Ex Parte Siwinski et al

Board of Patent Appeals and Interferences

Jun 16, 2004

09334375 (B.P.A.I. Jun. 16, 2004)

1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL J. SIWINSKI, SCOTT C. ROBINSON
ROBERT W. SPURR and TIMOTHY J. TREDWELL
___________
Appeal No. 2003-0256
Application No. 09/334,375
__________
ON BRIEF
__________
Before BARRETT, OWENS, and RUGGIERO, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-3, 6, 8-
21 and 26-54, which are all of the claims pending in the
application.
THE INVENTION
The appellants claim an ink jet printer, an ink container
for use in the printer, and a method of operating the printer.
Claim 1, directed toward the printer, is illustrative:
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1. A printer of the type which selectively deposits a color ink
onto a receiver to form an image on the receiver, the printer
being adapted to sense and update data uniquely associated with
an ink containing consumable loaded into the printer, comprising:
(a) a transceiver for transmitting a first electromagnetic
field and for sensing a second electromagnetic field, the first
electromagnetic field containing data for writing into a memory
associated with the ink containing consumable;
(b) a transponder coupled to said ink containing consumable,
said transponder adapted to receive the first electromagnetic
field and generate the second electromagnetic field in response
to the first electromagnetic field received thereby, the
transponder adapted to receive energy from the first
electromagnetic field that is generated by the transceiver and
the energy comprising the only energy for powering the
transponder and the transponder being adapted to read data from
the memory and write updated data to the memory in accordance
with an instruction code from the transceiver in the first
electromagnetic field; and
(c) the memory associated with the ink containing
consumable, the memory being coupled to said transponder, said
memory having data stored therein uniquely associated with the
ink containing consumable, whereby the second electromagnetic
field carries the data stored in said memory while the second
electromagnetic field is generated, the second electromagnetic
field being characteristic of the data stored in said memory.
THE REFERENCES
Mallory et al. (Mallory) 3,580,565 May 25, 1971
Cardullo et al. (Cardullo) 3,713,148 Jan. 23, 1973
Mochizuki et al. (Mochizuki) 5,266,975 Nov. 30, 1993
Purcell et al. (Purcell) 6,227,643 May 8, 2001
(filed Feb. 25, 1998)
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 1-3, 8-10, 13, 16, 19-21, 26-28, 31, 34, 37-48, 52 and 53
over Purcell in view of Cardullo, claims 6, 11, 12, 14, 15, 17,
18, 29, 30, 32, 33, 35, 36 and 49-51 over Purcell in view of
Appeal No. 2003-0256
Application No. 09/334,375
1 A rejection of claims 50 and 51 under 35 U.S.C. § 102(b)
over U.S. 5,347,274 to Hassett is withdrawn in the examiner’s
answer (page 7).
3
Cardullo and Mochizuki, and claim 54 over Purcell in view of
Mallory.1
OPINION
We reverse the aforementioned rejections. We need to
address only the independent claims, i.e., claims 1, 6, 8, 19,
26, 43, 50, and 54.
Claims 1, 19 and 43
Claims 1, 19 and 43 require an ink containing consumable
having a transponder coupled thereto (claim 1) or associated
therewith (claims 19 and 43).
Purcell discloses an ink jet printer having replaceable ink
cartridges, each of which has a memory element with ink
information stored therein (col. 2, lines 34-35). The memory
element can be 1) a multi-bit binary code formed by traces on a
flex circuit attached to the ink jet cartridge, or 2) an
integrated circuit which interfaces with printer electronics by a
two wire connection (col. 2, lines 42-44 and 49-52). The multi-
bit binary code flex circuit has contacts that mate with contacts
on a print carriage (col. 5, line 64 - col. 6, line 5). The two-
wire conductive connection between the integrated circuit and the
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printer electronics preferably is created automatically when the
cartridge is installed in a drop-and-click type cartridge
receptacle on the print carriage (col. 2, lines 54-58; col. 6,
lines 33-43).
Purcell’s ink jet printer has a roll of print media, the
holder of which comprises a memory element having information
stored therein (col. 2, lines 6-12). “Because the roll of media
is in motion during the printing process, the memory element on
the media roll holder advantageously comprises a writable RF
identification tag embedded in an insert attached to an end of
the roll holder. This eliminates any need to form electrical
connections between an integrated circuit memory element and the
printer electronics. An RF transceiver incorporated into the
printer reads the information coded in the identification tag and
writes information about media use to the RF identification tag”
(col. 2, lines 10-19).
Cardullo discloses a transponder system comprising a base
station having a transceiver that transmits an interrogation
signal to a transponder which provides an information-containing
answerback signal to the base station (col. 1, lines 13-25;
col. 3, lines 9-17). The transponder receives its operating
power from the interrogation signal (col. 3, line 64 - col. 4,
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line 3). The transponder is coupled to a changeable memory and,
in response to an interrogation signal code, data can be written
into or read from the memory (col. 3, lines 32-36). The
transponder can be miniaturized into, for example, the size of a
credit card (col. 4, lines 22-25), and can be placed on many
different objects (col. 2, lines 55-56). The exemplified use of
the transponder system is for paying tolls at automotive vehicle
toll booths (col. 3, lines 41-59).
The examiner argues that it would have been obvious to one
of ordinary skill in the art replace Purcell’s integrated circuit
memory element with Cardullo’s transponder and RF transceiver “to
provide a highly economical and reliable interrogation system
applicable under all environmental conditions which requires no
internal power source, is physically small in size and can be
placed on many different objects as taught by column 2, line 45 -
column 3, line 2 of Cardullo et al. and as suggested by column 9,
lines 41-50 of Purcell et al. regarding a similar transponder
placed on a print roll” (answer, pages 4-5). The accuracy and
reliability of the transponder system under all environmental
conditions indicated by Cardullo (col. 2, lines 64-67) clearly is
desirable in the exemplified use of the system for collecting
highway tolls. The examiner, however, has not provided evidence
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or reasoning which shows that accuracy and reliability under all
environmental conditions would have been of significance to one
of ordinary skill in the art when selecting an ink cartridge
memory element for use in an ink jet printer. Also, the
characteristic of Cardullo’s transponder of receiving its
operating power from the transceiver and, therefore, being
passive and entirely self contained (col. 3, line 64 - col. 4,
line 3), clearly is a desirable characteristic of a transponder
mounted on an automotive vehicle in Cardullo’s exemplified use of
the transponder system. The examiner, however, has not
established that Cardullo’s disclosure of this characteristic
would have led one of ordinary skill in the art to use Cardullo’s
transponder system to replace Purcell’s integrated circuit memory
on an ink cartridge used in an ink jet printer. Moreover,
Purcell teaches that it is because the media roll is moving
during the printing process that he uses the transponder system
(col. 2, lines 10-16), and Cardullo also discloses the use of a
transponder on moving objects (i.e., railroad cars, col. 1,
lines 27-30, and automotive vehicles, col. 7, lines 5-7). In
contrast, Purcell teaches that the preferred mounting for
providing a conductive connection between the integrated circuit
memory element and the printer electronics is a drop-and-click
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type cartridge receptacle on a print carriage (col. 2, lines 54-
58). The examiner has not provided evidence or reasoning which
shows that, in view of these disclosures by Purcell and Cardullo
of the transponder being placed only on moving objects, the broad
teachings by Cardullo relied upon by the examiner that the
transponder “is physically small in size such that the device is
truly portable, can easily be hidden, if desired, and can be
carried and placed in or upon many different objects” (col. 2,
lines 53-56), and “is highly economical with respect to its
production and maintenance costs, thereby enabling a wide
spectrum of the general public to readily utilize the same and
enabling the device’s introduction into a number of different
industries” (col. 2, lines 58-63), would have led one of ordinary
skill in the art to use Cardullo’s transponder system with
Purcell’s ink cartridges.
The examiner argues that column 9, lines 47-50 of Purcell
discloses that using a transponder tag on the paper roll to store
and read information is analogous to storing and reading
information on an ink-containing consumable (answer, page 8).
What that portion of Purcell discloses is that the use of
information stored on an RF ID tag to determine the amount of
print media used is analogous to the analysis of information
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stored in the ink cartridge memory element to determine the
amount of ink expelled from the cartridge. Contrary to the
examiner’s apparent argument, that disclosure by Purcell is not
an indication that the transponder/transceiver and the ink
cartridge memory element are interchangeable.
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the inventions claimed in the appellants’
claims 1, 19 and 43. Accordingly, we reverse the rejection of
these claims and dependent claims 2, 3, 20, 21, 37-42, 44-48, 52
and 53.
Claims 8 and 26
Claims 8 and 26 require a first transponder including a
first memory coupled to a first consumable used by the printer,
and a second transponder including a second memory coupled to a
second consumable used by the printer.
The examiner argues that “utilizing plural transponders is a
natural consequence of the obviousness of utilizing a transponder
memory element as taught by Cardullo et al. on either or both of
the ink cartridge 77 and print cartridge 74 of Purcell et al.
since Purcell et al. already provides one transponder on the
print roll” (answer, pages 9 and 10). As discussed above
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regarding the rejection of claims 1, 19 and 43, however, the
examiner has not established a prima facie case of obviousness of
using a transponder on an ink cartridge. The examiner,
therefore, has not set forth a prima facie case of obviousness of
using, in addition to Purcell’s transponder and memory on the
media roll holder, a second transponder and memory coupled to a
second consumable used by the printer as required by claims 8
and 26. Consequently, we reverse the rejection of these claims
and dependent claims 9, 10, 13, 16, 27, 28, 31 and 34.
Claims 6 and 50
Claim 6 requires a transponder coupled to a cleaning fluid
consumable, and claim 50 requires a transponder associated with a
container for waste material.
Mochizuki discloses an ink jet printer having a memory
circuit for storing data representing the quantity of waste ink
sucked by a suction pump from a recording head into a waste ink
tank (23) while the recording head is being cleaned by purging it
with ink (abstract; col. 2, lines 28-44).
The examiner argues that it would have been obvious to one
of ordinary skill in the art to use Mochizuki’s waste
ink/cleaning fluid consumable in Purcell’s ink jet printer to
clean the printhead nozzles to maintain print quality (answer,
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pages 5-6), and to use Cardullo’s transponder on this consumable
“since utilizing plural transponders is a natural consequence of
the obviousness of utilizing a transponder memory element as
taught by Cardullo et al. on either or both of the ink
cartridge 77 and print cartridge 74 of Purcell et al. since
Purcell et al. already provides one transponder on the print
roll” (answer, page 11). As discussed above regarding the
rejection of claims 1, 19 and 43, the examiner has not
established that it would have been prima facie obvious to one of
ordinary skill in the art to use Cardullo’s transponder on
Purcell’s ink cartridge. Hence, the examiner’s argument that it
similarly would have been prima facie obvious to one of ordinary
skill in the art to use Cardullo’s transponder on Mochizuki’s
waste ink container is not persuasive. We therefore reverse the
rejection of independent claims 6 and 50 and dependent claims 11,
12, 14, 15, 17, 18, 29, 30, 32, 33, 35, 36, 49 and 51.
Claim 54
Claim 54 requires a receiver sheet consumable comprised of
discrete receiver sheets loaded into the printer, and a
transponder coupled to a sheet-like member that is part of a
stack of the discrete receiver sheets.
Mallory discloses that reproduction or copy machines
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normally are provided with either a precut sheet supply or a roll
stock supply and a stock cutter for cutting sheets to size from
the roll stock (col. 1, lines 6-25).
The examiner argues (answer, pages 6-7):
It would have been obvious to a person of ordinary
skill in the art to use a series of discrete receiver
sheets with a transponder coupled to one of the sheets
as taught by Mallory in place of the print roll used by
Purcell et al.
The motivation for doing so would have been in
order to eliminate the need for a stock cutter and
lower the cost of the printer of Purcell et al. as
taught by column 1, lines 14-16 of Mallory.
Mallory, however, does not disclose a transponder coupled to a
sheet. Mallory merely discloses precut sheets (col. 1, line 8),
and Purcell’s disclosed transponder is embedded in an insert
attached to an end of a media roll holder (col. 2, lines 11-14;
col. 9, lines 11-12). Thus, the applied prior art does not
disclose a transponder coupled to a sheet, and the examiner has
not explained how the applied prior art itself would have fairly
suggested the use of a transponder coupled to a sheet to one of
ordinary skill in the art. The record, therefore, indicates that
the motivation relied upon by the examiner for using, in place of
Purcell’s media roll and transponder on the roll holder, a stack
of sheets with a transponder being coupled to a sheet, comes from
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the appellants’ specification rather than coming from the applied
prior art. Hence, the record indicates that the examiner used
impermissible hindsight in rejecting claim 54. See W.L. Gore &
Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303,
312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
Accordingly, we reverse the rejection of that claim.
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DECISION
The rejections under 35 U.S.C. § 103 of claims 1-3, 8-10,
13, 16, 19-21, 26-28, 31, 34, 37-48, 52 and 53 over Purcell in
view of Cardullo, claims 6, 11, 12, 14, 15, 17, 18, 29, 30, 32,
33, 35, 36 and 49-51 over Purcell in view of Cardullo and
Mochizuki, and claim 54 over Purcell in view of Mallory, are
reversed.
REVERSED
)
Lee E. Barrett )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Terry J. Owens )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Joseph F. Ruggiero )
Administrative Patent Judge )
TJO/eld
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