13259442 (P.T.A.B. Aug. 22, 2016)

Ex Parte Arthur et al

Patent Trial and Appeal BoardAug 22, 2016

13259442 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/259,442 09/23/2011 22879 7590 08/24/2016 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Alan R. Arthur 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82853890 5843 EXAMINER JACKSON, JUANITA DIONNE ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 08/24/2016 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAN R. AR THUR, CHRIS ASCHOFF, and RONALD A. HELLEKKSON Appeal2015-001456 Application 13/259,442 Technology Center 2800 Before BEYERL YA. FRANKLIN, GEORGE C. BEST and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal the Examiner's final rejection of claims 1--4, 6-9, and 16-20. 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6(b ). For the reasons set forth below, we REVERSE. 1 Appellants identify Hewlett-Packard Development Company, LP as the real party in interest. App. Br. 1. Appeal2015-001456 Application 13/259,442 The Claimed Invention Appellants' disclosure relates to laminate manifolds which are used as ink manifolds for inkjet printers. Spec. i-f 17; Abstract. Claim 1 is representative of the claims on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 26) (emphasis added): 1. A laminate manifold, comprising: a plurality of parallel plates arranged in a laminate plate stack; and a securing agent securing the plates in the laminate plate stack; where at least some of the plates incorporate one or more apertures that are oriented in their respective plates so that when the plates are arranged as a laminate plate stack the apertures define at least one fluidic pathway; where the fluidic pathway emerges from the laminate plate stack between parallel plates. The Reference The Examiner relies on the following prior art reference in rejecting the claims on appeal: Debesis et al., US 6,789,884 B2 Sep. 14, 2004 (hereinafter "Debesis") The Rejections2 On appeal, the Examiner maintains the following rejections: 1. Claims 1-3, 7-9, 16, and 17 stand rejected under pre-AIA 35 U.S.C. Â§ 102(b) as being anticipated by Debesis. 2 The Examiner has withdrawn the rejections of claims 16-20 under pre-AIA 35 U.S.C. Â§ 112, i-f 1 for failure to comply with the written description requirement and i-f 2 for indefiniteness. Ans. 3, 4. 2 Appeal2015-001456 Application 13/259,442 2. Claims 4 and 6 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Debesis. OPINION Rejection 1 The Examiner finds that the Debesis reference discloses all of the limitations of claim 1 and rejects claim 1 as being anticipated under Â§ 102(b). Final Act. 4---6. 3 The Examiner relies almost entirely on Figure 1 of Debesis for disclosing all of claim 1 's limitations. Id. at 4, 5; Ans. 4. Appellants argue that the Examiner's rejection of claim 1 should be reversed because "Debesis fails to disclose the claimed laminate manifold, wherein the apertures in the plates form a fluidic pathway that 'emerges from the laminate plate stack BETWEEN parallel plates,"' as required by the claim. App. Br. 13. We agree with Appellants' argument. To serve as an anticipatory reference, "the reference must disclose each and every element of the claimed invention." In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Based on the record before us, we are not persuaded that the Examiner has established by a preponderance of the evidence that Debesis discloses the "where the fluidic pathway emerges from the laminate plate stack between parallel plates" limitation of claim 1. The Examiner does not identify or direct us to sufficient evidence that Debesis either explicitly or inherently discloses this limitation. The Examiner's finding that Debesis's Figure 1 discloses a fluidic pathway that 3 "Final Act." refers to the Final Office Action dated November 14, 2014. 3 Appeal2015-001456 Application 13/259,442 "emerges from the laminate plate stack (14) between parallel plates ( 42)" (Final Act. 5; Ans. 4) is erroneous because the Examiner misconstrues Figure 1. Contrary to the Examiner's finding, Debesis's Figure 1 does not disclose any fluidic pathway which emerges from the laminate plate stack between parallel plates 42. Rather, as Appellants correctly point out (App. Br. 13), Debesis's Figure 1 actually discloses that all of the fluid flow channels 22 in the laminate gasket manifold 14 emerge through either the top face or the bottom face of manifold 14, and that none of them either emerges or forms a fluidic pathway that emerges from the laminate stack between parallel plates, as required by claim 1. We, therefore, cannot sustain the Examiner's finding that Debesis teaches all of claim 1 's limitations and conclusion that the reference anticipates claim 1. Gleave, 560 F.3d at 1334. Accordingly, we reverse the Examiner's rejection of claim 1 under pre-AIA 35 U.S.C. Â§ 102(b). Because claims 2, 3, 7-9, 16, and 17 each depend from claim 1, we also reverse the rejection of these claims. Rejection 2 Because the Examiner's Â§ 103 rejection is based upon the Debesis reference and rests on the same deficiency in the reference's disclosure discussed above, and because we are not persuaded that the Examiner has provided an adequate technical explanation or identified sufficient evidence explaining why one of ordinary skill in the art at the time of the invention would have been motivated to modify Debesis' s laminate and gasket manifold to arrive at the claimed invention or otherwise cure the deficiency (see Final Act. 7), we cannot sustain the Examiner's findings and conclusion that claims 4 and 6 would have been obvious over Debesis. See In re 4 Appeal2015-001456 Application 13/259,442 Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the examiner bears the initial burden of establishing a prima facie case of obviousness). Accordingly, we reverse the Examiner's Rejection 2. DECISION/ORDER The Examiner's rejections of claims 1--4, 6-9, and 16-20 are reversed. It is ordered that the Examiner's decision is reversed. REVERSED 5