Ex Parte Kubo

Patent Trial and Appeal BoardDec 18, 2012

11028897 (P.T.A.B. Dec. 18, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/028,897 01/03/2005 Tomoyuki Kubo 135414-2031 3388 20999 7590 12/18/2012 FROMMER LAWRENCE & HAUG 745 FIFTH AVENUE- 10TH FL. NEW YORK, NY 10151 EXAMINER LEGESSE, HENOK D ART UNIT PAPER NUMBER 2861 MAIL DATE DELIVERY MODE 12/18/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TOMOYUKI KUBO ____________ Appeal 2010-004123 Application 11/028,897 Technology Center 2800 ____________ Before DENISE M. POTHIER, JOHN A. EVANS, and JENNIFER L. MCKEOWN, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-15 and 18-23. Claims 16 and 17 have been canceled. App. Br. 4.1 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Throughout this opinion, we refer to the Appeal Brief filed July 2, 2009, the Examiner’s Answer mailed October 29, 2009, and the Reply Brief filed December 18, 2009. Appeal 2010-004123 Application 11/028,897 2 Invention Appellant’s invention relates to an ink-jet recording apparatus. See Abstract. Claim 1 is reproduced below with a disputed limitation emphasized: 1. An ink-jet recording apparatus comprising: a recording head which discharges inks of a plurality of colors onto a recording medium to perform recording and which is formed with a plurality of nozzle arrays for jetting the inks of the plurality of colors respectively, each of the nozzle arrays including a plurality of nozzles arranged in a first direction; a flexible wiring member which extends from the recording head in a second direction perpendicular to the first direction and which includes a plurality of wiring groups each of which is associated with one of the plurality of nozzle arrays; a head holder which holds the recording head; and a driving circuit which is arranged directly on the flexible wiring member and which outputs a driving signal to discharge the ink from the nozzles; wherein a nozzle array of the nozzle arrays which jets an ink of a first color of the plurality of ink colors, is arranged in the recording head farther from the driving circuit than a nozzle array of the nozzle arrays which jets an ink of a second color of the plurality of ink colors, the first color being darker than the second color; wherein the second color is not black; and wherein the driving circuit on the flexible wiring member is held in the head holder together with the recording head. The Examiner relies on the following as evidence of unpatentability: Saito US 4,540,996 Sept. 10, 1985 Horikoshi US 6,315,387 B1 Nov. 13, 2001 Armijo US 6,352,331 B1 Mar. 5, 2002 Yamada US 2002/0105567 A1 Aug. 8, 2002 Dietl US 6,478,398 B2 Nov. 12, 2002 Suzuki US 2003/0063449 A1 Apr. 3, 2003 Appeal 2010-004123 Application 11/028,897 3 The Rejections The Examiner rejected claims 1-4, 10, 11, 15, 18, 19, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Saito and Armijo. Ans. 3-10. The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Saito, Armijo, and Dietl. Ans. 10-11. The Examiner rejected claims 7 and 12 under 35 U.S.C. § 103(a) as unpatentable over Saito, Armijo, and Yamada. Ans. 11. The Examiner rejected claims 8, 9, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over Saito, Armijo, and Horikoshi. Ans. 12-13. The Examiner rejected claims 18-21 under 35 U.S.C. § 103(a) as unpatentable over Saito, Armijo, and Suzuki. Ans. 13-14. THE OBVIOUSNESS REJECTION OVER SAITO AND ARMIJO Regarding independent claim 1, the Examiner finds that Saito teaches a driving circuit (25, 26) which is arranged directly on the flexible wiring member (24). Ans. 4, 15. Appellant argues, among other things, that the Saito’s driver circuit (i.e., 26) is arranged on the terminal block 25 and is not directly on the flexible wiring member as recited. App. Br. 15; Reply Br. 15. Appellant contends that terminal block 25 serves as an indirect means of connecting the driver printed circuit board 26 to the flexible writing board 24. Reply Br. 16-18, 24-25. ANALYSIS Based on the record before us, we find error in the Examiner’s rejection of independent claim 1 which calls for a driving circuit which is Appeal 2010-004123 Application 11/028,897 4 arranged directly on the flexible wiring member. During examination of a patent application, claim limitations are given their broadest reasonable construction in light of the disclosure. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). As such, we turn to the Specification for a better understanding of the phrase, “arranged directly on the flexible wiring member . . . .” As Appellant notes (Reply Br. 25-27), the Specification shows various figures with a driver circuit (e.g., 33a, b) arranged directly on a flexible wiring member (e.g., 27a, b). For example, Figure 2 shows and describes driving circuit 33a connected to a flexible wiring member 27a. See Spec. ¶ 0035; Fig. 2. There is no intervening structure between these components. Similarly, the disclosure states, “. . . IC chips 33a, 33b that are internally installed with driving circuits carried on the respective flexible wiring boards 27a, 27b . . . .” Spec. ¶ 0035, ll. 5-7. Figure 4 also shows the arrangement with no structure between the driver circuit 33a and the flexible wiring member 27a. See Fig. 4. Based on this disclosure, we find that claimed phrase, “arranged directly on,” can broadly but reasonably be construed as an arrangement that has no intervening structure. Moreover, the ordinary and customary meaning, the word, “direct,” supports this interpretation. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). That is, “direct” is defined as “stemming immediately from a source” or “marked by absence of an intervening agency, instrumentality, or influence.”2 2 Merriam-Webster’s Online Dictionary, 11th ed., available at http://www.merriam-webster.com/dictionary/direct (adjective definitions [2a] and [5a]) (last visited December 11, 2012). Appeal 2010-004123 Application 11/028,897 5 We now turn to Saito. The Examiner maps that the terminal block 25 and driver printed circuit board 26 to the recited “driving circuit.” See Ans. 4, 15. Because the flexible power supply cables 24 are directly arranged on the terminal block 25 (see Fig. 2), the Examiner concludes that Saito teaches the driving circuit arranged directly on the flexible writing member as recited. See Ans. 15. However, based on our understanding of “arranged directly on,” we find this interpretation unreasonably broad. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260-61 (Fed. Cir. 2010). Saito describes and shows the terminal block 25 connects the flexible power supply cables 24 to a driver printed circuit board 26 and is an intermediate structure between cables 24 and circuit 26. Col. 3, ll. 36-38; Fig. 2. We therefore agree with Appellant (see App. Br. 15-18; Reply Br. 15-18) that the terminal block 25 is an intervening member between the flexible wiring member 24 and the driving circuit 26. The Examiner states that the driving circuit element 26 “inherently requires a connection means such as 25 in order to make the necessary connections between the driver circuit 26 and the flexible wiring member[.]” Ans. 4. This statement is somewhat puzzling, because it provides further evidence that Saito needs to have an intervening structure between the driving circuit and the flexible writing member, such that the driving circuit is not arranged directly on the flexible wiring member but rather spaced from the flexible wiring member. See Figure 2. Also, to the extent the Examiner is attempting to argue that Saito’s driving circuit requires some sort of connector to complete the driving circuit (see Ans. 4), we agree with Appellant (App. Br. 16) that the Examiner has provided an insufficient factual basis or reasoning to support this position. See Ans. 4, 15. Appeal 2010-004123 Application 11/028,897 6 The Examiner states that “[e]lement 25 is used to connect 26 and transmit[s] electrical signals to the flexible wiring member FWM . . . .” Ans. 15. While it may be true that the terminal block 25 in Saito electrically connects the flexible wiring member to the driving circuit, the Examiner has not stated or demonstrated sufficiently that this electrical connection created by the terminal block is necessarily part of the driving circuit and thus any connection to the driver printed circuit board is necessarily part of the driving circuit. See Ans. 4, 15. Whether such an arrangement combining these structures to form a complete driving circuit would have predictably yielded no more than an ordinarily skilled artisan would have expected is not before us. See id. Nor will we engage in such an inquiry in the first instance on appeal. For the foregoing reasons, Appellant has persuaded us of error in the rejection of: (1) independent claim 1; (2) independent claim 11, which recite commensurate limitations; and (3) dependent claims 2-4, 10, 15, 18, 19, 22, and 23 for similar reasons. THE REMAINING REJECTIONS Claims 5-9, 12-14, and 18-21 depend directly or indirectly from independent claims 1 and 11. The Examiner finds that Saito, Armijo, and at least one other reference teach all the limitations in these claims. The Examiner has not relied on the other references (i.e., Dietl, Yamada, Horikoshi, Suzuki) to cure the above-noted deficiency of claims 1 and 11. See Ans. 8-14. Thus, because we reverse the Examiner’s rejection of independent claims 1 and 11, we likewise will not sustain the rejections of claims 5-9, 12-14, and 18-21. Appeal 2010-004123 Application 11/028,897 7 CONCLUSION The Examiner erred in rejecting claims 1-15 and 18-23 under § 103. DECISION The Examiner’s decision rejecting claims 1-15 and 18-23 is reversed. REVERSED rwk