Palo Alto Research Center IncorporatedDownload PDFPatent Trials and Appeals BoardMay 12, 202014578302 - (D) (P.T.A.B. May. 12, 2020) 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. 14/578,302 12/19/2014 Sourobh RAYCHAUDHURI X1005/20001 4671 147590 7590 05/12/2020 Caesar Rivise, PC Attn: Xerox/PARC 1635 Market Street 12th Floor Philadelphia, PA 19103 EXAMINER MARINI, MATTHEW G ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 05/12/2020 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): patents@crbcp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SOUROBH RAYCHAUDHURI and TIMOTHY D. STOWE ____________ Appeal 2019-003918 Application 14/578,302 Technology Center 2800 ____________ Before ADRIENE LEPIANE HANLON, MONTÉ T. SQUIRE, and BRIAN D. RANGE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 3, 6–11, 13, 16–21, 23, and 26–31.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed Dec. 19, 2014 (“Spec.”); Final Office Action dated Sept. 13, 2018 (“Final Act.”); Appeal Brief filed Nov. 21, 2018 (“Appeal Br.”); and Examiner’s Answer dated Feb. 20, 2019 (“Ans.”). There is no reply brief. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Palo Alto Research Center Incorporated as the real party in interest. Appeal Br. 3. 3 Claims 2, 4, 5, 12, 14, 15, 22, 24, and 25 are canceled. Appeal Br. 3. Appeal 2019-003918 Application 14/578,302 2 CLAIMED SUBJECT MATTER The invention relates to marking and printing methods and systems, and more specifically to a method and apparatus for using plasmonic nanoparticles that may be stimulated with electromagnetic radiation to variably mark or print data. Spec. ¶¶ 1, 7; Abstract. Claim 1 illustrates the subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. An imaging member for disposition within a variable data lithography system, comprising: a plate layer having on one face thereof a matrix layer with plasmonic nanoparticles embedded to a depth of 2 microns or less on the surface of the matrix layer, wherein said plasmonic nanoparticles generate heat when exposed to an incident wavelength of electromagnetic radiation; an arbitrarily reimageable surface layer formed by a dampening solution disposed over said plate layer; wherein the plasmonic nanoparticles at said plate layer are in thermal contact with said arbitrarily reimageable surface layer; wherein the electromagnetic radiation and the heat from the plasmonic nanoparticles selectively remove portions of the dampening solution so as to produce a latent image on the plate layer; wherein the plasmonic nanoparticles have a controlled shape to efficiently absorb light at the same frequency as the electromagnetic radiation in the variable data lithography system; wherein the controlled shape has a physical size that is smaller than the wavelength of the electromagnetic radiation; wherein the plasmonic nanoparticles are encapsulated to provide an insulating barrier and to prevent direct contact between particles; Appeal 2019-003918 Application 14/578,302 3 wherein the plasmonic nanoparticles causes the dampening solution on the imaging member to receive energy from two ends, at one end from the electromagnetic radiation and at another end from plasmonic heating. Appeal Br. 23 (key disputed claim language italicized and bolded). REFERENCES The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Name Reference Date Sakai US 2010/0098458 A1 Apr. 22, 2010 Stowe et al. (“Stowe”) US 2012/0103218 A1 May 3, 2012 REJECTION On appeal, the Examiner maintains (Ans. 3) the following rejection: Claims 1, 3, 6–11, 13, 16–21, 23, and 26–31 are rejected under 35 U.S.C. § 103 as being unpatentable over Stowe in view of Sakai. Final Act. 2. OPINION Having considered the respective positions the Examiner and Appellant advance in light of this appeal record, we affirm the Examiner’s rejection based on the fact-finding and reasoning set forth in the Answer and Final Office Action, which we adopt as our own. We add the following primarily for emphasis. In response to the Examiner’s rejection, Appellant presents argument for the patentability of claims 1, 3, 6–11, 13, 16–21, 23, and 26–31 as a group. Appeal Br. 15, 19, 20. We select claim 1 as representative and Appeal 2019-003918 Application 14/578,302 4 claims 3, 6–11, 13, 16–21, 23, and 26–31 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines the combination of Stowe and Sakai suggests a lithography system satisfying the limitations of claim 1 and concludes the combination would have rendered the claim obvious. Final Act. 2–4 (citing Stowe, Fig. 2A, ¶¶ 47, 65, 67, 69; Sakai ¶¶ 17, 18, 27, 29). Appellant argues principally that the Examiner’s rejection should be reversed because Sakai is non-analogous art. Appeal Br. 15–19. In particular, Appellant contends Sakai is not from the same field of endeavor as the claimed invention because Sakai is directed to the field of electrophotographic image forming and toner type (dry) printing and the claimed invention is directed to variable data lithography (VDL) printing using dampening solution to create an image and to transport hydrophobic ink. Id. at 16, 18. Appellant further contends Sakai is not reasonably pertinent to the problem faced by the inventors because Sakai is directed to reducing Moire patterns in electrophotographic imaging, which is not pertinent to the problem of adding an auxiliary heat source in digital lithography faced by the inventors. Id. at 17. Appellant also contends that neither Sakai nor Stowe is reasonably pertinent to the problem faced by the inventors because the particles disclosed in both Stowe and Sakai are for the purpose [of] catalyzing silicone (Stowe at [52]) and minimizing Moire patterns (Sakai at [38]) and not for generating heat to produce a latent image in the dampening solution. Appeal Br. 19; see also id. at 17 (“Applicants fail to understand how the problem of suppressing Moire patterns is reasonably pertinent to the Appeal 2019-003918 Application 14/578,302 5 problem of heating to evaporate portions of a fluid so as to produce cavities for holding liquid ink.”). We do not find Appellant’s non-analogous art arguments persuasive of reversible error in the Examiner’s rejection because Appellant too narrowly construes the scope of Sakai’s disclosure, especially as it pertains to the applicable field of endeavor. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventors’ endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventors are involved. In re Klein, 647 F.3d. 1343, 1348 (Fed. Cir. 2011) (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Contrary to what Appellant argues, based on the fact-finding and reasoning provided by the Examiner at pages 3–5 of the Answer and pages 2–4 of the Final Office Action, we determine that Sakai is analogous art to the claimed invention because it is from the same field of endeavor. In particular, as the Examiner finds (Ans. 4), like the claimed invention, which relates to printing methods and systems utilizing lasers and electromagnetic radiation for printing images (see Spec. ¶ 1), Sakai also relates to printing images utilizing lasers and concepts involving electromagnetic radiation (see Sakai ¶¶ 2–4, Figs. 1, 3). For example, Sakai discloses an apparatus for image formation, a method by which a digital method is employed, writing in the digital method is conducted by using a light source typified by semiconductor laser, and an image is obtained . . . . Sakai ¶ 4. Although Sakai may address a different problem than the problem the claimed invention addresses, we find that the reference is nonetheless from Appeal 2019-003918 Application 14/578,302 6 the same field of endeavor as the claimed invention. Bigio, 381 F.3d at 1325 (explaining that a reference qualifies as analogous art if it is from the same field of endeavor as the claimed invention regardless of the problem addressed). Thus, on the record before us, we are persuaded that Sakai is analogous art to the claimed invention. Appellant further argues the Examiner’s rejection should be reversed because Stowe does not disclose a second heating source in the form of plasmonic particles. Appeal Br. 15–16, 19. We do not find this argument persuasive of reversible error in the Examiner’s rejection based on the Examiner’s fact-finding and reasoning provided at pages 5–6 of the Answer and pages 2–3 of the Final Office Action, which a preponderance of the evidence supports. In particular, as the Examiner finds (Ans. 5–6), Stowe discloses nanoparticles 27 embedded on the surface of layer 20 at a depth of 2 microns or less, that the nanoparticles absorb UV radiation from a laser energy source, which increases the temperature of the nanoparticles, and thereby creating a second heat source, i.e., generating heat when exposed to an incident wavelength of electromagnetic radiation. Ans. 5–6; Stowe, Figs. 2A, 5, ¶¶ 47, 62, 69. Appellant also argues the Examiner’s rejection should be reversed because “Sakai fails to disclose that the encapsulated particles are position[ed] near the surface and in thermal contact with the image forming substance.” Appeal Br. 19. This argument is not well-taken because it is premised on what Appellant contends the Sakai reference teaches individually, and not the combined teachings of the Stowe and Sakai references as a whole, and what the combined teachings of the references would have suggested to one of ordinary skill in the art. One cannot show Appeal 2019-003918 Application 14/578,302 7 non-obviousness by attacking references individually where the rejection is based on a combination of references. See In re Keller, 642 F.2d 413,425 (CCPA1981). The Examiner does not rely upon Sakai in the rejection for teaching the nanoparticles being embedded on the surface of the matrix layer. Rather, as discussed above, the Examiner relies upon Stowe for teaching that element of the claim. Appellant’s contention that “Stowe and Sakai are not properly combined for obviousness analysis under prevailing U.S. law” (Appeal Br. 20) is not persuasive of reversible error because the Examiner does provide a reasonable basis, which is supported by a preponderance of the evidence in the record, to evince why one of ordinary skill would have combined the teachings of Stowe and Sakai to arrive at the claimed invention. Final Act. 4 (explaining it would have been obvious to one of ordinary skill in the art to have replaced the plasmonic nanoparticles of Stowe with the encapsulated nanoparticles of Sakai because Sakai teaches the encapsulated nanoparticles exhibit excellent light scattering abilities, thereby improving the radiation absorption capability of Stowe’s device); Sakai ¶¶ 17, 18. See also KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed). Appellant fails to direct us to persuasive evidence or provide an adequate technical explanation to establish why the Examiner’s articulated reasoning lacks a rational underpinning or is otherwise based on some other reversible error. Appellant’s disagreement as to the Examiner’s factual findings and reasoning for combining the references, without more, is insufficient to establish reversible error. SmithKline Beecham Corp. v. Appeal 2019-003918 Application 14/578,302 8 Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement . . . as to the existence of factual disputes do not amount to a developed argument.”). Appellant’s contentions that “light scattering in the present application would be destructive to the goal of creating an image on the dampening solution” and “would create un-wanted voids that when inked would result in a defective inked image” (Appeal Br. 21) are not persuasive because they are conclusory and unsupported by persuasive evidence in the record. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere lawyer’s arguments or conclusory statements, which are unsupported by concrete factual evidence, are entitled to little probative value). Accordingly, we affirm the Examiner’s rejection of claims 1, 3, 6–11, 13, 16–21, 23, and 26–31 under 35 U.S.C. § 103 as obvious over the combination of Stowe and Sakai. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 6–11, 13, 16–21, 23, 26–31 103 Stowe, Sakai 1, 3, 6–11, 13, 16–21, 23, 26–31 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 Copy with citationCopy as parenthetical citation