Ex Parte Smith

Patent Trial and Appeal Board

Mar 21, 2017

11761031 (P.T.A.B. Mar. 21, 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.
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
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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.
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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
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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
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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
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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
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