Ex Parte Berrios et al

Patent Trial and Appeal Board

Jun 15, 2016

12400638 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/400,638 0310912009
22879 7590 06/17/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Jacinto Berrios
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82248035 4364
EXAMINER
VALENCIA, ALEJANDRO
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
06/17/2016 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
barbl@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 JACINTO BERRIOS, MATIAS NEGATU,
RAFAEL ULACIA PORTOLES, and MICHAEL W. MUNRO
Appeal2015-000609
Application 12/400,638
Technology Center 2800
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 11, and 14. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2015-000609
Application 12/400,638
ANALYSIS
Claim 1 recites, among other limitations, "the wiping liquid travels
from the absorbent material to the top of the housing and down the
downward-sloped surface [of the housing] via gravity." See App. Br. 7.
Independent claims 11 and 14 each recite a similar limitation. See App. Br.
10, 11. The Examiner rejected claims 1, 11, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Medin (US 6,375,302 Bl; issued Apr. 23,
2002) and MPEP §§ 2114, 2144.04. Final Act. 2--4.
The Examiner found Medin teaches the above-noted limitation of
claim 1. See Final Act. 2-3 (citing Medin Figs. 2, 6; col. 7, 11. 25--48; col. 9,
11. 7-27). In particular, the Examiner found Medin teaches a service station
having an applicator with a downward-sloped surface, wherein the
applicator is housed within a hollow receptacle and is made of a porous
material soaked with an inkjet ink solvent. See Ans. 2; Final Act. 2-3 (citing
Medin Fig. 2; col. 7, 11. 25--48); see also Medin col. 7, 11. 61---65. The
Examiner reasoned that although Medin's wiper contacts the applicator and
thereby picks up solvent, at least some quantity of solvent will be left on the
applicator and will necessarily travel down its downward slope via gravity.
See Ans. 2-3; Final Act. 3 (citing Medin Fig. 6; col. 9, 11. 7-27).
Appellants argue that contrary to the Examiner's findings, Medin's
solvent moves into applicator and stays there; it does not travel from the
applicator to the top of the housing and down the downward-sloped surface
via gravity. See App. Br. 5; Reply Br. 2. Appellants explain that because
Medin's wipers contact only the applicator, any solvent not picked up by the
wipers would be reabsorbed into the applicator. See Reply Br. 2. In support
of their position, Appellants note it would be undesirable for Medin's
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Appeal2015-000609
Application 12/400,638
solvent to travel down the downward-sloped surface because the solvent
would pool at the bottom of Medin's hollow receptacle where it could not
escape. See App. Br. 5; Reply Br. 2; Medin Fig. 2.
We are persuaded of error. First, the Examiner has not shown that
Medin's solvent travels to the top of its hollow receptacle, or "housing" as
required by the disputed limitation. See Ans. 2-3; Final Act. 3 (citing Medin
Fig. 2, item 104). Second, as discussed above, the Examiner reasoned that at
least some of Medin's solvent necessarily travels down the
downward-sloped surface of the applicator. See Ans. 2-3. But the cited
passages of Medin are silent regarding solvent remaining on the applicator,
and the Examiner has not provided persuasive evidence why such solvent
would travel down the slope of applicator instead of merely being
reabsorbed therein, as asserted by Appellants. See Medin col. 9, 11. 7-27;
col. 7, 11. 25--48; Ans. 2-3; Final Act. 2--4; Reply Br. 2.
In view of the foregoing, we agree with Appellants that the Examiner
erred in finding that Medin teaches or suggests that "the wiping liquid
travels from the absorbent material to the top of the housing and down the
downward-sloped surface [of the housing] via gravity," as required by
claims 1, 11, and 14. Therefore, we do not sustain the Examiner's rejection
of claims 1, 11, and 14.
DECISION
The decision of the Examiner to reject claims 1, 11, and 14 under
35 U.S.C. § 103(a) is reversed.
REVERSED
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