HP INDIGO B.V.

Patent Trials and Appeals Board

Jun 1, 2020

2019004014 (P.T.A.B. Jun. 1, 2020)

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.
15/076,600 03/21/2016 Mark Sandler 84449618 2098
22879 7590 06/01/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
HINZE, LEO T
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK SANDLER, SHAI LIOR, EYAL PELEG, NATI
SINUANY, DROR KELLA, SHAHAR STEIN, GEORGE
TRENDAFILOV, and TSAHI ROSENBAOM
Appeal 2019–004014
Application 15/076,600
Technology Center 2800
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–6, 9–12, 14–16, and 18–23. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
HP Indigo B.V. Appeal Br. 2.
Appeal 2019–004014
Application 15/076,600

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal and is set
forth below (with text in bold for emphasis):
1. An embossing apparatus comprising:
an embossing die made up of a printed relief pattern made
up of multiple layers of a deposited material;
a first cylinder having a resilient surface to deposit an ink
image onto a media, the resilient surface for pressing the media
against the embossing die such that embossed features
corresponding to the printed relief pattern on the embossing die
are formed in the media; and
an impression layer in a printer comprising a printed
alignment image, the embossing die to be aligned with the
alignment image on the impression layer of the printer.

REFERENCES
The prior art relied upon by the Examiner is:
Appeal 2019–004014
Application 15/076,600

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Name Reference Date
Simson US 3,403,621 Oct. 1, 1968
Hook US 6,170,393 B1 Jan. 9, 2001
Jennings US 6,248,211 B1 June 19, 2001
Ben-Avraham US 7,078,141 B2 July 18, 2006
Sandler US 9,296,199 B2 Mar. 29, 2016
Verhoest US 2004/0131778 A1 July 8, 2004
Filzmoser US 2005/0212184 A1 Sept. 29, 2005
Boukaftane US 2009/0136679 A1 May 28, 2009
Vanmaele US 2010/0007692 A1 Jan. 14, 2010
Gullentops (“Gullentops ‘048”) US 2011/0249048 A1 Oct. 13, 2011
Gullentops (“Gullentops ‘065”) EP 2199065 A1 June 23, 2010
THE REJECTIONS
1. Claims 1, 3–6, 9–12, 15, 16, and 18–20 are rejected on the ground
of nonstatutory double patenting.
2. Claims 1, 4–6, and 18–22 are rejected under pre-AIA 35 U.S.C. §103(a)
as being unpatentable over Simson in view of Boukaftane, Verhoest,
Gullentops ‘065, Gullentops ‘048, and Filzmoser.
3. Claim 3 is rejected under pre-AIA 35 U.S.C. §103(a) as being
unpatentable over Simson, Boukaftane, Verhoest, Gullentops ‘065,
Filzmoser and further in view of Ben-Avraham.
4. Claims 9, 14–16, and 23 are rejected under pre-AIA 35 U.S.C.
§103(a) as being unpatentable over Simson in view of Ben-Avraham.
5. Claims 10–12 are rejected under pre-AIA 35 U.S.C. §103(a) as
being unpatentable over Simson, Ben-Avraham, Boukaftane, Verhoest,
Gullentops ‘065, and Filzmoser.
Appeal 2019–004014
Application 15/076,600

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OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are persuaded of
reversible error in the appealed rejections (with the exception of Rejection 1
which is summarily affirmed).

Rejection 1
Appellant has chosen not to address the double patenting rejection,
and requests that this rejection be held in abeyance. Appeal Br. 11. Because
Appellant does not contest this rejection, we summarily affirm it. See Hyatt
v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary
affirmance without consideration of the substantive merits is appropriate
where an appellant fails to contest a ground of rejection).

Rejections 2–5
There is a dispute as to whether Simson teaches the aspect of
claim 1 pertaining to “an impression layer in a printer comprising a
printed alignment image, the embossing die to be aligned with the
alignment image on the impression layer of the printer”. This claim
element is illustrated in Appellant’s Figure 5B (reproduced below),
and discussed in paragraph [0045] of Appellant’s Specification.
Appeal 2019–004014
Application 15/076,600

5

Paragraph [0045] of Appellant’s Specification discloses that as shown
in Appellant’s Figure 5B, to properly align the separately formed embossing
Appeal 2019–004014
Application 15/076,600

6
die (540), an alignment image or images (555) is printed on the impression
layer (550). The alignment image(s) is used to align the embossing die (540)
on the impression cylinder (545). The embossing die (540) can be adhered to
the impression cylinder (545) in a number of ways, including adhesive,
vacuum suction, electrostatic forces, clamping or other techniques. Spec.
[0045].
In view of the above description, the alignment image (555) is a
printed image which operates as an alignment feature. The Examiner views
Simson as teaching a printed alignment image as explained on page 4 of the
Answer (which we do not repeat herein). In so doing, the Examiner
interprets the word “image” as being a mark on the surface of an impression
layer. Ans. 4. However, this cannot be disconnected from the word
“printed” in claim 1. That is, the claim requires that the image is a “printed”
alignment image, not merely any image which includes a mark not printed
(e.g., the aperture that is cut as in Simson (col. 4, l. 22)). The Examiner thus
views the aperture 46 of Simson as satisfying this claim term. Ans. 4–5.
Simson, col. 4, ll. 17–22.
Appellant argues, inter alia, that Simpson does not teach this
limitation. Appeal Br. 12. Appellant submits that claim 1 requires that the
embossing die is to be aligned with a printed alignment image. Appellant
argues that the Examiner relies on portions of Simson that teach at most
aligning a die member with an aperture (the aperture is item 46 shown in
Simson’s Figure 2; Simson, col. 4, ll. 17–31), and does not teach aligning
the embossing die with a “printed alignment image” as claimed. Reply Br. 6.
Appellant states that Simson thus does not teach or suggest “a printed
alignment image” with which an embossing die is aligned, but rather
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Application 15/076,600

7
describes an embossing die being aligned with an aperture. Id. We are
persuaded by this argument, and thus reverse Rejection 2. We also reverse
Rejection 3–5 since the Examiner’s reliance upon the additional secondary
references in these rejections does not remedy the aforementioned
deficiencies of Simson.
CONCLUSION
We reverse the Examiner’s decision, except for Rejection 1 (which is
summarily affirmed).

Appeal 2019–004014
Application 15/076,600

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Reversed Affirmed
1, 3–6, 9–
12, 15, 16,
18–20
Nonstatutory Double
Patenting
1, 3–6, 9–
12, 15, 16,
18–20
1, 4–6, 18–
22
103(a) Simson, Boukaftane,
Verhoest, Gullentops
‘065, Gullentops
‘048, Filzmoser
1, 4–6, 18–
22

3 103(a) Simson, Boukaftane,
Verhoest, Gullentops
‘065, Filzmoser, Ben-
Avraham
3
9, 14–16,
23
103(a) Simson, Ben-
Avraham
9, 14–16,
23

10–12 103(a) Simson, Ben-
Avraham,
Boukaftane, Verhoest,
Gullentops ‘065,
Filzmoser
10–12
Overall
Outcome
14, 21–23 1, 3–6, 9–
12, 15, 16,
18–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART