Ex Parte Silverbrook

Patent Trial and Appeal Board

Oct 31, 2012

10729157 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte KIA SILVERBROOK
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Appeal 2010-007992
Application 10/729,157
Technology Center 2600
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Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007992
Application 10/729,157

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1, 3-6, and 8-10 (App. Br. 5). Claims 2 and 7 were cancelled (id.).
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
The Invention
Exemplary Claim 1 follows:
1. A printhead assembly for a camera system having
a chassis and a platen assembly that is mountable on the
chassis, the platen assembly defining a printing path along
which a print medium is passed, the printhead assembly
comprising:

an elongate ink reservoir assembly defining at least three
ink reservoirs for storing ink, each of the at least three ink
reservoirs spanning a width of the printing path;

a guide assembly positioned in the ink reservoir
assembly, the guide assembly defining at least three discrete ink
paths facilitating fluidic communication between each of the at
least three ink reservoirs and an outlet of the elongate ink
reservoir assembly; and

at least one printhead integrated circuit positioned at the
outlet of the elongate ink reservoir assembly, the at least one
printhead integrated circuit substantially spanning a width of
the printing path.

Claims 1, 3, 4, and 8-10 stand rejected under 35 U.S.C. 103(a) as
being unpatentable over Suzuki (U.S. Patent No. 5,847,836) in view of Yuen
(U.S. 6,347,863 B1) (Ans. 4-9).
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Application 10/729,157

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Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Suzuki in view of Yuen and the Examiner’s Official
Notice as supported by Baldwin (U.S. 5,600,358) (Ans. 9-11).

ISSUES
Appellant’s responses to the Examiner’s positions present the
following issues:
1. Did the Examiner err in finding that the combination of Suzuki
and Yuen teaches a printhead assembly “wherein each of the at least three
ink reservoirs spanning a width of the printing path,” as recited in claim 1?
2. Did the Examiner err in finding that the combination of Suzuki
and Official Notice as supported by Baldwin teaches that “one of the end
walls defines a number of air inlet openings that are treated to be
hydrophobic,” as recited in claim 6?
3. Did the Examiner err in finding that the combination of Suzuki
and Yuen teaches “the first and second guide walls extending towards each
other from the first and second inner walls respectively and terminating at
the elongate opening,” as recited in claim 9.

ANALYSIS
35 U.S.C. § 103 Rejection of Claims 1, 3-5, 8, and 10
Appellant contends that the Examiner erred in rejecting claim 1 as
obvious because the combination of Suzuki and Yuen does not teach the
claim limitation emphasized above (App. Br. 9). Appellant argue that “the
feature of the ink reservoir assembly defining at least three discrete ink
reservoirs, which at least three ink reservoirs each span a width of the
Appeal 2010-007992
Application 10/729,157

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printing path is not taught or suggested by Suzuki” (id. at 10). Appellant
further argues that “[i]n Yuen, since the ink container (50) does not span a
width of the printing path, it follows that even though the ink reservoirs
(16, 18, and 20) span a width of the ink container (50), the ink reservoirs
(16, 18, and 20) still would not span a width of the printing path” (id. at 11).
The Examiner found, however, that “Suzuki already teaches a printer
cartridge that spans the width of the printing path . . . [and] Yuen shows a
printer cartridge with exactly three ink reservoirs that occupy the whole
width of the printer cartridge” (Ans. 13). The Examiner then reasoned that
“one with ordinary skill in the art would have combined the teaching of
Yuen with Suzuki to form a printer cartridge/assembly that spans the width
of the printing path and contain at least three reservoirs” (id.).
We agree with the Examiner. Suzuki discloses a “printhead having a
length corresponding to the width of a maximum printing medium” (col. 16,
ll. 17-18). Yuen illustrates an ink cartridge having three ink reservoirs (16,
18, and 20) that span across the cartridge (FIGs. 1-3). Accordingly, the
claim requirement of three reservoirs spanning the width of a printing path is
a combination of the familiar elements from Suzuki and Yuen that yields
predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Thus, we find no error in the Examiner’s obviousness rejection of
independent claim 1 or claims 2-5, 8, and 10 because Appellant did not set
forth any separate patentability arguments for those claims
(see App. Br. 12).
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Application 10/729,157

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35 U.S.C. § 103 Rejection of Claim 6
Appellant argues that the Examiner erred in rejecting claim 6 as obvious
because “the hydrophobic membrane described in Baldwin el al. cannot
reasonably be construed as an ‘agent’ acting upon the opening to improve or
alter a characteristic of the opening” (id. at 16). We agree with Appellant.
The Examiner did not provide any response to Appellant’s arguments with
respect to claim 6 at all, let alone explain how Baldwin’s membrane could
be construed as altering the characteristic of an opening (see Ans. 11-14).
Accordingly, we find that the Examiner erred in rejecting claim 6 as
obvious.

35 U.S.C. § 103 Rejection of Claim 9
Appellant argues that the Examiner erred in rejecting claim 9 as
obvious because “the right most-like structure (58) [of Yuen] originates
from the elongate opening, rather than terminates at the elongate opening”
(id. at 14 (emphasis omitted)). We agree with Appellant. The Examiner did
not provide any response to Appellant’s arguments with respect to claim 9 at
all, let alone explain how the structure (59) of Yuen could be construed as
originated from an elongated opening (see Ans. 11-14). Accordingly, we
find that the Examiner erred in rejecting claim 9 as obvious.

DECISION
We affirm the Examiner’s decision rejecting claims 1, 3-5, 8 and 10 as
unpatentable under 35 U.S.C. § 103(a) and reverse the Examiner’s decision
rejecting claims 6 and 9 as unpatentable under 35 U.S.C. § 103(a).
Appeal 2010-007992
Application 10/729,157

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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).

AFFIRMED-IN-PART

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