Ex parte Lowry et al.

Board of Patent Appeals and Interferences

Sep 14, 2000

08368452 (B.P.A.I. Sep. 14, 2000)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.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 EDWINA F. LOWRY and PAUL T. SPIVEY
____________
Appeal No. 1998-1440
Application No. 08/368,452
____________
ON BRIEF
____________
Before THOMAS, BARRETT, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the rejection of claims 4-16. We affirm-in-part.
BACKGROUND
The invention at issue in this appeal relates to
manufacturing an ink jet print cartridge. Such a cartridge
comprises an ink reservoir in communication with an ink
channel and a nozzle plate. The nozzle plate includes holes
Appeal No. 1998-1440 Page 2
Application No. 08/368,452
from which to eject ink. In the ink reservoir, a foam ink pad
prevents ink from leaking through the holes.
The foam ink pad typically contains unreacted foam
materials and foam by-products produced while manufacturing
the foam. Such materials are leached out of the foam by the
ink in the reservoir. Over time, the materials clog the holes
of the nozzle plate.
The invention involves immersing a foam ink pad in cold,
deionized water for at least six hours. Such immersion
removes residual materials from the pad, thereby reducing
clogging of the holes of an associated nozzle plate.

Claim 4, which is representative for our purposes,
follows:
4. A process for removing an oily material
from polyether polyurethane foam ink pads used in
reservoirs of inkjet print cartridges, comprising
the steps of a) contacting said polyether
polyurethane foam ink pads with cold deionized water
for a time period of at least about six (6) hours
and b) removing said polyether polyurethane foam
pads from contact with said cold deionized water.
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Application No. 08/368,452
The references relied on in rejecting the claims follow:
Heffernan 4,824,487 Apr.
25, 1989
Haruta et al. (Haruta) 5,182,579 Jan. 26, 1993.

Claims 5-9 and 11-16 stand rejected under 35 U.S.C. §
112, ¶ 2, as indefinite. Claims 4-16 stand rejected under 35
U.S.C. § 103(a) as obvious over Haruta in view of Heffernan.
Rather than repeat the arguments of the appellants or examiner
in toto, we refer the reader to the briefs and answer for the
respective details thereof.
OPINION
In deciding this appeal, we considered the subject matter
on appeal and the rejection advanced by the examiner.
Furthermore, we duly considered the arguments and evidence of
the appellants and examiner. After considering the totality
of the record, we are persuaded that the examiner erred in
rejecting claims 5-9, 11-13, 15, and 16 as indefinite and in
rejecting claims 4-16 as obvious over Haruta in view of
Heffernan. We are also persuaded that the examiner did not
Appeal No. 1998-1440 Page 4
Application No. 08/368,452
err in rejecting claim 14 as indefinite. Accordingly, we
affirm-in-part. Our opinion addresses the following issues:
• indefiniteness rejection of claims 5-9 and 11-16
• obviousness rejection of claims 4-16.
Indefiniteness Rejection of Claims 5-9 and 11-16
We begin by noting the following principles from Miles
Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d
1123, 1126 (Fed. Cir. 1993).
The test for definiteness is whether one skilled
in the art would understand the bounds of the claim
when read in light of the specification.
Orthokinetics, 806 F.2d at 1576. If the claims read
in light of the specification reasonably apprise
those skilled in the art of the scope of the
invention, Section 112 demands no more. Hybritech,
802 F.2d at 1385. The degree of precision necessary
for adequate claims is a function of the nature of
the subject matter. Id.
With these principles in mind, we address the examiner's three
reasons for the rejection under 35 U.S.C. § 112, ¶ 2.
First, the examiner rejects claims 5-9 and 11-16 for the
following reason.
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Application No. 08/368,452
[C]laims 5-9 and 11-16 depend on a method claim and
as such should further define the method. However,
the claims as written, there is no step that further
defines the method from which the claims depended
on. What these claims state are conclusions to a
finish [sic] method process. Thus, they do not
clearly further define the limitation of the method
steps set forth by the claim from which they
depended on.
(Examiner's Answer at 6.) The appellants argue, "Appellants
have clearly written a preamble to their claims. There is
nothing, even remotely, in Title 35 of the United States Code
that suggests patent claims cannot have preambles ...."
(Appeal Br. at 8.)
The examiner fails to show that dependent claims 5-9 and
11-16 do not further define independent claim 4. To the
contrary, when read in light of the specification, one skilled
in the art would understand that each dependent claim
specifies a further limitation of the subject matter of the
independent claim. While claim 4 specifies in pertinent part
"cold deionized water," for example, claim 5 further specifies
that the cold water "is at a temperature of about 4°C." While
claim 4 specifies in pertinent part "a time period of at least
about six (6) hours," for another example, claim 6 further
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Application No. 08/368,452
specifies that "said time period is not to exceed about 72
hours." In view of this understanding, we are persuaded that
claims 5-9, 11-13, and 15, read in light of the specification,
reasonably apprise those skilled in the art of the scope of
the invention. We demand no more. Therefore, we reverse the
rejection of claims 5-9, 11-13, and 15 under 35 U.S.C. § 112,
¶ 2.
The examiner further rejects claim 14 for the following
reason.
[I]t is unclear in determine [sic] whether the
recitation of "reservoirs of ink jet print
cartridges" on line 3 of this claim and the one on
line 2 of claim 4, which this claim is indirectly
depended therefrom, are one in the same; if so, the
second and any subsequent occurrence should begin
with the word "said" ....
(Final Rejection at 4.) The appellants argue that they have
amended the claims "in order to fully comply with the
Examiner's suggestions ...." (Appeal Br. at 6.)
“‘[T]he main purpose of the examination, to which every
application is subjected, is to try to make sure that what
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Application No. 08/368,452
each claim defines is patentable. [T]he name of the game is
the claim ....’” In re Hiniker Co., 150 F.3d 1362, 1369,
47 USPQ2d 1523, 1529 (Fed. Cir. 1998) (quoting Giles S. Rich,
The Extent of the Protection and Interpretation of
Claims--American Perspectives, 21 Int'l Rev. Indus. Prop. &
Copyright L. 497, 499, 501 (1990)). Here, claim 14 ultimately
depends from claim 4. Claim 4 specifies in pertinent part the
following limitations: "[a] process for removing an oily
material from polyether polyurethane foam ink pads used in
reservoirs of inkjet print cartridges ...." Claim 14 further
specifies in pertinent part the following limitations: "said
dried polyether polyurethane foam pads are placed in
reservoirs of said ink jet print cartridges ...."
Accordingly, claim 14 refers to reservoirs that may be
different than the reservoirs of claim 4.
The failure of claim 14 to refer to said reservoirs of
said ink jet print cartridges, i.e., the reservoirs of claim
4, causes it to be indefinite. In view of this failure, we
are persuaded that claim 14, read in light of the
specification, would not reasonably apprise those skilled in
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Application No. 08/368,452
the art of the scope of the invention. Therefore, we affirm
the rejection of claim 14 under 35 U.S.C. § 112, ¶ 2. We
agree with the examiner, (Examiner's Answer at 6), however,
that the rejection could be overcome by amending claim 14 to
specify in pertinent part following limitations: "said dried
polyether polyurethane foam pads are placed in reservoirs of
said ink jet print cartridges ...."
The examiner further rejects claim 16 for the following
reason. "[T]he recitation of 'said process is a step in an
inkjet print cartridge manufacturing process' is indefinite
because the manufacturing process has not been defined."
(Final Rejection at 4.) The appellants argue, "Appellants
have not limited their invention to be germane to a particular
manufacturing process. The invention herein may be used as a
step in any art recognized print cartridge manufacturing
process." (Appeal Br. at 6.)
Claim 16 ultimately depends from claim 4. Claim 4
specifies in pertinent part the following limitations: "[a]
process for removing an oily material from polyether
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Application No. 08/368,452
polyurethane foam ink pads ...." Claim 16 further specifies
the following limitations: "[a] process for removing oily
material from polyether polyurethane foam ink pads in
accordance with claim 4 wherein said process is a step in an
inkjet print cartridge manufacturing process."
The examiner fails to show that claim 16 is indefinite.
To the contrary, when read in light of the specification, one
skilled in the art would understand that the claim further
specifies that the removing of oily material specified in
claim 4 is a step in a process for manufacturing an inkjet
print cartridge. In view of this understanding, we are
persuaded that claim 16, read in light of the specification,
reasonably apprises those skilled in the art of the scope of
the invention. We demand no more. Therefore, we reverse the
rejection of claim 16 under 35 U.S.C. § 112, ¶ 2. Next, we
address the obviousness rejection of claims 4-16.
Obviousness Rejection of Claims 4-16
We begin by noting the following principles from
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Application No. 08/368,452
In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993).
In rejecting claims under 35 U.S.C. Section 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
If the examiner fails to establish a prima facie
case, the rejection is improper and will be
overturned.
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988).
With these principles in mind, we address the examiner's
rejection and the appellants' argument.
The examiner rejects the claims for the following reason.
"Since a specified ... time period is considered by the
teachings of Heffernan, to provide the specific ... time
period of 6 hours as claimed would be considered an obvious
experimental choice for optimization in view of Heffernan as a
whole." (Examiner's Answer at 5.) The appellants argue, "the
primary reference does not, even remotely, teach, suggest or
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Application No. 08/368,452
disclose the use of ... water for at least about six (6) hours
...." (Reply Br. at 3.) They add, "even a hypothetical
combination of the two references does not disclose or suggest
the claimed limitations which include time ...." (Appeal Br.
at 10.)
Claims 4-16 each specifies in pertinent part the
following limitations: "contacting said polyether polyurethane
foam ink pad with cold deionized water for a time period of at
least about six (6) hours ...." Accordingly, the limitations
require contacting a foam ink pad with cold water for
approximately six hours at a minimum.

The examiner fails to show a suggestion of the
limitations in the prior art. “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 1085, 1087, 37 USPQ2d 1237, 1239
(Fed. Cir. 1995)(citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13
(Fed. Cir. 1983)). “The mere fact that the prior art may be
Appeal No. 1998-1440 Page 12
Application No. 08/368,452
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, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (citing In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984)). “It is impermissible to use the claimed invention as
an instruction manual or ‘template’ to piece together the
teachings of the prior art so that the claimed invention is
rendered obvious.” In re Fritch, 972 F.2d 1260, 1266, 23
USPQ2d 1780, 1784 (Fed. Cir. 1992)(citing In re Gorman, 933
F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991)).
Here, the examiner admits, "Haruta et al. does not
disclose ... the polyurethane foam being immersed in the water
for at least about 6 hours ...." (Examiner's Answer at 4.)
This is an understatement. The reference actually discloses
washing a foam ink pad for seconds or minutes. Specifically,
"[s]atisfactory washing time is usually as few as ten seconds
to minutes in case of polar solvents. In case of washing by
rubbing or repeated pressing, a few ten seconds are
satisfactory." Col., 23, ll. 58-61.
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Application No. 08/368,452
Faced with this deficiency, the examiner alleges,
"Heffernan clearly suggests the full consideration of ... a
period of time in cleaning a polyurethane foam material which
would indicate to one having ordinary skill in the art that
one may choose whatever ... time parameter desired." (Id. at
5.) The reference, however, teaches washing a foam ink pad
for no more than fifteen minutes. Specifically, "[d]uring the
cleaning process, the foam parts are agitated in the liquid
solvent for a period of time. The agitation period should be
no more than about 15 minutes. An agitation period of at
least 5 minutes seems adequate." Col. 3, ll. 56-60.
Rather than a washing time of hours as claimed, Haruta
and Heffernan disclose a washing time of mere seconds or
minutes. Heffernan specifically limits the washing time to
fifteen minutes. In view of this disclosure and limitation,
we are not persuaded that teachings from the prior art would
have suggested the limitations of "contacting said polyether
polyurethane foam ink pad with cold deionized water for a time
period of at least about six (6) hours ...." The examiner
fails to establish a prima facie case of obviousness.
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Application No. 08/368,452
Therefore, we reverse the rejection of claims 4-16 under 35
U.S.C. § 103.
CONCLUSION
In summary, the rejection of claims 5-9, 11-13, 15, and
16 under 35 U.S.C. § 112, ¶ 2, as indefinite is reversed. The
rejection of claim 14 under 35 U.S.C. § 112, ¶ 2, as
indefinite, however, is affirmed. The rejection of claims 4-
16 under
35 U.S.C. § 103(a) as obvious over Haruta in view of Heffernan
is reversed.

No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
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Application No. 08/368,452
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 1998-1440 Page 16
Application No. 08/368,452
John J. McArdle, Jr.
Lexmark International Inc.
Intellectual Property Law
740 New Circle Road NW
Lexington, KY 40511-1876