Dover Europe Sarl

Patent Trials and Appeals Board

Oct 8, 2021

2021000691 (P.T.A.B. Oct. 8, 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.
15/839,701 12/12/2017 Steven D. Keddie 06155-0258001/INV17-009 7579
20985 7590 10/08/2021
FISH & RICHARDSON P.C. (SD)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
WALKER, MICHAEL JARED
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
10/08/2021 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN D. KEDDIE
____________

Appeal 2021-000691
Application 15/839,701
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 3–11, and 13–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed June 2, 2020) and Reply Brief (“Reply Br.,” filed November 4, 2020),
and the Examiner’s Answer (“Ans.,” mailed September 11, 2020), Advisory
Action (“Advisory Act.,” mailed April 1, 2020), and Final Office Action
(“Final Act.,” mailed January 27, 2020). Appellant identifies Dover Europe
Sarl as the real party in interest (Appeal Br. 1).
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CLAIMED INVENTION
The Specification states, “[t]his specification relates to industrial
printing systems, and in particular, systems and techniques relating to
printing product codes on the packaging of products in a manufacturing or
distribution facility” (Spec. ¶ 1).
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A system comprising:
[(a)] a product line configured to move products through
a facility;
[(b)] a printer arranged in proximity to at least a portion
of the product line, the printer configured to mark the products
moved through the facility on the product line with product codes
using a single ink comprising a combination of a non-fluorescing
substance and an ultraviolet (UV) fluorescing substance, wherein
a ratio and a concentration of the nonfluorescing substance and
the UV fluorescing substance in the single ink are selected to
balance readability by humans under ambient visible lighting
conditions and readability by machine vision processing under
UV illumination;
[(c)] a UV light source configured and arranged to
illuminate the product codes printed on the products with UV
light, wherein the UV light source is positioned relative to the
product line to illuminate the product codes printed on the
products;
[(d)] a camera configured and arranged to capture visible
light emitted by the single ink of the product codes responsive to
the illumination with the UV light; and
[(e)] a controller coupled with the camera and configured
to perform the machine vision processing on the captured visible
light to identify and confirm the product codes printed on the
products using an increased contrast ratio between the product
codes and a background of the products resulting from
fluorescing of the single ink.
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REJECTIONS
Claims 1 and 11 are rejected under 35 U.S.C. § 103 as unpatentable
over Stokes et al. (US 2014/0119665 A1, published May 1, 2004) (“Stokes”)
and Rapoport et al. (US 2008/0252066 A1, published Oct. 16, 2008)
(“Rapoport”).
Claims 3–5, 10, 13, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Stokes, Rapoport, and Hasinoff et al.
(US 2017/0302840 A1, published Oct. 19, 2017) (“Hasinoff”).
Claims 6, 7, and 15 are rejected under 35 U.S.C. § 103 as
unpatentable over Stokes, Rapoport, Hasinoff, and Auslander et al.
(US 2003/0005303 A1, published Jan. 2, 2003) (“Auslander”).
Claims 9 and 17–20 are rejected under 35 U.S.C. § 103 as
unpatentable over Stokes, Rapoport, and Auslander.
Claims 8 and 16 are rejected under 35 U.S.C. § 103 as unpatentable
over Stokes, Rapoport, and Wade et al. (US 2017/0330137 A1, published
Nov. 16, 2017) (“Wade”).
ANALYSIS
Independent Claims 1 and 11
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 11 under 35 U.S.C. § 103 at least
because neither Stokes nor Rapoport, individually or in combination,
discloses or suggests “a UV light source configured and arranged to
illuminate the product codes printed on the products with UV light, wherein
the UV light source is positioned relative to the product line to illuminate the
product codes printed on the products,” i.e., limitation (c), as recited in
claim 1 and similarly recited in claim 11 (Appeal Br. 4–7).
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Stokes is directed to a system and method for determining saddle
point-like structures in an image (Stokes, Abstr.), and discloses in
paragraph 30, with reference to Figure 1, that a machine vision system 100
acquires images of a scene defined by a field of view 110. Stokes describes
that system 100 is adapted to scan an object, e.g., object 120, in motion
relative to the system, e.g., moving along a conveyor or production line, and
that the system acquires one or more images of the object when it is within
the field of view (id. ¶ 30). Stokes also describes, with reference to
Figure 1, that object 120 includes one or more features of interest, e.g., a
DotCode structure 160.
Still referring to Figure 1, Stokes discloses that system 100 includes a
camera assembly and an associated lens 132, and that the camera includes an
image sensor 134 that receives light from the lens that is focused on the
pixel array of the sensor (Stokes ¶ 32). Stokes further discloses that
sensor 134 is operatively interconnected with an on-board vision processor
that performs conventional machine vision processes (id.).
Addressing the argued limitation in the Final Office Action, the
Examiner equates lens 132 to the claimed light source, and interprets the
proximity of the lens to object 120 as being “relative to the product line”
(Final Act. 3). The Examiner, however, acknowledges that Stokes does not
disclose a UV light source, and relies on Rapoport to cure this deficiency (id.
at 4 (citing Rapoport ¶ 30, Fig. 1)).
The difficulty with the Examiner’s analysis, as Appellant observes, is
that lens 132, which the Examiner equates to the claimed light source,
illuminates the pixel array of sensor 134; it does not “illuminate the product
codes printed on the products,” i.e., the printed DotCode structure 160 on
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object 120, as called in the claims (Appeal Br. 4). And, although the
Examiner maintains otherwise, Rapoport does not cure this deficiency.
Rapoport is titled “METHOD AND SYSTEM FOR CREATING
AND READING MULTI-COLOR CO-PLANAR EMISSIVE INDICIA
USING PRINTABLE DYES AND PIGMENTS,” and discloses a multi-
color, co-planar emissive indicium that can be applied or printed on an
object or packaging for identifying, tracking, and/or authenticating the object
(Rapoport ¶ 23). Rapoport describes, with reference to Figure 1, that
indicium 13 is formed by combining two separate barcodes 10 and 20 (id.
¶ 28).
More particularly, as shown in the figure, a computerized bitmap
“mask” 15 (labeled “Mask A”) is logically “anded” to barcode 10 to
generate pixelated image 11; image 11 represents a “map” that directs an
inkjet print head to eject ink of a particular color at the address of the pixel
corresponding to that location on the map (id. ¶ 29). Another bitmap
mask 25 (labeled “Mask B” in Figure 1) is logically “anded” to barcode 20
to generate pixelated image 21, which, likewise, indicates an exact pattern of
ink that is printed in a second color, different from the color used to print
pixelated image 11 (id.). Rapoport discloses that pixelated images 11 and 21
are combined and aligned to print within the same area of the object, thereby
creating indicium 13 (id.).
The Examiner relies on Rapoport as disclosing the use of a UV light
source to illuminate a product code. Yet, even if lens 132 in Stokes could
properly be replaced with a UV light source, we agree with Appellant that
there is nothing in the cited portion of Rapoport that discloses or suggests
“using a UV light source to illuminate the code (for use in identifying and
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confirming the product codes printed on the products) on the very same
product line in which the products were marked with the product codes by
the printer,” i.e., positioning a UV light source on the same production line
on which the products were marked with the product codes (Appeal Br. 5).
And, as described above, Stokes discloses that lens 132 illuminates the pixel
array of sensor 134, not “the product codes printed on the products.”
A portion of Figure 1 of Rapoport is enclosed in brackets, and marked
“[s]ection for understanding purposes only, not realized in the application.”
There, Rapoport shows details of pixelated images 98 and 99 after
“excitement” with UV light of chemical pigments in pixelated images 11
and 21 (Rapoport ¶ 30).
The Examiner relies on the bracketed portion of Rapoport as
disclosing the use of a UV light source to illuminate a product code (Final
Act. 5 (citing Rapoport’s Figure 1 and paragraph 30 as “discussing the
exciting of the chemicals with UV light”)). But, as Appellant observes, and
we agree, this portion of the Rapoport is “for understanding purposes only,
not realized in the application”; Rapoport also explicitly states that
“images 98, 99 are not actually steps in the formation of the indicium 13,
and not part of the disclosed method or system” (Rapoport ¶ 30).
The Examiner takes the position, “Rapoport for ‘understanding only’
is disclosed by the source for one of ordinary skill[ ] in the art to use[;] prior
art[ ] disclaimer does not prevent the realization from happening” (Advisory
Act. 2; see also Ans. 5 (“If it is not realized [sic] as a limiting factor within
Rapoport does not prevent Rapoport from teaching its use as [an] alternative
light source when using UV inks.”)). We, however, agree with Appellant
that although this may be true in general, Rapoport’s disclaimer does impact
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“whether . . . a person of ordinary skill in the art would have used an
expressly disclaimed portion . . . of Rapoport to modify Stokes in a
combination of the two references that is based on the application of
Rapoport itself” (Appeal Br. 6).
In rejecting claims 1 and 11 as obvious over the combination of
Stokes and Rapoport, the Examiner concluded that it would have been
obvious to a person of ordinary skill in the inventory management art before
the effective filing date of the claimed invention “to have modified the
teachings of Stokes to . . . use a UV light source to illuminate the code, as
disclosed by Rapoport” (Final Act. 5), and that one of ordinary skill in the
art would have been motivated to make this modification “in order to [sic]
inkjet printing allows on-demand printing of unique serialization of products
(Rapoport [0066]) and to be able to scan the code in different situations
(Rapoport [0064])” (id.). Yet, neither paragraph 66 of Rapoport (explaining
that inkjet technology is primarily used for creating the indicium of the
present disclosure because “inkjet technology allows on-demand printing of
unique serialization of products at the unit box level at packaging line
conveyor speeds”) nor paragraph 64 (describing the need for positional
registration between colors when using “[i]nkjet technology for multi-color
printing”) provides an apparent reason for a person of ordinary skill in the
art to modify the teachings of Stokes to include the disclaimed portion of
Rapoport, i.e., a UV light source for illuminating product codes (Appeal
Br. 7). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding
that a prima facie case of obviousness requires showing that one of ordinary
skill in the art would have had both an apparent reason to modify the prior
art and predictability or a reasonable expectation of success in doing so).
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Moreover, as described above, even if lens 132 in Stokes were
replaced with a UV light source, we agree with Appellant that there is
nothing in the cited portion of Rapoport, including the portion that Rapoport
explicitly disclaims, that discloses or suggests, whether considered alone or
in combination with Stokes, that “the UV light source is positioned relative
to the product line to illuminate the product codes printed on the products,”
as called for in the independent claims.
We are persuaded, on the present record, that the Examiner erred in
rejecting independent claims 1 and 11 under 35 U.S.C. § 103. Therefore, we
do not sustain the Examiner’s rejection.
Dependent Claims 3–10 and 13–20
Each of claims 3–10 and 13–20 depends, directly or indirectly, from
one of independent claims 1 and 11. The rejections of these dependent
claims do not cure the deficiencies in the Examiner’s rejection of
independent claims 1 and 11. Therefore, we do not sustain the Examiner’s
rejection under 35 U.S.C. § 103 of dependent claims 3–10 and 13–20 for the
same reasons set forth above with respect to the independent claims.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 11 103 Stokes, Rapoport 1, 11
3–5, 10,
13, 14
103 Stokes, Rapoport,
Hasinoff
3–5, 10,
13, 14
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Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
6, 7, 15 103 Stokes, Rapoport,
Hasinoff,
Auslander
6, 7, 15
9, 17–20 103 Stokes, Rapoport,
Auslander
9, 17–20
8, 16 103 Stokes, Rapoport,
Wade
8, 16
Overall
Outcome
1, 3–11,
13–20
REVERSED