Ex Parte Hoen et al

Board of Patent Appeals and Interferences

Nov 26, 2003

09930098 (B.P.A.I. Nov. 26, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 14

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STORRS T. HOEN
NAOTO KAWAMURA
and
JONAH A. HARLEY
__________

Appeal No. 2004-0111
Application No. 09/930,098
___________

ON BRIEF
___________

Before GARRIS, WARREN, and MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 19, 26, 27, 29-31 and 34.
REPRESENTATIVE CLAIM
The appellants have indicated (Brief, page 3) that, for the
purposes of this appeal, claims 26-27, 29-31, and 34 stand
together, and claim 19 stands alone. Consistent with this
indication, we shall focus our analysis on claims 19 and 26, which
are reproduced (with any preceding claims from which they depend)
as follows.
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19. In an ink pen adapted for use in an off-axis printer
having a remote ink supply, where the ink pen includes a local ink
supply and a print head adapted to selectively print using ink
from the local ink supply, an improvement comprising:

a valve that selectively supplies the local ink supply with
ink from the remote ink supply;

wherein said valve includes a fluid inlet adapted to receive
ink from the remote ink supply, a fluid chamber having a valve
seat and a valve head, and a fluid outlet adapted to feed ink into
the local ink supply from the fluid chamber;

wherein said fluid chamber is bounded by a compliant
diaphragm, said valve being prefabricated to receive an electric
relay in a manner such that selective actuation of the relay
displaces the compliant diaphragm, said compliant diaphragm
coupled to one of the valve seat and the valve head to perform one
of selective opening and selective closing of the valve in
response to actuation of the relay.

26. An ink pen adapted for use in an off-axis printer having
a remote ink supply, said ink pen comprising:

a local link supply;
a print head adapted to selectively print using ink from the
local ink supply;

a valve opened to selectively supply the local ink supply
with ink from the remote ink supply, said valve including a fluid
inlet adapted to receive ink from the remote ink supply, a fluid
chamber having a valve seat and a valve head, and a fluid outlet
adapted to feed ink into the local ink supply from the fluid
chamber; and

means for maintaining substantially constant volume in the
fluid chamber notwithstanding opening and closing of the valve.

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The Reference
In rejecting the claims under 35 U.S.C. § 102(b), the
examiner relies upon the following reference:
Thomas 4,460,905 Jul. 17, 1984
The Rejections
Claims 19, 26, 27, 29-31, and 34 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Thomas.
The Invention
The invention relates to a valve assembly for us in an off-
axis printer ink supply. The valve assembly is configured to
accept a commercial electric relay as its actuator, and being able
to actuate without affecting the fluid pressure in the ink pen.
(Appeal Brief, page 2, lines 10-28). Further details of the
claimed invention are detailed in the claims reproduced above.
The Rejection of Claims 19, 26, 27, 29-31 and
34 Under 35 U.S.C. § 102
The examiner has found that Thomas discloses all of the
features of the invention. (Examiner’s Answer, page 4, line 12 -
page 5, last line). The appellant urges that the rejection is
improper in that, as it applies to claim 19, the Thomas patent
does not show a valve which is prefabricated to receive an
electric relay. To quote the appellants: “it cannot reasonably be
contested by the Examiner that the Thomas Patent fails to show use
Appeal No. 2004-0111
Application No. 09/930,098

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of an electric relay.” (Appeal Brief, page 4, lines 3-16, quoting
lines 15-16).
Despite appellants’ assertion, Thomas does disclose the use
of an electric relay. As noted in the specification, a magnetic
actuator is used in the claimed valve (preferably a commercially
available one) (Specification, page 2, lines 13-17).
As correctly pointed out by the examiner, Thomas, figure 1,
discloses a magnetic actuator 44, 46, 48 which actuates an elastic
diaphragm 22. Additionally, Thomas states that the valve is
opened and closed by control of the current in the magnet coil or
winding (column 5, lines 26-29). Clearly, this is a magnetic
actuator, or relay, as claimed by the appellants.
Other than the appellants’ conclusory statement that Thomas
fails to disclose a relay, no evidence to contradict the examiner
is put forth by the appellants. Therefore, we agree with the
examiner’s conclusion that the subject matter of claim 19 is
anticipated by the Thomas disclosure and shall affirm the
rejection as it applies to claim 19.
Turning now to claims 26-27 and 29-31, the appellants urge
that Thomas does not show a means for maintaining substantially
constant volume in the fluid chamber notwithstanding opening and
closing of the valve. The appellants state that “use of either
side of the [see-saw] armature to displace the compliant diaphragm
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enables opening and closing of the valve without significantly
changing fluid volume within the valve” (Specification, page 3,
lines 1-4).
However, the examiner has observed that the displacement of
Thomas’ diaphragm results in a volume of the chamber remaining
substantially or largely constant due to the small gap which it
must move to seal, compared to the volume of the overall chamber.
(Examiner’s Answer, page 7, lines 3-17). The Appellants have
provided no argument to counter this position, other than to
assert that Thomas does not disclose such a means of “maintaining
constant volume, or reciprocal displacement structure.” (Appeal
Brief, page 5, lines 6-7).
First, we note that the present claim 26 does not require a
reciprocal (see-saw type) structure. Rather, it is written in
means-plus-function language, which is broader. 35 U.S.C. § 112,
paragraph 6, states that a claim limitation expressed in means-
plus-function language “shall be construed to cover the
corresponding structure…described in the specification and
equivalents thereof.” The specification notes that use of either
side of the armature to displace the compliant diaphragm enables
opening and closing of the valve without significantly changing
fluid volume within the valve. (Page 3, lines 1-4). This does not
require the reciprocal displacement structure argued by the
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appellants, it merely requires one end to displace the compliant
diaphragm, which is precisely what the Thomas disclosure teaches.
The appellants also fail to account for the term
“substantially” in claim 26. The volume need not be maintained
absolutely constant, simply substantially. The examiner’s
position, which is unrebutted, is that the armature displacing the
diaphragm of Thomas need travel only a very short distance to
close the valve gap. We find this logic compelling - relative to
the overall volume, the change to seal the valve of Thomas appears
to retain a substantially constant volume in the valve chamber.
We therefore shall affirm this rejection as well.
Summary of Decision
The rejection of claim 19 under 35 U.S.C. § 102(b) over
Thomas is sustained.
The rejection of claims 26-27 and 29-31 under 35 U.S.C.
§102(b) over Thomas is sustained.
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JAMES T. MOORE )
Administrative Patent Judge )

JTM/ki

Appeal No. 2004-0111
Application No. 09/930,098

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HEWLETT PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
PO BOX 272400
FORT COLLINS, CO 80528-9599