Ex Parte Gengrinovich et alDownload PDFPatent Trial and Appeal BoardJun 15, 201613548502 (P.T.A.B. Jun. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/548,502 07 /13/2012 22879 7590 06/17/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Semion Gengrinovich 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. 82989884 1672 EXAMINER KING, PATRICK J ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 06/17/2016 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): ipa.mail@hp.com barbl@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEMION GENGRINOVICH, RAN VILK, and LEV SUPERFIN Appeal2015-001194 Application 13/548,502 Technology Center 2800 Before: MICHAEL P. COLAIANNI, A VEL YN M. ROSS, and JENNIFER R. GUPTA, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In our decision below, we refer to the Final Office Action appealed from, mailed February 11, 2014 (Final Act.), the Appeal Brief filed June 6, 2014 (Appeal Br.), the Examiner's Answer mailed August 15, 2014 (Ans.), and the Reply Brief filed October 10, 2014 (Reply Br.). 2 Appellants identify the real party in interest as Hewlett-Packard Development Company, LP, a wholly-owned affiliate of Hewlett-Packard Company. Appeal Br. 2. Appeal2015-001194 Application 13/548,502 STATEMENT OF CASE The claims are directed to an apparatus for delivering ink to a printhead. Spec. i-f8. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus comprising: a tank to hold a fluid for delivery to a printhead, the tank being open to the atmosphere; a manifold to enable the fluid to flow from the tank to the printhead, a height of the manifold being lower than a level of the fluid in the tank when the fluid is flowing from the tank to the printhead; and a siphon, a lower end of the siphon being connectable to the manifold, an upper end of the siphon extending above the level of the fluid and being openable to the atmosphere, a height of a segment of the siphon between the upper end and the lower end being lower than the height of the manifold. Claims Appendix at Appeal Br. 15. REJECTIONS The Examiner made the following rejections: A. Claims 1-3 and 5 stand rejected under 35 U.S.C §103(a) as being unpatentable over Brooks3 in view of Hibbard.4 Final Act. 8. B. Claim 4 stands rejected under 35 U.S.C §103(a) as being unpatentable over Brooks, in view of Hibbard and in further view of Shimoda. 5 Id. at 11. 3 Brooks et al., US 6,302,516 Bl, issued October 16, 2001 (hereinafter "Brooks"). 4 Hibbard et al., US 2011/0279592 Al, published November 17, 2011 (hereinafter "Hibbard"). 5 Shimoda et al., US 2012/0105520 Al, published May 3, 2012 (hereinafter "Shimoda"). 2 Appeal2015-001194 Application 13/548,502 C. Claims 6 and 7 stand rejected under 35 U.S.C §103(a) as being unpatentable over Brooks, in view of Hibbard, and in further view of Hudd. 6 Id. at 12. Appellants request our review of rejections A---C and state that "[t]he claims do not stand or fall together. ... Appellant presents separate arguments for various independent and dependent claims." Appeal Br. 8. Appellants, however, refer only to claim 1 in arguing against Rejection A and for Rejections Band C, Appellants state the rejections "should be reconsidered and withdrawn for at least the same reasons given above in favor of the patentability of independent claim 1." Id. at 13 and 14. Therefore, we focus our discussion on the rejection of claim 1 as unpatentable over the combination of Brooks and Hibbard (Rejection A) to resolve the issues on appeal. OPINION The Examiner rejects claims 1-3 and 5 as being unpatentable over Brooks in view of Hibbard. Final Act. 8. According to the Examiner, 6 Rudd et al., WO 02/096654 Al, published December 5, 2002 (hereinafter "Rudd"). 3 Appeal2015-001194 Application 13/548,502 Figure 1 of Brooks teaches all but one element of claim 1. Figure 1 is reproduced below: Figure 1 depicts an ink supply system for an ink jet printhead. See Brooks, col. 2, 11. 15-17. According to the Examiner, Figure 1 shows a tank (28), a manifold (20), a siphon connected to the manifold (38), an upper end of the siphon that extends above the fluid level and open to the air ( 54 ), and a height of a segment of the siphon is lower than the height of the manifold (portion of line 24). Final Act. 8-9. But, acknowledges the Examiner, Brooks does not teach "a height of the manifold being lower than a level of the fluid in the tank when the fluid is flowing from the tank to the printhead." Id. at 9. However, Hibbard illustrates a height of the manifold being lower than the fluid level in the tank. Id. Figure 8, of Hibbard, follows: 4 Appeal2015-001194 Application 13/548,502 '"'.'::<-;·.-·:.· 37{)-l C,'~'g~:-'1 7.c ·'<>i -l·- ? · .. \·\- - ,~'~\w~:-=~~=1~ l ~ . ' \ 4- ..: ' ' ,;:-c", _,,~:--~-'Z--7''" -~~"'··If -------- I ~- -~~ -·- , ..... .,,t ® ~~')::;·· .. --~ ---~ _f-- .78: Figure 8 illustrates a fluid distribution system. Hibbard i-f 567. The Examiner finds that the height of the manifold-including printheads (200) and supply couplings (388}-is lower than the fluid level in tank (302). And, such an arrangement would have been obvious to a person of skill in the art at the time because Hibbard teaches an elevated tank results in a "pressure differential caused by gravitational pull on the liquid, in order to supply ink to the printhead. (See Hibbard et al. para. 0646 and 0777)." Id. Appellants argue that the references do not teach or suggest a manifold to enable the fluid to flow from the tank to the printhead, a height of the manifold being lower than a level of the fluid in the tank when the fluid is flowing from the tank to the printhead [or] a siphon, a lower end of the siphon being connectable to the manifold, an upper end of the siphon extending above the level of the fluid and being openable to the atmosphere, a height of a segment of the siphon between the upper end and the lower end being lower than the height of the manifold. Appeal Br. 8. 5 Appeal2015-001194 Application 13/548,502 Appellants begin by addressing the absence of a siphon with a lower end connected to the manifold and where "an upper end of the siphon extending above the level of the fluid and being openable to the atmosphere, a height of a segment of the siphon between the upper end and the lower end being lower than the height of the manifold." Claims Appendix at Appeal Br. 15. According to Appellants, Figure 1 is a mere schematic diagram and "there is no support in the description of the drawings to suggest that an upper end of the siphon extends 'above the level of the fluid."' Appeal Br. 9. Appellants argue that MPEP §2125 requires "'the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art.'" Id. at 10. Appellants contend that "because no language in the description of Brooks describes the physical layout or placement of the elements relative to each other" the Examiner's interpretation of the drawing is without support. Id. at 9-10. Appellants also contend that when Brooks intended to describe the physical relationship of elements, it did so. Id. at 10 (citing Brooks, col. 3, 11. 54--55.) And, because Brooks did not in this instance, Brooks does not teach the "relative relationship of the lower end of the siphon to the manifold; the upper end of the siphon to the level of the fluid in the tank, or the manifold to the level of fluid in the tank." Id. 10-11. And finally, Appellants seem to suggest that the Examiner inconsistently finds that Appellants' drawings are merely schematic drawings and therefore insufficient, alone, to convey an ample description of the spatial relationships of the elements yet utilizes the figures of Brooks in precisely the same manner. Id. 11. 6 Appeal2015-001194 Application 13/548,502 The Examiner explains that Appellants have too rigidly applied MPEP § 2125 and have improperly interpreted the text. Ans. 4. The Examiner explains that as properly understood, "the figures are part of the disclosure and may illustrate detail not specifically recited in the specification, or in the alternative, the specification may recite detail not specifically illustrated in the drawings. So long as the examiner has not interpreted the figures to contradict the written specification," an examiner will not run afoul of the MPEP. Id. Appellants' arguments fail to apprise us of reversible error on the part of the Examiner. Drawings alone may be used to anticipate or render obvious a claimed invention-"a drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference patent." In re Aslanian, 590 F.2d 911, 914 (CCPA 1970) (emphasis added). The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. Id. "Patent drawings [however] do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue." Hockerson-Halberstadt, Inc. v. Avia Grp. Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)(emphasis added). And, "[a]bsent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value." In re Wright, 569 F .2d 1124, 1127 (CCP A 1977)( emphasis added). However, the items a patent drawing shows clearly are not to be disregarded. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). Here, the Examiner is not using the drawings in a quantitative manner but rather, the 7 Appeal2015-001194 Application 13/548,502 Examiner uses the clearly depicted positional relationships shown in patent drawings to, among other things, show the positional relationship of the elements required by the claims. Such use by the Examiner is entirely consistent with governing case law and is not improper. Appellants' other arguments are equally unavailing. That Brooks may expressly teach certain positional relationships within the text of the specification does not mean the positional relationships disclosed within the drawings are not also disclosed. Aslanian, 590 F.2d at 914. And, Appellants' argument that the Examiner considers the teachings of Brooks differently from Appellants' own disclosure appears to be a misunderstanding of the Examiner's position. The Examiner aptly explains that an illustration can be used as prior art "if all of the structural features are shown, and the illustrations depict how the features are arranged, or put together." Final Act. 4. See e.g., Mraz, 455 F.2d at 1072. Next Appellants argue that the cited references do not teach "a manifold [where the] height of the manifold being lower than a level of the fluid in the tank when the fluid is flowing from the tank to the printhead." Appeal Br. 12. Specifically, Appellants contend that Brooks teaches away from this arrangement. Id. According to Appellants, Brooks teaches away "because Brooks shows that the vacuum reservoir exists entirely above the supply unit [and] [t]his is in conflict with the recitation of claim 1 .... " Id. The Examiner acknowledges that Brooks alone does not teach this relationship but combines Brooks with Hibbard to teach the claimed limitation. Ans. 5---6. The Examiner finds that "Hibbard et al. illustrates 'a height of the manifold being lower than a level of the fluid in the tank when 8 Appeal2015-001194 Application 13/548,502 the fluid is flowing from the tank to the printhead."' (See Final Action, p.7,9.)." Id. at 6. And, according to the Examiner, it would have been obvious to incorporate the teachings of Hibbard et al. regarding the position of the supply tank 302 with respect to the manifold (Fig. 8, 200; Fig. 56A, couplings 388), for the purpose of using the height difference (between the tank and the manifold) to create a pressure differential caused by gravitational pull on the liquid, in order to supply ink to the printhead. Hibbard et al., para. 0646, 0777. Ans. 6. Appellants do not convince us of reversible error. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed in the '198 application." In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). Here, there is no teaching in Brooks indicating an opinion one way or the other regarding the positioning of the fluid level in the supply tank as compared to the manifold. Rather, Brooks simply indicates one possible embodiment in its drawings. Brooks, Fig. 1. The mere absence of a teaching does not amount to a teaching away. Furthermore, Brooks is used by the Examiner in combination with Hibbard. Appellants fail to address the Examiner's reasoning in combining the teachings of Brooks and Hibbard and Appellants do not argue against the Examiner's findings with respect to 9 Appeal2015-001194 Application 13/548,502 Hibbard's teachings.7 Therefore, we adopt the Examiner's reasoning and accept the Examiner's findings as fact. In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) ("Since appellant has not shown this finding to be clearly erroneous, we accept it as fact."). Appellants next argue that the "claimed subject matter provides features and advantages not known or available in the cited references." Appeal Br. 13. Specifically, Appellants argue that claim 1 provides for a siphon that assists in preventing interruption of delivery of ink to the printheads during high-speed printing while still maintaining a negative or back pressure in the system in order to prevent ink from leaking or flowing out of a nozzle of any of the printheads when the ink is not being intentionally expelled. Id. The Examiner finds that Appellants have not claimed these advantages and is arguing a point of distinction that does not exist in the claims. Ans. 7. We agree with the Examiner that the differences identified by Appellants (Appeal Br. 13) are unclaimed limitations. Tellingly, Appellants do not quarrel with the Examiner's findings that these points of distinction have not been claimed. As unclaimed limitations, they provide no basis to distinguish the instant claims from the prior art. See In re Self, 671 F .2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims."). Finally, Appellants in reply also argue that the Examiner improperly equates the vacuum reservoir in Brooks with the siphon of claim 1. Reply 7 Appellants similarly explain that the "manifold is located at a height that is lower than the level of ink in the secondary tank [so that] gravity may cause ink to flow from the secondary tank to the manifold via the channel, thus maintaining a quantity of ink in the manifold." Spec. i-fl3. 10 Appeal2015-001194 Application 13/548,502 Br. 5. 8 Appellants contend that the vacuum reservoir of Brooks is just a reservoir that merely replenishes ink from the larger supply-therefore, it is a holding tank, not a siphon. Id. 5---6. Moreover, says Appellants, "[a]ssuming as does the Answer, that the vacuum reservoir (38) of Brooks is the claimed siphon, the vacuum reservoir (38) is entirely above the illustrated supply line into the printhead (10)." Id. at 6. The Examiner finds that Appellants "generically recite 'a siphon'" and that "a generic recitation of a siphon in Appellant's claim would not preclude the use of a vacuum reservoir ... as a siphon, or portion of a siphon." Ans. 7. The Examiner also finds that the vacuum reservoir of Brooks is a "siphon (38) having an upper end (54) openable to the atmosphere, and a lower end (24) connectable to the manifold (10)." Id. We find the Examiner's findings and reasoning persuasive. Appellants do not adopt a "special" definition for the term siphon within the Specification or the claims that is different from the ordinary understanding of the term. The Specification states only that the [ w ]ithdrawal of ink 16 may result in flow of ink from the siphon into manifold 30. In this manner, a desired quantity of ink 16 may be maintained in manifold 30 during the printing operation. 8 This is a new argument, which could have been but was not presented in the Appeal Brief. See id. (citing to the Final Action as evidence of the Examiner's position). Typically, a new argument not timely presented in the Appeal Brief will not be considered in the absence of a showing of good cause explaining why the argument could not have been presented in the opening brief. In re Hyatt, 211F.3d1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to the Board is waived on appeal). However, because we believe the Examiner's lengthy discussion in support of the Examiner's findings regarding unclaimed limitations (see e.g., Ans. 7-9) may have prompted additional argument by Appellants, we elect to consider Appellants' new argument in this instance. 11 Appeal2015-001194 Application 13/548,502 Siphon 32 may thus facilitate providing a continuous supply of ink to printheads 12 when printing. Spec. i-f26. Therefore, ink flows through the siphon to the manifold and may act to facilitate a continuous supply of ink to the printheads. See also id. i-f29 (same). Appellants do not dispute the Examiner's finding that the upper end of the siphon (54) is positioned above the fluid level and is openable to the atmosphere. We adopt this finding as our own. And, Appellants argument that the "vacuum reservoir is entirely above the illustrated supply line into the printhead (1 O)" (Reply Br. 7) is of no merit because the claims require only that the 'lower end being lower than the height of the manifold '-which it is. For the reasons provided above, we find no reversible error in the Examiner's rejection of claims 1-7. CONCLUSION The Examiner did not err in rejecting claims 1-7 as being unpatentable, under 3 5 U.S. C § 103, over the recited prior art. DECISION For the above reasons, the Examiner's rejection of claims 1-7 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)(l )(iv) (2009). AFFIRMED 12 Copy with citationCopy as parenthetical citation