Ex Parte Riou et al

Board of Patent Appeals and Interferences

Sep 14, 2009

10698511 (B.P.A.I. Sep. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHEL A. RIOU, DAVID B. LARSON,
MARTIN G. ROCKWELL, and DAVID R. CHRISTMANN
____________

Appeal 2009-003276
Application 10/698,511
Technology Center 2800
____________

Decided: September 14, 2009
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
PETER F. KRATZ, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision refusing to allow claims 1 through 14, 17 through 22, and 27
through 43, the only claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
Appeal 2009-003276
Application 10/698,511

We REVERSE.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a printing system having an
ink drying device and a method of using the same (see, e.g., claims 1, 27,
and 30). Details of the appealed subject matter are recited in independent
claims 1, 27, and 30 reproduced from the Claims Appendix to the Appeal
Brief (“App. Br.”), filed February 20, 2008:
1. A printing system comprising:

an ink dispenser configured to deposit ink upon a print medium; and

a condenser configured to condense vapor into a condensate;

a receptacle configured to collect the condensate, wherein the
receptacle is perforated to permit a portion of the condensate to evaporate,
wherein the receptacle is removably coupled to a remainder of the system
and wherein the receptacle includes:

an inlet through which the condensate flows into the receptacle; and

a closing portion movable between an inlet open position and an inlet
closing position.

27. A printing system comprising:

means for depositing ink upon a print medium;

means for condensing vapor to form a condensate; and

means for storing the condensate, wherein the means for storing

includes an inlet and means for automatically occluding the inlet when
disconnected from a remainder of the printing system.

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30. A method of printing ink upon a medium, the method
comprising:

depositing ink upon the medium;

heating the deposited ink to create a vapor;

condensing the vapor into a condensate;

collecting the condensate in a first receptacle; and

absorbing at least a portion of the condensate into a first absorption
member within the first receptacle.

The Specification describes the claimed “receptacle” as a temporary
storage container configured to receive condensate from the condensate
collection part of a condensing chamber (Spec. 6 and 7). Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (The Specification
“acts as a dictionary when it expressly defines terms used in the claims or
when it defines terms by implication.”). The Specification also describes the
claimed “means for storing condensate” as corresponding to the
interchangeable storage subsystems comprising, inter alia, receptacles
having perforations, fluid couplers, and absorption members described at
pages 6 through 8 of the Specification. In re Donaldson Co., 16 F.3d 1189,
1193-94 (Fed. Cir. 1994) (en banc) (When a claim employs a means-plus-
function language to define an element, 35 U.S.C. § 112, ¶ 6, requires the
Examiner to "look to the specification and interpret that language in light of
the corresponding structure, material, or acts described therein, and
equivalents thereof, to the extent that the specification provides such
disclosure.")
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Application 10/698,511

The Examiner relies on the following evidence to establish
unpatentability of the claims on appeal (Examiner’s Answers (“Ans.”),
mailed June 17, 2008, 2-3):
Shin US 6,085,055 Jul. 4, 2000
Anderson US 6,176,563 B1 Jan. 23, 2001
Hirabayashi US 6,203,138 B1 Mar. 20, 2001
Azar US 6,269,002 B1 Jul. 31, 2001
Nakazawa US 6,281,911 B1 Aug. 28, 2001
Igval US 6,357,854 B1 Mar. 19, 2002
Brinkly US 6,397,488 B1 Jun. 4, 2002
Sakai US 6,512,900 B2 Jan. 28, 2003

Appellants request review of the following Examiner’s rejections
(App. Br. 4-5 and Ans. 2):
1. Claims 1, 6, 10, 12, 13, 18 through 20, 22, 27 through 30, 33
through 36, 39, and 43 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Brinkly and Nakazawa;
2. Claims 2 through 4, 7 through 9, 21, 31, and 32 under 35
U.S.C. § 103(a) as unpatentable over the combined disclosures of Brinkly,
Nakazawa, and Anderson;
3. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Brinkly, Nakazawa, Anderson, and Shin;
4. Claims 11 and 38 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Brinkly, Nakazawa, and Sakai;
5. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Brinkly, Nakazawa, and Hirabayashi;
6. Claims 17 and 37 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Brinkly, Nakazawa, and Igval; and
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7. Claims 40 through 42 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Brinkly, Nakazawa, Anderson, and Azar.
In rejecting the claims on appeal under 35 U.S.C. § 103, the Examiner
relies on Brinkly to show a printing system and a method of using the
printing system, wherein the printing system includes a print engine 22
corresponding to the claimed ink dispenser for depositing ink upon print
medium, an accumulator 102 corresponding to a condenser for condensing
vapor into a condensate, a vessel 116 corresponding to a receptacle (Ans. 3-
6). The Examiner admits that Brinkly does not teach, inter alia, that its
receptacle has perforations, an adsorption member, and particular opening
and closing means for removably coupling the receptacle to a remainder of
the system as recited in claims 1, 27, and 30 (Ans. 4, 6, and 7).
To remedy the above deficiencies, the Examiner relies on Nakazawa
to show the above missing features (id.). According to the Examiner (Ans.
4, 6, and 7):
Nakazawa et al. disclose a receptacle (ink cartridge 2) that is
perforated to permit a portion of waste ink to evaporate (col. 10,
lines 33-48), wherein the receptacle is removably coupled to a
remainder of the system (col. 12, lines 6-10), and that the
receptacle includes a closing poertion (take-in port rubber 522)
that is movable between an inlet open position and an inlet
closing position (col. 5, lines 53-58 and Fig. 5).
…
Nakazawa et al. disclose means for storing (ink cartridge 2)
that includes an inlet (insertion hole 48a) and means (take-in
port rubber 522) for automatically occluding the inlet when
disconnected from a remainder of the printing system (col. 12,
lines 1-28 and Fig. 5).
…
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Nakazawa et al. disclose the step of absorbing at least a
portion of waste liquid into a first absorption member (col. 6,
lines 19-23) within a first receptacle.

The Examiner then goes on to conclude (e.g., Ans. 4, 6, and 7) (emphasis
added) that:
Therefore, at the time of [the] invention, it would have been
obvious to a person of ordinary skill in the art to utilize the
cartridge disclosed by Nakazawa et al. into Brinkly’s invention
so as to perform the step of absorbing the condensate. One
motivation for doing so, as taught by Nakazawa et al., is to
provide an ink cartridge with a waste ink absorbing function
that can be recycled simply and easily.

The Examiner also relies on Anderson, Shin, Sakai, Hirabayashi,
Igval, and Azar only for features in certain dependent claims (Ans. 8-16).
Appellants traverse the Examiner’s § 103 rejections. Appellants
contend that the combination of Brinkly and Nakazawa as suggested by the
Examiner would not have led one of ordinary skill in the art to the system
and method recited in claims 1, 27, and 30 (e.g., App. Br. 7-11 and Reply
Brief (“Reply Br.”), filed August 18, 2008, 1-3).
ISSUE AND CONCLUSION
Have Appellants identified reversible error in the Examiner’s
determination that the collective teachings of Brinkly and Nakazawa would
have led one of ordinary skill in the art to the subject matter recited in claims
1, 27, and 30 within the meaning of 35 U.S.C. § 103(a)?
On this record, we answer this question in the affirmative.

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FINDINGS OF FACT (“FF”)
1. The Examiner finds, and Appellants do not dispute, that Brinkly
teaches a printing system and a method of using the printing system, wherein
the printing system includes a print engine 22 corresponding to the claimed
ink dispenser for depositing ink upon print medium, an accumulator 102
corresponding to a condenser for condensing vapor into a condensate, a
vessel 116 corresponding to a receptacle. (Compare Ans. 3-6 with App. Br.
7-11 and Reply Br. 1-3).
2. The Examiner acknowledges that Brinkly does not teach
employing, inter alia, the removable condensate storing receptacle having
perforations recited in claim 1, the means for storing condensate recited in
claim 27, and the step of “absorbing at least a portion of the condensate into
a first absorption member within the first receptacle” recited in claim 30
(Ans. 4, 6, and 7).
3. Nakazawa teaches “an ink cartridge for use as an ink supply
source in an ink recording apparatus such as an ink jet printer or the like
and, in particular, an ink cartridge having a waste ink absorbing function”
(col. 1, ll. 6-9) (emphasis added).
4. Nakazawa teaches that the “waste ink absorbing function” was
conventionally carried out by an ink absorbing member which used to
absorb “the ink that leaks out from the ink guide needle (ink supply needle)
which is inserted into the ink cartridge.” (col. 1, ll. 28-31)
5. Nakazawa teaches the drawbacks of the conventional waste ink
absorbing member design in the ink cartridge and recommends a novel ink
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cartridge with a waste ink absorbing function comprising a cartridge case for
storing both an ink bag containing ink and a division room partly made of a
plastic film containing a waste ink absorbing member for absorbing waste
ink (col. 2, ll. 1-63).
6. Nakazawa teaches that “simply by cutting or peeling off the
plastic film, the waste ink absorbing member disposed within the division
room can be replaced” (col. 2, ll. 65-67 and col. 6, ll. 19-23).
7. Nakazawa teaches that its ink cartridge is removably mounted
to a cartridge mounting portion having an ink supply needle and a waste
liquid needle (col. 5, ll. 45-57)
8. Nakazawa teaches that the division room containing the waste
ink absorbing member has a ventilation hole to exhaust air therefrom to
avoid lowering of the waste ink absorbing performance and a closing means
(a take-in port rubber 522) for closing an inlet (48a) left open by removing
the waste liquid needle connected to the division room (col. 10, ll. 33-49,
col. 12, ll. 1-28, and Fig. 5).
9. The Examiner relies on Anderson, Shin, Sakai, Hirabayashi,
Igval, and Azar only for features in certain dependent claims (Ans. 8-16).
PRINCIPLES OF LAW
Under 35 U.S.C. § 103(a), “a patent composed of several elements is
not proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 418-19 (2007). The Examiner needs to identify a reason that
would have prompted one of ordinary skill in the art to combine the
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elements to arrive at the claimed subject matter. Id. "‘[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’" KSR at 417-
18, quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner has the initial burden of establishing a prima facie case
obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”).

ANALYSIS
As correctly pointed out by Appellants at page 9 of the Appeal Brief,
the combination of Brinkly and Nakazawa suggested by the Examiner would
not have resulted in the system and method recited in claims 1, 27, and 30.
On this record, the Examiner has not supplied any reason or motivation that
would have prompted one of ordinary skill in the art to employ Nakazawa’s
ink cartridge features, including a division room having a perforation and a
waste ink absorbing member for absorbing the ink leaked from an ink supply
needle, to modify or improve Brinkly’s vessel for receiving vapor
condensate from a vapor condensing accumulator within the meaning of 35
U.S.C. § 103(a). To obtain the advantage taught by Nakazawa and relied
upon by the Examiner, one of ordinary skill in the art would have been led to
modify or improve Brinkly’s ink dispenser system (ink supply source), not
Brinkly’s ink drying system comprising a vessel for receiving vapor
condensate from a vapor condensing accumulator. As indicated supra,
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Nakazawa teaches employing, in its ink cartridge (an ink supply system), a
particularly designed division room having a perforation and a waste ink
absorbing member for absorbing the ink leaked from an ink supply needle in
order to render the waste ink absorbing member easily and economically
replaceable. Nakazawa does not teach that its ink cartridge features are
useful for Brinkly’s ink drying system comprising a vessel for receiving
vapor condensate from a vapor condensing accumulator. The Examiner
relies on Anderson, Shin, Sakai, Hirabayashi, Igval, and Azar for certain
dependent claim features, rather than to remedy the above deficiencies of
Brinkly and Nakazawa.
Accordingly, we concur with Appellants that the Examiner has not
established a prima facie case of obviousness regarding the claims on appeal
within the meaning of 35 U.S.C. § 103(a).

CONCLUSION
Appellants have identified reversible error in the Examiner’s
obviousness determination. The decision of the Examiner rejecting the
claims on appeal is reversed.
REVERSED

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