Ex Parte Kovacs et al

Patent Trials and Appeals Board

Sep 29, 2014

12107520 - (D) (P.T.A.B. Sep. 29, 2014)

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.
12/107,520 04/22/2008 Gregory Joseph Kovacs 20052330USCIP-XER1857-01 9880
62095 7590 09/30/2014
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
PATEL, RUT N
ART UNIT PAPER NUMBER
2853
MAIL DATE DELIVERY MODE
09/30/2014 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 GREGORY JOSEPH KOVACS, STEVEN E. READY,
JENNIFER L. BELELIE, PETER GORDON ODELL,
MOJGAN RABBANI and SHRIRAM V. REVANKAR

Appeal 2012-012172
Application 12/107,520
Technology Center 2800
____________

Before CHUNG K. PAK, ROMULO H. DELMENDO, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision finally rejecting claims 1-7 and 9-14. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 The Real Parties-In-Interest are Xerox Corporation and Palo Alto
Research Center Incorporated (Br. 1).
Appeal 2012-012172
Application 12/107,520
2
CLAIMED SUBJECT MATTER
The claimed invention is a method for forming an image on a
corrugated substrate (Abstract). Claims 1 is representative of the claims on
appeal and is reproduced below from the Claims Appendix of the Appeal
Brief (key claim limitations in italics):

1. A method for forming an image on a corrugated substrate
comprising:
melting a radiation-curable gel based phase change ink;
depositing at least one drop of the melted ink on the
corrugated substrate in a pattern to form an image;
allowing the ink to gel on the substrate; and
curing the ink.

DISCUSSION
The only rejection on appeal is the rejection of claims 1-7 and 9-14
under 35 U.S.C. § 103(a) as being unpatentable over Ishikawa2 in view of
You.3 Appellants state that claims 1-4, 6, 7, 9-11,13, and 14 stand or fall
together, while claims 5 and 12 are grouped together but separate from the
remaining claims (Br. 4).
The Examiner finds that Ishikawa discloses a method for forming an
image on a substrate which comprises heating an ultraviolet-curable gel based
phase change ink, depositing at least one drop of the melted ink on the
substrate in a pattern to form an image, allowing the ink to gel on the
substrate, and curing the ink with UV radiation (Ans. 3-4, citing Ishikawa,
¶¶ 13-15, 17, 23, 77, and 111). Appellants do not dispute these findings (see,

2 Ishikawa et al., US Patent Application Publication 2003/0128264 A1,
published July 10, 2003.
3 You et al., U.S. Patent No. 5,151,120, issued September 29, 1992.
Appeal 2012-012172
Application 12/107,520
3
Br. 5 (stating that non-obviousness is based on the argument that neither
Ishikawa nor You discloses the use of a corrugated substrate)).
The Examiner also finds that Ishikawa discloses that its process may be
used on substrate materials such as “sign boards, decorations of walls,
buildings and also textiles” (Ans. 4). The Examiner further finds that You
teaches a solid phase change inkjet printing method in which the substrate is a
cardboard substrate (id.) The Examiner concludes that it would have been
obvious to use a corrugated substrate as taught by You in Ishikawa’s process
“for the purpose of labeling and creating a poster [sign]” (id.).
Appellants’ do not contest the Examiner’s combination of Ishikawa and
You (see, Br. 5-7), but instead argue that claim 1 would not have been
obvious because neither Ishikawa nor You teaches the use of a corrugated
substrate4 (Br. 5). Appellants’ arguments do not persuade us that the
Examiner has reversibly erred in making the obviousness rejection.
Appellants argue that the word “cardboard” as used in You (and relied
on by the Examiner in making the obviousness rejection) refers to thick,
heavy paper, such as the type used in birthday cards, and does not refer to a
corrugated substance. However, Appellants provide no credible evidence to
support this proposition, relying solely on attorney argument. However, mere
attorney argument cannot take the place of evidence. See, e.g., In re Pearson,
494 F. 2d 1399, 1405 (CCPA 1974).

4 The Specification describes the term “corrugated” as materials which have
“a design of alternating ridges and valleys manufactured to a specific pitch”
(Spec. ¶ 7). The Specification also defines “cardboard” as a sheet-like
product formed by having a “corrugated member glued or fixed to, or
between, one or more relatively flat facing members” (id.).
Appeal 2012-012172
Application 12/107,520
4
As noted by the Examiner, Taylor5 teaches that “cardboard” is a
corrugated material (Ans. 7, citing Taylor, col. 4, ll. 47-49). Thus, the
evidence of record supports that Examiner’s determination that a combination
of Ishikawa and You (using You’s cardboard substrate in Ishikawa’s process)
would yield the invention described in claim 1. Appellants do not dispute that
Taylor teaches that “cardboard” is a corrugated material, but argue instead that
Taylor teaches away from the claimed invention (Br. 6-7). However, Taylor’s
teachings are not combined by the Examiner with those of Ishikawa and You
in order to arrive at the claimed invention (Ans. 8). Instead, the Examiner
relies on Taylor solely as evidence of the proposition that the term
“cardboard,” as used, for example, in You, would be understood by a person
of skill in the art to be a corrugated substrate (id.).6 We are not persuaded that
this reliance creates reversible error.
Thus, we determine that Appellants have not shown reversible error in
the Examiner’s conclusion that claim 1 would have been obvious over
Ishikawa and You, and affirm this rejection. Because Appellants states that
claims 2-4, 6, 7, 9-11, 13, and 14 stand or fall with claim 1 (Br. 4), we also
affirm the rejections of these claims.
Dependent claims 5 and 12 each recite that the ink is heated to a
temperature of about 70°C to about 95°C. Appellants argue that the rejections
of these claims should be reversed because “Taylor teaches away from using
inks in this range.” However, Taylor is not relied on by the Examiner in
rejecting claims 5 and 12 (Ans. 5). Accordingly, whether it “teaches away

5 Taylor et al., U.S. Patent No. 5,672,413, issued September 30, 1997.
6 The Examiner also finds that the Specification defines “corrugated
substrate” to include cardboard (e.g. Ans. 7, citing Spec. ¶ 7). Our
affirmance of the rejection does not rely on this finding.
Appeal 2012-012172
Application 12/107,520
5
from using inks in this range” is not pertinent to the rejection. Therefore, we
affirm the rejections of claims 5 and 12.

CONCLUSION
We AFFIRM the rejections of claims 1-7 and 9-14 under
35 U.S.C. § 103(a) as being unpatentable over Ishikawa in view of You.

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

AFFIRMED

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