Ex Parte Gardner et al

Patent Trial and Appeal Board

Feb 11, 2019

11961978 (P.T.A.B. Feb. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/961,978 12/20/2007
26178 7590 02/13/2019
FISH & RICHARDSON P.C. (FUJIFILM)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Deane A. Gardner
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.
09991-242001 7231
EXAMINER
KURPLE,KARL
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
02/13/2019 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEANE A. GARDNER, DANIEL ALAN WEST,
PAUL A. HOISINGTON, STEVEN H. BARSS, JOHN A. HIGGINSON,
ANDREAS BIBL, MATS OTTOSSON, and RUSS YARP 1
Appeal 2018-001416
Application 11/961,978
Technology Center 1700
Before MICHELLE N. ANKENBRAND, CHRISTOPHER C. KENNEDY,
and JEFFREY R. SNAY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3, 5-8, 11, 23, 32, and 34. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to inkjet printing. E.g.,
Spec. ,r 2; Claim 1. Claim 1 is reproduced below from page 8 (Appendix of
Claims) of the Appeal Brief:
1 According to the Appellants, the real party in interest is FUJIFILM
Dimatix, Inc., which is a subsidiary of FUJIFILM Corporation. App. Br. 1.
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Application 11/961,978
1. A printing system, comprising:
a fluid emitter configured to emit droplets into a printing region
on a substrate,
a conductive plate for supporting the substrate onto which the
droplets are emitted, wherein the conductive plate is uniformly
conductive directly underneath the printing region of the
substrate, wherein the conductive plate is grounded or
connected to a bias source, and wherein the conductive plate is
continuous and free of recesses or holes directly underneath all
of the printing region of the substrate, and
a chuck for supporting the substrate,
wherein the conductive plate is a conductive pad that is placed
between the substrate and the chuck, is a removable part that is
removable without damage to the conductive plate and that is
separate from the substrate and the chuck, and is supported by
the chuck.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
1. Claims 1, 3, 5-8, 11, and 32 over Weichart (US 2006/0108231 Al,
published May 25, 2006) and Watanabe (US 2004/0246309 Al, published
Dec. 9, 2004);
2. Claim 23 over Weichart, Watanabe, and Sekiya (US 2004/0201648
Al, published Oct. 14, 2004);
3. Claim 34 over Weichart, Watanabe, and Iwata (US 2006/0214993
Al, published Sept. 28, 2006);
4. Claims 1, 3, 5-8, 11, and 32 over Nozawa (US 5,539,179, issued
July 23, 1996), Parkhe (US 6,117,246, issued Sept. 12, 2000), and
Watanabe;
5. Claim 23 over Nozawa, Parkhe, Watanabe, and Sekiya;
6. Claim 34 over Nozawa, Parkhe, Watanabe, and Iwata.
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ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final
Act. 2-15; Ans. 3-17.
Rejections 1-3
The Appellants argue the claims subject to Rejections 1-3 as a group.
We select claim 1 as representative of the claims subject to Rejections 1-3,
and the remaining claims subject to those rejections will stand or fall with
claim 1.
The Examiner finds that W eichart teaches each element of claim 1
except the recited fluid emitter. Final Act. 2-3; Ans. 3--4.2 Of particular
relevance to the issues raised by the Appellants, the Examiner determines
that Weichart's "metallization 122," which is directly on top of carrier film
120, constitutes the claimed "conductive plate." Final Act. 2-3; Ans. 3--4;
see also W eichart Fig. 1, ,r 46. In the Response to Argument sections of
both the Final Action and the Answer, the Examiner indicates that the
Examiner alternatively considers the combination of layers 120 and 122,
collectively, to correspond to the claimed "conductive plate." See Final
Act. 13 ("Weichart clearly teaches the carrier (120) includes a conductive
layer (122). As a result, Examiner is considering the carrier to be conductive
2 Only the caption page of the Examiner's Answer includes a page number,
and it is labeled page 2. Our numbering continues sequentially from there.
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and removable and meet the broadest reasonable interpretation of the claim
limitations .... "); Ans. 14 ("Even though Applicant argues the plate
includes some dielectric material [i.e., carrier film 120], the plate includes a
conductive layer (122) which makes it conductive.").
As to the requirement that the conductive plate "is a removable part
that is removable without damage to the conductive plate," the Examiner
finds that Weichart's carrier film 120 and metallization 122 are "placed
between the substrate and the chuck" using a "clamped structure." Final
Act. 3; Ans. 3--4. The Examiner finds that Figure 1 shows carrier film 120
"held between a bottom part (111) and a top part (112) which are 'releasably
connected' and the carrier film (120) may be held by pure compressive
force." Ans. 3--4. The Examiner states that the "Examiner is considering
compressive force in this clamping mechanism to be removable based on the
'releasable connection' between the upper and lower parts of the clamping
device." Id.
As to the fluid emitter, the Examiner finds that Watanabe teaches a
fluid emitter configured to emit droplets into a printing region of a substrate.
Final Act. 3; Ans. 4. The Examiner concludes that it would have been
obvious "to modify Weichart to include a fluid emitter configured to emit
droplets into a printing region of the substrate, because Watanabe teaches
this would enable a film to be formed on the substrate to produce an electric
apparatus." Final Act. 3; Ans. 4--5.
The Appellants' arguments address only the Examiner's findings
concerning the claimed conductive plate. See App. Br. 2--4. The Appellants
argue that, to the extent the Examiner relies on metallization 122 alone as
the conductive plate, it does not fall within the scope of claim 1 because
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metallization 122 is a 0.1 µm layer that is vapor-deposited on a carrier film
120 and therefore is not "a removable part that is removable without damage
to the conductive plate," as required by claim 1. Id. at 2; Reply Br. 2
( conceding that metallization 122 "may be likened to a conductive plate" but
arguing that it "would not be 'removable without damage to it' because of,
among several factors, its small thickness"). To the extent that the Examiner
relies on the combination of carrier film 120 and metallization 122,
collectively, as the conductive plate, the Appellants argue that a person of
ordinary skill in the art would not consider the combination of elements 120
and 122 to be a "conductive plate" because Weichart teaches that element
120 is a nonconductive dielectric. App. Br. 2-3; Reply Br. 2. Additionally,
and presumably applicable to either rationale concerning the conductive
plate, the Appellants argue that "the Examiner failed to provide any
evidence in the record to support his position that Weichart's 'clamped
structure' (presumably the carrier film 120) is equivalent to a 'removable
part', let alone a conductive plate that is removable without damage." App.
Br. 3.
Those arguments are not persuasive. Consistent with the Examiner's
findings, Weichart teaches that bottom part 111 and top part 112 are
"releasably connected," and that "carrier film 120 is clamped between the
bottom part 111 and the top part 112." Weichart ,r 45. Weichart also
teaches that "[t]he clamping may be effected by a pure compressive
clamping action." Id. Metallization 122 rests directly on top of carrier film
120. See, e.g., id. Fig. 1. Given that carrier film 120 and metallization 122
are "clamped between the bottom part 111 and the top part 112," and bottom
part 111 and top part 112 are "releasably connected," we discern no error in
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the Examiner's determination that carrier film 120 and metallization 122
would be removable, without damage to either element, if the connection
between bottom part 111 and to part 112 were released, as directly
contemplated by Weichart's disclosure of a "releasabl[ e] connect[ion ]." The
Appellants' limited argument to the contrary does not address the specific
portions of W eichart on which the Examiner relies and amounts to little
more than a naked assertion that the prior art does not teach or suggest the
disputed claim limitation. See App. Br. 3; see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art."). On this record,
we are not persuaded of reversible error in the Examiner's determination that
elements 120 and 122 of Weichart's Figure 1 are removable without
damage. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has
long been the Board's practice to require an applicant to identify the alleged
error in the examiner's rejections .... ").
The Appellants' argument that, to the extent the Examiner relies on
metallization 122 alone as the claimed "conductive plate," metallization 122
does not fall within the scope of claim 1 because it is not "a removable part
that is removable without damage to the conductive plate" is also
unpersuasive. See App. Br. 2; Reply Br. 2. Even assuming that
metallization 122 could not be separated from carrier film 120 without
damage, as set forth above, the record supports the Examiner's finding that
the combination of carrier film 120 and metallization 122, collectively,
could be removed from the apparatus without damage. Thus, under an
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interpretation of Weichart in which metallization 122 alone constitutes the
conductive plate, and particularly under the broadest reasonable
interpretation of the claims consistent with the specification standard that is
applicable to this proceeding, see In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007), metallization 122 is a "removable part"
because it is removable from the apparatus without damage. The Appellants
do not persuasively explain why the fact that metallization 122 is attached to
carrier film 120, and both must be removed from the apparatus together,
causes the disclosed arrangement to fall beyond the broadest reasonable
interpretation of claim 1 that is consistent with the Specification. See App.
Br. 2. Accordingly, the Appellants' limited argument on this issue does not
persuade us of reversible error in the Examiner's rejection. See Jung, 637
F.3d at 1365.
To the extent the Examiner relies on a combination of carrier film 120
and metallization 122, collectively, as corresponding to the claimed
"conductive plate," we are likewise unpersuaded of reversible error in the
rejection. See App. Br. 2-3. In the Reply Brief, the Appellants provide a
definition from "MacMillan Dictionary" and assert that the term
"conductive" means that heat or electricity can pass through the substance.
Reply Br. 1-3. They argue that, because electricity allegedly could not pass
vertically through the entire thickness of both layers 120 and 122 of
W eichart, the combination of those two layers cannot be a conductive plate
as required by claim 1. Id.
That argument is not persuasive. As indicated above, during
prosecution, "the PTO must give claims their broadest reasonable
construction consistent with the specification." ICON Health, 496 F.3d at
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1379. Claim 1 requires that the "conductive plate is uniformly conductive
directly underneath the printing region of the substrate." The Appellants do
not dispute that layer 122 is uniformly conductive directly underneath the
printing region of the substrate in the combination proposed by the
Examiner. The Appellants point to no aspect of the Specification or the
claim language that would require a conductive plate to be conductive
through the entire thickness of the conductive plate. On the record before
us, it is reasonable for the Examiner to interpret a plate including Weichart's
layers 120 and 122 as a conductive plate because it is undisputed that layer
122 is uniformly conductive directly underneath the printing region of the
substrate, as required by claim 1. We are not persuaded of reversible error
in the Examiner's determination that the combination of Weichart's
elements 120 and 122 falls within the scope of the term "conductive plate"
recited by claim 1. See Jung, 637 F.3d at 1365.
Accordingly, we affirm the Examiner's rejection under both rationales
addressed above; i.e., ( 1) that metallization 122 alone corresponds to the
claimed conductive plate, and (2) that carrier film 120 and metallization 122,
collectively, correspond to the claimed conductive plate.
Re} ections 4-6
The Appellants argue the claims subject to Rejections 4--6 as a group.
We select claim 1 as representative of the claims subject to Rejections 4--6,
and the remaining claims subject to those rejections will stand or fall with
claim 1.
The Examiner finds that Nozawa teaches a treatment apparatus
comprising each element of claim 1 except that (1) Nozawa's conductive
plate is not removable without damage, and (2) Nozawa does not teach a
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fluid emitter. Ans. 8-9. As to the claimed "conductive plate," the Examiner
relies on Nozawa's "conductive sheet 44," which is depicted in figures and
described as being surrounded by "insulating layer[s]." Id. at 8; Nozawa at,
e.g., 4:33--42, 4:63---67 ("[T]he first insulating layer 41 comprises a lower
layer 41a and an upper layer 41b, and the conductive sheet 44 is interposed
between them."), Figs. 2, 4, 7.
As to (1) the conductive plate being removable without damage, the
Examiner finds that Parkhe teaches a conductive pad placed between a
substrate and chuck, and that the entire pad is removable without damage.
Ans. 9. The Examiner determines that it would have been obvious to
include a removable conductive pad such as that of Parkhe in the apparatus
ofNozawa "because Parkhe teaches this would allow for cleaning or
replacement." Id.
As to (2) the fluid emitter, the Examiner finds that Watanabe is
directed to a table device and film forming apparatus, and that Watanabe
teaches a fluid emitter configured to emit droplets into a printing region of a
substrate. Id. The Examiner determines that it would have been obvious to
include Watanabe's fluid emitter in Nozawa's apparatus "because Watanabe
teaches this would enable a film to be formed on the substrate to produce an
electric apparatus." Id. at 9-10.
The Appellants first argue that, in view ofNozawa's disclosure of
surrounding conductive sheet 44 by insulating layers, "it would not have
been obvious to one skilled in the art ... to replace [Nozawa's] holding
sheet 22 that has high insulation characteristics with a conductive pad."
App. Br. 5.
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That argument is unpersuasive because the Examiner does not
propose replacing Nozawa's sheet 22 with a conductive pad. As set forth
above, the Examiner finds that Nozawa's conductive sheet 44 itself, which is
located within holding sheet 22, constitutes the recited conductive plate. See
Ans. 8-9.
The Appellants next argue that even ifNozawa's holding sheet 22,
along with conductive sheet 44, "were to be made removable ... the result
would still not have been the claimed conductive plate, at least because
Nozawa's holding sheet 22 has high insulation characteristics." App. Br. 5.
That argument is not persuasive because it is conclusory and does not
persuasively explain why conductive sheet 44 itself falls beyond the
broadest reasonable interpretation of claim 1 that is consistent with the
Specification. Claim 1 requires:
a conductive plate for supporting the substrate onto which the
droplets are emitted, wherein the conductive plate is uniformly
conductive directly underneath the printing region of the
substrate, wherein the conductive plate is grounded or
connected to a bias source, and wherein the conductive plate is
continuous and free of recesses or holes directly underneath all
of the printing region of the substrate
The Appellants do not persuasively dispute that, in the proposed
combination, conductive sheet 44 (1) supports a substrate onto which
droplets are emitted, (2) is uniformly conductive directly underneath the
printing region, (3) is grounded or connected to a bias source, or ( 4) is
continuous and free of recesses or holes directly underneath all of the
printing region of the substrate. See App. Br. 4---6.
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Claim 1 further requires:
the conductive plate is a conductive pad that is placed between
the substrate and the chuck, is a removable part that is
removable without damage to the conductive plate and that is
separate from the substrate and the chuck, and is supported by
the chuck.
The Appellants do not persuasively dispute that, in the proposed
combination, conductive sheet 44 (1) is placed between the substrate and the
chuck, (2) is a removable part that is removable without damage, (3) is
separate from the substrate and the chuck, and ( 4) is supported by the chuck.
See id.
Thus, the Appellants' argument appears to be limited to the assertion
that, because Nozawa's conductive sheet 44 is surrounded by insulating
layers, it does not constitute a conductive plate. See id. However, the
Appellants point to no language in claim 1 or in the Specification that might
preclude the claimed conductive plate from being surrounded by other
layers, even insulating layers, and there is no dispute that conductive
sheet 44 itself is conductive. As set forth above, claim 1 recites that the
conductive plate "is placed between the substrate and the chuck," but, by its
plain language, claim 1 does not require that the conductive pad be placed
immediately between the substrate and the chuck or otherwise preclude
intervening layers. Similarly, claim 1 requires the conductive plate to be
"separate from the substrate and the chuck," and to be "supported by the
chuck," but again, the plain language of claim 1 does not require the
conductive plate to be "separate" from anything other than the substrate and
the chuck (such as, e.g., holding sheet 22); nor does the plain language of
claim 1 require the chuck to support the conductive plate with no intervening
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material between the chuck and the conductive plate. The Appellants
provide no persuasive analysis of the claim language in support of their
assertion that conductive sheet 44 is not a conductive plate.
Thus, on the record before us, and particularly in view of the
Appellants' limited arguments concerning the scope of claim 1, we are not
persuaded that Nozawa's "conductive sheet 44" falls beyond the scope of the
term "conductive plate" because it is surrounded by insulating layers. We
are not persuaded of reversible error in the Examiner's rejection. See Jung,
637 F.3d at 1365.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1, 3, 5-8, 11, 23, 32,
and 34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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