11717823 (P.T.A.B. Jun. 3, 2013)

Ex Parte Groenenboom et al

Patent Trial and Appeal BoardJun 3, 2013

11717823 (P.T.A.B. Jun. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARK D. GROENENBOOM, ANTONIO GOMEZ, TANYA V. BURMEISTER, KENNETH RUFE, STEPHANIE SEAMAN, and RUSSELL P. YEAROUT ____________ Appeal 2011-004491 Application 11/717,823 Technology Center 3700 ____________ Before LINDA E. HORNER, BRETT C. MARTIN, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004491 Application 11/717,823 2 STATEMENT OF THE CASE Mark D. Groenenboom, Antonio Gomez, Tanya V. Burmeister, Kenneth Rufe, Stephanie Seaman, and Russell P. Yearout (“Appellants”) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 3-10, 12, and 14-17. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claims 1 and 9 are the independent claims on appeal. Claim 1 is illustrative of the claimed subject matter and is reproduced below. 1. A method comprising: separating a web extending between first and second spools from said first spool, wherein the web comprises a web of material configured to physically contact the surfaces of the printheads to wipe ink from the printheads or to interact with the printheads by receiving ink discharged from the printheads; winding the separated web onto the second spool through a web guide, wherein the separated web is a portion of the web having saturated ink; removing the first spool and the second spool having the separated web from a housing; obtaining a replacement first spool having a replacement web wound thereon and a replacement second spool; inserting the replacement first spool and the replacement second spool into the housing; feeding an end of the replacement web through the web guide; and affixing a portion of the end of the replacement web to the replacement second spool. Appeal 2011-004491 Application 11/717,823 3 Reference The Examiner relies upon the following prior art reference: Baringa US 2006/0209152 A1 Sept. 21, 2006 Rejection The Examiner makes the following rejection: I. Claims 1, 3-10, 12, and 14-17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Baringa. SUMMARY OF DECISION We REVERSE. OPINION The Examiner concluded that Baringa renders obvious the subject matter of claims 1, 3-10, 12, and 14-17. Ans. 3-7. The Examiner, addressing all of the claims together, found that Baringa discloses a method of refurbishing a web cartridge that includes several general steps. See Ans. 4 (citing Baringa, paras. [0065], [0071]). The Examiner, however, acknowledged that Baringa “does not explicitly disclose” several of the claimed steps. See id. at 4-5 (finding that Baringa does not disclose, inter alia, the separating, winding, or feeding steps as claimed). The Examiner explained that “[s]ince there is explicit disclosure of replacing the windings and/or spools, but not the precise process for doing so, one of ordinary skill in the art is left to determine exactly how to perform the replacement steps.” Id. at 5. The Examiner found that “there are only a finite number of possibilities for doing so” and listed three steps that would be included in these finite number of possibilities. Id. The Examiner further “opine[d] that Appeal 2011-004491 Application 11/717,823 4 either of these processes is well within the level of skill in the art, and the selection of either method would have been at least obvious to try based on the limited disclosure of the replacement process set forth by Baringa.” Id. Appellants raise separate arguments with respect to claims 1 and 9, but their arguments with respect to each claim are similar. In particular, Appellants assert that Baringa does not disclose each element of the claimed invention, including the “separating, winding, removing, obtaining, inserting, feeding, and affixing” steps recited, e.g., in claim 1. App. Br. 11; see also id. at 14 (“Baringa does not describe the steps such as separating, winding, removing, obtaining, inserting, feeding, and affixing for refurbishing a web cartridge recited in . . . claim 9.”). Appellants also take issue with the Examiner’s failure to invoke official notice or cite a reference disclosing each element of the claims: if the Examiner is using personal knowledge or is taking Official Notice of the elements of the claims which are not found in Baringa, Applicants respectfully traverse and request that the Examiner either provide a reference or references which describe such missing elements pursuant to M.P.E.P. § 2144, or submit an affidavit as required by 37 C.F.R. § 1.104(d)(2). Id. at 12, 15. The Examiner has not sufficiently supported the finding in the rejection that there are only a finite number of possibilities for replacing the windings and/or spools and thus the specific method steps claimed are obvious because one of ordinary skill in the art would have found them obvious to try. The Examiner did not render this finding based on official notice and did not cite any reference or other evidence in support of the finding. Without such notice or supporting evidence, Appellants are Appeal 2011-004491 Application 11/717,823 5 deprived in this case of an opportunity to adequately respond to the Examiner’s assertion. See, e.g., 37 C.F.R. § 1.104(d)(2); MPEP § 2144. Accordingly, we do not sustain the rejection. DECISION We REVERSE the Examiner’s decision rejecting claims 1, 3-10, 12, and 14-17. REVERSED Klh