UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`Patent Owner
`
`U.S. Patent No. 8,909,094
`Issue Date: December 9, 2014
`Title: SEALING MEMBER, TONER CONTAINER
`AND IMAGING FORMING APPARATUS
`
`DECLARATION OF BRIAN SPRINGETT, PH. D.
`
`Case No. IPR2016-01359
`
`NY 824545V.1
`
`GPI EXHIBIT 1008
`GENERAL PLASTIC v. CANON
`IPR2016-01359
`
`1
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`Patent Owner
`
`U.S. Patent No. 8,909,094
`Issue Date: December 9, 2014
`Title: SEALING MEMBER, TONER CONTAINER
`AND IMAGING FORMING APPARATUS
`
`DECLARATION OF BRIAN SPRINGETT, PH. D.
`
`Case No. IPR2016-01359
`
`NY 824545V.1
`
`GPI EXHIBIT 1008
`GENERAL PLASTIC v. CANON
`IPR2016-01359
`
`1
`
`
`
`I, Brian Springett, Ph.D., hereby declare and state as follows:
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`
`1.
`
`My name is Dr. Brian Springett and I have been retained by Petitioner
`
`General Plastic Industrial Co., Ltd. to provide assistance in the above-captioned
`
`matter, which I understand to be related to alleged invalidity of certain claims in
`
`U.S. Patent No. 8,909,094 (“the ‘094 patent”), entitled “Sealing Member, Toner
`
`Accommodating Container and Image Forming Apparatus”.
`
`2.
`
`I have summarized in this section my educational background, career
`
`history, and other relevant qualifications. A true and accurate copy of my
`
`curriculum vitae is attached hereto as Exhibit A.
`
`3.
`
`I received a B.A. with Honors in Physics and Mathematics from the
`
`University of Cambridge in Cambridge, England in 1960. I also received an M.S.
`
`in Physics from the University of Chicago in Chicago, Illinois in 1963, followed by
`
`an M.A. in Physics from the University of Cambridge in Cambridge, England in
`
`1964.
`
`I earned a Ph.D. from the University of Chicago, Illinois in 1966 in Solid
`
`State and Low Temperature Physics. After receiving my Ph.D., I continued my
`
`education with short courses on Laser Beams from the University of Chicago, short
`
`courses in Optics & Lasers from the University of Rochester and a short course in
`
`Technology Management from the Sloan School, Massachusetts Institute of
`
`Technology.
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`4.
`
`After
`
`leaving Cambridge University and prior
`
`to attending the
`
`University of Chicago, I spent one year with Hoffman Semiconductor in Southern
`
`California working on solar cells and integrated circuits. After earning my Ph.D., I
`
`spent one year as a post-doctoral research associate at the University of Chicago
`
`before moving to the University of Michigan as an assistant professor in the
`
`Physics Department. Additional
`
`teaching positions have included visiting
`
`professor positions at the University of Oakland, in Rochester, Michigan, and the
`
`University of Quebec, in Trois-Rivières, Quebec.
`
`5.
`
`In 1974, following my academic positions, I worked for Xerox
`
`Corporation for 27 years. During my first 13 years at Xerox Corporation, I
`
`conducted research and development on new electrophotographic subsystems, the
`
`first Xerox laser printers, system integration of electrophotographic consumables,
`
`including work with multiple types of toners, photoreceptors, and charging
`
`systems. My work involved coordination of research and development and
`
`integration of planning with engineering groups around the world. During the next
`
`14 years at Xerox, I worked in technology management and strategic planning,
`
`including research and development on system integration of electrophotographic
`
`consumables for new digital products, both black and white and color. This work
`
`included membership on standing research and development committees to
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`monitor progress of technology investments and formulating strategy assessments
`
`and refinements, as well as consultation on international standards committees.
`
`6.
`
`My 27 years of experience at Xerox Corporation, included working
`
`with photoreceptors, toners, developers, toner cartridges, liquid toners, media, and
`
`electrophotographic systems (including digital black and white and color printing).
`
`Since leaving Xerox Corporation, my educational background has enabled me to
`
`work as a business and technology advisor and consultant for the past 12 years.
`
`My work as an advisor and consultant has generally but not exclusively been
`
`related to electrophotography, including print cartridge remanufacturing, toner
`
`development and problem solving, other research and development projects, and
`
`business development projects with more than 20 companies in the USA and
`
`abroad.
`
`I have also made presentations on various aspects of electrophotography
`
`and the associated materials and components, such as photoreceptors, toners,
`
`carriers, and developers, at ten conferences since June 2001, and I served as the
`
`co-chairman of the Toner & Photoreceptors series of conferences run by Tiara
`
`Group from 2001 to 2010.
`
`7.
`
`I am named as inventor on 13 United States and European patents
`
`relating to electrophotographic sub-systems, and methods and applications for
`
`photoconductors and toners.
`
`I have over 90 publications in various journals
`
`relating to low temperature quantum physics, amorphous semiconductors, charge
`
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`transport
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`in dense cold gases, charge transport
`
`in non-crystalline materials,
`
`electrophotographic photoconductors, toners and sub-systems, electrophotography
`
`and digital color printing.
`
`I have authored a chapter, “Brief Introduction to
`
`Electrophotography,” in the new edition of a Handbook of Imaging Materials,
`
`2nd edition, revised and expanded, edited by Marcel Dekker, A. Diamond, &
`
`D. Weiss, 2002. I have co-authored a Technical Review Article on the Physics of
`
`Electrophotography, “Physics of Electrophotography,” D.M. Pai & B.E. Springett,
`
`Reviews of Modern Physics, vol. 65, no. 1, 1993, pp. 163-211.
`
`I have on three
`
`occasions presented a four-hour short course entitled “The Business of Toner:
`
`A Value-Chain Oriented Introduction” to classes of technical professionals from
`
`around the world at the series of International Non-Impact Printing Conferences
`
`run by the Society for Imaging Science & Technology. Other of my publications
`
`are detailed in the attached curriculum vitae.
`
`8.
`
`During the previous four years,
`
`I have testified in the patent
`
`infringement suit, Canon, Inc. v. Color Imaging, Inc. and General Plastic
`
`Industrial Co., Ltd., 1:11-CV-03855-RLV, N.D. Georgia, as an expert by
`
`deposition, on behalf of the Defendants.
`
`II.
`
`ASSIGNMENT AND MATERIALS REVIEWED
`
`9.
`
`I have been retained by General Plastic Industrial Co., Ltd.
`
`in
`
`connection with its Second Petition for inter partes review of U.S. Patent
`
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`
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`No. 8,909,094 (“the ‘094 patent”). I have reviewed the ‘094 patent (Ex. 1001), its
`
`prosecution history (Ex. 1002), and the prior art references relied on in the Second
`
`Petition, namely Japanese Patent Application Publication No. 2000-305346 to
`
`Suzuki (“Suzuki”, Ex. 1006), and Ikesue U.S. Patent No. 5,598,254 (“Ikesue”,
`
`Ex. 1007). I have also reviewed the other technical references cited in the Second
`
`Petition, such as U.S. Patent No. 7,647,012 (Ex. 1003).
`
`10.
`
`I submit this declaration in support of the Second Petition for Inter
`
`Partes review of the ‘094 patent.
`
`11.
`
`I am not now, and have never been, an employee of General Plastic
`
`Industrial Co., Ltd. or any parent or subsidiary thereof.
`
`12.
`
`I am being compensated for my time at a rate of $200 per hour for all
`
`work and $100 per hour for travel time. My compensation is in no way dependent
`
`upon the substance of the opinions I offer below, or upon the outcome of General
`
`Plastic’s Second Petition for Inter Partes review (or the outcome of such an inter
`
`partes review, if a trial is initiated).
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`
`13.
`
`I understand that a patent must be written such that
`
`it can be
`
`understood by a “person of ordinary skill” in the field of the patent.
`
`14.
`
`I understand that this hypothetical person of ordinary skill in the art is
`
`considered to have the normal skills and knowledge of a person in a certain
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`technical field, as of the time of the invention at issue.
`
`I understand that factors
`
`that may be considered in determining the level of ordinary skill in the art include:
`
`(1) the education level of the inventor; (2) the types of problems encountered in the
`
`art;
`
`(3) the prior art solutions to those problems;
`
`(4) rapidity with which
`
`innovations are made;
`
`(5) the sophistication of
`
`the technology; and (6) the
`
`education level of active workers in the field. I also understand that “the person of
`
`ordinary skill” is a hypothetical person who is presumed to be aware of the
`
`universe of available prior art.
`
`15.
`
`In my opinion, as of the February 19, 2002 filing date of the earliest
`
`U.S. application for which priority is claimed under 35 U.S.C. §120 and/or the
`
`February 19, 2001 filing date of the earliest Japanese application for which priority
`
`is claimed under 35 U.S.C. §119, a person of ordinary skill in the art of the
`
`‘094 patent would be a person with (1) a bachelor’s degree in mechanical
`
`engineering, or
`
`a
`
`similar
`
`technical
`
`field;
`
`(2) a working knowledge of
`
`electrophotographic
`
`imaging
`
`systems,
`
`image
`
`forming
`
`apparatuses,
`
`toner
`
`containers, and the like; (3) at least two years of experience in analysis, design and
`
`development of such electrographic imaging systems, image forming apparatuses,
`
`and toner containers; and (4) an understanding of
`
`the prior art and an
`
`understanding that design concepts can be adopted from other contexts where the
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`problems or needs might be similar, and relevant
`
`technical
`
`literature and
`
`publications.
`
`16. Based on my experience and education, I consider myself (both now
`
`and as of February 19, 2002 and February 19, 2001) to be a person of at least
`
`ordinary skill in the art with respect to the field of technology implicated by the
`
`‘094 patent.
`
`IV. CLAIM CONSTRUCTION
`
`17.
`
`In rendering the opinions set
`
`forth in this declaration, I have
`
`considered what one of ordinary skill in the art would consider to be the broadest
`
`reasonable construction of the ‘094 patent terms.
`
`18.
`
`A.
`
`19.
`
`I have read and understand the ‘094 patent.
`
`“A toner supply container comprising”
`
`The preamble of each challenged independent claims 1 and 29 reads
`
`“[a] toner supply container”.
`
`20. Because the preamble of each challenged independent claim is limited
`
`to just a toner supply container and omits any mention of an electrophotographic
`
`image forming apparatus (such as a copier, a printer or a facsimile machine), a
`
`person of ordinary skill would understand that the challenged claims do not require
`
`the toner supply container to be detachably mountable to an electrophotographic
`
`image forming apparatus, such as by a snap-fit connection.
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`21. Because the preamble of each challenged independent claim is limited
`
`to just a toner supply container and omits any mention of an electrophotographic
`
`image forming apparatus (such as a copier, a printer or a facsimile machine), a
`
`person of ordinary skill would understand that the challenged claims do not require
`
`any recited structural element
`
`to receive a force actually exerted by an
`
`electrophotographic image forming apparatus.
`
`B.
`
`“a rotational force receiving portion ...”
`
`22. Challenged independent claim 1 recites “a rotational force receiving
`
`portion capable of being abutted in a direction that
`
`is concentric with a
`
`circumference of the cylindrical portion of the container body to receive a
`
`rotational drive force for rotating the sealing member and container body”.
`
`23.
`
`The plain and ordinary meaning of this limitation is that the rotational
`
`force receiving portion need only be capable of receiving a rotational drive force
`
`from any source that would be applied in a direction concentric with the
`
`circumference of the container body’s cylindrical portion for rotating the sealing
`
`member and container body.
`
`24. A person of ordinary skill, based on the omission of any recitation of
`
`an image-forming apparatus in claim 1, would understand that claim 1 does not
`
`require the source of the rotational drive force to be received by the rotational force
`
`receiving portion to be limited to an image-forming apparatus.
`
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`C.
`
`“the displacing force receiving portion being displaceable with the
`
`supporting portion & “the projecting portion being displaceable with the
`
`supporting portion”
`
`25. Claim 1 recites “a displacing force receiving portion provided on the
`
`supporting portion at a position closer to the container body than the engaging
`
`portion,
`
`the displacing force receiving portion being displaceable with the
`
`supporting portion and having a radially outermost part that is more remote from
`
`the rotation axis of the container body than a radially outermost part of the
`
`engaging portion”.
`
`26. Claim 29 recites “a projecting portion provided at a position closer to
`
`the container body than the engaging portion, the projecting portion projecting
`
`radially from an outer surface of the supporting portion such that a radially
`
`outermost part of the projecting portion is more remote from the axis of the
`
`container body than a radially outermost part of the engaging portion, and the
`
`projecting portion being displaceable with the supporting portion”.
`
`27. A person of ordinary skill would understand the terms “displacing
`
`force receiving portion” and “projecting portion” to refer to a portion of the
`
`coupling portion that is provided at the recited relative radial and axial positions
`
`vis-à-vis the engaging portion and container body.
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`28. Because the preamble of the challenged claims does not recite a
`
`snap-fit connection between an electrophotographic image forming apparatus and
`
`the toner supply container, there is no recitation of a force being exerted by the
`
`electrophotographic image forming apparatus and received by the portion or the
`
`portion’s reaction to the receipt of such a force. Consequently, the phrases “the
`
`displacing force receiving portion being displaceable with the supporting portion”
`
`and “the projecting portion being displaceable with the supporting portion” simply
`
`mean that the displacing force receiving portion or the projecting portion is capable
`
`of displacing with the supporting portion on which it is provided.
`
`29.
`
`In its Preliminary Response to the previously filed Petition, the Patent
`
`Owner offered the following explanation in support of its construction for this
`
`limitation:
`
`The plain and ordinary meaning of “displaceable with the
`supporting portion” is “capable of displacing with the
`supporting portion,” which is reflected in Patent Owner’s
`proposed constructions.... However, the claims do not
`require the displacing force receiving portion/projecting
`portion to have some degree of elasticity. Whether the
`displacing force receiving portion/projecting portion is
`elastic or rigid, as long as it is capable of displacing with
`the supporting portion on which it is provided, it meets
`the claim language.
`
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`
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`General Plastics v. Canon, IPR2015-01954, Preliminary Response (Paper 6) at
`
`pp. 30-31 (Dec. 22, 2015). I agree with Patent Owner’s explanation.
`
`V.
`
`Suzuki (Ex. 1006)
`
`30.
`
`I have read Suzuki and fully understand its subject matter. Set forth
`
`below, I present my opinions on what a person of ordinary skill would understand
`
`certain aspects of Suzuki to be teaching, and what Suzuki would suggest to a
`
`person of ordinary skill.
`
`31.
`
`Suzuki discloses a toner container 1 for
`
`refilling toner
`
`into a
`
`developing apparatus of an image-forming device such as an electrophotographic
`
`copy machine, printer, or the like. See Ex. 1006 at ¶0001. Thus, Suzuki is from
`
`the same field of endeavor of the challenged claims of the ‘820 patent -- “a toner
`
`supply container”. Furthermore, the ‘094 patent specification explains that a
`
`problem addressed by the named inventors is the resealing of the container body to
`
`avoid the problem of toner leakage. See Ex. 1001 at col. 17, ln. 50 - col. 18, ln. 24.
`
`Suzuki addresses this same problem. See Ex. 1006 at ¶¶0004-5 & 17-19. Thus, a
`
`person of ordinary skill in the art as of the February 19, 2002 effective filing date
`
`of the ‘094 patent would have considered Suzuki
`
`to be highly relevant and
`
`analogous prior art to the challenged claims of the ‘094 patent.
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`
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`A.
`
`The Teachings of Suzuki
`
`1.
`
`a container body configured to contain toner
`
`32. As illustrated in Figure 4, Suzuki discloses a toner container 1
`
`comprising a cylindrical container main unit 2 and an inner cap 3 for
`
`opening/closing an opening portion 7 provided in an axial end of the container
`
`main unit 2.
`
`The container main unit 2 contains toner, and is rotatable. See Ex. 1006 at ¶0017.
`
`33.
`
`The opening portion 7 correlates with the recited “opening”. The
`
`opening portion 7 is configured to permit the discharge of toner contained in the
`
`container main unit 2. See Ex. 1006 at ¶0017 & Fig. 4.
`
`2.
`
`sealing member
`
`34.
`
`The inner cap 3 correlates with the recited “sealing member”. As
`
`depicted in Figure 4 of Suzuki, the inner cap 3 is provided at an axial end of the
`
`container main unit 2. The inner cap 3 is movable relative to the container main
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`unit 2 via the elongation/contraction of the bellows portion 17. See Ex. 1006 at
`
`¶0017.
`
`35.
`
`Suzuki states that “as shown in the cross-sectional view in FIG. 4, the
`
`inner cap 3 may be formed from a cap portion 9 and a bellows portion 17 ....”
`
`Ex. 1006 at ¶0017. Figure 4 of Suzuki is reproduced below.
`
`In view of the hatching shown throughout the cross-sectional view of the inner cap
`
`3 presented in Figure 4, a person of ordinary skill would understand Figure 4 as
`
`depicting the inner cap 3 to be of one-piece construction.
`
`36.
`
`Suzuki further explains that the inner cap 3, which comprises cap
`
`portion 9 and elastic bellows portion 17, is “made from a synthetic resin or rubber
`
`elastic body that has flexibility and elasticity”. Ex. 1006 at ¶0017. A person of
`
`ordinary skill would understand that these identified starting materials and the
`
`cross-sectional view of the inner cap 3 in Figure 4 dictate that a molding process
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`must be used for making the inner cap 3. Thus, a person of ordinary skill would
`
`understand that the entirety of the inner cap 3 is integrally molded.
`
`3.
`
`Inner Cap 3 Seals and Unseals the Opening Portion 7
`
`37. Circumferential ribs 16 are provided on the outer circumferential
`
`surface of the cylindrical portion 12 of the cap portion 9. See Ex. 1006 at ¶0017 &
`
`Figure 4. “[T]he tip end portion of the bellows portion 17 is secured by being
`
`screwed to the opening portion 7 of the container main unit 2 by a cylindrical inner
`
`cap securing member 19 that has, on the inner peripheral surface, a raised portion
`
`18 for securing.” Ex. 1006 at ¶0017.
`
`38.
`
`“In this case, the cap portion 9 can be inserted into the inner cap
`
`securing member 19 through deformation of the bellows portion 17 when the cap
`
`portion 9 of the inner cap 3 is pressed to the inner cap securing member 19 side.
`
`When the cap portion 9 is inserted into the inner cap securing member 19, the ribs
`
`16 of the cap portion 9, being flexible and elastic, are pressed and deformed, and
`
`the inner cap 3 is secured in the inner cap securing member 19.” Ex. 1006 at
`
`¶0017. This configuration correlates with the recited “first position” in which the
`
`opening portion 7 is sealed.
`
`39. A toner refilling opening 14 is provided in the bellows part 17. See
`
`Ex. 1006 at ¶0017. “[T]o refill the developing apparatus [i.e., such as a copier]
`
`with the toner within the container main unit 2, when the cap portion 9 of the inner
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`cap 3 is pulled from the inner cap securing member 19, the bellows portion 17
`
`elongates, so that the toner refilling opening 14 is pulled to the outside of the inner
`
`cap securing member 19.” Id. The toner in the container main unit 2 is supplied to
`
`the developing apparatus, such as a copier, through the opening portion 7 and then
`
`through the toner refilling opening 14. See Id. “[T]he provision of a plurality of
`
`toner refilling openings 14 in the bellows portion 17 of the inner cap 3 enables
`
`toner to be refilled a plurality of times with a single rotation of the inner cap 3 that
`
`rotates together with the container main unit 2, enabling an increase in efficiency
`
`in refilling with toner.” Id. This configuration, which is depicted in Figure 4 of
`
`Suzuki, correlates with the recited “second position” in which the opening portion
`
`7 is unsealed.
`
`4.
`
`Sealing Portion
`
`40.
`
`The portion of the inner cap 3 that correlates with the recited “sealing
`
`portion” has been highlighted in red in the below reproduced Figure 4 of Suzuki.
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`Specifically, the recited “sealing portion” correlates with the outer circumferential
`
`surface of the cylindrical portion 12 of the cap portion 9 (including ribs 16) and the
`
`bellows portion 17.
`
`5.
`
`Coupling Portion
`
`41.
`
`The portion of the inner cap 3 that correlates with the recited
`
`“coupling portion” has been highlighted in green in the below reproduced Figure 4
`
`of Suzuki.
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`
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`Specifically,
`
`the
`
`recited
`
`“coupling
`
`portion”
`
`correlates with
`
`the
`
`inner
`
`circumferential surface of the cylindrical portion 12 of the cap portion 9, the flange
`
`portion of the cap portion 9 and the protruding portion 13, which is remote from
`
`the container main unit 2. This protruding portion 13 is engageable with an inner
`
`cap opening/closing mechanism within a copier. See Ex. 1006 at ¶0011. As
`
`discussed infra at Paragraph 45, the protruding portion 13 is capable of receiving a
`
`rotational force.
`
`i.
`
`supporting portion
`
`42.
`
`The portion of this “coupling portion” that correlates with the recited
`
`“supporting portion” has been highlighted in purple in the below reporduced
`
`Figure 4 of Suzuki.
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`Specifically,
`
`the
`
`recited “supporting portion”
`
`correlates with the
`
`inner
`
`circumferential surface of the cylindrical portion 12 of the cap portion 9, the flange
`
`portion of the cap portion 9 and the protruding portion 13 exclusive of the radially
`
`extending front surface of protruding portion 13.
`
`43.
`
`Suzuki explains that the cap portion 9 is made from a synthetic resin
`
`or rubber elastic body having flexibility and elasticity. Due to its hollow
`
`cylindrical shape, as well as its flexibility and elasticity, the cap portion 9 would be
`
`elastically displaceable inwardly by the application of a radially inwardly directed
`
`force, and the portion of the cap portion 9 that would consequently displace
`
`inwardly would also elastically restore outwardly upon the removal of that radially
`
`inwardly directed force.
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`
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`ii.
`
`engaging portion
`
`44.
`
`The portion of this “coupling portion” that correlates with the recited
`
`“engaging portion” has been highlighted in blue in the below reproduced Figure 4
`
`of Suzuki.
`
`Specifically, the recited “engaging portion” correlates with the radially-inward,
`
`circumferential surface of protruding portion 13 and the outwardly radially
`
`extending surface immediately adjacent to that circumferential surface. This
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`“engaging portion” is at a free end of the portion of the cap portion 9 that
`
`correlates with the recited “supporting portion”. Because the inner cap 3 is of one-
`
`piece construction (see Paragraphs 35-36; Ex. 1006 at Fig. 4),
`
`this engaging
`
`portion is necessarily displaceable with the supporting portion.
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`NY 824545V.1
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`- 19 -
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`20
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`
`
`iii.
`
`rotational force receiving portion
`
`45. When the toner container 1 is outside of, and disconnected from a
`
`copier, and the inner cap 3 is pulled out from the inner cap securing member 19 as
`
`depicted in Figure 4, a user can abut his fingers against
`
`the radially-inward
`
`circumferential surface of protruding portion 13 and apply a rotational force for
`
`rotating the cylindrical container main unit 2. Because the end of the inner cap’s
`
`bellows portion 17 is fixed to the container main unit 2 by the raised portion 18 of
`
`the cylindrical inner cap securing member 19, a person of ordinary skill would
`
`understand that such an application of a sufficient rotational drive force would
`
`rotate the package body 2. See Ex. 1006 at ¶0017 (“rotation of the inner cap 3 that
`
`rotates together with the container main unit 2”). This portion of the inner cap’s
`
`protruding portion 13 correlates with the “rotational force receiving portion”
`
`recited in claim 1.
`
`iv.
`
`locking portion
`
`46.
`
`The outwardly radially extending surface of the protruding portion 13,
`
`which is immediately adjacent
`
`to radially-inward circumferential surface of
`
`protruding portion 13, correlates with the recited “locking portion”.
`
`If the user
`
`holds the container main unit 2 stationary and applies a sufficient force to that
`
`outwardly radially extending surface of the protruding portion 13 in a direction
`
`parallel to the package body’s axis of rotation (i.e., its longitudinal axis), then the
`
`NY 824545V.1
`
`- 20 -
`
`21
`
`
`
`inner cap 3 will move from the first (i.e., sealed) position to the second (i.e.,
`
`unsealed) position. See Ex. 1006 at ¶0017 (“[T]o refill the developing apparatus
`
`with the toner within the container main unit 2, when the cap portion 9 of the inner
`
`cap 3 is pulled from the inner cap securing member 19, the bellows portion 17
`
`elongates, so that the toner refilling opening 14 is pulled to the outside of the inner
`
`cap securing member 19.”).
`
`v.
`
`displacing force receiving portion/projecting portion
`
`47.
`
`The portion of the inner cap 3 that correlates with the “displacing
`
`force receiving portion” recited in claim 1 and the “projecting portion” recited in
`
`claim 29 of the ‘094 patent is highlighted in yellow in the below reproduced
`
`Figure 4 of Suzuki.
`
`Specifically,
`
`the recited displacing force receiving portion/projecting portion
`
`correlates with the flange portion of the cap portion 9 of the inner cap 3.
`
`NY 824545V.1
`
`- 21 -
`
`22
`
`
`
`48. Claims 1 and 29 of the ‘094 patent recite no function to be performed
`
`by the displacing force receiving portion/projecting portion other than “being
`
`displaceable with the supporting portion”.
`
`This displacing force receiving
`
`portion/projecting portion is necessarily displaceable with the supporting portion
`
`because the inner cap 3 is of one-piece construction (see Paragraphs 35-36;
`
`Ex. 1006 at Fig. 4).
`
`49. As shown by the annotated red lines added to the highlighted version
`
`of Figure 4 reproduced in Paragraph 47 above, the yellow highlighted flange
`
`portion of the cap portion 9 is located radially outermore from the rotational axis of
`
`the cylindrical container main unit 2 than the blue highlighted “engaging portion”
`
`of the protruding portion 13.
`
`50. As shown by the annotated red lines added to the highlighted version
`
`of Figure 4 reproduced in Paragraph 47 above, the radially outermost part of the
`
`container main unit 2 is more radially outward from the rotational axis than is the
`
`radially outermost part of the yellow highlighted flange portion of the cap portion
`
`9.
`
`51. As shown in the highlighted version of Figure 4 reproduced in
`
`Paragraph 47 above, the blue highlighted engaging portion is slightly closer to the
`
`container main unit 2 than the yellow highlighted flange portion of the cap portion
`
`9 and, consequently, does not expressly satisfy the displacing force receiving
`
`NY 824545V.1
`
`- 22 -
`
`23
`
`
`
`portion/projecting portion limitation recited in claims 1 and 29 of the ‘094 patent.
`
`However, in my opinion, for the reasons set forth below, this difference in the
`
`relative distances to the container body does not render the challenged claims
`
`patentable over Suzuki in view of Ikesue.
`
`V.
`
`IKESUE (Ex. 1007)
`
`52.
`
`I have read Ikesue and fully understand its subject matter. Set forth
`
`below, I present my opinions on what a person of ordinary skill would understand
`
`certain aspects of Ikesue to be teaching, and what Ikesue would suggest to a person
`
`of ordinary skill.
`
`53.
`
`Ikesue discloses a cartridge 10 for replenishing a two-ingredient
`
`developer to an image forming apparatus (such as a copier) comprising a first
`
`container 1 storing a developer, and a second container 2 storing toner and coaxial
`
`with the container 1. See Ex. 1007 at col. 1, ln. 8-12 & col. 4, ln. 32-37. Thus,
`
`Ikesue is from the same field of endeavor of the challenged claims of the
`
`‘094 patent
`
`-- “a toner
`
`supply container”.
`
`Furthermore,
`
`the ‘094 patent
`
`specification explains that a problem addressed is the resealing of the container
`
`body to avoid the problem of toner leakage. See Ex. 1001 at col. 17, ln. 50 -
`
`col. 18, ln. 24.
`
`Ikesue addresses this particular problem. See Ex. 1007 at col. 7,
`
`ln. 2-5 (“The chuck 16 pushes the lid 15 into the openings of the containers 1 and 2
`
`NY 824545V.1
`
`- 23 -
`
`24
`
`
`
`and then returns to its original position.
`
`In this condition, the cartridge waits for
`
`replacement.”). Thus, a person of ordinary skill in the art as of the February 19,
`
`2002 effective filing date of the ‘094 patent would have considered Ikesue to be
`
`highly relevant and analogous prior art to the challenged claims of the ‘094 patent.
`
`54.
`
`First, a toner supply container having a displacing force receiving
`
`portion/projecting portion provided on the supporting portion at a position closer to
`
`the container body than the engaging portion (as recited in claims 1 and 29 of the
`
`‘094 patent) would not would not perform differently than Suzuki’s prior art toner
`
`container 1 as depicted in Figure 4 of Suzuki. The intended function to be
`
`performed by Suzuki’s protruding portion 13 is to receive force(s) for moving the
`
`inner cap 3. The relative dimensions of Suzuki’s protruding portion 13 vis-a-vis
`
`the flange portion of the cap portion 9 still allows for the protruding portion 13 to
`
`engage with the inner cap opening/closing mechanism of the developing apparatus
`
`(i.e., such as a copier). See Ex. 1006 at ¶0011. Furthermore, because challenged
`
`claims 1 and 29 do not recite any engageability with a copier, much less an
`
`engageability dependent upon the relative dimensions of the engaging portion and
`
`the displacing force receiving portion/projecting portion vis-a-vis the container
`
`body, the claimed toner supply container and Suzuki’s toner container 1 would
`
`perform no differently, especially outside of a copier. That is, both the claimed
`
`NY 824545V.1
`
`- 24 -
`
`25
`
`
`
`toner supply container and Suzuki’s toner container 1 store toner for later
`
`discharge equally well.
`
`55.
`
`Second, in view of Ikesue, it would have been obvious to extend
`
`Suzuki’s protruding portion 13 beyond the flange portion of the cap part 9. As
`
`shown in Figures 2A and 2B of Ikesue, the “lid 15 closes both of the openings of
`
`the containers 1 and 2 and has a thumb piece 14” [Ex. 1007 at col. 5, ln. 29-31].
`
`“The lid 15 may be removed by hand or by an automatic chuck 16 shown in FIG.
`
`4B” [Ex. 1007 at col. 5, ln. 33 35].
`
`NY 824545V.1
`
`- 25 -
`
`26
`
`
`
`“The chuck 16 chucks the thumb piece 14 and then removes the lid 15 in the
`
`direction indicated by an arrow in FIG. 4B.” See col. 5, ln. 35-37.
`
`56.
`
`Suzuki’s cap portion 9 and Ikesue’s lid 15 have the same intended
`
`purpose (i.e., the sealing/unsealing of a toner supply container) and show only
`
`relatively minor geometric differences to achieve that purpose.
`
`Ikesue’s thumb
`
`piece 14 correlates with Suzuki’s protruding portion 13 in terms of structure and
`
`performed function (i.e., receiving a force for moving the cap/lid).
`
`57.
`
`Ikesue further explains that the structure of the lid 15 may be altered
`
`to reflect the operation of the cartridge 10 (which comprises container 1 for storing
`
`developer and container 2 for storing toner). See col. 6, ln. 22-27 (“When the
`
`developer and toner are sequentially supplied in this order, the lid 15 may be
`
`configured to protrude into each of the containers 1 and 2 to a particular depth. For
`
`example, the lid 15 may protrude deeper into the container 2 than into the container
`
`1.”). Figures 6 and 9 of Ikesue have been reproduced below with an annotated red
`
`line to show that the engaging portion (i.e., the portion of the thumb piece 14
`
`NY 824545V.1
`
`- 26 -
`
`27
`
`
`
`engaged by the chuck 16) is further from containers 1 and 2 than the outer flange
`
`of the lid 15.
`
`It was well within the level of ordinary skill to use existing molding techniques to
`
`form the thumb piece 14 extending beyond the outer flange of the lid 15 as
`
`depicted in Figures 6 and 9 of Ikesue.
`
`NY 824545V.1
`
`- 27 -
`
`28
`
`
`
`58. A person of ordinary skill in the art would have been motivated to
`
`extend the thumb piece 14 beyond the flange portion of lid 15 in order to provide a
`
`less obstructed access for the user’s finge
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