Ex Parte KAMP

Board of Patent Appeals and Interferences

Jul 22, 2003

08891884 (B.P.A.I. Jul. 22, 2003)

1
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not written for publication and is not binding precedent of the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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte DAVID C. KAMP

Appeal No. 2001-1766
Application 08/891,884

ON BRIEF

Before THOMAS, HAIRSTON, and BARRY, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 10.
The disclosed invention relates to a method and
apparatus of providing for one-way flow of liquid in a liquid
containment and dispensing device.
Appeal No. 2001-1766
Application 08/891,884
2
Claim 10 is illustrative of the claimed invention, and
it reads as follows:
10. A method of providing for one-way flow of liquid
from a pouch through a pumping mechanism of a chassis of a liquid
containment and dispensing device, the chassis having an inlet
port in liquid communication with the pouch and the pumping
mechanism, said method comprising:
providing a planar valve member within the chassis in
alignment with the inlet port to block flow from the pumping
mechanism to the pouch when pressure in the pumping mechanism is
higher than pressure within the pouch, no portion of the planar
valve being heat-staked to the chassis.
The references relied on by the examiner are:
Nakata 3,720,473 Mar. 13, 1973
Hirosawa et al. (Hirosawa) 5,523,780 June 4, 1996
Clark et al. (Clark) 5,734,401 Mar. 31, 1998
(effective filing date Apr. 27, 1995)
Claims 1 through 6, 9 and 10 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Clark in view of
Nakata.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Clark in view of Nakata and Hirosawa.
Reference is made to the briefs (paper numbers 13 and
15) and the answer (paper number 14) for the respective positions
of the appellant and the examiner.
Appeal No. 2001-1766
Application 08/891,884
3
OPINION
We have carefully considered the entire record before
us, and we will reverse the obviousness rejections of claims 1
through 10.
Clark uses a check valve 42 in a liquid containment and
dispensing device (Figure 4) to provide for one-way flow of ink.
The examiner acknowledges (answer, page 7) that Clark does not
disclose that “no portion of the check valve is heated staked
[sic, heat-staked] to the chassis.” According to the examiner
(answer, page 7), “Nakata teaches in Figures 5A-5B an ink
cartridge comprising a check valve (15) having a small disk (50)
made of an anticorrosion and elastic material such as a synthesis
rubber or plastic material for easily replaced so that the cost
would be reduced.” Based upon the teachings of Nakata, the
examiner is of the opinion that “[i]t would have been obvious at
the time the invention was made to a person having ordinary skill
in the art to incorporate the teaching of using a check valve
comprising a small disk taught by Nakata into the ink cartridge
of Clark et al for the purpose of easily replacing the check
valve so that the cost would be reduced.”
Appeal No. 2001-1766
Application 08/891,884
4
Appellant argues (brief, page 7) that “Nakata is not
even in an art that is ‘analogous’ to the art in which the
devices of appellant and Clark et al. fall,” that “there is no
teaching in Nakata that there is or could be a problem in the
device of Clark et al. with respect to the use of a heat staked
check valve therein . . . ,” and that a prima facie case of
obviousness has not been presented because of the use of
hindsight. Appellant also argues (reply brief, page 2) that
Nakata lacks a teaching that the use of its disk check valve in
lieu of the heat-staked check valve in Clark would have reduced
the cost of the Clark device.
With the exception of the non-analogous art argument,
we agree with the appellant’s arguments. Although Nakata may not
be in the same field of endeavor as Clark, he certainly is
concerned with the same problem addressed by both the disclosed
and claimed invention and Clark, namely, the one-way flow of a
liquid in a liquid containment and dispensing device. In re
Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed. Cir.
1992). Notwithstanding the fact that Nakata is analogous art to
Clark, the applied references neither teach nor would they have
Appeal No. 2001-1766
Application 08/891,884
5
suggested to one of ordinary skill in the art that the disk valve
50 disclosed by Nakata may be used in lieu of the heat-staked
check valve 42 in Clark. More importantly, the applied
references are silent as to the comparative costs of the two
types of check valves. It follows, therefore, that the
motivation for making the suggested modification to Clark is
based upon the examiner’s opinion. The factual question of
motivation should be resolved based on evidence of record, and
not on the subjective belief and unknown authority expressed by
the examiner. In re Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002). Lastly, “obvious to try” is not the
proper standard for determining obviousness of the claimed
invention. In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673,
1681 (Fed. Cir. 1988).
In summary, the obviousness rejection of claims 1
through 6, 9 and 10 is reversed. The obviousness rejection of
claims 7 and 8 is reversed because the teachings of Hirosawa fail
to cure the noted shortcoming in the teachings of Clark and
Nakata.
Appeal No. 2001-1766
Application 08/891,884
6
DECISION
The decision of the examiner rejecting claims 1 through
10 under 35 U.S.C. § 103(a) is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
KWH:psb
Appeal No. 2001-1766
Application 08/891,884
7
Howard G. Bruss
Owens-Illinois
One Seagate 25-LDP
Toledo, OH 43666