Ex Parte Schmidt et al

Board of Patent Appeals and Interferences

Jan 8, 2009

10062217 (B.P.A.I. Jan. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES G. SCHMIDT, JOSEPH R. ELLIOT, and
JAMES E. CLARK
____________

Appeal 2008-4277
Application 10/062,217
Technology Center 2800
____________

Decided: January 08, 2009
____________

Before CHUNG K. PAK, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 4, 6, 9, 10, 13, 16, 17, 19, 24, and 26 (Appeal Brief filed June 28,
2005, hereinafter “App. Br.,” as revised on July 23, 2007; Final Office
Action mailed January 28, 2005). We have jurisdiction under 35 U.S.C. §
6(b).
We AFFIRM.
Appeal 2008-4277
Application 10/062,217

2

STATEMENT OF THE CASE
Appellants state they invented a cartridge for an inkjet printer in
which an adhesive joint between a so-called headland region and a printhead
assembly may include an ink trap (i.e., notches) for retaining additional
adhesive in order to reduce degradation of adhesive due to ink penetration
(Specification, hereinafter “Spec.,” 4, ¶¶0011-0012).
Claim 4 on appeal reads as follows:
4. A print cartridge for an inkjet printer comprising:
a printhead assembly including a substrate and a flexible
circuit;
a headland portion connected to the printhead assembly
by an adhesive;
wherein the headland portion includes an inner raised
wall surrounded by a gutter and wall openings therein, the wall
openings including a substrate support surface;
wherein the substrate support surface includes an ink trap
for retaining adhesive to thereby reduce the concentration of
diffused ink in the adhesive.
(App. Br., Claims Appendix 7.)

The Examiner relied upon the following as evidence of
unpatentability:
Caren 5,736,998 Apr. 7, 1998
Hirosawa 6,257,703 B1 Jul. 10, 2001
The Examiner rejected claims 4, 6, 9, 10, 13, 16, 17, 19, 24, and 26
under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Caren and Hirosawa (Supplemental Examiner’s Answer mailed October 25,
2007, hereinafter “Ans.,” 3-5).
Appeal 2008-4277
Application 10/062,217

3
Appellants rely on the same arguments for all the appealed claims
(App. Br. 2-6). We therefore select claim 4 as representative and confine
our discussion to this selected claim. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Caren describes a print cartridge for an
inkjet printer as here claimed except it does not disclose “an ink trap for
retaining adhesive to . . . reduce the concentration of diffused ink in the
adhesive,” as required by appealed claim 4 (Ans. 3-4; App. Br., Claims
Appendix 7). Nevertheless, the Examiner found that Hirosawa “teaches in
Figures 12-13 an ink jet recording head comprising a substrate support
surface (52b) which includes ink traps (54) for retaining adhesive (Pa) and
ink” (internal citation omitted) (Ans. 4). On the basis of these findings, the
Examiner concluded that “[i]t would have been obvious to a person having
skill in the art . . . to incorporate the teaching of Hirosawa . . . in the device
of Caren . . . for the purpose of providing [a] strong bond between the
headland and the substrate and avoiding an undesired leakage of ink” (id.).
Appellants, on the other hand, assert that “[t]he rejection is based on
the mere identification in the prior art of individual components of claimed
limitations[]” and “[t]here is no proper motivation for modifying Caren”
(App. Br. 3). According to Appellants, “Hirosawa teaches a completely
different structure that, if employed in the Caren device, would counteract
and eliminate the benefits of the Caren design[]” (App. Br. 5). See also
Reply Brief filed December 21, 2007 at 2.

Appeal 2008-4277
Application 10/062,217

4

ISSUE
Thus, the issue arising from the contentions of the Examiner and
Appellants is:
Have Appellants demonstrated error in the Examiner’s determination
that the prior art references would have led a person having ordinary skill in
the art to provide a ink trap that is capable of retaining adhesive to reduce
the concentration of diffused ink in the adhesive?

FINDINGS OF FACT
1. Appellants’ Specification informs one skilled in the relevant art
that notches serve as “ink traps” (Spec. 6, ¶0031).
2. Caren’s Figure 8 is reproduced below:

Appeal 2008-4277
Application 10/062,217

5
Caren’s Figure 8 is said to depict a perspective view of a
headland area of an inkjet print cartridge, wherein 50 is a
headland, 51 is an adhesive spill trough, 53 is an adhesive V-
groove, 54 is an inner raised wall, 55 are wall openings, 57
denote adhesive ridges, 59 is a flat top surface, 60 is an outer
raised wall, and 61 is a gutter (col. 7, ll. 1-65).
3. Caren teaches that the headland area 50 is used to provide a seal
between a Tape Automated Bonding (TAB) head assembly and
a printhead body (col. 6, l. 65 to col. 7, l. 1).
4. Caren also discloses that the print cartridge includes a printhead
assembly 14 including a flexible circuit 18 and a substrate 28
(col. 5, ll. 46-49; col. 6, ll. 40-44).
5. Hirosawa teaches the use of a groove 54 in an inkjet recording
device “so that undesired leakage of ink is avoided and so that
the flatness of the support member 40 relative to the joined
surface 52b is assured with accuracy[]” (col. 14, ll. 11-25).

PRINCIPLES OF LAW
On appeal to this Board, Appellants must show that the Examiner
reversibly erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977,
985-986 (Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
Appeal 2008-4277
Application 10/062,217

6
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 127 S. Ct. at
1741 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”); Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (“There is
flexibility in our obviousness jurisprudence because a motivation may be
found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine...”).
KSR further instructs “that when a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSR, 127 S. Ct. at 1740.
A prior art disclosure that includes a complete description of the
claimed invention also renders the claim obvious, for anticipation is the
epitome of obviousness. In re Baxter Travenol Laboratories, 952 F.2d 388,
391 (Fed. Cir. 1991).

Appeal 2008-4277
Application 10/062,217

7
ANALYSIS
Appellants have failed to demonstrate reversible error on the part of
the Examiner. Contrary to Appellants’ belief (App. Br. 2; Reply Br. 2),
Caren teaches an inkjet print cartridge in which the substrate support surface
has adhesive ridges 57, which create notches that have not been shown to be
distinguishable from the claimed “ink trap for retaining adhesive to thereby
reduce the concentration of diffused ink in the adhesive” (Facts 1-4). Thus,
one of ordinary skill in the art would have found the subject matter of
appealed claim 4 obvious over Caren alone. In re Baxter Travenol, 952 F.2d
at 391.
Even if Caren does not describe the specified “ink trap,” we detect no
error in the Examiner’s obviousness analysis (Ans. 3-4). It is undisputed
that Hirosawa discloses an ink trap that would retain adhesive to reduce the
concentration of diffused ink in the adhesive (App. Br. 2-6). Furthermore,
Appellants do not dispute the Examiner’s finding that Hirosawa teaches the
use of a groove 54 (i.e., an ink trap) “for the purpose of providing a strong
bond between the headland and the substrate and avoiding an undesired
leakage of ink” (App. Br. 2-6; Ans. 4; Fact 5). Thus, the Examiner
adequately established that a person having ordinary skill in the art would
have been led to provide Caren’s device with Hirosawa’s groove (ink trap),
thus arriving a print cartridge encompassed by appealed claim 4, in order to
provide a strong bond between the headland and the substrate as well as to
avoid undesirable leakage of ink. While Appellants contend that “the
provision of a groove (as disclosed by Hirosawa) in the support surface 58 of
Caren would eliminate the spillage and ‘squishing’ of adhesive off the
support surface 58,” which Caren discloses as beneficial (App. Br. 5), they
Appeal 2008-4277
Application 10/062,217

8
have failed to explain why such a groove would necessarily prevent spillage
and squishing. For example, Appellants do not account for the use of a
larger amount of adhesive, which would reasonably appear to accommodate
the benefits of both Caren and Hirosawa.
For these reasons, we uphold the Examiner’s rejection.

CONCLUSION
On this record, we determine that Appellants have failed to
demonstrate any error in the Examiner’s determination that the prior art
references would have led a person having ordinary skill in the art to provide
a ink trap that is capable of retaining adhesive to reduce the concentration of
diffused ink in the adhesive, as required by appealed claim 4.

DECISION
The Examiner’s decision to reject appealed claims 4, 6, 9, 10, 13, 16,
17, 19, 24, and 26 is affirmed.
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
Appeal 2008-4277
Application 10/062,217

9
MAT

HEWLETT PACKARD COMPANY
P O BOX 272400, 3404 E. HARMONY ROAD
INTELLECTUAL PROPERTY ADMINISTRATION
FORT COLLINS CO 80527-2400