Ex Parte Murphy et al

Patent Trial and Appeal Board

Jul 18, 2017

14900957 (P.T.A.B. Jul. 18, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/900,957 12/22/2015 Bryan Murphy 84433564 8749
22879
HP Tnr
7590 07/20/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
VALENCIA, ALEJANDRO
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
07/20/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRYAN MURPHY, PATRICK LYNCH,
and JOHN MCNEILLY1
Appeal 2017-007927
Application 14/900,957
Technology Center 2800
Before JOHNNY A. KUMAR, SCOTT E. BAIN, and ALEX S. YAP,
Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 16, 17, and 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Hewlett-Packard Development Company, L.P. as the
real party in interest. Appeal Br. 1.
Appeal 2017-007927
Application 14/900,957
Representative Claim
Claim 16 is representative of the claims on appeal and is reproduced
below:
16. A printing fluid cartridge, comprising:
a reservoir;
a printing fluid outlet from the reservoir;
multiple electrical contacts arranged next to one another
in an X direction across the cartridge with an interface between
each pair of adjacent electrical contacts in a Y direction along
the cartridge; and
multiple alignment slots next to the electrical contacts in
the Y direction and configured to align the cartridge to a
receiver when the cartridge is installed in the receiver, each of
the alignment slots spanning exactly one of the interfaces in the
X direction.
Rejections
Claims 16, 17, and 20 stand rejected under 35 U.S.C. § 112(b) or 112
(pre-AlA), second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the joint inventors
regard as the invention.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Steinmetz (US 6,959,985 B2, issued Nov. 1, 2005) in
view of Nozawa (US 7,703,902 B2, issued Apr. 27, 2010).
Claims 17 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Steinmetz in view of Nozawa, and further in view of
MPEP § 2144.04.
2
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Application 14/900,957
ANALYSIS2
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. With respect to the rejections under
35 U.S.C. § 103(a), we agree with the Examiner’s findings and conclusion
and adopt them as our own. However, regarding the rejection under
35 U.S.C. § 112, second paragraph, we are persuaded by Appellants’
contentions that the Examiner erred.
Rejection under 35 U.S.C. § 112, Second Paragraph
The Examiner rejects claim 16 as indefinite for failing to particularly
point out and distinctly claim the subject matter which the applicants regard
as the invention. Specifically, regarding the limitations “an interface
between each pair of adjacent electrical contacts in a Y direction along the
cartridge” and “spanning exactly one of the interfaces in the X direction,”
the Examiner finds “[t]o say an object simply is in a direction is vague and
indefinite'’ (Ans. 3—4) (emphasis added).
A decision on whether a claim is indefinite under 35 U.S.C. § 112,
second paragraph, requires a determination of whether one of ordinary skill
in the art would understand what is claimed when the claim is read in light
of the specification. See Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d
1343, 1350 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1568 (Fed. Cir. 1986). Applying such test to the claim
language in question, we agree with Appellants’ contention that, in light of
the Specification and Figure 2, a skilled artisan would understand
electrical contacts 34, 36, 38, and 40 are arranged next to one another across
2 Separate patentability is not argued for claims 2—9 and 12—15. Except for
our ultimate decision, these claims are not discussed further herein.
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Application 14/900,957
the cartridge in the X direction with an interface 55 between each pair of
adjacent contacts 36/38, 36/38, and 38/40 along the cartridge in the Y
direction; and the alignment slot 30 spans the interface 55 between
electrical contacts 34 and 36 in the X direction and alignment slot 32 spans
the interface 55 between contacts 38 and 40 in the X direction. App. Br.
3^4.
Thus, we do not sustain the Examiner’s rejection of claim 16 under
35 U.S.C. § 112, second paragraph. Because we reverse the rejection of
independent claim 16, we also reverse the 35 U.S.C. § 112, second
paragraph, rejection of dependent claims 17 and 20, which depend from
claim 16.
Rejections under 35 U.S.C. § 103(a)
Appellants contend the Examiner has relied on impermissible
hindsight for limitations in claims 16, 17, and 203:
The dispositive question, therefore, is whether or not it
would have been obvious to the ordinarily skilled artisan to
modify the combination of Nozawa and Steinmetz to arrive at the
structural configuration of Claims 16, 17 and 20 without the
benefit of hindsight. The answer is no. A comparison of the
relevant figures from Nozawa and Steinmetz with the example
shown in Fig. 2 is instructive. Note especially with regard to the
further limitations of Claims 17 and 20 that (1) the single
alignment slot 208 in Nozawa Fig. 9 runs along the face of the
cartridge away from the bottom, not along the bottom of the
cartridge as claimed (and as shown in the example of Fig. 2) and
(2) the alignment holes matching projections 207b in Nozawa
Fig. 12 must necessarily reside completely in the face of the
cartridge, with no exposure along the bottom of the cartridge.
3 Separate patentability is not argued for claims 17 and 20. Except for our
ultimate decision, claims 17 and 20 are not discussed further herein.
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Appeal 2017-007927
Application 14/900,957
Reply Br. 2 (emphasis added).
The Examiner finds, and we agree:
Nozawa teaches two projections that necessarily mate with two
slots, and the general size of Nozawa’s projections necessarily
indicate the size of the slots into which they would be inserted.
Examiner’s combination is premised on the fact that one of
ordinary skill in the art could replace the one slot disclosed by
Steinmetz with the two slots disclosed by Nozawa to achieve
a more reliable positioning and that, in combining the two-slot
teaching with Steinmetz, one of ordinary skill in the art would
know that sizes and placement of the slots could be adjusted to
achieve ideal positioning.
Ans. 4, See also Nozawa, Fig. 12.
Regarding Appellants’ hindsight argument, we are cognizant that our
reviewing courts have not established a bright-line test for hindsight. In KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the U.S. Supreme Court
guides that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court
qualified the issue of hindsight by stating, “[rjigid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” Id.
Here, we see the post-KSR hindsight question before us as a balancing
test'. We decide whether the Examiner’s proffered combination of
references is merely: (1) “the predictable use of prior art elements according
to their established functions” (KSR, 550 U.S. at 417), consistent with
common sense; or, (2) would an artisan reasonably have combined the cited
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Application 14/900,957
references in the manner proffered by the Examiner but for having the
benefit of Appellants’ claims and Specification to use as a guide.
After reviewing the respective teachings and suggestions of the
references (as cited by the Examiner, Final Act. 4—7), we find the weight of
the evidence supports the Examiner’s findings. In reviewing the record, we
find the Examiner provided sufficient articulated reasoning with some
rational underpinning to establish why an artisan would have been motivated
to combine the secondary Nozawa reference with the primary Steinmetz
reference. Final Act. 4—5.4
Moreover, Appellants have not demonstrated the Examiner’s
proffered combination would have been “uniquely challenging or difficult
for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Nor have Appellants provided any objective evidence of secondary
considerations, which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
In summary, we find combining the respective reference teachings in
the manner proffered by the Examiner would have merely resulted in “the
predictable use of prior art elements according to their established
functions,” KSR, 550 U.S. at 417. See Ans. 4—5. We find the Examiner
provided sufficient articulated reasoning with some rational underpinning to
4 The Examiner finds it “would have been obvious to one of ordinary skill
in the art at the time of invention to use two slots/projections, as disclosed by
Nozawa, to align the electrical contacts on the cartridge to the terminals in
the receiver disclosed by Steinmetz because doing so would provide for
better alignment with two points of alignment rather than one.” Final Act. 5.
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Application 14/900,957
support the legal conclusion of obviousness. See KSR, 550 U.S. at 418; see
also Final Act. 5. We are further mindful that the skilled artisan would “be
able to fit the teachings of multiple patents together like pieces of a puzzle”
since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR 550 U.S. at
420-21.
This reasoning is applicable here. Accordingly, on this record we are
not persuaded the Examiner erred by improperly combining the cited
references under § 103.
For at least the aforementioned reasons, on this record, and based
upon a preponderance of the evidence, we are not persuaded by Appellants’
arguments alleging the Examiner improperly combined the cited references
under § 103, or that the proffered combination of Steinmetz and Nozawa
does not teach or suggest the contested limitations within the meaning of
representative claim 16.
DECISION
We reverse the Examiner’s rejections of claims 16, 17, and 20 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s rejections of claims 16, 17, and 20 under
35 U.S.C. § 103(a).
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Application 14/900,957
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).
AFFIRMED
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