Ex parte Amano et al.

Board of Patent Appeals and Interferences

May 31, 2001

08974108 (B.P.A.I. May. 31, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding
precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TOSHIO AMANO, HISAYOSHI FUJIMOTO, YASUSHI EMA,
YASUHISA FUJII, and NOBUHISA ISHIDA
____________
Appeal No. 1999-1560
Application No. 08/974,108
____________
HEARD: May 23, 2001
____________
Before HAIRSTON, GROSS, and BLANKENSHIP, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 20, which are all of the claims pending
in this application.
Appellants' invention relates to an ink jet printing head. A
main frame supports a head assembly having pressure chambers filled
with ink and corresponding piezoelectric elements. Each chamber's
volume varies with a voltage applied to the associated piezoelectric
element. A hollow portion in the center of the main frame, a
Appeal No. 1999-1560
Application No. 08/974,108
2
flexible cable with electrodes for driving the piezoelectric
elements, and a flexible member keeping the piezoelectric elements
and the flexible cable in contact have an oval shape. Claim 1 is
illustrative of the claimed invention, and it reads as follows:
1. An ink jet printing head comprising:
a head assembly, including:
an ink conduit plate,
pressure chambers arrayed on the ink conduit plate, each
pressure chamber having an ink inlet at a first end of the pressure
chamber and a nozzle at a second end of the pressure chamber,
an ink conduit connected to the ink inlet of each pressure
chamber,
a diaphragm disposed over and covering an end of each pressure
chamber, and
a plurality of piezoelectric elements attached to the diaphragm
in one-to-one correspondence with the pressure chambers, wherein each
piezoelectric element is operable to move a portion of the diaphragm
to vary a capacity of a pressure chamber corresponding to the
piezoelectric element to draw ink through the ink inlet and to expel
ink through the nozzle;
the ink jet printing head further comprising:
a main frame having a first surface that supports the head
assembly, a second surface, and a hollow portion that is oval in
shape at a center of the main frame;
a flexible cable that is oval in shape and positioned in the
hollow portion of the main frame, the flexible cable including a
group of electrodes for applying a drive voltage to the piezoelectric
elements;
Appeal No. 1999-1560
Application No. 08/974,108
1 Our understanding of this reference is based upon a translation
provided by the Translations Branch of the Patent and Trademark Office, a copy
of which is attached to this decision.
3
a flexible member that is oval in shape and adjacent to the
second surface of the main frame, the flexible member keeping the
piezoelectric elements and the flexible cable in mutual contact
within the hollow portion of the main frame and preventing the
flexible cable from resonating due to movement of the piezoelectric
elements; and
a sub-frame positioned to apply pressures to secure the
flexible cable and the flexible member to the main frame.
The prior art references of record relied upon by the examiner
in rejecting the appealed claims are:
Shimizu et al. (Shimizu) 5,581,288 Dec. 03, 1996
(Filed Mar. 05, 1993)
Matsumoto et al. (Matsumoto)1 JP 01-122441 May 15, 1989
Claims 1, 2, and 4 through 20 stand rejected under 35 U.S.C. §
103 as being unpatentable over Shimizu.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Shimizu in view of Matsumoto.
Reference is made to the Examiner's Answer (Paper No. 25,
mailed March 15, 1999) for the examiner's complete reasoning in
support of the rejections, and to appellants' Brief (Paper No. 24,
filed January 4, 1999) for appellants' arguments thereagainst.
OPINION
Appeal No. 1999-1560
Application No. 08/974,108
4
We have carefully considered the claims, the applied prior art
references, and the respective positions articulated by appellants
and the examiner. As a consequence of our review, we will reverse
the obviousness rejections of claims 1 through 20.
All of appellants' arguments are directed to whether or not it
would have been obvious to make the circular elements of Shimizu
(i.e., the hollow portion of the main frame, the flexible cable, and
the flexible member) an oval shape. Accordingly, we will limit our
discussion to the modification to an oval shape for Shimizu's
circular elements.
The examiner states (Answer, page 4),
It is noted that applicants have not presented any
criticality, within the specification, of an oval cable
and an oval member which presents that the particular
configuration of the cable and member is significant or
anything more than one of numerous configurations a person
of ordinary skill in the art would find obvious for the
purpose of providing a more efficient an [sic] ink jet
head....
Accordingly, it would have been obvious to one having
ordinary skill in the art at the time the invention was
made to have used oval cables and oval members in Shimizu
et al. for the purpose of providing a more efficient an
[sic] ink jet head.
The examiner (Answer, page 6) dismisses appellants' declaration under
37 CFR § 1.132 as "lack[ing] technical validity," since it includes
Appeal No. 1999-1560
Application No. 08/974,108
5
no test results or statistical data comparing Shimizu's device to the
claimed device. Further, the examiner (Answer, pages 6-7) explains
that the test for obviousness is "what the references as a whole
would have suggested to one of ordinary skill in the art," and,
therefore, "it is not necessary that the reference(s) actually
suggest, expressly or in so many word, [sic] the changes or
improvements that the appellants have made."
First, we note that for a rejection under 35 U.S.C. § 103, the
examiner is required to provide a reason from some teaching,
suggestion or implication in the prior art as a whole, or knowledge
generally available to one of ordinary skill in the art, why one
having ordinary skill in the pertinent art would have been led to
modify the prior art to arrive at the claimed invention. Uniroyal,
Inc. v. Rudkin-Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438 (Fed.
Cir. 1988), cert. denied, 488 U.S. 825 (1988). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Furthermore, "[o]bviousness may not be established using hindsight or
in view of the teachings or suggestions of the inventor." Para-
Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087,
Appeal No. 1999-1560
Application No. 08/974,108
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37 USPQ2d 1237, 1239 (Fed. Cir. 1995), citing W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311,
312-13 (Fed. Cir. 1983). Here the examiner has provided no prior art
which would have suggested the desirability of using an oval shape
for the various elements of Shimizu. The only suggestion of an oval
shape comes from appellants' specification. Thus, the examiner has
failed to establish a prima facie case of obviousness.
Second, as to the examiner's contention that appellants have
failed to show criticality in the specification, we disagree. The
examiner apparently overlooked appellants' statements in the
specification that (1) the oval shape "assures precise, reliable and
easy positioning of the main frame, head assembly and flexible
cable," (see page 5), (2) "[t]he oval flexible cable 16 is precisely
fitted into the oval hollow portion 14a .... Thus, the electrodes
16a are easily positioned in such a manner as to precisely correspond
to the piezoelectric elements 40 on a one-to-one basis," (see page
19) and (3) "[a]ll of the hollow opening 14a, flexible cable 16,
flexible member 18 and rimmed window 22a have the same oval shape, so
that the main frame 14, flexible cable 16, flexible member 18 and
sub-frame 22 can be precisely and easily positioned with respect to
one another. Therefore, the ink jet printing head can be
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Application No. 08/974,108
7
automatically assembled," (see page 23). In other words, appellants
have indicated in the specification that the oval shape is critical
to the positioning and, thus, to automating the assembly of the
various elements.
Furthermore, appellants' declaration asserts additional reasons
for the oval shape such as better uniformity in the distances between
the pressure chambers and the nozzles and easy adjustment of the
balance of the ink conduit. Although test results and evidence of
unexpected results are two types of secondary considerations, we find
no basis for the examiner's requirement that a declaration include
evidence of unexpected results or test results comparing the prior
art to the claimed invention. Thus, even had the examiner set forth
a prima facie case of obviousness, appellants have established the
criticality for the oval shape. Consequently, we cannot sustain the
rejection of claims 1, 2, and 4 through 20.
Regarding the rejection of claim 3 over Shimizu in view of
Matsumoto, Matsumoto fails to overcome the deficiencies of Shimizu.
Therefore, we must reverse the rejection of claim 3.
CONCLUSION
Appeal No. 1999-1560
Application No. 08/974,108
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The decision of the examiner rejecting claims 1 through 20
under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1999-1560
Application No. 08/974,108
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