Ex Parte Giri et al

Patent Trial and Appeal Board

Oct 31, 2012

11345594 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MANISH GIRI, PHILIP H. HARDING,
MARK SANDERS TAYLOR, and JEFFERY S. HESS
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Appeal 2010-010588
Application 11/345,594
Technology Center 3700
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Before: HOWARD B. BLANKENSHIP, MICHAEL J. FITZPATRICK,
and RAMA G. ELLURU, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010588
Application 11/345,594

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STATEMENT OF THE CASE
Manish Giri et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
a decision finally rejecting claims 16-19, 24-26, and 29. Claims 1-13 and
20-23 have been canceled. Claims 14, 15, 27, and 28 have been withdrawn
from consideration. We have jurisdiction under 35 U.S.C. § 6(b)(1).
We REVERSE.

The Claimed Subject Matter
According to Appellants, the claimed invention “relates to fluid
ejection devices, and more particularly to a layer with a discontinuity over a
fluid slot of a fluid ejection device.” Spec. 1, lines 11-12. Claim 16,
reproduced below, is illustrative of the claimed subject matter.
16. A method of forming a fluid ejection device comprising:
forming a slot through a substrate;
forming an ejection element upon the substrate along a side of
the slot;
forming a chamber layer over the substrate and ejection
element; and
exposing the chamber layer to define a firing chamber that
surrounds the ejection element, an orifice corresponding to the
ejection element, and a discontinuity therein over the slot.

Evidence
The Examiner relies upon the following prior art reference:
Blair

US 6,520,617

Feb. 18, 2003

Rejection
The Examiner makes the following rejection:
Appeal 2010-010588
Application 11/345,594

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Claims 16-19, 24-26, and 29 are rejected under 35 U.S.C. § 102(e) as
being unpatentable over Blair.

OPINION
Claim 16 requires, in relevant part, “forming an ejection element upon
the substrate[.]” The Examiner asserts that Blair discloses “forming an
ejection element (item 56) upon the substrate” wherein the substrate is item
12 in Blair Figure 1. Ans. 4.
Blair refers to item 56 (the ejection element per the rejection)
sometimes as “thin film heat resistors 56” and sometimes as “ink firing
resistors 56.” Blair, col. 2, lines 22-23 and line 48. Blair refers to item 12
(the substrate per the rejection) as “ink barrier layer 12.” Blair, col. 2, line
18.
Appellants argue that the relied-upon Blair structures 12 and 56 are
not arranged as required by claim 16 such that the limitation “forming an
ejection element upon the substrate” could be met. App. Br. 10 (emphasis
added). Specifically, Appellants point out that the resistors 56 are formed on
the thin film structure 11 of Blair and not “upon” the asserted substrate, ink
barrier layer 12. App. Br. 10.
Appellants are correct. Blair Figure 1 illustrates the resistors 56
formed upon substructure 11 in locations where the ink barrier layer 12 does
not extend due to the formation of ink chambers 19. See also Blair, col. 2,
lines 21-23 (“The thin film substructure 11 is formed pursuant to integrated
circuit fabrication techniques, and includes thin film heater resistors 56
formed therein [i.e., in the thin film substructure 11].”).
In response to Appellants’ argument, the Examiner does not dispute
that Blair discloses the resistors 56 directly on the substructure 11 as
Appeal 2010-010588
Application 11/345,594

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opposed to directly on the ink barrier layer 12 (substrate). Ans. 5. Instead,
the Examiner “notes that the claim does not require that the ejection element
be formed ‘directly’ on the substrate.” Ans. 5. But, Blair does not disclose
the resistors 56 directly or indirectly on the ink barrier layer 12.
The Examiner’s statement about the scope of the claim appears to
pertain to a factual situation that does not exist, i.e., that Blair discloses the
resistors 56 directly upon substructure 11, which itself is upon substrate
layer 12. Blair does not. Accordingly, we cannot sustain the decision to
reject independent claim 16 or the decision to reject claims 17-19, 24-26,
and 29, each of which depends from claim 16.

DECISION
The Examiner’s decision to reject claims 16-19, 24-26, and 29 is
REVERSED.

REVERSED