HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

Patent Trials and Appeals Board

Nov 16, 2021

2020005734 (P.T.A.B. Nov. 16, 2021)

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.
14/770,198 08/25/2015 Chien-Hua Chen 84349628 5995
22879 7590 11/16/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
AMEEN, MOHAMMAD M
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
11/16/2021 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 CHIEN-HUA CHEN, MICHAEL W. CUMBIE, and
ARUN K. AGARWAL
Appeal 2020-005734
Application 14/770,198
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
JENNIFER R. GUPTA, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9 and 11–21. We have jurisdiction
under 35 U.S.C. § 6(b).

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Hewlett-Packard Development
Company, L.P., having a principal place of business at 10300 Energy Drive,
Spring, Texas 77389, U.S.A. (hereinafter “HPDC”). According to Appellant,
HPDC is a Texas limited partnership and is a wholly-owned affiliate of HP
Inc., a Delaware corporation, headquartered in Palo Alto, CA. Appellant
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Application 14/770,198
2
We AFFIRM IN PART.
CLAIMED SUBJECT MATTER
The claims are directed to a process for making a print bar (see, e.g.,
claim 1), a process for making a printhead structure (see, e.g., claim 8), and
a process for making a micro device structure (see, e.g., claim 13). We
reproduce claims 1, 8, and 13 below:
1. A process for making a print bar, comprising:
arranging multiple printhead die slivers on a carrier in a
pattern for a print bar, each die sliver having an inlet through
which fluid may enter the die sliver and a front with orifices
through which fluid may be dispensed from the die sliver, and
the die slivers arranged on the carrier with the front of each die
sliver facing the carrier;
molding a body of material around each die sliver
without covering the orifices on the front of the die sliver;
forming openings in the body at the inlets;
removing the die slivers from the carrier; and
separating groups of die slivers into print bars.
Appeal Br. 20 (Claims Appendix)
8. A process for making a printhead structure, comprising
forming fluid flow channels in a body of material surrounding
multiple printhead dies such that one or more of the channels
contacts a flow passage into each of the dies;
wherein forming the channels in a body surrounding the
dies includes applying a premolding form part of the body to

identifies the general or managing partner of HPDC as HPQ Holdings, LLC.
Appeal Br. 2.
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3
the dies in a pattern defining the channels and then molding
another part of the body around the dies.
Appeal Br. 21 (Claims Appendix).
13. A process for making a micro device structure,
comprising
molding a micro device in a monolithic body of material,
the micro device comprising a die having an integrated circuit
formed on a substrate within the micro device, and forming a
fluid flow passage in the body through which fluid can pass
directly to an exterior surface of the micro device.
Appeal Br. 22 (Claims Appendix).
REJECTIONS
Claims 1–7, 20, and 21 are rejected under 35 U.S.C. § 103 as being
obvious over Ciminelli (US 2011/0037808 A1, published Feb. 17, 2011) in
view of Mostafazadeh (US 5,894,108, issued Apr. 13, 1999). Final Act. 4, 9.
Claims 8, 9, 11, 12, and 16–19 are rejected under 35 U.S.C. § 103 as
being obvious over Ciminelli. Final Act. 7.
Claims 13–15 are rejected under 35 U.S.C. § 102 as being anticipated
over Ciminelli. Final Act. 3.
OPINION
The Rejection of Claims 1–7 as Obvious
In arguing against the rejection of claims 1–7, which the Examiner
rejects as obvious over Ciminelli in view of Mostafazadeh (Final Act. 4),
Appellant focuses on claims 1, 4, and 7 (Appeal Br. 12–16). Thus, we
confine our review to those claims. Claims 20 and 21 are also rejected over
Ciminelli in view of Mostafazadeh, but they depend from claim 13 and we
will discuss their rejection when discussing the rejection of claim 13.
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Claim 1
The Examiner finds that that Ciminelli teaches a process for making a
print bar and cites to Ciminelli’s Figure 11. Final Act. 4. Ciminelli discloses
a step of molding a body of material around printhead die 251 and the
Examiner finds that printhead die is “equivalent to the claimed printhead die
sliver.” Ciminelli ¶ 44; Final Act. 4. The Examiner acknowledges that
Ciminelli fails to use a carrier, but finds a suggestion for using a carrier-
based process in Mostafazadeh. Final Act. 5. The Examiner reasons that it
would have been obvious to a person of ordinary skill in the art to arrange
Ciminelli’s printhead dies on Mostafazadeh’s carrier tape to facilitate an
improved molding process of encapsulation. Final Act. 5. As to the step of
separating groups of die slivers into print bars, the Examiner relies on the
obviousness of duplicating parts. Specifically, the Examiner reasons that:
The forming of groups of printhead dies together to form the
print bar where the dies would be separated from each other is a
matter of multiplicity based on the teaching of individual
encapsulation (molding) of die and removal of tape by
trimming based on individual molding and removal of die from
tape as taught by Mostafazadeh.
Final Act. 5.
Appellant points out that “if Ciminelli and [Mostafazadeh] are
combined, the result is a method of packaging a number of printhead die.”
Appeal Br. 13. We agree. Ciminelli teaches bonding three printhead die 251
to a metalized substrate 270, inserting the die-substrate assembly into a
molding tool, and overmolding a polymer material 280 to form a printhead
with three dies 251 nestled in overmolded polymer. Ciminelli ¶¶ 43–45;
Figs. 9–11. Mostafazadeh, similarly, forms a die on a substrate and
overmolds a polymer over the die-substrate assembly. Mostafazadeh col. 3,
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ll. 28–30. Mostafazadeh mounts a substrate (lead frame 110) and die 120
onto adhesive tape 170, overmolds the polymer, and removes the adhesive
tape carrier. Mostafazadeh col. 3, l. 45–4, l. 14. We agree with the Examiner
that Mostafazadeh provides a suggestion for using Mostafazadeh’s carrier-
type process to form Ciminelli’s overmolded die-substrate assembly as both
the direct molding process of Ciminelli and the carrier-type process of
Mostafazadeh would accomplish the same end, i.e., creating an overmolded
polymer structure on a die-substrate assembly. And, thus, contrary to
Appellant’s arguments (Reply Br. 8–9), the Examiner has not used
impermissible hindsight.
Appellant contends that Ciminelli does not detail the process by which
Ciminelli’s printhead is formed. Reply Br. 7. But we determine Ciminelli
provides sufficient detail to the ordinary artisan as to the process. See
Ciminelli Figs. 10–11 and ¶ 44 (“In overmolding, the metalized substrate
270 plus bonded printhead die 251 is inserted into a molding tool and a
plastic resin or polymer is allowed to flow to some regions, but not to
others.” (bolding omitted)).
Appellant contends that the combination of Ciminelli and
Mostafazadeh “still fails to teach or suggest any of ‘arranging multiple
printhead die slivers on a carrier in a pattern for a print bar,’ and then, after
molding, ‘removing the die slivers from the carrier; and separating groups of
die slivers into [multiple] print bars.’” Appeal Br. 13. But this argument does
not address the Examiner’s determination of obviousness based on what the
Examiner calls “multiplicity.” Final Act. 5. The Examiner’s determination is
supported by caselaw. “It is well settled that the mere duplication of parts
has no patentable significance unless a new and unexpected result is
produced . . . .” In re Harza, 274 F.2d 669, 671 (CCPA 1960). What’s more,
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Ciminelli supports the Examiner’s determination. Ciminelli teaches ganging
together a group of metalized substrates and simultaneously overmolding the
group of parts. Ciminelli ¶ 52. This process implies a step of separation
because the ganged parts must be separated in order to obtain single parts.
In so far as Appellant is arguing that Ciminelli does not separate
groups of die slivers to form print bars, we agree with the Examiner that
Ciminelli discloses arranging multiple printhead dies in a pattern for a print
bar. See Figs. 9 and 10 (depicting three elongated printhead dies 251 in a
pattern). There is no persuasive evidence that Ciminelli’s three-printhead
group is different in structure from a print bar. And forming multiple parts
simultaneously and separating them supports the Examiner’s finding of a
suggestion within the skill of the ordinary artisan for separating groups of
die slivers (Ciminelli’s three die 251 in each part) to form print bars.
Appellant contends the word “slivers” in “multiple printhead die
slivers” has not been addressed by the Examiner. Appeal Br. 13. We
disagree. The Examiner refers to the multiple printhead die as multiple
printhead die slivers in the rejection. Final Act. 4. In the Answer, the
Examiner further finds that Ciminelli’s Figure 10 depicts a printhead die that
meet the general size requirement of “slivers.” Ans. 9. According to
Appellant’s Specification “a ‘sliver’ means a thin micro device having a
ratio of length to width (L/W) of at least three.” Spec. 3:1–2. We agree with
the Examiner that Ciminelli suggests such an elongate thin micro device in
Figures 10–11 at 251.
Appellant has not identified a reversible error in the Examiner’s
rejection of claim 1.
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Claim 4
Claim 4 depends from claim 1 and further requires the step of
“forming openings in the body at the [die sliver] inlets” comprise “applying
a pre-molding form to the die slivers in a pattern defining the openings and
then molding the body of material around the die slivers.” Appeal Br. 21
(Claims Appendix) (emphasis added).
Appellant has identified a reversible error in the Examiner’s rejection
of claim 4.
First, we consider what constitutes a “pre-molding form.” The
Specification describes an example process with steps shown in Figures 12–
14 that uses pre-molding form 54. In this process, pre-molding form 54 is
glued or otherwise affixed to the backside of dies 18 in a pattern that defines
channels 24. Spec. ¶ 15. Pre-molding forms 54 become a part of the product
print bar shown in Figure 14. Id. Thus, pre-molding forms are pre-made
objects that become part of the print bar.
Second, we consider the evidence relied on by the Examiner.
Ciminelli does not use pre-molding forms. Instead, Ciminelli suggests using
the molding tool in which the polymer is flowed to define openings (fluid
passageways 281) in the body of material (polymer material 280). Ciminelli
¶¶ 44–45; Figs. 10–11. Mostafazadeh flows polymer over the entire
assembly without forming openings. Mostafazadeh col. 3, l. 66–col. 4, l. 9;
Fig. 6. The Examiner acknowledges the evidentiary gap, stating that using
pre-molded forms “is merely one of several possibilities an ordinary artisan
would select.” Final Act. 6; Ans. 9.
There is simply no suggestion within either Ciminelli or
Mostafazadeh for using pre-molding forms nor does the Examiner provide
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adequate evidence that it was known in the art. Thus, the evidence fails to
support the Examiner’s reasoning.
Appellant has identified a reversible error in the Examiner’s rejection
of claim 4.
Claim 7
Claim 7 limits the sequence of the removing and separating steps of
claim 1. Namely, claim 7 requires separating groups of die slivers into print
bars before removing the die slivers from the carrier.
Appellant contends that “[a]s demonstrated above, the cited references
do not teach or suggest the formation of multiple print bars.” Appeal Br. 15.
But as we stated above in addressing the rejection of claim 1, there is no
persuasive evidence that Ciminelli’s three-printhead group is different in
structure from a print bar. Compare Ciminelli Fig. 10 (depicting three
printhead dies 251 grouped together), with Appellant’s Fig. 10 and ¶ 14
(explaining that Figure 10 shows print bar 10 with printheads 12, each
having printhead die 18).
Appellant further contends that the sequence of steps is not taught or
suggested by the references. Appeal Br. 16. But, as we discussed above,
Appellant has not addressed the Examiners multiplicity finding. Nor has
Appellant addressed the Examiner’s new reasoning based on the
obviousness of selecting any order of performing process steps. Compare
Ans. 4, with Reply Br. 3, 11–12.
Appellant has not identified a reversible error in the Examiner’s
rejection of claim 7.

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9
The Rejection of Claims 8, 9, 11, 12, and 16–19 as Obvious
Claims 8, 9, 11, 12, and 16–19 are rejected under 35 U.S.C. § 103 as
being obvious over Ciminelli. Final Act. 7.
Claim 8, like claim 4, requires a pre-molding form. As in the rejection
of claim 4, the Examiner has failed to provide adequate evidence to support
the obviousness of using pre-mold forms in the manner required by claim 8.
This error permeates the rejection of dependent claims 9, 11, 12, 16, 18, and
19.
Appellant has identified a reversible error in the rejection of claims 8,
9, 11, 12, and 16. Claim 17 depends from claim 13, which is addressed
below.
The Rejection of Claims 13–15 as Anticipated and Claims 17, 20, and 21 as
Obvious
Claims 13–15 are rejected under 35 U.S.C. § 102 as being anticipated
over Ciminelli. Final Act. 3. Claim 17, which depends from claim 13, is
rejected under 35 U.S.C. § 103 as obvious over Ciminelli. Final Act. 7.
Claims 20 and 21, which also depend from claim 13, are rejected under 35
U.S.C. § 103 as being obvious over Ciminelli in view of Mostafazadeh.
Final Act. 9.
Claim 13 is directed to a process for making a micro device structure.
The process comprises steps of (1) molding a micro device in a monolithic
body of material, the micro device comprising a die having an integrated
circuit formed on a substrate within the micro device, and (2) forming a fluid
flow passage in the body through which fluid can pass directly to an exterior
surface of the micro device. Appeal Br. 22 (Claims Appendix) (emphasis
added).
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There is no dispute that Ciminelli’s fluid passes through a channel in
insulating support 268 on its way to printhead die 251. Final Act. 3. We
agree with Appellant that because the fluid must pass the insulating support
268, the fluid flow passage in the body does not pass fluid directly to an
exterior surface of a micro device, which the Examiner finds is Ciminelli’s
printhead die 251. Appeal Br. 10–11; Reply Br. 4–7.
The Examiner acknowledges that Ciminelli’s fluid passageway 281
passes through insulating layer 268, but determines “there is no functional
device between the channel and the printhead, and therefore the fluid
passageway is directly connected to the micro device in the absence of any
other functional device in between the passageway and the micro device.”
Final Act. 3. But we agree with Appellant that claim 13 requires there be no
device, functional or otherwise, between the monolithic body of material
(Ciminelli’s polymer material 280) and the exterior surface of the micro
device (printhead die 251). Reply Br. 4 (“The term ‘directly’ means ‘in a
way that involves only the two . . . things mentioned, with . . . nothing else
coming in between.’ (https://www.macmillandictionary.com/dictionary/
american/directly !#directly 5)”).
Appellant has identified a reversible error in the rejection of claim 13
and by extension a reversible error in the rejection of the claims that depend
from claim 13, i.e., claims 14, 15, and 17–21. The Examiner does not rely on
an obviousness analysis or Mostafazadeh in a manner that cures the
deficiency.
CONCLUSION
The Examiner’s decision to reject claims 1–3 and 5–7 under 35 U.S.C.
§ 103 as being obvious over Ciminelli in view of Mostafazadeh is affirmed,
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11
but the Examiner’s decision to reject claims 4, 20, and 21 on these grounds
is reversed.
The Examiner’s decision to reject claims 8, 9, 11, 12, and 16–19
under 35 U.S.C. § 103 as being obvious over Ciminelli is reversed.
The Examiner’s decision to reject claims 13–15 under 35 U.S.C.
§ 102 as being anticipated over Ciminelli is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 20, 21 103 Ciminelli,
Mostafazadeh
1–3, 5–7 4, 20, 21
8, 9, 11, 12,
16–19
103 Ciminelli 8, 9, 11, 12,
16–19
13–15 102 Ciminelli 13–15
Overall
Outcome
1–3, 5–7 4, 8, 9, 11–
21

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