Ex Parte Rivas et al

Patent Trials and Appeals Board

Mar 18, 2019

14396161 - (D) (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/396,161 10/22/2014
22879 7590 03/20/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Rio Rivas
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.
84077119 2141
EXAMINER
VALENCIA, ALEJANDRO
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
03/20/2019 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 RIO RIV AS, CHRISTOPHER BAKKER,
EDWARD FRIESEN, and JAMES R. PRZYBYLA
Appeal2018-005078
Application 14/396, 161
Technology Center 2800
Before: ROMULO H. DELMENDO, MICHELLE N. ANKENBRAND,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, 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 1, 2, 9, 16 and 17, which constitute all the claims pending
in this application. 1 We have jurisdiction under 35 U.S.C. § 6(b).
1 In the Appeal Brief, Appellants appeal the final rejection of claims 1-11
and 13-19. App. Br. 4. On that same page, Appellants acknowledge that
the Examiner withdrew claims 3-8, 10, 11, 13-15, 18, and 19 from
consideration as directed to non-elected inventions. We also note that
Appellants indicate that claim 12 was cancelled. App. Br. 22 (Claims
Appendix). Therefore, we limit consideration of the appeal to claims 1, 2, 9,
16 and 17, the claims the Examiner's rejections address. Final Act. 3-5.
Appeal2018-005078
Application 14/396, 161
We AFFIRM.
The invention is directed to a printhead circuit and a fluid ejection
device comprising a printhead circuit. Claim 1 illustrates the invention:
1. A printhead circuit comprising:
a substrate including a slot having a first, a second, and a third
dimension in the substrate to supply fluid from a fluid supply to a number of
fluid ejection elements;
circuitry disposed on a first side surface and a second side surface of
the slot; and
a number of linear conductor traces disposed between the first side
surface and the second side surface across the slot and disposed along
substantially a same geometrical plane as the circuitry on the first side
surface and the second side surface of the slot, wherein the traces overlap the
slot in the third dimension and provide electrical connection from the first
side surface of the slot to the number of fluid ejection elements on the
second side surface of the slot.
Independent claim 9 is essentially directed to a fluid ejection device
comprising the printhead circuit of claim 1.
Appellants2 (see generally App. Br.) request review of the following
rejections from the Examiner's Final Office Action: 3
2 The real party in interest is identified as Hewlett-Packard Development
Company, L.P., a Texas limited partnership wholly-owned affiliate of HP
Inc. App. Br. 2. The general or managing partner of Hewlett-Packard
Development Company, L.P. is identified as HPQ Holdings, LLC. Id.
3 Although it appears the Examiner inadvertently cited to "35 U.S.C. [§]
102(a)(l)" (Final Act. 3), which is an AIA provision, we cite to the pre-AIA
versions of 35 U.S.C. because the effective filing date of May 31, 2012 for
the application from which this appeal is taken, based on a Domestic
Benefit/National Stage Information from Application PCT /US2012/040161,
is before the effective date of the AIA legislation of March 16, 2013.
Application Data Sheet dated October 22, 2014.
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Appeal2018-005078
Application 14/396, 161
I. Claims 1, 2 and 9 are rejected under pre-AIA 35 U.S.C.
§ I02(b) as anticipated by Chen (US 2012/0019597 Al, published January
26, 2012).
II. Claims 16 and 17 rejected under 35 U.S.C. § I03(a) as
unpatentable over Chen and Chang (US 6,382,773 Bl, issued May 7, 2002).
OPINION
Rejection I
Appellants rely on the same line of arguments in addressing
independent claims 1 and 9. See generally App. Br. Appellants do not
present separate arguments for dependent claim 2. Id. Accordingly, we
select claim 1 as representative of the subject matter claimed for Rejection I,
and claims 2 and 9 stand or fall with this claim.
After review of Appellants' and the Examiner's respective positions,
we affirm the Examiner's rejections of claims 1, 2, and 9 under 35 U.S.C.
§ 102(b) for the reasons the Examiner presents. We add the following for
emphasis.
Claim 1
Claim 1 is directed to a printhead circuit having a number of linear
conductor traces disposed between the first side surface and the second side
surface across the slot, and disposed along substantially a same geometrical
plane as the circuitry on the first side surface and the second side surface of
the slot.
The Examiner finds Chen teaches a printhead circuit that anticipates
the claimed invention. Final Act. 3--4 ( citing Chen Figure 1 ). The Examiner
particularly finds Chen describes a number of linear conductor traces 102
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Application 14/396, 161
disposed between a first side surface and a second side surface and across
slot 104, where the traces are disposed along substantially the same
geometrical plane as circuitry 102, 110, 116 on the first side surface and the
second side surface of the slot. Id. ( citing Chen Figure 1 ).
Appellants contend that Chen's Figs. 1, 3, 7, and 8 show that
conductor traces 102 are not disposed on an even substantially same
geometrical plane as, for example, Chen's ink ejection element[s] 116 (e.g.,
resistive heater element, piezoelectric material actuator). App. Br. 10 (citing
Chen ,r 19). According to Appellants, Chen's conductor traces 102
significantly and intentionally deviate from the horizontal plane of the ink
ejection elements 116 by passing through vias 118 provided through SU8
orifice layer 108. Id. ( citing Chen ,r 20). In other words, Appellants argue
that Chen's circuitry spans over multiple geometrical planes.
In order to anticipate, a reference must identify something falling
within the claimed subject matter with sufficient specificity to constitute a
description thereof within the purview of§ 102. In re Schaumann, 572 F .2d
312,317 (CCPA 1978). It is well established that specific examples of the
claimed subject matter are not necessary to establish anticipation. Rather, to
anticipate, one skilled in the art must be able to "at once envisage" the
claimed subject matter in the prior art disclosure. In re Petering, 301 F.2d
67 6, 681 (CCP A 1962). Further, in determining whether a reference
anticipates the subject matter recited in a claim, "it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom." In re Preda, 401 F.2d 825,826 (CCPA 1968).
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Application 14/396, 161
Appellants' arguments do not persuade us of error in the Examiner's
rejection for the reasons the Examiner provides. As the Examiner notes, and
we agree, the claim does not require the entirety of each trace to be located
in a single, even geometrical plan that is substantially the same as the
circuitry. Ans. 3. That is, the claim does not exclude a circuitry spanning
multiple geometrical planes, as Chen teaches. Further, the language of the
claim only requires that the linear conductive traces disposed between the
first and second side surfaces and across the slot be disposed along
substantially ff:. same geometrical plane as the circuitry on the first side
surface and the second side surface of the slot. Under the broadest
reasonable interpretation consistent with the Specification description, 4 we
agree with the Examiner's finding that Chen's traces 102 disposed across
slot 104 are disposed in a geometrical plane of Chen's circuitry as claimed.
Final Act. 3--4.
Appellants argue that the plain meaning of "disposed along
substantially a same geometrical plane" as recited in claim 1 is disposed
along substantially a same geometrical plane for the entire length of the
traces. Reply Br. 6. However, Appellants do not direct us to any portion of
the Specification or other evidence that supports adequately this argument.
On the contrary, Appellants disclose the use of the term "substantially" to
define "approximations that may vary depending upon the properties
sought." Spec. ,r 12. This definition would lead one skilled in the art to
4 In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
("[W]e look to the specification to see if it provides a definition for claim
terms, but otherwise apply a broad interpretation.").
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Application 14/396, 161
understand, contrary to Appellants' arguments, that Appellants' invention
contemplates a geometrical plane that is not even.
Accordingly, we affirm the Examiner's prior art rejection of claims 1,
2, and 9 under 35 U.S.C. § 102(b) for the reasons the Examiner provides and
those given above.
Rejection II
Appellants argue claims 16 and 17 together. App. Br. 14.
Accordingly, we select claim 16 as representative of the subject matter
claimed for Rejection II. Claim 17 stands or falls with claim 16.
Claim 16 requires that at least one of the linear conductor traces
extends across at least two slots.
The Examiner finds that Chen's Figures 1 and 2 suggest that the
conductor traces 102 would each span several slots because the traces do not
simply end after spanning the slots but get cut off by the diagrams. Final
Act. 5. Chen also acknowledges that "[a] typical printhead substrate has
multiple elongated ink slots, and the conductive traces are routed along the
ink slots to the ends of the substrate to make interconnections with a
controller." Chen ,r 2. The Examiner further finds that Chang discloses a
printhead arrangement with several parallel slots. Final Act. 5 ( citing Chang
Figure 1 (slots 107)). The Examiner determines that it would have been
obvious to one of ordinary skill in the art to apply the trace routing technique
Chen discloses to Chang's general head/nozzle arrangement because doing
so would amount to combining prior art elements according to known
techniques to yield predictable results. Id.
Appellants argue that Chen's paragraph 21 explicitly indicates that the
edges of the diagrams in each figure are, in fact, the "edges 200 of the
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Application 14/396, 161
printhead 100," and do not extend in perpetuity or any further than depicted
as the Final Action relies upon. App. Br. 15.
We have considered Appellants' argument, but find it unavailing.
First, Chen's paragraph 21 describes several embodiments, one of which is
the embodiment that Appellants are relying upon to address the Examiner's
assertions. It is well settled that a reference may be relied upon for all that it
discloses and not merely the preferred embodiments as Appellants suggest.
See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
("[ A ]11 disclosures of the prior art, including unpreferred embodiments, must
be considered." (quoting In re Lamberti, 545 F.2d 747,750 (CCPA 1976)));
In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a
prior art reference's disclosure is not limited to its examples). Appellants do
not explain adequately why the Chen embodiment they rely upon limits
Chen's broader disclosure.
Moreover, Chen, like Chang, acknowledges that printhead substrates
having multiple elongated ink slots are known that have traces "routed along
the ink slots to the ends of the substrate to make interconnections with a
controller." Chen ,r,r 2, 13. Given that Chen is directed to overcoming
disadvantages of the prior art, such as printhead size, by using conductor
traces that cross over the ink slot in an inkjet printhead substrate ( Chen ,r,r
12, 15), we agree with the Examiner's determination that it would have been
obvious to one of ordinary skill in the art to apply the trace routing technique
Chen discloses to a printhead comprising multiple ink slots. Final Act. 5.
Accordingly, we also affirm this rejection for the reasons the
Examiner presents and given above.
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Appeal2018-005078
Application 14/396, 161
DECISION
The Examiner's prior art rejections under 35 U.S.C. §§ 102(b) and
103(a) of claims 1, 2, 9, 16, and 17 are affirmed.
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 )(iv).
AFFIRMED
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