Ex Parte Stelter et al

Patent Trial and Appeal Board

Apr 23, 2013

11072781 (P.T.A.B. Apr. 23, 2013)

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.
11/072,781 03/04/2005 Eric C. Stelter H10510JAC 7229
1333 7590 04/23/2013
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
LIANG, LEONARD S
ART UNIT PAPER NUMBER
2853
MAIL DATE DELIVERY MODE
04/23/2013 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 ERIC C. STELTER, JOHN C. WILSON, and DAVID D.
PUTNAM
____________________

Appeal 2010-007571
Application 11/072,781
Technology Center 2800
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007571
Application 11/072,781

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 5, 6, 11, 12, 14, 19-22, 25, 41, 43, and 50.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants disclose fixing agents that preferably contain a mordant
and ink composition containing pigments or dyes combined with fusible
material (Spec. 1:26 – 2:4). Appellants disclose printing systems that
include an ink image forming device for producing an ink image on a
receiver and a fuser for fixing the ink image to the receiver (Abs.).

Exemplary Claims
Exemplary independent claim 1 and dependent claim 14 under appeal,
with emphases added, read as follows:
1. A printing method comprising:

transferring an ink image formed with an aqueous ink to
a receiver;

applying at least one fixing agent comprising at least one
mordant to said receiver; and

fixing said transferred ink image to said receiver by
subjecting said receiver to fixing energy.

1 Claims 7-10, 13, 15-18, 23, 26, 27, 30, 31, 36-40, 42, 44-47, and 49 have
been canceled by Appellants. Claims 3, 4, 24, 28, 29, 32-35, and 48 were
withdrawn from consideration as being drawn to a non-elected invention
(Requirement for Restriction/Election mailed September 7, 2007).
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14. The printing method of claim 1, wherein said receiver
also bears a toner image.

Examiner’s Rejection
The Examiner rejected claims 1, 2, 5, 6, 11, 12, 14, 19-22, 25, 41, 43,
and 50 under 35 U.S.C. § 103(a) as being unpatentable over Smith (U.S.
6,142,618) in view of Snyder (U.S. 6,494,570 B1). Ans. 3-6.

Appellants’ Contentions2
Appellants contend (Br. 2-5) that the Examiner erred in rejecting
claims 1, 2, 5, 6, 11, 12, 14, 19-22, 25, 41, 43, and 50 under
35 U.S.C. § 103(a) over Smith and Snyder for numerous reasons.
(1) With respect to representative claim 1, Appellants make multiple
arguments including:
(a) the Examiner has not established a prima facie case of
obviousness since the two-step transfer and fusing process employed
in the solid-ink printing system of Snyder is distinct from the direct
inkjet fluid ink printing system of Smith, and there is no teaching or
suggestion for the use of the solid ink fuser of Snyder for the mordant
and ink images of Smith for any reason (Br. 3); and

2 Separate patentability is not argued for dependent claims 2, 5, 6, 11, 12, 41,
43, and 50 (Br. 2-4). Appellants group the subject matter common to
independent claims 1 and 19 in their arguments (Br. 3). We select claim 1 as
representative of the group of claims 1, 2, 5, 6, 11, 12, 19-22, 41, 43, and 50
pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(iv). In view of the
foregoing, our analysis regarding this group will only address the merits of
representative claim 1.
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(b) There is no disclosure of a need for application of fixing
energy for the fluid inks of Smith (Br. 3-4).
(2) With respect to dependent claim 14, Appellants additionally argue
that the Examiner has not established that Smith teaches “receiver also bears
a toner image,” as recited in claim 14, since the cited portions of Smith
(Smith, col. 10, ll. 63-65) do not talk about a receiver that bears a toner
image.
Examiner’s Response to Appeal Brief

The Examiner responded to Appellants’ contentions in the Examiner’s
Answer (Ans. 6-11). With regard to Appellants’ Contention (1)(a) supra
(that the Examiner failed to establish a prima facie case of obviousness since
Smith and Snyder teach distinct systems and that there is no teaching or
suggestion to use the solid ink fuser of Snyder for the mordant and ink
images of Smith), the Examiner responded by presenting a new fact finding.
Specifically, the Examiner argued (Ans. 7-10) that (i) Smith teaches solid
ink printing as an alternative to liquid printing (Smith, col. 20, ll. 32-34 and
col. 2, ll. 61-67); (ii) Smith incorporates by reference Titterington (US
5,380,769) which teaches a similar system as Snyder; and (iii) Snyder
proposes to separate the transfer and fusing operations (Snyder, col. 3, ll. 38-
40) which implies that the fuser of Snyder can be separated from the solid
ink printing component. Hence, the Examiner concluded that (i) the above
facts weakens the Applicants’ argument that Smith and Snyder represent
distinct systems and (ii) it was proper to incorporate the fuser assembly of
Snyder into the ink jet printing system of Smith.
With regard to Appellants’ Contention (1)(b) supra (that there is no
disclosure of a need for application of fixing energy for the fluid inks of
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Smith), the Examiner relied upon Snyder to teach this limitation. The
Examiner determined (Ans. 9) that application of fixing energy is known by
Smith due to the background section of Smith teaching an inkjet printer
applying fixing energy to a medium after printing (Smith, col. 4, ll. 10-15).
The Examiner further explained (Ans. 10) the state of the ink jet printing art
where it is known that (i) both aqueous and solid inks can be used in ink jet
printing systems and (ii) applying heat to an ink image (regardless of
whether it is an aqueous or melted down solid ink) is a method of fixing the
ink image to the receiver. By providing these facts about Smith and Snyder,
among others, the Examiner determined that it would have been obvious to
incorporate the teachings of Snyder into the invention of Smith to prevent
ink smudge through fixing.
With regard to Appellants’ Contention (2) supra, the Examiner
explained (Ans. 10-11) that the aqueous ink image can also be viewed
as a toner image (Smith, col. 10, ll. 63-65). However, to further
explain that Smith teaches a receiver that bears a toner image, the
Examiner relied upon a different section of Smith (Smith, col. 21, l.
32 – col. 22, l. 33) that was not cited in the final Office Action. The
Examiner argued that (i) use of a brilliant green toner pigment (Smith,
col. 21, l. 57) by Smith indicates that Smith considers printing with
xenographic toner compositions as well as ink compositions and (ii)
any receiver that contains a toner image can be fed into an aqueous
inkjet printing system and thereby contain both an aqueous image and
a xenographic toner image.

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Reply Brief
No Reply Brief has been presented. Therefore, Appellants have not
disputed the Examiner’s new fact findings.
Issues on Appeal
Based on Appellants’ arguments in the brief, the following principal
issues are presented on appeal:
(1) Did the Examiner err in rejecting claims 1, 2, 5, 6, 11, 12, 19-22,
25, 41, 43, and 50 under 35 U.S.C. § 103(a) over Smith and Snyder for
failure to establish a prima facie case of obviousness in combining Smith
and Snyder?
(2) Did the Examiner err in rejecting dependent claim 14 because the
Examiner has not established that Smith teaches “receiver also bears a toner
image,” as recited in claim 14?

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions in the Appeal Brief (Br. 2-5) that the Examiner has erred. We
disagree with Appellants’ conclusions. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 3-11) in response to Appellants’ Appeal Brief.
We concur with the conclusions reached by the Examiner.
With regard to representative claim 1, we agree with the Examiner
(Ans. 7-10; see supra Examiner’s Response to Appeal Brief) that Smith and
Snyder can be combined to establish a prima facie case of obviousness in the
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rejection of representative claim 1 because (i) the new citation by the
Examiner indicates that Smith considers inkjet systems where both solid and
aqueous inks can be used, (ii) Snyder considers separating the transfer and
fusing operations, and (iii) no reply was filed by Appellants to rebut
Examiner’s new citations.
With regard to claim 14 separately argued by Appellants (see Br. 4-5),
we agree with the Examiner (Ans. 10-11; see supra Examiner’s Response to
Appeal Brief) that Smith teaches the receiver to bear a toner image, as
recited in claim 14, because (i) the new citation by the Examiner indicates
that Smith considers printing with xenographic toner compositions and (ii)
no reply brief was filed by Appellants to rebut Examiner’s new citations.
In view of the foregoing, Appellants have not sufficiently shown that
the Examiner erred in rejecting, under 35 U.S.C. § 103(a), (i) representative
claim 1 and claims 2, 5, 6, 11, 12, 19-22, 25, 41, 43, and 50 grouped
therewith and (ii) dependent claim 14 separately argued. Accordingly, we
sustain the rejection before us.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 2, 5, 6, 11, 12,
19-22, 25, 41, 43, and 50 under 35 U.S.C. § 103(a) over Smith and Snyder
since the Examiner has sufficiently established a prima facie case of
obviousness in combining Smith and Snyder.
(2) The Examiner has not erred in rejecting dependent claim 14
because the Examiner has established that Smith teaches “receiver also bears
a toner image” as recited in claim 14.

Appeal 2010-007571
Application 11/072,781

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DECISION
The Examiner’s rejection of claims 1, 2, 5, 6, 11, 12, 14, 19-22, 25,
41, 43, and 50 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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