Ex Parte Feinn et al

Patent Trial and Appeal Board

Dec 6, 2016

13634753 (P.T.A.B. Dec. 6, 2016)

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.
13/634,753 09/13/2012 James A. Feinn 83113650 1295
22879
HP Tnr
7590 12/08/2016 EXAMINER
3390 E. Harmony Road
Mail Stop 35
WILSON, RENEE I
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES A. FEINN, DAVID P. MARKEL,
ALBERTO NAGAO, THOMAS R. STRAND, PAUL A. RICHARDS,
LAWRENCE H. WHITE, and ERIK D. TOMIAINEN
Appeal 2015-004914
Application 13/634,753
Technology Center 2800
Before TERRY J. OWENS, JULIA HEANEY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—15 of Application 13/634,753
under 35 U.S.C. § 112, second paragraph, as indefinite, claims 1—3, 5, 7—10,
and 12—15 under 35 U.S.C. § 102(b) as anticipated, and claims 4, 6, and 11
under 35 U.S.C. § 103(a) as obvious. Final Act. (May 8, 2014). Appellants1
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.
1 Hewlett-Packard Development Company, LP, is identified as the real party
in interest. Appeal Br. 2.
Appeal 2015-004914
Application 13/634,753
BACKGROUND
The present application generally relates to inkjet printing. More
specifically, it describes a nozzle for an inkjet printer having an aperture
through which ink is ejected having a first segment defined by a first
polynomial equation and a second segment defined by a second polynomial
equation. Spec., Abst. The Specification indicates that “inkjet nozzles
which have a smooth profile with one or more protrusions into the center of
the nozzle aperture reduce velocity differences within the ejected droplet and
leverage viscous forces to prevent the droplet from being tom apart.” Spec.
4,118. The claims require that the shape of the aperture be “mathematically
smooth.” Appeal Br. 20—22 (Claims App.)
Claim 1 is representative of the pending claims and is reproduced
below:
1. An inkjet nozzle comprising an aperture having a first
segment defined by a first polynomial equation and a second
segment defined by a second polynomial equation; in which
shape of the aperture is mathematically smooth.
Id. at 20.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1—15 are rejected under 35U.S.C. § 112, second
paragraph, as indefinite. Final Act. 3.2
2 The Final Action dated May 8, 2014, is unpaginated. For convenience, we
adopt the convention employed by Appellants and designate form PTOL-
90A as page 1 and proceed as though the following pages were numbered
sequentially.
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Application 13/634,753
2. Claims 1—3, 5, 7—10, and 12—15 are rejected under 35 U.S.C. §
102(b) as anticipated by Weber et al. (US 6,527,369 Bl, iss. Mar. 4, 2003)
(“Weber”). Id. at 4.
3. Claims 4, 6, and 11 are rejected under 35 U.S.C. § 103(a) as
obvious over Weber in view of Murakami et al. (US 7,506,962 B2, iss. Mar.
24, 2009). Id. at 8.
DISCUSSION
Rejection 1. The Examiner rejected claims 1—15 as indefinite. The
Examiner determines that the limitation requiring the shape of the aperture
be “mathematically smooth” is ambiguous and, thus, the claims fail to
particularly point out and distinctly claim the subject matter which the
inventors regard as the invention. Final Act. The Examiner notes that the
Specification discloses that “the term ‘mathematically smooth’ refers to a
class of functions which have derivatives of all applicable orders,” Spec. 9,1
36, but indicates that such definition leaves substantial ambiguity, as
follows:
How is the shape or perimeter mathematically smooth? Is the
shape of the aperture being defined by functions, other than the
first and second polynomial equation, such as the class of
function which have derivatives of all applicable orders? What
are all the applicable orders of the class of functions? What
function is being used to define a "mathematically smooth"
shape, for example is it a smooth function, a spline function or a
bump function? . . . Are only portions of the closed shape
polynomial being used to have a mathematically smooth shape?
Final Act. In their Reply Brief, Appellants argue as follows:
the class of functions used to define a mathematically smooth
perimeter of the aperture is differentiable for all orders in its
domain. This definition, therefore, requires that at every point
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Application 13/634,753
along the shape of the aperture, the function defining that shape
must be differentiable and therefor[e] smooth.
Reply Br. 5. Thus, Appellants indicate that “differentiable for all orders”
means that the function must be able to be differentiated at every point that
defines the aperture. This limitation does not greatly circumscribe the claim
as “[m]ost functions that occur in practice have derivatives at all points or at
almost every point.” See https://en.wikipedia.org/wiki/Differentiable
_function. It does, however, appear to be well-defined. See, generally,
http://www-math.mit.edu/~djk/calculus_beginners/chapter09/section02.
html (“Non-Differentiable Functions”).
In view of the foregoing, we do not sustain the rejection on the basis
of indefmiteness.
Prematurity
Appellants additionally argue that the present record is not fully
developed and that “the final Office Action has prematurely cut off
Appellant from responding to the references cited in a proper manner.”
Appeal Br. 13. This is not properly appealable:
Any question as to prematureness of a final rejection
should be raised, if at all, while the application is still pending
before the primary examiner. This is purely a question of
practice, wholly distinct from the tenability of the rejection. It
may therefore not be advanced as a ground for appeal, or made
the basis of complaint before the Patent Trial and Appeal
Board. It is reviewable by petition under 37 CFR 1.181.
MPEP § 706.07(c) (citing MPEP § 1002.02(c)).
Rejection 2. The Examiner rejected claims 1—3, 5, 7—10, and 12—15
as anticipated by Weber. Appellants allege error in the Examiner’s findings
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Application 13/634,753
that Weber teaches an aperture defined by “a first polynomial equation and a
second segment defined by a second polynomial equation,” and that the
apertures of Weber are “mathematically smooth.” Appeal Br. 11—13.
Appellants assert that the oval and elliptical shapes of Weber’s
Figures 8 and 9 are defined by a single equation and therefore do not
anticipate the present claims. Appeal Br. 11; Reply Br. 7. Appellants
further assert that Figure 10 of Weber is not “mathematically smooth”
because it has a teardrop shape that includes a “cusp.”3 Appeal Br. 12;
Reply Br. 7—8. In a similar vein, Appellants contend that Figure 11 of
Weber is not mathematically smooth because it defines a two-cusped
geometry. Appeal Br. 12.
Weber defines a cusp as a sharply curving portion of the aperture:
It is a feature of the present invention that the orifices be provided
a cusp or sharp radius of curvature as viewed from the orifice
plate surface. A preferred embodiment of such a cusped orifice
is shown in the orifice plate plan view of FIG. 10. The opening
1001 of the orifice on the orifice plate outer surface has at least
one axis of asymmetry . . . thereby providing one end of the
orifice with a sharper radius of curvature than the other. The
asymmetric, non-circular orifice has a localized area of high
radius of curvature (a cusp) which attracts the ink-jet tail
regardless of orifice orientation over the ink refill channel.
Weber, 6:33—47 (emphasis added). Weber further describes an alternative
embodiment of a cusped shape:
An alternative embodiment of a cusped orifice is shown in
the orifice plate outer surface plan view of FIG. 11. A two-
cusped geometry orifice 1101, crescent moon-shaped, and
3 Appellants briefly assert, without support, that the apertures of Figures 10
and 11 are not defined by a first and a second polynomial. Appeal Br. 12.
This is insufficient to present an issue for appeal. 37 C.F.R. § 41.37(c)(iv).
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Application 13/634,753
having an axis of asymmetry 1103 perpendicular to an axis of
symmetry 1005.
Id. at 6:51—55.
In mathematics, a cusp is defined as “a point at which two branches of
a curve meet such that the tangents of each branch are equal.” See
http://mathworld.wolfram.com/Cusp.html. Review of the figures of Weber
indicates that this is not the case for at least Figure 11. Moreover, Weber
additionally teaches an “egg-shaped” aperture. Weber, Abstract; 8:9—12.
An egg-shaped aperture does not include two branches of a curve that meet
such that the tangents of each branch are equal. Accordingly, we find no
error in the Examiner’s finding that Weber teaches a mathematically smooth
aperture.
Appellants rely on the same arguments discussed above in support of
their contention that claim 12 is not anticipated. Appeal Br. 14—15. Those
arguments are found not to be persuasive for the reasons set forth above.
Claims 14 and 15
The Examiner further rejected claims 14 and 15 as anticipated by
Weber. Final Act. 7—8. These claims each require “a pair of opposed
lobes.” In the Final Rejection, the Examiner cited to Figure 11, element
1101 of Weber as teaching such lobes. Id. at 7. The Appellants assert that
this is insufficient and that they are “left wondering what elements in Weber
are being used to reject this subject matter as well as how these elements in
Weber, if present, are being used in such a rejection,” and, as a consequence,
the Examiner has failed to show a prima facie case of anticipation. Appeal
Br. 16.
“[T]he PTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies 35 U.S.C. § 132, in ‘notifying] the applicant
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... by stating the reasons for [its] rejection, or objection or requirement,
together with such information and references as may be useful in judging of
the propriety of continuing the prosecution of [the] application.’” In re
Jung, 637 F.3d 1356 (Fed. Cir. 2011) (citing 35 U.S.C. § 132). Here, the
Examiner cited to a specific element of a specific figure of a cited prior art
reference to satisfy the “lobe” limitation. This notifies the applicant of the
basis of the rejection and satisfies the procedural burden of establishing a
prima facie case.
The Examiner explained such finding further in the Answer: “[b]ased
on the Examiner's understanding of a lobe to be a curved or rounded part of
an object, the first lobe defined by a polynomial equation is the area of the
aperture to the right of the major axis and the second lobe is the area of the
aperture to the left of the major axis.” Answer 6. In response, Appellants
argue only that, even if the Examiner is correct in this regard, Weber still
fails to disclose first and second polynomial equations and a mathematically
smooth outline. Reply Br. 10. Accordingly, the Examiner has presented an
adequate prima facie case. Appellants’ remaining arguments regarding these
claims are addressed above.
Claims 8 and 9
The Appellants also allege error in the rejection of claims 8 and 9.
Appeal Br. 17—18. Claim 8 depends from claim 1 and further requires that
the first polynomial equation be in the form (DX2 + CY2 + A2)2 — 4A2X2 =
B4. Id. at 21 (Claims App.). Claim 9 depends from claim 8 and includes the
additional limitation that the second polynomial equation be in the same
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form but have different constants. Id. In rejecting claims 8 and 9, the
Examiner found as follows:
Figures 8-11 disclose different geometries for an orifice aperture,
the shapes of the orifice apertures are defined by polynomials
that follow known mathematical properties as evidenced by
Zwillinger, CRC Standard Mathematical Tables and Formulae,
30th Edition, CRC Press 1995 Figure 4.8.23.
Final Act. 6.
Appellants argue that the Examiner has failed to make out a prima
facie case as the rejection does not indicate “which, if any, of the apertures
are defined by the specific polynomial equation.” Appeal Br. 17. This is in
error. The Examiner cites to Figures 8 through 11 in support of the finding.
Final Act. 6. The natural interpretation of the Examiner’s finding is that
each of Figures 8 through 11 is considered to embody equations of the form
at issue.
Appellants further argue that the Examiner has failed to show where
Weber teaches that the constants A, B, C, and D, as used in the stated
equations, define segments that differ from one another. Id. at 18. This is in
error. As Appellants note in their Reply Brief, if the function is of the same
form and has the same constants, there would be “each function overlapping
at every point the other function.” Reply Br. 7. Weber does not teach such a
function.
Here, the Examiner had a sound basis for believing that the apertures
of Weber were of the defined form. “[Wjhen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.” In re Spada, 911 F.2d
705, 708 (Fed.Cir.1990). Such a burden-shifting framework is fair because
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of “the PTO's inability to manufacture products or to obtain and compare
prior art products.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Rejection 3. The Examiner rejected claim 11 as obvious in view of
Weber, Final Act. 8, and claims 4 and 6 as obvious over Weber in view of
Murakami, id. at 9. Appellants briefly state that these rejections are
erroneous “for at least the same reasons given above in favor of the
patentability of independent claim 1.” Appeal Br. 18. The arguments
presented regarding claim 1 have been found not to be persuasive.
Accordingly, Appellants have not shown error in the rejection of claims 4, 6
and 11.
CONCLUSION
The rejection of claims 1—15 as indefinite is not sustained. The
rejection of claims 1—3, 5, 7—10, and 12—15 as anticipated, and of claims 4,
6, and 11 as obvious is sustained. Accordingly, the rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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