12238752 (P.T.A.B. Mar. 31, 2014)

Ex Parte Yildirim et al

Patent Trial and Appeal BoardMar 31, 2014

12238752 (P.T.A.B. Mar. 31, 2014)

MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. 12/238,752 09/26/2008 Ozgur Yildirim et al. EXAMINER HEWLETT-PACKARD COMPANY Intellectual Property Administration 3404 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528 FIDLER, SHELBY ART UNIT PAPER NUMBER 2853 MAIL DATE DELIVERY MODE 03/31/2014 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte OZGUR YILDIRIM and RALPH STATHEM __________ Appeal 2011-013031 Application 12/238,752 Technology Center 2800 ____________ Before CHUNG K. PAK, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 7, 9, 11, 12, 14, and 17-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appellants’ invention is directed to a fluid-dispensing head that involves heating liquid ink within the dispensing head such that gaseous Appeal 2011-013031 Application 12/238,752 2 bubbles present in the liquid ink increase in size and reduce in surface tension (Spec. para. [0016]). Claims 7 and 14 are illustrative: 7. A fluid-dispensing head comprising: at least one body supporting at least one heating element wherein said at least one heating element heats said body such that fluid around said body is heated and gas bubbles within said fluid increase in surface area; and at least one dispensing head orifice, wherein said body heats said fluid to a temperature greater than an ambient temperature but lower than a boiling point of said fluid prior to said bubbles with increased surface area being expelled from said fluid dispensing head through said at least one orifice in a priming operation. 14. The fluid dispensing head of claim 7, wherein said print cartridge is incorporated into an inkjet printer, wherein said print cartridge comprises a plenum, and wherein said plenum is in fluid communication with a reservoir of ink. Appellants appeal the following rejections: 1. Claims 7, 9, 11, 12, and 17-20 are rejected under 35 U.S.C. § 102(b) as being unpatentable over Hays et al. (US 6,336,700 B1, patented Jan. 8, 2002). 2. Claims 14 and 17-19 are rejected under 35 U.S.C. § 112, second paragraph, as failing to point out and particularly claim the subject matter which Appellants regard as the invention. REJECTION (1): § 102 ISSUE Did the Examiner reversibly err in finding that Hays’ disclosure anticipates the subject matter of claim 7? We decide this issue in the affirmative. Appeal 2011-013031 Application 12/238,752 3 FINDINGS OF FACT & ANALYSIS We begin our analysis by construing claim 7. Claim 7 recites a “fluid- dispensing head comprising” at least one body supporting at least one heating element wherein said at least one heating element heats said body such that fluid around said body is heated and the dispensing head having at least one dispensing head orifice. Fluid-dispensing head is defined as “a device within a fluid dispenser, such as an inkjet printer, having at least one orifice through which fluid or liquid, such as ink, may be selectively deposited, for example, onto a print medium, such as a sheet of paper or other print media.” (Spec. para. [0017].) The Specification describes that the fluid-dispensing head 203 is formed of flexible tape 209 and contains orifices 207 and a semiconductor die 401 (Spec. paras. [0029], [0037]). The semiconductor die 401 includes thin film resistors 607 and 609 that heat the semiconductor die 401 and the ink to affect bubble coalescence among other things (Spec. paras. [0044], [0050], [0051]). The Specification describes a fluid-dispensing head 203 having semiconductor die 401 as equivalent to the body in claim 7 attached to the fluid-dispensing head. The heating elements (i.e., thin film resistors 607 and 609) are attached to the semiconductor die 401. In other words, the “body” of claim 7 is a separate and distinct element that is attached to the fluid-dispensing head and is structured so that the heating elements heat the body, which then heats the ink. With the proper claim construction in mind, we agree with Appellants’ arguments on pages 11-12 of the Appeal Brief and pages 7-9 of the Reply Brief that Hays fails to teach a fluid-dispensing head having a “body supporting at least one heating element.” The Examiner finds that Hays’ die 200 constitutes the “body” (Ans. 4, 8). However, die 200 Appeal 2011-013031 Application 12/238,752 4 constitutes the “fluid-dispensing head” in Hays. Indeed, die 200 fits Appellants’ definition of “fluid-dispensing head” in that it is part of fluid dispenser and contains at least one orifice of depositing ink on a print medium. Indeed, Hays describes that die 200 is connected to the bottom of recording head 100 and receives ink from ink tank 111 (col. 3, ll. 13-33; Fig. 2). Therefore, the Examiner’s finding that Hays discloses that heating element 203 is connected to the die 200 fails to disclose a separate “body” to which the heating element is connected and used to heat the body which then heats the ink (Ans. 8). In other words, the Examiner has failed to establish that all the features of claim 7 are taught by Hays. On this record, we reverse the Examiner’s § 102(b) rejection over Hays. REJECTION (2): § 112 The Examiner finds that claim 14 fails to point out and particularly claim the subject matter which Appellants regard as the invention because the claim term “‘said print cartridge’” lack antecedent basis (Ans. 3). The Examiner finds that language of claim 14 is not connected in any way to the fluid-dispensing head recited in claim 7 (Ans. 3-4). Appellants argue that they attempted to resolve this issue with an amendment that was denied entry by the Examiner (App. Br. 10). Appellants contend that merely lacking explicit antecedent basis does not always render the claims indefinite where the scope of the claim would be reasonably ascertainable by those skilled in the art (App. Br. 10-11). Claim 14 recites “[t]he fluid dispensing head of claim 7, wherein said print cartridge is incorporated into an inkjet printer . . . .” While the preamble of claim 14 shares the same subject matter as claim 7, the subject Appeal 2011-013031 Application 12/238,752 5 matter of claim 14 is completely unrelated to the fluid-dispensing head. It is not clear how claim 14 further limits claim 7. On this record, we affirm the Examiner’s § 112, second paragraph, rejection of claim 14. DECISION The Examiner’s decision is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED-IN-PART cdc