Ex Parte Peters

Patent Trial and Appeal Board

Jun 17, 2016

12743547 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121743,547 05/18/2010
22879 7590 06/21/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Kevin F. Peters
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.
82242830 4899
EXAMINER
GORDON, BRIAN R
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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 KEVIN F. PETERS
Appeal2014-006918
Application 12/743,547
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and
JAMES C. HOUSEL, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 8, 9, 12, 14, 19, 30-33 and 35--40. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appellant's invention is best illustrated by independent claims 1 and
14, reproduced below:
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Application 12/743,547
1. A method for preparing a titration series, comprising:
loading reagent into a reagent reservoir within a fluid
ejection device; and,
ejecting reagent from the fluid ejection device into a
plurality of receptacles so that an amount of reagent ejected
from the fluid ejection device into a first receptacle in a
plurality of receptacles is at least 10,000 times an amount of
reagent ejected from the fluid ejection device into a second
receptacle in the plurality of receptacles.
14. A dosing system for preparing a titration series,
compnsmg:
a receptacle positioning mechanism for positioning
receptacles; and
an ejection device, the fluid ejection device including:
a reagent reservoir used to hold reagent, and
a plurality of nozzles, the nozzles being arranged to
provide the fluid ejection device capability of ejecting reagent
through the nozzles into a plurality of receptacles so that an
amount of reagent ejected from the fluid ejection device into a
first receptacle in the plurality of receptacles is at least 10,000
times an amount of reagent ejected from the fluid ejection
device into a second receptacle in the plurality of receptacles.
App. Br. 25 and 26-27 (Claims Appendix).
The Examiner maintains the following rejections (Ans. 2-7):
(a) claims 36-38 rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention;
(b) claims 14, 30-33, 35, and 40 rejected under 35 U.S.C. § 102(b) as
anticipated by Pelc et al. (US 6,592,825 B2, issued July 15, 2003)
(hereinafter "Pelc");
(c) claims 1, 3--4, 8, 9, 12, 37, and 38 rejected under 35 U.S.C.
§ 103(a) as obvious over Pelc; and
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Application 12/743,547
(d) claims 2, 19, 36, and 39 rejected under 35 U.S.C. § 103(a) as
unpatentable over Pelc and Deeg et al. (US 5,338,688, issued Aug. 16, 1994)
(hereinafter "Deeg").
OPINION
Rejection under 35 U.S. C. § 112, second paragraph
We REVERSE.
The Examiner found regarding claim 36 "it is unclear how the
respective activating steps are related to previously recited steps of claim 1 ";
regarding claim 37, "it is unclear what ejecting 10,000 times refers to"; and
regarding claim 38, "it is unclear how the respective ejection steps of a first
and second droplet from first and second nozzles relates to the previously
claimed steps of claim 1 ". (Ans. 2-3)
Appellant argues the Examiner's criticism of claim 36 identifies the
breath of the claim not indefiniteness. (App. Br. 12-13). Appellant argues
claim 37 recites that the ejection of 10,000 times the reagent into the second
receptacle. (App. Br. 13-14). Regarding claim 38, Appellant argues "[o]ne
of skill in the art would readily appreciate that the receptacle in claim 1
receiving 10,000 times the fluid can be more rapidly filled by droplets of
larger volume, whereas droplets of a small volume may be desired to
precisely fill the receptacle receiving the much lesser volume of fluid."
(App. Br. 13-15).
We agree with Appellant that one skilled in the art would have been
capable of understanding the disputed claims. Breadth of a claim is not to be
equated with indefiniteness. In re Miller, 441F.2d689, (CCPA 1971); In re
Gardner, 427 F.2d 786, 788 (CCPA 1970) ("Breadth is not indefiniteness.").
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Application 12/743,547
Thus, on this record, the Examiner has not adequately explained why
claims 36-38 fail to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention.
Accordingly, we reverse the Examiner's rejections under 35 U.S.C.
§ 112, second paragraph.
Prior Art Rejections1
We refer to the Examiner's Final Action for a complete statement of
the rejection. Final Act. 9-13.
§ 102 rejection
We have reviewed each of Appellant's arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner's § 102 rejections of representative independent claim 14.
Accordingly; we will sustain all of the Examiner's rejections for essentially
the reasons expressed in the Answer and we add the following for emphasis.
Claim 14
Appellant argues Pelc does not actually teach or suggest "an amount
of reagent ejected from the fluid ejection device into a first receptacle in the
plurality of receptacles is at least 10,000 times an amount of reagent ejected
1 Appellant relies on the arguments presented when discussing independent
claims 1and14 in addressing the separate rejection of claims 2, 19, 36, and
39. (App. Br. 24). Accordingly, we will address independent claims 1 and
14 as representative of the subject matter on appeal. We will also address
separately argued claims for each rejection.
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Application 12/743,547
from the fluid ejection device into a second receptacle" as required by claim
14. Appellant argues Pelc teaches dispensing of like-sized droplets at low
frequencies and does not operate at a speed sufficient to meet the speed
required to meet claim 14. (App. Br. 15-16; Reply Br. 4)
We are unpersuaded by Appellant's argument. Pelc discloses the
factors affecting droplet size include: the size of the nozzle opening at the
bottom of the microdispenser, the pressure at the microdispenser inlet, and
properties of the transfer liquid and the droplet size can be varied by varying
the magnitude and duration of the electrical signal applied to the
microdispenser. (Col 6 11. 17-22). Pelc also discloses thousands of droplets
can be emitted per second from the microdispenser, the desired microvolume
of transfer liquid can rapidly be dispensed by use of analog voltage pulses
that are sent to the microdispenser emitting droplets of liquid. (Col 9 11. 12-
29). Thus, Pelc discloses a dosing system for preparing a titration series that
is capable of operating at a speed sufficient to meet the speed required to
meet claim 14.
Claim 30
Appellant argues Pelc does not teach or suggest a firing frequency
above 5000 Hertz because the device of Pelc is limited by a settling time for
pressure waves in the capillary from about 5 to about 10 milliseconds. (App.
Br. 18; citing Pelc, col. 3, 11. 40-47).
Appellant's argument is not persuasive for the reason discussed
above. A person of ordinary skill in the art, based on disclosure of Pelc,
would have been capable of dispensing thousands of droplets per second to
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Appeal2014-006918
Application 12/743,547
obtain the desired volume of liquid transfer. (Col 9 11. 12-29). Pelc
discloses the use of analog pulses to achieve this goal. (Col 8 11. 41---68). As
such a person of ordinary skill in the art would have been in possession of
dispensing liquid at the rate required by the claimed invention.
Claim 32
Appellant argues the Examiner has not shown where Pelc teaches a
fluid ejection device "configured for ejecting reagent so as to distribute
reagent into the plurality of receptacles so that the titration is unevenly
spaced across concentration decades" as required by subject matter of claim
32. (App. Br. 18-19)
Appellant's argument is not persuasive of reversible error. Appellant
has not disputed that Pelc teaches a fluid ejection device. As discussed
above when discussing claim 14, Pelc discloses factors affecting droplet size
dispensed. Appellant has not explained how the reagent distribution
required by the claimed invention differs from the distribution described by
Pelc.
Claim 33
Appellant argues the Examiner has not shown where Pelc teaches a fluid
ejection device "configured for adding a volume of diluent to the receptacles
to dilute to desired concentrations reagent ejected into the plurality of
receptacles" as required by subject matter of claim 33. (App. Br. 19-20)
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Application 12/743,547
Appellant has not disputed Pelc discloses a dispensing device for
transferring precise volumes of liquids to receptacles. Pelc specifically
discloses there is a need to aspirate a variety of different liquid mixture or
solutions for dispensing by the dispenser. (Col. 2 11. 13-38) As such, the
dispenser of Pelc would have also been suitable for distributing diluent
liquids. Appellant has not adequately explained why a system that is
suitable for delivery of a variety of liquids to receptacles would not have
been suitable for dispensing a diluent liquid.
Claim 40
Appellant argues the Examiner has not shown where Pelc teaches a
fluid ejection device "configured for ejecting drops from said plurality of
nozzles such that first drops ejected from a first nozzle in the plurality of
nozzles have at least twice the volume of second drops ejected from a
second nozzle in the plurality of nozzles" as required by subject matter of
claim 40. (App. Br. 20)
Appellant's argument is not persuasive of reversible error. Appellant
has not disputed that Pelc teaches a fluid ejection device. As discussed
above when discussing claim 14, Pelc discloses factors affecting droplet size
dispensed. Appellant has not explained how the reagent distribution
required by the claimed invention differs from the distribution described by
Pelc.
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Appeal2014-006918
Application 12/743,547
§ 103 rejections2
We have reviewed each of Appellant's arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner's§ 103(a) rejections of representative independent claim 1.
Accordingly, we will sustain all of the Examiner's§ 103(a) rejections for
essentially the reasons expressed in the Answer and we add the following for
emphasis.
Claim 1
Appellant argues, Pelc does not actually teach or suggest a difference
of 4 orders of magnitude (10,000 times) more reagent ejected into a second
receptacle than a first receptacle. (App. Br. 21-22; Reply Br. 15-16).
We are unpersuaded by Appellant's argument. As discussed above, Pelc
discloses properties of the transfer liquid and the droplet size can be varied
by varying the magnitude and duration of the electrical signal applied to the
microdispenser. (Col. 6 11. 17-22). Pelc also disclosed the dispenser is
configured to allow for micro volume liquid dispensing to be deposited in
precise amounts into an array of wells. (Col 1211. 15-21) Pelc also discloses
thousands of droplets can be emitted per second from the microdispenser,
the desired micro volume of transfer liquid can rapidly be dispensed by use
of analog voltage pulses which are sent to the microdispenser emitting
droplets of liquid. (Col 9 11. 12-29). Thus, Pelc discloses a dosing system
2 Appellant has presented specific arguments directed only to independent
claim 1 and dependent claim 3. (App. Br. 21-24). Appellant has not
presented specific arguments addressing Deeg. We will limit our discussion
to Pelc and claims 1 and 3.
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Application 12/743,547
for preparing a titration series that is capable of operating at a speed
sufficient to meet the speed required to meet claim 1.
Claim 3
Appellant argues Pelc does not teach or suggest a firing frequency above
5000 Hertz because the device of Pelc is limited by a settling time for
pressure waves in the capillary from about 5 to about 10 milliseconds. (App.
Br. 23; citing Pelc, col. 3, 11. 40-47).
This is the same argument that was presented when discussing claim 30.
(See App. Br. 18) We do not find this argument persuasive for the reasons
set forth above.
ORDER
The Examiner's rejection of claims 36-38 under 35 U.S.C. § 112,
second paragraph; (indefiniteness) (Rejection (a)) is reversed.
The Examiner's rejection of claims 14, 30-33, 35, and 40 under 35
U.S.C. § 102(b) as anticipated by Pelc (Rejection (b)) is affirmed.
The Examiner's rejection of claims 1, 3--4, 8-9, 12, and 37-38 under
35 U.S.C. § 103(a) as unpatentable over Pelc (Rejection (c)) is affirmed.
The Examiner's rejection of claims 2, 19, 36, and 39 rejected under 35
U.S.C. § 103(a) as unpatentable over Pelc and Deeg (Rejection (d)) is
affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
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Application 12/743,547
AFFIRMED
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