Ex Parte Pattekar et alDownload PDFPatent Trial and Appeal BoardAug 8, 201613481645 (P.T.A.B. Aug. 8, 2016) Copy Citation 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. 13/481,645 05/25/2012 Ashish Pattekar 20090939-US-DIV/8538P023D 4479 81941 7590 08/09/2016 PARC-XEROX/BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP 1279 Oakmead Parkway Sunnyvale, CA 94085-4040 EXAMINER THIES, BRADLEY W ART UNIT PAPER NUMBER 2853 MAIL DATE DELIVERY MODE 08/09/2016 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 ASHISH PATTEKAR and ERIC PEETERS1 ____________ Appeal 2015-006100 Application 13/481,645 Technology Center 2800 ____________ Before PETER F. KRATZ, CHRISTOPHER C. KENNEDY, and BRIAN D. RANGE, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–9, 11, and 12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to a method for thermal ink transfer. E.g., Spec. ¶ 2; Claim 1. Claim 1 is reproduced below from page 18 (Claims Appendix) of the Appeal Brief: 1 According to the Appellants, the Real Party in Interest is Palo Alto Research Center Incorporated. App. Br. 3. Appeal 2015-006100 Application 13/481,645 2 1. A method comprising: creating a pattern of a fountain solution on an endless belt having a thin thickness, wherein the thickness of the fountain solution is less than 2 μm, and wherein the thin thickness of the belt is less than 1 mm; driving the endless belt to transfer ink from an ink donor roll to an image substrate based on the pattern; heating the belt to an ink accepting temperature uniformly across a width of the belt in vicinity of contact between the belt and the ink donor roll; and cooling the belt using a cooling roll as the belt travels from the ink donor roll to the image substrate, wherein cooling the belt includes using the cooling roll to make contact with a side of the belt that is opposite to a side of the belt receiving ink from the ink donor roll, wherein creating the pattern comprises: blanket coating the belt by the fountain solution, and selectively removing the fountain solution from area on the belt not occupied by the fountain solution pattern, wherein the fountain solution is selectively removed from regions of the endless belt through application of energy using (i) a laser prior to the contact between the belt and the ink donor roll or (ii) an array of hot air jets. REJECTIONS ON APPEAL 1. Claims 1–9, 11, and 12 stand rejected under 35 U.S.C. § 112, ¶ 1, for failure to comply with the written description requirement. 2. Claims 1–5, 7–9, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over De Joseph et al. (US 2009/0056578 A1, published Mar. 5, 2009) in view of Stowe et al. (US 2010/0085585 A1, published Apr. 8, 2010), further in view of Berg et al. (US 2005/0178281 Appeal 2015-006100 Application 13/481,645 3 A1, published Aug. 18, 2005), Wu et al. (US 2010/0255413 A1, published Oct. 7, 2010), and Furuyama (US 6,879,333 B2, issued Apr. 12, 2005). 3. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over De Joseph in view of Stowe, Berg, Wu, and Furuyama, further in view of Gray (US 2004/0011232 A1, published Jan. 22, 2004). ANALYSIS After review of the cited evidence in the appeal record and the opposing positions of the Appellants and the Examiner, we determine that the Appellants have not identified reversible error in the Examiner’s rejections. Accordingly, we affirm the rejections for reasons set forth below, in the Non-Final Action, and in the Examiner’s Answer. See generally Non- Final Act. dated Aug. 28, 2014, at 2–13; Ans. 2–8. Rejection 1 In the Non-Final Action, the Examiner finds that all claims on appeal “fail[] to comply with the written description requirement” because “the specification does not describe heating the belt to an ink accepting temperature uniformly across a width of the belt in vicinity of contact between the belt and the ink donor roll.” Non-Final Act. 2–3 (emphasis in original). We affirm the rejection. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“[T]he test for [compliance with the written description requirement] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”). In a Appeal 2015-006100 Application 13/481,645 4 claim amendment dated October 28, 2013, the Appellants amended the “heating” limitation of claim 1 as follows: heating the belt to an ink accepting temperature uniformly across a width of the belt locally as needed in vicinity of contact between the belt and the ink donor roll[.] As the Examiner explains, the Specification repeatedly references heating the belt locally “as needed,” e.g., Spec. ¶ 6 (“Summary” of the invention), ¶ 14 (Detailed Description), ¶ 28, but nowhere refers to heating the belt “uniformly across a width.” The Appellants’ argument consists almost entirely of lengthy block quotes from the Specification with certain portions emphasized. See App. Br.2 6–8. As the Examiner points out, however, it is not clear from the face of the quoted language how that language shows written description support for the disputed claim limitation, see Ans. 3, and the Appellants provide no persuasive explanation, see App. Br. 6–8. As the Examiner notes, Ans. 3, portions of the quoted and emphasized language specifically disclose, for example, “heating and cooling at the desired local regions,” Spec. ¶ 17 (emphasis added), which seems to suggest targeted “local” heating of the belt rather than heating “uniformly across a width of the belt,” as currently recited by claim 1. On this record, a preponderance of the evidence supports the Examiner’s findings, and the Appellants have not adequately explained how the Specification provides written description support for the disputed claim language. The Appellants have not identified reversible error in the Examiner’s rejection. Cf. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) 2 In this decision, citations to “App. Br.” are to the Supplemental Appeal Brief filed on January 22, 2015. Appeal 2015-006100 Application 13/481,645 5 (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”). Rejections 2 and 3 The Appellants argue the claims as a group, focusing on limitations that appear in claim 1. Therefore, our decision with respect to claim 1 is dispositive of all claims on appeal. The Examiner finds, inter alia, that Stowe teaches a heating unit that heats the belt uniformly across the width of the belt, Non-Final Act. 7–8; Ans. 4–5, and that Berg teaches the use of a fountain solution subsystem to create a fountain solution pattern by selectively removing certain regions of the found solution to create a pattern, Non-Final Act. 10–11; Ans. 5–6. The Appellants first argue that Stowe teaches “pattern-wise” heating of the belt and therefore fails to teach heating uniformly across the width of the belt. App. Br. 10. In the Answer, the Examiner acknowledges that Stowe teaches pattern-wise heating, but the Examiner explains that Stowe also teaches that “[m]any different optical configurations can be used to generate the second optical energy source into the shape of a line source with a flat-top uniform profile across the width of the imaging drum.” Ans. 4–6 (emphasis in original; quoting Stowe ¶ 38). The Examiner further finds that “Stowe would have to include in the pattern-wise heating a pattern heating uniformly across the width of the belt as one of the patterns. At some point the printer would have to print a line across the width of the belt.” Ans. 5–6. In the Reply Brief, the Appellants address Stowe ¶ 38 and argue that, “[e]ven in the optical configuration described in Stowe where a line across the imaging drum is included in the pattern, there is no teaching of this line Appeal 2015-006100 Application 13/481,645 6 across the imaging drum being maintained throughout the pattern to ‘heating the belt to an ink accepting temperature uniformly across a width of the belt.’” Reply Br. 2 (emphasis in original). They further argue that, “even if it is assumed that the entire imaging drum were to be heated in a pattern of that maintains the line across the imaging drum, the Stowe invention would no longer function in its intended manner. Since Stowe selectively heats the imaging drum to create patterns, to heat the entire drum would prevent the creation of any patterns.” Id. at 2–3. We are not persuaded by those arguments. Stowe teaches the use of two energy sources. Stowe ¶¶ 35–38. The first energy source “pattern-wise tune[s] the energy transfer characteristic of the material of the mask layer 12.” Id. ¶ 35. The second energy source “deposit[s] optical energy in a narrow line fashion over mask layer 12, which then selectively reflects, absorbs, or transmits this energy based upon the tuned state of the mask layer. Thus, the temperature profile of the surface 10 is then image-wise realized.” Id. Stowe teaches that “[m]any different optical configurations can be used to generate the second optical energy source into the shape of a line source with a flat-top uniform profile across the width of the imaging drum.” Id. ¶ 38. In view of those teachings, it appears that Stowe’s second energy source heats the belt according to the pattern-wise tuning of the mask layer 12, and that the second energy source is capable of heating uniformly across a width of the belt, i.e., in a “uniform profile across the width of the imaging drum.” Id. ¶¶ 35–38. While it does not appear that Stowe’s second energy source constantly heats the belt uniformly across its width, the Examiner finds that the second energy source would heat uniformly across Appeal 2015-006100 Application 13/481,645 7 the width at least when “the printer would have to print a line across the width of the belt.” Ans. 5–6. Contrary to the Appellants’ argument, claim 1 does not recite that the heat must be “maintained throughout the pattern,” or that it must be constantly maintained, see Reply Br. 2; it recites “heating the belt . . . uniformly across a width of the belt.” As set forth above, Stowe appears to meet that limitation at least in the situation in which Stowe is printing a line across the width of the belt. To the extent the Appellants argue that Stowe’s optical configuration would not result in a “uniform” heating, the Appellants provide no explanation as to why a person of ordinary skill in the art would not expect a “uniform profile across the width of the imaging drum” to result in uniform heating across the width. See id. Similarly, the Appellants fail to provide a persuasive explanation as to why Stowe would not function if interpreted in that manner. See Reply Br. 2. As explained above, Stowe describes two energy sources. The first “emit[s] a first energy beam 18 at the mask layer 12 to pattern-wise tune the energy transfer characteristic of the material of the mask layer 12.” Stowe ¶ 35. The second “is configured to emit a second energy beam 20 at the mask layer 12.” Id. ¶ 35. The Appellants fail to persuasively explain why the Stowe’s combination of energy sources would fail to create any patterns if the second energy source at times heats the belt uniformly across its width, which is expressly taught by Stowe ¶ 38. The Appellants do not dispute the Examiner’s finding that, “[a]t some point the printer [of Stowe] would have to print a line across the width of the belt.” Ans. 5–6. Moreover, the Examiner relies on Stowe for the teaching of uniform application of heat across the width of the belt, but the Examiner does not Appeal 2015-006100 Application 13/481,645 8 propose bodily incorporation of Stowe’s apparatus into the apparatus of De Joseph. The Appellants’ argument does not persuasively explain why Stowe’s heat source would not function in the context of the obviousness combination proposed by the Examiner. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”). The Appellants also argue that “there is no teaching in Berg [of] ‘selectively removing the fountain solution from area on the belt not occupied by the fountain solution pattern’ and ‘the fountain solution is selectively removed from the regions of the endless belt through application of energy using (i) a laser prior to the contact between the belt and the ink donor roll or (ii) an array of hot air jets.” App. Br. 15 (emphasis in original). In the Non-Final Action, the Examiner relies on ¶ 27 of Berg, which teaches: The generally ink-repelling fountain solution layer is subsequently structured via an image generation device 26. In the present case, a laser beam 28 is used for this. In this structuring process, ink-attracting regions and ink-repelling regions are generated corresponding to the structure of the print image to be printed. The structured fountain solution layer subsequently arrives at an inking system 30 which transfers ink from a reservoir 38 to the surface of the print carrier 10 with the aid of the rollers 32, 34, 36. The oil-containing ink attaches at regions without the water-containing fountain solution. It is to be noted that the ink can also be transferred onto the surface of the print carrier 10 via spraying, scraping or condensation. As the Examiner explains in detail in the Answer, Ans. 6–7, that paragraph does appear to teach or otherwise render obvious the limitations disputed by the Appellants. In particular, it suggests that a laser is used to remove Appeal 2015-006100 Application 13/481,645 9 fountain solution selectively to generate ink-attracting and ink-repelling regions that correspond to the image to be printed (i.e., a pattern), and that the selective removal occurs prior to inking. Berg ¶ 27. Although the Appellants provide no explanation of why Berg’s “image generation device” does not suggest or otherwise render obvious a “fountain solution pattern,” even if Berg does not explicitly teach a “fountain solution pattern,” Berg discloses selective removal of fountain solution by use of a laser to create a fountain solution structure that corresponds to the structure of the image to be printed, and it would have been well within the ordinary level of skill in the art to achieve that selective removal by use of a pattern. Cf. Berg ¶ 27 (“In this structuring process, ink-attracting regions and ink-repelling regions are generated corresponding to the structure of the print image to be printed.”). The Appellants’ argument, which consists primarily of lengthy quotes with certain portions emphasized, see App. Br. 16–18, fails to show reversible error in the Examiner’s obviousness rejection. Cf. Jung, 637 F.3d at 1365; In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art” is unpersuasive). In view of the arguments presented by the Appellants, we affirm the Examiner’s rejection of claim 1. CONCLUSION We AFFIRM the Examiner’s rejections of claims 1–9, 11, and 12. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation