Palo Alto Research Center Incorporated

Patent Trials and Appeals Board

May 12, 2020

2019003918 (P.T.A.B. May. 12, 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.
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.
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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;
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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
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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
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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
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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
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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.
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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