Ex Parte Spitz et al

Board of Patent Appeals and Interferences

Aug 20, 2003

09089698 (B.P.A.I. Aug. 20, 2003)

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publication and is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DONALD NORMAN SPITZ, CARL EDMOND SULLIVAN,
DAVID AMOS WARD, BENJAMIN ALAN ASKREN,
MICHAEL DAVID LATTUCA, ASHOK MURTHY,
RONALD MONROE NOWELL, JR.
and DARRIN WAYNE OLIVER

____________
Appeal No. 2002-0503
Application No. 09/089,698
____________
ON BRIEF
____________
Before WALTZ, KRATZ and DELMENDO, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to
allow claims 1-22 and 25-31. The rejection of the remaining
pending claims 32-39 has been withdrawn by the examiner.
BACKGROUND
Appellants' invention relates to an ink jet print cartridge
including a substrate holder having a specified construction
including sidewall fins. Exemplary claim 1 is reproduced below.
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Application No. 09/089,698
Page 2
1. An ink jet print cartridge structure comprising a
substrate holder for mounting thereon one or more
semiconductor substrates, the substrate holder having a top
surface having a perimeter and containing one or more
substrate locator wells, each well having a plurality of
well walls and a well base, each well base including at
least one ink feed slot therein, the holder including one or
more chambers on an opposing side of the substrate holder
from the locator well, each chamber being in flow
communication with a corresponding substrate locator well,
the holder also containing side walls attached to the top
surface along the perimeter thereof, wherein one or more of
the side walls contain fins for convectively removing heat
from the substrate holder.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Watanabe et al. (Watanabe) 4,689,659 Aug. 25, 1987
Ta et al. (Ta) 4,755,836 Jul. 05, 1988
Fukuda et al. (Fukuda) 5,066,964 Nov. 19, 1991
Drake et al. (Drake) 5,079,189 Jan. 07, 1992
Wong 5,084,713 Jan. 28, 1992
Wenzel et al. (Wenzel) 5,426,458 Jun. 20, 1995
Oda et al. (Oda) 5,552,816 Sep. 03, 1996
Cook 5,834,689 Nov. 10, 1998
(filed Dec. 02, 1993)
Claims 1, 4, 5 and 10-12 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Oda in view of Watanabe. Claims
2 and 3 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Oda in view of Watanabe and Fukuda. Claims 6
Appeal No. 2002-0503
Application No. 09/089,698
Page 3
and 7 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Oda in view of Watanabe and Wenzel. Claim 8 stands rejected
under 35 U.S.C. § 103 as being unpatentable over Oda in view of
Watanabe and Drake. Claim 9 stands rejected under 35 U.S.C.
§ 103 as being unpatentable over Oda in view of Watanabe and
Cook. Claim 13 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Oda in view of Watanabe and Ta. Claims 14, 17
and 18 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Oda in view of Watanabe and Ta. Claims 15 and 16 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Oda in
view of Watanabe, Ta and Fukuda. Claims 19 and 20 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Oda in view of
Watanabe, Ta and Wenzel. Claim 21 stands rejected under
35 U.S.C. § 103 as being unpatentable over Oda in view of
Watanabe, Ta and Drake. Claim 22 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Oda in view of Watanabe, Ta
and Cook. Claims 25-28 and 31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Oda in view of Watanabe, Ta,
Fukuda and Wong. Claims 29 and 30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Oda in view of Watanabe, Ta,
Fukuda, Wong and Wenzel.
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Application No. 09/089,698
Page 4
We refer to the briefs and to the answer for a complete
exposition of the opposing viewpoints expressed by appellants and
the examiner concerning the issues before us on this appeal.
OPINION
We have carefully reviewed the entire record, including all
of the arguments and evidence advanced by both the examiner and
the appellants in support of their respective positions. This
review leads us to conclude that the examiner’s rejections are
not well founded. Accordingly, we reverse all of the
aforementioned rejections. The reasons for our determination
follow.
In the rejections stated in the answer, the examiner has
acknowledged that Oda does not disclose an ink jet print
cartridge having a substrate holder that includes one or more
side walls with fins as required by all of the claims on appeal.
To remedy that acknowledged difference between the claimed
invention and Oda (answer, pages 3-14), the examiner has relied
upon Watanabe. According to the examiner (answer, page 5):
Watanabe teaches a temperature controller for a
semi-conductor device. As can be seen in Fig. 1, the
heat sink is provided with integrally formed fins (6A,
6B) for the purpose of increasing the surface area of
the heat sink, thereby increasing the rate at which
heat is dissipated. It would have been obvious to one
of ordinary skill in the art at the time the invention
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Application No. 09/089,698
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was made to have provided in Oda et al. a heat sink
having integrally formed fins for the purpose of
increasing the surface area of the heat sink, thereby
increasing the rate at which heat is dissipated as
taught to be old by Watanabe.
The examiner acknowledges that Oda is not relied upon to
provide motivation for the examiner’s proposed modification of
Oda. Rather, the examiner relies on Watanabe for the suggestion
for the proposed modification of Oda. See the paragraph bridging
pages 15 and 16 of the answer. According to the examiner, the
device of Watanabe is analogous to the device of Oda and one of
ordinary skill in the art would have been led to employ a heat
sink with fins in Oda to improve efficiency in dissipating heat
generated by a semiconductor chip. See page 17 of the answer.
We cannot agree with the examiner’s obviousness conclusion
on the record before us.
Under 35 U.S.C. § 103(a), the examiner carries the initial
burden of establishing a prima facie case of obviousness.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984). As part of meeting this initial burden, the
examiner must determine whether the differences between the
subject matter of the claims and the prior art “are such that the
subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art”
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Application No. 09/089,698
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(emphasis added). 35 U.S.C. § 103(a)(1999); Graham v. John Deere
Co., 383 U.S. 1, 14, 148 USPQ 459, 465 (1966).
Here, as pointed out by the appellants in their briefs, the
examiner has not established any convincing reason, suggestion or
motivation for combining the references so as to arrive at the
claimed subject matter. In particular, the examiner has not
fairly explained why one of ordinary skill in the art would turn
to the disparate structure of Watanabe, and teachings related
thereto, for a suggestion to modify the structure of Oda.
Watanabe is concerned with furnishing a temperature controller
and related structure that is “capable of highly accurately and
quickly controlling the temperature of a semiconductor device
such as a semiconductor laser.” See column 1, lines 50-55 of
Watanabe. The temperature control system of Watanabe includes
thermal insulation (5, Fig. 1) disposed around the semiconductor
device, a temperature sensor (3, Fig. 1), an electronic cooling
device (4, Fig. 1), and a block shaped heat sink (7, Fig. 1).
Watanabe specifies that the heat sink and the electronic cooling
device function together to control temperature. Oda, on the
other hand, is concerned with an ink tank, ink jet cartridge and
recording apparatus. A head tip (18, Fig. 1) of Oda includes a
plurality of ink jet nozzles and is supported in a heat sink (17,
Appeal No. 2002-0503
Application No. 09/089,698
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Fig. 1) located below the bottom wall (12, Fig. 1) of a tank
holder. The tank holder includes a cylindrical ink joint (14,
Fig. 1) on the upper surface of the bottom wall thereof holding a
disc filter (14a, Fig. 1) in the upper portion of the cylinder.
The examiner has not pointed to any disclosure in Oda that would
suggest a need for a quick and highly accurate temperature
control system. In this regard, the examiner has not established
that one of ordinary skill in the art would view the heat
dissipating capacity of the heat sink (17, Fig. 1) of Oda as
requiring any correction or modification.
While the heat radiating heat sink of Watanabe has fins to
aid in heat dissipation, that fact, by itself, does not serve to
establish that one of ordinary skill in the art would have been
led to employ such fins in Oda’s device in a fashion so as to
arrive at the here claimed subject matter based on the combined
teachings of the references. The mere fact that the prior art
may be modified to reflect features of the claimed invention does
not make the modification obvious unless the desirability of such
modification is suggested by the prior art.
Rejections based on § 103(a) must rest on a factual basis
with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. See In re
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Application No. 09/089,698
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Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968). Our reviewing court has repeatedly
cautioned against employing hindsight by using the appellants’
disclosure as a blueprint to reconstruct the claimed invention
from the isolated teachings of the prior art. See, e.g., Grain
Processing Corp. v. American Maize-Products Co., 840 F.2d 902,
907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
From our perspective, the examiner’s rejections appear to be
premised on impermissible hindsight reasoning. On the record of
this appeal, it is our view that the examiner has not carried the
burden of establishing a prima facie case of obviousness with
respect to the subject matter defined by the appealed claims.
Since the examiner has not established that any of the other
applied references would make up for the above-noted deficiencies
in the combined teachings of Oda and Watanabe, we will not
sustain any of the stated rejections.
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Application No. 09/089,698
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CONCLUSION
The decision of the examiner to reject the appealed claims
under 35 U.S.C. § 103 is reversed.
REVERSED
THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
Appeal No. 2002-0503
Application No. 09/089,698
Page 10
JOHN J. MCCARDLE, JR
LEXMARK INTERNATIONAL INCORPORATED
INTELLECTUAL PROPERTY DEPARTMENT
740 NEW CIRCLE ROAD NW
LEXINGTON, KY 40550