HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

Patent Trials and Appeals Board

Jun 16, 2021

2020000855 (P.T.A.B. Jun. 16, 2021)

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.
15/329,401 01/26/2017 Jeffrey Allen Wagner 84582423 7850
22879 7590 06/16/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
ZIMMERMANN, JOHN P
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
06/16/2021 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
jessica.pazdan@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 JEFFREY ALLEN WAGNER, SIERRA LYNN TRIEBE,
MARIA MAGDALENA MARTINEZ, and
RONALD ALBERT ASKELAND
Appeal 2020-000855
Application 15/329,401
Technology Center 2800
Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18 and 20.2 See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hewlett-
Packard Development Company, L.P., which is a Texas limited partnership
and wholly-owned affiliate of HP Inc. Appeal Br. 2. Appellant further
states that HPQ Holdings, LLC is the general or managing partner of
Hewlett-Packard Development Company, L.P. Id.
2 Claim 19 has been withdrawn from consideration. Final Act. 2.
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We REVERSE, but enter NEW GROUNDS OF REJECTION under
37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claims are directed to inkjet printing devices. Spec. ¶ 1. Claims
1, 9, and 15 are the independent claims on appeal and are reproduced below.
1. A method of preparing a printer cartridge for transport,
comprising:
in preparation for shipping and prior to installation of the
printer cartridge in a printer, applying a volume of immiscible
fluid to a nozzle bore of a printhead; and
shipping the printer cartridge with the immiscible fluid in
place.

9. A packaged printhead comprising:
the printhead;
packaging enclosing the printhead to protect the
printhead during shipping and prior to installation in a printing
device;
a volume of immiscible fluid deposited into a nozzle bore
of a nozzle of the printhead; and
a layer of immiscible fluid applied over a nozzle bore
opening.

15. A printhead die comprising:
a volume of immiscible fluid deposited into a nozzle bore
of the die; and
a layer of immiscible fluid applied over a nozzle bore
opening.
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REFERENCES
The prior art upon which the Examiner relies is:
Name Reference Date
Le US 4,734,706 Mar. 29, 1988
Kobayashi US 6,338,539 B1 Jan. 15, 2002
Bensing US 7,600,853 B2 Oct. 13, 2009
Rhoads US 2002/0171705 A1 Nov. 21, 2002
REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1–8, 17, 18, and 20 under 35 U.S.C. § 103 as being
unpatentable over the combination of Rhoads, Le, Bensing, and Kobayashi.
Final Act. 3–10.
2. Claims 9–16 under 35 U.S.C. § 103 as being unpatentable over
the combination of Rhoads, Le, and Bensing. Id. at 11–13.
OPINION
Rejection 1
The Examiner finds that Rhoads discloses applying a volume of
immiscible fluid to a nozzle bore of a printhead but does not teach preparing
a printer cartridge for transport, as claim 1 recites. Final Act. 4. The
Examiner finds Le discloses applying an immiscible fluid to a printer
cartridge and determines it would have been obvious to combine Rhoads and
Le. Id. However, the Examiner finds the combination of Rhoads and Le
does not teach that the immiscible fluid is applied to a nozzle bore of a
printhead in preparation for shipping and prior to installation of a printer
cartridge in a printer, as claim 1 recites. Id.
The Examiner finds Bensing teaches preparing an inkjet cartridge for
shipping and prior to installation of the printer cartridge in a printer. Id. The
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Examiner concludes that it would have been obvious “to modify the fluid
application method of the combination of Rhoads et al. and Le et al. [to] be
used in preparation of a printer cartridge for transport in preparation for
shipping and prior to installation as taught by Bensing et al. in an effort to
provide an effective seal” and to “prevent evaporative clogging and prevent
contamination of the ink by impurities from the air.” Id. at 4–5.
The Examiner also finds that Kobayashi teaches filling the nozzles of
printheads with a shipping liquid. Id. at 5. The Examiner concludes it
would have been obvious that “the next step, following the immiscible fluid
applied to the nozzle bore of the printhead of the combination of Rhoads et
al., Le et al. and Bensing et al.” would “be shipping the printer cartridge,
prior to installation in a printer as taught by Kobayashi et al. in an effort to
prevent evaporation, clogging, and contamination of the ink in the ink
cartridge.” Id. at 5–6.
Appellant asserts that the Examiner has relied on impermissible
hindsight because “[r]ather than considering what the combination of the
references would really suggest to one of skill in the art, the Action seems to
simply be adding an additional reference, using the claims as a template, in
an impermissible exercise of hindsight, attempting unsuccessfully to reach
the claimed subject matter.” Appeal Br. 13.3
Appellant’s arguments are persuasive. The Examiner’s rationale does
not sufficiently explain why it would have been obvious to modify Rhoads’s

3 Appellant also argues that the Examiner’s rejections of claims 3–8 do not
properly accord patentable weight to the recited limitations. Appeal Br. 15–
16; see Final Act. 7–9. Appellant is correct that these limitations should be
accorded patentable weight, in that the immiscible fluid is used in, and,
therefore, is a further limitation of the method.
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or Le’s process so an immiscible fluid is applied to a nozzle bore of a
printhead in preparation for shipping and prior to installation of a printer
cartridge in a printer, as claim 1 recites.
Rhoads relates to the cleaning of printheads in inkjet printers by using
a wiper that slides and engages a nozzle orifice plate surface of a printhead
to remove excess ink and accumulated debris. Rhoads ¶ 3. Rhoads
discloses the use of a treatment fluid to improve the effectiveness of the
wiper. Id. ¶ 75. Therefore, Rhoads’s treatment fluid is used during use of
an inkjet printer, as Appellant argues, not in preparation for shipping.
Appeal Br. 9.
Le discloses a membrane container that confines a membrane to a
generally planar configuration adjacent to an orifice plate for an inkjet
printhead. Le 9:42–45. Le teaches that the membrane isolates the ink
supply for the inkjet from outside air so there is no evaporation of ink that
could lead to clogging of an orifice in the orifice plate. Id. at 9:64–67. Le
also teaches that the oil membrane prevents wetting of the exterior surface of
the orifice plate by ink from the orifice. Id. at 10:7–9. As noted above, the
Examiner finds Le does not teach the “in preparation for shipping” limitation
of claim 1. Final Act. 4. The Examiner also does not find that Le applies its
membrane to a nozzle bore of a printhead or sufficiently explain why it
would have been obvious to modify Le to do so. Id. at 4–6.
Bensing teaches that inkjet cartridges are typically sealed with
adhesive tape over ink orifices but the adhesive can flow into the nozzle
holes and occlude them. Bensing 1:11–17. In view of this, Bensing
discloses applying a liquid over nozzle holes and at least a continuous region
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close to the nozzle holes “and then curing that liquid to a solid before
significant flow of the liquid into the nozzle holes.” Id. at 2:6–10.
As noted above, the Examiner concludes it would have been obvious
to modify the combination of Rhoads and Le in view of Bensing “to provide
an effective seal,” as Bensing teaches, and to “prevent evaporative clogging
and prevent contamination of the ink by impurities from the air,” as Le
teaches. Final Act. 5. However, to the extent Bensing teaches the
preparation of a printer cartridge for shipping and prior to installation, as
claim 1 recites, the Examiner has not sufficiently explained why one of
ordinary skill in the art would have changed Rhoads’s treatment fluid, which
is used during the operation of a printer, so it is applied to a nozzle bore in
preparation for shipping and prior to installation, particularly when
Bensing’s approach for shipment preparation is to cure a liquid into a solid.
For the same reasons, the Examiner has not sufficiently explained why it
would have been obvious to modify Le in view of Bensing. Le’s own
teachings regarding evaporative clogging and ink contamination also do not
support the Examiner’s reason to combine, because the Examiner finds that
Le does not teach the “in preparation” limitation of claim 1. Id. at 4.
In the context of shipping, Kobayashi describes filling printer ink
cartridges with a liquid and, to prepare the ink cartridges for use, removing
the shipping liquid and charging the ink cartridges with ink. Kobayashi
1:62–2:6. Kobayashi teaches that this operation prevents printheads from
drying and being clogged with dust. Id. at 1:66–67. The Examiner cites the
latter as a reason an ordinarily skilled artisan would have modified the
combination of Rhoads and Le. Final Act. 6. However, as discussed above,
Rhoads’s treatment fluid is used during the operation of a printer to enhance
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a wiping function and the Examiner does not sufficiently explain how Le’s
membrane would be applicable to preparing a printer cartridge for shipping,
as claim 1 recites. Therefore, although Kobayashi teaches the preparation of
an ink cartridge for shipping, the Examiner has not sufficiently explained
why it would have been obvious to one of ordinary skill in the art to use
Rhoads’s treatment fluid, which facilitates wiping a printhead during printer
operation, to prepare a printer cartridge for shipping, or to use Le’s
membrane when the Examiner finds that Le does not teach the “in
preparation” limitation. Id. at 4.
Upon consideration of the disclosures of the applied references and
these deficiencies, the Examiner’s conclusion that the proposed combination
would have resulted in the claimed invention can only be viewed as being
based on impermissible hindsight. KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)
(warning against a “temptation to read into the prior art the teachings of the
invention in issue”)); In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)
(“Any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant’s disclosure, such a reconstruction is proper.”).
Accordingly, we reverse this rejection.

Rejection 2
The Examiner concludes:
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As related to independent claim 9, as indicated above it would
have been obvious to one of ordinary skill in the art at the time
of filing to modify the fluid application method of the
combination of Rhoads et al. and Le et al. be used in preparation
of a printer cartridge for transport in preparation for shipping and
prior to installation as taught by Bensing et al. in an effort to
provide an effective seal (Bensing et al. – Column 1, Lines 6-7)
prevent evaporative clogging and prevent contamination of the
ink by impurities from the air (Le et al. – Column 8, Lines 51-
58).
Final Act. 11. This passage appears to recite the reasoning set forth in the
rejection of claim 1. Therefore, the Examiner uses reasoning similar to that
in the rejection of claim 1 to conclude it would have been obvious to modify
the combination of Rhoads and Le in view of Bensing to use their respective
fluids to prepare a printer cartridge for shipping. The Examiner recites this
reasoning once again to reject claim 15. Id. at 13.
We determine that for the same reasons discussed above with regard
to the rejection of claim 1, the Examiner does not sufficiently explain why it
would have been obvious to modify the fluids of Rhoads and Le in view of
Bensing’s teachings to prepare the fluids in preparation for shipping of a
printer cartridge, as claim 9 recites, or to achieve a printhead die comprising
a volume of immiscible fluid deposited into a nozzle bore of the die and a
layer of immiscible fluid applied over a nozzle bore opening, as claim 15
recites. Accordingly, we reverse this rejection.

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NEW GROUNDS OF REJECTION
Claims 1, 9, and 15 under 35 U.S.C. § 102(a)(1)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection of claims 1, 9, and 154 under 35 U.S.C.
§ 102(a)(1) as being anticipated by Kobayashi.
As an initial matter, we determine the meaning and scope of the term
“immiscible fluid.” During prosecution before the Examiner, the claim
language should be given its broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account any definitions or enlightenment contained in the
written description of Appellant’s Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). “[T]he specification ‘is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it is the single
best guide to the meaning of a disputed term.’” Phillips v. AWH Corp., 415
F.3d 1303, 1315 (Fed. Cir. 2005) (citing Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
Appellant’s Specification states, “in the present specification and in
the appended claims, the term ‘immiscible fluid’ is meant to be understood
broadly as any fluid that is incapable of mixing with another fluid.” Spec. ¶
28. The broadest reasonable interpretation of this passage includes any fluid
that is incapable of mixing with at least one other fluid (i.e., “with another
fluid”). For instance, oil is incapable of mixing with water and vice versa.
This would appear to be the property of any fluid. Therefore, we take
judicial notice of the fact that no fluid is capable of forming a mixture with

4 We leave consideration of patentability of the dependent claims over
Kobayashi, alone or in view of additional prior art, to the Examiner.
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every other fluid. In other words, “immiscible fluid” fails to exclude any
fluid within the scope of Appellant’s definition.
In the context of shipping, Kobayashi discloses that “the ink
cartridges of the printer are filled with a liquid for shipping, to thereby
prevent the print heads from being dried and clogged with dust.” Kobayashi
1:62–67. Therefore, Kobayashi discloses a method of preparing a printer
cartridge for transport in which a volume of fluid is applied to a printhead
and the printer cartridge is subsequently shipped with the fluid in place, as
claim 1 recites. Although Kobayashi does not disclose a specific fluid for its
shipping liquid, the broadest reasonable interpretation of “immiscible fluid”
encompasses any shipping liquid for the reasons discussed above.
Appellant argues that “Appellant’s subject matter contemplates a
printer cartridge that includes both a supply of printing fluid and a printhead
with nozzles integrated into the cartridge,” whereas “Kobayashi appears to
refer[] to an older technology in which the printhead is separate from a
number of ink cartridges.” Appeal Br. 11. However, Appellant’s claims do
not require the arrangement that Appellant argues. See In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993) (rejecting appellants’ nonobviousness
argument as based on limitation not recited in claim); In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“Many of appellant’s arguments fail from the
outset because, as the solicitor has pointed out, they are not based on
limitations appearing in the claims.”).
Appellant also asserts that “Kobayashi says nothing about any prep
for the nozzle bore of the printhead for shipping, i.e., ‘applying a volume of
immiscible fluid to a nozzle bore of a printhead’ and ‘shipping the printer
cartridge with the immiscible fluid in place.’” Id. at 12. This argument is
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also unpersuasive because Kobayashi describes its shipping liquid in the
context of shipping a printer and that its shipping liquid prevents “the print
heads from being dried and clogged with dust.” Kobayashi 1:62–67. Given
Kobayahi’s description of the shipping liquid’s functions, it is inherent that
at least some portion of the shipping liquid would enter the nozzle bores of
the printhead in order to prevent the printheads from drying or being clogged
with dust.
For these reasons, Kobayashi discloses claim 1’s method and claim
15’s printhead die. Claim 9 includes similar limitations but also recites
“packaging enclosing the printhead to protect the printhead during shipping
and prior to installation in a printing device.” Appellant cites paragraphs 17
and 21 of the Specification to support this limitation. Appeal Br. 7.
Paragraph 17 states that Appellant’s Figure 1 shows a printer cartridge
during shipping. However, paragraph 17 does not describe packaging that
encloses a printhead, as claim 9 recites. Figure 1 also does not depict a
specific structure for packaging. Paragraph 21 describes a die and an
immiscible fluid deposited onto the die, which may cover the nozzles of the
die.
In view of the above, paragraphs 17 and 21 do not disclose packaging
in addition to, or distinct from, an immiscible fluid (e.g., a wrapper or other
enclosure for a printhead). Instead, paragraph 21 describes a printer
cartridge for shipping that includes the immiscible fluid applied to nozzles of
a printhead die. For these reasons, we interpret “packaging enclosing the
printhead” as including the immiscible fluid. The description of the
immiscible fluid in the cited portions of the Specification also indicates that
the packaging need not enclose the entirety of a printhead. For the reasons
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described above, Kobayashi’s shipping fluid is applied to the nozzle of a
printhead and, therefore, discloses claim 9’s packaging.
Claim 15 under 35 U.S.C. § 102(a)(1)
We also enter the following new ground of rejection for claim 15
under 35 U.S.C. § 102(b) as anticipated by Bensing.
Bensing discloses “applying a liquid with a bounded-region applicator
over the nozzle holes and over at least a continuous region close to the
nozzle holes and then curing that liquid to a solid before significant flow of
the liquid into the nozzle holes.” Bensing 2:6–10. This implies that at least
some portion of the liquid (i.e., an insignificant flow) flows into the nozzle
holes before the liquid is cured to a solid. As a result, Bensing’s
intermediate product, which includes the liquid applied to nozzle holes and a
continuous region close to the nozzle holes, but before the liquid is cured,
anticipates the limitations of claim 15.
CONCLUSION
The decision of the Examiner is reversed, with new grounds of
rejection pursuant to 37 C.F.R. § 41.50(b).
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed New
Ground
1–8, 17,
18, 20
103 Rhoads, Le,
Bensing,
Kobayashi
1–8, 17,
18, 20

9–16 103 Rhoads, Le,
Bensing
9–16
1, 9, 15 102(b) Kobayashi 1, 9, 15
15 102(b) Bensing 15
Overall
Outcome

1–18, 20 1, 9, 15

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection
. . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

REVERSED; 37 C.F.R. § 41.50(b)