UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`HP INC.,
`
`Petitioner
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`
`Patent No. 7,156,492
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`_____________________________________________________________
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`DECLARATION OF STEPHEN POND, PH.D.
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
`III.
`IV.
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`V.
`VI.
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`INTRODUCTION ........................................................................................1
`BACKGROUND AND QUALIFICATION................................................2
`DOCUMENTS CONSIDERED...................................................................4
`RELEVANT PATENT LAW AND LEGAL STANDARDS......................4
`A.
`Priority Date .......................................................................................4
`B.
`Obviousness........................................................................................5
`C.
`Standard of Proof ...............................................................................6
`LEVEL OF ORDINARY SKILL IN THE ART..........................................6
`OVERVIEW OF THE ’492 PATENT AND ITS PROSECUTION
`HISTORY.....................................................................................................7
`A.
`Overview of the ’492 patent...............................................................7
`B.
`Prosecution History of the ’492 patent ..............................................9
`CLAIM CONSTRUCTION .......................................................................10
`A.
`“carrier”............................................................................................10
`B.
`“that can each transport a respective type of fluid” .........................12
`C.
`“the carrier, in the form of a channel member” ...............................13
`VIII. ANALYSIS OF THE ’492 PATENT’S CLAIMS IN LIGHT OF
`THE PRIOR ART.......................................................................................14
`A.
`Reasons to Combine Petitioner’s Prior Art Rereferences................14
`B.
`Ground 1: Claims 1, 2, and 4 are obvious under 35 U.S.C.
`§ 103(a) in view of Cowger and Silverbrook 2172..........................18
`1.
`Claim 1.....................................................................................19
`2.
`Claim 2.....................................................................................31
`3.
`Claim 4.....................................................................................33
`Ground 2: Claim 5 is obvious under 35 U.S.C. § 103(a) in
`view of Cowger and Silverbrook 2172 in light of Bohorquez.........34
`Ground 3: Claims 1-2, and 4 are obvious under 35 U.S.C. §
`103(a) in view of Silverbrook 142 and Silverbrook 2172 ...............38
`1.
`Claim 1.....................................................................................38
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`VII.
`
`C.
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`D.
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`i
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`TABLE OF CONTENTS
`(continued)
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`Page
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`E.
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`Claim 2.....................................................................................44
`2.
`Claim 4.....................................................................................45
`3.
`Ground 4: Claim 5 is obvious under 35 U.S.C. § 103(a) in
`view of Silverbrook 142 and Silverbrook 2172 in light of
`Bohorquez ........................................................................................47
`CONCLUDING STATEMENTS...............................................................49
`
`IX.
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`ii
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`I, Stephen Pond, Ph.D., do hereby state and declare:
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`I.
`
`INTRODUCTION
`
`1.
`
`I formerly worked for the Xerox Corporation for over 25 years. I now
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`work as a consultant in the area of electronic printing and have done so for the last
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`17 years. Accordingly, I have extensive experience in electronic printing,
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`including ink jet technology. I have been retained by HP Inc. (formerly known as
`
`Hewlett-Packard Company) in connection with the above-captioned Petition for
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`Inter Partes Review.
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`2.
`
`I understand that the Petition involves U.S. Patent No. 7,156,492
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`(hereinafter the “’492 patent,” Ex. 1001). I have been asked by Petitioner to offer
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`opinions regarding the ’492 patent, including the construction of certain claim
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`terms and the patentability of the claims in view of certain prior art. This
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`declaration sets forth the opinions I have reached to date regarding these matters.
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`3.
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`In preparing this declaration, I have reviewed the ’492 patent and
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`considered each of the documents cited herein. In reaching my opinions, I have
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`relied upon my experience in the field and also considered the viewpoint of a
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`person of ordinary skill in the art at the time of the earliest claimed priority date of
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`the ʼ492 patent, i.e., early 2001. As explained below, I am familiar with the level
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`of a person of ordinary skill in the art regarding the technology at issue as of that
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`time.
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`1
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`4.
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`I am being compensated at my normal rate of $500 per hour in
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`connection with this review. My compensation is not contingent on the outcome
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`of this review or on the substance of my opinions. I further have no financial
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`interest in Petitioner. I have been informed that the ’492 patent may currently be
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`assigned to the Memjet Technology Limited (“Memjet”). I have no financial
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`interest in Memjet
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`II.
`
`BACKGROUND AND QUALIFICATION
`A true and correct copy of my curriculum vitae is attached as Ex.
`
`5.
`
`1008. As set forth in my CV, I have over 40 years of research, product engineering
`
`and consulting experience in the field of electronic printing, including thermal
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`inkjet ink printing technologies. I received a Bachelor’s Degree (Magna Cum
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`Laude) in Physics in 1967 from Dartmouth College, a Master’s Degree in Physics
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`from University of Illinois in 1968, and a Ph.D. in Physics from University of
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`Illinois in 1971. I am a member of the Phi Beta Kappa honor society.
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`6.
`
`I served for 26 years at Xerox Corporation in numerous areas related
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`to electronic printing. From 1972-1979, I served as a Scientist at Xerox
`
`responsible for experimental studies in toner adhesion, was project leader and
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`principal technical contributor for feasibility studies for a magnetographic
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`electronic duplicator, and became a charter technical contributor to Xerox’s
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`continuous inkjet research program. In that last role, I was responsible for early
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`2
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`continuous inkjet demonstration, technical strategy and competitive technology
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`information analysis.
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`7.
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`During the 1980s, I was a manager at Xerox in the Advanced Marking
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`Development Section, in the Electronic Marking Device Area, and in the
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`Electronic Marking Laboratory, where I was responsible for thermal inkjet
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`research and technology feasibility demonstration.
`
`8.
`
`From 1989-1994, I was Chief Engineer in Xerox’s Components
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`Development and Manufacturing Unit, where I was responsible for thermal inkjet
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`advanced technology and product development. In that role, I had line
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`management responsibility for approximately 60 engineers and technologists, and I
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`managed inkjet development collaborations with foreign OEM suppliers and a
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`Xerox Japanese subsidiary. My efforts on behalf of the company were recognized
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`in 1991, when I received the Xerox President’s Award—the highest individual
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`honor attainable within the organization.
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`9.
`
`From 1994-1998, I was a Principal in Xerox’s Ink Jet Business Group,
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`where I was responsible for workgroup and special product concept development.
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`In that role, I managed the initial productization project for Xerox 600 dpi thermal
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`inkjet printhead and ink technology, and I managed the development of a state of
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`the art thermal inkjet printer mechanism.
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`3
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`10.
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`For the last 17 years, I have been an electronic printing and
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`microelectromechanical systems (MEMS) consultant, working with outside
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`investors and corporate managers to evaluate intellectual property possibilities for
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`MEMS devices, and inkjet printing.
`
`11.
`
`I am a registered patent agent and I am named an inventor on 51
`
`issued United States Patents. I am also the author of numerous publications in the
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`field of inkjet printing, including the textbook “Inkjet Technology and Product
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`Development Strategies,” Torrey Pines Research (2000).
`
`III. DOCUMENTS CONSIDERED
`
`12.
`
`In formulating my opinion, I have considered not only my general
`
`knowledge and experience, but also the following:
`
`HP
`Exhibit #
`Ex. 1001
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`
`Description
`
`U.S. Patent No. 7,156,492 to Silverbrook
`File History of U.S. Patent 7,156,492
`U.S. Patent No. 5,565,900 to Cowger et al.
`WO 01/02172 A1 to Silverbrook et al.
`U.S. Patent No. 6,428,142 to Silverbrook et al.
`U.S. Patent No. 5,682,186 to Bohorquez et al.
`
`IV. RELEVANT PATENT LAW AND LEGAL STANDARDS
`
`A.
`
`13.
`
`Priority Date
`
`I have been asked to use March 27, 2001 as the priority date for the
`
`purpose of my analysis and this declaration.
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`4
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`B.
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`14.
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`Obviousness
`
`I understand that a determination that a claim is “obvious” is based on
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`underlying factual issues including the content of the prior art and the level of skill
`
`in the art. I understand that for a single reference or a combination of references to
`
`render the claimed invention obvious, a person of ordinary skill in the art must
`
`have been able to arrive at the claims by altering or combining the applied
`
`references.
`
`15.
`
`I further understand that a claim may be obvious if common sense
`
`directs one to combine multiple prior art references or add missing features to
`
`reproduce the alleged invention recited in the claims. I also understand that if a
`
`person of ordinary skill in the relevant art could implement a predictable variation,
`
`then the claim is likely unpatentable. For the same reason, if a technique has been
`
`used to improve one device and a person having ordinary skill in the art would
`
`recognize that it would improve similar devices in the same way, then using the
`
`technique is obvious. I further understand that a claim can be obvious if it unites
`
`old elements with no change to their respective functions, or alters prior art by
`
`merely substituting one element for another known in the field to yield a
`
`predictable result.
`
`16.
`
`I also understand that when considering the obviousness of a patent
`
`claim, one should consider whether a teaching, suggestion, or motivation to
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`5
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`combine the references exists so as to avoid impermissibly applying hindsight
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`when combining or modifying the prior art. I understand this test should not be
`
`applied rigidly, but that the test can be important to avoid such hindsight.
`
`17.
`
`I further understand that where a prior art reference discloses the
`
`general conditions or parameters of a claim, the claim may be obvious if it claims
`
`an optimum value or preferred range, and a skilled artisan could determine the
`
`optimum value or workable range by routine experimentation.
`
`C.
`
`18.
`
`Standard of Proof
`
`I understand that the standard to prove unpatentability is by a
`
`preponderance of the evidence, which means more likely than not.
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`19.
`
`I was also asked to provide an opinion regarding the skill level of a
`
`person of ordinary skill in the art of the ’492 patent in early 2001. I considered
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`several factors, including the types of problems encountered in the art, the
`
`solutions to those problems, the pace of innovation in the field, the sophistication
`
`of the technology, and the education level of active workers in the field.
`
`20.
`
`It is my opinion that a person of ordinary skill (i.e., a skilled artisan)
`
`in the art at the time of the ʼ492 patent’s invention would have had at least a
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`bachelor’s degree in Electrical Engineering, Mechanical Engineering, Physics,
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`6
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`Material Science, or a related field, and several years of experience in inkjet
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`printing design, micro-mechanical structures, or analogous fields.
`
`VI. OVERVIEW OF THE ’492 PATENT AND ITS PROSECUTION
`HISTORY
`
`21.
`
`I have reviewed and understand the specification, claims, and file
`
`history of the ’492 patent.
`
`A.
`
`22.
`
`Overview of the ’492 patent
`
`The application that led to the ’492 patent was filed June 12, 2006 and
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`is a continuation of application no. 11/250,450, filed on October 17, 2005, now
`
`Pat. No. 7,066,573, which is a continuation of application no. 10/728,922, filed on
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`December 8, 2003, now Pat. No. 6,997,545, which is a continuation of application
`
`no. 10/102,700, filed on March 22, 2002, now Pat. No. 6,692,113. The ’492 patent
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`also claims priority to Australian Application No. PR3996, filed March 27, 2001.
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`23.
`
`The ’492 patent is directed to a “printhead module assembly” for a
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`well-known type of printer called a “pagewidth” printer. Ex. 1001 at col. 1, ll. 31-
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`34. Pagewidth printers allow printing “without the need for scanning movement of
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`the printhead across the paper width.” Id. at col. 1, ll. 60-64. The purported
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`benefits of a “modular” assembly include the ability to manufacture printheads of
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`“arbitrary width,” as well as “the ability to easily remove and replace any defective
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`modules,” which eliminates “having to scrap an entire printhead if only one chip is
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`defective.” Id. at col. 1, ll. 65-67; col. 1, ll. 35-41. The stated object of the ’492 is
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`to “provide an improved printed module assembly” and similarly, a “printhead
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`assembly having improved modules therein.” Ex. 1001 at col. 2, ll. 6-10.
`
`24.
`
`The claims of the ’492 patent are directed to a modular printhead
`
`comprising a metal alloy carrier and plurality of printhead modules that are
`
`configured to be mounted on an elongate fluid transporter, which in turn is
`
`received in the carrier and defines a plurality of channels for transporting different
`
`fluids. See Ex. 1001 at Abstract and claims. A schematic exploded view of the
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`“printhead assembly 10” having the elements of independent claim 1 is illustrated
`
`in Figure 2. As shown in that figure, the “printhead assembly 10” comprises
`
`“printhead modules 11” that “plug directly onto” an “elastomeric ink delivery
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`extrusion 15,” and are “situated along a metal ‘Invar’ channel 16.” Id. at col. 4, ll.
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`48-67; col. 7, ll. 34-39. See generally, ’492 patent.
`
`25. Dependent claim element embodiments are also shown in Figure 2,
`
`including (1) “flex PCB 17” for claim 2’s “flexible printed circuit board (PCB)”
`
`located “between the carrier and the ink transporter”; and (2) “capping device 12”
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`for claim 5’s “capping arrangement for capping the printing modules.” Ex. 1001
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`at col. 7, ll. 3-6; id. at col. 5, ll. 10-15.
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`B.
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`26.
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`Prosecution History of the ’492 patent
`
`The application that issued as the ’492 patent was filed on June 12,
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`2006 as a continuation of a series of applications, the first one being filed on
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`March 22, 2002, and claiming foreign priority to Australian application PR3996.
`
`The application that issued as the ’492 patent included 9 claims, all of which
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`eventually issued: one independent claim and 8 dependent claims.
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`27. During prosecution of the application that issued as the ’492 patent, an
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`Office Action was mailed on August 14, 2006, rejecting claims 1, 4, 5, and 6 on
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`the ground of nonstatutory double patenting over claim 3 of U.S. Patent No.
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`7,066,573. Ex. 1003 at 50-52. Claims 2-3, 7, 8, and 9 were objected to as being
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`dependent upon rejected claim 1 but were otherwise indicated as being allowable.
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`Id. at 53. The Application was also objected to because the recitation of claims 1,
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`2, and 7 included the term “the cradle” with no antecedent basis. Id. at 51.
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`28.
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`In response to the Office Action, the applicant filed an Amendment
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`and a Terminal Disclaimer on September 5, 2006, disclaiming the patent term
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`extending beyond the term of the ’573 patent. See Ex. 1003 at 60-66. In the
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`Amendment, the Applicant amended claims 1, 2, and 7, to change “cradle” to
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`“carrier.” Id. at 62. A Notice of Allowance issued on September 14, 2006. See id.
`
`at 75.
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`29.
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`There were no prior art rejections during the prosecution of the ’492
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`patent. Accordingly, there was no occasion for the Applicant to characterize the
`
`invention or explain its claim terms.
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`VII. CLAIM CONSTRUCTION
`
`30.
`
`I have been advised that, in the present proceeding, the ’492 patent
`
`claims are to be given their broadest reasonable interpretation in light of the
`
`specification and that this standard differs from the standard used in district court
`
`patent litigation proceedings. I have followed these principles in my analysis
`
`throughout this declaration.
`
`A.
`
`31.
`
`“carrier”
`
`The claims term “carrier” is found in claim 1, which states that the
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`modular printhead comprises “an elongate carrier of a metal alloy.” Ex. 1001 at
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`col. 11, ll. 15-16.
`
`32.
`
`The term “carrier” only appears in the title and the claims of the ’492
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`patent. The Abstract restates claim 1, stating that “A modular printhead includes
`
`an elongate carrier. An elongate fluid transporter can be received in the carrier….
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`A flexible printed circuit board (PCB) is located between the carrier and the fluid
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`transporter.” Ex. 1001 at Abstract.
`
`33.
`
`The detailed description, however, does not use the term “carrier.”
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`Instead, in describing an embodiment that includes the “elongate channel member”
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`of claim 4, the ’492 patent explains that “at least one printhead module [is]
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`positioned in the support structure, along a length of the support structure….” Id.
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`at col. 2, ll. 19-20. The specification further explains that the metal “Invar channel
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`16 functions to capture the ‘Memjet’ printhead modules 11 in a precise alignment
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`relative to each other” and “serves to hold the[m] in place….” Id. at col. 7, ll. 16-
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`18; col. 5, ll. 6-7.
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`34.
`
`This definition, namely “support structure,” is consistent with what
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`one of ordinary skill in the art would understand the broadest reasonable
`
`interpretation of the term “carrier” to mean. Although the term carrier is generally
`
`capable of different meanings, in the inkjet printhead context it connotes
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`something that supports or carries components such as printhead chips or modules.
`
`Depending on the design, such printhead components might be mounted or
`
`attached in a variety of ways. But the commonality among designs is that the
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`carrier provides a support structure to carry or hold the components.
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`35. Moreover, as dependent claim 4 requires the carrier to be “in the form
`
`of a channel member,” the “carrier” in claim 1 must be something broader than a
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`“channel.” In my opinion, a “support structure” is further consistent with such a
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`broader interpretation.
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`36.
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`Therefore, in my opinion, “support structure” is consistent with both
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`the specification and what one of ordinary skill in the art would understand the
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`broadest reasonable interpretation of the term “carrier” to mean.
`
`B.
`
`37.
`
`“that can each transport a respective type of fluid”
`
`The phrase “that can each transport a respective type of fluid” appears
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`in the second element of claim 1, which states: “an elongate fluid transporter
`
`received in the carrier and defining a plurality of channels that can each transport a
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`respective type of fluid.” Ex. 1001 at col. 11, ll. 17-19.
`
`38.
`
`I understand that expressions relating the claimed apparatus to
`
`contents thereof during an intended operation are of no significance in determining
`
`the patentability of such an apparatus claim. It is my opinion that that one of
`
`ordinary skill in the art would understand that the broadest reasonable
`
`interpretation of the “respective type[s] of fluid[s]” recited in claim 1 of the ’492
`
`patent is merely prospective fluids that could flow through the plurality of channels
`
`of the claimed elongate fluid transporter when the fluid transporter is in use.
`
`39.
`
`In the alternative, it is my opinion that one of ordinary skill in the art
`
`would understand that the broadest reasonable interpretation of the term “that can
`
`each transport a respective type of fluid” to the extent such a term is entitled to
`
`patentable weight, means “that can each transport any type of fluid.”
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`40.
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`In particular, the Applicant used the terms “ink” and “fluid” very
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`broadly, and specifically did not claim any particular kind of ink, or specify that
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`the ’492 patent requires color printing. Indeed, the Applicant explained that “the
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`term ‘ink’ is intended to mean any fluid which flows through the printhead to be
`
`delivered to print media,” and “[t]he fluid may be one of many different colored
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`inks, infra-red ink, a fixative or the like.” Ex. 1001 at col. 3, ll. 54-57. One of
`
`ordinary skill in the art reading these passages would understand the broadest
`
`reasonable interpretation encompasses any of these configurations discussed.
`
`Therefore, in the event that the claim term “that can each transport a respective
`
`type of fluid” is found to impart patentable weight to the claims, it is my opinion
`
`that the broadest reasonable interpretation of the term “that can each transport a
`
`respective type of fluid” is “that can each transport any type of fluid.”
`
`C.
`
`41.
`
`“the carrier, in the form of a channel member”
`
`The phrase “the carrier, in the form of a channel member” appears in
`
`dependent claim 4, which claims: “A modular printhead as claimed in claim 1,
`
`wherein the printing modules are received within the carrier, in the form of a
`
`channel member.” Ex. 1001 at col. 12, ll. 4-6. In my opinion, one of ordinary skill
`
`in the art would understand that the broadest reasonable interpretation of “the
`
`carrier, in the form of a channel member,” to mean “the support structure, having a
`
`floor and a pair of opposed side walls.”
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`42.
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`The ’492 patent describes an embodiment in which a “channel
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`member” is described as: “[a]ccording to a first aspect of the invention, there is
`
`provided a printhead assembly which comprises an elongate channel member
`
`having a floor and a pair of opposed side walls….” Ex. 1001 at col. 2, ll. 14-17.
`
`This embodiment also contemplates a “printhead module” “comprising” an
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`“elongate ink supply assembly that is positioned in the channel,” with a “printhead
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`chip” mounted to same. Id. at col. 2, ll. 20-31. Although claim 1 recites a different
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`embodiment of a “printhead module” than the embodiment just described, the first
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`embodiment’s description of a channel member comports with the carrier in claim
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`4. Thus, the broadest reasonable interpretation of the claim term “the carrier, in the
`
`form of a channel member,” to one of skill in the art at the time of filing, is “the
`
`support structure, having a floor and a pair of opposed side walls.”
`
`VIII. ANALYSIS OF THE ’492 PATENT’S CLAIMS IN LIGHT OF THE
`PRIOR ART
`
`A.
`
`43.
`
`Reasons to Combine Petitioner’s Prior Art Rereferences
`
`I have been advised that Cowger, Silverbrook 2172, and Silverbrook
`
`142 constitute prior art in this proceeding. Cowger issued on October 15, 1996,
`
`which is four and a half year before the ’492 patent’s earliest possible claimed
`
`priority date of March 27, 2001. I have also been advised that Silverbrook 2172
`
`constitutes prior art under 35 U.S.C. § 102(b) because it issued on January 11,
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`2001, which is more than one year before the ’492 patent’s earliest filing date in
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`the United States. Finally, I have been advised that Silverbrook 142 constitutes
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`prior art to the ’492 patent because it was filed by another (i.e., at least one other
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`inventor) in the United States on October 20, 2000, which is before the ’492
`
`patent’s earliest possible claimed priority date.
`
`44.
`
`It is my opinion that it would have been obvious to one of ordinary
`
`skill in the art to combine the teachings of one or more of Cowger, Silverbrook
`
`2172, and Silverbrook 142 for a number of reasons. First, these references are in
`
`the exact same field, namely inkjet printers, and more specifically, all relate to
`
`printhead assemblies for “pagewidth” printers. See, e.g., Ex. 1004 at col. 1, ll. 7-
`
`10, 25-28; Ex. 1005 at col. 2, ll. 11-13; Ex. 1006 at col. 1, ll. 5-7. Second, these
`
`references also describe printhead segments or modules, and their corresponding
`
`support structures, which permit both pagewidth printheads and further provide for
`
`variable-length printhead assemblies. See, e.g., Ex. 1004 at col. 1, ll. 25-29, 36-42,
`
`col. 6, ll. 59-64; Ex. 1005 at col. 2, ll. 4-13, col. 5, ll. 19-24; Ex. 1006 at col. 5, ll.
`
`56-60. Third, Cowger and Silverbrook 142 address the same problem of
`
`providing a modular assembly that avoids having to replace an entire assembly
`
`when individual components are defective. See, e.g., Ex. 1004 at col. 1, ll. 29-40;
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`Ex. 1006 at col. 2, ll. 23-26. Fourth, both Silverbrook 2172 and Silverbrook 142
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`contemplate arranging their printhead modules in an end-to-end relationship. See,
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`e.g., Ex. 1006 at col. 1, ll. 11-15; Ex. 1005 at col. 2, ll. 3-5.
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`45. With reference to the specific claim element of “a metal alloy,”
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`discussed further below, there are three primary reasons why one of ordinary skill
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`in the art would use the metal alloy disclosed in Silverbrook 2172 in the pagewidth
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`printhead carriers of Cowger and Silverbrook 142: rigidity, elasticity, and heat
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`conductivity.
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`46. As the printhead becomes longer, a stiffer material is required to
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`prevent the printhead from sagging. In the case of Silverbrook 2172, the disclosed
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`printhead made with a carrier of a metal allow spans a large distance – 30 inches or
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`more. A plastic molding that long would sag, particularly with any additional
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`features or elements also mounted on the printhead, or due to the softening of the
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`plastic from the heat generated during operation. As Cowger and Silverbrook 142
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`both contemplate variable-length printheads, such sag would be a consideration
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`when selecting a material for the carrier. Although one could potentially obtain the
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`requisite level of rigidity from plastic to achieve the same stiffness, it would
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`require a much larger carrier than one made out of a metal. As metal provides a
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`much higher stiffness-to- volume ratio, a metal carrier would provide more
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`stiffness for the size than plastic.
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`47.
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`Such a consideration is not simply conceptual. The volume of the
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`material used affects the size of the printer. Printers can be smaller and thus more
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`visually appealing if the carrier for the printhead is smaller.
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`48.
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`Thus, in my opinion, one of the reasons one of ordinary skill in the art
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`would use the metal alloy of Silverbrook 2172 in the rigid body of Cowger or the
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`metal chassis of Silverbrook 142 would be to strengthen the assembly that spans a
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`relatively wide print zone where a comparably sized plastic part would be
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`insufficiently rigid.
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`49.
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`Similarly, one of ordinary skill in the art would consider the
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`elasticity of metal versus plastic. In particular, one of ordinary skill in the art
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`would use the metal alloy of Silverbrook 2172 in the rigid body of Cowger or the
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`metal chassis of Silverbrook 142, so that the elasticity of the metal alloy forming
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`the opposing faces of the support surface could provide clamping or holding forces
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`to retain the printhead modules. Plastics lack the elasticity to reliably maintain
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`holding pressure, whereas a metal alloy carrier could expand to receive and thereby
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`clamp the supported print modules. This is advantageous because it allows a
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`simpler and more compact printhead assembly.
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`50. Another reason one of ordinary skill in the art would be motivated to
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`incorporate the metal alloy of Silverbrook 2172 is for thermal conductivity, i.e., to
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`more evenly distribute heat across the padgewidth printhead.
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`51.
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`For example, if one were to use a pagewidth printhead to print a
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`voluminous print job, say 1000 pages, with a same 2-inch wide, long black line on
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`each page, the area of the printhead printing those two inches might get hotter than
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`areas of the printhead that are not printing as densely. If that heat is not distributed
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`across the printhead, the hotter printhead sections will eject more ink, making the
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`print image in that area of the image objectionably darker. This can affect
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`subsequent print jobs as well, with the overheated sections continuing to print with
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`more ink than those printed by the cooler sections.
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`52. As one of ordinary skill in the art can appreciate, most metals conduct
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`heat better than most plastics. Thus, by using a metal carrier on the printhead,
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`excess heat generated in one area of the printhead can be conducted along the
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`printhead, rather than being concentrated. Thus, it is my opinion that one of the
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`reasons one of ordinary skill in the art would be motivated to combine the metal
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`alloy of Silverbrook 2172 with the carriers of Cowger or Silverbrook 142 is to
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`improve the thermal conductivity of the pagewide printheads.
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`B.
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`Ground 1: Claims 1, 2, and 4 are obvious under 35 U.S.C. § 103(a)
`in view of Cowger and Silverbrook 2172
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`53.
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`I understand that Cowger was neither cited nor considered by the
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`Patent Office during the prosecution of the ’492 patent. Similarly, although I
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`understand that Silverbrook 2172 was cited during prosecution of the ’492 patent, I
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`also understand that the Patent Office did not consider the positions regarding
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`Silverbrook 2172 presented herein. Cowger and Silverbrook 2172 confirm that
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`well before the ’492 patent’s priority date there was nothing novel about the
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`modular printhead that is claimed by the ’492 patent. This is demonstrated as
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`described below and further shown in Appendix A. In particular, one of ordinary
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`skill in the art could have combined Cowger and Silverbrook 2712, incorporating
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`the metal alloy carrier disclosed by Silverbrook 2712 into Cowger’s carrier, as well
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`as, to the extent necessary, incorporating the four-color ink supply system of
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`Silverbrook 2712 into Cowger’s printhead, to arrive at the apparatus claimed in
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`claims 1, 2, and 4. Thus, in my opinion, claims 1, 2, and 4 of the ʼ492 patent are
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`obvious over Cowger in view of Silverbrook 2712, under Ground 1 of the Petition.
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`1.
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`Claim 1
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`54.
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`In my opinion, the combination of Cowger and Silverbrook 2172
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`disclose all of the elements and limitations of claim 1. As I discuss in more detail
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`below, Cowger teaches all of the limitations of claim 1 except for an explicit
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`teaching that the claimed carrier is made from a metal alloy. Making the carrier
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`from a metal alloy is an obvious design choice, and is further disclosed by
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`Silverbrook 2172. Also, as I discuss below, Silverbrook 2172 discloses most of
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`the limitations of claim 1.
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`55. Cowger is directed to a “modular-type manufacture of ink-jet printing
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`pens, whereby a print head assembly is constructed as a unit and thereafter
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`removably mounted to the pen body.” Ex. 1004 at col. 1, ll. 6-10. See generally
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`Appendix A. One of ordinary skill in the art would understand that this language
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`describes “a modular printhead.” Thus, if the preamble of claim 1 is a limitation of
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`the claim (it is my understanding that the preamble is not always a limitation of the
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`claim), it is my opinion that one of ordinary skill in the art would understand
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`Cowger to disclose “a modular printhead that comprises…..”
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`56.
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`Silverbrook 2172 also discloses the preamble, explaining that its
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`invention “relates to the field of ink jet printing systems,” including “an inkjet
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`printhead assembly capable of single-pass, full-page-width printing,” noting that
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`“it found desirable to use a number of individual printhead segments (CMOS
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`chips) placed substantially end-to-end where large widths of printing are to be
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`provided.” Ex. 1005 at col. 1, ll. 4-5, col. 2, ll. 4-5, 12-13. See generally
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`Appendix A. Thus, if the preamble of claim 1 is indeed a limitation, it is my
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`opinion that one of ordinary skill in the art would understand that this language
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`also describes “a modular printhead.”
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`57. As discussed above, it would have been obvious to one of ordinary
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`skill in the art to combine the teachings of Cowger and Silverbrook 2172. Thus, in
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`sum, because both Cowger and Silverbrook 2172 disclose the preamble, the
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`combination also discloses the preamble.
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`58. Claim 1 of the ’492 patent recites as its first element “an elongate
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`carrier of a metal alloy.” As shown in Appendix A, and with particular reference
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`to Fig. 2, Cowger discloses “a substantially rigid body 24 to which the assemblies
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`22 are remo