Ex Parte Kuwahara et al

Board of Patent Appeals and Interferences

Apr 16, 2010

10702661 (B.P.A.I. Apr. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SOICHI KUWAHARA, MINORU KOHNO,
and MASATO NAKAMURA
____________

Appeal 2009-003188
Application 10/702,661
Technology Center 2800
____________

Decided: April 16, 2010
____________

Before JOSEPH F. RUGGIERO, THOMAS S. HAHN, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 5-8. Claims 1-4 and 9-12 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Appeal Brief (filed July 10, 2007), the Answer
(mailed November 2, 2007), and the Reply Brief (filed December 27, 2007)
for the respective details. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived (see 37 C.F.R. §
41.37(c)(1)(vii)).

Appellants’ Invention
Appellants’ invention relates to a liquid-ejecting apparatus including a
liquid ejecting nozzle, and an element disposed within a liquid chamber for
generating energy for ejecting liquid contained in the liquid chamber from
the nozzle. The ejection amount of the liquid continuously ejected from the
nozzle is fixed or approximated at a constant corresponding to a
predetermined frequency band. The liquid is ejected by variably controlling
a drive frequency of a pulse signal fed to the energy generating element.
(See generally Spec. 7:3-17).
Claim 5 is illustrative of the invention and is reproduced as follows:
5. A liquid-ejecting apparatus comprising:
a nozzle member having a nozzle for ejecting liquid therefrom;
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a liquid chamber formed corresponding to the nozzle;
an element disposed within the liquid chamber for generating energy
for ejecting liquid contained in the liquid chamber from the nozzle as a
liquid-droplet group; and
an electric circuit unit for generating a pulse signal for feeding said
pulse signal to the element,
wherein the ejection amount of each liquid droplet of the liquid-
droplet group continuously ejected from the nozzle toward one landing point
is fixed or approximated at a constant corresponding to a frequency band of
the pulse signal of approximately 1kHz to 10kHz, and liquid is ejected by
controlling a drive frequency of the pulse signal which can be set within the
frequency band.

The Examiner’s Rejection
The Examiner relies on the following prior art references to show
unpatentability:
Hosono US 5,510,816 Apr. 23, 1996
Chang1 US 5,541,628 Jul. 30, 1996

Claims 5-8, all of the appealed claims, stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hosono.

ISSUES
The pivotal issues before us are whether the Examiner erred in
determining that Hosono discloses:

1 The Chang reference is not included in the Examiner’s rejection of any of
claims 5-8 but, rather, is cited as evidence in support of the rejection of
claim 8.
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a) the controlling of the drive frequency of a pulse signal applied
to an energy generating liquid ejecting element within a frequency band of
1kHz to 10kHz;
b) applying a negative pressure so that the surface of the liquid in
the liquid ejecting nozzle is not drawn back to the liquid chamber; and
c) the ejecting of liquid from the nozzle by heating the liquid to
generate bubbles.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Hosono discloses (Fig. 2; col. 4, ll. 11-25) an ink jet recording
head including a nozzle 4, an ink chamber 10, and energy generating
elements 1, 2, and 8 for ejecting the ink contained in the chamber.
2. Hosono also discloses (Figs. 21, 22; col. 9, ll. 30-37) that, in the
disclosed improved recording head drive method, high print quality will be
achieved because the ink jetting amount and speed will be constant when the
recording head drive frequency is within the 1kHz to 10kHz frequency
range.
3. Also disclosed by Hosono (col. 9, ll. 15-21) is the application of
negative pressure so that the surface of the ink in the nozzle is not drawn
back into the ink chamber.
4. Hosono further discloses (col. 9, ll. 4-7) that, when ink jetting
speed is low, the ink droplet becomes spherical and the dot formed on the
recording sheet is substantially circular.

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PRINCIPLES OF LAW
Anticipation
“It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim.” See In
re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Lindemann Maschinenfabrik
GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)). “Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”).

ANALYSIS
Claims 5 and 6
With respect to independent claim 5, Appellants’ arguments focus on
the contention that, in contrast to the claimed invention, the ink jet recording
head system described by Hosono has no disclosure of the controlling of the
drive frequency of a pulse signal which can be set within the frequency band
of approximately 1kHz to 10kHz. According to Appellants (App. Br. 7),
while Hosono recognizes that the ink jetting amount and speed become
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constant between the claimed 1kHz to 10kHz frequency band, Hosono does
not disclose the controlling of a drive frequency of a pulse signal which is
set within that frequency band.
We do not agree with Appellants. It is apparent to us that an
ordinarily skilled artisan reviewing Figures 21 and 22 in Hosono would
recognize that high quality printing can be achieved when the ink jetting
speed and ink jetting amount are kept constant, a condition which will occur
by controlling the drive frequency of the pulse signal between the 1kHz to
10kHz frequency band as illustrated in Figures 21 and 22. (FF 2). We
would further point out that it is well settled that even if a reference fails to
explicitly spell out every detail of a claimed invention, such a reference
would anticipate a claim if it discloses the claimed invention “‘such that a
skilled artisan could take its teachings in combination with his own
knowledge of the particular art and be in possession of the invention.’” In re
Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (citation omitted) (emphasis
omitted).
We acknowledge that Appellants at pages 3 and 4 of the Reply Brief,
in attempting to distinguish the claimed invention over Hosono, directs
attention to the fact that the language of claim 5 requires that the energy
generating element be disposed within the liquid chamber. This issue,
however, was raised for the first time on appeal in the Reply Brief and is
therefore deemed to be waived. See Optivus Tech., Inc. v. Ion Beam Appl’ns
S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an
appellant in its opening brief . . . is waived.”) (citation omitted) (internal
quotation marks omitted); see also Ex parte Scholl, No. 2007-3653, slip op.
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at 18 n.13 (BPAI Mar. 13, 2008) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf.
In view of the above discussion, since we find that the Examiner did
not err in determining that Hosono discloses all of the claimed limitations,
the Examiner’s 35 U.S.C. § 102(b) rejection of independent claim 5, as well
as dependent claim 6 not separately argued by Appellants, is sustained.

Dependent claim 7
We also sustain the Examiner’s anticipation rejection, based on
Hosono, of dependent claim 7. We find no error in the Examiner’s
determination (Ans. 4-6) that the claimed negative pressure application
feature is satisfied by Hosono’s disclosure (FF 3) of the application of
pressure based on the retreat position of the meniscus relative to the liquid
chamber.
As with the previously discussed rejection of claim 5, Appellants have
presented, at pages 5-9 of the Reply Brief, new arguments never before
presented that are directed to the alleged failure of Hosono to disclose that
the surface of the ink in the nozzle 4 is “not drawn back” toward the ink
chamber as claimed. As with the new arguments with respect to claim 5, we
also consider these new arguments presented for the first time in the Reply
Brief, to be waived.

Dependent claim 8
We do not sustain the Examiner’s anticipation rejection of dependent
claim 8, which is directed to the ejection of liquid from the nozzle by heating
liquid in the liquid chamber to generate bubbles. We agree with Appellants
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(App. Br. 10; Reply Br. 10-12) that the ink jet recorder described by Hosono
has no disclosure of the ejecting of ink through the generation of bubbles by
heating the ink in the ink chamber.
Even assuming, arguendo, that the Examiner (Ans. 4-6) is correct in
the finding that heat will be inherently generated when a voltage is applied
across a piezoelectric vibrator, there is no indication in Hosono that such
heating results in the ejection of ink from the nozzles.2 Rather, Hosono
discloses that ink is ejected by the compressing of the ink in a pressure
chamber by displacing a resilient plate through activation of a piezoelectric
vibrating element. Similarly, even if we accept the Examiner’s contention
that the spherical front end of the jetted ink droplet in Hosono (FF 4)
corresponds to the claimed generated bubble, there is no disclosure in
Hosono that ink is ejected by the formation of this bubble through heating of
the ink in the ink chamber.

CONCLUSION
Based on the findings of facts and analysis above, we conclude that
the Examiner’s anticipation rejection based on Hosono was not in error with
respect to claims 5-7, but was in error with respect to claim 8.

DECISION
The Examiner’s decision rejecting claims 5-8 under 35 U.S.C.
§ 102(b) is affirmed-in-part.

2 The Examiner cites the Chang reference as evidence in support of this
finding.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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