Jeffrey Allen. Wagner et al.

Patent Trials and Appeals Board

Oct 25, 2019

15329498 - (D) (P.T.A.B. Oct. 25, 2019)

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.
15/329,498 01/26/2017 Jeffrey Allen Wagner 84593661 1019
22879 7590 10/25/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
THIES, BRADLEY W
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
10/25/2019 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):
barbl@hp.com
ipa.mail@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 JEFFREY ALLEN WAGNER, RONALD ALBERT ASKELAND,
MARIA MAGDALENA MARTINEZ, PAUL JOSEPH BRUINSMA, and
SIERRA LILA WOLF
____________

Appeal 2018-009232
Application 15/329,498
Technology Center 2800
____________

Before KAREN M. HASTINGS, DONNA M. PRAISS, and
LILAN REN, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 103 as
unpatentable over at least the combined prior art of Rhoads
(US 2002/0171705 A1; published Nov. 21, 2002) and Le (US 4,734,706;

1 We use the word “Appellant” to refer to the “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant is Hewlett-Packard Development Company,
LP, which is also identified as a real party in interest (Appeal Br. 2).

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issued Mar. 29, 1988).2 The Examiner also made an objection to the
drawings.3
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1 and 9 are illustrative of the subject matter on appeal
(emphasis added to highlight key disputed limitations):

1. A printer, comprising:
a printhead comprising:
a number of nozzles;
an immiscible fluid distribution system to apply immiscible fluid to the
nozzles: and
a processor to instruct the immiscible fluid distribution system to apply
immiscible fluid to the nozzles to at least partly cap unused nozzles during
printing;
wherein the immiscible fluid is a paraffin.

9. A printer subassembly, comprising:
an immiscible fluid distribution system to apply an immiscible fluid to
the surface of a printhead nozzle plate;
a web-wipe impregnated with the immiscible fluid; and
a web wiper to squeegee an amount of immiscible fluid from the web-
wipe to the surface of the printhead nozzle plate.

2 The Examiner applied an additional reference, Sameshima (US
2014/0375725 A1; published Dec. 25, 2014), to dependent claim 20 as well
as all the other claims (Final Action 9). A discussion of this reference is not
needed for disposition of this appeal.
3 As pointed out by the Examiner, any traversal of this objection must be
made by way of petition, not by an appeal to this Board (Ans. 2). See
37 C.F.R. l.181.

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OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection.). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Claim 1
Appellant’s only argument regarding claim 1 is that Rhoads does not
teach or suggest a paraffin (Appeal Br. 10–12; Reply Br. 5–7). We disagree
for all the reasons set forth by the Examiner (Ans. 3, 4).
Notably, claim 1 is directed to an apparatus. Thus, “[i]nclusion of the
material or article worked upon by a structure being claimed does not impart
patentability to the claims.” In re Otto, 312 F.2d 937 (CCPA 1963); see also
In re Young, 75 F.2d 996 (CCPA 1935). This is because “[i]t is no new
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invention to use an old machine for a new purpose. The inventor of a
machine is entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.” Roberts v. Ryer,
91 U.S. 150, 157 (1875). Appellant has not shown that the recitation that the
immiscible fluid is a paraffin limits the structure of the printer fluid
distribution system in any way.
In any event, Appellant has also not shown error in the Examiner’s
position that “paraffin” as recited in claim 1 is taught or would have been
obvious in accord with the broadest reasonable interpretation of “paraffin”
(e.g., Ans. 3), and/or would have been obvious in view of the combined
teaching of Rhoads/Le. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007) (it is well established that “the PTO must give claims
their broadest reasonable construction consistent with the specification” and
if the Specification does not provide a definition for claim terms, the PTO
applies a broad interpretation). We do not find—and Appellant has not
directed our attention to—any limiting definitions in the Specification, nor
does Appellant provide any persuasive reasoning or credible evidence to
establish that the Examiner’s interpretation of the language of claim 1 is
unreasonable.
Accordingly, we sustain the Examiner’s rejection of claim 1 and
claims dependent thereon that are not separately argued, inclusive of
separately rejected claim 20 (Appeal Br. 16).
Claims 9 and 17
Appellant’s arguments all focus on the alleged failure of Rhoads to
disclose in a single embodiment both a web wiper and a wiper as recited in
claim 9 (e.g., Appeal Br. 13–15; Reply Br. 7, 9). However, as pointed out by
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the Examiner, Figure 33 of Rhoads does include both a web-wipe 268 and a
web wiper 70 (Ans. 5). Appellant’s arguments relating to the function of the
wiper are not persuasive of error. Functional language may only serve to
patentably differentiate a claimed apparatus by means of further limiting its
structure, thus where there is reason to conclude that the structure of the
prior art is inherently capable of performing the claimed function, the burden
shifts to the applicant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d
212, 215 (CCPA 1981); In re Brown, 459 F.2d 531, 535 (CCPA 1972).
Appellant has not shown that the wiper of Rhoads would not have
been capable of the recited function “to squeegee an amount of immiscible
fluid from the web-wipe to the surface of the printhead nozzle plate”
especially when considered in combination with the teachings of Le. The
Examiner also points out that Le teaches the fluid be used to create an oil
membrane 28 on the printhead nozzles (Ans. 5). Appellant does not
specifically address the combination of Le with Rhoads (generally Appeal
Br.).
Thus, we affirm the Examiner’s rejection of claims 9 and 17.
Claim 14
Claim 14 is directed to a method (Appeal Br. 20, Claims Appendix).
Appellant argues that the references do not describe ejecting fluid from some
nozzles while not ejecting fluid from other nozzles “that are at least partially
capped with the immiscible fluid” as recited in method claim 14 (Appeal Br.
14, 15). Appellant states that Rhoads describes wiping the fluid off before
operation of the printing device (Reply Br. 8). These arguments are not
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persuasive of error as they fail to consider the applied prior art as a whole
and the inferences that one of ordinary skill would have made. The
Examiner points out that Le ejects ink through the immiscible liquid in each
nozzle and furthermore Le caps the nozzles with the immiscible fluid and
then prints with some of the nozzles (Ans. 6). Appellant does not adequately
address, and thus has not shown error in, the Examiner’s position that at
least some of the unused nozzles in a method performed based on the
combined teachings of Rhoads/Le would have been “at least partially
capped” with the immiscible fluid as recited in claim 14. See KSR, 550 U.S.
at 417 (the predictable use of known prior art elements or steps performing
the same functions they have been known to perform is normally obvious;
the combination of familiar elements/steps is likely to be obvious when it
does no more than yield predictable results); Ball Aerosol and Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(under the flexible inquiry set forth by the Supreme Court, the PTO must
take account of the “inferences and creative steps,” as well as routine steps,
that an ordinary artisan would employ).
Claim 19
Appellant argues that channels ending in a microvalve are not shown
in Rhoads and that the Examiner has taken improper official notice that
microvalves are known (Appeal Br. 16; Reply Br.10). These arguments are
not persuasive of error as they fail to consider the applied prior art as a
whole and the inferences that one of ordinary skill would have made
(Ans. 7; Final Action 9).
Microvalves are explicitly discussed in Le (Le, col. 4, l. 63 to col. 5,
l. 5). Appellant does not adequately address, and thus has not shown error in,
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the Examiner’s position that it would have been obvious to terminate each
channel used to deliver an immiscible fluid to a printhead nozzle plate with a
microvalve based on the combined teachings of Rhoads and Le.
Thus, we affirm the Examiner’s rejection of claim 19.

Accordingly, we sustain the Examiner’s prior art rejections under
35 U.S.C. § 103 of all the claims on appeal for the reasons given above and
presented by the Examiner.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–19 § 103 Rhoads, Le 1–19

20 § 103 Rhoads, Le,
Sameshima

20
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
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