive
images.
App. Br. 20-21; see also Reply Br. 7-8.
Appellants do not persuade us the Examiner erred. The Supreme
Court has made clear that we apply "an expansive and flexible approach" to
the question of obviousness. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
415 (2007). In determining obviousness, "a court must ask whether the
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Application 12/043,200
improvement is more than the predictable use of prior art elements according
to their established functions." Id. at 417.
Here, we find the Examiner has provided thorough findings and an
articulated reasoning to support the determination of obviousness.
Particularly, this is a case in which an artisan of ordinary skill would be able
to fit the teachings of the cited references together "like pieces of a puzzle"
(KSR, 550 at 420):
the elements of appellant's invention are described in the prior
art references in such a way that the combination of references
would have been obvious to one having ordinary skill in the art
at the time of the invention. McNestry teaches a printer which
has the claimed structure and mode of operation, but teaches a
different method of control. Silver, Steele and Goodwin teach
that all of the elements of the claimed method of control are
known in the art and therefore a combination of these references
renders appellant's invention obvious to one having ordinary
skill in the art at the time of the invention
Ans. 2-3; see also Non-Final Act. 3-7.
As correctly recognized by the Examiner, "all of the references, like
the claimed invention, teach movement control of a tape between two
spools, which is sufficient to place them in the same field of endeavor;" thus
the Examiner's combination neither improperly modifies the principal
operation of the individual references, nor does it rely on non-analogous art.
Ans. 4; see also App. Br. 11-14, 16-17. We also agree with the Examiner
that the references' tape drive teachings do not teach away from the claimed
invention, because the references disclose methods of tape control using
spools, but do not criticize, discredit, or otherwise discourage investigation
into the claimed invention. See Ans. 2-3; see also Reply Br. 2-3.
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Further, we agree with the Examiner that an artisan of ordinary skill
would "recognize Steele's teaching of the advantages of position control of a
tape and ... incorporate this teaching into the combined invention in such a
way that this advantage would be realized without depending upon the
particulars of the magnetic tape operation for this modification" because
Steele teaches determining angular position and tape length using
tachometers. See Ans. 5; Steele 5:2-7 ("Rotation of the shaft of the
tachometer results in the generation of signals 21 which indicate both the
direction and amount of rotation of the shaft of tachometer 20, and
consequently the direction and amount of displacement of magnetic tape 10
along the path."); compare Spec. i-f 50.
In contrast, Appellants' arguments focus individually on the cited
references, and thus fail to address the Examiner's findings that the
limitations of claim 22 are obvious to an artisan of ordinary skill, in light of
the references' collective teachings. See Ans. 4--5; Non-Final Act. 10
(finding, e.g., the combination of McNestry, Silver, and Goodwin teaches or
suggests the recited movements of the motors and tensions of the tape); see
also McNestry i-fi-183-91; Silver 4:30-60; Goodwin Figs. 4, 34. Further,
although Appellants have provided a general description of the references
along with a description of embodiments of the Specification (see, e.g., App.
Br. 11-14), Appellants' arguments fail to compare and contrast the claim
limitations2 with the Examiner's specific findings to show error therein. See
2 We note claim 22 does not recite the terms push-pull or pull-drag and
therefore Appellants' arguments are not commensurate with the scope of
claim 22.
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Application 12/043,200
Jn re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998); Jn re Selj; 671 F.2d
1344, 1348 (CCPA 1982).
Thus, we are not persuaded that combining McNestry, Silver, Steele,
and Goodwin was "uniquely challenging or difficult for one of ordinary skill
in the art" or "represented an unobvious step over the prior art." Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citations removed). Nor have Appellants presented evidence that any of
their incorporations of known limitations yielded more than expected results.
See Ans. 5. Accordingly, we do not find error in the Examiner's conclusion
that claim 22 is obvious in view of the cited references.
CONCLUSION
We sustain the Examiner's 35 U.S.C. § 103(a) rejection of
independent claim 22. Appellants advance no further argument on
dependent claims 25, 29-31, and 33-36. Thus, we sustain the Examiner's
rejection of these claims for the same reasons discussed above.
DECISION
The Examiner's rejection of claims 22, 25, 29-31, and 33-36 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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