Ex Parte Nielsen et al

Patent Trial and Appeal Board

Sep 21, 2017

11505258 (P.T.A.B. Sep. 21, 2017)

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.
11/505,258 08/15/2006 Jeffrey A. Nielsen 82224515 5217
22879
HP Tnr
7590 09/25/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
LEGESSE, HENOK D
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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
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y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY A. NIELSEN, CRAIG A. OLBRICH,
RICHARD W. SEAVER, and DAVID R. OTIS
Appeal 2016-007055
Application 11/505,2581
Technology Center 2800
Before: ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
SHELDON M. McGEE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 20—39.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The real party in interest is listed as Hewlett-Packard Development
Company, LP, which is said to be a limited partnership and wholly-owned
affiliate of Hewlett Packard Company (Appeal Brief filed October 29, 2015,
hereinafter “Appeal Br.,” 2).
2 Appeal Br. 8—24; see also Reply Brief filed July 8, 2016, hereinafter
“Reply Br.,” 2—22; Examiner’s Answer entered May 11, 2016, hereinafter
“Ans.,” 2—20; and Final Office Action entered May 11, 2015, hereinafter
“Final Act.,” 2-12.
Appeal 2016-007055
Application 11/505,258
I. BACKGROUND
This is the second appeal to the Patent Trial and Appeal Board
(“PTAB”) in the current application. In the first appeal, the PTAB panel
affirmed the Primary Examiner’s final decision to reject then-pending claims
1—15 and 19 (Decision entered September 3, 2014). Following continued
examination of the new claims (Request for Continued Examination, filed
October 31, 2014), and a subsequent final rejection of the claims, the current
appeal ensued.
The subject matter on appeal relates to an inkjet material dispenser
system (Specification filed August 15, 2006, hereinafter “Spec.,” 14;
Abstract). Representative claim 20 is reproduced from page 26 of the
Appeal Brief (Claims Appendix), with key limitations highlighted in bolded
italics, as follows:
20. An inkjet material dispenser system, comprising:
a printhead member comprising at least one drop ejector,
wherein said drop ejector comprises a chamber layer defining a
chamber for receiving a fluid for ejection, an orifice layer
defining an orifice for ejecting a drop of the fluid, and a
mechanism for ejecting a single drop of the fluid from the
chamber through the orifice; and
wherein an initial velocity of an ejected drop is at least 15
meters/second (m/s); and
an initial mass of the ejected drop is 75 to 270 nanograms
(ng).
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections under pre-AIA
35 U.S.C. § 103(a):
A. Claims 20—22, 24, 25, 27, 30-32, and 34—38 as unpatentable
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over Tachihara et al.3 (hereinafter “Tachihara”) in view of the
Appellants’ admitted prior art (hereinafter “AAPA”);
B. Claims 23 and 33 as unpatentable over Tachihara, AAPA, and
Raman et al.4 (hereinafter “Raman”);
C. Claims 26, 28, 29, and 39 as unpatentable over
Tachihara, AAPA, and Asai;5 and
D. Claim 38 as unpatentable over Tachihara, AAPA, and
Nagai et al.6 (hereinafter “Nagai”).
(Ans. 2—20; see also Final Act. 2—12.)
III. DISCUSSION
Rejection A. The Appellants provide various arguments under
separate headings for claims 20, 31, 35, and 36. Therefore, we address these
claims separately pursuant to 37 C.F.R. § 41.37(c)(l)(iv). As provided by
this rule, however, all other claims (i.e., claims 21, 22, 24, 25, 27, 30, 32, 34,
37, and 38) stand or fall with claim 20, 31, or 36.
1. Claim 20
The Examiner finds that Tachihara describes an inkjet material
dispenser system including every limitation recited in claim 20, except for
the requirement that “an initial mass of the ejected drop is 75 to 270
nanograms (ng)” (Ans. 2—3). The Examiner finds, however, that the AAPA
shows prior art thermal inkjet dispenser systems ejecting droplets having an
initial mass (e.g., 220 ng) within the range specified in claim 20 (id. at 3,
3 EP 0 936 070 A2, published August 18, 1999.
4 US 4,730,197, issued March 8, 1988.
5 US 5,218,376, issued June 8, 1993.
6 US 2002/0135650 Al, published September 26, 2002.
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13). Based on these findings, the Examiner concludes that a person having
ordinary skill in the art would have modified Tachihara’s system to eject
droplets having masses corresponding to those in the AAPA in order “for
instance to attain prescribed image resolution/s and print speed” {id. at 3).
According to the Examiner, a person having ordinary skill in the art would
have known that heavier mass droplets would increase printing speed but
lower image resolution or quality and, therefore, would have routinely
determined an appropriate droplet mass that balances printing speed against
image resolution or quality {id. at 13).
The Appellants point out that the Examiner’s articulated reason for
combining the references is based on “scaling up the Tachihara system to
use substantially larger droplets” (Appeal Br. 9). The Appellants contend
that a person having ordinary skill in the art would not have modified
Tachihara in the manner proposed by the Examiner because that person
would have known that “scaling of the Tachihara system often results in new
failure modes due to the larger impacts of non-linear factors such as friction
and surface tension” {id. at 10 (citing Tachihara 19)). According to the
Appellants {id.), “one of ordinary skill in the art would not reasonably
expect that the system of Tachihara or the AAPA could be scaled without
significant modification.” Furthermore, the Appellants argue that the “[t]he
cited references themselves disagree with the [Examiner’s articulated]
motivation for combination” because “larger droplets do not increase image
resolution but rather decrease image resolution, the opposite result of the
claimed motivation to combine” {id. at 11 (citing Tachihara 1 5)).
The Appellants’ arguments fail to identify a reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
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Referring to Figures 3(a)-(g), Tachihara teaches that liquid droplet
volume is determined by the ejection head orifice size (Tachihara 137). In
the particular embodiment shown in these figures, Tachihara teaches that the
volume is “made to be no more than 15xl0'15 m3” (id.). Tachihara also
discloses embodiments in which the horizontal distance across the orifice is
22 pm and the volumes are less than 15x1 O'15 m3 (Tachihara 1 60,1 63
(Table 1), 178 (Table 2), and 1 84). Based on the disclosed ink density,
1040 kg/m3 (Tachihara 1 62), Tachihara’s liquid droplets would appear to
have masses lower than 75 ng—the lower limit of the range recited in claim
20.
Nevertheless, Tachihara supports the Examiner’s position that a
person having ordinary skill in the art would have determined—by routine
experimentation—an appropriate liquid droplet volume or mass depending
on the ejection head orifice size in order to achieve the desired balance of
printing speed versus image resolution (Tachihara Tflf 5—9). Specifically, in
discussing prior art, Tachihara teaches that droplets with volumes less than
1.5xl0'10 m3 are considered to be “extremely small liquid droplets”
(Tachihara 19) for “extremely high quality images” (Tachihara 1 5).
Indeed, the AAPA is consistent with such a finding (see, e.g., Traditional TIJ
3 in which the droplet mass was 220 ng) (Spec. 130). Tachihara teaches
that, in order to obtain high quality images, “liquid droplets of an extremely
small volume (for example, 1.5xl0'10 m3 or less)” must be deposited on the
recording medium at an extremely high density (Tachihara | 5). Tachihara
teaches, however, that such high quality images reduce printing speed,
although the reduction in printing speed can be prevented by increasing
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ejection frequency, which would require higher reliability (Tachihara 5—
7, and 9).
Thus, although Tachihara’s invention relates primarily to ejectors that
eject relatively small droplets (114), Tachihara’s disclosure as a whole
informed a person having ordinary skill in the art that droplet mass or
volume, depending on other variables (e.g., ink density, ejection orifice size,
printing speed, and/or quality of image resolution desired), is a result-
effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed.
Cir. 2012) (“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.”). Taking into
account the tradeoff between printing speed and image quality desired, we
conclude that a person having ordinary skill in the art would have
determined an appropriate liquid droplet mass for a given ink and given
ejection head orifice size, including droplet masses that fall within the range
recited in claim 20—e.g., 220 ng as disclosed for Traditional TIJ 3 discussed
in the AAPA (Spec. 130)—as a matter of routine experimentation. Applied
Materials, 692 F.3d at 1295 (reaffirming the principle that the discovery of
an optimum value of a result-effective variable is within the level of the
ordinary skill in the art).
For these reasons, we sustain the Examiner’s rejection of claim 20.
2. Claim 31
Independent claim 31 includes the limitation “an orifice thickness is
20 to 40 micrometers” (Appeal Br. 28 (Claims App.)).
The Examiner finds that one of the sides shown for “So” in
Tachihara’s Figure 2b and Table 1 corresponds to the “orifice thickness”
recited in claim 31 (Ans. 15). The Appellants contend that “orifice
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thickness” refers to “To” and that Tachihara’s To is disclosed as being
between 9 and 11 micrometers (Appeal Br. 12—14; see also Reply Br. 10—
11).
We agree with the Appellants that the Examiner’s rejection is not
well-founded. The current Specification reasonably informs one skilled in
the relevant art that “orifice thickness” does not refer to the orifice size, as is
the case for “So” (Tachihara 1 60, Figs 2(a)—(b)), but rather the thickness
corresponding to the thickness of the orifice defined by, e.g., element 210
(Drawings Fig. 2; see also Spec. 117).
Because the Examiner’s rejection of claim 31 is premised on an
unreasonable claim interpretation, which resulted in an erroneous factual
finding, we cannot sustain it.
3. Claim 35
Independent claim 35 requires the target for receiving the ejected drop
to be “located 70 to 163 mm from the ejector” (Appeal Br. 28—29).
The Examiner finds that Tachihara does not explicitly disclose a target
distance of 76—163 mm (Ans. 7). Nevertheless, the Examiner determines
(id.):
it would have been obvious to one having ordinary skill
in the art at the time the invention was made to adjust the gap
between the ejection head and the target to be within the range
of 70-163 mm for instance based on ejection speed, drop mass,
types of ink and/or types of recording media being used for
optimum image quality, since it has been held that where the
general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only
routine skill in the art. [In re Aller, 220 F.2d 454 (CCPA
1955)].
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The Appellants contend that “[njeither cited reference is capable of
the claimed feat [i.e., an ejection drop of 70—163 mm]” (Appeal Br. 17
(citing Spec. 134 and Table 3)). The Appellants argue that “because the
claimed outcome is different from and not obtainable by the cited references,
Alter does not apply” (id.).
We discern no persuasive merit in the Appellants’ argument. The
Appellants do not specifically refute the Examiner’s finding that a person
having ordinary skill in the art would have understood that the ejection drop
distance would depend on, e.g., the droplet mass and droplet ejection
velocity (Appeal Br. 16—17). PerfectWeb Techs., Inc. v. InfoUSA, Inc. 587
F.3d 1324, 1329 (Fed. Cir. 2009) (an analysis of obviousness “may include
recourse to logic, judgment, and common sense available to the person of
ordinary skill that do not necessarily require explication in any reference or
expert opinion”).
Indeed, the Appellants’ Specification appears to acknowledge that, in
the prior art, travel distance is dependent on ink volume and velocity (Spec.
134). The mere fact that the droplet travel distance in a particular prior art
embodiment was 11.2 mm for a droplet with a specific velocity (12 m/s) and
a specific volume of 5 pF does not necessarily establish that all
embodiments disclosed in the prior art using different droplet sizes and
velocities are incapable of achieving the target distances recited in claim 35.
In this regard, Tachihara teaches that the velocity may be as high as 30 m/s
and suggests that if the velocity is too low (e.g., 10 m/s), the droplet may
miss the intended spots on the recording medium (Tachihara 1 53).
Therefore, a person having ordinary skill in the art would have determined
an appropriate target distance for a given set of droplet velocity and volume,
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including target distances falling within the range specified in claim 35,
through nothing more than routine experimentation.
For these reasons, we uphold the rejection of claim 35.
4. Claim 36
Claim 36, which depends from claim 25, recites that the “deposition
target has a non-flat topography” (Appeal Br. 29 (Claims App.)).
The Examiner states that Tachihara teaches deposition on a paper,
which “inherently is not flat and has some level of roughness and porosity”
(Ans. 16—17 (citing Tachihara Tflf 58, 93 and Fig. 4)). The Appellants
disagree, arguing that Tachihara’s Figure 4 shows a flat substrate P (Appeal
Br. 18; see also Reply Br. 14). According to the Appellants, “[t]he plain
meaning of flat and non-flat are not understood in terms of surface
roughness” (Reply Br. 15).
The problem with the Appellants’ argument is that the current
Specification does not reasonably inform one skilled in the relevant art that
the term “non-flat” was intended to exclude the indentations and pores that
would be present in Tachihara’s paper substrate, as explicitly described for
other similar substrates in Tachihara’s paragraph 93 (“the ink in solid or
liquid state is retained in the indentations or through holes of a sheet of
porous material”) (emphasis added). The Appellants’ description merely
refers to a “non-flat topography, such as indentations in coating applications
or well plates, where the interference between the material dispenser[] itself
and the topography prevents moving the orifices close to the substrate of
interest” (Spec. 135 (emphasis added)). Such a description fails to limit the
“indentations” to any reasonably specific degree and, therefore, fails to
define “non-flat” in a manner sufficient to distinguish over Tachihara’s
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paper substrates, which would possess “indentations.” In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989) (“[Djuring patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed.”).
Therefore, we uphold the rejection of claim 36.
In view of our rulings as to claims 20, 31, 35, and 36, we sustain
Rejection A as to claims 20—22, 24, 25, 27, 30, and 35—38 but not as to
claims 31, 32, and 34.
Rejection B. The Appellants rely on the same arguments offered
against Rejection A (Appeal Br. 18). Therefore, we sustain Rejection B as
to claim 23 but not as to claim 33.
Rejection C. In addition to the same reasons offered against
Rejection A, the Appellants provide separate arguments for each of claims
16, 28, and 29 (Appeal Br. 18—24).
1. Claims 26 and 28
Claim 26, which depends from claim 20, recites “an efficiency of an
input energy to an energy of an ejected drop of at least 0.1%” (Appeal Br. 27
(Claims App.)). Claim 28, which indirectly depends from claim 20, recites
“an ejection efficiency of at least 52.0%” (id.).
The Examiner finds that the AAPA teaches prior art systems with
various energy and ejection efficiencies (Ans. 9). According to the
Examiner, Tachihara and the AAPA would have suggested an inkjet material
dispenser that would have the same structural limitations as the claimed
system and that the Appellants have failed to show “any claimed structural
difference/s that distinguishes the claimed inkjet material dispenser over
Tachihara that causes the claimed efficiency of at least 0.1”%” (id. at 17—
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18). The Appellants argue that Tachihara is silent regarding efficiency and
the prior art systems discussed in the AAPA do not have the same
efficiencies as specified in the claim (Appeal Br. 19 and 21—23).
We are not persuaded by the Appellants’ arguments. Although the
AAPA shows energy efficiencies for prior art systems that are slightly lower
than those recited in claim 26 (e.g., 0.0660% in Table 1) (Spec. 130),
Tachihara’s dispenser is not only structurally similar to the Appellants’
claimed system but can also be operated in a similar manner (e.g., Tachihara
111, 35, 37, 53, 60-65). Therefore, it was appropriate to shift the burden of
production to the Appellants to show that none of Tachihara’s embodiments
would be capable of achieving the claimed energy efficiencies and that the
differences in efficiencies between the claimed system and the prior art
systems would have been considered unexpected by a person having
ordinary skill in the art. The Appellants did not meet that burden. In re
Best, 562 F.2d 1252, 1255 (CCPA 1977).
The same analysis applies for ejection efficiency (see the AAPA,
Table 4) (Spec. 137).
Therefore, we sustain the rejection of claims 26 and 28.
2. Claim 29
Claim 29, which depends from claim 20, recites “wherein a product of
the Reynold’s number and the Euler’s number of the ejected drop is at least
106.0” (Appeal Br. 27 (Claims App.)).
The Examiner finds that the prior art references describe, or would
have suggested, a range of variables that would affect Reynold’s and Euler’s
numbers of the ejected drop and that a person having ordinary skill in the art
would have optimized these variables to arrive at a system having ejected
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drops that would satisfy the specified relationship (Ans. 10). In addition, the
Examiner finds that the Appellants’ “disclosure, table 5, do[es] not show
different ReXEu values for both Traditional TIJ and Non-Traditional TIJ
having the same parameters [, i.e.,] the table does not show for instance] the
ReXEu value [of] at least 106.00 as being an improvement over Traditional
TIJ having the same parameters” (id. ).
The Appellants contend that “[f]ailing to show evidence to adequately
support a claim is a §112, first paragraph enablement or written description
rejection . . . and is not a basis for a § 103(a) obviousness rejection” (Appeal
Br. 23). The Appellants further contend that the Examiner failed to establish
that the prior art inherently discloses the Reynold’s and Euler’s numbers
relationship (id. at 23—24).
Again, we find no persuasive merit in the Appellants’ arguments.
Tachihara and the AAPA would have suggested a system in which the
parameters defining the ejection and the droplets may vary over a wide
range. The Appellants fail to direct us to evidence that the systems
suggested by the prior art did not achieve the specified Reynold’s and
Euler’s numbers or would be incapable of doing so by routine optimization
to achieve the desired droplet and printing characteristics. As stated by a
predecessor of our reviewing court, “[w]here, as here, the claimed and prior
art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.” Best, 562 F.2d at 1255.
“Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on
‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the
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burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.” Id. (footnote omitted).
The Appellants’ arguments fail to satisfy that burden. Moreover, the
absence or presence secondary considerations of nonobviousness (e.g.,
unexpected results), is a factor to be considered in assessing obviousness
under 35 U.S.C. § 103(a). Therefore, the Examiner did not err in requiring a
showing that includes a fair comparison between the prior art and the
claimed invention where all variables are held constant except for the novel
structural features of the claim. As is apparent from the data in Table 5
(Spec. 139), variables such as droplet weight or orifice diameter were not
held constant. Therefore, any differences in terms of the Reynold’s or
Euler’s numbers are not meaningful.
Rejection D. Claim 38 ultimately depends from claim 35 (Appeal Br.
29 (Claims App.)). The Appellants rely on the same arguments offered
against the rejection of claims 35 and 36 {id. at 24).
For the same reasons discussed above for claims 35 and 26, we
sustain Rejection D.
IV. SUMMARY
Rejection A is sustained as to claims 20—22, 24, 25, 27, 30, and 35—38
but not as to claims 31,32, and 34.
Rejection B is sustained as to claim 23 but not as to claim 33.
Rejections C and D are sustained.
Therefore, the Examiner’s final decision to reject claims 20—39 is
affirmed as to claims 20-30 and 35—39 but reversed as to claims 31—34.
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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).
AFFIRMED-IN-PART
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