Ex Parte Buswell

Board of Patent Appeals and Interferences

Dec 22, 2009

10832030 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHEN BUSWELL
____________

Appeal 2009-002358
Application 10/832,030
Technology Center 1700
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Decided: December 22, 2009
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Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 75 through 86, which are all of the claims
pending in the above-identified application. We have jurisdiction pursuant to
35 U.S.C. § 6.
We AFFIRM.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of forming an ink jet
printhead. Claim 75 is illustrative:
75. A method of forming an ink jet printhead, the method comprising:

forming a fluid handling slot in a semiconductor substrate having a
thickness defined by a first side and a second side, the forming comprising:

forming a first trench from the first side of the semiconductor
substrate by removing bulk material from the semiconductor substrate with
ultrasonic impact grinding, the first trench being at least one half the thickness
of the substrate; and

forming a second trench from the second side of the semiconductor
substrate by etching the semiconductor substrate material with more precise
dimensional tolerances than the ultrasonic impact grinding, where at least a
portion of the second trench intersects the first trench; and

forming at least one firing chamber and orifice, on the second side
of the semiconductor substrate and being fluidically coupled to the fluid
handling slot, the firing chamber being defined to heat fluid by a corresponding
resistor and to eject heated ink through the orifice.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Baughman 5,441,593 Aug. 15, 1995
Paris 2002/0021858 A1 Feb. 21, 2002

Throop, J. W. "Chapter 4.19: Electrochemically Machined Parts" Machined
Components, pp. 4.215 and 4.242-4.246 (Hereinafter "Throop").

The Examiner maintains the rejection of claims 75-86 under 35 U.S.C.
§ 103(a) as unpatentable over Baughman, Paris, and Throop.
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Appellant's arguments focus on claims 75, 79, and 81. Accordingly, we
address Appellant's arguments regarding the rejection with respect to these
claims only. See 37 C.F.R. § 41.37(c)(1)(vii)(2009).

ISSUES
The issues are: (1) Has Appellant shown reversible error in the
Examiner's finding that Paris is analogous art? (2) If Appellant has not shown
reversible error in the Examiner's finding that Paris is analogous art, then has
Appellant shown reversible error in the Examiner's reason for combining the
cited prior art references to arrive at the inventions recited in claims 75, 79, and
81 within the meaning of §103? We decide these issues in the negative.

FINDINGS OF FACT (FF)
1. Appellant's Specification discloses that Appellant's invention relates to
micromachining a trench in a substrate, which may be silica, using, inter
alia, ultrasonic impact grinding. (Spec. pp. 1-3, and 25). In addition,
Appellant's Specification discloses that the claimed invention may use
"dry or wet etching . . . to . . . giv[e] . . . more precise . . . dimensional
tolerances" than does ultrasonic impact grinding. (Spec. p. 11).
2. Appellant does not specifically dispute any of the Examiner's findings
regarding Baughman or Paris. (Compare Ans. 3-8 with App. Br. 10-17
and Reply Br. 2-5). In this regard, Baughman teaches etching a first
portion 18' of the ink filled slot on the secondary surface of the silicon
wafer and then etching a second portion 18a of the ink filled slot on the
primary surface of the silicon wafer. (Baughman, col. 5, l. 49 to col. 6, l.
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15). Baughman teaches that this etching may be chemical etching, which
is known to be a wet etching step, plasma etching, which is known to be
a dry etching step, or a combination thereof. (Baughman, col. 5, ll. 10-
16). Baughman also teaches that "etching . . . may be used in conjunction
with . . . mechanical abrasion." (Baughman, col. 5, ll. 9-16). In addition,
Paris teaches machining a groove in a silica substrate using ultrasonic
impact grinding. (Paris, ¶ [0018]).
3. Appellant does not specifically dispute the Examiner's reason for
combining Baughman and Paris. (Compare Ans. 3-6 with App. Br. 10-
17 and Reply Br. 2-5). In this regard, the Examiner states that "it would
have been obvious . . . to modify the method of Baughman to include
ultrasonic impact grinding (USIG) to form . . . the first trench . . . because
USIG is conventionally used for forming cavities and trenches in
semiconductor materials as described by Paris." (Ans. 4). The Examiner
explains that this modification "use[s] the etching step of Baughman in
conjunction with USIG." (Ans. 7) (emphasis added).

PRINCIPLES OF LAW
The term “comprising” is open-ended and does not exclude additional,
unrecited elements. In re Baxter, 656 F.2d 679, 686-87 (CCPA 1981).
“A prerequisite to making this finding [regarding the scope and content
of the prior art] is determining what is ‘prior art’ . . . this determination is
frequently couched in terms of whether the art is analogous or not, i.e., whether
the art is ‘too remote to be treated as prior art.’” In re Clay, 966 F.2d 656, 658
(Fed. Cir. 1992)(quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). In
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determining whether art is analogous, we must determine: (1) whether the prior
art is in the same field of Appellant's field of endeavor (e.g., whether the prior
art device and Appellant's device have essentially the same function and
structure), and (2) if not, whether the prior art is reasonably pertinent to the
particular problem Appellant is trying to solve. See Clay, 966 F.2d at 658-59,
and In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986).
When assessing whether a claimed invention would have been obvious, a
court must ask “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
"[T]he absence of specific findings on the level of skill in the art does not
give rise to reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown." Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001).

ANALYSES AND CONCLUSIONS
ISSUE (1): Has Appellant shown reversible error in the Examiner's finding
that Paris is analogous art?
Appellant argues that Paris is non-analogous art. (App. Br. 14-15).
Specifically Appellant argues that
[t]he field of endeavor for Paris is optical switches . . . The
field of Applicant's endeavor is ink jet print heads and forming
fluid trenches for print heads. Thus, Paris is not in the Applicant's
field of endeavor and the first prong . . . is not satisfied.

Looking to the second prong . . . Paris is also not reasonably
pertinent to the particular problem with which the present inventor
was concerned. Paris addresses problems related to creating
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optical switch devices and the differences between silica glass
waveguides and silicon substrates. . . . Quite unrelated, the present
Inventor was concerned with forming fluid slots in print heads and
providing a faster, lower cost method.

(App. Br. 14-15). With respect to this second prong of whether the prior art is
reasonably pertinent to Appellant's problem, the Specification discloses that
Appellant's invention relates to using, inter alia, ultrasonic impact grinding to
form a trench in a substrate, which may be silica. (FF 1).
Paris, like Appellant, teaches using ultrasonic impact grinding to form a
groove, which is known to be a trench, in a silica substrate. (FF 2). Thus, Paris
is reasonably pertinent to Appellant's problem (i.e., using ultrasonic impact
grinding to form a trench in a silica substrate).
Therefore, since Paris is reasonably pertinent to Appellant's problem, we
find Appellant's argument that Paris is non-analogous art unpersuasive of
reversible error.
Thus, it follows that Appellant has not shown reversible error in the
Examiner's finding that Paris is analogous art.

ISSUE (2): Has Appellant shown reversible error in the Examiner's reason for
combining the cited prior art references to arrive at the inventions recited in
claims 75, 79, and 81 within the meaning of § 103?

With respect to claim 75, Appellant argues that "modifying Baughman to
replace the precise etching step . . . with a less precise ultrasonic impact
grinding process . . . would change the principle of operation of the invention. .
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. . Thus the proposed modification contradicts the teachings of Baughman and
is not obvious." (App. Br. 11-12).
Contrary to Appellant's argument, the Examiner's modification does not
replace Baughman's etching step with Paris' ultrasonic impact grinding step.
Instead, given that Baughman teaches that its etching step may be used in
conjunction with a "mechanical abrasion" step, the Examiner's modification of
Baughman is to employ Paris' ultrasonic impact grinding (USIG) step, a
particular kind of mechanical abrasion, as Baughman's mechanical abrasion
step. (FF 2 and 3). The Examiner explains that this modification "use[s] the
etching step of Baughman in conjunction with USIG." (FF 3). In other words,
rather than change Baughman's principle of operation, the Examiner adheres to
it because the modification merely employs a particular kind of mechanical
abrasion (i.e., USIG) to be used as Baughman's mechanical abrasion step.
Accordingly, Appellant’s argument is without persuasive merit.
Appellant also argues that "simply adding an ultrasonic impact grinding
process to Baughman still fails to teach or suggest the particular sequence and
combination of claimed elements." (Reply Br. 2). Specifically, Appellant
argues that "[t]he combined references fail to teach or suggest . . . following the
bulk removal [i.e., the ultrasonic impact grinding step] with a more precise step
of 'forming a second trench . . . by etching.'" (Reply Br. 2-3). In other words,
Appellant argues that the combined references fail to teach or suggest forming a
first trench with ultrasonic impact grinding and then forming a second trench
with an etching step. We find Appellant's argument unpersuasive of reversible
error.
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We begin by noting that Appellant, by virtue of employing the
transitional term "comprising" in the preamble of claim 75, does not exclude
other unrecited steps to form the first trench, such as an etching step. Thus,
while the claim requires using ultrasonic impact grinding to form the first
trench, it does not exclude using both ultrasonic impact grinding and etching to
form the first trench.
In reference to our above discussion, Baughman plainly teaches forming
first and second slots (trenches) via etching. (FF 2). Baughman also teaches
that its etching step may be used in conjunction with a "mechanical abrasion"
step. (FF 2). While Baughman does not mention using an ultrasonic impact
grinding step in addition to an etching step to form a first trench, Appellant does
not specifically dispute the Examiner's reason for combining Baughman and
Paris, which employs Paris' known ultrasonic impact grinding (USIG) step as
Baughman's mechanical abrasion step. (FF 2 and 3). Thus, contrary to
Appellant's argument, the combined references suggest forming a first trench
using both an ultrasonic impact grinding step and an etching step and then
forming a second trench with an etching step. Accordingly, Appellant's
argument is without persuasive merit.
Moreover, Paris discloses forming a trench using ultrasonic impact
grinding, which is a known mechanical abrasion technique. (FF 2 and 3).
Baughman discloses using a mechanical abrasion step with an etching step to
form a trench. (FF 2). Accordingly, it would have been obvious to use Paris’
USIG step as the mechanical abrasion step in Baughman’s process because such
is nothing more than the predictable use of a prior art element (i.e., USIG)
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according to its established function (i.e., mechanically abrading to form a
trench). KSR, 550 U.S. at 417.
In addition, Appellant argues that because "[t]he Office Action neither
ascertains nor reports on the level of ordinary skill in the art . . . the rejections
are improper." (App. Br. 15).
We do not find Appellant's argument persuasive of reversible error
because, given the Examiner's findings at pages 3-8 of the Answer and factual
findings 2 through 5 above, the Examiner relies on references themselves to
support his findings to reflect the appropriate level of skill in the art. See
Okajima, 261 F.3d at 1355. Since Appellant does not dispute any of the
Examiner's specific factual findings regarding any of the references, we find
Appellant's argument without persuasive merit.
With respect to claims 791 and 81, Appellant refers to the arguments
made for the rejection of claim 75. (App. Br. 16 and 17). For the reasons
discussed above, Appellant has not established that the Examiner reversibly
erred.
Thus, it follows that Appellant has not shown reversible error in the
Examiner's reason for combining the cited prior art references2 to arrive at the
inventions recited in claims 75, 79, and 81 within the meaning of § 103.

ORDER
We sustain the Examiner’s § 103 rejection of claims 75-86 over
Baughman in view of Paris and Throop.

1 We note that claim 79 does not require the feature argued by Appellant (i.e.,
ultrasonic impact grinding).
2 We note that Throop is cumulative to the teachings of Paris.
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Accordingly, the Examiner's decision is affirmed.

TIME PERIOD
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).

AFFIRMED

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