Ex Parte Shiraiwa et al

Patent Trial and Appeal BoardAug 24, 2017

13917233 (P.T.A.B. Aug. 24, 2017)

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. 13/917,233 06/13/2013 Motofumi Shiraiwa 109077-0300 2200 22428 7590 08/28 Foley & Lardner LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER HARRINGTON, MICHAEL P ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 08/28/2017 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): ipdocketing @ foley. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MOTOFUMI SHIRAIWA, YOSHIHIRO UENO, MITSUHIKO MAEJIMA, and SHINJI TAKAHASHI Appeal 2015-0083131 Application 13/917,23 32 Technology Center 3600 Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and ALYSSA A. FINAMORE, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed January 8, 2015) and Reply Brief (“Reply Br.,” filed September 22, 2015), and the Examiner’s Answer (“Ans.,” mailed September 1, 2015) and Final Office Action (“Final Act.,” mailed August 26, 2014). 2 Appellants identify Seiko Epson Corporation as the real party in interest. App. Br. 1. Appeal 2015-008313 Application 13/917,233 CLAIMED INVENTION Appellants’ claimed invention “relates to an ink billing system and ink billing method for invoicing based on usage of ink, toner, or other printing fluids, printing liquids, or other printing material” (Spec. 1). Claims 1 and 3 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An ink billing method that is used between a client that prints information in one or more retail stores and an ink supplier that supplies cartridges, which store ink, to the client, the ink billing method comprising steps of: installing a plurality of printers in one of the retail stores, each of the printers comprising a replaceable cartridge storing ink and a print head having nozzles for discharging the ink, each print head being separate from its associated cartridge when installed in the corresponding printer; discharging first ink from the nozzles onto paper for printing the information; discharging second ink from the nozzles for cleaning or recovering the nozzles, the second ink being consumed in the cleaning or recovering; calculating, by each of the plurality of printers, an ink usage amount for that printer by converting each dot of the first ink deposited to a shot count, based on a size of the dot, to calculate a number of shots of the first ink discharged from the nozzles; providing a first server in the one of the retail stores, the first server being in communication with the plurality of printers installed in the one of the retail stores; collecting, by the first server, the ink usage amount of the first ink for the plurality of printers installed in the one of the retail stores; providing a second server that is in communication with the first server; receiving, by the second server, the collected ink usage amount of the first ink from the first server; and 2 Appeal 2015-008313 Application 13/917,233 calculating, by the second server, an invoice amount for the ink supplier by using the collected ink usage amount of the first ink received by the second server. REJECTION Claims 1—4 are rejected under 35 U.S.C. § 103(a) as unpatentable over Horii et al. (US 2002/0073002 Al, pub. June 13, 2002) (hereinafter “Horii”), Fujitani et al. (US 2005/0270571 Al, pub. Dec. 8, 2005) (hereinafter “Fujitani”), and Silverbrook et al. (US 7,298,519 B2, iss. Nov. 20, 2007) (hereinafter “Silverbrook”). ANALYSIS We are persuaded by Appellants’ argument that the Examiner erred in rejecting independent claims 1 and 3 under 35 U.S.C. § 103(a) because Silverbrook, on which the Examiner relies, does not disclose or suggest “calculating. . . an ink usage amount... by converting each dot of the first ink deposited to a shot count, based on a size of the dot, to calculate a number of shots of the first ink discharged from the nozzles,” as recited in claim 1, and similarly recited in claim 3 (App. Br. 4—5). The Examiner cites column 1, line 44 through column 2, line 10 of Silverbrook as disclosing the argued limitation (Final Act. 9). But we agree with Appellants that there is nothing in the cited portion of Silverbrook that discloses or suggests “converting each dot of the first ink deposited to a shot count, based on a size of the dot,” as called for in the claims (App. Br. 5). Rather than calculating ink usage by converting each dot of ink to a shot count based on the size of the particular dot, Silverbrook discloses that the amount of ink used in printing a page is determined by counting the 3 Appeal 2015-008313 Application 13/917,233 number of dots of ink discharged in printing the page; extracting data from a processor and memory unit regarding the volume of an ink dot; and then multiplying the number of dots by the dot volume (Silverbrook, col. 1,1. 44- col. 2,1. 10). In other words, rather than converting each dot to a corresponding shot count based on the size of the individual dot and calculating ink usage based on an individual dot size that may vary from one dot to another, in the Silverbrook method, all dots are treated as being the same size. Thus, in the Silverbrook method, as described above, the amount of ink used in printing a particular page is determined by simply multiplying the number of dots of ink discharged in printing the page by a stored value, i.e., the dot volume. No consideration is given to any differences in ink dot size and no conversion based on the size of an individual dot is performed. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claims 1 and 3 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the Examiner’s rejection of dependent claims 2 and 4. Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonobvious”). DECISION The Examiner’s rejection of claims 1—4 under 35 U.S.C. § 103(a) is reversed. REVERSED 4