Ex Parte Wright et al

Patent Trial and Appeal Board

Feb 1, 2014

12398692 (P.T.A.B. Feb. 1, 2014)

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.
12/398,692 03/05/2009 John Albert Wright 1776-0282 1566
76360 7590 02/05/2014
MAGINOT, MOORE & BECK LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
FIDLER, SHELBY LEE
ART UNIT PAPER NUMBER
2853
MAIL DATE DELIVERY MODE
02/05/2014 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 JOHN ALBERT WRIGHT, STAN ALAN SPENCER, and
CARY ERIC SJOLANDER
____________

Appeal 2012-001227
Application 12/398,692
Technology Center 2800
____________

Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-20. We have jurisdiction pursuant to
35 U.S.C. § 6.

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Application 12/398,692

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Appellants’ claimed invention is directed to a method and system for
evaluating printhead position in an ink printing system and operating at least
one printhead actuator in accordance with and in response to generated
positional correction data being obtained that exceeds at least one
predetermined threshold. The Specification indicates that one type of inkjet
printing system employs a staggered full width array (SFWA) printhead
assembly wherein four printheads can be arranged in two rows with two
printheads in each row being positioned as shown in Appellants’ drawing
Figure 1 (Spec. para. 0002). According to Appellants, a roll error can take
place when a printhead rotates about an axis normal to the imaging member
and a stitch error can occur when one printhead shifts relative to another
printhead (Spec. para. 0004). The Specification indicates that a variety of
happenings can result in printheads becoming misaligned, such as a result of
the printhead(s) being subjected to vibrations (Spec. para. 0003).
The claimed method and system are concerned with evaluating and
adjusting printhead position in response to printed test pattern imaging data
and generated positional correction data for roll and stitch displacements that
exceed at least one predetermined threshold in a displacement range (Spec.
paras. 0005, 0006, 0012-0036, Figs. 1-4).
Claim 1 is illustrative and reproduced below:
1. A method for evaluating printhead position in an ink
printing system comprising:
selecting a first printhead configuration for printing a first test pattern;
generating with an imaging system image data of the printed first test
pattern;
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generating confidence level measurements by comparing the
generated image data of the printed first test pattern with test pattern
data stored in the ink printing system;
generating positional correction data for roll and stitch displacements
obtained from the generated image data of the first test pattern in
response to the generated confidence level measurements being less
than at least one predetermined threshold;
comparing the positional correction data to at least one threshold in a
displacement range; and
operating at least one printhead actuator in accordance with the
positional correction data in response to the positional correction data
exceeding the at least one predetermined threshold in the
displacement range.

The Examiner does not rely on any prior art references as evidence in
rejecting the appealed claims.
The Examiner maintains the following grounds of rejection:
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the enablement requirement. Claims 1-20 stand
rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
applicant regards as the invention.
We reverse both rejections.

Indefiniteness Rejection1
The test for compliance with the requirements of § 112, second
paragraph (now 35 U.S.C. § 112(b) (2013)) is whether the claims set out and
circumscribe a particular area with a reasonable degree of precision and

1 The Examiner has withdrawn a separate basis for the indefiniteness
rejection of claims 2 and 3 that the Examiner sets forth at page 9 of the
Answer (Ans. 17).
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particularity when read in light of the application disclosure as they would
be interpreted by one of ordinary skill in the art. In re Moore, 439 F.2d
1232, 1235 (CCPA 1971).
The Examiner maintains that claims 1-20 are indefinite because the
disclosure is insufficiently enabling to permit an understanding of
Appellants’ invention such that the scope of the rejected claims cannot be
ascertained when they are read in light of the subject Specification (Ans. 8).
The Examiner appears to be arguing, in a conclusory way, that the
rejected claims are indefinite because they lack enabling support in the
Application disclosure, as filed (id.). The Examiner appears to maintain that
the underlying disclosure lacks sufficient (enabling) detail respecting the
manner in which disclosed steps are performed, which renders the claimed
limitations respecting such steps indeterminate in scope (Ans. 17).2 In this
regard, the Examiner appears to have improperly equated breadth with
indefiniteness under § 112, second paragraph. In re Miller, 441 F.2d 689,
693 (CCPA 1971). It is well-settled that a claim term can be broad without
being indefinite. In re Gardner, 427 F.2d 786, 788 (CCPA 1970); In re
Borkowski, 422 F.2d 904, 908 (CCPA 1970).
The Examiner has not reasonably explained why the claim language,
as it would have been interpreted by one of ordinary skill in the art in light
of Appellants’ Specification and the prior art, fails to set out and

2 The Examiner does not address any particular perceived enablement issues
concerning the structural elements of the system as set forth in independent
claim 11. Rather, the Examiner focuses on the “steps” of the method recited
in claim 1. Accordingly, we focus on independent claim 1 in deciding this
appeal.
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circumscribe a particular area with a reasonable degree of precision and
particularity.
Accordingly, we agree with Appellants in that the Examiner has not
carried the burden to establish that any of the rejected claims fail to satisfy
the requirements of the second paragraph of 35 U.S.C. § 112 (App. Br. 16-
17).
We reverse the Examiner’s rejection of claims 1-20 under the second
paragraph of 35 U.S.C. § 112.

Lack of Enablement Rejection
The Specification is presumed to be in “compliance with the enabling
requirement of 35 U.S.C. § 112, first paragraph, unless there is reason to
doubt the objective truth of the statements contained therein.” In re
Marzocchi, 439 F.2d 220, 223 (CCPA 1971). In this regard, it is well settled
that the Examiner has the “burden of giving reasons, supported by the record
as a whole, why the specification is not enabling… [and] [s]howing that the
disclosure entails undue experimentation is part of the PTO’s initial
burden…” In re Angstadt, 537 F.2d 498, 504 (CCPA 1976); see also
Marzocchi, 439 F.2d at 223. In determining whether any given disclosure
requires undue experimentation to practice the claimed subject matter, the
Examiner should consider, inter alia, the amount of direction or guidance
presented, the presence or absence of working examples, the nature of the
invention, the state of the prior art, the relative skill of one of ordinary skill
in the art, the quantity of experimentation necessary, and the predictability or
unpredictability of the art. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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Determining enablement is a question of law based on factual
underpinnings. In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991).
Here, the Examiner maintains that the claims require generation of
positional correction data for both roll and stitch displacements and include
limitations regarding the use of this data corresponding to steps 320 and 340,
as represented in drawing Figure 2 (Ans. 5). The Examiner argues that the
Specification does not adequately address how to progress through steps
324-364 as identified in the subject Specification and drawing Figure 2
because the positional correction data for stitch and roll displacements that
would comprise multiple values are treated as a single entity in the
Specification (Ans. 6). The Examiner posits two ways of proceeding with
the steps 324-364 and maintains that nether enjoys enabling support in the
subject Specification because insufficient detail is furnished for a person to
practice the disclosed invention (Ans. 5-7).
In contending a lack of enabling support for the Examiner’s posited
ways of proceeding with the disclosed steps and based on an asserted
confusion said to be occasioned by the term “data” as employed in the
Specification, the Examiner fails to appropriately address and present a
factual consideration of, inter alia, the totality of the direction or guidance
presented in the Specification including the positional data correction
example present in tabular form at pages twelve and thirteen of the
Specification, as further detailed by the surrounding disclosures in the
subject Specification, the nature of the invention claimed, the state of the
prior art, the relative skill of one of ordinary skill in the art, the quantity of
experimentation necessary, and the predictability or unpredictability of the
art. As argued by Appellants, the Examiner has not discharged the burden of
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establishing that the claimed invention would not have been enabled to one
of ordinary skill in the art (App. Br. 10-15; see generally Reply Br.).
While the Examiner has raised some concerns with respect to the
disclosed invention, the Examiner has not carried the burden to establish that
one of ordinary skill in the art armed with the disclosures set forth in the
subject Specification and given the state of the prior art would not have been
enabled to practice the method of independent claim 1 without undue
experimentation.
On this record, the Examiner’s analysis fails to establish that the
relative skill of one of ordinary skill in the art, the state of the prior art, and
the nature of the invention are such that one of ordinary skill in the art would
not have been able to carry out the claimed method steps without undue
experimentation based on the guidance provided in Appellants’
Specification.
Accordingly, we reverse the Examiner’s decision rejecting claims 1-
20 under the enablement requirement of 35 U.S.C. § 112, first paragraph.

CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

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