Andrea Tallada, Alex et al.

Patent Trials and Appeals Board

Dec 23, 2019

15298076 - (D) (P.T.A.B. Dec. 23, 2019)

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.
15/298,076 10/19/2016 Alex Andrea Tallada 84536485 1007
22879 7590 12/23/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
LIN, ERICA S Y
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
12/23/2019 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):
barbl@hp.com
ipa.mail@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 ALEX ANDREA TALLADA, CARMEN BLASCO CORTES,
XAVIER QUINTERO RUIZ, and DAVID RAMIREZ MUELA
____________

Appeal 2019-002854
Application 15/298,076
Technology Center 2800
____________

Before JEFFREY B. ROBERTSON, GRACE KARAFFA OBERMANN,
and MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1–20, which are all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Oct. 19, 2016 (“Spec.”);
Final Office Action dated Apr. 2, 2018 (“Final Act.”); Appeal Brief filed
Oct. 10, 2018 (“Appeal Br.”); Examiner’s Answer dated Dec. 28, 2018
(“Ans.”); and Reply Brief filed Feb. 26, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Hewlett-Packard Development
Company, LP, as the real party in interest. Appeal Br. 1. Appellant further
states that Hewlett-Packard Development Company, LP is a wholly-owned
affiliate of HP Inc. and HPQ Holdings LLC is the general or managing
partner of Hewlett-Packard Development Company, LP. Id. at 1.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a method of printing an image on a
substrate by a printhead using ultraviolet (UV) curable ink. Spec. ¶ 10;
Abstract. Claim 1 illustrates the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method of printing an image using ultraviolet (UV)
curable ink, the method comprising:
determining a first portion of the image and a second
portion of the image;
printing the first portion of the image on a substrate by a
first portion of a printhead using the UV curable ink;
printing the second portion of the image on the substrate
by a second portion of the printhead using the UV curable ink;
selectively applying a first amount of UV radiation by a
first region of a light source to the first portion of the image
printed by the printhead after a first amount of time passes from
printing the first portion to create a first finish on a first area of
the substrate; and
selectively applying a second amount of UV radiation by
a second region of the light source to the second portion of the
image printed by the printhead after a second amount of time
passes from printing the second portion to create a second finish
on a second area of the substrate, the first amount of time
different than the second amount of time.
Appeal Br. 9 (key disputed claim language italicized and bolded).
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REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
German et al. (“German”) US 2006/0290760 A1 Dec. 28, 2006
Heath US 2010/0247795 A1 Sept. 30, 2010
Izuo US 2011/0141184 A1 June 16, 2011
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:3
1. Claims 1–6 and 16–20 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over German in view of Heath
(“Rejection 1”). Final Act. 5.
2. Claims 7–15 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over German in view of Izuo and further in view of
Heath (“Rejection 2”). Id. at 11.
3. Claims 1–20 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1–18 of U.S. Patent No.
9,505,238 (“Rejection 3”). Id. at 3–4.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer

3 The Examiner’s § 112 rejection for indefiniteness (see Final Act. 4) is
withdrawn by the Examiner at page 3 of the Answer.
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and Final Office Action, which we adopt as our own. We add the following
primarily for emphasis.
Rejection 1
The Examiner rejects claims 1–6 and 16–20 under pre-AIA
35 U.S.C. § 103(a) as obvious over the combination of German and Heath
(Final Act. 5–11), which we refer to as Rejection 1. In response to the
Examiner’s rejection, Appellant argues for the patentability of claim 1 but
does not present separate argument for the patentability of remaining claims
2–6 and 16–20. Appeal Br. 4. We select claim 1 as representative and
claims 2–6 and 16–20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner determines that the combination of German and Heath
suggests a method of printing using UV curable ink satisfying all of the
limitations of claim 1 and concludes the combination would have rendered
the claim obvious. Final Act. 5–6 (citing German ¶¶ 40, 41, 58, 59; Heath
¶¶ 26, 30). The Examiner finds German discloses nearly all of the
limitations of claim 1, but that the reference does not explicitly disclose “the
first amount of time different than the second amount of time” recitation of
the claim. Id. at 6. The Examiner, however, relies on Heath for disclosing
or suggesting that element of the claim. In particular, the Examiner finds
Heath discloses UV LEDs to cure ink and varying the amount of time of
exposure to generate different effects within the same substrate. Id. at 6
(citing Heath ¶ 26).
Based on the above findings, the Examiner concludes
[i]t would have been obvious to one of ordinary skill in the
art at the time of the invention to have applied UV
radiation such that the first amount of time [is] different
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than the second amount of time, as disclosed by Heath,
into the method of German, for the purpose of generating
multiple effects on the same substrate.
Id. at 6 (citing Heath ¶ 30).
Appellant argues that the Examiner’s rejection of claim 1 should be
reversed because the cited art does not teach or suggest “the first amount of
time different than the second amount of time,” as recited in the claim.
Appeal Br. 5–7; Reply Br. 1–5. Appellant contends that, in contrast to the
claimed invention, the cited art teaches that the amount of time that passes
after printing the first portion and applying UV to the first portion and the
amount of time that passes between printing the second portion are identical.
Appeal Br. 5; Reply Br. 4–5 (arguing “the applied art does not teach that the
(first) amount of time that passes between the printing of the first image . . .
is different than the second amount of time that passes between the printing
of the second image”).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. Rather, on the record before us, we find a
preponderance of the evidence and sound technical reasoning support the
Examiner’s findings and determination that the combination of German and
Heath suggests a method of printing using UV curable ink satisfying all of
the limitations of claim 1, including “the first amount of time different than
the second amount of time,” and conclusion that the combination would
have rendered the claimed method obvious. German ¶¶ 40, 41, 58, 59;
Heath ¶¶ 26, 30.
As the Examiner finds (Final Act. 5–6), German discloses a method of
printing an image using UV curable ink, including printing the first portion
of the image on a substrate; printing the second portion of the image on the
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substrate; selectively applying a first amount of UV radiation to the first
portion of the image printed; and selectively applying a second amount of
UV radiation to the second portion of the image printing. German ¶¶ 40, 41,
58, 59. Regarding the recitation “the first amount of time different than the
second amount of time,” as the Examiner further finds (Final Act. 6), Heath
discloses using UV LEDs to cure ink and varying the amount of time of
exposure to generate different effects within the same substrate. Heath ¶ 26.
The Examiner also provides a reasonable basis, which is supported by
a preponderance of the evidence in the record, to evince why one of ordinary
skill would have combined the teachings of German and Heath to arrive at
the claimed invention. Final Act. 6 (explaining that one of ordinary skill
would have had reason to modify German’s printing method (German ¶¶ 58,
59) to apply UV radiation such that the first amount of time of exposure is
different than the second amount of time of exposure, as disclosed by Heath
(Heath ¶ 26), for the purpose of generating multiple effects on the same
substrate); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007)
(explaining that any need or problem known in the art can provide a reason
for combining the elements in the manner claimed).
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings or analysis in this regard. We do not find
persuasive Appellant’s “shorthand notation” arguments (Appeal Br. 5–7;
Reply Br. 2–4) based on the fact-finding and reasoning provided by the
Examiner at pages 4–5 of the Answer and pages 5–6 of the Final Office
Action. In particular, as the Examiner points out (Ans. 4), Appellant’s
contentions in this regard are not well-taken because they appear to be based
on language and limitations that do not appear in the claims, and do not
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accurately reflect the actual claim language. In re Van Geuns, 988 F.2d
1181, 1184–85 (Fed. Cir. 1993).
Appellant’s contentions in this regard are also not persuasive of
reversible error in the Examiner’s rejection because they are largely
conclusory and do not meaningfully address or rebut the Examiner’s specific
findings regarding Heath’s disclosure of the “the first amount of time
different than the second amount of time” recitation of the claim, and what
the combined teachings of German and Heath would have reasonably
suggested to one of ordinary skill in the art. One cannot show
non-obviousness by attacking references individually where the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Appellant’s mere disagreement as to the Examiner’s factual findings,
without more, is insufficient to establish reversible error. SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)
(“[M]ere statements of disagreement . . . as to the existence of factual
disputes do not amount to a developed argument.”); see also In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere lawyer’s
arguments or conclusory statements, which are unsupported by concrete
factual evidence, are entitled to little probative value).
Accordingly, we affirm the Examiner’s rejection of claims 1–6 and
16–20 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the
combination of German and Heath.
Rejection 2
In response to the Examiner’s rejection of claims 7–15 under pre-AIA
§ 103(a) as obvious over the combination of German, Izuo, and Heath (Final
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Act. 11–15), which we refer to as Rejection 2, Appellant does not present
any new or additional substantive arguments. Rather, Appellant relies on the
same arguments previously presented above in response to the Examiner’s
rejection of claim 1 based on the combination of German and Heath. Appeal
Br. 7.
Accordingly, based on the fact-finding and reasoning provided by the
Examiner at pages 3–5 of the Answer and pages 11–15 of the Final Office
Action, and for principally the same reasons discussed above for affirming
the Examiner’s rejection of claim 1, we affirm the Examiner’s rejection of
claims 7–15 under pre-AIA 35 U.S.C. § 103(a) as obvious over the
combination of German, Izuo, and Heath.
Rejection 3
Appellant does not present any substantive argument in the Appeal
Brief or Reply Brief in response to the Examiner’s rejection of claims 1–20
on the ground of nonstatutory double patenting as being unpatentable over
claims 1–18 of U.S. Patent No. 9,505,238 (Final Act. 3–4). See generally
Appeal Br.; Reply Br.
Accordingly, because the Examiner’s rejection of claims 1–20 for
nonstatutory double patenting has not been withdrawn (see Ans. 3; Final
Act. 3–4) and is not disputed by Appellant, we summarily affirm this
rejection. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008); Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an
appellant fails to present arguments on a particular issue – or, more broadly,
on a particular rejection – the Board will not, as a general matter, unilaterally
review those uncontested aspects of the rejection”) (cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)).
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 16–20

103(a) German, Heath 1–6, 16–20

7–15

103(a) German, Izuo, Heath 7–15

1–20 Nonstatutory double
patenting
1–20
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv).
AFFIRMED