Ex Parte Stathem et alDownload PDFPatent Trial and Appeal BoardJan 16, 201814960783 (P.T.A.B. Jan. 16, 2018) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/960,783 12/07/2015 Ralph L Stathem 84413395 1029 22879 HP Tnr 7590 01/18/2018 EXAMINER 3390 E. Harmony Road Mail Stop 35 ZIMMERMANN, JOHN P FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 01/18/2018 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 y vonne.bailey @ hp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RALPH L. STATHEM, BEVERLY ASOO STONAS, SUNDAR VASUDEVAN, and FRANK SHALA Appeal 2017-002508 Application 14/960,783 Technology Center 2800 Before CATHERINE Q. TIMM, JENNIFER R. GUPTA, and MICHAEL G. MCMANUS, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 5—7, and 22 under 35 U.S.C. 1 In explaining our Decision, we cite to the Specification dated December 7, 2015 (Spec.), the Final Office Action dated March 11, 2016 (Final), the Appeal Brief dated July 8, 2016 (Appeal Br.), the Examiner’s Answer dated October 11, 2016 (Ans.), and the Reply Brief dated November 29, 2016 (Reply Br.). 2 Appellant is Applicant, Hewlett-Packard Development Co., L.P., which, according to the Appeal Brief, is the real party in interest. Appeal Br. 2. Appeal 2017-002508 Application 14/960,783 § 103(a) as obvious over Yamamoto3 in view of Weaver4 and claims 9—13 as obvious over those references further in view of Stathem.5 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to a print head module (see, e.g., claim 1) and a system for delivering ink to a print head including a print head module (see, e.g., claim 9). The print head module includes a one-time vent. See, e.g., claims 1 and 9. Claim 1 is illustrative: 1. A print head module for delivering ink to a print head comprising: a vent cavity defined within an interior cavity of the print head module; and a one-time vent built into the vent cavity of the print head module; in which, when an amount of ink comes in contact with the one-time vent, air is prevented from passing through the one-time vent. Claims Appendix, Appeal Br. 18. OPINION The issue for both rejections is the same: Has Appellant identified a reversible error in the Examiner’s findings with regard to Yamamoto or the finding of a reason to substitute Yamamoto’s float valve venting structure 3 Yamamoto et al., US 2010/0289856 Al, published Nov. 18, 2010. 4 Weaver et al., US 2009/0320684 Al, published Dec. 31, 2009. 5 Stathem et al., US 2007/0222828 Al, published Sept. 27, 2007. 2 Appeal 2017-002508 Application 14/960,783 with a commonly known one-time vent such as the one-time vent taught by Weaver? Appellant has not identified such an error. There is no dispute that Yamamoto teaches a vent cavity defined within an interior cavity of the print head module as required by claim 1. Compare Final 5—6, with Appeal Br. 9-14, and Reply Br. 4—6. Yamamoto’s vent cavity (first outlet port H51) contains a sub-tank float valve mechanism consisting of a first float H91 and a seal member H45. Yamamoto | 58; Fig. 1. The Examiner finds that the vent is not a one-time vent, but concludes that using a one-time vent would have been obvious to one of ordinary skill in the art at the time of the invention because one-time vents were a common design choice in the field. Final 6 (citing Weaver as evidence to support the finding). The Examiner finds the ordinary artisan would have had a reason to use a known one-time vent such as that taught by Weaver to prevent leaking of fluid through the vent structure. Final 7. Appellant contends that Yamamoto fails to teach the requirement of the last clause of claim 1, i.e., “when an amount of ink comes in contact with the one-time vent, air is prevented from passing through the one-time vent.” Appeal Br. 10-11. This argument is not persuasive because it overlooks the Examiner’s findings with regard to the one-time vent: The Examiner does not rely on Yamamoto alone, but on a modification of Yamamoto with a commonly known one-time vent. Appellant does not dispute that one-time vents known in the prior art, such as the one-time vent of Weaver, would prevent air from passing through the vent when an amount of ink comes into contact with it. Appeal Br. 9—14; Reply Br. 4—6. 3 Appeal 2017-002508 Application 14/960,783 Appellant further contends that one of ordinary skill in the art would not have modified Yamamoto’s venting mechanism with the one-time venting mechanism of Weaver because doing so would render Yamamoto’s apparatus inoperable because it would change the principle of operation of Yamamoto. Appeal Br. 12—13. But Appellant’s argument is based on a misreading of Yamamoto and an overly narrow construction of Yamamoto’s principle of operation. The purpose of Yamamoto’s vent cavity (air outlet port H51) is to discharge air bubbles H3101 from ink-containing sub-tank H310. Yamamoto 1 57; Fig. 1. Yamamoto equips the vent cavity (air outlet port H51) with a float-valve mechanism (float H91 and seal member H45) that allows gas to vent, but restricts the passage of the liquid ink. Yamamoto 158. This is accomplished using float H91, which is buoyant enough to float on the surface of the ink. Id. Yamamoto applies a negative pressure to passage H3403 to evacuate the air from bubble H3101, which causes the buoyant float H91 to rise as the ink rises. Yamamoto 1 60. As the buoyant float H91 and ink rise, the float H91 is pressed against seal member H45, which blocks the port and restricts the passage of the ink so only the bubbles are discharged. Id.', see also Fig. 5 (depicting float H91 floating on the rising ink and approaching seal member H45). The purpose of Weaver’s one-time vent is similar to the vent mechanism of Yamamoto: It allows air to be vented and yet blocks the passage of liquid. Weaver 1130. Weaver accomplishes this using a self sealing vent structure 264. Weaver 1130; Figs. 28A, 28B. As air is forced out of the container during the filling process, the liquid level rises until it 4 Appeal 2017-002508 Application 14/960,783 contacts vent structure 264. Weaver 1132. The liquid causes a swelling agent to swell and block the pores of the vent, thus, sealing the vent. Id. A preponderance of the evidence supports the Examiner’s finding of a reason to substitute the float-valve mechanism of Yamamoto with the one time vent of Weaver because both valve mechanisms serve the same purpose of allowing air to vent but blocking the passage of liquid when the liquid reaches a certain height. Using one in place of the other would have been obvious to accomplish the predictable result of venting gas but blocking liquid. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Further, Weaver is not necessary to the rejection of claim 1. The claims are directed to an apparatus, i.e., a structure. It has long been held that “apparatus claims cover what a device is, not what a device does.’” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Structures must be distinguished from the prior art on the basis of structure, and where there is reason to believe that the structure of the prior art is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). Although Appellant’s Specification describes a one-time vent that is chemically treated so that contact with liquid causes the chemicals to coagulate or swell to form a plug blocking the flow of the liquid ink, claim 1 is not limited to a one-time vent with such chemicals. Any venting mechanism that is capable of acting as a one-time vent meets 5 Appeal 2017-002508 Application 14/960,783 the requirements of the functional language of claim 1. Yamamoto’s float- valve and seal mechanism acts as a one-time vent when the ink continues to push the float against seal member H45 causing the float to block air and liquid passage. Thus, functional language of claim 1 does not patentably distinguish the print head module of claim 1 from the print head module of Yamamoto. CONCLUSION We sustain the Examiner’s rejections. DECISION The Examiner’s decision is affirmed. TIME PERIOD FOR RESPONSE 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). AFFIRMED 6 Copy with citationCopy as parenthetical citation