Ex Parte Santini et al

Patent Trial and Appeal Board

May 28, 2014

10559772 (P.T.A.B. May. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte Sergio Santini et al.

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Appeal 2012-003705
Application 10/559,772
Technology Center 3700
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Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and
LYNNE H. BROWNE, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection dated
21 October 2010 (“Rej.”), wherein the Examiner rejected claim 1 under 35 U.S.C.
§ 102(b) over Okamoto (US 5,227,510, issued January 11, 1994), and rejected
claims 1, 4, and 8 under 35 U.S.C. § 102(b) over Fukushima (US 6,220,774, issued
April 24, 2001). We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
According to Appellants, the invention relates to ball-point pens, which
comprise an ink reservoir communicating with a hole, connected to the capillary
channel of a tip. App. Br. 6. Claim 1, reproduced below, is illustrative:
1. A ball-point pen (1,11) comprising:
a tip (4);
a capillary channel (3) within the tip;
a hole (10) within the tip and connected to the capillary
channel;
a reservoir (2) communicating with the hole (10) connected to
the capillary channel (3) of the tip (4);
a ball (5) for writing, the ball located with the tip;
a cavity (9) which seats the ball (5) for writing, the cavity
having a retaining edge (9t);
a compression-resilient spring (6) extending through the hole
and terminating in a straight portion (6r), which straight portion is
aligned with the longitudinal axis (N-N) of the ball-point pen (1), the
straight portion having a free end (6p) in contact with the ball (5),
the ball (5) kept pressed against the retaining edge (9t) of the
cavity (9) as a result of the thrust of a compression-resilient spring (6);
a narrow section of a locally radially decreased cross-section
(7,7') within the capillary channel coming into contact with the
straight portion (6r) of the spring (6),
the narrow section (7, 7') preventing the straight portion of the
spring from becoming inclined with respect to the longitudinal axis
(N-N) of the ball-point pen (1), the narrow section (7,7') which, being
passed through in the axial direction by the straight portion (6r) of the
spring (6), is dimensioned such as to contain said
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straight portion in an approximately complementary manner with a
minimum amount of play, substantially preventing said straight
portion from assuming inclined positions with respect to the
longitudinal axis (N-N),
wherein said straight portion (6r) consists of only a single
straight portion extending from a distalmost end in contact with the
ball (5) towards a coiled portion (6) of the spring, the entire single
straight portion being located on the longitudinal axis (N-N) of the
ball-point pen (1); and
a radial through-groove (8i) connecting the cavity seating the
ball to hole, the radial through-groove being outside the narrow
section (7,7') containing the straight portion.

ISSUES
1. Did the Examiner err in construing the claim term “capillary channel”?
2. Did the Examiner err in rejecting claim 1 over Okamoto?
3. Did the Examiner err in rejecting claims 1, 4, and 8 over Fukushima?

ISSUE 1
Appellants argue that the Examiner improperly construed the term “capillary
channel.” App. Br. 14. Appellants do not provide an explicit claim construction
for this term, but rather argue that “capillary channel” requires a “capillary effect”
or “capillary action.” See, e.g., App. Br. 21 (“If there is no capillary effect, the
element cannot be said to be a capillary channel.”)
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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In this case, the specification does not provide an explicit definition for
“capillary channel.” In fact, the specification does not meaningfully discuss the
capillary channel, aside from which structures it contains or is connected to. See,
e.g., Spec. 3 (“an ink reservoir . . . communicating with a cylindrical hole 10
connected to a capillary channel 3 of a tip 4”), 4 (“creating in the capillary channel
3 a cylindrical narrow section 7”) 1. The Examiner therefore turned to dictionary
definitions to determine that the broadest reasonable interpretation of the term
“capillary channel” is “a channel comprised of a very small or fine bore.”
Advisory Action dated 04 April 2011 at 2; accord Spec. 1 (“the dimensions of the
various component parts named hitherto are, as is known, very small”).
Appellants argue that the Examiner’s construction is inconsistent with the
specification. App. Br. 11-14. However, Appellants do not point to any specific
disclosure in the specification from which the Examiner’s proposed construction is
inconsistent. Appellants further argue that the Examiner’s construction is
inconsistent with the interpretation that those skilled in the art would reach having
read the specification. App. Br. 16-18. However, Appellants’ arguments are
unsupported by affidavit or evidence concerning the interpretation of a person
having ordinary skill in the art. Appellants’ arguments, therefore, do not persuade
us that the Examiner’s proposed construction of “capillary channel” is not
commensurate with the broadest reasonable interpretation. Indeed, the Examiner’s
construction comports with the disclosure in the Specification, which states that the
various components at the tip end of the pen are “very small.” Spec. 1. We
therefore adopt the Examiner’s proposed construction of “capillary channel” as “a
channel comprised of a very small or fine bore.”

1 Citations to the specification are of the originally filed specification of Dec. 7,
2005.
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ISSUE 2
Appellants argue that the anticipation rejection of claim 1 over Okamoto is
improper. App. Br. 11-14, and 16-18. Appellants argue that the claimed “capillary
channel” does not read on element 21 (“fluid path 21” shown in Fig. 2) of
Okamoto because “[e]lement 21 doesn’t have any capillary effect, since its
diameter is too big.” App. Br. 13. However, claim 1 does not recite a “capillary
effect,” and we explained above that Appellants’ proposed construction of
“capillary channel” as requiring a “capillary effect” is not consistent with the
broadest reasonable interpretation of “capillary channel.” Appellants’ argument is
therefore unpersuasive.2 We are not apprised of error in the Examiner’s findings
that the “capillary channel” of claim 1 reads on the “fluid path” 21 of Okamoto,
and the “narrow section . . . within the capillary channel” of claim 1 reads on
central bore 23. Rej. 2-3.
Appellants further argue that the Examiner erred by finding that the “hole
within the tip and connected to the capillary channel” in claim 1 reads on element 3
of Okamoto. App. Br. 15-16. However, the Examiner did not merely point to
element 3, but to “the hollow interior of element 3.” Rej. 2. As can be seen from
Fig. 3 of Okamoto, the hollow interior of element 3 is “within the tip” (elements 2
and 3), “connected to the capillary channel” (fluid path 21), and “communicating
with” the reservoir (4), as required by claim 1. Therefore, we are not apprised of
error in the Examiner’s finding the “hole” feature recited in claim 1 is anticipated
by Okamoto.3

2 We further note that the claimed “capillary channel (3)” is shown in FIG. 1 of the
drawings labeled “STATE OF THE ART” and therefore is admitted prior art. See
also Spec. 1 (“As is known, these pens comprise . . . [a] capillary channel.”).
3 We further note that the claimed “hole (10)” is shown in FIG. 1 of the drawings
labeled “STATE OF THE ART” and therefore is admitted prior art. 
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ISSUE 3
Appellants argue that the anticipation rejection of claims 1, 4, and 8 over
Fukushima is improper. App. Br. 19-24. Appellants do not present separate
arguments for the dependent claims, such that we select claim 1 as representative
of claims 4 and 8. Appellants argue that the claimed “narrow section . . . within
the capillary channel” does not read on the ink passage 2g of Fukushima because
“only the portion inside the capillary hole 2g has a diameter small enough so that
there is a capillary effect.” App. Br. 20. However, claim 1 does not recite a
“capillary effect,” and as we explained above, Appellants’ proposed construction
of “capillary channel” as requiring a “capillary effect” is not consistent with the
broadest reasonable interpretation of “capillary channel.” Appellants’ argument is
therefore unpersuasive. We are not apprised of error in the Examiner’s finding that
the “narrow section . . . within the capillary channel” of claim 1 reads on ink
passage 2g of Fukushima where it narrows between 2f and 2h. Rej. 5. Claims 4
and 8 fall with claim 1.

DECISION
We affirm the Examiner’s decision to reject claims 1, 4, and 8.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a)(l)(iv).

AFFIRMED