Ex Parte McCain et al

Board of Patent Appeals and Interferences

Oct 7, 2009

10783896 (B.P.A.I. Oct. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SANDRA HELTON McCAIN and JOHN MARK MEDLEY
____________________

Appeal 2009-012153
Application 10/783,896
U.S. Patent Publication 2005/0183629
Technology Center 1700
____________________

Decided: October 7, 2009
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
and RICHARD E. SCHAFER and RICHARD TORCZON, Administrative
Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL

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A. Statement of the case 1
Lexmark International, Inc. [hereinafter Lexmark], the real party in 2
interest, seeks review under 35 U.S.C. § 134(a) of a final rejection (mailed 3
10 October 2007). 4
The application was filed on 20 February 2004. 5
Claims 5, 7, and 11-14 are on appeal. 6
Claims 1-2 and 9-10 are also in the application, but have been 7
withdrawn from consideration. Final Rejection, page 2; see also the 8
Examiner's Office Action, page 2 (mailed 29 August 2006). 9
The following prior art is relied upon by the Examiner in the 10
Examiner's Answer: 11
Kanaya Patent 6,482,256 19 Nov. 2002
12
The reader should know that "et al." is not used in this opinion. 13
Kanaya is prior art under 35 U.S.C. § 102(b). 14
We have jurisdiction under 35 U.S.C. § 134(a). 15
B. Findings of fact 16
The following findings of fact are supported by at least a 17
preponderance of the evidence. 18
References to the specification are to the specification as filed and not 19
the U.S. Patent Publication. 20
Additional findings as necessary may appear in the Discussion portion 21
of the opinion. 22

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(1) Lexmark invention 1
Lexmark Figure 1 and Lexmark Figure 2 are reproduced below. 2
3
Lexmark Fig. 1 depicts a top, perspective view of a printhead with a cover 4
omitted where the printhead might contain inks of the Lexmark invention. 5
Fig. 2 depicts a bottom perspective view of the same printhead. 6
7

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Page 8:7-24 of the Specification explains: 1
Figures 1 and 2 are based on illustrations of U.S. Patent 2
No. 5,926,195, assigned to [Lexmark]. The cartridge shown is 3
illustrative of a printhead with which [the Lexmark] invention 4
may be employed. As shown in Fig. 1 the printhead 1 has three 5
chambers 3, 5, and 7 in which two dilute color inks and one 6
pigment black ink care [sic—are] kept. Similarly, in a separate 7
cartridge the three chambers 3, 5, and 7 each contain full 8
intensity inks of different colors. Orifices 9, 11, and 13 shown 9
in Fig. 2 permit the ink in each chamber to leave the chamber 10
for printing. Each orifice 9, 11, and 13 is in separate liquid 11
communication with one of the chambers 3, 5, and 7. As is 12
widely practiced, the printhead 1 has a thermal chip or other ink 13
discharge device (not shown) which receives ink from orifices 14
9, 11, and 13 and applies to ink in small dots or pels on the 15
media being imaged. 16
Ink exits the printhead 1 from the same side (the side 17
having orifices 9, 11, and 13 in FIG. 2) and generally from 18
locations close together. Moreover, during non-use the 19
printhead is brought to a location at which the exit ports are 20
capped to prevent evaporation of the ink. Accordingly, inks in 21
the typical printheads are subject to some moderate transfer of 22
ink between chambers, such as chambers 3, 5, and 7. In 23
accordance with [the Lexmark] invention, the dilute inks must 24

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be compatible with the black inks in the moderate amounts 1
which can be transferred across the printhead. 2
(2) Claim 5 3
Claim 5 depends from withdrawn independent claim 1. Claim 5, 4
re-written in independent form and reproduced from the claims appendix of 5
the Appeal Brief, reads [bracketed matter, italics, and some indentation 6
added]: 7
An inkjet printhead for inkjet printing comprising 8
[A] at least three separate chambers, each of said 9
chambers having an exit orifice, 10
[B] wherein said printhead contains an ink set, 11
[C] said ink set comprising at least three separate inks, 12
[D] each separate ink being contained in said separate 13
chambers, 14
[E] said ink in said chambers being subject to some 15
moderate entry of ink from the other of said chambers, 16
[F] said ink set comprising: 17
[1] a first dilute dye-based color ink of a first color 18
in a first of said chambers, 19
[2] a second dilute dye-based color ink of a second 20
color in a second of said chambers, and 21
[3] a black ink comprising black pigment 22
dispersed in water in a third of said chambers, 23
[G] said first ink and said second ink being compatible 24
with said black ink when in said black ink in moderate amounts 25

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[H] said ink set further comprising at least one separate 1
inkjet printhead containing: 2
[4] a first full intensity color ink having dye as 3
colorant, 4
[5] a second full intensity color ink having dye as 5
colorant, and 6
[6] a third full intensity color ink having dye as 7
colorant. 8
The issue on appeal centers around the italicized language. 9
(3) Summary of the claim 5 invention in the Appeal Brief 10
In the summary of the claimed subject matter in the Appeal Brief, 11
Lexmark identifies the following support in the specification for the subject 12
matter of claim 5—reproduced again with drawing numbers, footnotes and 13
references to the specification added: 14
An inkjet printhead 1 for inkjet printing comprising 15
[A] at least three separate chambers 3, 5, 7, each of said 16
chambers having an exit orifice 9, 11, 13 [specification, 17
page 8:9-14],1 18

1 Specification, page 8:9-14: As shown in Fig. 1 the printhead 1 has three
chambers 3, 5, and 7 in which two dilute color inks and one pigment black
ink care [sic] kept. Similarly, in a separate cartridge the three chambers 3, 5,
and 7 each contain full intensity inks of different colors. Orifices 9, 11, and
13 shown in Fig. 2 permit the ink in each chamber to leave the chamber for
printing. Each orifice 9, 11, and 13 is in separate liquid communication with
one of the chambers 3, 5, and 7.

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[B] wherein said printhead contains an ink set, 1
[C] said ink set comprising at least three separate inks, 2
[D] each separate ink being contained in said separate 3
chambers 3, 5, 7 [specification, page 8:9-10],2 4
[E] said ink in said chambers 3, 5, 7 being subject to 5
some moderate entry of ink from the other of said chambers 3, 6
5, 7 [specification, page 8:21-22],3 7
[F] said ink set comprising: 8
[1] a first dilute dye-based color ink of a first color 9
in a first [e.g., 3] of said chambers, 3, 5, 7 [specification, 10
page 2:23-25 and page 8:9-10],4 11
[2] a second dilute dye-based color ink of a second 12
color in a second [e.g., 5] of said chambers 3, 5, 7, and 13
[3] a black ink comprising black pigment dispersed 14
in water in a third [e.g., 7]of said chambers 3, 5, 7, 15

2 Specification, page 8:9-10: As shown in Fig. 1 the printhead 1 has three
chambers 3, 5, and 7 in which two dilute color inks and one pigment black
ink care [sic] kept.

3 Specification, page 8:21-22: [I]nks in the typical printheads are subject to
some moderate transfer of ink between chambers, such as chambers 3, 5,
and 7.

4 Specification, page 2:23-25: Additionally, this invention is such an ink
set contained in separate compartments 3, 5, 7, in a single ink jet printhead,
all inks in that printhead being compatible with the black ink. Specification,
page 8:9-10: As shown in Fig. 1 the printhead 1 has three chambers 3, 5,
and 7 in which two dilute color inks and one pigment black ink care [sic]
kept.

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[G] said first ink and said second ink being compatible 1
with said black ink when in said black ink in moderate 2
amounts,5 3
[H] said ink set further comprising at least one separate 4
inkjet printhead 1 containing: 5
[4] a first full intensity color ink having dye as 6
colorant [specification, page 3:1-3 and page 8:11-12],6 7
[5] a second full intensity color ink having dye as 8
colorant, and 9
[6] a third full intensity color ink having dye as 10
colorant. 11

5 Lexmark does not provide a precise numerical definition for "moderate
amounts."

6 Lexmark cites to page 3:1-3 and page 8:11-12 of the Specification.
Appeal Brief, page 9. We believe Lexmark meant to cite to Specification,
page 2:25 through page 3:2 and page 8:11-12. Specification, page 2:25
through page 3:2: This invention also encompasses a dye set of full intensity
color inks separated from a printhead having at least two dilute dye-based
inks and dispersant-dispersed pigment ink. Specification, page 8:11-12:
Similarly, in a separate cartridge the three chambers 3, 5, and 7 each
contain full intensity inks of different colors (italics added).

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(4) Examiner's rejection 1
The Examiner rejected claims 5 and 7 under 35 U.S.C. § 102(b) as 2
anticipated by Takemoto (U.S. Patent 6,075,069). Final Rejection, page 3. 3
The Examiner also rejected claims 5, 7, and 11-14 under 35 U.S.C. 4
§ 102(b) as anticipated by Kanaya. Final Rejection, page 4. 5
The rejection based on Takemoto has been withdrawn. Examiner's 6
Answer, page 3. 7
(5) Lexmark argument 8
While Lexmark mentions each claim on appeal in the Appeal Brief 9
and points out how claims 7 and 11-14 further limit, we have been unable to 10
find any argument why those claims are considered to be separately 11
patentable apart from claim 5. 12
Accordingly, we will address claim 5. 37 C.F.R. § 41.37(c)(1)(vii) 13
(2008). Claims 7 and 11-14 stand or fall with claim 5. 14
Lexmark argues that Kanaya does not teach dilute color inks and 15
black ink each in separate chambers in the same printhead. Appeal Brief, 16
page 16. 17
Emphasizing the argument in difference terms, Lexmark says that 18
Kanaya simply does not disclose expressly and/or inherently a pigment 19
black in the same printhead with two dilute color inks. Id. 20
Reemphasizing the argument, Lexmark further states that since 21
Kanaya does not disclose an ink set for inkjet printing comprising at least 22
two dilute color inks and a black ink, wherein the dilute color inks and the 23
black ink are each in separate chambers in the same printed and further 24
wherein the dilute inks are compatible with the black inks in the moderate 25

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amounts which can be transferred across the printhead, Kanaya does not 1
describe every element of claim 5. Appeal Brief, page 17. 2
(6) The issue 3
In light of the argument presented on appeal, the issue becomes 4
whether Kanaya describes an ink set for inkjet printing comprising at least 5
two dilute color inks and a black ink, wherein the dilute color inks and the 6
black ink are each in separate chambers in the same printhead and further 7
wherein the dilute inks are compatible with the black ink in the moderate 8
amounts which can be transferred across the printhead. 9
(7) Kanaya 10
The Kanaya invention relates to color ink sets which are said to have 11
excellent color reproduction and lightfastness. Col. 1:8-9 12
According to one aspect of the Kanaya invention, there is provided a 13
magenta ink set comprising two magenta ink compositions different from 14
each other in color density, [1] a magenta ink composition with higher color 15
density and [2] a magenta ink composition with lower color density. 16
Col. 2:18-22. 17
According to a further aspect of the Kanaya invention, there is 18
provided an ink set comprising: [1] a yellow ink composition; [2] two 19
magenta ink compositions different from each other in color density, a 20
magenta ink composition with higher color density and a magenta ink 21
composition with lower color density; and [3] two cyan ink compositions 22
different from each other in color density, a cyan ink composition with 23
higher color density and a cyan ink composition with lower color density. 24
Col. 3:46-55. 25

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With respect to a black ink composition, Kanaya states (col. 21:11-24) 1
[bracketed matter added]: 2
According to the present invention, the ink set 3
comprising [1] a yellow ink composition, [2] two magenta ink 4
compositions different from each other in color density, and 5
[3] two cyan ink compositions different from each other in 6
color density may further comprise [4] a black ink composition. 7
Any . . . pigment capable of yielding a black print may be 8
used as a colorant contained in the black ink composition 9
usable in the present invention. . . . Examples of pigments 10
usable herein include black pigments such as carbon black. 11
In connection with a description of lightfastness (Test 1D), Kanaya 12
states (col. 45:9-31) [bracketed and italics matter added]: 13
For ink sets 3d to 6d, 8d, and 10d, [1] deep magenta, 14
[2] light magenta, [3] yellow, [4] deep cyan, and [5] light cyan 15
inks were loaded into respective ink chambers in an ink 16
cartridge for PM-770C (manufactured by Seiko Epson 17
corporation [sic]), and blotted images of magenta, yellow, cyan, 18
red, blue, green, and composite black were printed on the 19
recording media . . . . 20
[P]rinting was carried out under conditions controlled 21
such that [1] the red was constituted by the deep magenta ink, 22
the light magenta ink, and the yellow ink, [2] the blue was 23
constituted by the deep magenta ink, the light magenta ink, the 24
deep cyan ink, and the light cyan ink, [3] the green was 25

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constituted by the yellow ink, the deep cyan ink, and the light 1
cyan ink, and [4] the composite black was constituted by the 2
deep magenta ink, the light magenta ink, the yellow ink, the 3
deep cyan ink, the light cyan ink, and the black ink. 4
For ink sets 1d, 2d, 7d, and 9d, [1] yellow, and [2] cyan 5
inks were loaded into respective ink chambers in an ink 6
cartridge for MJ-930C (manufactured by Seiko Epson 7
Corporation), and blotted images of magenta, yellow, cyan, red, 8
blue, green, and composite black were printed on . . . recording 9
media . . . . 10
C. Discussion 11
(1) Lexmark argument 12
As noted earlier, Lexmark's sole argument is that Kanaya does not 13
describe a first dilute color ink, a second color ink and black ink in separate 14
chambers of the same printhead. Appeal Brief, pages 16-17. 15
The Examiner found otherwise, citing column 21 and column 45 of 16
Kanaya, which we reproduced above. 17
Lexmark's argument is brief. Apparently, Lexmark does not think the 18
column 45 portion of Kanaya "anticipates" because it does not describe 19
black ink in a separate chamber. 20
(2) Kanaya 21
Kanaya explicitly states in column 21 that the ink set composition 22
may include black ink—in addition to yellow ink, two magenta inks and two 23
cyan inks. The fact that the five ink embodiment of column 45 does not 24
include a black ink chamber does not destroy the anticipatory disclosure in 25

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column 21 that the ink set may include black ink. In this respect, Kanaya 1
reveals that cartridges with six chambers are known. Col. 44:67 (cartridge 2
for six colors, manufactured by Seiko Epson). One skilled in the art is 3
therefore taught that a six chamber cartridge may be used in which one 4
chamber contains black ink in the form of a pigment. 5
Kanaya, therefore, describes two embodiments. In a first, black print 6
is the result of a composite black from combinations of dyes. Col. 45. In a 7
second, black print is a result of a black ink composition inter alia from a 8
pigment such as carbon black. Col. 21. 9
The second Kanaya embodiment describes the limitation which 10
Lexmark says is missing. It follows that Lexmark has failed to show that the 11
Examiner erred in rejecting the claims on appeal. 12
(3) Lexmark's compatibility argument 13
Lexmark also argues that Kanaya does not describe a black ink that is 14
compatible in moderate amounts with the other inks. Kanaya and Lexmark 15
both describe the use of carbon black based inks. Specification, page 3:6-11 16
and Kanaya, col. 21:23-24. Lexmark has failed to submit evidence showing 17
that the carbon black of Kanaya is not compatible in moderate amounts with 18
the other Kanaya inks. As Lexmark should know, the USPTO does not have 19
testing facilities to look into compatibility characteristics of inks. In re 20
Brown, 459 F.2d 531, 535 (CCPA 1972). 21
(4) Arguments waived by Lexmark 22
We have noted that Lexmark restricted the arguments on appeal to 23
those set out above. To the extent that other arguments might have been, but 24
were not made, those other arguments are waived. For example, Lexmark 25

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has not addressed the "at least one separate inkjet printhead" limitation of 1
claim 5. Because Lexmark did not address that limitation, the Examiner had 2
no occasion to address it and we have no occasion to address a limitation not 3
called to the attention of the Examiner. 4
With respect to claims 7 and 11-14, Lexmark identifies additional 5
limitations. However, Lexmark does not explain why those additional 6
limitations render claims 7 and 11-14 patentable apart from claim 5. "A 7
statement which merely points out what a claim recites will not be 8
considered an argument for separate patentability of the claim." 37 C.F.R. 9
§ 41.37(c)(1)(vii) (2008), last sentence. Claims 7 and 11-14 therefore fall 10
with claim 5. 11
(5) Additional comment 12
We have found that Lexmark has not established on appeal—as was 13
its burden—that the Examiner erred in rejecting claim 5 as anticipated. 14
Had we found otherwise, we would have made a new ground of 15
rejection under 35 U.S.C. § 103 based on Kanaya. 37 C.F.R. § 41.50(b) 16
(2008). However, since we affirm the § 102 rejection, we exercise 17
discretion not to also make a § 103 rejection because it would result in 18
reopening prosecution and we see no need or reason for doing so. 19

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D. Decision 1
Lexmark has not sustained its burden on appeal of showing that the 2
Examiner erred in rejecting the claims on appeal as being unpatentable under 3
35 U.S.C. § 102(b) over Kanaya. 4
Upon consideration of the appeal, and for the reasons given herein, 5
it is 6
ORDERED that the decision of the Examiner rejecting 7
claims 5, 7, and 11-14 under 35 U.S.C. § 102(b) over Kanaya is affirmed. 8
FURTHER ORDERED that no time period for taking any 9
subsequent action in connection with this appeal may be extended under 10
37 C.F.R. § 1.136(a)(1)(iv) (2008). 11

AFFIRMED

KMF

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LEXMARK INTERNATIONAL, INC.
Intellectual Property Law Department
740 West New Circle Road, BLDG. 082-1
Lexington, KY 40550-0999