Pierre Degott et al.

Patent Trials and Appeals Board

Feb 21, 2020

13825621 - (D) (P.T.A.B. Feb. 21, 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.
13/825,621 03/22/2013 Pierre Degott 4303/0120PUS1 5189
60601 7590 02/21/2020
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
HINZE, LEO T
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
02/21/2020 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):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIERRE DEGOTT, CLAUDE-ALAIN DESPLAND, and
MATHIEU SCHMID
Appeal 2018-005182
Application 13/825,621
Technology Center 2800
Before JOSEPH L. DIXON, STEVEN M. AMUNDSON, and
MICHAEL T. CYGAN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant0F1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 7, 8, and 10–21. (Final Act. 1.)
We have jurisdiction under 35 U.S.C. § 6(b). On January 23, 2020,
Appellant’s counsel presented arguments at an oral hearing.
We affirm.

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 SICPA
HOLDING SA. (Appeal Br. 2.)
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Application 13/825,621
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CLAIMED SUBJECT MATTER
The claims are directed to a device, system, and method for producing
a magnetically induced visual effect in coatings, particularly security or
decorative features, containing orientable magnetic particles. (Abstract.)
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A device for producing a magnetically induced visual
effect, the device comprising:

a printing unit arranged to print with a coating composition
containing orientable magnetic particles an image on a first side
of a substrate;

an orientation unit comprising at least one magnetic field
generating element, which includes a polymer bonded magnetic
material, for orienting the magnetic particles in the coating
composition of the printed image;

a substrate-guiding system, arranged to hold a second side
of the substrate in contact with the orientation unit, comprising
at least one substrate-guiding piece of equipment selected from
the group consisting of a brush, a set of brushes, a roller, a set of
rollers, a set of narrow rollers, a belt, a set of belts, a blade, a set
of blades, a spring or a set of springs;

a photocuring unit comprising a radiation source arranged
with respect to the orientation unit so as to irradiate the image
printed on the first side of the substrate to cure the coating
composition of the image while the second side of the substrate
is still in contact with the said orientation unit;

wherein the radiation source comprises one of a light
emitting Diode (LED) visible light lamp (VIS-lamp) or an LED
ultraviolet-lamp (UV-lamp); and

the photocuring unit is configured so that its emission of
thermal radiation energy towards the orientation unit is limited
so as to not heat the orientation unit and the polymer bonded
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magnetic material of the at least one magnetic field generating
element to an average temperature (Ti) exceeding 100°C.1F2
REFERENCES
The prior art relied upon by the Examiner is:
Raksha et al. US 7,047,883 B2 May 23, 2006
Benninger et al. US 7,691,468 B2 Apr. 6, 2010

Appellant’s Admitted Prior Art Spec. 9:20–10:22 (photocuring), Spec.
14:15–15:6 (known substrate close-contact maintaining devices). (AAPA)
REJECTION
Claims 1, 3, 4, 7, 8, and 10–21 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Raksha in view of Benninger
and AAPA.

OPINION
Appellant sets forth separate arguments for patentability of
independent claims 1 and 8. (Appeal Br. 11, 26.) Additionally, Appellant
sets forth separate arguments for patentability of dependent claims 3, 20, and
21. (Appeal Br. 42.) Therefore, we will address Appellant’s arguments
separately. With respect to those claims not separately argued, we select
independent claim 1 as the representative claim for the group. 37 C.F.R.
§ 41.37(c)(1)(iv).
Obviousness
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill

2 We note that the claim language varies with regards to temperature “Ti” in
independent claim 1 and “T1” in dependent claim 3. The Specification
discloses “average temperature T1.” (See also Spec. 6:2; 8:30.)
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in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13 (1966). The
question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art. Graham, 383 U.S. at 17. See also KSR, 550 U.S. at 407
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and stated that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 415–16. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417. The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id.
Consistent with KSR, the Federal Circuit recognized that “[a]n
obviousness determination is not the result of a rigid formula disassociated
from the consideration of the facts of a case. Indeed, the common sense of
those skilled in the art demonstrates why some combinations would have
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been obvious where others would not.” Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
416). The Federal Circuit relied in part on the fact that Leapfrog had
presented no evidence that the proposed modification was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Id. at 1162.
Similarly, the Federal Circuit found that adapting existing electronic
processes to incorporate modern technology is obvious when the
combination is within an ordinarily skilled artisan’s ability:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1327 (Fed. Cir. 2008)
(quoting KSR, 550 U.S. at 421).
Appellant has provided no persuasive evidence on this record
establishing that these improvements would have been beyond the level of
skilled artisans. See id. (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”); Muniauction,
532 F.3d at 1327; Leapfrog, 485 F.3d at 1162.

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Claim 1
With respect to independent claim 1, Appellant contends that none of
the references identified the problem addressed by Appellant’s invention.
(Appeal Br. 12–13 (“Appellant[] discovered that exposure of magnetic field
generating elements to the heat generated by the lamps of a radiating unit for
curing the coating composition of the image can ‘modify the properties of
the magnetic field generating elements.’ Specification, p. 4, 11. 29–30.”)
At the outset, we note that the Background of the Invention discloses
“[v]arious materials and technologies for the orientation of magnetic
particles in molding and coating compositions.” Spec. 1:14–18; 2:12–18
(“Step c) comprises a hardening of the coating. This step can be performed
as known to the skilled person, e.g. by physical drying (evaporation of
solvent), UV-curing, electron beam curing, heat-set, oxypolymerization, by
combinations thereof, or by other curing mechanisms. The hardening
mechanism depends on the coating material. For example US-B 7,691,468
[Benninger reference used in obviousness rejection] describes inks used for
security features, which are dried either by hot air or by UV-curing
depending on the ink composition.”) We further note that Appellant’s
Specification acknowledges the well-known use of the Benninger system for
orienting the magnetic particles and drying or using UV-curing the liquid ink
depending on its composition.
We note claim terms are to be given their broadest reasonable
interpretation, as understood by those of ordinary skill in the art and taking
into account whatever enlightenment may be had from the Specification. In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability
context, claims are to be given their broadest reasonable interpretations . . .
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limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
Appellant contends that the Examiner has not provided any technical
reasoning to modify the Raksha reference to include a substrate guiding
system. (Appeal Br. 14–16.) We disagree with Appellant and find that
AAPA teaches the well-known use of a substrate guiding system that
includes one of the listed substrate guiding elements. Additionally, we find
cylinder 222’ in Figure 12B of Raksha discloses the use of a roller on the
second side of the substrate which guides the substrate thereby teaching and
suggesting the claimed “roller.”2F3
We further note that the language of representative independent claim
1 does not set forth limitations that the substrate guiding system is separate
and distinct from the orientation unit comprising at least one magnetic
generating element. As claimed, the magnet may be the orientation unit
separate from the cylinder 222’ which is the substrate guiding system
because the orientation unit does not recite a cylinder separate from the
substrate guiding system.
With respect to Appellant’s arguments against the motivation to
combine Raksha, Benninger, and AAPA, we disagree. The Supreme Court
stated that an explicitly stated motivation to combine the references is seen
as “helpful insight,” KSR, 550 U.S. at 418, but that the combination of

3 We leave it to the Examiner to further consider in the prosecution on the
merits the placement of the substrate guiding system in contact with the
second side of the substrate as it relates to the orientation unit because the
photocuring unit emits radiation on the first side with the printed material,
but disclosed Figures 5 and 6 appear to show the substrate guiding system on
the first side of the substrate 103 between the magnetic orienting elements
101 on roller 100 rather than on the second side.
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familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results. Id. at 416. Appellant has not
demonstrated that the Examiner’s proffered combination of references
would have been “uniquely challenging or difficult for one of ordinary skill
in the art.” See Leapfrog, 485 F.3d at 1162 (citing KSR, 550 U.S. at
418). Nor has Appellant provided objective evidence of secondary
considerations which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys.,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425–26 (CCPA 1981). (“[O]ne cannot show non-
obviousness by attacking references individually where . . . the rejections are
based on combinations of references.”). In this case, we find that the
Examiner established a prima facie case of obviousness and provided a
rationale underpinning for the combination of references, based on the
knowledge of an ordinarily skilled artisan.
Appellant further argues the sole basis for modifying the Raksha
reference is based on conclusion and conjecture without technical reasoning
for modifying, and does not consider the current state of the Raksha
structure to evaluate whether the alleged modification would have been an
obvious modification that would have allowed Raksha to continue operating
in its intended manner. (Appeal Br. 16.)
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As for Appellant’s argument that the reference combination would
result in Raksha being rendered unsuitable for its intended purpose (Appeal
Br. 16–17), we note common sense teaches that familiar items may have
obvious uses beyond their primary purposes, and persons of ordinary skill
can often fit the teachings of multiple patents together like pieces of a
puzzle. KSR, 550 U.S. at 420. Thus, it is not necessary that the references
be physically combinable, without change, to render obvious the invention
under review. In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The
criterion instead is what these references would have meant to a person of
ordinary skill in the field of the invention. In re Gorman, 933 F.2d 982, 986
(Fed. Cir. 1991).
In addition, an argument that the system is rendered “inoperable [or
unsuitable] for its intended purpose” is a “teach[ ] away” argument. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in
effect, “French teaches away from the board’s proposed modification”
because “if the French apparatus were turned upside down, it would be
rendered inoperable for its intended purpose”). The Federal Circuit has held
“[a] reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed.
Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). On
this record, we find Appellant has not provided sufficient evidence or
persuasive argument that modifying Raksha in combination with Benninger
and AAPA is either explicitly or implicitly discouraged in Raksha.
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In addition, we specifically note Appellant’s challenge to the
references individually is not convincing of error in the Examiner’s position
because all of the features of the secondary reference need not be bodily
incorporated into the primary reference, but consideration should be given to
what the combined teachings, knowledge of one of ordinary skill in the art,
and the nature of the problem to be solved as a whole would have suggested
to those of ordinary skill in the art. Keller, 642 F.2d at 425. Furthermore,
the artisan is not compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent judgment. See
Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir.
1984). Moreover, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” Kahn, 441 F.3d at 988 (cited with
approval in KSR, 550 U.S. at 418).
We agree with the Examiner because nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior-art disclosures. (Ans. 10–11.)
In the present case, the Examiner found the proposed combination
would have resulted in using the basic printing and ink orienting system of
Raksha in combination with Benninger’s well-known and newer polymer
bonded magnets to orient the magnetic particles in the ink “because this
would predictably provide a Plastoferrite magnet that is suitable for
orienting magnetic particles in an ink.” (Final Act. 8.) Additionally, the
Examiner maintains that one having ordinary skill in the art could easily
replace generic UV lamp of Raksha with the LED UV lamp by Phoseon
Technologies, because “this would predictably provide Raksha with a UV
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lamp that is known to be capable of curing UV inks in a printing process.”
(Final Act. 8.). Finally, the Examiner maintains that the AAPA teaches that
it was known in the art to use substrate guiding systems to hold a substrate
to a device and “combining prior art elements according to known methods
to yield predictable results is not sufficient to patentably distinguish an
invention over the prior art.” (Final Act. 9.) We find the Examiner’s
articulated rationale to be sufficient to justify the combination.
We find the Examiner has set forth multiple lines of reasoning for
predictably combining and substituting the prior-art structures of Benninger
and AAPA with the Raksha reference.3F4
In KSR, the Court stated:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability. For the same reason, if a technique has been used
to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual
application is beyond his or her skill. . . . [A] court must ask
whether the improvement is more than the predictable use of
prior art elements according to their established functions.
KSR, 550 U.S. at 417.

4 Additionally, we note that the use of LED UV lamp in the AAPA over a
traditional non-LED lamp provides significant power usage savings due to
the low-power nature of the well-known LED lamps (see also “lighting
standards, which phased in from 2012-2014, do not ban incandescent or any
specific bulb type; they say that bulbs need to use about 25% less energy.
The bipartisan Energy Independence and Security Act of 2007 (EISA 2007)
established these efficiency standards.”
https://www.energy.gov/energysaver/save-electricity-and-fuel/lighting-
choices-save-you-money/new-lighting-standards-began).
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Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner’s reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
limitations of representative claim 1, nor do we find error in the Examiner’s
resulting legal conclusion of obviousness.
Appellant further contends that the Examiner’s conclusion of
obviousness is based upon improper hindsight. (Appeal Br. 16–17.)
Additionally, Appellant contends that neither Raksha nor any other
document of record, including the AAPA, arguably identifies the problem
addressed by Appellant’s invention and/or arguably suggests the solution
recited in the embodiments of independent claim 1. (Appeal Br. 17.) We
find Appellant’s argument unpersuasive because the claim language does not
set forth any positive limitation that senses or controls the temperature
within the claimed “device” or “method.” We find that the use of the LED
light would necessarily lower the temperature and limit the temperature of
the orientation unit and the Plastoferrite magnetic material because of the
reduced power required for the LED lighting where the power has a known
relationship to the generated temperature. Additionally, as the Examiner
explains in the Answer that curing and drying are different functions where
the Examiner has merely identified and relied upon the curing function
rather than the drying function which is known to require additional power
and time duration. (Appeal Br. 13–14.)
The reason or motivation to modify the reference may often suggest
what the inventor has done, but for a different purpose or to solve a different
problem. It is not necessary that the prior art suggest the combination to
achieve the same advantage or result discovered by the applicant. See,
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e.g., Kahn, 441 F.3d at 987 (motivation question arises in the context of the
general problem confronting the inventor rather than the specific problem
solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor
Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in
the art need not see the identical problem addressed in a prior art reference
to be motivated to apply its teachings.”); In re Lintner, 458 F.2d 1013,
(CCPA 1972); In re Dillon, 919 F.2d 688 (Fed. Cir. 1990) (1991).
Appellant presents further argument that the Raksha reference fails to
suggest each of the individual elements which the Examiner relies upon the
additional prior art references and AAPA. (Appeal Br. 18.)
Appellant also contends that although the structural elements recited
in the claim were known “there is no discernible teaching found in the
applied art of record to suggest the expressly recited combination of features
presented in Appellant’s independent claim 1, which addresses and
overcomes a specific problem identified by the inventors of the pending
application.” (Appeal Br. 18.) Appellant further contends that the Examiner
has not identified any art of record that describes the problem identified by
the inventors, i.e., that the properties of magnetic field generating elements
can be modified as a result of exposure to the heat generated by the lamps of
a radiating unit for curing the coating composition of the image, and that this
modification of magnetic field generating element properties is even more
profound when the magnetic field generating elements comprise a polymer
bonded magnetic material, as recited in at least Appellant’s independent
claim 1, and certainly has not identified any art of record that arguably
suggests the solution embodied in at least Appellant’s independent claim 1,
which includes a combination of the above-noted visible or UV LED lamps
and the substrate guiding system in a device. (See Appeal Br. 18–21.)
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Additionally, we find that skilled artisans would have realized that
plastic-based materials are heat sensitive and the underlying a chemical
composition of the polymer plastic would dictate the thermal sensitivity of
the magnetic because as the polymer plastic melts and becomes less stable
the polymer bonded magnetic material would no longer be bound in the
proper magnetic orientation. Arguably, all polymers have critical
temperatures, and those temperatures would depend upon the specific
polymer chosen from the known commercially available polymers at the
time of the invention.
We find the Examiner persuasively responds to each of Appellant’s
general arguments for patentability. (Ans. 2–15.)
We disagree with Appellant and find that the totality of the prior art
would have taught and suggested the combination of the three prior-art
references. Clearly, the AAPA discloses the well-known use of LED UV
lighting to save power and money in curing orientable inks, and with
government mandates to reduce power, skilled artisans would have been
technically and economically motivated to use LED UV lighting in the
combination.
Additionally, skilled artisans would have been technically motivated
to incorporate the Plastoferrite magnets into the Raksha system for the same
reasoning that the Benninger system used of the Plastoferrite magnets.
Namely, the Plastoferrite magnets work well on curved surfaces for printing
and curing as implemented in both the Raksha and Benninger references.
With the combination of the LED lighting for the cost and power
savings, there would be no requirement to recognize the SAME problem as
Appellant because the temperature from curing would be lowered and not
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affect the Plastoferrite magnets or the traditional magnets of Raksha in the
photocuring process.
Also, the prior-art reference recognizes that the specific ink, the
specific substrate, and the printed article would dictate the curing time and
the drying time of the orientable ink and the speed of rotation of the
orientation unit, which all factor into the temperature generation.
Appellant’s argument does not consider the prior art as a whole
(Appeal Br. 21.) Consequently, we find Appellant’s argument that the
Examiner relied upon hindsight (Appeal Br. 21) to be unavailing. We agree
with the Examiner that the combination of well-known LED lighting for
photocuring and well-known Plastoferrite magnets for orienting inks to be
mere substitutions of well-known elements with predictable results.
Moreover, we find Appellant’s argument that the Examiner’s
statements are not sufficient does not persuasively identify why it would not
have been obvious to one of ordinary skill in the art at the time of the
invention in about 2011 rather than evaluating at the time of the Raksha
reference in 2003.
We disagree with Appellant and find the Plastoferrite polymer bonded
magnet of Benninger was a well-known magnet for orienting the magnetic
particles in ink. Benninger discloses
[t]he method comprises imprinting or coating a first surface of a
sheet or web with a magnetic ink or coating composition, and
approaching the imprinted sheet or web to the engraved surface
of a body of magnetized composite permanent-magnetic material
while the ink is wet, followed by hardening the ink.
(Benninger, Abstract.) Additionally, the Specification recognizes the
Benninger reference “For example US-B 7,691,468 [Benninger] describes
inks used for security features, which are dried either by hot air or by UV-
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curing depending on the ink composition” and also recognizes the difference
between drying and curing. (Spec, 2:16–18.)
Additionally, we note the claimed field of endeavor of independent
claim 1 is directed to a broad field of a “device for producing a magnetically
induced visual effect” which is encompassed by the teachings and
suggestions of the Benninger reference (see also Benninger 1:8) (“security
document printing,” 1:32–33 (“Optically variable printed features on
security documents such as bank notes”); Raksha, Abstract (“Images can
provide security features on high-value documents, such as bank notes.”))
As a result, both prior-art references are directed to security on high-value
documents, such as, bank notes. Therefore, we find Appellant’s general
arguments to the combination to be unavailing regarding the reliance upon
hindsight reconstruction.
Appellant further submits that the claimed limitations of the present
disclosure are “more than the predictable use of prior art elements according
to their established functions,” but Appellant does not provide any
persuasive line of reasoning why the combination is more than the
predictable use of the prior art elements according to their established
functions. (See Reply Br. 2.)
Appellant further argues that the disclosure of Raksha cannot be
combined with the polymer bonded magnetic materials of Benninger
because it would result in the deformation of the polymer bonded magnetic
materials. (Reply Br. 3.)
We disagree with Appellant. Rather, we look at the combination of
the three prior art references, as a whole, and find that skilled artisans would
have readily looked to save power in the photocuring step and sought to use
the LED UV lighting for curing orientable inks. With the use of the LED
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lighting, we find no excessive heat generation and subsequently the use of
the more flexible Plastoferrite magnets on the curved orientation roller
would have been more desirable because of the flexibility of the Plastoferrite
polymer bonded magnets. Consequently, the temperature would stay within
the claimed range and because there are no additional claimed elements for
sensing or controlling of temperature required, the combination of prior art
would have taught or suggested the claimed invention.
We find Appellant’s arguing the references individually rather than
what the combined teachings would have taught or suggested to one of
ordinary skill in the art at the time of the invention rather than at the time of
Raksha.
Appellant argues that the combination of the Raksha and Benninger
references regarding the claimed temperature range (see generally Appeal
Br. 21–22), but we find of the combination, as a whole, teaches and suggests
the claimed invention. Alternatively, we view the combination may be
viewed as Raksha in view of AAPA further in view of Benninger. With the
clear dictate by government to reduce power, skilled artisans would have
been motivated to use the well-known LED UV lamps which inherently
lowers the heat generation and then would have implemented the
substitution of the flexible Plastoferrite magnets with no negative
temperature problem.
The Examiner responds to Appellant’s argument and identifies that
the Examiner relied upon two separate bases for the combination. The
Examiner found that one having ordinary skill in the art could easily replace
the magnetic material of Raksha with the Plastoferrite magnets of Benninger
because this would predictably provide a Plastoferrite magnet that is suitable
for orienting magnetic particles in an ink. Alternatively, the Examiner found
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it would have been obvious to a person having ordinary skill in the art at the
time the invention was made to modify Raksha to use the Plastoferrite
magnets of Benninger, because this simple substitution would predictably
provide Raksha with magnets that are capable of aligning magnetic particles
within an ink. (Final Act.12–13; Ans. 4.)
Appellant additionally argues that the Examiner has not identified, nor
can he identify, any technical reasoning for the combination of the LED
lighting in the combination. (Appeal Br. 24.)
Appellant contends that no proper modification of RAKSHA in view
of BENNINGER and AAPA would have been reasonably understood by
those ordinarily skilled in the art to have rendered obvious the embodiments
recited in claim 1. (Appeal Br. 25.) Appellant further contends that neither
applied document arguably identifies the problem addressed by the claimed
embodiments or suggests the solution to the problem addressed by the
claimed embodiments and, therefore, the Examiner has not provided a
sufficient case of obviousness. (Appeal Br. 26.)
In response to Appellant’s arguments, the Examiner again has
identified a simple substitution of one light for another light for curing UV
inks in a printing process. (Final Act. 13–14; Ans. 4–5.) We agree with the
Examiner and find that Appellant merely argues for a more detailed
statement of the motivation for the combination. See also Hr’g. Tr. 9–10
(stating “[the Examiner] hasn’t done enough analysis to justify his
combination”).
With respect to the combination of the substrate guiding elements, the
Examiner again identifies merely combining prior-art elements according to
known methods to yield predictable results is not sufficient to patentably
distinguish an invention over the prior art. (Final Act. 14–15; Ans. 5–6.)
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We also note that the Examiner has further argued the difference
between the functions of drying and photocuring, whereas Appellant’s
argument concerning the combination appears to be directed to the drying
process, which takes more time and energy and generates more heat than the
photocuring, which merely sets the magnetic particles in the ink. Moreover,
we find Appellant has not provided persuasive argument that any of the
elements are not well-known or conventional in the art, but that the
combination remedies the variation in the temperature of the Plastoferrite
polymer bonded magnet of Benninger was discovered by Appellant.
We find that the language of independent claim 1 sets forth a
functional limitation regarding the photocuring is configured so that the
omission of the thermal radiation energy towards the orientation unit is
limited, but the claim does not specifically set forth a means or a limiting
element which controls the thermal radiation energy. Consequently, the
mere fact that a lower power UV curable lamp is used would necessarily
limit the thermal radiation as claimed without a specific element performing
the temperature sensing and limiting functions. Therefore, we find
Appellant’s arguments to be unpersuasive of error and sustain the
Examiner’s obviousness rejection of representative independent claim 1.

Independent Claim 8
Appellant sets forth similar arguments for independent claim 8 as
those set forth for representative independent claim 1. (Appeal Br. 26–42.)
Because we found Appellant’s arguments to be unpersuasive with respect to
representative independent claim 1, we similarly find them unpersuasive
with respect to independent claim 8.
We, additionally, note that the Appellant’s Specification discloses:
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the photocuring unit may comprise a UV-lamp, preferably a
UV-LED lamp, as illustrated in Fig. 1. As shown in Fig.2, the
UV-lamp may be equipped with at least one dichroic reflector
which is configured to direct the radiation corresponding to
UV-spectra wavelengths towards the coated substrate and to
direct the radiation corresponding to the IR-spectrum
wavelengths away from the coated substrate. The photocuring
unit may also be implemented as a UV lamp equipped with a
waveguide directing the irradiation energy towards the coated
substrate.
(Spec. 9:11–18.) We note that independent claims 1 and 8 do not recite any
additional structural or process elements corresponding to the disclosed
dichroic reflector which diverts the infrared spectrum from irradiating the
orientation unit during the photocuring. Consequently, independent claims 1
and 8 merely include the “LED ultraviolet-lamp (UV-lamp).” Therefore, we
group independent claim 8 as falling with representative independent
claim 1.

Dependent Claims 3, 20, and 21
With respect to dependent claim 3, Appellant contends that the prior
art does not teach or suggest the recited limitation “said photocuring unit is
further configured such that its emission of thermal radiation energy towards
the orientation unit is limited so as to not heat the orientation unit and the
polymer bonded magnetic material of the at least one magnetic field
generating element to an average temperature (T1) exceeding 70°C,” as in
claim 3. (Appeal Br. 42–43.)
The Examiner maintains that the same line of reasoning for dependent
claim 3 is used to establish the obviousness of the claim limitations which
merely set forth a further lower temperature is maintained without setting
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forth any additional structural or process limitations to differentiate the
claimed invention. (Ans. 14.)
We find Appellant merely repeats the language of claim 3 and relies
upon the same arguments advanced with respect to independent claim 1,
which we found unpersuasive of error in the Examiner’s factual findings or
conclusion of obviousness.
Merely reciting the language of the claim is insufficient. See
37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”). Merely alleging that the references fail to support an
obviousness rejection is insufficient to persuade us of Examiner error.
Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); Ex parte Belinne, Appeal No. 2009-004693, 2009 WL
2477843, at *3–4 (BPAI Aug. 10, 2009) (informative).
Therefore, we find Appellant’s general argument for patentability to
be unpersuasive of error in the Examiner’s factual findings or conclusion of
obviousness of dependent claim 3.
With respect to dependent claims 20 and 21, Appellant generally
argues the substrate-guiding system is not taught or suggested as recited in
independent claims 1 and 8 and the dependent claims require the “substrate-
guiding system further comprises at least one of a gripper and a vacuum
system.” (Appeal Br. 43–44.)
The Examiner maintains that the same line of reasoning for dependent
claims 20 and 21 is used to establish the obviousness of claims 1 and 8 and
the additional limitation merely set forth “the substrate-guiding system
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further comprises at least one of a gripper and a vacuum system.” (See Final
Act. 9, 19; Ans. 14; see also Spec. 14.)
Appellant does not dispute the Examiner’s finding that the gripper and
vacuum were well-known at the time of the invention and both were used in
the prior art processing of substrates.
Therefore, we find Appellant’s general argument for patentability to
be unpersuasive of error in the Examiner’s factual findings or conclusion of
obviousness of dependent claims 20 and 21.
DECISION
The Examiner’s obviousness rejection is affirmed.
DECISION SUMMARY
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 7, 8,
10–21 103(a)
Raksha, Benninger,
AAPA
1, 3, 4, 7, 8,
10–21
FINALITY AND 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