Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

Jan 26, 2022

2022001158 (P.T.A.B. Jan. 26, 2022)

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. 16/764,938 05/18/2020 Judson M. LEISER 85887960 1025 22879 7590 01/26/2022 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 01/26/2022 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 JUDSON M. LEISER, MIQUEL BOLEDA BUSQUETS, BERND KARLSBOECK, DAVID OLSEN, and MICHAEL E. PETERSCHMIDT Appeal 2022-001158 Application 16/764,938 Technology Center 2800 Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and JASON V. MORGAN, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s rejection of claims 1, 2, 7, 13-15, 21, 23, 25, 29, 30, 34, 50, 66, 68-70, and 73-75, all of the pending claims.2 Appeal Br. 2. Claim 49 is withdrawn. Id. Claims 3-6, 8-12, 16-20, 22, 24, 26-28, 31-33, 35-48, 51- 1 We refer to the Specification filed May 18, 2020 (“Spec.”); the Final Office Action, mailed June 30, 2021 (“Final Act.”); the Appeal Brief, filed Oct. 4, 2021 (“Appeal Br.”); the Examiner’s Answer, mailed Oct. 25, 2021 (“Ans.”); and the Reply Brief, filed Dec. 14, 2021 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (2021). Appellant identifies Hewlett Packard Development Company, L.P. as the real party-in-interest. Appeal Br. 2. Appeal 2022-001158 Application 16/764,938 2 65, 67, 71, and 72 are canceled. Claims App. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. II. CLAIMED SUBJECT MATTER According to Appellant, the claimed subject matter relates to a print cartridge for insertion into a printer. Spec. ¶ 66. Figures 11 and 19, reproduced and discussed below, are useful for understanding the claimed subject matter: Figure 11 above “illustrates a cross sectional top view [of] an example of an interface structure [105] and receiving station [107], before or after fluidic connection.” Spec. ¶ 12. “The liquid output of the interface structure 105 includes a liquid channel 117 [that] includes a liquid interface 115.” Id. Appeal 2022-001158 Application 16/764,938 3 ¶ 117. Receiving station 107 includes interface front 154, which “initiates pushing the protective structure 110 [on interface structure 105] to facilitate insertion of the needle 109 into the liquid interface 115.” Id. ¶ 128. Figure 19 above illustrates interface structure 105 including base 169 offset in the needle insertion (NI) direction from front push area 154a. Interface structure 105 further includes first key pen 165 and an opposite key pen (also labeled 165) protruding from base 169 next to liquid channel 117, first key pen and opposite key pen 165 protruding parallel and opposite to the needle insertion (NI) direction. Id ¶¶ l 7, 168-l 70. Independent claim 1, reproduced below with disputed limitations emphasized, is illustrative: Appeal 2022-001158 Application 16/764,938 4 1. An interface structure to connect a liquid reservoir to a receiving station, the interface structure extending in a first direction, a second direction perpendicular to the first direction, and a third direction perpendicular to the first direction and the second direction, the interface structure comprising: a liquid interface to fluidically connect to a liquid needle of the receiving station, the liquid interface including an interface edge and a seal; a liquid channel, extending in the second direction, to fluidically connect the liquid interface to the liquid reservoir, the liquid channel and the liquid interface defining a needle insertion direction along the second direction; an integrated circuit including integrated circuit contact pads, the integrated circuit extending in the second direction in a first plane, the integrated circuit contact pads aligned along the third direction, the first plane extending at a distance from a second plane, the second plan intersecting the liquid channel and the liquid interface such that the integrated circuit contact pads are not coplanar with the liquid channel and liquid interface, the integrated circuit contact pads offset from the liquid channel and offset from the liquid interface along the third direction; a front push area adjacent the liquid interface, the front push area terminating at a front edge that defines a profile height of the interface structure, between a proximal front edge and an opposite distal front edge; a base that is offset in the needle insertion direction from the front push area; a first key pen protruding from the base next to the liquid channel, the first key pen protruding parallel and opposite to the needle insertion direction, the second plane intersecting the first key pen and liquid channel; and a second key pen, the first key pen and the second key pen being at opposite sides of the liquid channel. Appeal Br. 15 (Claims App.) (emphasis added). Appeal 2022-001158 Application 16/764,938 5 III. REFERENCES The Examiner relies upon the following references:3 Name Reference Date Ohashi US 5,512,925 Apr. 30, 1996 Seino US 2005/0185036 A1 Aug. 25, 2005 Koizumi US 2009/0244224 A1 Oct. 1, 2009 Kubo US 2010/0053257 A1 Mar. 4, 2010 IV. REJECTIONS The Examiner rejects the claims on appeal as follows: Claims 1, 2, 7, 13-15, 34, 66, 68-70, 74, and 75 stand rejected under 35 U.S.C. § 102 as being anticipated by Koizumi. Final Act. 2-8. Claims 21, 23, 25, 29, and 30 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Koizumi and Ohashi. Final Act. 8-9. Claim 50 stands rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Koizumi and Kubo. Final Act. 9. Claim 73 stands rejected under 35 U.S.C. § 103 as being unpatentable over the combined teachings of Koizumi and Seino. Final Act. 9-10. 3 All reference citations are to the first named inventor only. Appeal 2022-001158 Application 16/764,938 6 V. ANALYSIS We consider Appellant’s arguments, as they are presented in the Appeal Brief, pages 5-17 and the Reply Brief, pages 2-8.4 We are persuaded by Appellant’s contentions, as discussed below. 1. Anticipation Rejection Appellant argues, inter alia, that the Examiner errs in finding that Koizumi describes “a base that is offset in the needle insertion direction from the front push area” and “a first key pen protruding from the base next to the liquid channel, the first key pen protruding parallel and opposite to the needle insertion direction,” as recited in independent claim 1. Appeal Br. 9- 14, Reply Br. 2. In particular, Appellant argues that the Examiner’s rejection is predicated upon a hypothetical modification of the Koizumi reference that would reverse the disclosed positions of the key pens and holes to meet the disputed limitations. Appeal Br. 9 (citing Koizumi ¶ 21). Further, Appellant argues that Koizumi’s stage member 1750 is part of the basal section of positioning pin 1700 of holder body 1100. Id. at 13 (citing Koizumi ¶ 67). Therefore, Appellant submits that stage member 1750 is not part of ink cartridge 100. Id. According to Appellant, because stage member 1750 is not part of the structure that includes front wall surface F1 corresponding to the front push area of cartridge 100, the Examiner errs in finding that it describes the base of the cartridge. Id. In response, the Examiner finds Koizumi’s disclosure of key pens, base offset disposed on the ink cartridge instead of the receiving bay 4 We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2021). Appeal 2022-001158 Application 16/764,938 7 describes the disputed limitations. Ans. 3 (citing Koizumi ¶ 86, Fig. 8). In particular, the Examiner finds the following: a first key pen (fig. 7, item 1700) protruding from the base next to the liquid channel, the first key pen protruding parallel and opposite to the needle insertion direction ([0086], note that if the key pens 1700, 1800 are reversed with the positioning holes 120, 140, the limitation is met), the second plane intersecting the first key pen and the liquid channel (fig. 5B, note that many planes could meet this limitation); Final Act. 4 (citing Koizumi Fig. 8) (emphasis added). Appellant’s arguments are persuasive of reversible Examiner error. Koizumi discloses ink cartridge 100 including front wall surface F1 onto which positioning hole 120 and guiding hole 140 are formed to line up with reciprocating positioning pin 1700 and guiding pin 1800 in holder body 1100 when cartridge 100 is inserted therein. Koizumi ¶¶ 63-67, Figs. 5A, 7, and 8. We agree with Appellant that the Examiner’s proposed modification of Koizumi to thereby reverse the positions of the disclosed pins and holes to support the anticipation rejection of claim 1 is erroneous. Appeal Br. 9. That is, the proposed modification of Kozumi’s teachings is tantamount to supplementing the cited teachings with knowledge available to the ordinarily-skilled artisan, and thereby vitiates the essence of anticipation, which requires using a single reference to support the rejection. Id. (quoting Topliff v. Topliff, 145 U.S. 156, 161 (1892)). Further, we agree with Appellant that because stage member 1750 is not part of front wall surface F1 corresponding to the front push area of cartridge 100, it does not describe the base thereof. Id. at 13. Because Appellant shows at least one reversible error in the Examiner’s anticipation rejection of independent claim 1, we do not reach Appeal 2022-001158 Application 16/764,938 8 Appellant’s remaining arguments. Accordingly, we do not sustain the Examiner’s anticipation rejection of independent claim 1. Similarly, we do not sustain the rejections of claims 2, 7, 13-15, 34, 66, 68-70, 74 and 75, which also recite the disputed limitations. 2. Obviousness Rejections Regarding claims 21, 23, 25, 29, 30, 50 and 73, Appellant reiterates the argument previously submitted for patentability of claim 1. Appeal Br. 9. As discussed above, the arguments are persuasive. Consequently we do not sustain the Examiner’s rejection of claims 21, 23, 25, 29, 30, 50 and 73 for the foregoing reasons. VI. CONCLUSION We reverse the Examiner’s rejections of claims 1, 2, 7, 13-15, 21, 23, 25, 29, 30, 34, 50, 66, 68-70, and 73-75. Appeal 2022-001158 Application 16/764,938 9 VII. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 7, 13- 15, 34, 66, 68-70, 74, 75 102 Koizumi 1, 2, 7, 13- 15, 34, 66, 68-70, 74, 75 21, 23, 25, 29, 30 103 Koizumi, Ohashi 21, 23, 25, 29, 30 50 103 Koizumi, Kubo 50 73 103 Koizumi, Seino 73 Overall Outcome 1, 2, 7, 13- 15, 21, 23, 25, 29, 30, 34, 50, 66, 68-70, 73- 75 REVERSED