Trials@uspto.gov
`571-272-7822
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`
`
`Paper 37
`Entered: September 23, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CANON INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00535
`Patent 7,315,406 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 37
`Entered: September 23, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CANON INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00535
`Patent 7,315,406 B2
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`IPR2014-00535
`Patent 7,315,406 B2
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`I. INTRODUCTION
`A. Background
`Canon Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) pursuant to
`35 U.S.C. §§ 311–319 to institute an inter partes review of claims 1–31 of
`U.S. Patent No. 7,315,406 B2 (“the ’406 patent”). After consideration of a
`Preliminary Response (Paper 7) filed by Intellectual Ventures I LLC
`(“Patent Owner”), the Board instituted trial on September 24, 2014. Paper 9
`(“Dec.”).
`During the trial, Patent Owner timely filed a Patent Owner Response
`(Paper 15, “PO Resp.”), and Petitioner timely filed a Reply to the Patent
`Owner Response (Paper 22, “Reply”). An Oral Hearing was held on June
`24, 2015 (Paper 36, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This is a Final Written
`Decision under 35 U.S.C. § 318(a) as to the patentability of the claims on
`which we instituted trial. Based on the record before us, Petitioner has
`demonstrated by a preponderance of the evidence that claims 1–31 are
`unpatentable.
`
`
`B. Related Proceedings
`The ’406 patent has been asserted against Petitioner in Intellectual
`Ventures I LLC v. Canon Inc., 13-cv-473-SLR (D. Del.). Pet. 1.
`
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`C. The ’406 Patent
`The ’406 patent describes scanning circuit structures for scanners
`capable of reducing distortion during high-speed image signal transmission.
`Ex. 1001, col. 2, ll. 3–7. Figure 2 of the ’406 patent is reproduced below.
`
`
`Figure 2 illustrates a circuit structure for a scanner, including main circuit
`module 210 and optical sensor circuit module 220 linked together with flat
`cable 230. Id. at col. 3, ll. 36–40. Communication interface 285 of the main
`circuit module allows interfacing with a human being, such as over a
`universal serial bus (“USB”) interface. Id. at col. 3, ll. 48–57. The
`communication interface receives scanning instructions regarding image
`resolution, brightness level, and scanning range, and converts such scanning
`instructions into scanning control signals that are conveyed to the optical
`sensor circuit module over the flat cable. Id. Timing generator 265
`produces timing control signals for extracting an analog signal image from
`optical sensor 240, which may be a charge-coupled device (“CCD”) or
`complementary metal-oxide-semiconductor (“CMOS”) image sensor. Id. at
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`col. 3, ll. 58–64. After preprocessing of a collected image by analog front-
`end preprocessor 250, analog/digital converter 260 (“A/D converter”)
`converts the preprocessed image to digital data, which are transmitted to the
`main circuit module over the flat cable.
`The ’406 patent identifies two specific advantages of this
`arrangement. First, a clearer image can be obtained at higher scanning
`speeds because the flat cable transmits digital data instead of easily distorted
`analog image signals. Id. at col. 4, ll. 23–25. Second, electromagnetic-
`interference effects are mitigated because the flat cable transmits scanning
`control signals rather than timing control signals. Id. at col. 4, ll. 26–29.
`
`
`D. Illustrative Claims
`Claims 1 and 11 of the ’406 patent are illustrative of the claims at
`
`issue:
`
`1. A scanning circuit for a document scanner, comprising:
`a main circuit module capable of receiving a scanning
`instruction from a communication interface, converting the
`scanning instruction into scan control signals, passing the scan
`control signals to a connection cable as well as receiving a
`digital image data captured in a document scanning operation
`through the connection cable; and
`an optical sensor circuit module connected to the main
`circuit module through the connection cable capable of
`receiving the scan control signals and converting the scan
`control signals to timing control signals that control document
`scanning, extraction of an analog image signal from the
`document and conversion of the analog image signal into the
`digital image data.
`
`
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`11. A scanning method, comprising:
`receiving scan control signals at an optical sensor circuit
`module via a connection cable; and
`converting the scan control signals to timing control
`signals to control document scanning.
`
`
`US 5,457,544
`US 2001/0030278 A1
`US 6,958,830 B2
`JP H10-215353
`JP H11-046302
`JP H11-353471
`
`Oct. 10, 1995 Ex. 1009
`Oct. 18, 2001 Ex. 1012
`Oct. 25, 2005 Ex. 1006
`Aug 11, 1998 Ex. 1017
`Feb. 16, 1999 Ex. 1015
`Dec. 24, 1999 Ex. 1018
`
`E. Grounds of Unpatentability
`Petitioner relies on the following references.
`
`Ochiai
`Koshimizu
`Kono
`Takagawa
`Tsuboi
`Nakamura
`
`We instituted this proceeding based on the following grounds.
`Reference(s)
`Basis
`Claim(s) Challenged
`§ 102(b)
`1–3, 5, 6, and 10–31
`§ 103(a)
`1–3, 5, 6, and 10–31
`§ 103(a)
`4
`§ 103(a)
`7
`§ 103(a)
`9
`§ 103(a)
`5, 6, 8, 16–25, 29, and 31
`§ 103(a)
`7
`
`Tsuboi
`Tsuboi
`Tsuboi and Takegawa
`Tsuboi and Koshimizu
`Tsuboi and Nakamura
`Tsuboi and Kono
`Tsuboi, Kono, and
`Koshimizu
`Tsuboi and Ochiai
`Tsuboi, Ochiai, and
`Takegawa
`Tsuboi, Ochiai, and Kono
`
`
`§ 103(a)
`§ 103(a)
`
`2, 3, 14, 15, 18, 19, 23, 27, and 28
`4
`
`§ 103(a)
`
`18, 19, and 23
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`5
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`II. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268, at 1277–1279 (Fed. Cir. 2015); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`
`1. “converting”
`In the Institution Decision, we construed phrases of the form
`“converting [X] into [Y] signals,” which are recited in various claims, as
`generating Y signals from X. Dec. 5–6. After considering the submissions
`of the parties and their respective positions regarding the prior art, discussed
`infra, we revisit our construction of this term.
`Petitioner proposes that “converting” as used in the claims be
`construed to mean “changing an instruction or signal from one form to
`another.” Pet. 5–6. Patent Owner proposes specific constructions of phrases
`that include the word “converting,” contending that the term should not be
`construed as a standalone word. Prelim. Resp. 30–33. Patent Owner also
`opposes Petitioner’s construction because “it attempts to introduce
`extraneous words ‘instruction,’ ‘signal,’ and ‘form,’” and because
`“[c]hanging is not the same as converting.” Id. at 30.
`We partially agree with Patent Owner, in that Petitioner’s proposed
`construction includes the words “instruction” and “signal,” which are
`unnecessary for a construction of the word “converting” itself. But a
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`dictionary definition of “convert” is “to change from one form or function to
`another.” Ex. 3001. Patent Owner offers no explanation for its position that
`“changing is not the same as converting,” and that position is inconsistent
`with the dictionary definition. Accordingly, we refine our construction
`herein to construe “converting [X] into [Y] signals” as changing the form of
`X into Y signals.
`
`
`2. “scan control signals” and “timing control signals”
`Patent Owner proposes that the phrase “converting the scanning
`instruction into scan control signals,” which is recited in claims 1, 2, 12, 14,
`22, 26, and 27, be construed as converting the scanning instruction into scan
`control signals that do not include timing control signals. PO Resp. 4–6.
`Patent Owner takes a similar position in its proposed construction of other
`phrases recited in the claims, including “converting the scan control signals
`to timing control signals,” which appears in claims 1, 11, 22, 26, and 30 (id.
`at 6–7), and “generating [the] timing control signals that control a generation
`of the analog image signal and a conversion of the analog image signal into
`the digital image data,” which appears in claims 5, 16, 17, 21, 29, and 31 (id.
`at 8–10).
`Patent Owner contends that, in the ’406 patent, timing control as
`embodied in timing control signals is completely independent of the scan
`control signals. Tr. 49:20–50:20. Patent Owner observes that the
`Specification of the ’406 patent explains that the “flat cable transmits
`scanning control signals . . . instead of timing control signals.” PO Resp. at
`4 (citing Ex. 1001, col. 4, ll. 26–29) (emphasis added). Patent Owner
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`reasons that such disclosure would be understood by one of ordinary skill in
`the art as describing “transmission of scanning control signals, not timing
`control signals, across the flat cable connecting the main circuit module and
`the optical sensor module,” and supports its reasoning with testimony from
`Richard G. Zech, Ph.D. Id. at 5 (citing Ex. 2004 ¶ 38).
`We are not persuaded by Patent Owner’s reasoning. Although the
`portion of the Specification cited by Patent Owner suggests a distinction
`between scanning control signals and timing control signals, it does not
`support unambiguously Patent Owner’s position of complete independence
`between scan control signals and timing control signals. That is, it is not
`apparent from the statement identified by Patent Owner that the scan control
`signals transmitted over the flat cable lack any signal that affects timing
`control. For example, Patent Owner acknowledged at the Oral Hearing that
`the specific scanning control signals mentioned in the ’406 patent are the
`image resolution, the brightness level, and the scanning range, and that these
`scanning control signals are used “to create the timing [control] signal on the
`optical unit 220.” Tr. 50:13–20. Moreover, the plain language of claims 1,
`2, 12, 14, 22, 26, and 27, which recite “converting” scan control signals into
`timing control signals, is inconsistent with Patent Owner’s position. Under
`the construction we adopt, “converting” scan control signals into timing
`control signals means changing the form of scan control signals into timing
`control signals, which does not require their complete independence. The
`negative limitation that Patent Owner proposes to read into the expression
`appears nowhere in the text of the claim itself. “[A] claim construction
`analysis must begin and remain centered on the claim language itself.”
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`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
`1116 (Fed. Cir. 2004). Claims terms can be assigned a scope narrower than
`their ordinary meaning only if there is some indication in the patent or the
`prosecution history that a term was meant to have a more restrictive meaning
`or a broader meaning was disclaimed during prosecution. Saunders Grp.,
`Inc. v. Comfortrac, Inc. 492 F.3d 1329, 1331 (Fed. Cir. 2007). Neither the
`portion of the Specification identified by Patent Owner nor the prosecution
`history persuades us that the phrase was meant to have the more restrictive
`meaning Patent Owner now advocates.
`Furthermore, the language of the claims in the ’406 patent contrasts
`with the claims of Application No. 11/694,472, a child of the ’406 patent.
`The claims in the child explicitly were amended during prosecution to
`include the negative limitation for the purpose of overcoming prior art. See
`Ex. 1023, 2. We determine that this amendment is inconsistent with Patent
`Owner’s claim construction argument in this proceeding. See Microsoft
`Corp. v. Multi-Tech Systems Inc., 357 F.3d 1340, 1349–50 (Fed. Cir. 2004)
`(prosecution history of related application is relevant to claim construction);
`see Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d 1456, 1460 n.2 (Fed.
`Cir. 1998) (applying the prosecution histories of two sibling patents, which
`shared a common written description, to one another). Patent Owner has not
`identified a persuasive reason why, under the broadest-reasonable-
`interpretation standard, the broader language of the parent ’406 patent claims
`should not be given its full scope.
`Accordingly, we construe “timing control signals” as signals that
`affect timing control, and we construe “scan control signals” as signals that
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`affect scan control. Our construction, moreover, does not preclude the
`inclusion of a timing control signal as part of a scan control signal.
`
`
`3. “optical sensor circuit module”
`Independent claim 1 recites “an optical sensor circuit module . . .
`capable of receiving the scan control signals and converting the scan control
`signals to timing control signals that control document scanning, extraction
`of an analog image signal . . . and conversion of the analog image signal into
`the digital image data.” In the Institution Decision, we adopted a
`construction in which the recited “receiving,” “converting,” “extraction,”
`and “conversion” are all capabilities of the optical sensor circuit module,
`without the further requirement that the extraction and conversion be
`controlled by the timing control signals. Dec. 7. We see no reason to alter
`that construction based on the positions of the parties as developed during
`the trial, and accordingly adopt it herein.
`
`
`4. Means-plus-function Limitations
`Claims 21–25 include several terms recited as “means for” performing
`identified functions. In the Institution Decision, we construed these
`recitations under 35 U.S.C. § 112, ¶ 6, as follows. We see no reason to alter
`those constructions based on the positions of the parties as developed during
`the trial, and accordingly adopt them herein.
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`Corresponding structure
`optical sensor circuit module 220 and
`optical sensor 240
`analog/digital converter 260
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`“means for . . .”
`“. . . extracting an analog image
`signal”
`“. . . converting the analog image
`signal into a digital image data”
`“. . . receiving the digital image data” main circuit module 210 and main
`control logic unit 270
`timing signal generator 265
`
`“. . . generating timing control
`signals”
`“. . . receiving a scanning
`instruction”
`“. . . converting the scanning
`instruction into scan control signals”
`“. . . passing the scan control signals
`to said connection cable”
`“. . . receiving the scan control
`signals”
`optical sensor module 220 and
`“. . . converting the scan control
`timing signal generator 265
`signals to timing control signals”
`“. . . holding the digital image data” memory unit 280
`“. . . controlling the access of the
`memory controller 275
`digital image data”
`“. . . compensating and adjusting the
`digital image data”
`“. . . preprocessing the analog image
`signal”
`“. . . converting the pre-processed
`analog image signal into the digital
`image data”
`
`
`main control logic unit 270
`
`main control logic unit 270 and
`communication interface 285
`main circuit module 210
`
`optical sensor circuit module 220
`
`main control logic unit 270
`
`analog front-end preprocessor 250
`
`analog/digital converter 260
`
`B. Anticipation of Claims 1, 3, 5, 6, and 10–31 by Tsuboi
`Tsuboi describes an image-reading device that uses a CCD to collect
`image data. Ex. 1015 ¶ 1. Figure 4 of Tsuboi is reproduced below.
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`Figure 4 provides a schematic illustration of the image-reading device
`with components distributed between an image processing circuit board and
`a CCD circuit board. Id. ¶ 36. Petitioner draws a correspondence between
`(1) the image processing circuit board of Tsuboi and the optical sensor
`circuit module recited in the claims of the ’406 patent, and (2) the CCD
`circuit board of Tsuboi and the main circuit module recited in the claims.
`Pet. 17. The image processing circuit board and the optical sensor circuit
`module are connected by a flexible cable. Ex. 1015 ¶ 25. Similar to the
`configuration shown in Figure 2 of the ’406 patent, Tsuboi discloses that the
`CCD circuit board includes CCD image sensor 31, analog processing circuit
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`30AN, analog-digital converter 35, and “signal processing circuit 37 for
`controlling the timing with which the CCD 31 is driven and for generating a
`clock.” Id. ¶ 36; see also id. ¶ 3. Signals processed to generate information
`for controlling the timing are received from the image processing circuit
`board. Id. ¶ 39. Petitioner reasons that “the timing control signals and
`digital image data are generated on the optical sensor side, and the digital
`image data is transmitted to the main module via a cable, as claimed in the
`’406 [p]atent.” Pet. 18.
`Petitioner provides charts at pages 18–30 of the Petition that set forth
`its detailed positions that claims 1, 3, 5, 6, and 10–31 are anticipated by
`Tsuboi in light of Tsuboi’s teaching of generating timing control signals and
`digital image data on the optical sensor side, and transmitting digital image
`data to the main module via a cable. We have reviewed the charts and
`conclude that Petitioner has demonstrated, by a preponderance of the
`evidence, that each of claims 1, 3, 5, 6, and 10–31 is anticipated by Tsuboi.
`Patent Owner contends that Tsuboi neither explicitly nor inherently
`discloses converting scanning instructions into scan control signals and
`neither explicitly nor inherently discloses converting scan control signals to
`timing control signals. PO Resp. 13–24. Although Patent Owner is correct
`that “Petitioner acknowledges that the term ‘converting’ is not explicitly
`present in Tsuboi” (id. at 14), anticipation “is not an ‘ipsissimis verbis’ test.”
`In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (citing Akzo N.V. v.
`United States Int’l Trade Comm’n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir.
`1986)). “An anticipatory reference . . . need not duplicate word for word
`what is in the claims.” Standard Havens Prods., Inc., v. Gencor Indus., Inc.,
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`953 F.2d 1360, 1369 (Fed. Cir. 1991). The proper test is what the reference
`would have taught a person of ordinary skill in the art. See In re Preda, 401
`F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference,
`it is proper to take into account not only specific teachings of the reference
`but also the inferences which one skilled in the art would reasonably be
`expected to draw therefrom.”). For example, Petitioner’s expert witness, L.
`Richard Carley, Ph.D., identifies control signals and certain intermediate-
`level clock signals in determining that main module 20 of Tsuboi converts
`scanning instructions in the form of various inputs and a start instruction into
`scan control signals. Ex. 1002 ¶ 65 (citing Ex. 1015 ¶¶ 20, 25, 27, 29, 39–
`41). Dr. Carley further identifies generation of other control signals that
`include primary scanning synchronization signals and primary scanning
`effective interval signals by main module 20. Id. (citing Ex. 1015, ¶¶ 39,
`40). Dr. Carley presents reasoning that one of ordinary skill in the art would
`have understood that CPU 21 of Tsuboi generates these scan control signals
`from the user-level scanning instructions because “CPUs ‘process’ signals
`that they receive” and because “the control signals for scanning issued by
`CPU 21 (e.g., primary scanning synchronization signal) provide the
`operation controls for performing scanning in accordance with the user’s
`instructions.” Id.
`In addition, Patent Owner’s expert witness, Dr. Zech, acknowledged
`that Tsuboi’s synchronization and interval signals are the result of
`processing by CPU 21 of instructions that relate to such factors as document
`size. Ex. 1028, 240:8–241:4, 284:1–285:10, 165:12–169:2, 170:22–173:16,
`152:12–155:13, 157:5–9. A person of ordinary skill in the art would have
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`understood that CPU 21 processes the instructions received from board 14 to
`convert the input scanning instructions into the scanning synchronization
`signal and the effective interval signals, which are transmitted to signal
`processing circuit 37. See Reply 6 (citing Ex. 1031 ¶¶ 28, 32, 34–36, 40,
`53).
`
`We disagree with Patent Owner’s contention that “the Petition itself
`concedes that Tsuboi does not explicitly disclose converting a scanning
`instruction into [a] scan control signal” through its acknowledgment that the
`term “converting” is not explicitly present in Tsuboi. PO Resp. 14.
`Although Dr. Carley and Petitioner acknowledge that Tsuboi does not
`explicitly refer to “converting,” Dr. Carley’s reasoning, which we credit, is
`based directly on the explicit teachings of the reference and how they would
`be understood by one of ordinary skill in the art. Therefore, we do not
`understand Petitioner to be making an inherency argument, and we conclude
`that Petitioner has shown, by a preponderance of the evidence, that the
`recited “converting” is taught explicitly by the reference.
`With respect to the conversion of scan control signals into timing
`control signals, Dr. Carley identifies various timing control signals that are
`generated from scan control signals received by signal processing circuit 37
`of Tsuboi. Ex. 1002 ¶ 69. These include a clock signal generated by signal
`processing circuit 37 that controls the timing of the sensor and a signal that
`controls the timing of the A/D converter. Id. (citing Ex. 1005 ¶¶ 36–39).
`Patent Owner responds that “signal processing circuit 37 merely provides
`the clock received through the flexible cable to other synchronous circuit
`components of the CCD circuit board.” PO Resp. 19 (citing Ex. 2004
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`¶¶ 58–65). As we note above, however, our construction of “scan control
`signals” does not preclude inclusion of a timing control signal as part of a
`scan control signal. We are not persuaded, therefore, by Patent Owner’s
`distinction that the signal processing circuit “merely provides” the clock
`signal rather than operates on the scan control signals it receives to perform
`a conversion.
`We conclude that Petitioner has shown, by a preponderance of the
`evidence, that Tsuboi anticipates claims 1, 3, 5, 6, and 10–31.
`
`
`C. Obviousness of Claims 1, 3, 5, 6, and 10–31 Over Tsuboi
`In addition to its challenge of claims 1, 3, 5, 6, and 10–31 as
`anticipated by Tsuboi, Petitioner advances alternative grounds for
`challenging those claims as obvious over Tsuboi: “to the extent that Tsuboi
`does not explicitly describe ‘converting,’ such as converting a scanning
`instruction into scan control signals, such a conversion would have been
`obvious to one of ordinary skill.” Pet. 31. Dr. Carley testifies that, although
`the term “converting” is not explicitly used in Tsuboi, one of ordinary skill
`in the art would have recognized that by receiving and processing
`instructions, the CPU in Tsuboi converts the user scanning instruction into a
`different form, namely “control signals” or the “primary scanning
`synchronization signal.” Ex. 1002 ¶ 65. We credit this testimony and
`conclude that claims 1, 3, 5, 6, and 10–31 would have been obvious over
`Tsuboi.
`
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`D. Obviousness of Claims 5, 6, 8, 16–25, 29, and 31
`Over Tsuboi and Kono
`
`Kono discloses a scanner having a separate main board and carriage.
`Ex. 1006, col. 3, ll. 37–41; col. 5, ll. 6–9. Figure 2 of Kono is reproduced
`below.
`
`
`Figure 2 depicts main board 41 connected to carriage 20 with flexible flat
`cable 40. Id. at col. 4, ll. 56–57. Petitioner draws a correspondence between
`(1) main board 41 and the “main circuit module” recited in the claims; and
`(2) the circuitry on carriage 20 and the “optical sensor circuit module”
`recited in the claims. Pet. 35; see also Ex. 1002 ¶ 71. Similar to Tsuboi, the
`optical sensor side of the scanner includes CCD 22, analog-digital converter
`25, and control unit 24. Ex. 1006, col. 3, l. 59–col. 4, l. 27.
`Petitioner contends that it would have been obvious, in light of
`Kono’s teachings, to use timing control signals to control both the image
`sensor and A/D converter. Pet. 35. Claims 5, 6, 16–25, 29, and 31 include
`limitations related to such timing coordination. As Petitioner observes,
`Kono discloses that control unit 24 acts as a timing generator that generates
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`timing control signals that provide a shift pulse and a sampling pulse. Id.
`(citing Ex. 1006, col. 4, ll. 13–55; col. 5, l. 29–col. 6, l. 10; Fig. 1). The
`control unit is coupled to both the CCD and A/D converter, with the shift
`pulse transmitted to the CCD to control generation of the analog image
`signal and the sampling pulse transmitted to the A/D converter to control
`conversion to digital data. Ex. 1006, col. 4, ll. 13–55; col. 5, l. 29–col. 6, l.
`10. Petitioner reasons that, because both Tsuboi and Kono disclose
`generation of timing control signals on the optical sensor side of a scanning
`circuit, one of ordinary skill in the art would have found it obvious to send
`timing control signals both to the image sensor and to A/D converter in
`Tsuboi according to the scheme described in Kono. Pet. 35–36. Petitioner
`has articulated a sufficient rationale to make the asserted combination.
`Patent Owner challenges this reasoning, based on its position that Tsuboi
`does not disclose generation of timing control signals on the optical sensor
`side of a scanning circuit. PO Resp. 47. As we explain above, we disagree
`with Patent Owner’s position on this.
`Patent Owner also responds that Kono fails to cure a further asserted
`deficiency in Tsuboi, namely, that Kono fails to disclose conversion of
`scanning instructions into scan control signals. PO Resp. 46. For the
`reasons we express above, however, we find that Petitioner has established,
`by a preponderance of the evidence, that Tsuboi discloses such conversion,
`and therefore Petitioner’s argument that there is a deficiency fails.
`We conclude that Petitioner has shown, by a preponderance of the
`evidence, that claims 5, 6, 16–25, 29, and 31 would have been obvious over
`Tsuboi and Kono.
`
`18
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`E. Obviousness of Claim 7 Over Tsuboi and Koshimizu or
`Tsuboi, Kono, and Koshimizu
`
`Petitioner challenges claim 7, which recites that “the optical sensor
`includes a complementary metal-oxide-semiconductor (CMOS) image
`sensor,” as unpatentable under 35 U.S.C. § 103(a) over Tsuboi and
`Koshimizu, together, or in further combination with Kono. Pet. 32–33, 36–
`37. Tsuboi’s scanner includes a CCD image sensor for reading a document.
`Ex. 1015 ¶¶ 14, 23–24. Koshimizu “relates to an image reading apparatus”
`and discloses a CMOS image sensor for use in a scanner. Ex. 1012 ¶¶ 1, 25.
`Petitioner’s reasoning that one of skill in the art would have “provide[d]
`Tsuboi’s scanner with a CMOS image sensor, as described in Koshimizu”
`articulates sufficient rational underpinnings for making the combination.
`Pet. 33.
`Patent Owner responds that Koshimizu does not cure the deficiencies
`with Tsuboi it identifies for claims 1 and 5, from which claim 7 depends,
`either for the Tsuboi grounds or for the Tsuboi-Kono grounds. PO Resp. 44,
`48–49. Because we disagree that Petitioner’s analysis is deficient for those
`underlying base claims, we do not find this argument persuasive.
`We conclude that Petitioner has shown, by a preponderance of the
`evidence, that claim 7 would have been obvious over Tsuboi and Koshimizu,
`together or in further combination with Kono.
`
`
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`F. Obviousness of Claims 2, 3, 14, 15, 18, 19, 23, 27, and 28
`Over Tsuboi and Ochiai and of
`Claims 18, 19, and 23 Over Tsuboi, Ochiai, and Kono
`
`Petitioner challenges claims 2, 3, 14, 15, 18, 19, 23, 27, and 28, which
`relate to coupling of the main control logic unit with the memory control
`logic unit, as unpatentable under 35 U.S.C. § 103(a) over Tsuboi and Ochiai.
`Pet. 37–38. Petitioner also challenges claims 18, 19, and 23 as unpatentable
`under 35 U.S.C. § 103(a) over Tsuboi, Ochiai, and Kono. Id. at 38–39.
`Claims 2 and 3 depend from claim 1, claims 14 and 15 depend from claim
`11, claims 18 and 19 depend from claim 17, claim 23 depends from claim
`21, and claims 27 and 28 depend from claim 26.
`Ochiai “relates to a facsimile device having an image memory.” Ex.
`1009, col. 1, ll. 12–13. The facsimile device includes a scanner unit, as well
`as a memory control unit coupled to a CPU and memory. Id., col. 2, ll. 32–
`53. The memory control unit controls writing data to and reading data from
`the memory. Id. at col. 5, ll. 49–53. Petitioner reasons that it
`would have been obvious to one of ordinary skill that the
`memory 23 and logic unit arrangement in Tsuboi would
`preferably have been implemented as shown in Ochiai to
`provide a separate memory logic unit coupled to the main
`control logic unit because doing [so] would provide better
`processing speeds for high volumes of image data.
`
`
`Pet. 37–38. Petitioner supports its reasoning with testimony by Dr. Carley.
`Id. (citing Ex. 1002 ¶ 109).
`Patent Owner responds that Ochiai does not cure deficiencies with
`Tsuboi it identifies for underlying base claims from which these claims
`
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`depend. PO Resp. 49, 51. Because we disagree that Petitioner’s analysis is
`deficient for those underlying base claims, we do not find this response
`persuasive.
`We conclude that Petitioner has shown, by a preponderance of the
`evidence, that claims 2, 3, 14, 15, 18, 19, 23, 27, and 28 would have been
`obvious over Tsuboi and Ochiai, and that claims 18, 19, and 23 would have
`been obvious over Tsuboi, Ochiai, and Kono.
`
`
`G. Obviousness of Claim 4 Over Tsuboi and Takegawa and
`Over Tsuboi, Ochiai, and Takegawa
`
`Petitioner challenges claim 4, which recites that “the memory
`comprises a dynamic random access memory,” as unpatentable under
`35 U.S.C. § 103(a) over Tsuboi and Takegawa, together, or in further
`combination with Ochiai. Pet. 31–32, 38. Tsuboi’s scanner includes RAM
`23, which stores digital image data from a scanning operation. Ex. 1015 ¶
`27. Takegawa describes a book-reading device that may be used as an
`image scanner. Ex. 1017 ¶ 1. A scanning unit includes an image processing
`unit that has a DRAM module for storing image signals. Id. at ¶¶ 11–12.
`Petitioner reasons that one of skill in the art would make a simple
`substitution of Tsuboi’s RAM with Takegawa’s DRAM “because Takegawa
`describes using such a memory to store the same type of image data from a
`scanning operation.” Pet. 32 (citing Ex. 1002 ¶ 135). Petitioner articulates a
`sufficient rationale to combine the teachings of Tsuboi and Takegawa in this
`way.
`
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`Patent Owner responds that Takegawa does not cure deficiencies with
`Tsuboi it identifies for claims 1 and 2, from which claim 4 depends. PO
`Resp. 44, 50. Because we disagree that Petitioner’s analysis is deficient for
`those underlying base claims, we do not find this response persuasive.
`We conclude that Petitioner has shown, by a preponderance of the
`evidence, that claim 4 would have been obvious over Tsuboi and Takegawa,
`alone or in combination with Ochiai.
`
`
`H. Obviousness of Claim 9 Over Tsuboi and Nakamura
`Petitioner challenges claim 9, which recites that “the communication
`interface includes a universal serial bus interface,” as unpatentable under
`35 U.S.C. § 103(a) over Tsuboi and Nakamura. Pet. 33–34. Although
`Tsuboi discloses that main circuit module 20 receives input from operating
`board 14, it does not disclose the specific type of communication interface
`used between those elements. Nakamura “relates to a printing system that
`uses a USB (Universal Serial Bus), for printing scanner-read information
`thro
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