HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

Patent Trials and Appeals Board

Sep 24, 2020

15329052 - (D) (P.T.A.B. Sep. 24, 2020)

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.
15/329,052 01/25/2017 Xavier Gasso Puchal 84592789 7773
22879 7590 09/24/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
ZIMMERMANN, JOHN P
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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 XAVIER GASSO PUCHAL, GONZALO GASTON LLADO,
MARIAN DINARES ARGEMI, and JEFFREY ALLEN WAGNER
Appeal 2019-006482
Application 15/329,052
Technology Center 2800
Before TERRY J. OWENS, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s June 21, 2018 decision to finally reject claims 1–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Hewlett-Packard Development Company, L.P. (Appeal Br. 2).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a printer with a printhead
comprising a number of nozzles, an immiscible fluid applicator, and a
processor to instruct the immiscible fluid applicator to apply immiscible
fluid onto the printhead to cap the number of nozzles (Abstract). Claim 1 is
representative, and is reproduced below from the Claims Appendix:
1. A printer comprising:
a printhead comprising a number of nozzles;
an immiscible fluid applicator; and
a processor to instruct the immiscible fluid applicator to
apply immiscible fluid to the surface of the printhead to cap the
number of nozzles.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Rhoads et al. US 2002/0171705 A1 November 21, 2002
Rosenstock US 4,148,041 April 3, 1979
Silverbrook et al. US 2006/0250461 A1 November 9, 2006
Le et al. US 4,734,706 March 29, 1988
Suwabe et al. US 6,578,947 B1 June 17, 2003

REJECTIONS
1. Claims 1–15 and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Rhoads.
2. Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable
over Rhoads in view of Rosenstock.
3. Claim 17 is rejected under 35 U.S.C. § 103 as unpatentable
over Rhoads in view of Silverbrook.
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4. Claim 18 is rejected under 35 U.S.C. § 103 as unpatentable
over Rhoads in view of Le.
5. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable
over Rhoads in view of Suwabe.
DISCUSSION
The Examiner finds that Rhoads teaches a printer comprising a
printhead comprising a number of nozzles, an immiscible fluid application,
and a processor to instruct the immiscible fluid applicator to apply
immiscible fluid to the surface of the printhead to cap a number of nozzles
(Final Act. 3–4, citing Rhoads, FIG. 2, ¶¶ 72, 79–82, 92–93). The Examiner
further finds that the only difference between Rhoads and claim 1 is that
Rhoads calls its processor a “printer controller” or “microprocessor” and a
person of skill in the art would have understood that those terms could have
been used interchangeably.
With regards to claim 1, Appellant argues that Rhoads does not
disclose an applicator for applying a fluid to cap a printhead, but instead
provides an application to apply a fluid to clean the printhead (Appeal Br. 9,
citing Rhoads, Abstract, ¶ 19). The Examiner finds that Rhoads discloses
that one function of its treatment fluid “is that a thin film of fluid, which
does not dry, is left on the printhead” (Final Act. 3, citing Rhoads, ¶ 79).
Appellant contends, however that nothing in Rhoads teaches or suggests that
this film of fluid “caps” the nozzles, as recited in claim 1 (Appeal Br. 9).
Appellant provides four reasons why the disclosure of Rhoads does
not teach or suggest that this thin film of fluid caps the nozzles: (1) Rhoads
does not explicitly say so; (2) in order to act as a cap, the fluid would have to
have sufficient surface tension, viscosity and thickness, as set forth the
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Specification, and Rhoads provides no information in this regard; (3) Rhoads
explicitly teaches the use of polyethylene glycol as its treatment fluid, while
Appellant specifically exemplifies the use of isoparaffin; and (4) Rhoads
specifically describes the use of a mechanical capping system suggesting
that the fluid left over on the printheads does not function to cap those
printheads (Appeal Br. 10, citing Rhoads, ¶¶ 80, 115).
In response, the Examiner construes the term “to cap” to mean “to
provide cover with or as if with a cap” (Ans. 6, citing Dictionary.com), and
relies on Rhoads’s disclosure that some treatment fluid is left on the
printheads as satisfying this definition of “to cap.” In addition, the Examiner
also states that the claim limitation “to cap the number of nozzles” is what
the claimed device does, and not what it is, and therefore is not, presumably,
of patentable significance (Ans. 5).
Having considered the arguments and evidence of record, we
determine that the preponderance of the evidence supports Appellant’s
position and, accordingly, we reverse the rejection of claim 1 over Rhoads.
First, as explained by Appellant (Reply Br. 4), the phrase “to cap the
number of nozzles” is a functional feature of the apparatus claim, essentially
describing in a functional manner that the claimed immiscible liquid must
have certain features to permit it to “cap” the nozzles. Thus, the phrase “to
cap the number of nozzles” is patentably significant.
Second, the claims recite that the immiscible fluid must “cap” the
nozzles, meaning that the fluid is “immiscible” with the liquid located in the
nozzles (i.e. the printer ink). Appellant’s Specification specifically states
that an “immiscible fluid” is one which does not mix with another fluid,
such as the printer ink (Spec. ¶ 26). By contrast, Rhoads states that its fluid
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is intended mix with and/or dissolve the ink (Rhoads, ¶ 13). Accordingly,
the evidence of record does not support the Examiner’s determination that
Rhoads’s treatment fluid is an immiscible fluid, as recited in claim 1.
Moreover, as explained by Appellant (Reply Br. 5–6), though Rhoads does
disclose that its treatment fluid remains on the printhead (Rhoads, ¶ 79), that
disclosure does not necessarily mean that the fluid covers the nozzles - as
required by the claim – because the nozzles are essentially holes in the
printhead. The Examiner has not pointed to persuasive evidence that
treatment fluid on the printhead means treatment fluid covers (or caps) the
nozzles. As further explained by Appellant (Reply Br. 6), whether a fluid
could do this would depend on its viscosity, surface tension, thickness etc.
Accordingly, we reverse the rejection of claim 1 over Rhoads, and the
rejection of claims 2–10, each of which depends, either directly or indirectly,
from claim 1. Because claims 15–20 have similar limitations regarding
presence of an immiscible liquid to cap the nozzles, we also reverse the
rejection of those claims over Rhoads, or Rhoads in combination with one of
the secondary references.
With regards to claim 11, Appellant argues that Rhoads does not teach
or suggest a subassembly to wipe a layer of immiscible fluid onto the surface
of a printhead, as recited in the claim (Appeal Br. 12). The Examiner finds
that Rhoads specifically discloses this feature, citing Rhoads’s FIG. 12:
Rhoads et al. teaches a printer subassembly comprising: an
immiscible fluid applicator (Rhoads et al. - Page 5, Paragraphs
75 & 82) to wipe a layer of immiscible fluid [i.e. wiper will first
come in contact with . . . treatment fluid and thereafter wipe
across] onto a surface of a printhead [thin film of fluid . . . is
left on the printhead] (Rhoads et al. - Page 5, Paragraphs 75, 79,
& 82). Figure 12 of Rhoads et al. continues to disclose a
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specific example of an immiscible fluid applicator 146 [i.e.
dosing wiper] to wipe a layer of immiscible fluid 74 onto a
surface of a printhead 30.

(Ans. 9). In response, Appellant argues that Rhoads, for the reasons
discussed above, does not disclose “an immiscible fluid applicator,” but
rather discloses “a solvent applicator” (Reply Br. 9). In this instance, this
argument is not persuasive, as the language of the claims does not provide
any function for the claimed structure.2 Therefore, the nature of the liquid
which might be applied using the claimed applicator is not of patentable
significance.
Accordingly, we sustain the rejection of claims 11–14.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–15, 20 103 Rhoads 11–14 1–10, 15, 20
16 103 Rhoads, Rosenstock 16
17 103 Rhoads, Silverbrook 17
18 103 Rhoads, Le 18
19 103 Rhoads, Suwabe 19
Overall
Outcome
11–14 1–10, 15–20

2 Claim 11 recites: “A printer subassembly comprising: an immiscible fluid
applicator to wipe a layer of immiscible fluid onto a surface of a printhead.”
Thus, it does not recite capping the nozzles, as is recited in the other
independent claims.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART