Gasso Puchal, Xavier et al.

Patent Trials and Appeals Board

Oct 25, 2019

15329386 - (D) (P.T.A.B. Oct. 25, 2019)

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.
15/329,386 01/26/2017 Xavier Gasso Puchal 84582270 6414
22879 7590 10/25/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
VALENCIA, ALEJANDRO
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
10/25/2019 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):
barbl@hp.com
ipa.mail@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XAVIER GASSO PUCHAL, XAVIER BRUCH,
JEFFREY ALLEN WAGNER and GONZALO GASTON LLADO

Appeal 2019-000891
Application 15/329,386
Technology Center 2800
Before ROMULO H. DELMENDO, N. WHITNEY WILSON,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1, 2, 5, 7–9, 12, and 14. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant, Hewlett-Packard Development Company, L.P., is also
identified as the real party in interest. Appeal Brief (June 14, 2018)
(“Appeal Br.”) 2. Appellant further states that Hewlett-Packard
Development Company, LP, is a wholly-owned affiliate of HP Inc. Id.
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Application 15/329,386
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CLAIMED SUBJECT MATTER
The claims are directed to a printer such as an inkjet printer.
Specification (Jan. 26, 2017) (“Spec.”) ¶ 14. Inkjet printers include “a
number of nozzles from which a fluid such as ink is ejected.” Id. A quantity
of fluid may be left in the area of the nozzle after ejection. Id. ¶ 15. This
may have undesirable effects. Id. ¶ 16–17. The Specification describes such
undesirable effects as follows:
The evaporation of some of the components of the fluid may
produce changes in the fluid that is being ejected. Specifically,
as pigmented ink, for example, dries in an inkjet printhead, a
pigment-ink-vehicle separation (PIVS) may take place, which
results in the ink in the nozzle bores being substantially devoid
of a colorant.

Id. ¶ 16.
The Specification teaches to limit such evaporation by “applying a cap
to a printhead comprising selectively applying an immiscible fluid to a
surface of a printhead in which the immiscible fluid caps a number of
nozzles on a number of nozzles defined within the printhead.” Id. ¶ 18.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A printer comprising:
a printhead comprising a number of nozzles;
an immiscible fluid applicator; and
a processor to instruct the immiscible fluid applicator to apply
a layer of immiscible fluid to the surface of the printhead.

Appeal Br. 18 (Claims Appendix).
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Application 15/329,386
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REFERENCE(S)
The prior art relied upon by the Examiner is:
Name Reference Date
Moynihan US 7,344,220 B2 Mar. 18, 2008
Rosenstock US 4,148,041 Apr. 3, 1979

REJECTIONS
1. Claims 1, 2, 5, 7–9, 12, and 14 are rejected under 35 U.S.C.
§ 112(b) as being indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor regards as the invention. Final
Act. 2.
2. Claims 1, 2, 5, 7–9, 12, and 14 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Moynihan in view of Rosenstock. Id. at 2–
4.

OPINION
Rejection 1
The Examiner maintains the rejection of claims 1, 2, 5, 7–9, 12, and
14 as indefinite. Id. at 2. The Examiner determines that the phrase “an
immiscible fluid” (found in all claims) renders the claims indefinite. Id.
The Examiner finds that “a fluid by itself cannot be immiscible. A fluid can
only be immiscible with respect to another fluid.” Id. Accordingly, the
Examiner determines “to claim simply that one fluid is itself immiscible is
indefinite.” Id. In the Answer, the Examiner states that, “because every
fluid is both immiscible with respect to a first set fluids and miscible with
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Application 15/329,386
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respect to a second set of fluids, to simply say that a fluid is immiscible is
totally ambiguous.” Answer 3.
Appellant argues that such rejection is in error. Appeal Br. 9.
Appellant argues that the Specification defines “immiscible fluid” “broadly
as any fluid that does not mix with another fluid.” Id. (citing Spec. ¶ 24).
Accordingly, Appellant reasons, one of ordinary skill in the art would
understand that “immiscible fluid” means “any fluid that does not mix with
another fluid.” Id.
In its Reply Brief, Appellant argues that “[a]n immiscible fluid may
be determined to be immiscible as to another fluid through routine
experimentation that is not undue.” Reply Brief (Nov. 13, 2018) (“Reply
Br.”) 4–5. Appellant further asserts that “the Answer itself indicates that
immiscibility is easily determinable.” Id. at 5.
During prosecution, a claim is examined for compliance with section
112(b) by determining whether the claim meets threshold requirements of
clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009)
(quoting MPEP § 2173.02). A claim should be rejected as indefinite when it
is amenable to two or more plausible claim constructions. See In re
Packard, 751 F.3d 1307, 1324 (Fed. Cir. 2014) (“There are good reasons
why unnecessary incoherence and ambiguity in claim constructions should
be disapproved”).
The Federal Circuit, however, has held that “[m]erely claiming
broadly does not render a claim insolubly ambiguous, nor does it prevent the
public from understanding the scope of the patent.” Ultimax Cement Mfg.
Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1352 (Fed. Cir. 2009) (“a
claim to a formula containing over 5000 possible combinations is not
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Application 15/329,386
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necessarily ambiguous if it sufficiently notifies the public of the scope of the
claims”).
Here, the Specification states that “the term ‘immiscible fluid’ is
meant to be understood broadly as any fluid that does not mix with another
fluid.” Spec. ¶ 24. The Specification further states that “[i]n one example,
the immiscible fluid does not mix with ink. In another example, the
immiscible fluid does not chemically react with a fluid present in a printer
cartridge.” Id. Appellant, however, has not limited the term “immiscible”
by reference to the immiscibility of ink or another fluid present in a printer
cartridge. Absent such a point of reference, the term at issue lacks any point
of comparison necessary to determine miscibility. To the extent that
Appellant argues that the claim should be construed to mean any fluid that
does not mix with any other fluid, such construction may, at its outer
periphery, require one to test all fluids ever known to exist. This would
require undue experimentation to determine the proper scope of the claim.
See Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1383–84
(Fed. Cir. 2003) (citing In re Halleck, 422 F.2d 911, 914 (CCPA 1970)).
We further observe ambiguity arising from the Specification’s
teaching that “[i]n another example, the immiscible fluid does not
chemically react with a fluid present in a printer cartridge.” Spec. ¶ 24.
Whether or not one fluid will react with another fluid is typically considered
separately from miscibility. The cited portion of the Specification suggests a
special definition where a fluid that is soluble with another fluid, but does
not chemically react with such fluid, may be “immiscible.” However, the
claim language does not elucidate whether such a special definition should
be applied, which is an additional reason to affirm the § 112(b) rejection.

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Rejection 2
We do not reach the merits of the Examiner's rejection for
obviousness under 35 U.S.C. § 103 at this time. Rather, we reverse pro
forma the outstanding rejection because the appealed claims fail to satisfy
the requirements of the second paragraph of 35 U.S.C. § 112. Before a
proper review of the prior art rejection can be performed, the subject matter
encompassed by the claims on appeal must be reasonably understood
without resort to speculation. See Appeal Br. 11 (arguing that Moynihan’s
solvent is not an “immiscible fluid”); Ans. 4 (countering Appellant’s
argument).
Presently, speculation and conjecture must be utilized by us and by
the artisan inasmuch as the claims on appeal do not give adequate notice as
to the scope of the disclosed invention. See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of claim language.); see also In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious-the claim becomes indefinite.”).
This should not be construed as a decision on the merits of the § 103
rejection.
CONCLUSION
The Examiner’s rejection of claims 1, 2, 5, 7–9, 12, and 14 as
indefinite is affirmed. The Examiner’s rejection of claims 1, 2, 5, 7–9, 12,
and 14 is reversed pro forma.
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Application 15/329,386
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/
Basis
Affirmed Reversed
1, 2, 5, 7–9,
12, 14
112(b) Indefiniteness 1, 2, 5, 7–9,
12, 14

1, 2, 5, 7–9,
12, 14
103 Moynihan,
Rosenstock
1, 2, 5, 7–9,
12, 14
Overall
Outcome
1, 2, 5, 7–9,
12, 14

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED