Ex Parte Samii

Board of Patent Appeals and Interferences

Jan 28, 2008

10634424 (B.P.A.I. Jan. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte MOHAMMAD M. SAMII
___________

Appeal 2007-2090
Application 10/634,424
Technology Center 2800
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Decided: January 28, 2008
___________

Before JOHN C. MARTIN, JOSEPH L. DIXON, and
LANCE LEONARD BARRY, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's Final Rejection of claims 1-14 and 23. We have jurisdiction
under 35 U.S.C. § 6(b). Claims 15-22, 24, and 25 have been canceled.

We REVERSE and enter a NEW GROUND OF REJECTION.
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BACKGROUND
Appellants’ invention relates to photosensor activation of an ejection
element of a fluid ejection device (Spec. 1). An understanding of the
invention can be derived from a reading of exemplary claim 1, which is
reproduced below.
1. A printhead assembly comprising:
a plurality of ejection elements, each of the ejection
elements configured to cause fluid to be ejected when the
ejection element is activated;
a plurality of latches; and
a plurality of junction photosensors, each junction
photosensor coupled to one of the ejection elements via one of
the latches, each junction photosensor configured to generate an
activation signal that causes the ejection element coupled to the
photosensor to be activated when the photosensor is illuminated
by a light source.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Maru US 5,877,784 Mar. 2, 1999
Fujii US 5,053,789 Oct. 1, 1991
Sueoka US 6,024,439 Feb. 15, 2000
Tamura US 4,794,463 Dec. 27, 1988
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Millman, Microelectronics, Second Edition, McGraw-Hill, Inc., 133-
135 (1987).
REJECTIONS
Claims 1-4, 10, 13-14, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Maru in view of Fujii.
Claims 5-8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maru in view of Fujii, as applied to claim 4, and further in
view of Millman.
Claims 11-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maru in view of Fujii, as applied to claim 1, and further in
view of Sueoka.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Maru in view of Fujii, as applied to claim 1, and further in view of
Tamura.
Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellant regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed Oct. 19, 2006) for the reasoning
in support of the rejections, and to Appellant’s Brief (filed Jun. 30, 2006)
and Reply Brief (filed Dec. 14, 2006) for the arguments thereagainst.
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OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellant’s Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellant and the
Examiner. As a consequence of our review, we make the determinations
that follow.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[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.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
Appellant argues that the Examiner's analysis ignores words used in
independent claims 1 and 23 (Reply Br. 2). Appellant points out that
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independent claim 1 recites "a plurality of latches; and a plurality of junction
photosensors, each junction photosensor coupled to one of the ejection
elements via one of the latches" and that independent claim 23 recites “a
junction photosensor coupled to the ejection element via a latch and a multi-
transistor amplifier” (id. at 3). Appellant contends that Maru and Fujii do
not individually or collectively teach or suggest these limitations (id.).
The Examiner held that the artisan would have been motivated to
replace Maru’s shift register 105 with Fujii’s array of photodiodes in order
“to avoid the many problems due to wiring connection such as
disconnection, short circuit, or attenuation (due to resistance of the wiring)”
(Answer 4). We find this stated motivation for combining the teachings of
Maru and Fujii in the manner described to lack sufficient specificity with
respect to combining the reference teachings in the manner proposed by the
Examiner. Finding no convincing line of reasoning for the combination of
elements in the specified orientation as recited in independent claim 1 and
independent claim 23, we cannot sustain the rejection of those claims or
dependent claims 2-4, 10, 13, and 14, which also stand rejected over Maru in
view of Fujii.
Additionally, we do not find that the teachings of Millman, Sueoka or
Tamura remedy the deficiency in the base combination as discussed above,
and we will not sustain the rejections of dependent claims 5-9, 11, and 12.

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NEW GROUND OF REJECTION OF CLAIMS 1 AND 23
We reject claims 1 and 23 under 35 U.S.C. § 103(a) as being obvious
over Maru and Fujii based on a specific motivation not argued by the
Examiner. While we could affirm the Examiner’s rejection based upon the
same references on a different motivation, we are characterizing the
rejection as a new ground of rejection to allow Appellant to respond to the
modified rationale for the combination and the additional factual findings
presented below.
Maru’s Figure 11, upon which the Examiner relies, depicts what Maru
characterizes as a conventional ink-jet printhead (IJH in Fig. 1), which
employs a plurality of electrothermal transducers (heaters) 101 as the ink
ejection elements (col. 1, ll. 12-14 and 28-29). Shift register 105 stores
serially inputted data indicating whether or not to activate the respective
transducers (col. 1, ll. 26-29). In response to a latch timing signal (LATCH)
applied to terminal 203, the data is transferred in parallel from the shift
register stages to respective latches 104 (col. 2, ll. 2-4). A time-divisional
logic circuit 103 is responsive to a heater-enable signal (H.ENB) applied to
terminal 204 and to a selection signal (SEL) applied to terminal 205 to
activate selected groups of transducers in succession (col. 1, ll. 21-24, 36-38,
and 46-52).
In the Figure 11 printhead, the number of shift register stages (N) is
equal to the number of latches, which is equal to the number of transducers.
This configuration is undesirable because “the shift register and the latches
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occupy large space on the circuit board, thus preventing downsizing of the
circuit board and reduction of production costs” (col. 2, ll. 25-29).
The first embodiment of Maru’s invention, depicted in Figure 3,
replaces the N-stage shift register of the Figure 11 embodiment with a
logical circuit 109 and a shift register having N/2 stages (col. 6, ll. 16-19).
The second embodiment, depicted in Figure 8, employs fewer latches (112a-
112d) than transducers (col. 9, ll. 56-59).
Maru also explains that the printhead can take the form of “a full line
type printhead having a length corresponding to the width of a maximum
printing medium which can be printed by the printer” (col. 10, ll. 49-51).
Comparing claim 1 to Maru’s Figure 11 (prior-art) printhead, the
recited “plurality of ejection elements” read on transducers 101 and the
recited “plurality of latches” read on latches 104, as found by the Examiner
(Answer 3). As explained by the Examiner, Maru’s Figure 11 does not
include the recited “plurality of junction photosensors.”
Fujii discloses a printer using an optically-switched thermal printhead
3 that includes a row 3b of heating elements H coupled to a row 3a of
respective photodiodes through respective switching transistors Tr. As
shown in Figure 1, the row of heating elements extends the entire width of
the page and rotating mirror 2 causes the modulated laser beam to scan the
row of photodiodes in succession. When a photodiode D is irradiated by the
laser beam, the associated transistor Tr is rendered conductive, energizing
the associated heater H (col. 2, ll. 54-57).
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Fujii characterizes the printer as “based on the principle of using
photoelectric switch means serving as the switch means for each heating
element, and producing printing signals in the form of light” (col. 1, ll. 40-
43).
The Examiner held that it would have been obvious in view of Fujii to
replace shift register 105 and its input terminals 201 and 202 in Maru’s
Figure 11 printer with a row of photodiodes that are sequentially scanned by
a modulated laser beam. As motivation, the Examiner found that the artisan
would have been desired “to avoid many problems due to the wiring
connection such as disconnection, short circuit, or attenuation (due to
resistance of the wiring)” (Answer 4), a motivation that we found to lack the
required specificity. However, the Examiner’s finding that the artisan would
have considered the wiring connections for shift register 105 and latches 104
in Maru’s Figure 11 (i.e., prior-art) printhead to be problematic finds clear
support in Maru’s explanation that “the shift register and the latches occupy
large space on the circuit board, thus preventing downsizing of the circuit
board and reduction of production costs” (col. 2, ll. 25-29).1
1 Although Maru’s proposed solutions do not involve replacing the shift
register with an optically scanned photodiode array, Maru does not “teach
away” from such a modification. See Para-Ordnance Mfg. v. SGS Importers
Int'l, 73 F.3d 1085, 1090 (Fed. Cir. 1995) (the Browning Hi-Power handgun
does not teach away from the claimed invention; while it fails to disclose a
converging frame, it does not warn a person against using convergence); In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) ("A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
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The suitability of Fujii’s optical switching as a solution to this
problem with Maru’s Figure 11 printhead would have been readily apparent
when, as suggested by Maru (col. 10, ll. 49-51), the printhead is
implemented as a full-line (i.e., page width) type printhead, as is the case
with Fujii’s printhead. That is, it would have been obvious to replace shift
register 105 in the Figure 11 printhead thus implemented with a row of
photodiodes and means for scanning the photodiodes with a modulated laser
beam.2 The latches 104 and time-divisional logical circuit 103 would be
retained in order to preserve their function of activating selected groups of
transducers in succession (col. 1, ll. 21-24, 36-38, and 46-52). In Maru’s
Figure 11 printhead modified in this manner, each photodiode would be
coupled to a respective ejection element via a respective latch, thereby
satisfying independent claims 1 and 23.
Thus, although Appellant is correct to point out (Reply Br. 3) that
neither one of Maru and Fujii teaches “each junction photosensor coupled to
one of the ejection elements via one of the latches” (claim 1), the artisan
faced with the above-noted problem with Maru’s Figure 11 printhead and
having knowledge of Fujii would have seen such a teaching in Maru and

would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.").
2 Appellant is therefore incorrect to characterize the proposed modification
as resulting in replacing Maru’s shift register 105 with “a photodiode”
(Reply Br. 6).
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Fujii considered collectively.3 A reference may be understood by the artisan
to be suggesting a solution to a problem not discussed in that reference. As
explained in KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. at 1742 (2007):
The second error of the Court of Appeals lay in its
assumption that a person of ordinary skill attempting to solve a
problem will be led only to those elements of prior art designed
to solve the same problem. . . . Common sense teaches . . . that
familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be
able to fit the teachings of multiple patents together like pieces
of a puzzle. . . . A person of ordinary skill is also a person of
ordinary creativity, not an automaton.
Appellant also argues that replacing Maru’s shift register with
photodiodes scanned by a modulated laser beam
would drastically change the manner in which the print head
disclosed in Maru operates (e.g., it would apparently no longer
receive a clocked data signal on terminals 201 and 202, no
longer perform a bit shifting operation, possibly no longer time
divisionally control power-supply to the transducers 101), and
require a major reconstruction of the print head itself, as well as
the entire printer IJRA (Figure 1).
3 As additional support for replacing wired communication with optical
communication, the Examiner cites the following U.S. patents: Klaus
5,396,078; Chiu 5,567,063; and Kless 6,357,859 (Answer 8-9). Because
these patents (a) are not relied on in the statement of any ground of rejection
and (b) are not added merely as evidence of a prior statement made by the
Examiner as to what is "well-known" in the art that was challenged for the
first time in the Brief, we have given them no consideration. MPEP
§ 1207.03 (8th ed., rev 6, Sept. 2007).
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Reply Br. 6. In support of this proposition, Appellant cites MPEP § 2143.01
and In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (reversing a § 103 rejection
because “[t]his suggested combination of references would require a
substantial reconstruction and redesign of the elements shown in [the
primary reference] as well as a change in the basic principles under which
the [the primary reference] construction was designed to operate”). This
argument is unpersuasive for several reasons. In the first place, the
suggestion that Maru as modified might “possibly no longer time
divisionally control power-supply to the transducers 101” is not understood.
Appellant has not explained why the artisan would have thought it
inadvisable to retain Maru’s time-divisional logical circuit 103 when
replacing shift register 105 with a row of photodiodes. Second, as for
apparently no longer receiving a clocked data signal on terminals 201 and
202 and no longer perform a bit shifting operation, the clocked data signal
would be applied to the laser beam modulator, while bit shifting would
effectively be performed by the scanning action of the laser beam. Apart
from these changes, Maru’s latches 104, time-divisional logical circuit 103,
power transistors 102, and transducers 101 would operate in the same
manner as before. As a result, the proposed modifications of Maru would
not change the basic principles of operation of Maru’s printhead to a degree
suggesting nonobviousness under Ratti.
For the foregoing reasons, we reject independent claims 1 and 23
under § 103(a) for obviousness over Maru in view of Fujii and in fairness to
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Appellant we designate the modified application of the prior art references
as a new ground of rejection.
We have not applied the prior art to the dependent claims, and we
leave it to the Examiner to evaluate the other prior art teachings in light of
our prior art rejection of independent claim 1 and 23.

CONCLUSION
To summarize, we have not sustained the rejection of claims 1-14 and
23 under 35 U.S.C. § 103(a) and have entered a new ground of rejection of
independent claims 1 and 23 under 35 U.S.C. § 103(a) under our authority in
37 C.F.R. § 41.50(b) (2007).
As indicated supra, this decision contains a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b), which provides that “A new ground of
rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also 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. . . .
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(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)(1)(iv).

REVERSED-37 C.F.R. § 41.50(b).

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