Ex parte Fajour

Board of Patent Appeals and Interferences

Nov 9, 2001

08510491 (B.P.A.I. Nov. 9, 2001)

Application for patent filed August 2, 1995, entitled1
"Franking Machine Incorporating an Inkjet Print Head," which
claims the foreign filing priority benefit under 35 U.S.C.
§ 119 of French Application 94 09 804, filed August 8, 1994.
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
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Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MICHEL FAJOUR

Appeal No. 1999-1629
Application 08/510,4911

HEARD: October 24, 2001

Before MARTIN, BARRETT, and LEVY, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1999-1629
Application 08/510,491
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1 and 3-10.
We affirm-in-part.
BACKGROUND
The disclosed invention relates to a franking machine
having an inkjet print head. Inkjet print heads have a row of
nozzles mounted perpendicular to the direction of movement of
the mail items, which nozzles are individually controlled to
print a postal mark. The postal marks have a dimension,
imposed by the postal authorities, which is less than the
length of the row of nozzles. Consequently, not all of the
nozzles are excited to print the postal mark. The problem is
that if any nozzle is not excited for some time, the ink
inside it tends to dry, which clogs the nozzle, and the dried
ink in the nozzle is likely to block any movement of the
piezoelectric walls of the nozzle in question. "This
phenomenon of immobilization of the piezoelectric walls of a
nozzle propagates from nozzle to nozzle and eventually leads
to general dysfunctioning of the print cartridge."
(Specification, p. 3, lines 11-14).
Appeal No. 1999-1629
Application 08/510,491
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Appellant discloses two embodiments to solve the problem.
In a first embodiment, a controller operates a fixed set of
consecutively disposed nozzles, the set being less than all
the nozzles in the row, to print a postal mark on a mail item,
and then operates the other nozzles when there is no mail item
in front of the print head, such that the other nozzles are
cyclically purged (claims 1, 3, 7, and 9). In a second
embodiment, a controller alternatively operates different sets
of consecutively disposed nozzles, each set having a number of
nozzles less than the total number of nozzles in the row, to
print the postal mark on a plurality of mail items, such that
in time, all of the nozzles are operated (claims 4-6, 8, and
10).
Claim 1 is reproduced below.
1. A franking machine comprising:
an inkjet print head including a row of nozzles;
a controller for selectively operating said
print head to print a postal mark on a mail item passing
under said print head with said print head in a print
position, only a set of said nozzles which are disposed
consecutively in the row being operated by the controller
to print the postal mark, said set being less than a
total number of said nozzles in the row,
wherein said controller further operates other
of said nozzles of said row of nozzles, different than
Appeal No. 1999-1629
Application 08/510,491
A translation has been prepared by the U.S. Patent and2
Trademark Office and accompanies this opinion. We rely only
on the English-language abstract in making our decision.
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said set of nozzles, when said print head is at said
print position and there is no mail item in front of the
print head in order to eject ink from said other nozzles
to prevent said other nozzles from becoming clogged over
time; and
a reservoir disposed below said print head at
said print position into which said ink is ejected by
said other of said nozzles.
THE PRIOR ART
The Examiner relies on the following references:
Dagna et al. (Dagna) 4,485,386 November 27,
1984
Fisher et al. (Fisher) 5,051,761 September 24,
1991
Herbert 5,189,442 February 23,
1993
Nakagawa JP 63-252748 October 19,2
1988
(Japanese Kokai)
Herbert discloses a franking machine with an ink jet
printer. Debris from mail items which is liable to be
deposited on the nozzles of the print head is removed
periodically by a cleaning device (roller 26 having a wiper
pad 27) operating when there is a gap between successive mail
items (abstract; col. 3, line 52 to col. 4, line 26; Fig. 1).
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Application 08/510,491
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Herbert discloses utilizing melted solid ink, but states that
the cleaning means may be used with inkjet print heads
utilizing liquid inks (col. 6, lines 13-20). The operation of
the printing nozzles is checked by printing a bar code by
operating all of the nozzles and then parts of the bar code
printed by different ones of the nozzles are optically sensed
and checked that they are properly printed (col. 4,
lines 27-67). Data signals may be sent to the print head in
either a serial fashion (Fig. 3; col. 5, lines 11-28) or a
parallel fashion (Fig. 4; col. 5, lines 51-63).
Nakagawa is directed to an anti-clogging device in an
inkjet printer. When nozzles are exposed to the atmosphere
for a set time without discharging ink or when the number of
discharge cycles is extremely low, moisture in the ink inside
the nozzles can evaporate causing sticking, clogging, and
discharge failure (translation, p. 4). The prior art drives
all the nozzles at periodic intervals to discard old ink to
provide anti-clogging control; however, this reduces printer
throughput and increases costs (translation, p. 4). Nakagawa
provides a counter that counts the number of discharges per
nozzle individually, compares the number of discharges to a
Appeal No. 1999-1629
Application 08/510,491
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set value, and then discharges an appropriate amount of ink
from only the nozzles having a count equal to or less than the
set value at a location outside the recording region
(translation, pp. 6-7; abstract).
Fisher discloses a maintenance station 18 which permits
multiple maintenance operations to be performed on a print
head through an opening in the paper handling assembly without
moving the print head to a special position (col. 5,
lines 27-31 and 57-61). Fisher recognizes that one problem
with inkjet printing systems is clogging of the print head
nozzle caused by ink drying therein due to non-use for a
period of time (col. 1, lines 62-65). One of the maintenance
operations is a capping-spitting station 22 (col. 4,
lines 63-67), where the "spitting" presumably refers to
ejecting ink. Thus, station 22 would seem to serve both a
capping and reservoir function like the head capping
mechanism 30 in Nakagawa which caps the nozzles and holds the
ejected ink from the nozzles.
THE REJECTIONS
Appeal No. 1999-1629
Application 08/510,491
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Claims 1, 3-5, and 7-10 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Herbert, Nakagawa, and
Fisher.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Herbert, Nakagawa, Fisher, and Dagna.
We refer to the final rejection (Paper No. 11) and the
examiner's answer (Paper No. 18) (pages referred to as "EA__")
for a statement of the Examiner's position, and to the brief
(Paper No. 17) (pages referred to as "Br__") and the reply
brief (Paper No. 20) (pages referred to as "RBr__") for a
statement of Appellant's arguments thereagainst.
OPINION
Grouping of claims
Appellant argues two groupings of claims (Br4):
(1) claims 1, 3, 7, and 9, which stand or fall together with
claim 1; and (2) claims 4-6, 8, and 10, which stand or fall
together with claim 4.
Claims 1, 3, 7, and 9
Claim 1 defines a controller that operates a set of
consecutively disposed nozzles, the set being less than all
the nozzles in the row, to print a postal mark on a mail item,
Appeal No. 1999-1629
Application 08/510,491
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and operates other nozzles different from the set of nozzles
when there is no mail item in front of the print head.
It appears that Herbert is the main reference primarily
because it teaches an inkjet printer used in a franking
machine. Nakagawa and Fisher show ink jet printers, but do
not disclose printing a postal mark on a mail item. Herbert
teaches cleaning external debris from the nozzles, but does
not teach cleaning the print head nozzles to prevent clogging
by ejecting ink as in Nakagawa and Fisher.
The Examiner finds that "[o]bviously, the number of
nozzles in the group would be less than the total number of
nozzles in the row in Herbert" (EA3).
We find no express support in Herbert for this finding.
However, Appellant does not dispute this finding in the briefs
and, when asked at oral hearing, counsel for Appellant agreed
that such limitation is implicit in Herbert. The admitted
prior art, although not relied on, confirms that it was known
to use less than the total number of nozzles in the row of
nozzles to print a postal mark (specification, pp. 1-3).
Therefore, we find that it was known in prior art devices,
such as Herbert, for the inkjet print head to have a row of
Appeal No. 1999-1629
Application 08/510,491
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nozzles where one set of consecutive nozzles, the set being
less than a total number of nozzles in the row, prints a
postal mark on a mail item and an other set of nozzles,
different from the set, is not used.
The Examiner finds that Herbert does not teach the
limitations of the last two paragraphs of claim 1 ("wherein
said controller . . ." and "a reservoir . . ."). The Examiner
relies on Nakagawa and Fisher. The Examiner concludes that it
would have been obvious to include the counter of Nakagawa in
Herbert to count the number of discharges of different nozzles
for the purpose of determining which nozzle(s) need
discharging to prevent clogging (EA4). The Examiner further
concludes that it would have been obvious to modify Herbert as
modified by Nakagawa to provide a reservoir and an opening in
the paper handling assembly so that the print head would not
have to be moved out of the printing position to save space
(EA5).
Appellant notes that since the counting is done on an
individual basis, the discharge in Nakagawa may occur from any
of the nozzles, even the ones that are operated during a
normal print cycle (Br5). Appellant argues that the present
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Application 08/510,491
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invention does not rely on a counting feature to initiate
operation of the other nozzles; the present machine includes a
counter that merely tracks usage of each nozzle for
replacement purposes (Br5). Appellant argues that claim 1
defines the "other nozzles" as "different than said set of
said nozzles [used to print a postal mark]," and the nozzles
operated between successive mail items are different than the
nozzles operated to print the postal mark, which is
conceptually and practically different from the counter
feature of Nakagawa (Br6). It is further argued that the
operation of the "other nozzles" depends on the location of
mail items relative to the print head, whereas Nakagawa's
counting feature operates after each print cycle on all
nozzles (RBr1-2).
It is true that Nakagawa teaches discharging from any of
the nozzles. Thus, Nakagawa as combined with Herbert would
have suggested ejecting ink from all non-used or little-used
nozzles at the same time, including the nozzles operated to
print the postal mark. However, the limitation that "said
controller further operates other of said nozzles of said row
of nozzles, different than said set of said nozzles, when
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Application 08/510,491
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. . ." (claim 1) does not preclude operating "said set of said
nozzles" as well the "other of said nozzles"; i.e., it does
not require operating only the other nozzles as argued.
Claim 1 does not preclude the use of a counter as a condition
for the controller to cause non-used nozzles to eject ink in
addition to the condition that there is no mail item in front
of the print head. While Appellant's invention does not
require a counter if the nozzles are purged after every
franking cycle (specification, p. 7, lines 29-32), it would
require a counter if the nozzles were purged every ten
franking cycles (specification, p. 8, line 7). Thus, a
counter is not inconsistent with the disclosed invention. It
is also noted that the limitation of "a reservoir disposed
below the print head at said print position into which said
ink is ejected by said other of said nozzles" (claim 1) does
not preclude the reservoir from capturing ink from all
nozzles, although it is disclosed that the reservoir can be
small and compact because it only has to collect ink purged
from the nozzles not used for printing (specification, p. 7,
lines 16-20).
Appeal No. 1999-1629
Application 08/510,491
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Based on our claim interpretation, we conclude that it
would have been obvious to one of ordinary skill in the inkjet
printing art to operate the other nozzles in Herbert, the ones
not used for printing, "in order to eject ink from said other
nozzles to prevent said other nozzles from becoming clogged
over time" (claim 1) in view of Nakagawa's teaching of
operating non-used or little-used nozzles periodically to
prevent the nozzles from becoming clogged. Appellant does not
argue the limitations about ejecting ink "when said print head
is at said print position and there is no mail item in front
of said print head" (claim 1) and does not address the
teachings of Fisher which are applied to show that ink can be
ejected with the print head at the print position and when no
item is in front of the print head. Thus, the rejection as to
these limitations is not contested. See 37 CFR
§ 1.192(c)(8)(iv) (1998) (the brief shall specify the errors
in the rejection). Nevertheless, it is noted that Fisher
teaches ejecting ink into a reservoir (the "spitting" station)
to prevent clogging without moving the print head, and both
Herbert and Fisher teach cleaning the nozzles while there are
no items in front of the print head (which would also seem to
Appeal No. 1999-1629
Application 08/510,491
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be a matter of common sense). The references provide
sufficient evidence to establish a prima facie case of
obviousness. The rejection of claims 1, 3-5, and 7-10 is
sustained.
Claims 4-6, 8, and 10
Claim 4 defines a controller that alternatively operates
different sets of consecutively disposed nozzles, each set
having a number of nozzles less than the total number of
nozzles in the row, to print the postal mark on a plurality of
mail items, such that in time, all of the nozzles are
operated. That is, the set of nozzles that prints the postal
mark is not always the same.
The Examiner states (EA5-6):
The features recited in claim 4 the "controller
alternatively operates different ones of said sets of
said nozzles so as in time to operate all of said nozzles
of said row of nozzles" are at least suggested by
Herbert.
As stated at column 5, lines 3-10, Herbert suggests
that print head can be controlled by print signals which
are sent either serially or in parallel. Because the
controls of the group of nozzles are associated with the
print signals, respectively, the group of nozzles is thus
also responded either serially or in parallel.
Eventually, by firing nozzles in sequentially [sic] order
all nozzles in the row will be fired over time. As for
controlling the actuating of nozzles in a particular
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Application 08/510,491
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manner (sequential, random, cyclic, alternating), it is
to be noted that a statement of intended use "wherein the
controller alternatively ... nozzles" does not
distinguish the claimed structural apparatus over the
prior art's.
Appellant argues that the serial/parallel teaching bears
exclusively on the manner of signal transmission, and is
irrelevant with respect to a particular group of nozzles used
to print an individual franking impression (RBr3). It is
argued that claim 4 requires more than firing of all the
nozzles in the row over time, but requires a sets of nozzles
which are operated to print the postal mark, each set having
less than the total number of nozzles in the row and being
offset from each other so as to include some of the nozzles of
the other sets (RBr3-4). Lastly, Appellant argues that the
"wherein" language is a functional limitation, not a statement
of intended use which the Examiner is free to dismiss (RBr4).
We agree with Appellant. As discussed in connection with
claim 1, it was known to have an inkjet print head in devices
such as Herbert with a row of nozzles where one set of
consecutive nozzles, the set being less than the total number
of nozzles in the row, prints a postal mark on a mail item and
an other set of nozzles, different from the set, is not used.
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Application 08/510,491
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However, Herbert does not teach or suggest operating sets of
nozzles to print the postal mark, each set having less than
the total number of nozzles and being offset from each other
so as to include some of the nozzles of the other sets (i.e.,
the sets overlap one another). Herbert does not teach or
suggest using different sets of nozzles to print the postal
mark. The serial/parallel nature of the signal transmission
to the print head in Herbert has nothing to do with the
printing. The serial registers 51 in Herbert are loaded in
serial and read out in parallel to operate, via buffers 52,
the piezoelectric devices 50 of the print nozzles 11 (col. 5,
lines 20-28). To the extent the Examiner assumes the nozzles
are driven sequentially, one nozzle at a time, so as to
eventually fire all nozzles, this is error: the nozzles are
all driven at one time. In addition, a "set" requires a
"plurality of nozzles disposed consecutively in the row";
thus, operating nozzles individually in sequence does not meet
the claim language. We agree with Appellant that the
"wherein" limitation is a functional limitation, not a mere
statement of intended use, and is not taught or suggested by
Herbert or the other references. For these reasons, we
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Application 08/510,491
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conclude that the Examiner has failed to establish a prima
facie case of obviousness. The rejection of claims 4-6, 8,
and 10 is reversed.
Gatten not considered
The Examiner cites Gatten, U.S. Patent 4,989,016, for the
first time during prosecution in the examiner's answer (EA6).
Appellant argues that the Examiner's reliance on Gatten,
which is not even of record in the case, is inappropriate
(RBr4).
We agree with Appellant. Gatten is not properly before
us and will not be considered. The rejection must contain a
mention of all references applied in the rejection. See
In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970); Ex parte Movva, 31 USPQ2d 1027, 1028 n.1 (Bd.
Pat. App. & Int. 1993). Accord Ex parte Hiyamizu,
10 USPQ2d 1393, 1394 (Bd. Pat. App. & Int. 1988); In re Raske,
28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int. 1993); MPEP
§ 706.02(j) (7th ed., rev. 1, Feb. 2000). If Gatten was
considered, it would improperly create a new ground of
rejection, which was not permitted at the time the examiner's
answer was entered. See 37 CFR § 1.193(a)(2)(1998).
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Application 08/510,491
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Application 08/510,491
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CONCLUSION
The rejection of claims 1, 3-5, and 7-10 is sustained.
The rejection of claims 4-6, 8, and 10 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JOHN C. MARTIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 1999-1629
Application 08/510,491
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