Ex Parte Gonzales et al

Patent Trial and Appeal Board

Oct 27, 2016

12994554 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/994,554 05/13/2011
22879 7590 10/31/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Curt Gonzales
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.
82564410 4185
EXAMINER
DESAI, KAUSHIKKUMAR A
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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 CURT GONZALES, DANIEL FRADL,
MARK A. RAMSDELL, and EDWARD SAVAGE
Appeal2014-005936
Application 12/994,5541
Technology Center 3700
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-9 and 11-20; claim 10 is withdrawn. See Appeal
Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
1 "The real party in interest is Hewlett-Packard Development Company, LP,
a limited partnership established under the laws of the State of Texas and
having a principal place of business at 11445 Compaq Center West Drive,
Houston, TX 77070, U.S.A. (hereinafter 'HPDC'). HPDC is a Texas limited
partnership and is a wholly-owned affiliate of Hewlett-Packard Company, a
Delaware Corporation, headquartered in Palo Alto, CA. The general or
managing partner ofHPDC is HPQ Holdings, LLC." Appeal Br. 2.
Appeal2014-005936
Application 12/994,554
We AFFIRM.
ILLUSTRATIVE CLAIM
7. A fluid container, comprising:
a housing having a chamber therein for holding a fluid
and an outlet from the chamber;
a cap capping the outlet, the cap comprising a shell and
an elastomeric liner lining a recessed part of the shell, the liner
including:
a cylindrical sidewall;
a floor;
a first annular groove in the floor receiving the
outlet;
a circular contact surface on the floor facing the
sidewall and extending around one side of the first
annular groove, the contact surface contacting an interior
surface of the outlet; and
a second annular groove in the floor inside of and
concentric with the first annular groove, the second
groove configured to allow the floor to flex in toward the
groove when pressure is applied to the contact surface;
wherein said contact surface includes a curved
surface with a radius of curvature that varies around a
circumference of said circular contact surface.
CITED REFERENCES
The Examiner relies upon the following references:
Gray et al. us 2,264, 792 Dec. 2, 1941
(hereinafter "Gray")
Koch et al. us 5,555,988 Sept. 17, 1996
(hereinafter "Koch")
Whitley US 7,163,115 B2 Jan. 16,2007
2
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Application 12/994,554
0 hmi et al.
(hereinafter "Ohmi")
So et al.
(hereinafter "So")
EP 0 029 729 Al June3, 1981
JP 10-291326 Nov. 4, 1998
REJECTIONS
I. Claims 7-9 and 11-202 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter that the Appellants regard as the
invention. 3
II. Claims 1, 2, 7, 9, 11-16, 18, and 19 are rejected under
35 U.S.C. § 103(a) as unpatentable over So and Ohmi. 4
III. Claims 17 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over So, Ohmi, and Whitley.
IV. Claims 3, 4, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over So, Ohmi, and Koch.
V. Claims 5 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over So, Ohmi, and Gray.
2 Claim 10 is withdrawn. See Appeal Br. 4. The inclusion of claim 10 in the
Final Office Action (at page 2) is regarded as inadvertent.
3 The Examiner rejects claims 7-20 under either 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph. Final Action 2. Because the
Appellants' application was filed before September 16, 2012, the pre-AIA
version of the statute is applied herein.
4 Although omitted from the heading (Final Action 3), the Examiner's
discussion addresses claim 7 (id. at 4--5). Such omission is regarded as
inadvertent. Additionally, the inclusion of claim 10 in the Final Office
Action (at page 3) is regarded as inadvertent.
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Application 12/994,554
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Rejection I
Independent claim 7 and dependent claims 8, 9, and 11-20 stand
rejected under 35 U.S.C. § 112, second paragraph, as being indefinite based
upon two separate reasons - each of the reasons relating to distinct
limitations of claim 7. Final Action 2. As explained below, the Appellants'
argument regarding one limitation at issue ("the contact surface") is
persuasive of error in the rejection, but the Appellants' argument regarding
the other limitation at issue ("the groove") is not persuasive. Accordingly,
the rejection of claims 7-9 and 11-20 under 35 U.S.C. § 112, second
paragraph, is sustained.
1. "the contact surface"
According to the Final Office Action, the phrase "the contact surface"
renders claim 7 indefinite because it is unclear whether a new element is
introduced therewith, or whether antecedent basis resides in the earlier
recitation of "a circular contact surface" (emphasis added). See Final
Action 2; see also Answer 2-3. After the appearance of "the contact
surface," claim 7 recites both "said contact surface" and "said circular
contact surface" (emphasis added), which contribute to the uncertainty. See
Final Action 2; see also Answer 2-3.
The Appellants argue that, because there is only one "contact surface"
recited in claim 7, a person of ordinary skill in the art would understand that
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Application 12/994,554
the initial recitation of "a circular contact surface" is the referent for "the
contact surface," "said contact surface," and "said circular contact surface."
Appeal Br. 10-11; Reply Br. 4.
The Appellants' argument is persuasive. A person of ordinary skill in
the art would understand that the recitation of "a circular contact surface"
provides antecedent basis for "the contact surface." See Ex parte Porter) 25
USPQ2d 1144) 1145----46 (BPAI 1992) Ca controlled stream of fluid~~
provided reasonable antecedent basis for "the controlled flukr); see also
l\1PEP § 2173.05( e ), The rejection of claim 7 on this reason is not sustained.
2. "the groove"
The Final Office Action rejects claim 7 as indefinite, because it is
unclear whether the phrase "the groove" refers to "a first annular groove" or
"a second annular groove." See Final Action 2; see also Answer 2-3.
The Appellants contend that, in the context of claim 7, it would be
clear to one of skill in the art that "the groove" refers to the "second annular
groove." Appeal Br. 12; Reply Br. 5.
The Appellants' argument is not persuasive. There is no textual
indication in claim 7 that "the groove" refers to the "second annular groove,"
rather than the "first annular groove." See MPEP § 2173.05(e) ("[I]f two
different levers are recited earlier in the claim, the recitation of 'said lever'
in the same or subsequent claim would be unclear where it is uncenain
which of the tvvo levers vvas intended.") Adding to the confusion, the
expressions "a second annular groove," "the first annular groove," and "the
second groove" all appear in the same paragraph as - but prior to - "the
groove." Therefore, the rejection of claim 7 on this basis is sustained.
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Application 12/994,554
Rejection II
Independent Claim 1 and Dependent Claim 2
Independent claim 1 stands rejected under 35 U.S.C. § 103(a), based
upon So and Ohmi - Ohmi being relied upon particularly for the recited
features of the "cap" including "a void adjacent to the contact surface such
that a portion of the cap underlying the contact surface may flex into the
void." See Final Action 3--4.
The Appellants argue that it would not have been obvious to combine
the teachings of So and Ohmi because Ohmi does not relate specifically to a
fluid container "for an inkjet printing device," as claim 1 recites, but "merely
teaches a twist-on cap for the top of any liquid bottle." Appeal Br. 17. The
Appellants remark that, despite the significant length of time since Ohmi' s
publication, "there is no showing that such technology as Ohmi is alleged to
teach has ever been applied to inkjet fluid containers." Id.
Further, the Appellants draw attention to the Specification's statement
that "[i]n a conventional shipping cap seal, there is no such relief to the
inside of the contact surface when the container outlet is pressed into the
elastomeric seal." Id. (quoting Spec. i-f 17). According to the Appellants,
owing to the duty of candor, weight must be given to such a statement in the
Specification that constitutes factual evidence of nonobviousness. Appeal
Br. 17 (citing In re Soni, 54 F.3d 746 (Fed. Cir. 1995)).
In response, the Examiner's Answer states that the Appellants'
assertions - including that provided in paragraph 17 of the Specification -
are conclusory and unsupported by documentary evidence; therefore, such
assertions are not substantively adequate to rebut the rejection. Answer 8-9.
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Application 12/994,554
Indeed, the Appellants offer no viable explanation for the position that
Ohmi may not be relied upon in the rejection. For example, there is no
attempt to demonstrate that Ohmi might constitute non-analogous art, or that
it teaches away from the combination. Further, the Appellants' position
contradicts the admission that Ohmi teaches a "cap for the top of any liquid
bottle" (Appeal Br. 17 (emphasis added)) and, thus, could apply to So -
which the Examiner cites for disclosing an inkjet printer fluid bottle (see
Final Action 3).
The Appellants' citation to Soni is inapposite. Contrary to the
Appellants' view (see Appeal Br. 17), the existence of the duty of candor
does not mean that the Appellants' opinion regarding the operation of
"conventional" devices (such as the referenced statement in paragraph 17 of
the Specification) may negate factual findings regarding the teachings of a
prior art reference - and Soni does not state otherwise. See Soni, 54 F.3d at
1750-51.
In view of the foregoing reasons, the Appellants' argument is
unpersuasive of error in the rejection of claim 1.
The Appellants rely upon the same argument, in regard to dependent
claim 2. Appeal Br. 18. Accordingly, the rejection of claims 1 and 2 under
35 U.S.C. § 103(a) is sustained.
Independent Claim 7 and
Dependent Claims 9, 11, 14-16, 18, and 19
The Appellants contend that the Examiner erred in rejecting claim 7
because neither of the cited references (whether alone or in combination)
teaches or suggests claim 7' s "elastomeric liner" including "a circular
contact surface on the floor facing the sidewall and extending around one
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side of the first annular groove," "wherein said contact surface includes a
curved surface with a radius of curvature that varies around a circumference
of said circular contact surface." Appeal Br. 14--16.
Specifically, the Appellants argue that, contrary to the Examiner's
findings (see Final Action 4--5), So lacks the recited "circular contact
surface" and its "curved surface with a radius of curvature that varies around
a circumference" thereof (see Appeal Br. 12-16; Reply Br. 6-11). The
Appellants (Appeal Br. 15; Reply Br. 10) point out that So's "ellipse
truncated cone lobe 13" and "ellipse truncated cone slant face 14" (So i-f 41)
are both non-circular; thus, neither possesses the claimed features of the
claimed "circular contact surface." The Appellants assert that "an ellipse or
oval is not a circle." Reply Br. 10. In addition, the Appellants contend that
these identified elements of So also lack the recited "radius of curvature that
varies around a circumference of said circular contact surface." Appeal
Br. 13-14; Reply Br. 10.
The Examiner's Answer interprets the "circular contact surface"
limitation, in view of the Specification, and concludes that So teaches the
limitation. Comparing the dimensions of "contact surface 64," as depicted
in Figures 8 and 11, with its dimensions, as depicted in Figures 9 and 10, the
Examiner finds that the disclosed "contact surface 64" is not circular, but
instead possesses what the Examiner calls a "circular oval shape."
Answer 5. Further, the Examiner finds that the "contact surface 64" seals a
"slant[ ed]" outlet of the container disclosed in the Specification. Id. (citing
Spec., Figs. 5-11). In view of these findings, the Examiner determines that
the "structural similarity" between the devices in So and the Appellants'
Specification establishes a prima facie case of obviousness. Id. at 5-7.
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Application 12/994,554
The Examiner errs in the interpretation of the recited "circular contact
surface." Although the drawings that accompany a patent application may
be relied upon for purposes of claim construction, the Federal Circuit has
admonished that "patent drawings do not define the precise proportions of
the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue." Hockerson-Halberstadt, Inc.
v. Avia Group Int'!, 222 F.3d 951, 956 (Fed. Cir. 2000). See also In re
Wright, 569 F.2d 1124, 1127 (CCPA 1977) ("Absent any written description
in the specification of quantitative values, arguments based on measurement
of a drawing are of little value.") The hazards of extracting meaning from
patent drawings are apt to be compounded where, as here, one drawing is
measured against another, so as to discern the shape of an item depicted in
both drawings.
Moreover, the "circular contact surface" limitation is present in the
version of claim 7 included with the original application (see Spec. 9), such
that the Specification discloses an embodiment having a "contact surface"
that is indisputably circular, notwithstanding whatever may be elicited from
the drawings.
Furthermore, textual analysis of the claim language at issue suggests
that the "circular contact surface" should be understood to be circular, as
opposed to a "circular oval shape" or any other non-circular form. The use
of the word "circular" stands in contrast with the less-exacting term
"annular" that is used in various claims (see claims 4, 7, 14, 16-18, 20) and
in the Specification (see Spec. i-fi-f 16, 21) to refer to various features of the
disclosed or claimed embodiments. Likewise, the word "oval" is used
explicitly in claim 19 ("the outlet has an oval shape") and in the
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Specification (see id. if 14 ("an inner, facing surface 30 of outlet 20
transitions from a circular outer part 32 at rim 26 to an oval inner part 34 at
opening 28" (emphasis added))). Such specific word choices further support
the understanding that the "circular contact surface" of claim 7 should be
construed as a circular feature.
We agree with the Appellants' assertion that "an ellipse or oval is not
a circle." Reply Br. 10. Consequently, the "circular contact surface" claim
limitation does not read on either of So's eccentric elliptical elements - the
"ellipse truncated cone lobe 13" and the "ellipse truncated cone slant face
14" (see So if 41, Fig. 3b) - such that the Appellants' argument is
persuasive of error in the rejection of claim 7.
The Appellants also rely upon the arguments presented for claim 7
with regard to the rejection of its dependent claims 9, 11-16, 18, and 19.
See Appeal Br. 16. Accordingly, the rejection of claims 7, 9, 11-16, 18, and
19 under 35 U.S.C. § 103(a) is not sustained.
Rejection III
In regard to dependent claims 17 and 20, the Appellants rely upon the
arguments presented in regard to independent claim 7. Appeal Br. 20.
The additional reference (Whitley) relied upon in the rejection of
claims 17 and 20 (see Final Action 6-7) does not cure the deficiency in the
Examiner's rejection of claim 7. Accordingly, the rejection of claims 17 and
20 under 35 U.S.C. § 103(a) is not sustained.
Rejection IV
Independent claim 3 recites, in part, a "fluid container" comprising a
"cap" having a "floor" with a "protruding part" and "a ridge formed of a
material on the floor, said ridge being located under said protruding part so
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Application 12/994,554
as to minimize knit lines during formation of said protruding part"
(emphasis added).
According to the Specification, a knit line is crack created during
injection molding of an elastomeric part, when separate flows of the
elastomer meet within the mold and solidify at an interface. Spec. i-f 21.
Knit lines in a sealing member can compromise the integrity of a seal
formed therewith. Id. Referring to Figure 14 thereof, the Specification
states: "It has been observed that ridge 70 in shell body cavity 46 will
reduce the risk of knit lines forming in ridge 62 at contact surface 64
compared with the stepped topography for cavity bottom 74 shown in Figs.
8-11." Id.
The Appellants argue (Appeal Br. 22; Reply Br. 17-18) that the
Examiner erred in rejecting claim 3 because the identified corresponding
structure of the Koch reference ("downwardly extending edge (2)" (Koch,
col. 2, 1. 3)) is not a "ridge" and there is no teaching or suggestion that it
might "minimize knit lines" during the formation of Koch structure
corresponding to the claimed "protruding part," per claim 3.
According to the Examiner, the "ridge" is "functionally claimed to
minimize knit lines during formation of said protruding part" (Final
Action 8) and recognizing another advantage that "would flow naturally
from following the suggestion of the prior art" cannot establish patentability
where the claimed structure is obvious (Answer 10).
The Appellants' argument is not persuasive of error in the rejection of
claim 3 because the Appellants have not identified features of the claimed
embodiment that might distinguish it from the prior art structure. Although
features of an apparatus may be recited either structurally or functionally,
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claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997). See also Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) ("[A]pparatus claims cover what
a device is, not what a device does.")
In regard to dependent claims 4 and 6, the Appellants rely upon the
same arguments presented for independent claim 3. See Reply Br. 18.
Consequently, the rejection of claims 3, 4, and 6 under 35 U.S.C. § 103(a) is
sustained.
Rejection V
In regard to dependent claims 5 and 8, the Appellants rely upon the
arguments presented in regard to their respective independent claims -
claims 3 and 7. Appeal Br. 23.
The additional reference (Gray) relied upon in the rejection of claim 8
(see Final Action 9) does not cure the deficiency in the Examiner's rejection
of claim 7.
Accordingly, the rejection of claim 5 (depending from claim 3) under
35 U.S.C. § 103(a) is sustained and the rejection of claim 8 (depending from
claim 7) under 35 U.S.C. § 103(a) is not sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 7-9 and 11-20
under 35 U.S.C. § 112, second paragraph.
We AFFIRM the Examiner's decision rejecting claims 1---6 under
35 U.S.C. § 103(a).
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We REVERSE the Examiner's decision rejecting claims 7-9 and 11-
20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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