Ex Parte GygiDownload PDFPatent Trial and Appeal BoardSep 6, 201310561748 (P.T.A.B. Sep. 6, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/561,748 04/20/2006 Matthias Gygi 1322.1121101 5925 28075 7590 09/09/2013 SEAGER, TUFTE & WICKHEM, LLC 1221 NICOLLET AVENUE SUITE 800 MINNEAPOLIS, MN 55403-2420 EXAMINER YAN, REN LUO ART UNIT PAPER NUMBER 2854 MAIL DATE DELIVERY MODE 09/09/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTHIAS GYGI ____________ Appeal 2011-004724 Application 10/561,748 Technology Center 2800 ____________ Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and JAMES C. HOUSEL, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-7, 11-16, 21-24 and 26. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: Appeal 2011-004724 Application 10/561,748 2 1. A printing machine for printing a substrate in the form of a sheet or continuous web, said substrate being intended to receive at least one impression, comprising at least one transfer system for conveying the substrate onto an impression cylinder, at least one screen of cylindrical or flat shape equipped with a doctor blade, the screen collaborating with the impression cylinder and intended to print the substrate by screen-printing with an optically variable ink containing pigments that can be orientated by a magnetic field and an unloading system for carrying the substrate away after the printing operation, wherein said impression cylinder comprises at least one magnetic element on its printing surface, said magnetic element being placed at a location corresponding to said impression on said substrate performed by said screen so as to orientate the pigments contained in the optically variable ink and create a varying optical effect in said impression, and wherein said at least one magnetic element is covered by a sheet of non- magnetic material. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Corver US 5,247,317 Sep. 21, 1993 Raksha US 7,047,883 B2 May 23, 2006 Appellants’ Admitted Prior Art (AAPA) as shown by Figure 1 and as described on page 7 of Specification. THE REJECTION Claims 1-7, 11-16, 21-24 and 26 are patentable under 35 U.S.C. §103(a) over the Admitted Prior Art (AAPA) in view of Raksha and Corver. Appeal 2011-004724 Application 10/561,748 3 ISSUE Did the Examiner err in determining that the proposed combination meets the claimed subject matter, and in particular, the aspect of claim 1 pertaining to "said magnetic element being placed at a location. . . as to orientate the pigments contained in the optically variable ink and create a varying optical effect in said impression"? We answer this question in the affirmative and REVERSE. ANALYSIS Appellants submit that the modification as proposed by the Examiner would not produce a varying optical effect in the impression as required by the claim language because a homogenous magnetic field at the surface of the cylinder would be produced. Br. 6-11. Reply Br. 2-4. It is the Examiner’s position that: The Corver et al. patent was relied on for the teaching of providing a magnetic roller 130 with a sheet of non-magnetic material 131 such as aluminum or stainless steel to cover the magnets 135 disposed on the roller surface for the purpose of obtaining a homogeneous magnetic field at the surface of the cylinder. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to provide the magnetic element(s) on the cylinder surface of AAPA, as modified by Raksha et al with a sheet of non-magnetic material such as aluminum or stainless steel as taught by Carver et al so as to predictably obtain a homogeneous magnetic field at the surface of the impression cylinder where the magnetic element(s) are located. Appeal 2011-004724 Application 10/561,748 4 Ans. 8-9.1 Appellants argue: The Examiner is apparently arguing that because the magnets would be spaced apart (per Raksha) that a printing machine having locally homogenous magnetic fields (the homogeneity provided for by the non-magnetic sheet of Corver) would be able to "orientate the pigments contained in the optically variable ink and create a varying optical effect in said impression." Appellants respectfully disagree. Raksha teaches spaced-apart magnets because Raksha teaches printing spaced-apart optically variable elements. See Fig 4, for example. The magnets are under the optically variable printed elements, which is the only location where the optically variable ink is disposed. To produce the optically variable effect, the magnets produce a non-homogeneous field. See Fig 3C and column 8, lines 32-36. So if one modified AAPA in view of Raksha, one would have a printing press that has magnetic elements at the locations where variably optical elements are printed. If one then modifies AAPA and Raksha in view of Corver as suggested, at those locations, the magnetic fields would be homogeneous. See again, Examiner's Answer, page 9. Thus the proposed modification to AAPA in view of Raksha and Corver would not meet the claim language of "said magnetic element being placed at a location...as to orientate the pigments contained in the optically variable ink and create a varying 1 We note, though the Examiner did not find, that Raksha teaches an in-line printing process having magnets for orienting magnetic flakes in an optically variable ink, wherein the magnets are covered with “aluminum or other non- magnetic material.” Raksha, 8:46-49. Further Raksha teaches mounting the magnets in “[a] base made from a metal having a high magnetic permeability would reduce the strength of a magnetic field on the side of the magnet that is responsible for the tilt of the [magnetic] flakes.” App App “a ho magn Exam rolle magn the s 8-9. is de magn to pr eal 2011-0 lication 10 optical e not be ab because printing We agre mogeneou etic elem iner’s rel r 130 cove ets 135 fo urface of t The Corv picted in C et 135): As stated oduce a va 04724 /561,748 ffect in sa le to prod it would h occurs. e with App s magneti ent(s) only iance upon red with a r the purp he cylinde er arrange orver’s Fi by Appe rying opti id impress uce a vary ave a hom ellants’ st c field wil locally at the teach sheet of n ose of obt r buttresse ment that g gure 2, rep llants, a no cal effect 5 ion." The p ing optica ogeneous ated posit l be gener these sele ings of Co on-magne aining a ho s this adm enerates t roduced b n-homoge in the impr roposed m l effect in magnetic f ion. The E ated under cted locati rver of pro tic materia mogenou ission by t he homog elow (see nous mag ession as odificatio the impres ield where xaminer a the influe ons.” Ans viding ma l 131 to co s magnetic he Examin enous mag arrangem netic field claimed. T n would sion the dmits that nce of the . 9. The gnetic ver the field at er. Ans. netic field ent near is needed his non- Appeal 2011-004724 Application 10/561,748 6 homogenous magnetic field, and its effect, is best represented by Appellants’ Figure 4, shown below: As shown in Figure 4, permanent magnet 28 creates magnetic field lines 29, 30 that orient the pigments of the optically variable ink in the directions as indicated in Figure 4. Spec. 9. ll. 26-37. The arrangement/effect shown in Appellants’ Figure 4 is very different from the arrangement/effect shown in Corver’s Figure 2 (see arrangement near magnet 135). As such, as Appellants explain, since there would be a homogeneous magnetic field where the printing occurs in the proposed combination (as admitted by the Examiner), an optically variable effect could not be produced because a non-homogeneous field is required, as depicted in Appellants’ Figure 4. Appeal 2011-004724 Application 10/561,748 7 In view of the above, we reverse the rejection. CONCLUSIONS OF LAW AND DECISION The rejection is reversed. REVERSED kmm Copy with citationCopy as parenthetical citation