Ex Parte Corrigan

Board of Patent Appeals and Interferences

Dec 9, 2008

11332957 (B.P.A.I. Dec. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GEORGE H. CORRIGAN
____________

Appeal 2008-1864
Application 11/332,957
Technology Center 2800
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Decided: December 9, 2008
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Before BRADLEY R. GARRIS, PETER F. KRATZ, and ROMULO H.
DELMENDO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 26-28. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM the Examiner's decision for the reasons expressed in the
Answer and below.

Appeal 2008-1864
Application 11/332,957

Statement of the Case

Appellant claims a fluid ejection device 240 comprising an internal
power supply path 292 and a power regulator 200 providing an offset
voltage 214 from the internal power supply path voltage (claim 26; Figs.
6-8).
Further details concerning this claimed subject matter are set forth in
representative independent claim 26 which reads as follows:
26. A fluid ejection device comprising:

an internal power supply path;
a power regulator providing an offset voltage from the internal power
supply path voltage, the power regulator including a self-calibration circuit
adapted to determine a regulation band of the power regulator defined by a
lower set point offset voltage and an upper set point offset voltage;

a group of nozzles;

a corresponding group of firing resistors; and

a corresponding group of switches controllable to couple a selected
firing resistor of the group of firing resistors between the internal power
supply path and the offset voltage to thereby permit electrical current to pass
through the selected firing resistor to cause a corresponding selected nozzle
to fire;

wherein the power regulator further includes a feedback amplifier
having a first input coupled to the offset voltage, a second input coupled to a
feedback line, and an output coupled to a drive line;

wherein a selected switch corresponding to a selected firing resistor
includes a control gate controlled by the drive line;

wherein the selected firing resistor of the group of firing resistors
includes a first terminal and a second terminal coupled to the feedback line,
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Appeal 2008-1864
Application 11/332,957

wherein the drive line provides the offset voltage to the feedback line and
the second terminal of the selected firing resistor through the selected
switch; [and]

wherein the selected switch is coupled between the internal power
ground and the second terminal of the selected firing resistor.

The Examiner rejects all claims under 35 U.S.C. § 103(a) as being
unpatentable over Bohorquez (US 5,357,081) in view of Suzuki (US
4,514,737) and Doluca (US 6,208,127 B1).
The Examiner relies on Suzuki and Doluca to support a conclusion
that it would have been obvious for one with ordinary skill in this art to
provide the fluid ejection device of Bohorquez with the claim 26 features
"from the internal power supply path voltage" and "a self-calibration circuit"
(Ans. 5-6).
Issue1
Has Appellant shown that Bohorquez's power regulator (i.e., power
control 20 of Fig. 3) does not inherently perform the claim 26 function
"providing an offset voltage"?

1 In the Reply Brief, Appellant advances an argument not presented in the
Appeal Brief. Specifically, Appellant argues that "Doluca fails to teach or
suggest the claimed soft-calibrations circuit [required by independent claims
26 and 28]" (Reply Br. 3). An appellant may not properly advance an
argument in the Reply Brief which, as here, could have been but was not
presented in the Principal Appeal Brief. Such an argument is considered
waived. Cross Medical Prods. Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1320-21 n. 3 (Fed. Cir. 2005).

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Appeal 2008-1864
Application 11/332,957

Findings of Fact
Figure 3 of Bohorquez displays a prior art circuit for a fluid ejection
device (col. 3, ll. 17-19, col. 4, ll. 7-11).
The Examiner finds that power control 20 and feedback amplifier 16
in the Figure 3 circuit constitute a power regulator (Ans. 3). The Examiner
also finds that "voltage (at the positive input of element 16 in Figure 3)
provided from the power control (20) to the feedback amplifier (16) to
control electrical current passing firing resistor R1 reads on the claimed
offset voltage" (Ans. 7). The Examiner acknowledges that "Bohorquez does
not name the voltage (at the positive input of element 16 in Figure 3) as
"offset voltage", [but nevertheless finds that] such voltage reads on the
Appellant's offset voltage based on the similar ways they both are provided
and their similar functions to drive printing elements (firing resistors)" (id.).
The Examiner alternatively expresses these findings by stating that "the
claimed offset voltage, given its broadest reasonable interpretation and in
light of the specification, is simply a voltage that is provided from the power
regulator to the feedback amplifier to thereby permit electrical current
passing through a firing resistor" and that "Bohorquez's voltage (at the
positive input of element 16 in Figure 3) provided from the power control
(20) to the feedback amplifier (16) to control electrical current passing firing
resistor R1 reads on the claimed offset voltage as interpreted above" (Ans.
7).
Principles of Law
"To anticipate a claim [limitation], a prior art reference must disclose
[the] . . . limitation . . . , either explicitly or inherently." In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997).
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Application 11/332,957

Although, "[a] patent applicant is free to recite features of an
apparatus either structurally or functionally [,] . . . choosing to define an
element functionally, i.e., by what it does, carriers with it a risk." Schreiber,
128 F.3d at 1478. "[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on." Id., quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).
To overcome a prima facie case of . . . [unpatentability] based on
inherency, it is an applicant's burden "to show that the prior art structure did
not inherently possess the functionally defined limitations of th[e] claimed
apparatus." Id.
Analysis
Appellant argues that "the explanation of Figure 3 in Bohorquez says
nothing about an offset voltage being provided by the power control 20"
(App. Br. 11; see also App. Br. 15, Reply Br. 2-3). This argument is
unpersuasive of error in the rejection.
Significantly, Appellant has not disputed the Examiner's above
discussed findings that the claimed offset voltage and Bohorquez's Figure 3
voltage are provided in similar ways to perform similar functions. These
findings constitute a basis in fact coupled with technical reasoning which
support a determination that the Figure 3 circuit of Bohorquez provides a
voltage which inherently possesses the capability of performing an offset
function; that is, the power regulator of the prior art circuit inherently
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Application 11/332,957

provides an offset voltage as required by claim 26. In response to
Appellant's argument, we (like the Examiner) acknowledge that Bohorquez
does not expressly describe the voltage as the claimed "offset voltage."
However, this begs the issue of whether this claim limitation is inherently
disclosed by Figure 3 of Bohorquez.
On the record before us, Appellant has failed to carry the burden of
showing that Bohorquez's Figure 3 circuit does not inherently possess the
"offset voltage" limitation of the claimed invention.
Conclusions of Law
Appellant has failed to show that Bohorquez's power regulator does
not inherently perform the claim 26 function "providing an offset voltage."
Therefore, we sustain the § 103 rejection of all claims as being
unpatentable over Bohorquez in view of Suzuki and Doluca.
Order
The decision of the Examiner is affirmed.
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)(iv).
AFFIRMED

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