Ex Parte Iraqi et al

Patent Trial and Appeal Board

Nov 14, 2017

13310807 (P.T.A.B. Nov. 14, 2017)

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.
13/310,807 12/05/2011 Muhammad Iraqi 3017/401-US 2027
69054 7590 11/16/2017
RFfTTFS PATFNTS
EXAMINER
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NOTIFICATION DATE DELIVERY MODE
11/16/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUHAMMAD IRAQI, AVI LEVY,
and EVA IGNER
Appeal 2017-002123
Application 13/310,807
Technology Center 1700
Before JEFFREY T. SMITH, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 5, 7, 8, 10, 14—16, 31, and 33.1 We have jurisdiction under
35 U.S.C. §6.
1 The Examiner withdrew the rejection of claims 3, 4, 6, 15, 30, 31, and 34—
36 are under 35 U.S.C. § 112, first paragraph. Final Act. 3; Ans. 2. Because
there are no prior art rejections affecting these claims, claims 3, 4, 6, 15, 30,
31, and 34—36 are no longer before us for review on appeal. See generally
Final Action and Answer.
Appeal 2017-002123
Application 13/310,807
Independent claim 1 generally illustrates the subject matter on appeal
and is reproduced below:
1. A system for printing patterns on an object, the
system comprising:
a copper protective coating printing unit arranged to
digitally print copper protective coating ink on the object to
provide at least one copper protective coating ink pattern;
a first bridge;
a first curing unit;
an object supporter that is configured to support the
object;
a motorized system that is configured to move the
object supporter along a first direction and between the first
curing unit and the copper protective coating printing unit;
and
wherein the first curing unit is arranged to cure the
copper protective coating ink.
As a preliminary matter, the Examiner maintained the following
rejection not appealed by Appellants2 (Answer 2; Final Act. 4):
I. Claim 10 rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Appellants do not dispute this rejection. See generally Appeal Brief,3
and Reply Brief. Accordingly, we summarily affirm the Examiner’s
rejection of claim 10 under 35 U.S.C. § 112, second paragraph (Rejection
I).4
2 The real party in interest is identified as Camtek Ltd. with its headquarters
in Migdal Haemeq, Israel. App. Br. 3.
3 We refer to the Amended Appeal Brief, filed July 20, 2016, as the “Appeal
Brief.”
4 Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Mar.
2014, Rev. November 2015) (“If a ground of rejection stated by the
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Application 13/310,807
Appellants (see generally Appeal Brief) request review of the
following prior art rejections from the Examiner’s Final Office Action:
II. Claims 1, 2, 5, 7, 8, 10, 14, 15 and 31 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yafe (US 2010/0066786 Al, published March
18, 2010) and Lent et al. (US 5,270,368, issued December 14, 1993, “Lent”).
III. Claims 16 and 33 rejected under 35 U.S.C. § 103(a) as unpatentable
over Yafe, Lent, Askeland et al. (US 2006/0103707 Al, published May 18,
2006, “Askeland”) and Zohar et al. (US 2005/0176177 Al, published
August 11, 2005. “Zohar”).
OPINION
Prior Art Rejections
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s prior art rejections of claims 1,
2, 5, 7, 8, 10, 14—16, 31, and 33 under 35 U.S.C. § 103(a) (Rejections II and
III) for the reasons presented by the Examiner. We add the following for
emphasis.
[Ejxaminer is not addressed in the [Ajppellant’s brief, [Ajppellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it, unless the [Ejxaminer subsequently withdrew the
rejection in the [Ejxaminer’s [Ajnswer.”). See also 37 CFR 41.39(a)(1).
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Rejection II5
The subject matter of independent claim 1 is directed to a system for
printing protective coating patterns on an object. According to the
Specification, the protective coating is applied to exposed copper conductors
present on the object. Spec. 110.
The Examiner finds Yafe teaches a system for printing patterns on an
object that differs from the claimed invention in that Yafe does not disclose
the use of a copper protective ink to form a protective pattern. Final Act. 5—
6; Yafe H 9, 13, 33, 37, 41, 51, 52, 55, 58, 65, 85, and Figures 1—3. The
Examiner finds Fent discloses the use of a UV curable etch resistant ink in
inkjet printers to apply patterns on copper clad board or a circuit, where the
ink increases the chemical resistance to etching and protects the copper clad
areas. Final Act. 6; Fent col. 3,11. 45—54, col. 3,1. 65—col. 4,1. 2, and col. 8,
11. 16—25. That is, the Examiner finds Fent discloses the use of copper
protecting ink to protect a copper clad surface as known. The Examiner
concludes it would have been obvious to one of ordinary skill in the art to
incorporate Fent’s ink as an ink dispensed by Yafe’s system in view of
Fent’s disclosure. Final Act. 6.
In addressing this rejection, Appellants do not dispute the Examiner’s
findings with respect to Yafe. App. Br. 25—26. Instead, Appellants argue
that Fent’s teaching of a UV curable etch resistant ink does not provide a
5 Appellants present arguments only for independent claim 1. App. Br. 25—
26. Therefore, we select claim 1 as representative of the subject matter for
review on appeal for Rejection II. Claims 2, 5, 7, 8, 10, 14, 15 and 3 stand
or fall with independent claim 1.
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motivation to one skilled in the art to use the system of Yafe to print with the
ink of Lent. App. Br. 26.
Appellants’ arguments give rise to an issue of claim interpretation.
Namely, to which one of the statutory classes of invention are the claims
directed? The claims are “system” claims, but in order to be patentable the
subject matter of a claim must fit into one and only one of the statutory
claims of invention enunciated in 35 U.S.C. § 101, i.e., a process, machine,
manufacture, or composition of matter. Claims cannot be directed to
combinations of those classes of invention. See IPXL Holdings, L.L. C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (claims to a
combination of statutory claims of invention are not permitted and are
indefinite).
We interpret the system claims as directed to an apparatus, i.e. a
structure which can be termed a machine or manufacture under 35 U.S.C. §
101. Claims directed to an apparatus must be distinguished from the prior
art in terms of structure. See In re Danly, 263 F.2d 844, 848 (CCPA 1959)
(“Claims drawn to an apparatus must distinguish from the prior art in terms
of structure rather than function”);
We are unpersuaded by Appellant’s argument and agree with the
Examiner that the type of ink used in a printer does not impart a structural
difference that patentably distinguishes the claimed system from the system
of the prior art. Ans. 12. Moreover, the Examiner established that the
systems disclosed by Yafe and Lent use inkjet printers to print a protective
pattern over copper. Final Act. 6; Yafe Tflf 8, 9, 13, 85; Lent col. 3,11. 33—39.
Therefore, one skilled in the art would have reasonably expected that Lent’s
ink would have been suitable for use in Yafe’s system for the purpose of
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providing a protective coating to copper. In re O'Farrell, 853 F.2d 894, 904
(Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a
reasonable expectation of success.”).
Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 5, 7,
8, 10, 14, 15 and 31 under 35 U.S.C. § 103(a) for the reasons presented by
the Examiner and given above.
Rejection III6’7
The subject matter of independent claim 16 differs principally from
the subject matter of independent claim 1 in that it requires multiple printing
units using different types of ink and a printing structure that includes two
bridges, with one bridge supporting a single printing unit and the other
supporting two printing units.
The Examiner finds Yafe teaches a device that differs from the
claimed invention in that they do not explicitly teach a third print head for
printing etch resistant ink or that second and third print heads are supported
on a second printing bridge. Final Act. 8—9; Yafe H 9, 13, 33, 37, 41, 49—
52, 55, 58, 100-102, 107, 108 and Figure 3. The Examiner finds Figure 5 of
Askeland teaches a print system (310) comprising a plurality of printing
units (16, 317, 18; print heads) arranged in two bridges (actuators 320 and
6 Appellants present arguments only for independent claim 16. App. Br.
25—26. Therefore, we select claim 16 as representative of the subject matter
for review on appeal for Rejection III. Claim 33 stands or falls with
independent claim 16.
7 A discussion of Lent and Zohar is unnecessary for disposition of Rejection
III because Appellants did not contest the Examiner’s findings with respect
to these references. App. Br. 25. We also note that Appellants do not
contest the Examiner’s findings with respect to Yafe in addressing this
rejection. See generally App. Br.
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22), as claimed. Final Act. 9—10; Askeland 30—32. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to modify Yafe’s system to incorporate a plurality of printing units using
two bridges, as disclosed by Askeland, because it results in a system with a
compact arrangement for simultaneously printing from three different print
units. Final Act. 10; Askeland 132.
Appellants argue Askeland adds print units of the same type merely to
cover wider pages and does not teach or suggest and even teaches away from
having a copper protective coating printing unit, a solder mask printing unit;
and a notation mark printing unit as recited in claim 16. App. Br. 24.
We are unpersuaded by this argument. As noted by the Examiner,
Askeland teaches the claimed multiple printing unit structure. Ans. 9. To
the extent that Appellants argue that Askeland does not teach printing units
using specifically different inks, we again agree with the Examiner that the
type of ink used in a printer does not impart a structural difference that
patentably distinguishes the claimed system from the system of the prior art.
Id. Moreover, as noted by the Examiner, Yafe discloses a two printing unit
arrangement using specifically different inks. Final Act. 8; Yafe H 41, 52,
54, and 55. Appellants have not adequately explained why one skilled in the
art, using no more than ordinary creativity, would not have been capable of
determining the types of ink for distinct printing units, regardless of the
number of units, in the modified system of the combined teachings of Yafe
and Askeland, as suggested by Yafe. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton. ”); see In re Sovish, 769 F.2d 738, 743 (Fed.
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Cir. 1985) (Skill is presumed on the part of one of ordinary skill in the art.);
In reBozek, 416 F.2d 1385, 1390 (CCPA 1969).
Appellants further argue Askeland only exemplifies paper as the
media that is subjected to printing and does not disclose printed circuit
boards as a media. App. Br. 24; Askeland 12.
We also find this argument unavailing. We note that claim 16 only
recites printing on an object and does not recite printing on a printed circuit
board. Moreover, language in an apparatus claim directed to the function,
operation, intent-of-use, and materials upon which these apparatus
components work, that does not structurally limit the apparatus components
or patentably differentiate the claimed apparatus from an otherwise identical
prior art apparatus, will not support patentability. See, e.g., In re Rishoi, 197
F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 940 (CCPA
1963); In reLudtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Yanush, All
F.2d 958, 959 (CCPA 1973). As noted by the Examiner, the argument
focuses on material worked upon and Appellants have not shown that the
system of the combined teachings would not work on other objects, such as
printed circuit boards. Ans. 11.
Accordingly, we affirm the Examiner’s rejection of claims 16 and 33
under 35 U.S.C. § 103 (a) for the reasons presented by the Examiner and
given above.
DECISION
The Examiner’s rejection of claim 10 under 35 U.S.C. § 112, second
paragraph is affirmed.
The Examiner’s prior art rejections of claims 1, 2, 5, 7, 8, 10, 14—16,
31, and 33 under 35 U.S.C. § 103(a) are affirmed.
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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).
AFFIRMED
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