Ex Parte Baiges

Board of Patent Appeals and Interferences

Jul 18, 2005

10057619 (B.P.A.I. Jul. 18, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte IVAN J. BAIGES
____________
Appeal No. 2005-1273
Application No. 10/057,619
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ON BRIEF
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Before FRANKFORT, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 19
and 21 to 44, which are all of the claims pending in this application.
We REVERSE and REMAND.
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Application No. 10/057,619
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1Claim 44 was not included in the statement of this rejection. However, it is clear
from the rejection that the examiner meant to include claim 44 in this ground of
rejection.
BACKGROUND
The appellant's invention relates generally to inkjet printing devices. ln particular,
the appellant's invention is an inkjet printing system having multiple printheads for
depositing ink droplets onto print media to form images and text on different areas of the
print media at the same time. The use of multiple printheads printing at the same time
on different portions of the print media results in greatly increased print media
throughput for the inkjet printing system (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Logan 4,910,871 Mar. 27, 1990
Asakawa 4,940,998 July 10, 1990
Granzow 5,677,719 Oct. 14, 1997
Chapin et al. (Chapin) 5,838,343 Nov. 17, 1998
Yashima et al. (Yashima) 6,164,747 Dec. 26, 2000
Claims 1 to 6, 8 to 14, 18, 19, 21 to 28, 30 to 33 and 35 to 44 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Yashima in view of Granzow.1
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Application No. 10/057,619
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Claims 7 and 34 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Yashima in view of Granzow and Logan.
Claims 15 to 17 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Yashima in view of Granzow and Asakawa.
Claim 29 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Yashima in view of Granzow and Chapin.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(mailed November 1, 2004) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed October 5, 2004) and reply brief (filed December 20,
2004) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of
all the evidence before us, it is our conclusion that the evidence adduced by the
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Application No. 10/057,619
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examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 1 to 19 and 21 to 44 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention. See
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
In the rejection of the independent claims on appeal (i.e., claims 1, 19, 30 and
44), the examiner (answer, pp. 4-10) concluded that it would have been obvious for a
person of ordinary skill in the art at the time of the invention to have modified the Figure
10 embodiment of Yashima so as to position an unprinted print medium (e.g., a blank
sheet of paper) so that the first movable printhead assembly (head 31A of Yashima, see
Figure 10) and the second movable printhead assembly (head 31B of Yashima, see
Figure 10) deposit ink only on the first and the second portions respectively without
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Application No. 10/057,619
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depositing ink on other portions as suggested by Granzow. The examiner states that
the motivation for doing so would have been to achieve faster printing speed as taught
by Granzow (column 5, lines 12-22).
The appellant argues in the brief and the reply brief that modifying Yashima in
the manner suggested by the examiner would preclude the recording heads of the
Yashima from performing two-pass recording and printing a plurality of inks of different
densities in superposition on the same pixel, thereby defeating a ''characterizing
feature'' of Yashima and rendering Yashima unsatisfactory for its intended purpose.
Because modifying Yashima by Granzow, in the manner suggested by the examiner,
would render Yashima unsatisfactory for its intended purpose, the appellant submits
that there is no suggestion or motivation to make the proposed modification. We agree.
In our view, the only suggestion for modifying Yashima in the manner proposed
by the examiner stems from hindsight knowledge derived from the appellant's own
disclosure. The use of such hindsight knowledge to support an obviousness rejection
under 35 U.S.C. § 103 is, of course, impermissible. See, for example, W. L. Gore and
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
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Application No. 10/057,619
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2We have also reviewed the patents to Logan, Asakawa and Chapin additionally
applied in the rejection of claims 7, 15 to 17, 29 and 34 but find nothing therein that
would have made it obvious at the time the invention was made to a person having
(continued...)
On page 13 of the answer, the examiner asserts that claims 1, 19 and 44 are
each directed to an apparatus and the differences that the appellant is relying on to
establish patentability lie in the intended use statements of the apparatus. The
examiner then states that:
While the functional Iimitation[s] were considered during examination numerous
case Iaw citations as noted in MPEP 2114 refer to the necessity of apparatus
claims being structurally rather than functionally distinguished from the prior art
(i.e. citing a new use of a prior art apparatus does not result in patentability of an
apparatus claim).
In our view, this position of the examiner is contrary to the position taken by the
examiner in the rejections before us in this appeal. In any event, the functional
limitations recited in claims 1, 19 and 44 do not merely state a purpose or intended use
for the claimed structure but rather give "life and meaning" and provide further positive
limitations to the invention claimed.
For the reasons set forth above, the decision of the examiner to reject claims 1,
19, 30 and 44, and claims 2 to 18, 21 to 29 and 31 to 44 dependent thereon, under
35 U.S.C. § 103 is reversed.2
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Application No. 10/057,619
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2(...continued)
ordinary skill in the art to have modified Yashima to arrive at the claimed subject matter.
3A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is encompassed by the claim and
what subject matter is described by the reference. As set forth by the court in Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim are found in the reference, or
'fully met' by it."
REMAND
We remand this application to the examiner to consider if any pending claim is
anticipated3 by the embodiment of Granzow depicted in Figure 7. Specifically, the
examiner should determine, on the record, whether or not the claimed "print media" is
readable on Granzow's print transfer cylinder 122.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 19 and 21 to 44
under 35 U.S.C. § 103 is reversed. In addition, this application has been remanded to
the examiner for further consideration.
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Application No. 10/057,619
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This application, by virtue of its "special" status, requires immediate action, see
MPEP § 708.01.
REVERSED; REMANDED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2005-1273
Application No. 10/057,619
Page 9
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