Ex Parte Young et al

Patent Trial and Appeal Board

Mar 20, 2014

11899514 (P.T.A.B. Mar. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL D. YOUNG and XIANGDONG ZHAO
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Appeal 2011-011297
Application 11/899,514
Technology Center 2800
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Before MARK NAGUMO, DONNA M. PRAISS, and
KRISTINA M. KALAN, Administrative Patent Judges.

KALAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011297
Application 11/899,514
2
Appellants1 timely appeal under 35 U.S.C. § 134(a) from the final
rejection2 of claims 1-20. We have jurisdiction under 35 U.S.C. § 6. We
reverse.
STATEMENT OF THE CASE
The subject matter on appeal relates to a “method and system of
dynamically collecting waste ink in a printing system,” namely, “providing a
collection reservoir for the waste ink wherein the waste ink has a
conductance, positioning at least two electrodes in the collection reservoir
and sensing the conductance of the waste ink so as to determine when the
collection reservoir needs to be serviced.” Spec., Abst.
Independent claim 1, reproduced below from the Claims Appendix to
the Appeal Brief, is representative:
1. A method of collecting waste ink in a printer system comprising:
providing a collection reservoir for the waste ink wherein the waste
ink comprises a conductance;
positioning at least two electrodes in the collection reservoir; and
sensing the conductance of the waste ink using the at least two
electrodes so as to determine a range of levels of an amount of the waste ink
in the collection reservoir and indicate when the collection reservoir needs
to be serviced.

App. Br. 19, Claims App’x, (emphasis added).

1 Appellants identify the Real Party in Interest as Hewlett-Packard
Development Company, LP. Appeal Brief filed October 27, 2010 (“App.
Br.”) at 3.
2 Final Office Action mailed June 21, 2010 (“FOA”).
Appeal 2011-011297
Application 11/899,514
3
The Examiner maintains the following grounds of rejection:3
1. Claims 1, 2, 9, 10, and 18 under 35 U.S.C. § 103(a) over Tani4 in
view of Varnon.5
2. Claims 3 and 11 under 35 U.S.C. § 103(a) over Tani in view of
Varnon and Tomohiro.6
3. Claims 4-7, 12-15, 17, and 19 under 35 U.S.C. § 103(a) over Tani
in view of Varnon and Yeong-Bok.7
4. Claim 20 under 35 U.S.C. § 103(a) over Tani in view of Varnon
and Mutoh.8
5. Claims 8 and 16 under 35 U.S.C. § 103(a) over Tani in view of
Varnon, Yeong-Bok, and Mutoh.

ISSUE
Did the Examiner err harmfully in finding that Tani discloses using
two electrodes “so as to determine a range of levels of an amount of the
waste ink in the collection reservoir”? We answer this question in the
affirmative and reverse.

3 Examiner’s Answer mailed February 28, 2011 (“Ans.”).
4 US 2006/0061620 A1, published March 23, 2006 in the name of Tani et al.
5 US 2003/0063138 A1, published April 3, 2003 in the name of Varnon et al.
6 JP 2000-85142 A, published March 28, 2000 in the name of Tomohiro.
7 KR 10-2005-0061770, published June 23, 2005 in the name of Yeong-Bok.
8 US 5,402,164, issued March 28, 1995 to Mutoh.
Appeal 2011-011297
Application 11/899,514
4
ANALYSIS
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984). As stated in KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007), “‘[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
The Examiner relies on Tani, Fig. 4, item 38, and ¶ [0051], to
determine that Tani discloses using two electrodes so as to determine a range
of levels of an amount of the waste ink in the collection reservoir. FOA 2.
Appellants argue that Tani’s conductivity detection electrodes 38 “are
only used when a predetermined amount of waste ink has been stored in the
waste-ink tank.” App. Br. 12. Furthermore, Appellants argue, Tani’s
conductivity detection electrodes “are not used to detect the amount of waste
ink stored in the waste-ink tank.” Id. at 13.
The Examiner responds that “Tani’s electrodes do also ‘determine a
range of levels of an amount of waste ink’ as they energize when the waste
ink level reaches a certain point and remain energized thereafter. Thus, the
electrodes determine the amount of waste ink in the tank based on their
being energized.” Ans. 5. In other words, the Examiner finds, “given the
alternatives of the ink level being above a line and the ink level being below
the line, the electrodes determine the range in which the actual level is
located based on their energization or non-energization.” Id. at 6.
Appeal 2011-011297
Application 11/899,514
5
Appellants argue that “determining when the waste ink ‘reaches a
certain point’ does not constitute determining a range of levels of an amount
of waste ink” but rather only determines “a level (or one level)” of an
amount of waste ink. Reply Brief filed April 26, 2011 (“Reply Br.”) 3.
Apart from the unpersuasive finding that Tani’s conductivity detection
electrodes “determine a range of levels” because they determine either an
“above a line” or “below the line” level, Ans. 5-6, the Examiner has not
provided any indication as to how the conductivity detection electrodes of
Tani would sense a range of levels of an amount of waste ink. As noted by
the Appellants, Tani discloses: “When a fixed amount of the waste ink has
been collected into the waste-ink tank 32 so that the tip ends of conductivity
detection electrodes 38 are immersed in the waste ink, an electric current is
allowed to flow and the conductivity is detected.” Tani ¶ [0051], App. Br.
12. Tani then uses the detected conductivity “to adjust the amount of supply
of the diluent to the waste-ink tank 32.” Tani ¶ [0052], App. Br. 12.
Moreover, Tani refers to another component, solid-state member (float) 50,
“that floats on the liquid surface of the waste ink so as to detect the amount
of waste ink that has been supplied.” Tani ¶ [0053], App. Br. 13.
A preponderance of the evidence supports Appellants’ arguments that
the Examiner has failed to establish that Tani discloses using two electrodes
so as to determine a range of levels of an amount of the waste ink in the
collection reservoir. Thus, the Examiner has not set forth a factual basis
sufficient to support a prima facie case of obviousness of the Appellants’
claimed invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“A rejection based on section 103 clearly must rest on a factual basis”).
Appeal 2011-011297
Application 11/899,514
6
For the reasons discussed above with respect to the Examiner’s
rejection of independent claim 1, 9, and 18, the Examiner’s rejection of the
remaining dependent claims falls short by failing to present a prima facie
case of obviousness based on the combined teachings of Tani with the
respective secondary references.
On this record, we reverse the Examiner’s obviousness rejections of
the appealed claims.

ORDER
We reverse the rejection of claims 1-20.
REVERSED

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