Ex Parte Giacobbi et al

Patent Trial and Appeal Board

Feb 12, 2018

14231340 (P.T.A.B. Feb. 12, 2018)

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.
1776-0644 9869
EXAMINER
POLK, SHARON A
ART UNIT PAPER NUMBER
2853
MAIL DATE DELIVERY MODE
14/231,340 03/31/2014
76360 7590 02/12/2018
MAGINOT, MOORE & BECK LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
James L. Giacobbi
02/12/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES L. GIACOBBI, MATTHEW R. MCLAUGHLIN, and
VICTORIA L. WARNER
Appeal 2017-006639
Application 14/231,340
Technology Center 2800
Before ROMULO H. DELMENDO, MARKNAGUMO, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1—15. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, Xerox Corporation, which, according to the
Appeal Brief, is the real party in interest. Appeal Brief filed July 28, 2016
(“App Br”), 3.
Appeal 2016-006639
Application 14/231,340
STATEMENT OF THE CASE
The inventors claim a printer and an apparatus that each comprise,
inter alia, a profilometer configured to generate measurements of drops
ejected onto a planar member, and a controller configured to identify
inoperative inkjets in a printhead with reference to measurement data
generated by the profilometer. App. Br. 5. Claims 1 and 9 illustrate the
subject matter on appeal and are reproduced below, with contested
limitations italicized:
1. A printer comprising:
a printhead configured with inkjets to eject drops of
material;
a planar member positioned opposite the printhead to
receive drops ejected from the printhead;
a profilometer configured to generate measurements of
drops ejected onto the planar member, and
a controller operatively connected to the profilometer and
the printhead, the controller being configured to move the
printhead and operate the printhead to form a line of drops on
the planar member, to move and operate the profilometer to
enable generation of measurement data of the drops on the
planar member, and to identify inoperative inkjets in the
printhead with reference to the measurement data generated by
the profilometer.
9. An apparatus comprising:
a profilometer positioned adjacent a planar member
located to receive drops of material ejected from inkjets in a
printhead, the profilometer being configured to generate
measurements of drops ejected onto the planar member, and
a controller operatively connected to the profilometer, the
controller being configured to detect the printhead and generate
a signal for the printhead to be operated to form a line of drops
on the planar member, to move and operate the profilometer to
enable generation of measurement data of the drops of material
on the planar member, and to identify inoperable inkjets in the
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Application 14/231,340
printhead with reference to the measurement data generated by
the profdometer.
App. Br. 14, 16 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered January 15, 2016 (“Final Act.”), and maintains the rejections
in the Answer entered January 24, 2017 (“Ans.”):
I. Claims 1, 3—5, 9, and 11—13 under 35 U.S.C. § 102(a)(1) as
anticipated by Kritchman et al. (US 2006/0054039 Al, published March 16,
2006); and
II. Claims 2, 6—8, 10, and 14—16 under 35 U.S.C. § 103 as
unpatentable over Kritchman in view of Tochimoto et al. (US 2002/0167101
Al, published November 14, 2002).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1, 3—5, 9, and 11—13 under 35 U.S.C. § 102(a)(1) (Rejection I) and
rejection of claims 2, 6—8, 10, and 14—16 under 35 U.S.C. § 103 (Rejection
II), for at least the reasons set forth below.
Rejection I
We decide the appeal as to Rejection I based on independent claims 1
and 9 because the remaining claims subject to this ground of rejection
depend either directly or indirectly from claims 1 and 9, and are not
separately argued.
The Examiner finds that Kritchman discloses a printer comprising a
profdometer configured to generate measurements of drops ejected onto a
planar member. Final Act. 3 (citing Kritchman H 73, 74, and 76). The
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Application 14/231,340
Examiner finds that Kritchman also discloses a controller operatively
connected to the profilometer that is configured to identify inoperative
inkjets in the printhead with reference to measurement data generated by the
profilometer. Final Act. 3^4 (citing Kritchman H 20, 38, 64, 68, and 142—
148).
Although the inventors’ Specification does not explicitly define the
term “profilometer,”2 the Specification explains that the claimed printer and
apparatus enable detection of inoperative inkjets in a three-dimensional
printer by incorporating a profilometer that measures test drops ejected onto
a planar member, in conjunction with a controller that analyzes measurement
data generated by the profilometer to identify inoperative inkjets. Spec. H
4, 5, 19, 20. Specifically, the Specification describes ejecting material from
inkjets in the printhead of a printer onto a planar member to form a test
pattern, positioning a profilometer adjacent to the planar member, and
orienting the profilometer over the printed test pattern. Spec. H 5, 18, 19.
The Specification explains that the profilometer directs a laser onto the test
pattern, and generates measurements of the reflections received from the test
pattern. Spec. 119. The Specification indicates that the controller then
analyzes the measurement data generated by the profilometer to identify
inoperative inkjets, such as injects that are failing to eject material, are
ejecting sporadically or errantly, or are ejecting more or less material than
expected. Spec. H 19, 20.
2 Neither the Appellant nor the Examiner posits that 35 U.S.C. § 112(f)
applies for the recitation “profilometer being configured to generate
measurements of drops ejected onto the planar member” in claim 1.
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Appeal 2016-006639
Application 14/231,340
Consistent with this description provided in the Specification, we
interpret the “profilometer” recited in claims 1 and 9 according to its plain
and ordinary meaning as “an instrument for measuring the topographical
profile of a surface” of drops of material (by using, e.g., laser) that have
been ejected from inkjets in a printhead onto a planar member, so as to
generate measurements of the drops. See e.g., Chemical Dictionary,
profilometer, https://www.chemicool.com/defmition/profilometer.html; In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During
prosecution of patent applications, “the PTO must give claims their broadest
reasonable construction consistent with the specification . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.”).
Appellant points out that the paragraphs of Kritchman cited by the
Examiner in the Final Action for supposedly disclosing a profilometer
(1173, 74, and 76) do not describe such an instrument. The Examiner
responds by asserting that Kritchman discloses dispensing (jetting) a known
about of material from inkjet nozzles via a predetermined CAD
configuration. Ans. 7—8 (citing Kritchman 1 68). The Examiner finds that
Kritchman also discloses a controller that controls the operation of a three-
dimensional printing apparatus, and may prepare digital data that
characterizes the three-dimensional object for printing. Ans. 8 (citing
Kritchman 173). The Examiner finds that “[tjherefore, Kritchman explicitly
and inherently teaches a profilometer (105 (controller), 150 (dispenser), and
152 (material supply unit)[)] configured to generate measurements of drops
on to a planar member (170) as claimed.” Ans. 8; Kritchman Fig. 1. The
Examiner further explains that the controller disclosed in Kritchman, “which
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Application 14/231,340
may include a CAD system,” the dispenser “understood to mete out, deal
out, distribute; to bestow in portions or from a general stock.
www.OED.com,” and the material supply unit that supplies building
material to the printing apparatus, “perform the claimed function of the
profilometer.” Ans. 8—9 (citing Kritchman ]f]f 76, 78).
However, to anticipate, a single prior art reference must describe,
either expressly or under the principles of inherency, each and every element
of a claimed invention with sufficient specificity to allow one skilled in the
art to readily envisage the claimed invention from the prior art reference.
See, e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Schaumann,
572 F.2d 312, 315 (CCPA 1978). Although Kritchman does disclose an
apparatus for three-dimensional printing that includes a controller 105 that
may be preprogramed with a predetermined CAD configuration, material
supply units 152, and material dispensers 150 flflf 64, 68, 73, 74; Fig. 1), the
Examiner does not identify any disclosure in Kritchman indicating that these
three components measure the topographical profile of a surface of drops
that have been ejected from the printhead of the apparatus onto a planar
member, so as to generate measurements of the drops, as required by claims
1 and 9 as we have interpreted them. Therefore, the Examiner does not
identify disclosure in Kritchman having specificity sufficient to allow one of
ordinary skill in the art to readily envisage a “profilometer” as recited in
claims 1 and 9.
It follows that the Examiner does not provide a sufficient factual basis
to establish that Kritchman anticipates claims 1 and 9. We accordingly do
not sustain the Examiner’s rejection of claims 1, 3—5, 9, and 11—13 under
35 U.S.C. § 102(a)(1) as anticipated by Kritchman.
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Application 14/231,340
Rejection II
Claims 2, 6—8, 10, and 14—16 each depend directly or indirectly from
claims 1 and 9. We do not sustain the Examiner’s rejection of these claims
under 35 U.S.C. § 103 as unpatentable over Kritchman in view of
Tochimoto because this rejection suffers from at least the same reversible
error as the Examiner’s rejection of claims 1, 3—5, 9, and 11—13 under 35
U.S.C. § 102(a)(1) as anticipated by Kritchman, discussed above. Final Act.
6-9.
DECISION
We reverse the Examiner’s rejection of claims 1, 3—5, 9, and 11—13
under 35 U.S.C. § 102(a)(1) and rejection of claims 2, 6—8, 10, and 14—16
under 35 U.S.C. § 103 for the reasons set forth in the Appeal Brief and
above.
REVERSED
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