HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

Patent Trials and Appeals Board

Jan 27, 2022

2021003504 (P.T.A.B. Jan. 27, 2022)

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. 15/570,634 10/30/2017 Alexander Govyadinov 84680257 3783 22879 7590 01/27/2022 HP Inc. 3390 E. Harmony Road Mail Stop 35 Fort Collins, CO 80528-9544 EXAMINER VALENCIA, ALEJANDRO ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 01/27/2022 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 jessica.pazdan@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEXANDER GOVYADINOV, RON BURNS, ERIK D. TORNIAINEN, GALEN P. COOK, DAVID P. MARKEL, GARRARD HUME, and CHRIS BAKKER ____________ Appeal 2021-003504 Application 15/570,634 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and JEFFREY R. SNAY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. § 134(a) of the Examiner’s Final Action rejecting claims 16, and 21-23 under 35 U.S.C. § 103 as being unpatentable over the combination of Govyadinov ’021 (US 2015/0085021 A1, published Mar. 26, 2015), Kanda (US 7,625,065 B2, issued Dec. 1, 2009), and Govyadinov ’136 (US 2013/0083136 A1, 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Hewlett-Packard Development Company, L.P., as the real party in interest (Appeal Br. 1). Appeal 2021-003504 Application 15/570,634 2 published Apr. 4, 2013) and dependent claim 33 over this same combination further with Feinn (US 2013/0021411 A1, published Jan. 24, 2013). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claim 16 is the only independent claim on appeal and is illustrative of the claimed subject matter: 16. A fluid ejection device comprising a first fluid ejection assembly comprising a fluid feed slot, a first fluid recirculation channel and a second fluid recirculation channel on an opposing side of the fluid feed slot, each fluid recirculation channel comprising: a pump channel fluidly coupled with the fluid slot; a pump incorporated into the pump channel; a plurality of drop generator channels fluidically coupled to the pump channel and the fluid feed slot; a plurality of drop generators incorporated into the plurality of drop generator channels; and a plurality of nozzles defined within the plurality of drop generator channels, wherein the plurality of nozzles include a first low drop weight nozzle and a first high drop weight nozzle; wherein the first low drop weight nozzle is a smaller size than the first high drop weight nozzle; wherein the first high drop weight nozzle of the first fluid recirculation channel is aligned along a first axis across the fluid feed slot from the pump of the second fluid recirculation channel; wherein the first high drop weight nozzle is adjacent a second pump on a first side and the first low drop weight nozzle on a second side, wherein the first high drop weight nozzle, the second pump, and the first low drop weight nozzle are aligned along a second axis perpendicular to the first axis; a second fluid ejection assembly including a second high drop weight nozzle and a second low drop weight nozzle, Appeal 2021-003504 Application 15/570,634 3 wherein the first high drop weight nozzle and the pump of the second fluid recirculation channel of the first fluid ejection assembly are further aligned along the first axis with the second high drop weight nozzle and the second low drop weight nozzle of the second fluid. (Claims Appendix i-ii). ANALYSIS The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). After review of the respective positions provided by Appellant and the Examiner, we conclude that the preponderance of the evidence supports Appellant’s position that the Examiner has not established a prima facie case of obviousness for substantially the reasons set forth by Appellant in the Briefs. Accordingly, we reverse the Examiner’s § 103 rejections of all the claims on appeal. Specifically, a preponderance of the evidence supports Appellant’s position that the proposed modification of Govyadinov ’021 to add the high and low weight drop nozzle of Kanda and then duplicate first and second fluid ejection assemblies in parallel and staggered as in Govyadinov ’136 would be based on an improper hindsight reconstruction for the reasons discussed by Appellant in the Briefs (Appeal Br. 5−9; Reply Br. 2-6). A preponderance of the evidence supports Appellant’s position that there is no Appeal 2021-003504 Application 15/570,634 4 apparent reason one of ordinary skill in the art would have looked at the offset nozzle assemblies of Govyadinov’s ’136 Fig. 5 as the basis for modification of Govyadinov’s/Kanda’s nozzle assembly so as to have the “first high drop weight nozzle and the pump of the second fluid circulation channel . . . further aligned along the first axis with the second high drop weight nozzle and second low drop weight nozzle of the second fluid ejection assembly” as recited in claim 16 (Appeal Br. 9−12; Reply Br. 7−8). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). As stated in In re Smith, The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.” In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)). Cf. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” (internal citation omitted)). Appellant’s Specification details that the recited components in dispute are indeed collinear/aligned along a single axis (see Fig. 5; Reply Br. Appeal 2021-003504 Application 15/570,634 5 4). Thus, we agree with Appellant that the broadest reasonable interpretation of “aligned along a first axis” means that the relevant components are aligned, that is collinear, along a single axis (e.g., Reply Br. 5). Furthermore, the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). As pointed out by Appellant, Govyadinov ’136 illustrates in Fig. 13 that the two fluid assemblies offset by one half a nozzle pitch (as opposed to a nozzle pitch as the Examiner stated) and thus the relevant nozzles and pump would not be aligned along a first axis (e.g., Reply Br. 7-8). The Examiner has not adequately explained why one would have modified Govyadinov in light of Kanda’s and Govyadinov ’136 so as to result in the claimed invention. The Examiner has not adequately explained why the skilled artisan’s knowledge or inferences and creativity would have supported the obviousness determination based on the teachings of the applied references without an improper hindsight reconstruction of Govyadinov ’021’s fluid ejection apparatus, and without an improper unreasonably broad interpretation of “aligned along a fist axis”. The Examiner does not rely upon any other reference or reasoning to cure this deficiency. Accordingly, we reverse the § 103 rejections of claims 16, 21-23, and 33 which rely upon an impermissible hindsight reconstruction. Appeal 2021-003504 Application 15/570,634 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 21-23 Govyadinov ’021, Kanda, Govyadinov ’136 16, 21−23 33 Govyadinov ’021, Kanda, Govyadinov ’136. Feinn 33 Overall Outcome 16, 21−23, 33 REVERSED