Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 9
`Entered: March 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.,
`Petitioner
`
`v.
`
`CANON INC.,
`Patent Owner
`____________
`
`Case IPR2015-01954
`Patent 8,909,094 B2
`____________
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`BUI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 9
`Entered: March 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL PLASTIC INDUSTRIAL CO., LTD.,
`Petitioner
`
`v.
`
`CANON INC.,
`Patent Owner
`____________
`
`Case IPR2015-01954
`Patent 8,909,094 B2
`____________
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`BUI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`IPR2015-01954
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`I. INTRODUCTION
`
`A. Background
`On September 25, 2015, General Plastic Industrial Co., Ltd.
`(“Petitioner”) filed a Petition pursuant to 35 U.S.C. § 311 and 37 C.F.R.
`§ 42.1 to institute inter partes review of claims 1, 7–9, 11, 16–18, 29 and 38
`of U.S. Patent No. 8,909,094 B2 (Ex. 1001, “the ’094 patent”). Paper 2
`(“Pet.”). Canon Inc. (“Patent Owner”) filed a Preliminary Response on
`December 22, 2015. Paper 10 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`Upon consideration of the arguments and evidence presented by
`Petitioner and Patent Owner, we are not persuaded that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing the
`unpatentability of any one of claims 1, 7–9, 11, 16–18, 29, and 38 of the
`’094 patent. For reasons discussed below, we deny the Petition as to all
`challenges.
`B. Related Matters
`Petitioner indicates that the ’094 patent was the subject of an ITC
`Investigation: In the Matter of Certain Toner Supply Containers and
`Components Thereof, Inv. No. 337-TA-960 (U.S. Int’l Trade Comm’n).
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`C. The ’094 Patent
`The ’094 patent describes a toner supply container for use in an
`electro-photographic image forming apparatus, such as a copier or a printer.
`Ex. 1001, 1:26–36, claims 1, 7–9, 11, 16–18, 29, and 38.
`
`Figure 3 of the ’094 patent illustrates such a toner supply container
`(toner bottle) relative to a copier, as reproduced below with additional
`markings, inserted in red, for illustration.
`
`
`Figure 3 depicts toner supply container (toner bottle) 1 relative to
`copier 100.
`
`As shown in Figure 3, toner supply container (toner bottle) 1 is
`installed in copier 100 by inserting the same in the direction indicated by
`arrow (a). Ex. 1001, Fig. 3.
`Figure 8 provides a perspective view of toner bottle 1, as reproduced
`below with additional markings, in red, for illustration.
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`Figure 8 depicts a perspective view of toner bottle 1 including sealing
`member 2.
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`As shown in Figure 8, toner bottle 1 is provided with two main
`components: (1) rotatable container body 1 provided with an opening 1a at
`one end through which toner may flow, and (2) sealing member 2. Id. at
`9:37–39. Opening 1a is plugged with sealing member 2 for sealing opening
`1a of toner bottle 1. Opening 1a is unsealed and resealed by the sliding
`motion of sealing member 2 relative to toner bottle 1 in the longitudinal
`direction (arrow a b) of toner bottle 1. Id. at 9:41–47.
`Opening 1a is sealed, via sealing member 2, when toner bottle 1 is
`outside copier 1. Id. When toner bottle 1 is installed in copier 100, shown
`in Figure 1, two things happen: (1) opening 1a is unsealed; and (2) when
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`copier 100 is being used, toner bottle 1 is rotated. Id. at 7:24–8:54. The
`rotation of toner bottle 1 causes the toner to be fed out of opening 1a and
`into a toner hopper (not shown) within copier 100 when container body 1 is
`rotated. Id. at 9:64–10:37, Fig. 8.
`According to the ’094 patent, sealing member 2 performs the
`following functions: (1) sealing opening 1a of toner bottle 1, (2) receiving
`the rotational driving force from a main assembly of copier 100, and (3)
`transmitting the rotational driving force to toner bottle 1. Id. at 8:37–41.
`The challenged claims are directed to the embodiment of sealing
`member 2, shown in Figures 23A–23B, which are reproduced below with
`additional markings, in red.
`
` Fig. 23A Fig. 23B
`Figure 23A shows a side view of sealing member 2, while Figure 23B
`shows a front view of sealing member 2.
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`As shown in Figures 23A–23B, sealing member 2 has two main
`components: (1) sealing portion 2b, and (2) coupling portion 2c. Id. at
`11:21–25. Sealing portion 2b fits snugly within opening 1a in order to seal
`the toner within toner bottle 1. Id. at 11:28–30. Coupling portion 2c is
`engageable with a main assembly of copier 100 in order to (1) move sealing
`member 2 and toner bottle 1 relatively away from each other to unseal
`opening 1a of toner bottle 1, and (2) receive rotational drive force from
`copier 100, via hollow cylinder driving portion 20 driven by a motor (not
`shown) and provided in the main assembly of copier 100. Id. at 11:31–
`12:18.
`Coupling portion 2c includes three sub-components: (1) supporting
`portions 2f, (2) engaging portions 3, and (3) releasing force receiving
`portions 4, as shown in Figures 23A–23B. These sub-components are
`integrally molded (id. at 13:49–52, 14:26–28) and are constructed as
`follows:
`Supporting portions 2f, which are not labeled but are shown in
`(1)
`Figure 13, are elastically displaceable in an inward direction and elastically
`restorable in an outward direction. Id. at 11:63–65, 12:57–13:7, 13:40–64,
`18:28–32, claims 1, 11, 29, 38, Fig. 13.
`(2) Engaging portions (a.k.a., projections) 3 are provided at the free
`ends of supporting portions 2f and displace inwardly and outwardly along
`supporting portions 2f. Each engaging portion 3 also has two sub-portions:
`(2a) rotational force receiving portion 3a for receiving the rotational driving
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`force from the main assembly of copier 100; and (2b) locking portion 3b for
`snap-fit type locking of sealing member 2 into the main assembly of copier
`100, as shown in Figures 12 and 13. Id. at 11:63–65, claims 1, 11, 29, 38,
`Figs. 12–13.
`(3) Releasing (a.k.a. “displacing”) force receiving portions 4 lie
`between engaging portions 3 and sealing portion 2, i.e., they are closer to
`container body 1 than are engaging portions 3. Each of displacing force
`receiving portions 4 extends radially outwardly to a greater extent than the
`radially outermost part of each engaging portion 3, as shown in Figure 13.
`Id. at 18:33–36, claims 1, 11, 29, 38, Fig. 13.
`Figures 12 and 13 are reproduced below with additional markings, in
`
`red.
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` Fig. 12
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` Fig. 13
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`Figure 12 shows a side view of sealing member 2, while Figure 13
`shows engaging portions 3 of sealing member 2 elastically deformed to
`engage with a main assembly of copier 100.
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`As shown in Figures 12 and 13, engaging portions 3 of sealing
`member 2 perform three different functions: (1) a coupling function for
`receiving the rotational driving force from the main assembly of copier 100;
`(2) a transmitting function for transmitting the rotation to toner bottle 1; and
`(3) a locking function for permitting relative sliding motion between sealing
`member 2 and the main body of toner bottle 1 so as to automatically open
`and close opening 1a. Id. at 12:11–18.
`Coupling portion 2c of sealing member 2 is to be engaged with a main
`assembly of copier 100 referred to as “hollow cylindrical driving portion
`20.” Id. at 7:31–34, 9:58–60. An example of such hollow cylindrical
`driving portion 20 provided in the main assembly of copier 100 is depicted
`in the left-hand portion of Figure 14, which is reproduced below with
`additional markings, in red.
`
`Fig. 14
`Figure 14 shows how sealing member 2 of toner bottle 1 is driven to rotate,
`via hollow cylindrical driving portion 20 provided in the main assembly of
`copier 100.
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`As shown in Figure 14, hollow cylindrical driving portion 20 (part of
`copier 100, and not part of toner bottle 1) contains locking slot 20h that
`extends in a circumferential direction. Id. at 14:29–32. Slot 20h is
`interrupted by a pair of ribs 20a, which are spaced approximately 180
`degrees apart. A motor (not shown) within copier 100 rotates driving
`portion 20. Id. at 7:35–38. Driving portion 20 (part of copier 100), in turn,
`rotates toner bottle 1 through the abutment of one or both ribs 20a, via one
`or more engaging portions 3 of sealing member 2. Id. at 14:41–45.
`When toner bottle 1 is installed in copier 100, supporting portions 2f
`of sealing member 2 first elastically displace inwardly so that coupling
`portion 2c of sealing member 2 can enter driving portion 20 (part of the
`copier 100), and then elastically restore outwardly (that is, back to their
`original position) so that engaging portions 3 can engage with slot 20h
`through the abutment of one or both ribs 20a in driving portion 20 provided
`in the main assembly of copier 100. Id. at 12:57–13:7, 18:28–32.
`To remove toner bottle 1 from copier 100, engaging portions 3 of
`sealing member 2 are disengaged from slot 20h in driving portion 20 (part of
`copier 100) and sealing portion 2b of sealing member 2 is resealed within
`opening 1a of toner bottle 1. Id. at 18:64–19:15, Figs. 25B–25C.
`
`D. Illustrative Claim
`Of the challenged claims, claims 1, 11, 29, and 38 are independent.
`
`Claims 7–9 depend, directly or indirectly, from claim 1. Claims 16–18
`depend, directly or indirectly, from claim 11. Challenged claim 1 is
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`illustrative and is reproduced below:
`1.
`A toner supply container comprising:
`i) a container body configured to contain toner and rotatable
`about an axis thereof, the container body including a cylindrical
`portion and an opening provided at one axial end portion thereof
`and configured to permit discharge of the toner contained in the
`container body; and
`ii) a sealing member provided at the one axial end portion of the
`container body, the sealing member being movable relative to the
`container body in an axial direction of the container body, the
`sealing member including:
`
`ii-i) a sealing portion provided at a side adjacent the
`container body and configured to seal the opening when the
`sealing member and the container body are in a first position
`relative to one another, the opening becoming unsealed by
`relative movement of the sealing member and the container body
`away from one another from the first position to a second
`position relative to one another; and
`
`ii-ii) a coupling portion provided at a side remote from the
`container body and configured and positioned to receive a
`rotational drive force for rotating the sealing member and the
`container body about the rotation axis of the container body, the
`coupling portion including:
`
`
`ii-ii-i) a supporting portion provided on the sealing
`portion, the supporting portion being elastically displaceable in
`an inward direction toward the rotation axis of the container body
`and elastically restorable in an outward direction away from the
`rotation axis of the container body;
`
`
`ii-ii-ii) an engaging portion provided at a free end
`of the supporting portion and being displaceable with the
`supporting portion, the engaging portion including:
`
`
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`ii-ii-ii-i) 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
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`and the container body; and
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`ii-ii-ii-ii) a locking portion capable of being
`abutted in a direction parallel to the rotation axis of the container
`body to enable the relative movement of the sealing member and
`the container body from the first position, in which the opening
`is sealed, to the second position, in which the opening is
`unsealed; and
`
`
`ii-ii-iii) 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,
`
`wherein the supporting portion, the engaging portion, and
`the displacing force receiving portion are integrally molded.
`
`Ex. 1001, 24:15–25:5.
`
`Claim 11 is substantially identical to claim 1, except that “at least two
`supporting portions provided on the sealing member” are recited in claim 11
`instead of “a supporting portion provided on the sealing member” recited in
`claim 1. Ex. 1001, 25:61–67. Similarly, claims 29 and 38 are substantially
`identical to claim 1, except that “a projecting portion” is recited in those
`claims instead of “a displacing force receiving portion” recited in claim 1.
`Ex. 1001, 28:36–44, 29:46–55. Claim 38 also recites “at least two
`supporting portions provided on the sealing member” instead of “a
`supporting portion provided on the sealing member” recited in claim 1. Ex.
`1001, 29:36–42.
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`E. Evidence Relied Upon
`Petitioner relies on the following prior art reference:
`Reference
`Date
`
`Exhibit
`
`Matsuoka
`
`U.S. Patent No. 5,903,806
`
`Petitioner further relies on the testimony of Dr. Brian Springett.
`Ex. 1007.
`
`May 11, 1999 Ex. 1006
`
`F. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`Challenged Claims
`
`Basis
`
`1, 8, 9, 11, 17, 18, 28, and 38
`
`§ 102(b)
`
`References
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`Matsuoka
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`1, 7–9, 11, 16–18, 29, and 38
`
`§ 103(a)
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`Matsuoka
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`also In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1281–1282 (Fed. Cir.
`2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`890 (mem.) (2016). Even under the rule of broadest reasonable
`interpretation, claim terms are given their ordinary and customary meaning,
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`as would be understood by one of ordinary skill in the art in the context of
`the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007).
`Petitioner and Patent Owner have proposed constructions for several
`claim terms. See Pet. 17–22; Prelim. Resp. 19–31. At this stage of the
`proceeding, neither party has identified a term for construction that is
`dispositive on any of the challenges. For the purposes of this Decision, and
`on this record, we determine that no claim term needs express construction
`and claim terms proposed by Petitioner will be given their ordinary and
`customary meaning. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms which are in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy).
`B. Legal Standard for 35 U.S.C. §§ 102(b) & 103(a)
`A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described in a single prior
`art reference. Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
`(Fed. Cir. 1987).
`Obviousness is determined on the basis of underlying factual
`inquiries, including: (1) the scope and content of the prior art; (2) differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`skill in the art; and (4) secondary considerations of nonobviousness.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A patent claim is
`unpatentable under 35 U.S.C. § 103 if the differences between the claimed
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`subject matter and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). However, a conclusion
`of obviousness “cannot be sustained with mere conclusory statements;
`instead, there must be some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” In re Kahn,
`441 F.3d 977, 988 (Fed. Cir. 2006).
`For this decision, we determine that no express finding on the level of
`ordinary skill in the art is necessary, and that the level of ordinary skill in the
`art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`C. Alleged Anticipation of Claims 1, 8, 9, 11, 17, 18, 29, and 38 based
`on Matsuoka
`Petitioner contends that claims 1, 8, 9, 11, 17, 18, 29, and 38 are
`anticipated by Matsuoka under 35 U.S.C. § 102(b). Pet. 23–56. To support
`its contention, Petitioner provides a claim chart and detailed explanations as
`to how Matsuoka allegedly meets each claim limitation. Id. at 34–56.
`Petitioner also relies upon the Springett Declaration. Ex. 1007.
`We have considered Petitioner’s analysis and supporting evidence, as
`well as Patent Owner’s arguments presented in the Preliminary Response
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`(Prelim. Resp. 33–41), and are not persuaded that Petitioner has
`demonstrated a reasonable likelihood that it would prevail on this challenge.
`(1) Matsuoka: Exhibit 1006
`Matsuoka discloses developing agent (toner) replenishing apparatus
`
`40 (part of copier) and toner cartridge (toner supply container) 30, as shown
`in Figures 3, 4(a), 4(d), 5(a), 6, 9(a)–7(b), 10(b) and 11. Ex. 1006, Abstract.
`
`Matsuoka’s Figure 3 shows a copier’s developing agent replenishing
`apparatus 40 including multiple toner cartridges 30, as reproduced below
`with additional markings, in red, for illustration.
`
`
`Figure 3 of Matsuoka depicts copier’s developing agent replenishing
`apparatus 40 including multiple toner cartridges 30.
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`As shown in Figure 3, multiple toner cartridges 30 (Y, M, C and K)
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`are inserted into a copier’s developing agent replenishing apparatus 40, via
`receiving ports 42. Ex. 1006, 7:1–14.
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`Matsuoka’s Figure 4(d) shows each toner cartridge 30, as reproduced
`below with additional markings, in red.
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`Matsuoka’s Figure 4(d) depicts each toner cartridge 30 usable in copier’s
`developing agent replenishing apparatus 40.
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`As shown in Figure 4(d), each toner cartridge 30 includes two main
`components: (1) container main body 31 provided with opening 312, and (2)
`fixed cover 32 “which is fixed solidly with opening 312 of the container
`main body 31” and includes opening/closing cover 33 “which is engaged
`inside the fixed cover 32” in the form of expandable/compressible bellows.
`Id. at 7:22–30.
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`Matsuoka’s Figure 6 shows toner cartridge 30 inserted into the
`copier’s developing agent replenishing apparatus 40, via receiving port 42,
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`and rotated by rotary power transmitting member 44 within the copier’s
`developing agent replenishing apparatus 40, as reproduced below with
`additional markings, in red.
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`Figure 6 of Matsuoka depicts toner cartridge 30 inserted in copier’s
`developing agent replenishing apparatus 40 and its fixed cover 32
`(highlighted in yellow) engaged with rotary power transmitting member 44
`(highlighted in red) within developing agent replenishing apparatus 40.
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`
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`As shown in Figure 6, when toner cartridge 30 is inserted into the
`copier’s developing agent replenishing apparatus 40, bellows of
`opening/closing cover 33 and opening/closing cover 45 are compressed,
`creating replenishment opening 321 for toner to be dispensed. Toner
`cartridge 30 is rotated by rotary power transmitting member 44 within
`developing agent replenishing apparatus 40 to dispense toner through
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`opening 321. Id. at 8:5–7, 33–37; see also id. at 8:45–50 (explaining how
`portions within the rotary power transmitting member 44 also “engage on a
`detachable basis” with a portion within fixed cover 32 of toner cartridge 30).
`(2) Analysis of Anticipation
`Each of independent claims 1, 11, 29, and 38 recites a “toner supply
`
`container” comprising two main components: (i) a container body, and (ii) a
`sealing member provided at an axial end of the container body with a
`specific configuration, shown in Figs. 23A–23B of the ’094 patent. Ex.
`1001, 24:15–24. That “sealing member” includes: (ii-i) “a sealing portion,”
`and (ii-ii) “a coupling portion” which, in turn, includes: (ii-ii-i) “a supporting
`portion,” (ii-ii-ii) “an engaging portion,” and (ii-ii-iiii) “a displacing force
`receiving portion” with several corresponding functions. Ex. 1001, 24:24–
`25:5.
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`Petitioner contends that the “sealing member” recited in the
`challenged claims as part of the “toner supply container” is met by what
`Petitioner refers to as “Matsuoka’s integrally combined fixed cover 32 and
`rotary power transmitting member 44.” Pet. 23–27 (citing Matsuoka’s Figs.
`6, 7(a)–7(b)). Matsuoka’s fixed cover 32 is a part of Matsuoka’s toner
`cartridge 30, and Matsuoka’s rotary power transmitting member 44 is a fixed
`part of Matsuoka’s copier’s developing agent replenishing apparatus 40.
`Petitioner argues that when Matsuoka’s toner cartridge 30 is inserted into the
`copier’s developing agent replenishing apparatus 40 with rotary power
`transmitting member 44 engaged with fixed cover 32 of Matsuoka’s toner
`cartridge 30, “Matsuoka’s integrally combined fixed cover 32 and rotary
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`power transmitting member 44” can be considered as a part of Matsuoka’s
`toner cartridge 30. Pet. 25, 27, 34, 40, 47, 51.
`
`Patent Owner responds that: (1) Matsuoka’s toner cartridge 30 does
`not include rotary power transmitting member 44; and (2) because rotary
`power transmitting member 44 is a fixed part of Matsuoka’s copier’s
`developing agent replenishing apparatus 40, Matsuoka’s rotary power
`transmitting member 44 cannot be integrally combined with fixed cover 32
`and cannot be considered as a part of Matsuoka’s toner cartridge 30. Prelim.
`Resp. 33–36 (citing Ex. 1005, Fig. 6, 7:53–8:7).
`
`We agree with Patent Owner. Matsuoka’s toner cartridge 30, shown
`in Figure 4(a), contains only two main components: (1) container main body
`31 provided with opening 312, and (2) fixed cover 32 including
`opening/closing cover 33 “which is engaged inside the fixed cover 32” in the
`form of expandable/compressible bellows. Ex. 1006, 7:22–30, Fig. 4(d). As
`recognized by Patent Owner, Matsuoka’s toner cartridge 30 does not include
`rotary power transmitting member 44. Prelim. Resp. 34 (citing Ex. 1005,
`Fig. 6, 7:53–8:7).
`
`Fixed cover 32 and rotary power transmitting member 44, as shown in
`Figure 4(d) and Figure 6 of Matsuoka, are separate, distinct components
`from two different apparatuses, i.e., Matsuoka’s toner cartridge 30 and
`Matsuoka’s copier’s developing agent replenishing apparatus 40. Fixed
`cover 32 and rotary power transmitting member 44 are merely engageable
`“on a detachable basis” only when Matsuoka’s toner cartridge 30 is inserted
`into a copier’s developing agent replenishing apparatus 40. Id. at 35 (citing
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`Ex. 1006, 7:38–56, 8:5–7, 33–37, 45–50). Even when engaged with toner
`cartridge 30, rotary power transmitting member 44 remains a part of
`Matsuoka’s copier’s developing agent replenishing apparatus 40, and does
`not become a part of Matsuoka’s toner cartridge 30. Id. at 36.
`On this record, we are not sufficiently persuaded that Matsuoka’s
`“integrally combined fixed cover 32 and rotary power transmitting member
`44” can be said to meet the “sealing member” recited in the challenged
`claims as a part of the “toner supply container.”
`Even if Matsuoka’s alleged “integrally combined fixed cover 32 and
`rotary power transmitting member 44” can be said to meet the “sealing
`member” limitation of the challenged claims, the challenged claims also
`require the “sealing member” to include:
`“a sealing portion provided at a side adjacent the container body
`and configured to seal the opening when the sealing member and
`the container body are in a first position relative to one another,
`the opening becoming unsealed by relative movement of the
`sealing member and the container body away from one another
`from the first position to a second position relative to one
`another.”
`
`Ex. 1001 at 24:25–32, 25:47–54, 28:15–22, 29:24–31 (emphasis added).
`
`Petitioner argues the “sealing portion” recited in the challenged claims
`is met by Matsuoka’s fixed cover’s opening/closing cover 33. Pet. 27–29
`(citing Ex. 1006, Fig. 7(a)). According to Petitioner, fixed cover’s
`opening/closing cover 33 seals opening 312 in Matsuoka’s toner cartridge
`30, in a first position, shown in Figure 10(b), and is compressed to unseal or
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`form opening 321 in Matsuoka’s toner cartridge 30, in a second position,
`shown in Figure 11. Id. at 28–29 (citing Ex. 1006, 9:28–47, 50–54).
`
`Patent Owner responds that the “sealing portion” recited in each of
`independent claims 1, 11, 29, and 38 is not met by Matsuoka’s fixed cover’s
`opening/closing cover 33. According to Patent Owner, Matsuoka’s toner
`cartridge’s opening 321 is unsealed by relative movement of part of the
`alleged “sealing member” (rotary power transmitting member 44) toward the
`“container body” (cartridge 30 having container main body 31), which is the
`opposite of what the challenged claims require. Prelim. Resp. 37–40.
`
`We agree with Patent Owner. At the outset, we note the challenged
`claims require that the container’s opening becomes unsealed by relative
`movement of the sealing member and the container body away from each
`other. As explained by Patent Owner, this relative movement is illustrated,
`for example, in Figures 7(B) and 7(C) of the ’094 patent, which show how
`opening 1a is unsealed by the relative movement of toner bottle main body
`1a away from sealing member 2, specifically, by moving toner bottle main
`body 1a in the direction of arrow “b” while sealing member 2 is held fixed
`or locked with the main assembly of copier 100. Prelim. Resp. at 37–38
`(citing Ex. 1001, 9:25–32, 9:41–7, 13:8–16, 16:67–17:5); see also Ex. 1001,
`8:9–17, 11:13–12:18, 13:8–16, 15:4–13, 18:61–19:38, Figs. 24–25A
`(describing the “relative movement” between sealing member 2 and toner
`bottle 1).
`
`In contrast, Matsuoka’s toner cartridge 30 is unsealed by advancing
`toner cartridge 30 with its fixed cover 32 toward rotary power transmitting
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`member 44, which causes the expandable bellows of opening/closing cover
`33 to compress and unseal opening 321. Ex. 1006, 8:5–7, 33–37, 45–50; see
`also Pet. at 28–29. Thus, in Matsuoka, toner cartridge’s opening 321 is
`unsealed by relative movement of part of the alleged “sealing member”
`(rotary power transmitting member 44) toward the “container body”
`(cartridge 30 having container main body 31), which is the opposite of what
`the challenged claims require, i.e., the container’s opening becomes unsealed
`by relative movement of the sealing member and the container body away
`from each other. Id. at 39.
`
`On this record, we are not sufficiently persuaded that Matsuoka’s
`fixed cover’s opening/closing cover 33 can be said to meet the “sealing
`portion” limitation of the challenged claims.
`
`For these reasons, we are not persuaded that Petitioner has established
`a reasonable likelihood that claims 1, 8, 9, 11, 17, 18, 29, and 38 are
`anticipated by Matsuoka under 35 U.S.C. § 102(b).
`
`D. Alleged Obviousness of Claims 1, 7–9, 11, 16–18, 29, and 38
`based on Matsuoka
`
`
`Petitioner argues that claims 1, 7–9, 11, 16–18, 29 and 38 would have
`been obvious under 35 U.S.C. §103 over Matsuoka. Pet. 16, 56–59. We
`understand Petitioner’s argument as this: First, Matsuoka’s toner cartridge
`30 is alleged to include every claim limitation except for the “sealing
`member” of independent claims 1, 11, 29, and 38; second, assuming that
`Matsuoka’s toner cartridge 30 cannot be deemed as including rotary power
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`transmitting member 44 of the copier to meet the “sealing member”
`limitation, toner cartridge 30 can still be made to include in its structure
`rotary power transmitting member 44 such that member 44 would be a part
`of toner cartridge 30. In particular, Petitioner, relying on Dr. Springett’s
`testimony, argues that: (1) Matsuoka’s fixed cover 32 and Matsuoka’s rotary
`power transmitting member 44 can be combined as a single piece
`construction, and (2) such a single piece construction “would be merely a
`matter of obvious engineering choice” to a person of ordinary skill. Pet. 56–
`58 (citing Ex. 1007 ¶¶ 73–76).
`
`Patent Owner responds that: (1) Petitioner fails to present an
`articulated reason with rational underpinnings to properly support its
`assertions of obviousness, and (2) Petitioner’s proposed modification of
`Matsuoka’s toner cartridge to incorporate rotary power transmitting member
`44 from the copier’s developing agent replenishing apparatus 40 does not
`render the challenged claims obvious, as the prior art does not describe
`certain claim limitations. Prelim. Resp. 41–45.
`
`We agree with Patent Owner. A determination of unpatentability on a
`ground of obviousness must include “articulated reasoning with some
`rational underpinning to support the legal conclusion of obviousness.” KSR,
`550 U.S. at 418 (quoting Kahn, 441 F.3d at 988). Petitioner does not
`provide articulated reasoning with rational underpinnings as to why one of
`ordinary skill in the art would have been motivated to modify Matsuoka’s
`toner cartridge 30 to incorporate rotary power transmitting member 44 from
`the copier’s developing agent replenishing apparatus 40 in order to arrive at
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`the claimed subject matter. Instead, Petitioner proffers only conclusory
`obviousness assertions that Matsuoka’s fixed cover 32 and Matsuoka’s
`rotary power transmitting member 44 can be combined as a single piece
`construction. Pet. 56–57. Petitioner’s obviousness arguments lack any
`persuasive reason why a skilled artisan would be motivated to modify
`Matsuoka’s toner cartridge 30 to incorporate rotary power transmitting
`member 44 from the copier’s developing agent replenishing apparatus 40.
`As discussed supra, Matsuoka’s toner cartridge 30 contains only two
`
`main components: (1) container main body 31 provided with opening 312,
`and (2) fixed cover 32 including opening/closing cover 33 “which is
`engaged inside the fixed cover 32” in the form of expandable/compressible
`bellows. Ex. 1006, 7:22–30, Fig. 4(d). Matsuoka’s toner cartridge 30 does
`not include rotary power transmitting member 44, which is a fixed part of
`the copier’s developing agent replenishing apparatus 40. Ex. 1006, Figs. 3,
`4(d), 6. Fixed cover 32 and rotary power transmitting member 44 are merely
`engageable “on a detachable basis” when Matsuoka’s toner cartridge 30 is
`inserted into the copier’s developing agent replenishing apparatus 40, as
`shown in Figure 6 of Matsuoka. Ex. 1006, 7:38–56, 8:5–7, 33–37, 45–50.
`In order to seal and unseal Matsuoka’s toner cartridge 30, fixed cover
`32 must be able to engage and disengage from rotary power transmitting
`member 44. Id. at 8:60–9:6, 9:45–54, 11:31–12:18, Figs. 23A–23B. If f
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