Ex Parte Nielsen et alDownload PDFPatent Trial and Appeal BoardMay 10, 201612475714 (P.T.A.B. May. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/475,714 0610112009 22879 7590 05/12/2016 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Jeffrey A. Nielsen 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82250705 4024 EXAMINER XU,XIAOYUN ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 05/12/2016 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 yvonne.bailey@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 HARTAN DONALDSON, BENJAMIN CLARK, and DEBORA J. THOMAS Appeal2014-009858 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 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 and 21-24. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a fluid dispensing device. Claim 10 is illustrative: Appeal2014-009858 Application 12/475,714 10. A fluid dispensing device for dispensing fluid with reduced pooling, comprising: Materna Noritake 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; and a fluid delivery system comprising: a fluid reservoir which is open to the atmosphere and positioned above said at least one drop ejector, wherein said fluid delivery system does not comprise a backpressure control device. The References US 2002/0084290 Al US 2007 /0084997 Al July 4, 2002 Apr. 19, 2007 Cathie Burke, The In~et Printheadfor KODAK EASYSHARE AIO Printers, http://pluggedin.kodak.com/post/?ID=48852 l (Feb. 20, 2007) (hereinafter Burke). The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 10-12, 15 and 21-24 over Materna in view ofNoritake and claim 16 over Materna in view ofNoritake and Burke. OPINION We reverse the rejections. We need address only the independent claims (10, 23 and 24). "' [D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.'" In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)). Each of the Appellants' independent claims recites "a backpressure control device". The Appellants' Specification states that "[b ]ackpressure is 2 Appeal2014-009858 Application 12/475,714 negative pressure in the drop ejector 130 of FIG. 1 jetting chamber 217 of FIG. 2 to retard drooling and pooling" (Spec. i-f 18), refers to "a slot extender with no backpressure control device or system 410 placed on a top side of the printhead" (id.), and discloses that a slot extender acts as a fluid reservoir (125) such that "a capillary mechanism inherent in the geometry between the drop ejector 130 of FIG. 1 and fluid reservoir 125 provides a predetermined reduced amount ofbackpressure at the orifice" (Spec. i-f 19). The Appellants' claim 23 requires "a slot extender that reduces backpressure at said drop ejector" and claim 24 requires a fluid delivery system which includes a slot extender but does not comprise a backpressure control device. Thus, the broadest reasonable interpretation of the Appellants' claim term "backpressure control device" consistent with the Specification is any device for controlling backpressure other than a slot extender. The Appellants' claim 10 does not recite a slot extender but requires that the fluid dispensing device provides reduced pooling without a backpressure control device which, the Appellants' Specification indicates, is achieved by use of a slot extender (Spec. i-fi-1 18-19). The Appellants' claim 10, therefore, implicitly requires a slot extender. To meet the Appellants' slot extender claim requirement the Examiner relies upon N oritake' s outlet ( 4) from a device comprising an inlet (1 ), a channel (2), a reservoir (3), and a discharge unit (50) including a substrate ( 10) and a piezoelectric element (20) (i-f 61; Fig. 1) (Ans. 5-7). The Examiner asserts that Noritake discloses "a slot extender (4) that reduces backpressure at said drop ejector (Fig. 1) (Ans. 5) and "a slot extender comprising a first slot ( 4) and a second slot ( 4) ... wherein said slot extender reduces backpressure at each drop ejector, and wherein said 3 Appeal2014-009858 Application 12/475,714 fluid delivery system does not comprise a backpressure control device (Fig. 1 )"(Ans. 6-7). The Examiner provides no evidence or technical reasoning which indicates that Noritake's outlet (4) is capable of reducing backpressure. The Examiner appears to consider backpressure reduction to be an inherent characteristic of that outlet. However, when an examiner relies upon a theory of inherency, "the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 U.S.P.Q.2d 1461, 1464 (Bd. Pat. App. & Int. 1990). The Examiner has not carried that burden. Accordingly, we reverse the rejections. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 10-12, 15 and 21-24 over Materna in view ofNoritake and claim 16 over Materna in view of N oritake and Burke are reversed. REVERSED 4 Copy with citationCopy as parenthetical citation