Appeal Number: 2006-2117
Application Number: 10/098,341
(Answer, page 8) that “[t]he term disc as commonly used in the English language refers
to an object with a circular cross section.” Appellants argue (Brief, page 4) that element
74 of Otis is not disc-shaped as the figures show the thickness (the direction parallel to
the hole) is nearly twice the width (the direction perpendicular to the hole). Further,
appellants contend (Brief, page 4) that it would not have been obvious to reduce the
thickness of element 74 to make it disc-shaped as that “would decrease the contact area
of the seal between the needle 24 and the compliant portion 74, and would thereby
compromise the seal in the fluid interconnect between the carriage and the ink pen of
Otis.” We agree with appellants.
In Otis, element 72 is referred to as a cylinder, and element 74 has a smaller
diameter, but substantially the same thickness, as the cylinder. Therefore, element 74
could be considered cylindrical. However, a disc is commonly used to mean a thin, flat
circular element. In fact, The Random House College Dictionary, Revised Edition
(1982), pages 377 and 381, defines “disc” as a “disk” which in turn is defined as “1. any
thin, flat, circular plate or object. 2. any surface that is flat and round, or seemingly so.”
Thus, “disc-shaped” refers to an object that is circular, thin, and flat. Element 74 of Otis
may be circular, but not thin and flat. Accordingly, Otis fails to anticipate claims 7
through 9, and we cannot sustain the rejection.
The examiner further rejects claims 10 through 12, 15, 16, and 20 through 22 over
Otis in view of Cohen, and claims 18 and 19 over Otis in view of Okada. As pointed out
by appellants (Brief, pages 6 and 8), neither Cohen nor Okada remedies the deficiencies
of Otis. Cohen and Okada are relied upon for particular materials, not for the shape of
the inner elastic valve, and we find no teachings in either reference that would suggest a
disc shape for the inner elastic valve of Otis. Consequently, we cannot sustain the
obviousness rejections of claims 10 through 12, 15, 16, and 18 through 22.
Lastly, the examiner rejects claims 7 through 10, 15, 16, 18, 19, and 21 under
obviousness-type double patenting over claims 1 through 6 of U.S. Patent No. 6,383,436
in view of Otis. The examiner admits (Answer, page 7) that the claims of U.S. Patent No.
6,383,436 do not indicate the shape of the ink tank valve. Thus, the examiner relies upon
Otis for a suggestion to make the ink tank valve disc-shaped. However, as we indicated
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