Ex parte Buonanno

Board of Patent Appeals and Interferences

Dec 9, 1999

08218951 (B.P.A.I. Dec. 9, 1999)

Application for patent filed March 23, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MARK A. BUONANNO
__________
Appeal No. 1997-0316
Application 08/218,9511
__________
ON BRIEF
__________
Before THOMAS, KRASS, and DIXON, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 12, 15 through 21 and 23 through 25, all of
the claims pending.
Appeal No. 1997-0316
Application No. 08/218,951
The amendment after final filed July 19, 1996, Paper No.2
11, has been treated as entered in accordance with the
examiner’s instructions even though, at the time of this
decision, it had not been physically entered.
2
The invention is directed to a thermal inkjet printhead.
More particularly, an electrically activated heating element
is disposed in thermal communication with ink in the ink
firing chamber and a continuous thermally insulating layer
having at least one heterogeneous nucleation site in the form
of a discontinuity in the thermally insulating layer is placed
between the heating element and the ink firing chamber. The
discontinuity allows consistent location of the ink bubble at
a selected location on the thermally insulating layer since it
reduces the free energy of formation for the ink bubble.
Representative independent claim 1 is reproduced as2
follows:
1. A thermal inkjet printhead arranged such that a
consistently located gas phase ink bubble is formed
comprising:
an ink firing chamber for containing ink;
an electrically activated essentially planar heating
element disposed in thermal communication with said ink firing
chamber;
a thermally insulating layer disposed continuously
between said heating element and said ink firing chamber, said
Appeal No. 1997-0316
Application No. 08/218,951
Our understanding of the Shiozaki and Taniguchi3
references is based on English translations thereof provided
by appellant.
3
thermally insulating layer further comprising at least one
preferred heterogeneous nucleation site as a discontinuity in
said thermally insulating layer which reduces the critical
free energy of formation for the gas phase ink bubble and
selectively disposed on a surface of said thermally insulating
layer which is in contact with ink when ink is in said ink
firing chamber, whereby a consistently located gas phase ink
bubble may be formed; and
an orifice plate forming at least one boundary of said
ink firing chamber and including at least one orifice from
which ink from said ink firing chamber is expelled normal to
the plane of said heating element when said heating element is
electrically activated.
The examiner relies on the following references:
Scheu 4,513,298 Apr. 23, 1985
Shiozaki 63-34144 Feb. 13, 19883
Taniguchi et al. 2-103150 Apr. 16, 19903
(Taniguchi)
Claims 1 through 12, 15 through 21 and 23 through 25
stand rejected under 35 U.S.C. § 103. As evidence of
obviousness, the examiner cites Shiozaki in view of Taniguchi
with regard to claims 1 through 7, 12, 15 through 17, 21, 23
and 24 and Shiozaki in view of Scheu with regard to claims 8
through 11, 18 through 20 and 25.
Appeal No. 1997-0316
Application No. 08/218,951
4
Reference is made to the brief and answer for the
respective positions of appellant and the examiner.
OPINION
We reverse.
Each rejection under 35 U.S.C. § 103 is based on a
combination of Shiozaki and another reference. Both appellant
and the examiner agree that while the instant claimed
invention is directed to a “top shooter” printhead, i.e.,
where ink is ejected in a direction perpendicular to the plane
of the heater resistor, as is Taniguchi and Scheu, the primary
reference to
Shiozaki is directed to a “side shooter” printhead, i.e.,
where ink is ejected in a direction parallel to the plane of
the heater resistor.
Accordingly, the examiner is combining different types of
printhead technologies (the “side shooter” of Shiozaki with
the “top shooters” of Taniguchi and Scheu) in order to arrive
at the instant claimed invention. While the instant claims do
not recite a “top shooter” printhead specifically, it is clear
that this is the type of technology to which the instant
claims are directed. Independent claims 1 and 12 recite “ink
Appeal No. 1997-0316
Application No. 08/218,951
5
from said ink firing chamber is expelled normal to the plane
of said heating element.” Independent claims 8, 18 and 25
each recite a heterogeneous nucleation site selectively
disposed “within an essentially perpendicularly projected
footprint of one orifice on a surface of said barrier
layer...” or “within a footprint of one of said at least one
orifice essentially perpendicularly projected on said
thermally insulating layer...”
Appellant explains in great detail, at pages 7-9 of the
brief, why the “top shooter” and “side shooter” printheads are
not interchangeable technologies because of different kinds of
problems and concerns and how Shiozaki’s “side shooter”
printhead does not need to control the location of vapor
bubble formation. Yet, in the face of this reasonable
explanation as to why the skilled artisan would not seek to
combine the two types of technologies, the examiner merely
takes the position that “[s]ince both forms of thermal ink jet
generate a vapor bubble to eject a drop of ink, they are
functionally alternative and interchangeable. In addition,
they are art recognized as both alternative and
interchangeable” [answer-page 5].
Appeal No. 1997-0316
Application No. 08/218,951
6
In our view, appellant has established a reasonable basis
to believe that the two types of printheads are not
interchangeable and the examiner has offered no proof of his
allegation of them being “art recognized as both alternative
and interchangeable.” In addition to a lack of any motivation
for making the suggested combinations of references, even if
combined, it is not at all clear how the examiner would modify
the “side shooter” printhead of Shiozaki, via the teachings of
the other references, in order to not only provide for the
instant claimed elements but also to provide for the “top
shooter” type of printhead required by the language of the
instant claims.
While we agree with the examiner that the discontinuity
of Shiozaki may be considered to be “selectively disposed,” as
broadly claimed, as explained supra, we cannot agree with the
examiner’s combination of references. We also point out, as
did appellant, that Taniguchi, albeit directed to a “top
shooter” type of printhead, actually teaches away from the
claimed invention because Taniguchi indicates [page 3 of the
translation] that discontinuities are problems to be avoided
Appeal No. 1997-0316
Application No. 08/218,951
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while the instant claimed invention purposely relies on
discontinuities.
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Application No. 08/218,951
8
The examiner’s decision rejecting claims 1 through 12, 15
through 21 and 23 through 25 under 35 U.S.C. § 103 is
reversed.
REVERSED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Errol A. Krass ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Joseph L. Dixon )
Administrative Patent Judge )
tdl
Appeal No. 1997-0316
Application No. 08/218,951
9
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