Rio Rivas et al.

Patent Trials and Appeals Board

Mar 21, 2022

2021002308 (P.T.A.B. Mar. 21, 2022)

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. 14/396,161 10/22/2014 Rio Rivas 84077119 2141 22879 7590 03/21/2022 HP Inc. 3390 E. Harmony Road Mail Stop 35 Fort Collins, CO 80528-9544 EXAMINER VALENCIA, ALEJANDRO ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 03/21/2022 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 RIO RIVAS, CHRISTOPHER BAKKER, EDWARD FRIESEN, and JAMES R. PRZYBYLA Appeal 2021-002308 Application 14/396,161 Technology Center 2800 Before MICHELLE N. ANKENBRAND, CATHERINE Q. TIMM, AND LILAN REN, 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, 2, 9, 16, 17, 20, 23, 26, and 27.2 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. (HPDC), which Appellant states is a wholly-owned affiliate of HP Inc. Appeal Br. 2. Appellant further identifies HPQ Holdings, LLC as the general or managing partner of HPDC. Id. 2 Contrary to Appellant’s statement in the Reply Brief (Reply Br. 2), the record indicates that claims 16 and 17 remain under rejection. This is evident Appeal 2021-002308 Application 14/396,161 2 We affirm in part. We also enter a new ground of rejection against claim 26. CLAIMED SUBJECT MATTER The claims are directed to a printhead circuit including circuitry on a substrate. See, e.g., claim 1; see also claims 9 and 23 (claiming devices containing the printhead circuit). The printhead circuit of the claims includes linear conductor traces (Fig. 1A (108-1 to 108-N)) across a longitudinal feed structure (Fig. 1A (slot 101); Fig. 2 (slot 202)) from one side surface (Fig. 1A (first side surface 106); Fig. 2 (first side surface 206)) to the other side surface (Fig. 1A (107); Fig. 2 (207)) of the substrate (Fig. 1A (101); Fig. 2 (201)) See, e.g., claim 1; Spec. ¶¶ 13, 27; Appeal Br. 6 (Summary of Claim Subject Matter). The traces are disposed along substantially the same geometrical plane (Fig. 2 (238)) as circuitry (Fig. 1A (105-1, 105-2)) on the first and second side surfaces (106/206, 107/207). See, e.g., claim 1; Spec. ¶ 27. To further illustrate, we reproduce claim 1 with reference numerals from Figures 1A and 2 and with the limitations most at issue highlighted. Reference numerals starting with “1” are found in Figure 1A. Reference numerals starting with “2” are found in Figure 2. 1. A printhead circuit comprising: a substrate [101, 201] including a longitudinal fluid feed structure [102, 202] having a first [103], a second [104], and a from: (1) the Office Action Summary of the Final Office Action, which lists claims 16 and 17 as rejected (Final Act. 1 ¶ 7); (2) the discussion of claims 16 and 17 in the body of the rejection applied in the Final (Final Act. 6); and (3) the lack of any statement that the rejection of claims 16 and 17 has been withdrawn. Appeal 2021-002308 Application 14/396,161 3 third [239] dimension in the substrate [101, 201] to supply fluid from a fluid supply to a plurality of fluid ejection elements [110-N, 210] on a first side surface [106, 206] of the longitudinal fluid feed structure [102, 202]; circuitry [105-1] on the first side surface [106, 206] and [circuitry 105-2 on] a second side surface [107, 207] of the longitudinal fluid feed structure [102, 202], and a number of linear conductor traces [108-N, 208] disposed between the first side surface [106, 206] and the second side surface [107, 207] across the longitudinal fluid feed structure [102, 202], and disposed along substantially a same geometrical plane [238] as the circuitry [105-1] on the first side surface [106, 206] and the [circuitry 105-2 on] second side surface [107, 207] of the longitudinal fluid feed structure [102, 202], wherein the traces [108, 208] provide electrical connection from the first side surface [106, 206] of the longitudinal fluid feed structure [102, 202] to the second side surface [107, 207] of the longitudinal fluid feed structure [102, 202], and wherein the geometrical plane [238] is substantially even, wherein the first side surface [106, 206], second side surface [107, 207], and traces [108, 208] are within the geometrical plane [238], and wherein the number of linear conductive traces [108, 208] comprises a ground. Appeal Br. 21 (Claims App.) (emphasis added). REJECTION Claims 1, 2, 9, 16, 17, 20, 23, 26 and 27 are rejected under pre-AIA 35 U.S.C § 103 as being unpatentable over Chung (US 2011/0019210 A1, published Jan. 27, 2011) in view of Chen (US 8,197,030 B1, issued June 12, 2012) and Hanson (US 4,827,294, issued may 2, 1989). Final Act. 2-6.3 3 The rejection of claim 25 under 35 U.S.C. § 112(b) was rendered moot after Appellant canceled the claim. See Amdt of Sept. 9, 2020 entered per Advisory Act. of Sept. 18, 2020. Appeal 2021-002308 Application 14/396,161 4 OPINION Appellant argues claims 1, 9, 23, and 26 under separate headings, but for the rejection of claims 9 and 23, Appellant relies on the arguments presented against the rejection of claim 1. Appeal Br. 11-19. Except for claim 26, none of the dependent claims are argued separately. Id. Thus, we select claim 1 as representative for resolving the issues for all the claims except for claim 26, which we consider separately. We determine that Appellant has not identified a reversible error in the Examiner’s rejection of claim 1. As for claim 26, this claim is indefinite and we enter a new ground of rejection under 35 U.S.C. § 112(b) or § 112, second paragraph. Because speculation would be required to decide whether the Examiner reversibly erred in rejecting claim 26 as obvious, we are unable to reach the merits of the Examiner’s obviousness rejection as applied against claim 26. Thus, we procedurally reverse the Examiner’s rejection of claim 26 without reaching its merits. Our reasons for sustaining the Examiner’s rejection of claim 1 and entering a new ground of rejection as to claim 26 are discussed below. Claim 1 Turning first to the rejection of claim 1, we frame the dispositive issue as: Has Appellant identified a reversible error in the Examiner’s finding of a suggestion in Chen to modify Chung’s printhead circuit with conductive traces that extend over Chung’s slots and connect circuitry on the sides of the slots? Appellant has not identified such an error. We frame the issue as stated above based on the following facts. Appeal 2021-002308 Application 14/396,161 5 First, there is no dispute that Chung teaches the substrate, longitudinal fluid feed structure (slot), and circuitry claim 1 requires. Compare Final Act. 3, with Appeal Br. 11-17, and Reply Br. 4-14. Chung’s Figure 5 depicts substrate 32 with a longitudinal fluid feed structure (slot 40). Chung ¶ 28. Thin film layer 34 on first and second side surfaces of substrate 32 contains circuitry that connects resistors 39 to contact pads 31 (shown in Fig. 2). Chung ¶ 29. Further, there is no dispute that Chung teaches a series of ribs within each slot 40. This is shown in Figure 5 at 46. Chung ¶ 46. Figure 12 depicts another embodiment with angled ribs 246. Chung ¶ 60. Ribs strengthen the die. Chung ¶¶ 20, 31, 57. We agree with Appellant that Chung fails to clearly teach or suggest disposing linear conductor traces across ribs 46 or ribs 246 to connect the first and second side surface circuits. Appeal Br. 12. The Examiner relies on Chen as suggesting disposing linear conductor traces between Chung’s circuits. Final Act. 4-5. Thus, the dispositive question becomes whether Appellant has identified a reversible error in the Examiner’s finding of a suggestion within Chen to extend traces between the circuits on either side of Chung’s substrate. We determine that Appellant has not identified such an error for the following reasons. In arguing against the Examiner’s finding of a suggestion to combine the teachings of Chung and Chen, Appellant makes two arguments: (1) “it would make no sense to attempt to re-route the straight conductor paths of Chen to follow the support ribs of [Chung];” and (2) “Chung teaches away from having conductor paths that cross the fluid feed slot.” Appeal Br. 15. Appeal 2021-002308 Application 14/396,161 6 We do not find either argument persuasive. As to the first argument, it has a first prong and a second prong. Under the first prong, Appellant contends that re-routing Chen’s straight conductor paths to follow Chang’s support ribs “would lengthen the conductor paths for no apparent reason rather than leaving them straight and out of the relevant plane as in Chen.” Appeal Br. 15. Appellant’s contention is not persuasive because it relies on Chung’s Figure 12 embodiment, which angles ribs 246 over slot 240. Appeal Br. 14. The argument ignores Chung’s teaching of straight non-angled ribs (e.g., 46) as depicted in Chung’s Figures 2-5. Chung teaches strengthening ribs running across slots and Chen teaches conductor paths running across slots and doing so for a specific reason the Examiner explains and Appellant does not dispute, i.e., to decrease the space requirements of the circuitry and traces. Final Act. 5; Chen col. 1, ll. 44-48. Combining the teachings flows from those aspects of Chung and Chen. Thus, we do not find Appellant’s argument against the combination persuasive. As to Appellant’s second prong of the first argument, which states that “making this combination would require more than [one] conductor path to be on each support rib so as to have enough conductor paths to be between each adjacent pair of nozzles as shown by Chen” and “[t]his would require additional effort to insulate the paths from each other when they share a support rib” (Appeal Br. 15), Appellant provides no persuasive evidence that this “effort” would fall outside skill of the ordinary artisan. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). An obviousness analysis requires we consider the skill of the ordinary artisan and Appeal 2021-002308 Application 14/396,161 7 Appellant’s argument fails to consider this ordinary skill. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). As to the second argument, Appellant has not persuaded us that Chung teaches away from running linear conductive traces across Chung’s slots 40 or slots 240. As Appellant points out, Chung describes forming rib 46 by first forming a trench 102 and then filling trench 102 with barrier layer material. Appeal Br. 15; see Chung ¶¶ 38-41; Figs. 7, 8B. We agree with Appellant that Chung’s method removes thin film layer 34, which contains the conductive layer of the circuitry. But Chen provides evidence that methods were known in the art for extending the circuitry-containing thin film across slots. Chen depicts linear conductive traces that run in a plane from the side surfaces of slots 30. Chen Figs. 15-16 (thin film 20); see also Chen col. 7, ll. 46-54 (explaining that conductor paths from resistor 18 to bond pads 84, 86 may run over/across ink channels 30 in thin film 20). Chen provides a reason for so running traces in a plane across the slot, i.e., to decrease the amount of space needed for conductive traces between the bond pads and control and drive circuits. Implementing this teaching flows from the combined disclosures of Chung and Chen. Again, Appellant’s argument ignores the ordinary skill of the artisan in combining the teachings. Nor does Appellant point to a specific disclosure in Chung that discourages so extending the thin film over slots. See In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (explaining that teaching away requires “clear discouragement” from implementing a technical feature.). Thus, we determine Appellant has not identified a reversible error in the Examiner’s finding of a suggestion to combine the teachings of Chung Appeal 2021-002308 Application 14/396,161 8 and Chen to arrive at linear conductive traces with the structure claim 1 requires. Claim 26 Turning to claim 26, we enter the following new ground of rejection per our authority under 37 C.F.R. § 41.50(b): Claim 26 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 26 reads: “The printhead of claim 9, wherein the thin film bridge is directly above the longitudinal fluid feed structure when the printhead is oriented as used.” Appeal Br. 25 (Claims App.) (emphasis added). Claim 9 does not recite a thin film bridge. Because “the thin film bridge” recited in claim 26 has no antecedent basis in claim 9, it is unclear how claim 26 further limits the structure of claim 9. Because claim 26 is indefinite, we do not reach the obviousness rejection. To review a rejection for obviousness, “it is essential to know what the claims do in fact cover.” In re Steele, 305 F.2d 859, 862 (CCPA 1962). Here, we do not know what claim 26 covers. Thus, we procedurally reverse the obviousness rejection as it relies on speculative assumptions. We do not reach the merits of the Examiner’s obviousness rejection. CONCLUSION The Examiner’s decision to reject claims 1, 2, 9, 16, 17, 20, 23, and 27 is affirmed. We procedurally reverse the Examiner’s decision to reject Appeal 2021-002308 Application 14/396,161 9 claim 26 and enter a new ground of rejection under 35 U.S.C. § 112(b) or § 112, second paragraph. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2, 9, 16, 17, 20, 23, 26, 27 103 Chung, Chen, Hanson 1, 2, 9, 16, 17, 20, 23, 27 264 26 112 Indefiniteness 26 Overall Outcome 1, 2, 9, 16, 17, 20, 23, 27 26 26 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: 4 We procedurally reverse the rejection of claim 26 as obvious without reaching the merits of the rejection. Appeal 2021-002308 Application 14/396,161 10 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED IN PART; 37 C.F.R. § 41.50(b)