Ex Parte Nielsen et al

Patent Trial and Appeal Board

Dec 10, 2013

12475714 (P.T.A.B. Dec. 10, 2013)

UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/475,714 0610112009
22879 7590 12/12/2013
HEWLETT-PACKARD COMPANY
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528
FIRST NAMED INVENTOR
Jeffrey A. Nielsen
UNITED STA TES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
82250705 4024
EXAMINER
XU,XIAOYUN
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
12/12/2013 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):
JERRY.SHORMA@HP.COM
ipa.mail@hp.com
brandon.serwan@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY A. NIELSEN, JEREMY HART AN
DONALDSON, BENJAMIN CLARK, and
DEBORA J. THOMAS
Appeal2012-009593
Application 12/475,714
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
ROMULO H. DELMENDO, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2012-009593
Application 12/475,714
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 10-12, 15, 16, 21, and 22. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a fluid dispensing device. Claim 10 is
illustrative:
10. A fluid dispensing device for dispensing fluid with
reduced pooling, comprising:
a thermal inkjet printhead comprising at least one drop
ejector, each said drop ejector comprising a base, a jetting
chamber and an orifice including a low surface energy layer;
a low dead volume fluid delivery system comprising a
reservoir fluid receptacle which is open to the atmosphere and
positioned above said at least one drop ejector and a slot joined
at opposite ends to said reservoir fluid receptacle and said at
least one drop ejector base.
Cook
Materna
Droege
The References
us 6,095,643
US 2002/0084290 Al
US 7 ,540,599 B2
Aug. 1, 2000
July 4, 2002
June 2, 2009
Cathie Burke, The In~et Printheadfor KODAK EASYSHARE AIO Printers,
http://pluggedin.kodak.com/post/?ID=488521 (Feb. 20, 2007) (hereinafter
Burke).
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 10, 12, 15, 21 and 22 over Materna in view of Cook, claim 11 over
Materna in view of Cook and Droege, and claim 16 over Materna in view of
Cook and Burke.
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Appeal2012-009593
Application 12/475,714
OPINION
We procedurally reverse the rejections and enter a new rejection under
37 C.F.R. § 41.50(b).
Claims 10-12, 15, 16, 21, and 22 are rejected under 35 U.S.C. § 112,
second paragraph as failing to particularly point out and distinctly claim the
subject matter which the Appellants regard as the invention.
The relevant inquiry under 35 U.S.C. § 112, second paragraph, is
whether the claim language, as it would have been interpreted by one of
ordinary skill in the art in light of the Appellants' Specification, sets out and
circumscribes a particular area with a reasonable degree of precision and
particularity. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Appellants' sole independent claim (10) requires "a low dead
volume fluid delivery system". The Appellants' Specification does not
define "low dead volume" but, rather, merely states that "[i]n one
embodiment, the low dead volume fluid delivery system 400 is a slot
extender with no backpressure control device or system 410 placed on a top
side of the printhead" (i-f 0018) and "[t]he slot extender is a simple plastic
reservoir that is used for a portion of the low dead volume fluid delivery
system 400 in one embodiment. This acts as the fluid reservoir 125 to hold a
large supply of a solution" (i-f 0019). 1
Because the Appellants' Specification is not clear as to what "low" in
"low dead volume" encompasses, the Appellants' claims, as they would
have been interpreted by one of ordinary skill in the art in light of the
Appellants' Specification, fail to set out and circumscribe a particular area
1 Although the Appellants' claim 16 requires pico liter drops, it does not limit
the dead volume of the fluid delivery system.
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Appeal2012-009593
Application 12/475,714
with a reasonable degree of precision and particularity. Accordingly, we
reject the claims as being indefinite under 35 U.S.C. § 112, second
paragraph.
In some instances, it is possible to make a reasonable, conditional
interpretation of claims adequate for the purpose of resolving patentability
issues to avoid piecemeal appellate review. In the interest of administrative
and judicial economy, this course is appropriate wherever reasonably
possible. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex
parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984). In other instances,
however, it may be impossible to determine whether claimed subject matter
is anticipated by or would have been obvious over references because the
claims are so indefinite that considerable speculation and assumptions would
be required regarding the meaning of terms in the claims with respect to the
scope of the claims. See In re Steele, 305 F.2d 859, 862 (CCPA 1962).
For the reason discussed above, the Appellants' claims are sufficiently
indefinite that application of the prior art to the claims is not possible. On
this basis, we do not sustain the rejections under 35 U.S.C. § 103. This
reversal is not a reversal on the merits of the rejections but, rather, is a
procedural reversal predicated upon the indefiniteness of the claims.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 10, 12, 15, 21, and 22
over Materna in view of Cook, claim 11 over Materna in view of Cook and
Droege, and claim 16 over Materna in view of Cook and Burke are
procedurally reversed. A new rejection of claims 10-12, 15, 16, 21, and 22
is entered under 37 C.F.R. § 41.50(b).
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Appeal2012-009593
Application 12/475,714
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED; 37 C.F.R. § 41.50(b)
bar
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