Ex Parte Seibt

Patent Trial and Appeal Board

Feb 19, 2016

13590993 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/590,993 08/21/2012
50441 7590 02/23/2016
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
FIRST NAMED INVENTOR
John Seibt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BLD9-2009-0005-US2 9003
EXAMINER
WILLIAMS, KIMBERLY A
ART UNIT PAPER NUMBER
2673
NOTIFICATION DATE DELIVERY MODE
02/23/2016 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):
docketing@dbflaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN SEIBT
Appeal2014-002845 1
Application 13/590,993
Technology Center 2600
Before JEAN R. HOMERE, JASON V. MORGAN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-18. Claims 19-23 have been
canceled. App. Br. 9-15. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies the real party in interest as InfoPrint Solutions
Company, LLC. App. Br. 3.
Appeal2014-002845
Application 13/590,993
Appellant's Invention
Appellant's invention is directed to a printing system (130) that
utilizes a single printhead (160) containing a plurality of adjacent nozzles
(163, 167) for concurrently ejecting magnetic ink associated with a first
generated bitmap (150), and non-magnetic ink associated with a second
generated bitmap (150). Spec. i-fi-16, 17-19, Fig. 1.
Illustrative Claim
Independent claim 1 is illustrative, and reads as follows:
Claim 1. A printing system, comprising:
a color transform system operable to transform a sheet image to
generate at least a first bitmap for printing magnetic ink and a second bitmap
for printing non-magnetic ink in accordance with ejecting, from a single
printhead, the magnetic ink and the non-magnetic ink; and
the single printhead operable to receive the first bitmap and the
second bitmap, and to concurrently eject the magnetic ink based on the first
bitmap and the non-magnetic ink based on the second bitmap.
Parker
Allen
Sharma
Seibt
Prior Art Relied Upon
us 4,901,114
us 4,980,719
US 2005/0270364 Al
US 8,274,701 B2
2
Feb. 13, 1990
Dec. 25, 1990
Dec. 8, 2005
Sept. 25, 2012
Appeal2014-002845
Application 13/590,993
Rejections on Appeal
Appellant requests review of the following Examiner's rejections:
Claims 1, 2, 4-10, 12-16, and 18 stand provisionally rejected under
nonstatutory obviousness double patenting over claims 1, 9, and 15 of U.S.
Patent No. 8,274,701.2
Claims 3, 4, 11, 12, and 17 stand rejected under 35 U.S.C. § 101 as
claiming the same invention as that of claims 1, 8, 13, 16, and 17 of U.S.
Patent No. 8,274,701. 3
Claims 1, 5-7, 9, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Sharma and Allen.
Claims 2, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Sharma, Allen, and Lin.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Sharma, Allen, and Parker.
ANALYSIS
We consider Appellant's arguments seriatim, as they are presented in
the Appeal Brief, pages 5-9. 4
2 Because Appellant fails to present any arguments against this rejection, we
summarily affirm this rejection.
3 Id.
4 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed August 19, 2013) and the Answer (mailed
October 22, 2013) for their respective details. We have considered in this
Decision only those arguments Appellant actually raised in the Brief. Any
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Appeal2014-002845
Application 13/590,993
Issue: Under 35 U.S.C. § 103, did the Examiner err in finding the
combination of Sharma and Allen teaches or suggests "a color transform
system operable to transform a sheet image to generate at least a first
bitmap for printing magnetic ink and a second bitmap for printing non-
magnetic ink in accordance with ejecting, from a single printhead, the
magnetic ink and the non-magnetic ink," as recited by claim 1?
Appellant argues the proposed combination of references does not
teach or suggest the disputed limitations emphasized above. App. Br. 6-9.
In particular, Appellant argues Allen's disclosure of applying both magnetic
and non-magnetic toner during a copy process for a document onto a web as
two electrostatic images would render Sharma's disclosure of ejecting both
magnetic and non-magnetic ink through a single printhead unsatisfactory for
its intended purpose. Id. at 6 (citing Allen 3:53-67). According to
Appellant it would be impossible for the ink printhead discussed in Sharma
to utilize Allen's electrostatic images to generate a printed output because
the ink printhead cannot utilize an electrostatic image to control the nozzles
in the printhead. Id. at 7. Therefore, Appellant submits one skilled in the art
would recognize that the proposed combination of Sharma and Allen would
be inoperable because an ink head could not be controlled by an array of
electrostatic charges. Id. Likewise, Appellant argues the Examiner's
proposed combination of Shanna's ink injection system with Allen's toner-
other arguments Appellant could have made but chose not to make in the
Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Appeal2014-002845
Application 13/590,993
based system is motivated by impermissible hindsight resonating. Id. at 7-8.
These arguments are not persuasive.
At the outset, we note Appellant has not squarely addressed the
specific rationale provided by the Examiner for combining Sharma and
Allen. The Examiner proposes to substitute Allen's LED (light-emitting
diode) printhead with Shanna's ink printhead. Ans. 9 (citing Allen 13:66-
67). Therefore, under the proposed modification, bitmap data would be used
in lieu of electrostatic charges to control the nozzles in the printhead. The
proposed modification is further buttressed by Allen's explicit disclosure
that the logic and control unit (LCU) can generate bitmap images to control
the printing of magnetic toner and non-magnetic toner. Allen 13:44--50.
Therefore, we agree with the Examiner that Sharma and Allen are properly
combined to teach or suggest the disputed limitations. It follows Appellant
has not shown error in the Examiner's rejection of claim 1.
Regarding the rejection of claim 2, Appellant argues although Lin
discloses adding carbon to magnetic toner to thereby reduce the visual
differences between printing using black toner and magnetic toner, Lin does
not teach compensating for the differences between a magnetic color and
non-magnetic color resembling black. App. Br. 8-9. This argument is not
persuasive. We agree with the Examiner that Lin's disclosure of adding
carbon to the magnetic toner for the purpose of reducing the visual
differences between the magnetic toner and the non-magnetic toner teaches
compensating the for differences there between. Ans. 11 (citing Lin i-f 41 ).
As noted by the Examiner, and admitted by Appellant, the claim does not
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Appeal2014-002845
Application 13/590,993
indicate how such difference between the magnetic toner and the non-
magnetic toner is compensated. Therefore, any mechanism for achieving
such compensation, as disclosed by Lin, is sufficient to teach the disputed
limitation.
Regarding the rejection of claims 3-18, because Appellant has either
not presented separate patentability arguments or have reiterated
substantially the same arguments as those previously discussed for
patentability of claims 1 and 2 above, claims 3-18 fall therewith. See 3 7
C.F.R. § 41.37(c)(l)(iv) (2013).
DECISION
We affirm the Examiner's rejections under 35 U.S.C. § 103(a) of
claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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