Ex Parte SmithDownload PDFPatent Trial and Appeal BoardMar 21, 201711761031 (P.T.A.B. Mar. 21, 2017) 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. 11/761,031 06/11/2007 DONALD J. SMITH 6646US 9248 30173 7590 03/23/2017 Diederiks & Whitelaw, PLC 13885 Hedgewood Dr., Suite 317 Woodbridge, VA 22193-7932 EXAMINER WATTS, JENNA A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 03/23/2017 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): gmi.mail@dwpatentlaw.com mail@dwpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD J. SMITH Appeal 2014-001522 Application 11/761,031 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and KIMBERLY McGRAW, Administrative Patent Judges. McGRAW, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 2—15, 19-23, and 29-35. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2014-001522 Application 11/761,031 STATEMENT OF THE CASE Appellant’s invention is directed to methods of applying a topical image to food. Claim 2 is the only independent claim on appeal and is reproduced below: 2. A method of applying a topical image to a food, comprising: moving a length of food in the form of a thin fruit based paste or confection, with the length of food having a top major surface adapted to receive a first topical high resolution image and an opposed bottom major surface, with the length of food having an original color, with the length of food having a shape and an area; directly applying the first topical high resolution image on the top major surface of the length of food with a printer arranged spacedfrom the top major surface by a throwback distance while the length of food is maintained at a temperature of at least about 75°C (170°F), with the first topical high resolution image having a resolution of at least 100 dots per inch ("DPI") in at least one direction at the time of application and including at least one edible ink that is different from the original color of the length of food in color or hue; and adjustably maintaining the throwback distance substantially constant. App. Br. 16 (Claims App’x) (emphases added). REJECTIONS Claims 2—15 and 19-21 stand rejected under 35 U.S.C. § 103(a) over Gordon et al. (U.S. Patent No. 6,153,233, iss. Nov. 28, 2000 “Gordon”), Shastry et al. (U.S. Patent Application Number 2004/0086603 Al, pub. May 2 Appeal 2014-001522 Application 11/761,031 6, 2004 “Shastry”1), and Baker et al. (U.S. Patent Application Number 2005/0157148 Al, pub. July 21, 2005 “Baker”)). Final Act. 3-15. Claims 22, 23, 31, and 32 stand rejected under 35 U.S.C. § 103(a) over Gordon, Shastry, Baker, and Shirley (US 4,394,693, iss. July 19, 1983). Final Act. 15—19. Claims 29, 30, and 33—35 stand rejected under 35 U.S.C. § 103(a) over Gordon, Shastry, Baker, and Kofman et al. (US 6,499,842 Bl, iss. Dec. 31, 2002 “Kofman”). Final Act. 19-22. ANALYSIS Baker teaches inkjet printing on a variety of edible substrates, such as coffee. Figure 1, reproduced below, shows a printing station having print head 12 for printing an image on food product 5 (e.g., coffee) in container 6 (e.g., coffee cup). Figure 1 illustrates a printing station as shown in Baker. The printing 1 We note that the Final Action and the Examiner’s Answer contain a typographical error and improperly refers to Shastry as U.S. App. No. 2004/0096603, not US App. No. 2004/0086603. 3 Appeal 2014-001522 Application 11/761,031 station includes “transport mechanism 10, e.g., a conveyor” that “supports and transports containers 6, including the food product relative to the printhead 12.” Baker 116. At the print head, an ejection media is directed in the form of a series of drops 14 toward the surface of the food product in a predetermined pattern. During printing, a conveyor belt moves the food product relative to the print head. Baker 127. In one example, the printing station of Baker is used to print images of balloons on an ice-milk coffee drink. The distance from the printer head to the surface of the food is about 1 cm (10 mm). Id. The Examiner finds that the combination of Gordon and Shastry teaches many of the limitations of independent claim 2, but does not teach “adjustably maintaining the throwback distance substantially constant” during printing. Final Act. 5—6. To remedy this deficiency, the Examiner relies on Baker, stating Baker teaches the “adjustably maintaining the throwback distance substantially constant” limitation because Baker teaches a “set distance” between the surface of the food and the print head and that this distance is maintained during printing. Final Act. 9; Ans. 10 (citing Baker Fig. 1,116). The Examiner states it “would have been obvious ... to adjust the printer head [to maintain] a constant throwback distance” in view of “the benefits of non-contact printing” taught by Shastry and Baker and to ensure the image quality is maintained during printing. Final Act. 9; Ans. 10. The Examiner further states Baker does not need to adjust the throwback distance during printing in order to teach the “adjustably maintaining the throwback distance” limitation of claim 2. Ans. 26. The Examiner contends the “adjustably maintaining” limitation is “a broad limitation [that] does not 4 Appeal 2014-001522 Application 11/761,031 necessarily imply an active step,” “Applicant has not defined what is meant by ‘adjustably maintaining a throwback distance’” in the Specification, and under a broadest reasonable interpretation, so “as long as the prior art teaches maintaining the throwback distance constant during printing, the limitation is met.” Final Act. 24—25; Ans. 26. Appellant argues the Examiner erred in finding Baker teaches “adjustably maintaining the throwback distance substantially constant” during printing as required by claim 2. App. Br. 8. Appellant explains that in Baker, the distance between the surface of the food product and the printer head is fixed and cannot be adjusted during printing; nor is there teaching or suggestion to do so. Id. We agree with Appellant. The broadest reasonable interpretation does not mean the broadest possible interpretation. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (stating that although claim terms must be given their broadest reasonable interpretation, the interpretation must still be reasonable). The claims do not recite “maintaining” a given throwback distance; rather the claim recites “adjustably maintaining” the throwback distance. The Examiner’s construction of “adjustably maintaining the throwback distance substantially constant” that covers a method where the throwback distance cannot be adjusted during printing would render the term “adjustably” superfluous and is unreasonable. See Merck & Co. v. leva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (rejecting a proposed claim construction that would render claim terms superfluous). This interpretation is consistent with the Specification which discusses a photodetector that sends/receives a beam of light to detect the food 5 Appeal 2014-001522 Application 11/761,031 thickness and that is connected to an actuator that moves the platform that supports the food closer to or further away from the printer head. Fig. 1. Spec. 4:5—11; 14:14—17. The Specification explains that the distance between the platform and the printer head is adjusted through “piston/cylinder actuator 140” and “parallel links 138.” Id. at 11:14—19. By adjusting the space between the ends of the actuator through the use of fluid pressure or threadable rotation, links 138 will pivot and move the platform closer to or further away from the printer head. Id. at 11:19—28. As correctly noted by Appellant, in Baker, the distance between the printer head and top of the food on the conveyor belt cannot be adjusted during printing. Rather, the conveyor belt can only move the food to the left or right under the printer head; it cannot move the food closer to or farther away from the printer head. We also agree with Appellant that there is no teaching or suggestion to modify Baker to adjust the throwback distance during printing. The Examiner states it “would have been obvious ... to adjust the printer head [to maintain] a constant throwback distance” in view of “the benefits of non-contact printing” taught by Shastry and Baker and to ensure image quality is maintained during printing. Final Act 9. However, neither Shastry nor Baker indicate that the throwback distance could be adjusted during printing to maintain image quality or to provide non-contact printing. As such, we agree with Appellant that Baker does not teach or suggest “adjustably maintaining the constant throwback distance” as recited in independent claim 2. Because the Examiner has not shown that the cited art, either alone or in combination, teach or suggest “adjustably maintaining the throwback distance substantially constant,” during printing, we do not 6 Appeal 2014-001522 Application 11/761,031 sustain the rejection of independent claim 2. The Examiner did not rely upon any of the additional references cited in the rejections of the dependent claims to remedy the deficiency noted above. Therefore, we do not sustain the Examiner’s rejection of independent claim 2 or dependent claims 3—15, 19-23, and 29-35. DECISION The Examiner’s rejection of claims 2—15, 19-23, and 29-35 under 35 U.S.C. § 103(a) is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation