Ex Parte WEN

Board of Patent Appeals and Interferences

Jul 31, 2002

08928002 (B.P.A.I. Jul. 31, 2002)

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was not written for publication and is not binding precedent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. 17

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte XIN WEN
____________
Appeal No. 2000-1972
Application No. 08/928,002
____________
ON BRIEF
____________
Before URYNOWICZ, LALL, and BLANKENSHIP, Administrative Patent
Judges.
URYNOWICZ, Administrative Patent Judge.
Decision on Appeal
This appeal is from the final rejection of claims 1-
13.
The invention pertains to ink jet printers. Claim 1
is illustrative and reads as follows:
1. An ink jet printing apparatus adapted to
producing images using inks having predetermined
concentrations of a label material therein; said apparatus
comprising:
Appeal No. 2000-1972
Application No. 08/928,002
2
a printhead;
an ink delivery system adapted to provide inks to
the printhead; and
a sensor associated with said ink delivery system,
said sensor being sensitive to the label material in the ink
and adapted to produce a signal which is characteristic of the
concentration of the label material in the ink.
The references relied upon by the examiner are:
Anderson 5,424,766 Jun. 13, 1995
Yokono 5,754,195 May 19, 1998

Claims 1-4 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Anderson.
Claims 5-10 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Anderson.
Claims 11-13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Anderson in view of
Yokono.
The respective positions of the examiner and the
appellant with regard to the propriety of these rejections are
set forth in the examiner’s answer (Paper No. 16) and the
appellant’s brief (Paper No. 15).
Appellant’s Invention
The invention is described at page 2 of the brief.
Appeal No. 2000-1972
Application No. 08/928,002
3
The Anderson Patent
Anderson discloses a control system for an ink jet
printer that employs acoustic transducers to measure the
velocity of sound in the ink and in a reference chamber
containing only fresh ink. The two measurements are compared
to determine when to add additional solvent to the system to
maintain solids concentration in the ink substantially
constant.
Grouping of Claims
At page 3 of the brief, appellant has stated that
the claims within each group stand or fall together. The
claims are grouped as follows:
Claims 1-5 and 10-13;
Claim 6;
Claim 7;
Claim 8; and
Claim 9.
The Rejection of Claims 1-4 under
35 U.S.C. § 102(b)
At pages 3-5 of his brief, appellant argues that
claims 1-4 are not anticipated by Anderson. With respect to
Appeal No. 2000-1972
Application No. 08/928,002
4
claim 1, it is argued that Anderson’s sensor is one which
detects the concentration of non-evaporative ink solids, while
the claimed sensor has the structure for sensing label
material. It is urged that the phrase “label material” as
used in the claim is not the same as the non-evaporative ink
solids of Anderson. Appellant states that his specification
at page 11, lines 23-29, teaches,
[t]he term “detectable label material”
refers herein to an ink ingredient that is
added to the ink . . . . The
concentration of the detectable label
material to the concentration of the
colorant is held as constant in the ink.
The detectable label material is, however,
not required to perform any other
functions in the printhead or on the
receiver media. In other words, the ink
can achieve desired print qualities
without the assistance of the detectable
label materials.
Appellant submits that the above disclosure requires that the
phrase “label material” as used in the claims identifies an
ingredient which is only used to identify a characteristic of
the ink, and is not used for printing optical density on a
receiver.
We are not persuaded by this argument and will
sustain the rejection of claims 1-4. The above disclosure
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Application No. 08/928,002
5
does not require that the label material be used only as a
label, such that it does not perform any other function, such
as achieve print quality. Accordingly, the nonevaporative ink
solids of Anderson meet the label material of the claims in
that a sensor is sensitive to the concentration of solid
material, and is adapted to produce a signal which is
characteristic of the concentration of the material in the
ink. The fact that Anderson’s solid material may perform one
or more functions besides acting as a label is irrelevant to
the rejection.
Whereas there is no rejection of claims 1-4 under 35
U.S.C. § 103, appellant’s argument at page 5, lines 1-18, of
the brief that it would not have been obvious to modify
Anderson so as to render the claimed invention obvious is
dismissed.
The Rejections of Claims 5 and 10-13
Whereas appellant has indicated that claims 1-5 and
10-13 stand or fall together, and we will sustain the
rejection of claims 1-4, we will sustain the rejection of
claims 5 and 10 under 35 U.S.C. § 103(a) as being unpatentable
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Application No. 08/928,002
6
over Anderson and of claims 11-13 under 35 U.S.C. § 103(a) as
being unpatentable over Anderson in view of Yokono.
The Rejection of Claims 6-9 under
35 U.S.C. § 103(a)
Each of claims 6-9 depends directly from claim 1 and
each recites that the sensor is adapted to sense a property of
the label material. In claim 6, the sensor is adapted to
sense a magnetic field; in claim 7, the sensor is adapted to
sense an electromagnetic field; in claim 8, the sensor is
adapted to sense infrared photons; and in claim 9, the sensor
is adapted to sense fluorescent photons. At page 6, lines 17-
21, of the answer, the examiner asserts that such sensors are
notoriously well-known in the printer art, and that the sensor
is selected to sense the ink depending upon the type of ink,
as admitted in appellant’s specification at page 12.
We will not sustain the rejection of claims 6-9.
There is no evidence supporting the examiner’s assertion that
the sensors in question are notoriously well-known in the
printer art. Furthermore, at page 12 of appellant’s
specification, appellant merely acknowledges that various
types of sensors are known. There is no admission that it was
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Application No. 08/928,002
7
known to use any of the sensors to sense a magnetic field,
electromagnetic field, infrared photons or fluorescent photons
of a label material in an ink. Absent a teaching in the prior
art of using a label material producing a magnetic field, an
electromagnetic field, infrared photons or fluorescent
photons, there would be no reason or motivation to utilize
known sensors to detect such fields or photons in ink jet
printing apparatus.
Summary
The rejection of claims 1-4 under 35 U.S.C.
§ 102(b) as anticipated by Anderson is sustained.
The rejection of claims 5-10 under 35 U.S.C.
§ 103(a) as being unpatentable over Anderson is sustained as
to claims 5 and 10 and reversed as to claims 6-9.
The rejection of claims 11-13 under 35 U.S.C.
§ 103(a) as being unpatentable over Anderson in view of Yokono
is sustained.
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Application No. 08/928,002
8
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
PARSHOTAM S. LALL ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
SMU/dal
Appeal No. 2000-1972
Application No. 08/928,002
9
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