Ex Parte Turm et al

Patent Trial and Appeal Board

Jan 24, 2017

14353841 (P.T.A.B. Jan. 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.
14/353,841 04/24/2014 Asaf Turm 83928152 1804
22879
HP Tnr
7590 01/26/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
MENBERU, BENIYAM
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2675
NOTIFICATION DATE DELIVERY MODE
01/26/2017 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASAF TURM, AYAL GALILI, ITTAI WIENER,
ASSAF BAREL, and DUDI GUTMAN
Appeal 2016-005863
Application 14/353,8411
Technology Center 2600
Before JEREMY J. CURCURI, HUNG H. BUI, and
DAVID J. CUTITTAII, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—16, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is Hewlett-Packard
Indigo B.V. App. Br. 1.
2 Our Decision refers to Appellants’ Appeal Brief, filed October 8, 2015
(“App. Br.”); Reply Brief, filed May 13, 2016 (“Reply Br.”); Examiner’s
Answer, mailed March 22, 2016 (“Ans.”); Final Office Action, mailed May
29, 2015 (“Final Act.”); and original Specification, filed April 24, 2014
(“Spec.”).
Appeal 2016-005863
Application 14/353,841
STATEMENT OF THE CASE
Appellants’ invention relates to a printer system having a duplex
section 230, shown in Figures 1 A—IB, that includes two retaining sections
240, 250 to (1) hold a sheet 20 of paper or other medium flat, (2) stretch the
sheet 20 while holding it substantially flat, and (3) return the sheet 20 to an
imaging unit or other “processing section” while it is being stretched.
Spec. 17; Abstract.
Appellants’ Figure IB is reproduced below with additional markings
for illustration.
Appellants’ Figure IB shows a duplex section 200 including first and second
retaining sections 240, 250 to perform recited functions.
Claims 1,8, and 13 are independent. Representative claim 1 is
reproduced below with disputed limitations in italics:
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Application 14/353,841
1. A duplex section comprising:
a first retaining section arranged to retain a first portion
of a medium received from a processing section, the medium
having first and second faces; and
a second retaining section arranged to retain a second
portion of the medium,
wherein the duplex section is arranged such that
the medium is held substantially flat by the first
and second retaining sections,
the medium is linearly stretched by the first and
second retaining sections while being held substantially
flat, and
while being stretched the medium is returned to the
processing section with the first and second faces
interchanged relative to the processing of the processing
section.
App. Br. 5 (Claims Appendix).
Takai
Hachmann
Landa
Inoue
Takagi
Evidence Considered
US 2002/0144611 A1
US 6,883,426 B2
US 6,912,952 B1
US 2008/0038004 A1
JP 2009-298528
Oct. 10, 2002
Apr. 26, 2005
July 5, 2005
Feb. 14, 2008
Dec. 24, 2009
Examiner’s Rejections
(1) Claims 1—3, 5—9, 12, and 13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hachmann and Landa. Ans. 2—9.
(2) Claims 4 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hachmann, Landa, and Inoue. Ans. 9-10.
(3) Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hachmann, Landa, and Takai. Ans. 11—12.
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Application 14/353,841
(4) Claims 14—16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hachmann, Landa, and Takagi. Ans. 12—13.
Issue on Appeal
Based on Appellants’ arguments, the dispositive issue on appeal is
whether the combination of Hachmann and Landa teaches or suggests the
disputed limitation: “the medium is held substantially flat. . . [and] linearly
stretched by the first and second retaining sections while being held
substantially flat” as recited in claim 1, and similarly recited in claims 8 and
13. App. Br. 2-4; Reply Br. 1—3.
ANALYSIS
With respect to independent claim 1, and similarly claims 8 and 13,
the Examiner finds Hachmann teaches a duplex section, shown in Figures 1—
2, comprising (1) “a first retaining section arranged to retain a first portion
of a medium” in the form of grippers 26, shown in Figure 2, (2) “a second
retaining section arranged to retain a second portion of the medium” in the
form of suction openings 29, such that the medium (3) “is held substantially
flat” via suction openings 29 and (4) “is linearly stretched by the first and
second retaining sections while being held substantially flat” in the form of
application of a stretching force or tension in linear direction created by
suction openings 29, shown in Figure 2. Ans. 2—3 (citing Hachmann 4:5—25,
4:48-67,5:50-67, 6:1-21).
The Examiner acknowledges Hachmann does not expressly teach, but
relies on Fanda for teaching the limitation: “while being stretched the
medium is returned to the processing section with the first and second faces
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Application 14/353,841
interchanged relative to the processing of the processing section” in order to
support the conclusion of obviousness. Ans. 3^4 (citing Landa 15:34—67,
16:1-57, Figs. 5B, 5C, and 5E).
Appellants do not dispute the Examiner’s factual findings regarding
Hachmann. Nor do Appellants challenge the Examiner’s rationale for
combining Hachmann and Landa. Instead, Appellants dispute the
Examiner’s findings regarding Landa. For example, Appellants argue claim
1 requires both functions: “the medium is to be held substantially flat and
linearly stretched while being held substantially flat” but “Landa says
nothing at all about stretching sheet 22.” App. Br. 3; Reply Br. 3. In
particular, Appellants argue:
Landa teaches only that the airflow from fan 258 and the
motion of conveyor surface 257 “substantially prevent
billowing of sheet 22 on conveyor surface 257” at the time the
sheet is returned to the imaging unit. . . . While it might be
reasonable to assume an un-billowed sheet 22 is, by definition,
held flat on surface 257 (there is no such teaching in Landa,
however), it is decidedly not reasonable to assume sheet 22 is
linearly stretched along surface 257. Sheet 22 in Landa does
not have to be stretched to prevent billowing.
App. Br. 3^4 (emphasis added) (citing Landa 16:20-22, Fig. 5C). In other
words, Appellants acknowledge Landa’s sheet 22 is returned to an imaging
unit, but argue Landa’s sheet 22 is not “being stretched” while doing so.
We do not find Appellants’ arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellants’
arguments supported by a preponderance of evidence. Ans. 13—17. As
such, we adopt the Examiner’s findings and explanations provided therein.
Id. For additional emphasis, we note the functions recited in Appellants’
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Application 14/353,841
claim 1, i.e., “the medium is to be [1] held substantially flat and [2] linearly
stretched while being held substantially flat” are disclosed by Hachmann, via
suction openings 29 and application of a stretching force or tension in linear
direction created by suction openings 29, shown in Figure 2. Ans. 3 (citing
Hachmann 5:50-67, 6:1—21, Fig. 2). Landa is only relied upon to show
Landa’s sheet 22 is returned to an imaging unit, “while being stretched.”
Ans. 3^4 (citing Landa 15:34—67, 16:1—57, Figs. 5B, 5C, and 5E).
In particular, Landa teaches returning sheet 22 “while being stretched”
shown in Figure 5E, as reproduced below with additional markings.
Landa’s Figure 5E shows duplex section 200 returning sheet 22 to an image
unit or other processing section “while being stretched” via force created by
motion of conveyor surface.
As recognized by the Examiner, “a stretching force must be applied to
the sheet 22 in order to undo the billowing of the sheet.” Ans. 16.
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Application 14/353,841
In the Reply, Appellants newly argue Landa teaches away from
stretching. In particular, Appellants argue:
Fig. 5C in Landa “shows sheet 22 ... at a time at which sheet 22
has just rolled completely off impression roller 252 and lies flat
on conveyor surface 257' and arm 201 rotates counterclockwise
to move sheet 22 “in the direction of motion of conveyor surface
257.” Landa col. 16, lines 13-17 (emphasis added). The
combination of an already flat sheet and motion forward along
surface 257 suggests the sheet is not stretched linearly along
surface 257.
Admittedly, if arm 201 is moving slower than conveyor
surface 257 and arm 201 is gripping sheet 22 with sufficient force
to hold it back, then sheet 22 might be stretched linearly along
surface 257. But, as noted above, the fact that stretching is
possible is not sufficient to support inherency.
Reply Br. 2—3. However, these new arguments are deemed waived.
Appellants have not explained why, nor is it apparent that, these arguments
were necessitated by a new point in the Examiner’s Answer or any other
circumstance constituting “good cause” for its belated presentation. See Ex
parte Borden, 93 USPQ2d 1473, 1473—74 (BPAI 2010) (“informative”)
(absent a showing of good cause, the Board is not required to address
argument in Reply Brief that could have been presented in the principal
Appeal Brief). Nevertheless, we disagree with Appellants’ characterization
of Landa for reasons discussed above.
Lastly, we note Appellants’ claim 1 does not distinguish over
Hachmann alone. For example, as recognized by the Examiner,
Hachmann’s duplex section, shown in Figures 1—2, is arranged such that the
sheet 5 of paper 6 “is held substantially flat” via suction openings 29 and “is
linearly stretched . . . while being held substantially flat” in the form of
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Application 14/353,841
application of a stretching force or tension in linear direction created by
suction openings 29. However, once the sheet 5 of paper 6, shown in
Hachmann’s Figure 2, is printed on one side, the same sheet 5 of paper 6 is
returned to an image unit or other processing section, “while being
stretched” by suction openings 29 for printing on the other side. As such,
we find Hachmann teaches all limitations of Appellants’ claim 1. However,
a disclosure such as Hachmann that anticipates under 35 U.S.C. § 102 can
also render Appellants’ claim 1 unpatentable under 35 U.S.C. § 103. See In
re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); cf. Cohesive Tech v. Water
Corp., 543 F.3d 1351, 1363 (Fed. Cir. 2008) (“novelty under 35 U.S.C.
§102 and nonobviousness under 35 U.S.C. § 103 are separate conditions of
patentability”).
For the reasons set forth above, Appellants have not demonstrated
Examiner error. As such, we sustain the Examiner’s obviousness rejection
of independent claims 1, 8, and 13, and their respective dependent claims 2—
7, 9-12, and 14—16, which Appellants do not argue separately. App. Br. 4.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1—16 under 35 U.S.C.
§ 103(a).
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Application 14/353,841
DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1—16.
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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