Ex Parte Goto et al

Board of Patent Appeals and Interferences

Mar 21, 2011

10360670 (B.P.A.I. Mar. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/360,670 02/10/2003 Akira Goto 03500.010521.2 4137
5514 7590 03/22/2011
FITZPATRICK CELLA HARPER & SCINTO
1290 Avenue of the Americas
NEW YORK, NY 10104-3800
EXAMINER
FEGGINS, KRISTAL J
ART UNIT PAPER NUMBER
2861
MAIL DATE DELIVERY MODE
03/22/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AKIRA GOTO, MASAK INABA, YUTAKA KOIZUMI,
TSUYOSHI ORIKASA, TOSHIO KASHINO, SEIICHIRO KARITA,
SHUJI KOYAMA, HARUHIKO TERAL, KIMIYUKI HAYASAKI,
KOUICHI OMATA, KIYOMITSU KUDO TAKAYUKI ONO
and SHIN ISHIMATSU
____________________

Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, SCOTT R. BOALICK,
CARLA M. KRIVAK, THOMAS S. HAHN, and KEN B. BARRETT,
Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957

2
STATEMENT OF CASE2
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 19-41. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims in the Present Appeal
Exemplary independent claims 19 and 22 under appeal read as
follows:
19. A method of using a board member in an ink jet recording
head, said method comprising the step of:
filtering ink using a plurality of protrusions arranged in a recess
of the board member, the board member being formed of polymer
resin,
wherein the recess serves as part of an ink passage in fluid
communication with an ink discharge opening, and
wherein the plurality of protrusions are formed by irradiating a
laser through a mask portion having a mask pattern corresponding to a
shape of the plurality of protrusions, the mask pattern reflecting at
least a part of the radiation from the laser and absorbing at least a part
of the radiation from the laser.

22. A board member in an ink jet recording head, said board
member comprising:
support means formed of polymer resin, said support means
including a recess that serves as part of an ink passage in fluid
communication with an ink discharge opening; and
filter means for filtering ink, said filter means being supported
by said support means and including a plurality of protrusions
arranged in the recess for filtering the ink,
wherein said filter means is formed by irradiating a laser
through a mask portion having a mask pattern corresponding to a
shape of the plurality of protrusions, the mask pattern reflecting at

2 Hearing held on March 10, 2011.
Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957

3
least a part of the radiation from the laser and absorbing at least a part
of the radiation from the laser.

Rejection and Appellants’ Contentions
Appellants presented numerous arguments supporting their contention
that the Examiner erred in rejecting claims 19-41 under 35 U.S.C. § 251 as
being improper for reissue because:
(1) The failure to present claims 19-41 during the
prosecution of U.S. Patent 5,940,957 was an error that can be
corrected by reissue.
(2) Appellants had a right to present claims 19-41 either:
(a) as part of Group I (patent claims 1-17); or
(b) as Group IV “independent and distinct” from
Groups I-III.

Issues on Appeal
Is the failure to present claims 19-41 during the prosecution of U.S.
Patent 5,940,957 an error that can be corrected by reissue?
Are appealed claims 19-41 of reissue application 10/360,670
substantially identical to claims of the non-elected groups identified in an
Examiner’s restriction requirement during the prosecution of U.S. Patent
5,940,957?

FINDINGS OF FACT (FF)
Prosecution History
(1) The present appeal is for the rejection of Application 10/360,670
filed February 10, 2003, as a divisional of Application 09/935,689 filed
Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957

4
August 24, 2001 (issued as U.S. Patent RE 38,710 on March 15, 2005),
seeking to reissue U.S. Patent 5,940,957 issued August 24, 1999, based on
Application 08/397,360 filed March 2, 1995.
(2) On March 2, 1995, U.S. Patent Application 08/397,360 was filed
containing claims 1-30.
(3) Claim 1 in Application 08/397,360 as originally filed reads:
1. A method for manufacturing an ink jet recording head,
comprising the following steps of:
step for forming on a base board a recess portion serving as an
ink passage to ink discharge opening by laser processing and for
forming a filter in said ink passage by using said laser processing; and
step for forming said ink passage by coupling a side of said
base board on which said recess portion is formed to other base board.

(4) Claim 18 in Application 08/397,360 as originally filed reads:
18. An laser processing apparatus, comprising:
a laser source; and
a mask portion having a predetermined mask pattern
corresponding to a shape of an object, through which a laser beam
projected by said laser source is projected toward said object, wherein
a member for reflecting or absorbing at least a part of said laser beam
can be attached to said mask portion at a portion within said laser
beam and apart from a surface of said mask.

(5) Claim 26 in Application 08/397,360 as originally filed reads:
26. An ink jet recording head comprising:
a base board having on it elements for generating energy to be
utilized for discharging ink; and
Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957

5
a board member coupled to said base board, wherein there are
formed on said board member, a recess serving as ink passage
communicating with discharge ports for discharging ink by coupling it
to said base board and projection portion provided in said recess and
wherein said recess portion and said projection portion are processed
by a laser processing apparatus according to Claim 18 which
comprises a mask having a pattern corresponding to said recess
portion and a member for reflecting or absorbing at least a part of said
laser beam.

(6) On April 30, 1996, the original Examiner issued a Restriction
Requirement in Application 08/397,360. The restriction set forth three claim
groups as follows:
Group I: Claims 1-17 drawn to a method of manufacturing an ink jet
head using a laser, classified in Class 156, subclass 625.
Group II: Claims 18-25 drawn to a laser processing apparatus,
classified in Class 156, subclass 345.
Group III: Claims 26-30 drawn to an ink jet head using a laser,
classified in Class 347, subclass 63+.
The restriction requirement determined Groups I and II to be related
(but patentably distinct) as a process and an apparatus for its practice;
Groups II and III to be related (but patentably distinct) as an apparatus for
making a product and a product made; and Groups I and III to be related (but
patentably distinct) as a process of making and a product made.
Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957

6
(7) On May 24, 1996, Applicants filed a response to the Examiner’s
Restriction Requirement. Applicants elected to prosecute claims 1-17 of
Group I. Applicants’ response did not dispute the propriety of the
Examiner’s restriction requirement. Applicants’ response did explicitly state
that “[a]pplicants hereby reserve their right to file a divisional application
presenting the non-elected claims, as well as new claims drawn to the
subject matter thereof.” However, no such divisional application was filed.
(8) On August 24, 1999, Application 08/397,360 issued as U.S. Patent
5,940,957 containing claims 1-17. U.S. Patent 5,940,957 was ultimately
classified in Class 29, subclass 611.
(9) Patent claim 1 of U.S. Patent 5,940,957 reads as follows:
1. A method for manufacturing an ink jet recording head,
comprising the steps of:
forming on a base board a recess portion serving as a part of an
ink passage leading to an ink discharge opening and a projection
having a shape in said ink passage by a laser irradiation through a
mask portion having a predetermined mask pattern corresponding to
the shape of said projection, wherein said mask pattern at least one of
reflects and absorbs at least a part of said laser irradiation; and
forming said ink passage by coupling a side of said base board
on which said recess portion is formed to another base board.

(10) On August 24, 2001, Applicants filed U.S. Patent Application
09/935,689, containing claims 1-41, seeking to reissue U.S. Patent
5,940,957.
(11) In Application 09/935,689, claims 1-17 were the method of
manufacturing claims of U.S. Patent 5,940,957. Newly added claims 18 and
20-21 (to the extent they depend from claim 18) were also directed to a
method of manufacturing. Newly added claims 19 and 20-21 (to the extent
Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957

7
they depend from claim 19) were directed to a method of using the product
made. Newly added claims 22-41 were directed to a product made.
(12) Claims 19-41 currently on appeal in Application 10/360,670 are
essentially claims 19-41 of Application 09/935,689.
(13) On August 19, 2002, the original Examiner issued an Office
Action. The Examiner required restriction to one of the following
inventions:3
Group I: Claims 1-18 drawn to methods of making an ink jet head,
classified in Class 29, subclass 611.
Group IV: Claims 19-41 drawn to board members and methods of
using board members, classified in Class 347, subclass 93.
The restriction requirement determined Groups I and IV to be related
(but patentably distinct) as a process of making and a product made.
(14) The Examiner further stated (p. 3):
Since Applicants [have] received a patent for the
invention, recited in claims 1-18, these claims are deemed to
have been constructively elected by original presentation for
prosecution on the merits. Accordingly, claims 19-41 are
withdrawn from consideration as being directed to a non-
elected invention.
(15) Lastly, the Examiner issued a rejection of claims 1-18.

3 Although the Office Action in 09/935,689 labels these as Groups I and II,
we refer to them as Groups I and IV to show that Group I of 09/935,689
corresponds to original Group I in the parent application 08/397,360 and to
distinguish Group II of 09/935,689 from Group II in 08/397,360.
Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957

8
(16) On February 10, 2003, Applicants filed a response to the
Examiner’s August 19, 2002 Office Action. As part of the response,
Applicants cancelled claims 19-41, the entirety of Group IV. Applicants’
response did not dispute the propriety of the Examiner’s restriction
requirement.
(17) On March 15, 2005, Application 09/935,689 issued as
U.S. Patent RE 38,710 containing claims 1-18. U.S. Patent RE 38,710 was
ultimately classified in Class 29, subclass 611.
(18) On February 10, 2003, Applicants filed (as a divisional of
Application 09/935,689) U.S. Patent Application 10/360,670 containing
claims 19-41, seeking to reissue U.S. Patent 5,940,957.
(19) On February 22, 2006, the current Examiner finally rejected
claims 19-41 under 35 U.S.C. § 251 as being improper for reissue.
(20) In part the Examiner reasoned:
Independent claim 19 is directed to a method of using a
board member in an ink jet recording head. Independent claims
22, 23, 24, 25, 32 and 41 are directed to a board member in an
ink jet recording head.

(Final Rejection 4).
(21) The Examiner concluded that:
Applicants would have had no right to examination and
issuance of claims 19-41 in the original application after
acquiescing to the restriction requirement.

(Final Rejection 4).
(22) On May 22, 2006, Applicants filed an appeal of the Examiner’s
rejection under 35 U.S.C. § 251.
Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957

9
PRINCIPLES OF LAW
The “Orita doctrine” precludes applicants from obtaining by reissue
claims which, because of a requirement for restriction in which they had
acquiesced, they could not claim in their patent. In re Orita, 550 F.2d 1277,
1280 (CCPA 1977).
When applicants acquiesce in the examiner’s requirement for
restriction, such action manifestly is not “error” causing patentee to claim
“less than he had a right to claim in the patent” in the language of 35 U.S.C.
§ 251. Id, 550 F.2d at 1280.
The so-called Orita doctrine precludes reissue applicants from
obtaining substantially identical claims to those of non-elected groups
identified in an examiner's restriction requirement when such claims could
not have been prosecuted in the application from which they were restricted.
In re Doyle, 293 F.3d 1355, 1359 (Fed. Cir. 2002)

ANALYSIS
We have reviewed the Examiners’ rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
conclusions. We agree with the Examiner that with respect to claims 19-41
on appeal, the prosecution of the 08/397,360 application and the patent
resulting therefrom were error-free.
We agree with Appellants’ understanding of Orita, 550 F.2d at 1280
and Doyle, 293 F.3d at 1359. However, we disagree with Appellants’
application of these decisions to Appellants’ claims 19-41 on appeal.
Contrary to Appellants’ arguments that appealed claims 19-41 are
Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957

10
substantially identical claims to those of elected Group I, we conclude that
claims 19-41 are substantially identical claims to those of nonelected
Group III (claims 26-30) identified in the Examiner's restriction requirement
of Application 08/397,360. Claims 19-41 could not have been prosecuted in
the 08/397,360 Application from which their invention (Group III) was
restricted.
In the following table, we compare the subject matter of claim 22 of
Application 10/360,670 to the subject matter of claim 26 of Application
08/397,360. We note the different uses of “board member” in the two
claims, but we see no substantial structural difference between the claims.
10/360,670
Claim 22
08/397,360
Claim 26

1
A board member in an ink jet
recording head, said board
member comprising:

An ink jet recording head
comprising:
a base board having on it elements
for generating energy to be utilized
for discharging ink; and

2
support means formed of
polymer resin,
a board member coupled to said base
board,

3
said support means including a
recess that serves as part of an
ink passage in fluid
communication with an ink
discharge opening; and

wherein there are formed on said
board member, a recess serving as
ink passage communicating with
discharge ports for discharging ink
by coupling it to said base board and

4
filter means for filtering ink,
said filter means being
supported by said support
means and including a plurality
of protrusions arranged in the
recess for filtering the ink,

projection portion provided in said
recess and
Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957

11

5
wherein said filter means is
formed by irradiating a laser
through a mask portion having
a mask pattern corresponding
to a shape of the plurality of
protrusions, the mask pattern
reflecting at least a part of the
radiation from the laser and
absorbing at least a part of the
radiation from the laser.
wherein said recess portion and said
projection portion are processed by
a laser processing apparatus
according to Claim 18 which
comprises a mask having a pattern
corresponding to said recess portion
and a member for reflecting or
absorbing at least a part of said
laser beam.

A comparison of the subject matter of method claim 19 of Application
10/360,670 to the subject matter of apparatus claim 26 of Application
08/397,360 leads us to a similar result in that there is no substantial
difference between the claims even though they are directed to different
statutory categories. In this case, these claims are simply not patentably
distinct.
We conclude that as a matter of law, the “Orita doctrine” precludes
Appellants from obtaining by reissue the claims on appeal.

CONCLUSIONS
The Examiner did not err in rejecting claims 19-41 as being improper
for reissue.

Appeal 2011-001051
Application 10/360,670
U.S. Patent 5,940,957

12
DECISION
The Examiner's rejection of claims 19-41 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

kis

FITZPATRICK, CELLA. HARPER & SCINTO
1290 Avenue of the Americas
NEW YORK, NY 10104-3800