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. IPR2016-01361
`
`NY 821378V.1
`
`GPI EXHIBIT 1007
`GENERAL PLASTIC v. CANON
`IPR2016-01361
`
`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. IPR2016-01361
`
`NY 821378V.1
`
`GPI EXHIBIT 1007
`GENERAL PLASTIC v. CANON
`IPR2016-01361
`
`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.
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`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
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`included membership on standing research and development committees to
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`monitor progress of technology investments and formulating strategy assessments
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`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.
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`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,
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`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 Fourth Petition for inter partes review of U.S. Patent
`
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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 Fourth
`
`Petition, namely Yasuda U.S. Patent No. 5,481,344 (“Yasuda”, Ex. 1006). I have
`
`also reviewed the other technical references cited in the Fourth Petition, such as
`
`U.S. Patent No. 7,647,012 (Ex. 1003).
`
`10.
`
`I submit this declaration in support of the Fourth 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
`
`technical field, as of the time of the invention at issue.
`
`I understand that factors
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`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
`
`problems or needs might be similar, and relevant
`
`technical
`
`literature and
`
`publications.
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`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, 11, 29 and 38
`
`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.
`
`21. Because the preamble of each challenged independent claim is limited
`
`to just a toner supply container and omits any mention of an electrophotographic
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`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.
`
`The challenged independent claims 1 and 11 both recite “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 claims 1 and 11, would understand that claims 1
`
`and 11 do 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.
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`“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 11 recites “a displacing force receiving portion provided on
`
`each supporting portion at a position closer to the container body than the engaging
`
`portion provided at the free end of that supporting portion, the displacing force
`
`receiving portion being displaceable with the supporting portion on which it is
`
`provided 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
`
`provided at the free end of that supporting portion”.
`
`27. 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
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`container body than a radially outermost part of the engaging portion, and the
`
`projecting portion being displaceable with the supporting portion”.
`
`28. Claim 38 recites “a projecting portion provided on each supporting
`
`portion 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.”
`
`29. 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.
`
`30. 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
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`mean that the displacing force receiving portion or the projecting portion is capable
`
`of displacing with the supporting portion on which it is provided.
`
`31.
`
`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.
`
`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.
`
`YASUDA (Ex. 1008)
`
`32.
`
`I have read Yasuda and fully understand its subject matter. Set forth
`
`below, I present my opinions on what a person of ordinary skill in the art would
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`understand certain aspects of Yasuda to be teaching, and what Yasuda would
`
`suggest to a person of ordinary skill.
`
`33. Yasuda discloses a toner cartridge 100 for supplying toner to a
`
`developing apparatus such as a copier. See Ex. 1008 at col. 1, ln. 6-7 & col. 10,
`
`ln. 55 - col. 11, ln. 5. Thus, Yasuda is from the same field of endeavor of the
`
`challenged claims of the ‘820 patent -- “a toner supply container”. Furthermore,
`
`the ‘820 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. 37 - col. 18, ln. 12. Yasuda addresses this
`
`same problem. See Ex. 1008 at col. 2, ln. 66 - col. 3, ln. 3 (“Furthermore, when the
`
`used toner container
`
`is removed from the developing apparatus,
`
`the toner
`
`remaining in the toner container is prevented from spilling because the outlet is
`
`closed by the valve element.”). Thus, one of ordinary skill in the art as of the
`
`February 19, 2002 effective filing date of the ‘820 patent would have considered
`
`Yasuda to be highly relevant and analagous prior art
`
`to the claims of the
`
`‘820 patent.
`
`A.
`
`The Teachings Of Yasuda
`
`1.
`
`a container body configured to contain toner
`
`34. Yasuda discloses a toner cartridge 100 comprising a toner container
`
`102 and an auxiliary device for toner supply 101 which opens and closes the toner
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`container 102. See Ex. 1006 at col. 8, ln. 52-61. Figure 12 of Yasuda, which is
`
`reproduced below, has been annotated with a vertical red line depicting the
`
`longitudinal axis of the toner cartridge 100.
`
`35. As a simple matter of geometry, because the toner container 102 is
`
`cylindrical, the toner cartridge 100 may be rotated about the longitudinal axis of
`
`the toner cartridge 100 by the application of a rotational force to the toner
`
`container 102 and/or the auxiliary device for toner supply 101, acting about that
`
`longitudinal axis.
`
`36.
`
`Figure 11, which is reproduced below (and annotated with a vertical
`
`red line depicting the same longitudinal axis of the toner cartridge 100), illustrates
`
`that the auxiliary device for toner supply 101 comprises a cover 103 and a valve
`
`element 104.
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`See Ex. 1006 at col. 8, ln. 62-64.
`
`37.
`
`The cylindrical toner container 102 has an opening 102a at an axial
`
`end thereof, which is surrounded by a ring-shaped connector 102b. See Col. 8,
`
`ln. 56-59.
`
`38.
`
`The inner circumference of one end of the cover 103 is detachably
`
`fitted into the outer circumference of the ring-shaped connector 102b, such as by
`
`screws. See col. 9, ln. 4-7. The toner container 102 - cover 103 combination is
`
`configured to contain toner 117. See Col. 11, ln. 3-5 & Figs. 10A-C, 11. The
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`combination of the toner container 102 and cover 103 correlates with the
`
`“container body” recited in the challenged claims.
`
`See Col. 10,
`
`ln. 58-60
`
`(“the cover 103 is fitted into the connector 102b of the toner container 102 to
`
`constitute a toner cartridge 100.”).
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`39. As a simple matter of geometry, because the toner container 102 is
`
`cylindrical, the toner container 102 - cover 103 combination may be rotated about
`
`the longitudinal axis of the toner cartridge 100 by the application of a rotational
`
`force to the toner container 102 and/or the auxiliary device for toner supply 101,
`
`acting about that longitudinal axis.
`
`40.
`
`The cover 103 has a cylindrical guide 106, the inner circumference of
`
`which forms the outlet 107. See col. 9, ln. 7-12. The outlet 107 communicates
`
`with the inside of the toner container 102 via the opening 102a. See col. 8,
`
`ln. 64-66. The outlet 107 correlates with the “opening” recited in the challenged
`
`claims.
`
`2.
`
`Sealing Member
`
`41.
`
`The outlet 107 can be opened and closed by the valve element 104.
`
`See Figs. 10A-C. The valve element 104 correlates with the “sealing member”
`
`recited in the challenged claims.
`
`42. Yasuda states that “[t]he valve element 104, made of an elastic
`
`synthetic resin, has a dish-shaped lid 109 and a cylindrical chute 110 extending
`
`from the end face of the lid 109 as shown in FIGS. 11, 13.” Ex. 1006 at col. 9,
`
`ln. 14-17. Figure 13 of Yasuda, which is reproduced below, is a perspective view
`
`of the valve element 104 and Figure 11, which is partially reproduced below, is a
`
`cross-sectional view of the valve element 104..
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`43. A person of ordinary skill would understand Figure 13 to be depicting
`
`that the valve element 104 is of one-piece construction. This understanding is
`
`confirmed by the hatching shown throughout the cross-sectional view of the valve
`
`element 104 in Figure 11.
`
`44.
`
`The Yasuda patent specification discloses: “The valve element 104,
`
`made of an elastic synthetic resin, has a disk-shaped lid 109 and a cylindrical chute
`
`110 extending from the end face of the lid 109 as shown in FIGS. 11 and 13.”
`
`Col. 9, ln. 14-17 (emphasis added). Because the starting material for making the
`
`valve element 104 is said to be in the form of a resin, a person of ordinary skill
`
`would understand that the valve element 104 must necessarily be made by a
`
`molding process. Because the valve element 104 is of one-piece construction, a
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`person of ordinary skill would further understand that the valve element 104 is
`
`integrally molded.
`
`45.
`
`The Yasuda patent specification explains that the valve member 104 is
`
`movable in an axial direction of the toner container 102 - cover 103 combination.
`
`More particularly, the Yasuda patent specification discloses: “The lid 109 has a
`
`diameter larger than that of the small-diameter portion 106a of the above-described
`
`guide 106, and the chute 110 is inserted in the guide 106 so that it is movable in the
`
`axial direction. As the chute 110 moves reciprocally in the axial direction on the
`
`guide 106, the end face of the lid 109 comes in contact with, and breaks contact
`
`with, the end face of the guide 106, i.e., the periphery of the outlet 107.” Col. 9,
`
`ln. 17-23.
`
`46.
`
`The Yasuda patent specification discloses that the valve member 104
`
`closes the outlet 107: “As the end face of the lid 109 contacts the end face of the
`
`guide 106, the outlet 107 is closed.... A number of toner run-off ports 110b
`
`through the chute 110 are formed....
`
`The radial gap between the outer
`
`circumference of the chute 110 and the inner circumference of the guide 106 is
`
`sufficiently narrow to seal the toner 117 over the axial distance between the lid 109
`
`and the toner run-off ports 110b, to prevent leakage of the toner 117 from the gap
`
`when the outlet 107 is closed with the valve element 104.” See col. 9, ln. 23-34.
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`47.
`
`Figure 13 of Yasuda, which is reproduced below, is a perspective
`
`view of the valve element 104.
`
`48.
`
`“In the chute 110 of the valve element 104, the end opposite to the lid
`
`109 forms a large-diameter portion 110a, and a circumferential groove 110a’ is
`
`formed around the outer circumference of the large-diameter portion 110a.”
`
`Col. 9, ln. 35-38.
`
`49.
`
`“A pair of ring-shaped protrusions 106b and 106c are formed at a
`
`distance in the axial direction on the inner circumference of the guide 106. Each of
`
`the ring-shaped protrusions 106b and 106c can be fitted into the circumferential
`
`groove 110a’, and this fitting restricts the axial movement of the valve element 104
`
`on the guide 106.” Col. 9, ln. 38-44.
`
`50.
`
`The Yasuda patent specification explains that
`
`there is a snap-fit
`
`connection between the circumferential groove 110a’ in the chute 110 and either of
`
`the ring-shaped protrusions 106b and 106c. More particularly, the Yasuda patent
`
`specification explains: “When a given axial force is exerted on the valve element
`
`NY 821378V.1
`
`- 18 -
`
`19
`
`
`
`104 whose axial movement is restricted by the fitting, the valve element 104 and
`
`the guide 106 are elastically deformed, which makes it possible to extract each of
`
`the ring-shaped protrusions 106b and 106c from the circumferential groove 110a’.”
`
`Col. 9, ln. 44-49; see also Figs. 10A-C. A person of ordinary skill, therefore,
`
`would have recognized that the valve element 104, which is made of an elastic
`
`synthetic resin,
`
`is elastically displaceable in an inward direction toward the
`
`longitudinal axis (i.e., rotational axis) of the toner container 102 - cover 103
`
`combination in response to the application of a radially inwardly directed force and
`
`the portion of the valve element 104 that was displaced inwardly would elastically
`
`restore in an outward direction away from the longitudinal axis (i.e., rotational
`
`axis) of the toner container 102 - cover 103 combination upon the removal of that
`
`radially inwardly directed force.
`
`3.
`
`Valve Element 104 Seals and Unseals the Outlet 107
`
`51.
`
`Figures 10A-C of Yasuda illustrate the relative movement of the valve
`
`element 104 away from the toner container 102 - cover 103 combination to unseal
`
`the outlet 107, within a developing apparatus.
`
`52.
`
`Figure 10A, which is reproduced below, depicts the toner cartridge
`
`100 containing toner 117, with the valve element 104 in the sealed position, as it is
`
`being inserted into the developing apparatus’ toner supply port 111b.
`
`NY 821378V.1
`
`- 19 -
`
`20
`
`
`
`See col. 9, ln. 62-67 & col. 10, ln. 55-64.
`
`53.
`
`The Yasuda patent
`
`specification describes
`
`the orientation of
`
`circumferential groove 110a’ in the chute 110 and the protrusion 106b on the guide
`
`106 when the outlet 107 is sealed, as follows: “While one ring-shaped protrusion
`
`106b is fitted into the circumferential groove 100a’, the end face of the lid 109
`
`comes in contact with the end face of the guide 106 forming the periphery of the
`
`outlet 107 to close the outlet 107, i.e., the valve element 104 is retained at the
`
`closure position of the outlet 107.” Col. 9, ln. 49-54.
`
`54.
`
`This “closure position of the outlet 107” correlates with the “first
`
`position” recited in the challenged claims.
`
`NY 821378V.1
`
`- 20 -
`
`21
`
`
`
`55. As depicted in Figure 10B, which is reproduced below, the toner
`
`cartridge 100 is further inserted into the toner supply port 111b so that claws 113a
`
`and 114a engage with the lid 109 of the valve element 104.
`
`See col. 10, ln. 64-66. The engagement of claws 113a and 114a with the lid 109
`
`restrains the extraction of the valve element 104 from the port 111b. See col. 10,
`
`ln. 64 - col. 11, ln. 1.
`
`56.
`
`“Then, the toner container 102 is pulled up to shift the valve element
`
`104 to the opening position, as shown in FIG. 10C”, which is reproduced below
`
`[col. 11, ln. 1-3; see also col. 10, ln. 50-54].
`
`NY 821378V.1
`
`- 21 -
`
`22
`
`
`
`57.
`
`“As a result, the toner 117 in the toner container 102 is discharged
`
`from the toner run-off ports 110b into the toner supply port 111b.” See Col. 11,
`
`ln. 3-5.
`
`58.
`
`The Yasuda patent specification describes the orientation of the
`
`circumferential groove 110a in the chute 110 and the protrusion 106c on the guide
`
`106 when the outlet 107 is unsealed, as follows: “When the other ring-shaped
`
`protrusion 106c is fitted into the circumferential groove 110a’, the end face of the
`
`lid 109 breaks contact with the end face of the guide 106, and the toner run-off
`
`ports 110b are shifted to the outside of the guide 106 for communication of the
`
`inside and outside of the toner container 102, i.e., the valve element 104 is retained
`
`at the opening position.” Col. 9, ln. 55-61.
`
`59.
`
`This “opening position” correlates with the “second position” recited
`
`in the challenged claims.
`
`NY 821378V.1
`
`- 22 -
`
`23
`
`
`
`4.
`
`Sealing Portion
`
`60.
`
`The portion of the valve element 104 that correlates with the “sealing
`
`portion” recited in the challenged claims has been highlighted in red in the below
`
`reproduced Figure 13 of Yasuda and in the below reproduced portion of Figure 11.
`
`61.
`
`The recited “sealing portion” correlates with the inner circumferential
`
`surface of cylindrical chute 110 (including the inner surface of
`
`lid 109
`
`circumscribed by that inner circumferential surface of chute 110) and the outer
`
`circumferential surface of the cylindrical chute 110 from the end opposite the lid
`
`109 up to and including the end face of the lid 109.
`
`62.
`
`This “sealing portion” is at a side of the valve member 104 adjacent to
`
`the toner container 102 - cover 103 combination. See Figs. 10A-C. This “sealing
`
`portion” seals the outlet 107 when the valve element 104 is in the “first position”
`
`depicted in Figures 10A and 10B. See col. 9, ln. 49-54.
`
`NY 821378V.1
`
`- 23 -
`
`24
`
`
`
`63.
`
`The outlet 107 member becomes unsealed when the toner container
`
`102 - cover 103 combination is moved away from the valve element 104 into the
`
`“second position” depicted in Figure 10c. See col. 10, ln. 50-54 & col. 10, ln. 64 -
`
`col. 11, ln. 5.
`
`5.
`
`Coupling Portion
`
`64.
`
`The portion of the valve element 104 that correlates with the
`
`“coupling portion” recited in the challenged claims has been highlighted in green
`
`in the below reproduced Figure 13 of Yasuda.
`
`65.
`
`This “coupling portion” is the outer circumferential surface of the
`
`chute 110 from (and including) the circumferential groove 110a’ to the end face of
`
`the lid 109, as well as the lid 109.
`
`66.
`
`This “coupling portion” is provided at a side remote from the toner
`
`container 102 - cover 103 combination. See Figs. 10A-C.
`
`NY 821378V.1
`
`- 24 -
`
`25
`
`
`
`67. Via
`
`the
`
`“rotational
`
`force
`
`receiving portion”
`
`(see
`
`infra
`
`at
`
`Paragraphs 74-76), this “coupling portion” is configured and positioned to receive
`
`a rotational drive force for rotating the valve element 104 and the toner cartridge
`
`100 about its longitudinal axis.
`
`i.
`
`supporting portion
`
`68.
`
`The portion of this “coupling portion” that correlates with the
`
`“supporting portion” recited in challenged claims 1 and 29 has been highlighted in
`
`purple in the below reproduced Figure 13 of Yasuda.
`
`Specifically,
`
`the
`
`recited “supporting portion”
`
`correlates with the outer
`
`circumferential surface of the cylindrical chute 110 from the large-diameter portion
`
`110a below the circumferential groove 110a’ up to and including the end face of
`
`the lid 109.
`
`NY 821378V.1
`
`- 25 -
`
`26
`
`
`
`69.
`
`Figure 13 of Yasuda is a perspective 180º view of the cylindrical
`
`valve element 104 that shows two toner run-off ports 110b. A person of ordinary
`
`skill would understand there to be two more diametrically opposed toner run-off
`
`ports 110b on the other side of the cylindrical valve element. See Figs. 10A-C.
`
`70.
`
`For independent claims 11 and 38, a supporting portion correlates
`
`with that portion of the outer circumferential wall of chute 110 highlighted in
`
`purple in the below reproduced Figure 13.
`
`There are four such supporting portions, each of which has a diametrically
`
`opposed counterpart.
`
`71. Yasuda explains that the valve element 104 is “made of an elastic
`
`synthetic resin” (see col. 9, ln. 14-16) and elastically displaceable inwardly and
`
`elastically restorable outwardly (see Ex. 1006 at col. 9, ln. 44-49; see also supra at
`
`Paragraph 50).
`
`NY 821378V.1
`
`- 26 -
`
`27
`
`
`
`ii.
`
`engaging portion
`
`72.
`
`The portion of this “coupling portion” that correlates with the
`
`“engaging portion” recited in the challenged claims has been highlighted in blue in
`
`the below reproduced Figure 13 of Yasuda.
`
`73.
`
`This “engaging portion” is at the distal end of the portion of the valve
`
`element 104 that correlates with the supporting portion and, as such,
`
`is
`
`displaceable with the supporting portion because the valve element 104 is of
`
`one-piece construction.
`
`iii.
`
`rotational force receiving portion
`
`74. When Yasuda’s toner cartridge 100 is outside of, and disconnected
`
`from, the developing apparatus, a user can abut his fingers against the outer
`
`circumferential wall of the chute 110 between the ports 110b and the lid 109 when
`
`NY 821378V.1
`
`- 27 -
`
`28
`
`
`
`the valve member 104 is in the “opening position”, and apply a rotational drive
`
`force for rotating the toner cartridge 100.
`
`75. Given the disclosed snug fit between the outer circumferential wall of
`
`chute 110 and the inner circumferential wall of guide 106 (see col. 9, ln. 29-34), a
`
`person of ordinary skill would understand that such an application of a sufficient
`
`rotational drive force to the outer circumferential wall of the chute 110 between
`
`ports 110b and the lid would rotate the toner cartridge 100.
`
`76.
`
`This portion of the chute 110 correlates with the “rotational force
`
`receiving portion” r
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