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. IPR2016-01360
`
`NY 824775V.1
`
`GPI EXHIBIT 1011
`GENERAL PLASTIC v. CANON
`IPR2016-01360
`
`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. IPR2016-01360
`
`NY 824775V.1
`
`GPI EXHIBIT 1011
`GENERAL PLASTIC v. CANON
`IPR2016-01360
`
`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
`
`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.
`
`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 Third 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 Third
`
`Petition, namely Yoshiki U.S. Patent No. 5,765,079 (“Yoshiki”, Ex. 1006),
`
`Japanese Patent Application Publication No. H10-171230 to Koide (“Koide”,
`
`Ex. 1007), Kato U.S. Patent No. 6,118,951 (“Kato”, Ex. 1008), Matsuoka U.S.
`
`Patent No. 5,903,806
`
`(“Matsuoka”, Ex. 1009),
`
`and
`
`Ikesue U.S. Patent
`
`No. 5,598,254 (“Ikesue”, Ex. 1010).
`
`I have also reviewed the other technical
`
`references cited in the Third Petition, such as U.S. Patent No. 7,647,012
`
`(Ex. 1003).
`
`10.
`
`I submit this declaration in support of the Third 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 Third Petition for Inter Partes review (or the outcome of such an inter
`
`partes review, if a trial is initiated).
`
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`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
`
`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
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`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.
`
`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
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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
`
`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
`
`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.
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`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.
`
`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”.
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`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.
`
`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
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`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.
`
`Obviousness of the Challenged Claims
`
`A.
`
`30.
`
`Analogous Prior art
`
`I have read Yoshiki 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 Yoshiki to be teaching, and what Yoshiki would suggest to a
`
`person of ordinary skill.
`
`31. Yoshiki discloses a toner bottle 1 for supplying toner
`
`to the
`
`developing apparatus of an image-forming apparatus such as printers and copiers.
`
`See Ex. 1006 at col. 1, ln. 5-8. Thus, Yoshiki 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 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. Yoshiki addresses
`
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`this same problem. See Ex. 1006 at col. 2, ln. 52-56 (“Thus, in taking out the toner
`
`bottle 1 from the holder 8, the opening portion 3 is closed with the cap 5, so there
`
`is no possibility that the toner on the opening portion 3 drops and stains the hands
`
`or clothes of an operator who exchanges the empty bottle.”). 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 Yoshiki to be highly relevant and analogous
`
`prior art to the challenged claims of the ‘094 patent.
`
`32.
`
`I have read Koide 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 Koide to be teaching, and what Koide would suggest to a person
`
`of ordinary skill.
`
`33. Koide discloses a toner cartridge 1 for supplying toner to copiers or
`
`printers. See Ex. 1007 at ¶0001. Thus, Koide 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 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. Koide addresses the
`
`resealing of the toner cartridge 1 by a cap 2. See Ex. 1007 at ¶0009 (“This knob
`
`portion 2a is held by the collect chuck 3, and together with the forward/backward
`
`movement of the collect chuck 3, the opening/closing of the cap 2 ....”). Thus, a
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`person of ordinary skill in the art as of the February 19, 2002 effective filing date
`
`of the ‘094 patent would have considered Koide to be highly relevant and
`
`analogous prior art to the challenged claims of the ‘094 patent.
`
`34.
`
`I have read Kato 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 Kato to be teaching, and what Kato would suggest to a person of
`
`ordinary skill.
`
`35. Kato discloses a toner bottle for supplying toner to a developing unit
`
`in a copier or printer. See Ex. 1008 at col. 1, ln. 7-17. Thus, Kato 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 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. Kato
`
`addresses the resealing of the toner bottle by a cap. See Ex. 1008 at col. 15,
`
`ln. 8-15. 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 Kato to be highly
`
`relevant and analogous prior art to the challenged claims of the ‘094 patent.
`
`36.
`
`I have read Matsuoka and fully understand its subject matter. Set
`
`forth below, I present my opinions on what a person of ordinary skill would
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`understand certain aspects of Matsuoka to be teaching, and what Matsuoka would
`
`suggest to a person of ordinary skill.
`
`37. Matsuoka discloses a cartridge 30 for supplying a developing agent to
`
`a color image forming apparatus. See Ex. 1009 at col. 1, ln. 5-12. Thus, Matsuoka
`
`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 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. Matsuoka addresses this same problem. See Ex. 1009 at col. 2,
`
`ln. 41-45 (“In such a cartridge, the opening/closing cover is required to be closed
`
`to cover the developing agent outlet so that developing agents remaining in the
`
`cartridge do not overflow when the cartridge is dismounted from an image forming
`
`apparatus.”). 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 Matsuoka to be
`
`highly relevant and analogous prior art to the challenged claims of the ‘094 patent.
`
`38.
`
`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.
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`39.
`
`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. 1010 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. 1010 at col. 7,
`
`ln. 2-5 (“The chuck 16 pushes the lid 15 into the openings of the containers 1 and 2
`
`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.
`
`B.
`
`Claim Limitations And The Analogous Prior Art
`
`1.
`
`a container body configured to contain toner
`
`40.
`
`Figure 4 of
`
`the principal reference, Yoshiki (Ex. 1006), which is
`
`reproduced below, depicts a toner bottle 1 having a bottle body 2 containing toner,
`
`and a cap 5 for opening/closing an opening portion 3 formed in an axial end of the
`
`bottle body 2.
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`41.
`
`“Also, in the cylindrical portion of the bottle body 2, a guide groove 7
`
`is formed spirally to guide the toner contained in the bottle body 2 toward the
`
`opening portion 3 by rotation of the toner bottle 1.” Ex. 1006 at col. 2, ln. 12-16
`
`(emphasis added).”
`
`2.
`
`a sealing member
`
`42.
`
`Toner scraping members 20 are provided on the back surface of
`
`Yoshiki’s cap 5. A tab portion 6 is provided on the front surface of the cap 5. See
`
`Ex. 1006 at col. 6, ln. 4 7.
`
`43. Yoshiki states that “[T]he cap 5 and the toner scraping members 20
`
`are integrally formed from plastic material such as polyethylene.” Ex. 1006 at
`
`col. 6, ln. 7-9 (emphasis added).
`
`In addition to Yoshiki’s express disclosure that
`
`the cap 5 and toner scraping members 20 are “integrally formed”, in view of the
`
`hatching shown throughout the cross-sectional view of the cap 5 and toner scraping
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`NY 824775V.1
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`- 16 -
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`17
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`
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`members 20 presented in Figure 4, a person of ordinary skill would understand
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`Figure 4 as depicting the cap 5 and toner scraping member 20 to be of one-piece
`
`construction.
`
`44. Again, Yoshiki states that “[t]he cap 5 and the toner scraping
`
`members 20 are integrally formed from plastic material such as polyethylene.”
`
`Ex. 1006 at col. 5, ln. 7-9. A person of ordinary skill would understand that this
`
`identified starting material,
`
`the reference to “integrally formed,” and the
`
`cross-sectional view of the cap 5 and toner scraping members 20 in Figure 4
`
`dictate that a molding process must be used for making the cap 5 and toner
`
`scraping members 20. Thus, a person of ordinary skill would understand that the
`
`entirety of the cap 5 and toner scraping members 20 is integrally molded.
`
`45.
`
`The integrally formed cap 5 and toner scraping members 20 correlates
`
`with the recited “sealing member”.
`
`3.
`
`Sealing Portion
`
`46.
`
`The portion of Yoshiki’s cap 5 that correlates with the recited “sealing
`
`portion” has been highlighted in red in the below reproduced Figure 4 of Yoshiki.
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`NY 824775V.1
`
`- 17 -
`
`18
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`
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`Specifically, the recited “sealing portion” correlates with the back surface of the
`
`cap 5, exclusive of the flange portion thereof, which is adjacent the bottle body 2.
`
`See Ex. 1006 at Col. 2, ln. 10-11 (“a cap 5 is provided to close the opening portion
`
`3.”).
`
`47. When Yoshiki’s toner bottle 1 is inserted into the copier, a chuck 10
`
`in the copier grasps the tab portion 6 and pulls the cap 5 away from the opening 3
`
`in the bottle body 2 to the open position shown in Figure 4. See Ex. 1006 at col. 2,
`
`ln. 4-42. In this open position, toner scraping members 20 remain within the toner
`
`bottle opening 3, but toner is able to flow out of the opening through the space
`
`between the toner scraping members. See Ex. 1006 at Fig. 4.
`
`NY 824775V.1
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`- 18 -
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`19
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`
`
`5.
`
`Coupling Portion
`
`48.
`
`The portion of Yoshiki’s cap 5 that correlates with the recited
`
`“coupling portion” has been highlighted in green in the below reproduced Figure 4
`
`of Yoshiki.
`
`More specifically, the recited “coupling portion” correlates with the front surface
`
`of the cap 5, including the flange portion and the tab portion 6, which is remote
`
`from the bottle body 2. As discussed infra at Paragraphs 54-58, the tab portion 6 is
`
`capable of receiving a rotational force from the chuck 10. See also Koide (Ex.
`
`1007) at Fig. 1.
`
`i.
`
`Supporting Portion
`
`49.
`
`The portion of this “coupling portion” that correlates with the recited
`
`“supporting portion” has been highlighted in purple in the below reproduced
`
`Figure 4 of Yoshiki.
`
`NY 824775V.1
`
`- 19 -
`
`20
`
`
`
`That is, the recited “supporting portion” correlates with the front surface of the cap
`
`5, exclusive of the rounded surface of the tab portion 6.
`
`50. Yoshiki explains that the cap 5 and toner scraping members 20 are
`
`integrally formed from a plastic material having elasticity. Ex. 1006 at col. 6,
`
`ln. 7-17. Due to its hollow cylindrical shape as well as its elasticity, the cap 5
`
`would be elastically displaceable inwardly by the application of a radially inwardly
`
`directed force, and the portion of the cap 5 that would consequently displace
`
`inwardly would also elastically restore outwardly upon the removal of that radially
`
`inwardly directed force.
`
`ii.
`
`Engaging Portion
`
`51.
`
`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 Yoshiki.
`
`NY 824775V.1
`
`- 20 -
`
`21
`
`
`
`Specifically, the recited “engaging portion” correlates with that portion of the front
`
`surface of the cap 5 that is contacted by the clamping portion of chuck 10.
`
`52.
`
`This “engaging portion” is at a free end of the portion of the cap 5 that
`
`Petitioner correlates with the supporting portion and, as such, is displaceable with
`
`the supporting portion because the cap 5 is of one-piece construction (see Col. 6,
`
`ln. 7-9; Fig. 4; see also Paragraphs 43-44).
`
`iii.
`
`Locking Portion
`
`53.
`
`The outwardly radially extending surface on the back side of the
`
`rounded portion of tab 6 correlates with the recited “locking portion”. As depicted
`
`in Figure 4 of Yoshiki, the clamping arms of chuck 10 abut against this “locking
`
`portion” and move the cap 5 axially away from the bottle body 2 to unseal the
`
`opening portion 3. See Ex. 1006 at col. 2, ln. 17-42 & col. 5, ln. 66 - col. 6, ln. 3.
`
`NY 824775V.1
`
`- 21 -
`
`22
`
`
`
`iv.
`
`Rotational Force Receiving Portion
`
`54.
`
`The circumferential surface of Yoshiki’s tab 6 abutted by the
`
`clamping arms of chuck 10 correlates with the recited “rotational force receiving
`
`portion”. Yoshiki suggests that the toner bottle 1 may be held stationary while the
`
`cap 5 and its toner scraping members 20 are rotated.
`
`In the toner bottle 1 constructed in this way, both the cap
`fixed and held in the cap-opened state by the cap moving
`means and the toner bottle 1 are in a relative relationship.
`Therefore,
`if
`the toner bottle 1 is rotated in the
`cap-opened state, the same effect as the case when the
`toner scraping members 20 are rotated with respect to
`the fixed toner bottle 1 will be obtainable.
`
`Ex. 1006 at col. 6, ln. 24-30 (emphasis added). A person of ordinary skill would
`
`understand this disclosure in Yoshiki to be a suggestion to rotate the cap 5 using
`
`the chuck 10.
`
`55. As depicted in Koide’s Figure 1, which is reproduced below
`
`side-by-side with Yoshiki’s Figure 4, Koide discloses a toner bottle 1 having a cap
`
`2 with a blue-highlighted knob portion 2a (having shape similar to Yoshiki’s tab
`
`portion 6), that can be both moved axially away to open bottle mouth part 1a and
`
`rotated by the copier’s orange-highlighted collect chuck 3 (having a shape similar
`
`to Yoshiki’s chuck 10) [see Ex. 1007 at ¶¶0009-10].
`
`NY 824775V.1
`
`- 22 -
`
`23
`
`
`
`56. Koide explains that “[T]he collect chuck 3 can rotate in relation to the
`
`axis thereof, to thereby rotate also the spiral-shaped rib 2b that
`
`is provided
`
`integrally with the cap 2 ....”. Ex. 1007 at ¶0010. A person of ordinary skill would
`
`understand from Koide that a rotational force is being applied to Koide’s knob
`
`portion 2a in order to rotate the spiral-shaped rib 2b, and that a rotational force can
`
`likewise be applied to the corresponding circumferential surface of Yoshiki’s tab 6
`
`that correlates with the recited “rotational force receiving portion,” that will cause
`
`Yoshiki’s cap 5 to be rotated.
`
`57.
`
`I am not relying upon Koide to modify Yoshiki’s tab 6, but rather as
`
`confirmatory evidence that a person of ordinary skill would understand that a
`
`rotational drive force from a copier could be imparted to and received by Yoshiki’s
`
`tab 6. I have annotated Yoshiki’s Figure 4 to show, inter alia, a person of ordinary
`
`skill’s understanding of the movement capabilities of Yoshiki’s chuck 10 that can
`
`be imparted to Yoshiki’s tab 6.
`
`NY 824775V.1
`
`- 23 -
`
`24
`
`
`
`58.
`
`In both Yoshiki and Koide, the rotation of the cap will not result in the
`
`rotation of the toner bottle. However, a person of ordinary skill would have been
`
`motivated, and found it obvious, to modify Yoshiki (Ex. 1006) to provide an
`
`engagement mechanism between the toner scraping members 20 and the bottle
`
`body’s opening collar 4 so as to transmit an applied rotational force to the bottle
`
`body 2, based on Koide (Ex. 1007) in view of Kato (Ex. 1008), Matsuoka
`
`(Ex. 1009) and Ikesue (Ex. 1010).
`
`59.
`
`Figure 15 of Kato depicts bottle rotating means 20 and 50 for rotating
`
`toner bottles 3 and 4, respectively, and plugging/unplugging means 30 and 60 for
`
`fitting and removing caps 3A and 4A from toner bottles 3 and 4, respectively.
`
`NY 824775V.1
`
`- 24 -
`
`25
`
`
`
`See Ex. 1008 at col. 17, ln. 30 - col. 18, ln. 3. The bottle rotating means 20 is
`
`positioned at the rear of the bottom of the toner bottle 3. The bottle rotating means
`
`20 has a joint unit 21 engageable with the bottom of the bottle 3, and a motor 22
`
`for rotating the joint unit 21. Ex. 1008 at col. 18, ln. 55-59.
`
`60. As shown in Kato’s Figure 16, the bottle 3 has on its bottom a
`
`cylindrical lug 3d and a pair of rectangular lugs 3e engageable with the joint unit’s
`
`joint portion 210.
`
`NY 824775V.1
`
`- 25 -
`
`26
`
`
`
`A recess 210a and a pair of lugs 210b are formed at the end of the joint portion
`
`210. The recess 210a will mate with the lug 3d while the lugs 210b will be
`
`positioned between the lugs 3e. Ex. 1008 at col. 19, ln. 1-5. “The two lugs 3e and
`
`two lugs 210b cooperate to transfer the rotation of the joint portion 210 to the
`
`bottle 3 when engaged with each other.” Ex. 1008 at col. 19, ln. 8-10.
`
`61.
`
`The transfer of rotation through the engagement of the lugs 210b and
`
`the toner bottle’s lugs 3e disclosed in Kato is functionally the same as the transfer
`
`of rotation disclosed in the ‘094 patent as being achieved through the engagement
`
`of the copier’s rotating ribs 20a and the sealing member’s drive receiving surface
`
`3a (see Ex. 1001 at col. 14, ln. 27-31).
`
`62. Based on Figures 6A, 6C and 11B of Yoshiki (Ex. 1006), which are
`
`reproduced below, a person of ordinary skill would understand the toner scraping
`
`member 20 depicted in Figure 4 to have the same vane-like shape.
`
`63.
`
`In view of Kato (Ex. 1008), it was well within the capability of a
`
`person of ordinary skill to place a pair of lugs 3e on the inner circumferential
`
`surface of the Kato bottle body’s collar 4, which is depicted in Figure 4 reproduced
`
`NY 824775V.1
`
`- 26 -
`
`27
`
`
`
`below, so as to transfer a rotation force to the bottle body 2 upon the abutment of
`
`the rotating toner scra
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