Ex parte Gundlach et al.

Board of Patent Appeals and Interferences

Dec 8, 1999

08140658 (B.P.A.I. Dec. 8, 1999)

Application for patent filed October 21, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROBERT W. GUNDLACH and
ERIC G. RAWSON
________________
Appeal No. 1997-0758
Application 08/140,6581
________________
ON BRIEF
________________
Before BARRETT, FLEMING and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-0758
Application No. 08/140,658
2
This is a decision on appeal from the final
rejection of claims 1 through 19, all claims pending in this
application. The invention relates to an
electrorheological acoustic print head. In particular,
referring to Figure 2, acoustic transducer 102 generates
acoustic energy that passes into a base plate 104, and
continues onward into a channel 112 that holds an
electrorheological fluid 114. Acoustic energy is transferred
to the fluid 114, resulting in droplet ejection suitable for
printing. This droplet ejection can be controlled through the
use of conductive electrodes 122 positioned adjacent to the
channel 112. The electrodes 122 promote an electric field
that greatly increases viscosity of the fluid 114. Since this
viscosity increase inhibits droplet ejection in response to
transfer of acoustic energy, it is possible to control droplet
ejection by modulating the electrical energy supplied to the
conductive electrodes 122, rather than modulating the power
supplied to the acoustic transducer 102.
Appeal No. 1997-0758
Application No. 08/140,658
This is a new ground of rejection presented in the2
Examiner’s Answer, paper no. 10. This rejection uses the same
references as the final rejection, paper no. 4, but reverses
the order (from Elrod in view of Clark to Clark in view of
Elrod) and the reasoning.
3
Representative independent claim 19 is reproduced as
follows:
19. A method of controlling droplet ejection from an
electrorheological fluid comprising the steps of:
radiating acoustic energy through the
electrorheological fluid such that droplets of said
electrorheological fluid are ejected when a lower electric
field is applied through the fluid; and
selectively applying a higher electric field to
the electrorheological fluid so that the viscosity of the
electrorheological fluid increases sufficiently to inhibit
ejection.
The Examiner relies on the following references:
Clark 4,014,693 Mar. 29, 1977
Elrod et al. (Elrod) 4,751,530 Jun. 14, 1988

Claims 1 through 19 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Clark in view of Elrod . 2
Appeal No. 1997-0758
Application No. 08/140,658
4
Rather than reiterate the arguments of Appellants
and the Examiner, reference is made to the brief, reply brief,
answer and supplemental answer for the respective details
thereof.
OPINION
After a careful review of the evidence before us, we
will not sustain the rejection of claims 1 through 19 under 35
U.S.C. § 103.
At the outset, we note that Appellants have
indicated on page 3 of the brief that all claims stand or fall
together. The Examiner agrees, answer-page 2.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan contained in such teachings or suggestions.
In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983).
Appeal No. 1997-0758
Application No. 08/140,658
5
The Examiner reasons that Clark teaches most of the
invention (noting Figure 5) with photoconductor portions
(col. 4, lines 53-59) suggesting the use of a plurality of
electrodes (supplemental answer-pages 3 and 4). The Examiner
states, “However, Clark does not disclose providing a
transducer acoustically coupled to the container for focusing
acoustic energy into the electrorheological ink,
...(supplemental answer-page 4).
To provide the transducer, the Examiner indicates
that Elrod discloses a transducer to provide acoustic energy
to a container of ink to control ink spot size for the
nozzleless ink container; and that it would have been obvious
to combine Elrod with Clark (pages 4 and 5 of the supplemental
answer).
Appellants have argued in their brief and reply
brief that the Examiner has not addressed Appellants’
arguments relating to hindsight reconstruction or motivating
force for combining Clark and Elrod. The Examiner responds by
citing Elrod
Appeal No. 1997-0758
Application No. 08/140,658
6
at column 1, lines 45-50 (supplemental answer-page 6). We
agree with Appellants, and see no rational or motivation to
combine these references.
The Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification."
In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-
84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may
not be established using hindsight or in view of the teachings
or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing
W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
Clark provides liquid flow to record/print
information, and controls the flow with electrode voltage bias
to change the liquid/fluid viscosity. Clark does not “radiate
acoustic energy through the electrorheological fluid such that
droplets ...are ejected when a lower electric field is applied
Appeal No. 1997-0758
Application No. 08/140,658
7
through the fluid;” (emphasis added) as recited in claim 19.
Although Elrod teaches a transducer to radiate acoustic energy
to eject droplets, there is no mention of controlling fluid
viscosity in any manner, and no motivation that would suggest
a combination with Clark.
Since there is no evidence in the record that the
prior art suggested the desirability of combining Clark and
Elrod, we will not sustain the Examiner’s rejection of claim
19. Likewise, the remaining claims on appeal also contain the
above limitations of acoustic fluid ejection and control of
fluid viscosity as discussed with regard to claim 19. Thus,
we will not sustain the rejection as to claims 1 through 18.
Appeal No. 1997-0758
Application No. 08/140,658
8
We have not sustained the rejection of claims 1
through 19 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
Lee E. Barrett )
Administrative Patent Judge )
)
)
)BOARD OFPATENT
)
Michael R. Fleming ) APPEALS
Administrative Patent Judge )
) INTERFERENCES
)
)
Stuart N. Hecker )
Administrative Patent Judge )
SH/dm
Ronald Zibelli
Xerox Corp.
Xerox Square 020
Rochester, NY 14644