Ex Parte Rittgers et al

Patent Trial and Appeal BoardMar 16, 2017

12065252 (P.T.A.B. Mar. 16, 2017)

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. 12/065,252 07/22/2008 Jon Rittgers 82213604 7699 22879 HP Tnr 7590 03/20/2017 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 03/20/2017 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 JON RITTGERS and EDUARDO MACIAS Appeal 2014-003447 Application 12/065,2521 Technology Center 2800 Before MICHELLE N. WORMMEESTER, TERRENCE W. McMILLIN, and KAMRAN JIVANI, Administrative Patent Judges. JIVANI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1—10, 14, and 18, which are all the claims pending in the present application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify Hewlett-Packard Development Company, LP, Hewlett-Packard Company, and HPQ Holdings, LLC as the real parties in interest. App. Br. 1. Appeal 2014-003447 Application 12/065,252 STATEMENT OF THE CASE The present application relates to ink cartridges such as the ink cartridges used in printers. Spec. 1. Claim 1 is illustrative and reproduced below with bracketed material, emphasis, and spacing added: 1. An ink cartridge, comprising: a container comprising a first region containing a liquid ink and a second region containing a non-ink liquid, wherein the first and second regions of the container are separated by a liquid-free region to prevent mixing of the liquid ink and the non-ink liquid, and [LI] the container allows vapor resulting from evaporation of the liquid ink and the non-ink liquid in the container to escape from the container at a non-zero vapor transmission rate; and a single extraction mechanism for extracting the liquid ink from the first region of the container, wherein the extraction mechanism is adjacent and in direct fluid communication with the first region and is separated from and not in direct fluid communication with the second region. The Rejections Claims 1,2, and 14 stand rejected under 35 U.S.C. § 102(b) as anticipated by Chan (US 5,113,199; May 12, 1992). Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Chan and Higuma (US 6,137,512; Oct. 24, 2000). Claims 4—10 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Chan and Hashimoto (US 5,971,530; Oct. 26, 1999). 2 Appeal 2014-003447 Application 12/065,252 ANALYSIS Anticipation The Examiner finds Chan’s membrane 43 meets limitation LI because an “inherent characteristic of the Teflon, Nylon and Gortex” comprising the membrane is “a vapor transmission rate that is not zero,” which “allows air to flow across the membrane [and thus] . . . evacuation of vapors inside of the container.” Ans. 9; Final. Act. 2, 7—8. Appellants contend membrane 43 cannot meet limitation LI because it “operates as a one-way valve with respect to air flow.” App. Br. 6 (citing Chan, 4:37—38); Reply Br. 3. A claim is anticipated only if each and every element as set forth in the claims is found, either expressly or inherently described in a single prior art reference. Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “The identical invention must be shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). “It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). The Examiner bears 3 Appeal 2014-003447 Application 12/065,252 the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254—55 (CCPA 1977); see also Crown Operations Int’l, LTD v. Solatia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). The Examiner meets this “burden of production by ‘adequately explaining] the shortcomings it perceives so that the applicant is properly notified and able to respond.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)). The burden of proof then shifts to the applicant “to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” Best, 562 F.2d at 1254—55; In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that once the Examiner established a prima facie case of anticipation, the burden of proof was properly shifted to the inventor to rebut the finding of inherency). In light of the principles above, we are persuaded that the Examiner fails in the record before us to carry the burden of providing reasonable proof that the materials used in constructing membrane 43 would inherently meet limitation LI. Limitation LI requires allowing vapor to escape. Chan describes membrane 43 as “constructed of nonwettable (i.e., hydrophobic) polymer material” that allows “air to flow across the membrane into the pressure regulating compartment 40 while preventing liquid from flowing in the opposite direction across the membrane.” Chan, 4:23—36. Thus, Chan readily describes airflow into—but not out of—compartment 40 across membrane 43. In order to meet limitation LI, Chan would need to disclose not only airflow out of compartment 40, but also liquid suspended within that outgoing airflow (i.e. vapor). The Examiner makes no such finding in 4 Appeal 2014-003447 Application 12/065,252 the record before us. As Appellants correctly assert, Chan describes the opposite: “The pore size of the membrane 43 is . . . small enough to prevent liquid from flowing through the membrane.” Chan, 4:38-42. Moreover, limitation LI specifically requires allowing vapor “resulting from evaporation of the liquid ink and the non-ink liquid” to escape, but compartment 40 contains only non-ink liquid “such as deionized water or diethylglycol, DEG.” Chan, 4:15. Therefore, we determine the Examiner has not established that Chan “necessarily functions in accordance with, or includes, the claimed limitations, it [allegedly] anticipates.” See In re Cruciferous Sprout Litig., 301 F.3d at 1349. Accordingly, we do not sustain the Examiner’s rejection of independent claim 1 and its dependent claim 2. The Examiner further relies on the findings discussed above in the context of claim 1 as meeting the following limitation of independent claim 14: “the container allows vapor resulting from evaporation of the liquid ink and the non-liquid in the container to escape from the container at a non-zero vapor transmission rate.” Ans. 11; Final Act. 3. For the reasons discussed above, we do not sustain the Examiner’s rejection of independent claim 14. Obviousness The Examiner relies on the findings discussed above in the context of claim 1 as meeting the limitations of claim 1 incorporated into dependent claim 3. Final Act. 4. The Examiner does not rely on Higuma to repair the deficiencies of the analysis with respect to claim 1. Id. Having not sustained the Examiner’s rejection of claim 1, we similarly do not sustain the Examiner’s rejection of dependent claim 3 for the reasons discussed above. 5 Appeal 2014-003447 Application 12/065,252 Independent claim 4 recites in relevant part, “a third region of the porous material that is free of the liquid ink and free of the non-ink liquid.” Relying on the Specification, the Examiner finds, “the claim is being interpreted such that the third region that is free of liquid ink and free of non-ink liquid exists when the container is first filled, and when the container is in use the third region has trace amounts of liquid ink and non ink liquid.” Ans. 13 (citing Spec. 11—12). We have reviewed the cited portions of the Specification and do not find therein adequate support for the Examiner’s claim construction. We apply the broadest reasonable interpretation of claim terms, consistent with the specification, as would be understood by one of ordinary skill in the art. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Here, we see no reason to limit the claimed third region to existing only when the container is first filled, as the Examiner does. Moreover, even if we were to so construe the claim language, the Examiner’s findings nevertheless fail to meet the claim language because, as Appellants argue, “Hashimoto teaches that that when the ink compartments 4a-4e are filled with ink the third region identified by the Examiner also is filled with ink and when the ink compartments 4a-4b are emptied of ink both the second and third regions identified are saturated with water vapor.” Reply. Br. 6—7 (citing Hashimoto, 6:46—54). Accordingly, we do not sustain the Examiner’s rejection of independent claim 4 and its dependent claims 5— 10. The Examiner further relies on the findings discussed above in the context of claim 4 as meeting a commensurate limitation in independent 6 Appeal 2014-003447 Application 12/065,252 claim 18. Ans. 17—18; Final Act. 7. For the reasons discussed above, we do not sustain the Examiner’s rejection of independent claim 18. DECISION We reverse the Examiner’s rejections of claims 1—10, 14, and 18. REVERSED 7