Ex Parte Hong et alDownload PDFPatent Trial and Appeal BoardAug 31, 201713556539 (P.T.A.B. Aug. 31, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/556,539 07/24/2012 EUNKI HONG P519-US1 9264 21972 7590 09/05/2017 LEXMARK INTERNATIONAL, INC. INTELLECTUAL PROPERTY LAW DEPARTMENT 740 WEST NEW CIRCLE ROAD BLDG. 004-1 LEXINGTON, KY 40550-0999 EXAMINER BRUNJES, CHRISTOPHER J ART UNIT PAPER NUMBER 3746 NOTIFICATION DATE DELIVERY MODE 09/05/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): jpezdek@lexmark.com iplaw @ lexmark.com nrkahle @ lexmark. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EUNKI HONG, STEVEN BERGSTEDT, and YIMIN GUAN Appeal 2016-003838 Application 13/556,539 Technology Center 3700 Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and JEFFREY A. STEPHENS, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Eunki Hong et al. (Appellants)1 seek our review under 35 U.S.C. § 134 of the Examiner’s rejections2 of claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is Lexmark International, Inc. Br. 1 (filed Feb. 23, 2015). 2 Appeal is taken from the adverse decision of the Examiner as set forth in the Final Office Action, dated October 23, 2014 (“Final Act.”). Appeal 2016-003838 Application 13/556,539 CLAIMED SUBJECT MATTER Claims 1 and 6 are independent. Claim 1 is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 1. A method of pumping fluid in a micro-fluid pump having a substrate, a plurality of resistive heaters on the substrate, and a cover layer above the resistive heaters defining a channel with a volume space in which fluid in the channel can flow sequentially on the substrate from one heater to a next heater of the resistive heaters without escaping the cover layer, comprising pumping fluid in the channel at a rate of over 0.1 pi/min., including firing one of the resistive heaters and allowing said one of the resistive heaters to cool down to an initial temperature before firing again said one of the resistive heaters. REJECTIONS3 The following Examiner’s rejections are before us for review. 1. Claims 1-5, 7-10, and 13 are rejected under U.S.C. § 103(a) as unpatentable over Prosperetti (US 6,283,718 Bl, iss. Sept. 4, 2001), Ussing (US 2006/0051214 Al, pub. Mar. 9, 2006), and Ma (US 2003/0086790 Al, pub. May 8, 2003). 2. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Prosperetti and Ma. 3. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over Prosperetti, Ma, and Anderson (US 2009/0153616 Al, pub. June 18, 2009).4 3 The Examiner’s objection(s) to the drawings, Specification, and claims (see Final Act. 2-4; see also Br. 5-6) are not appealable matters, but rather are petitionable matters, and thus are not within the jurisdiction of the Board. See 37 CFR 1.181; see also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002); In reMindick, 371 F.2d 892, 894 (CCPA 1967). 4 Although Ma is not listed in the rejection of claims 11 and 12, in this case we understand the rejections to be based on at least the same references used 2 Appeal 2016-003838 Application 13/556,539 4. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over Prosperetti, Ma, and Cornell (US 6,132,030, iss. Oct. 17, 2000). ANALYSIS First Ground of Rejection: Obviousness of Claims 1—5, 7—10, and 13 over Prosperetti, Ussing, andMa Appellants argue claims 1-5, 7-10, and 13 together in contesting the rejection of these claims as obvious over Prosperetti, Ussing, and Ma. See Br. 6-7. We select claim 1 as the representative claim for this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). While finding that Prosperetti and Ussing teach a method of pumping fluid in a micro-fluid pump including substantially all of the limitations of claim 1, the Examiner observes that both are silent regarding the claim phrase, “allowing said one of the resistive heaters to cool down to an initial temperature before firing again said one of the resistive heaters.” Final Act. 5 (emphasis added). However, the Examiner finds that because Ma teaches “allowing the resistive heater to cool down before firing again (Paragraph 22),” that “[i]t would be obvious to a person having ordinary skill in the art that for the optimal operation of the pump, [to] have the resistive heater cool to an initial temperature before being heated up again.” Id. From the foregoing, the Examiner concludes that it would have been obvious “to modify the bubble based micro-pump, as taught by Prosperetti, by having the liquid flow through the channel at a rate over 0.1 pi/min, as taught by Ussing, and allowing the resistive heater to cool before firing it in rejecting claim 6, from which claims 11 and 12 depend. See Final Act. 8- 11. 3 Appeal 2016-003838 Application 13/556,539 again,” pointing out that because “[i]t is the normal desire of engineers to be motivated to determine the optimum range to operate a device, so finding an optimum flow rate through the channel would have been obvious,” and “[hjaving the resistive heater cool to an initial temperature before each time it is reheated allows for a more simplistic pump to be created, reducing production and maintenance costs.” Id. at 6. In taking issue with the Examiner’s findings and conclusions, Appellants’ sole contention is that Ma “fails to supply the missing teaching rendering obvious the limitations ‘allowing’ the resistive heaters to ‘cool down to an initial temperature before firing again’ the resistive heaters, as required in claims 1 and 6.” Br. 6. In referring to quoted portions of paragraphs 22-24 of Ma, Appellants contend that “nowhere does Ma teach, nor require, that the heating element 12 cool off back to its original ‘initial temperature,’ as claimed.” Id. While acknowledging “cooling a heating element indeed shrinks a fluid bubble,” Appellants contend that “the Examiner gives the reference too much credit for its scope of teaching,” because “[t]he Examiner conflates ‘cooling down’ with cooling down all the wav back to an initial temperature of a heater before firing.” Id. at 6-7. Appellants conclude that “if heaters are not allowed to cool all the way back down to their original temperature before firing again, ‘the heater will build up heat with time and eventually cause the liquid on top of the heater to boil,’ which can cause ‘degradation].’” Id. at 7 (citing the Specification, p. 5,1. 29-p. 6,1. 1). In response, the Examiner first summarizes Appellants’ disclosed invention. See Ans. 5-6. The Examiner then points out that because Appellants have “not described what is to be considered as the ‘initial 4 Appeal 2016-003838 Application 13/556,539 temperature’ in the claim,” that “the broadest reasonable interpretation of this limitation is not only taught by Ma, but is further supported by the same paragraphs cited by the appellant as evidence that Ma does not teach this limitation.” Id. at 7-8. We determine the scope of the claims in a patent application upon giving claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). “Construing claims broadly during prosecution is not unfair to the applicant. . . because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.” Id. We agree with, and adopt as our own, the Examiner’s definition of the term “initial temperature,” for the reasons set forth at pages 8-9 of the Answer, and that Ma teaches allowing to cool to “an initial temperature” for the reasons given therein. Appellants have not disputed any of the Examiner’s findings in the Answer. Thus Appellants’ sole contention does not inform us of error. Based on the foregoing, we sustain the Examiner’s rejection of claims 1-5, 7-10, and 13 over Prosperetti, Ussing, and Ma. Second—Fourth Ground of Rejection: Obviousness of Claim 6 over Prosperetti and Ma; of Claim 11 over Prosperetti, Ma, and Anderson; and of Claim 12 over Prosperetti, Ma, and Cornell We understand Appellants’ appeal of the rejections of claims 6, 11, and 12 to rest on the arguments presented against the rejection of claim 1, 5 Appeal 2016-003838 Application 13/556,539 which we found not demonstrative of error in the Examiner’s rejection of claims 1-5, 7-10, and 13 over Prosperetti, Ussing, and Ma, as set forth supra. Thus, we sustain the Examiner’s unpatentability rejection of claim 6 over Prosperetti and Ma; of claim 11 over Prosperetti, Ma, and Anderson; and of claim 12 over Prosperetti, Ma, and Cornell. DECISION We affirm the Examiner’s rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation