HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.Download PDFPatent Trials and Appeals BoardJun 16, 20212020000855 (P.T.A.B. Jun. 16, 2021) 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. 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Holdings, LLC is the general or managing partner of Hewlett-Packard Development Company, L.P. Id. 2 Claim 19 has been withdrawn from consideration.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. Appeal 2020-000855 Application 15/329,401 2 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. Appeal 2020-000855 Application 15/329,401 3 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 Appeal 2020-000855 Application 15/329,401 4 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. Appeal 2020-000855 Application 15/329,401 5 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 Appeal 2020-000855 Application 15/329,401 6 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 Appeal 2020-000855 Application 15/329,401 7 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: Appeal 2020-000855 Application 15/329,401 8 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. Appeal 2020-000855 Application 15/329,401 9 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. Appeal 2020-000855 Application 15/329,401 10 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 Appeal 2020-000855 Application 15/329,401 11 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 Appeal 2020-000855 Application 15/329,401 12 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). Appeal 2020-000855 Application 15/329,401 13 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 Appeal 2020-000855 Application 15/329,401 14 this appeal may be extended under 37 C.F.R. § 1.136(a)(1). REVERSED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation