Wade Johnson et al.Download PDFPatent Trials and Appeals BoardJan 27, 20212019006445 (P.T.A.B. Jan. 27, 2021) 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. 13/174,179 06/30/2011 Wade Johnson 3729.66US02AE 1432 24113 7590 01/27/2021 PATTERSON THUENTE PEDERSEN, P.A. 80 SOUTH 8TH STREET 4800 IDS CENTER MINNEAPOLIS, MN 55402-2100 EXAMINER POWERS, LAURA C ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 01/27/2021 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): efsuspto@ptslaw.com johnson@ptslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WADE JOHNSON, DAVID SPANGENBERG, and MARTIN KOEBEL Appeal 2019-006445 Application 13/174,179 Technology Center 1700 Before N. WHITNEY WILSON, DEBRA L. DENNETT, and MERRELL C. CASHION, JR., Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–4, 9–13, 15, and 17–23, which are all 1 In our Decision, we refer to the Specification (“Spec.”) of Application No. 13/174,179 (“’179 App.”); the Non-Final Office Action dated Mar. 8, 2018 (“Non-Final Act.”); the Appeal Brief filed Apr. 10, 2019 (“Appeal Br.”); and the Examiner’s Answer dated May 15, 2019 (“Ans.”). Appellant did not file a Reply Brief. 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Taylor Corporation. Appeal Br. 2. Appeal 2019-006445 Application 13/174,179 2 of the pending claims. See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER According to Appellant, “[t]he present invention relates generally to foiled articles and foiling processes” and, more particularly, to such articles and processes “incorporating patterned foils using digital printing processes.” Spec. 1. Such articles can include greeting cards, business cards, passports, and so on. Id. Appellant’s Specification describes deficiencies in known ink and foil hot foil/hot stamping methods, and in current dieless foiling processes. Id. at 4. The Specification suggests that there is a need for low cost, dieless foil printing processes incorporating variable image data and color techniques that address the problems with existing techniques. Id. Claims 1, 17, and 21 are independent. Claim 1, reproduced below from the Claims Appendix, illustrates the claimed subject matter: 1. A foiled article having at least one colored foil feature comprising: a substrate presenting a surface; and a colored foil feature, the colored foil feature including a digitally patterned toner area deposited on a portion of the surface of the substrate; a metallic foil material bonded to only the toner area, and digitally applied toner or digitally applied ink printed over at least a portion of the foil material and extending to a portion of the surface of the substrate without foil material bonded thereto, Appeal 2019-006445 Application 13/174,179 3 wherein the digitally applied toner or digitally applied ink printed over at least a portion of the foil material imparts a color such that the at least one colored foil feature exhibits a colored foil appearance from a combination of the digitally applied toner or digitally applied ink and the underlying foil material different than an appearance of the underlying foil material. REFERENCES3 The Examiner relies on the following references: Name Reference Date Laskey et al. (“Laskey”) US 2005/0167035 A1 Aug. 4, 2005 Scarbrough et al. (“Scarbrough”) US 7,290,803 B2 Nov. 6, 2007 Yamauchi et al. (“Yamauchi”) EP 1 392 046 A2 Feb. 25, 2004 REJECTIONS4 The claims stand rejected under 35 U.S.C. § 103(a) as follows: (1) claims 1–4, 9, 10, 12, 13, 15, 17–23 over Laskey in view of Scarbrough; and (2) claim 11 over Laskey and Scarbrough, further in view of Yamauchi. Non-Final Act. 4, 13. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced 3 All references are identified by the first-named inventor. 4 All rejections are under the provisions of Title 35 of the United States Code in effect before the effective date of the Leahy-Smith America Invents Act of 2011. Appeal 2019-006445 Application 13/174,179 4 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 [E]xaminer’s rejections.”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, Appellant fails to persuade us of reversible error in the rejections of claims 1–4, 9–13, 15, and 17–23. 1. Rejection of claims as obvious over Laskey in view of Scarbrough Appellant does not argue for patentability of any claim subject to this rejection separately from other claims. See Appeal Br. 10–15. We select claim 1 as representative. 37 C.F.R. § 42.37(c)(1)(iv). Claims 2–4, 9, 10, 12, 13, 15, and 17–23 stand or fall with claim 1. The Examiner finds that the teachings of Laskey in view of Scarbrough would have rendered claim 1 obvious. Non-Final Act. 4–5. The Examiner finds that “digitally applied” as used in claim 1 is a process limitation that does not confer patentability on a claimed product. Id. at 5. Appellant argues neither Laskey, nor Scarbrough disclose or suggest a foil feature including “digitally applied toner or digitally applied ink” or “application of digital toner or digital ink” “over at least a portion of the foil material and extending to a portion of the surface of the substrate without foil material bonded thereto.” Appeal Br. 10–11. Appellant also argues that neither Laskey nor Scarbrough disclose printing or applying digital inks or toners to both foiled and non-foiled areas in the same pass such that the ink or toner extends from the foiled areas to the non-foiled areas of the substrate. Id. at 11. Appeal 2019-006445 Application 13/174,179 5 Appellant contends that one of ordinary skill in the art would have recognized that digital printing techniques result in a structurally different printed substrate or foil than printing with traditional plates and inks. Id. at 12. Appellant argues that traditional inks tend to flow and absorb into the substrate, but digital toners and inks sit on top of the substrate. Id. Appellant further argues that the skilled artisan would have recognized that traditional contact printing methods require a separate pass or stage for each individual color, requiring precise registration for each pass. Id. Appellant argues that traditional printing inks have much lower viscosity and/or surface tension that digital inks or toners, running a greater risk that printing would run or bleed from foiled areas. Id. at 12–13. Appellant’s arguments are not persuasive of reversible error by the Examiner. Despite Appellant’s argument, nothing in claim 1 requires printing the foiled and non-foiled areas in a single pass. Compare Appeal Br. 11 with id. at 18 (Claims App.). In addition, the Specification does not limit the invention to employing only a single pass or only digital application. See Spec. 10, ll. 18–22 (“printed using any of a variety of suitable printing techniques, such as, for example, flexography, lithography, digital printing such as inkjet and dot-matrix printing, gravure, rotogravure, offset printing, intaglio, laser printing, screen printing, xerographic printing, and the like and combinations thereof.”). Appellant’s argument and evidence that “traditional” printing using stamping dies requires multiple passes—rather than a single pass—does not distinguish the claimed article from the prior art. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (rejecting appellant’s nonobviousness argument as based on limitation not expressly Appeal 2019-006445 Application 13/174,179 6 recited in claim, stating “limitations are not to be read into the claims from the specification”). We turn to consideration of whether the term “digitally applied” confers patentability on the foil article of claim 1. See Ans. 4. “If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). It is well established that “[w]here a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). The evidence must be commensurate in scope with the claims. Id. Here, the evidence is in the form of two declarations. Martin Koebel, one of the named inventors, declares that “digitally printing matter or toner does produce a printed structure different than the printed structure produced by non-digital methods disclosed in the Scarbrough reference.” Declaration by Martin Koebel dated Aug. 8, 2012 (“Koebel Decl.”), ¶ 7. However, Mr. Koebel only distinguishes the results of digital printing from offset printing (see ¶¶ 8–13), and limits his statements merely to possible results of offset printing (see ¶ 8 (“the substrate, e.g., foil, can become compressed or indented”; ¶ 10 (“one may feel a slight raise or unevenness”; ¶ 11 (“registration may be more precise with offset”), ignoring other printing methods disclosed in Scarbrough. Appeal 2019-006445 Application 13/174,179 7 Ryan McGuire, an employee of the assignee, compares two exhibits, one made using stamping dies, the other by digital processes in his declaration. Declaration of Ryan McGuire dated Oct. 1, 2015, ¶¶ 2, 8, 11. Mr. McGuire characterizes the exhibit made by digital processes as being “accomplished in a single pass, without the need to re-register for different colors or to [] align the printing with the foil . . .” and notes that “the substrate is substantially free of die or plate impressions, and . . . does not have the undulations present” in the exhibit produced by stamping. Id. ¶¶ 14–15. Review of Appellant’s evidence demonstrates that it is not commensurate in scope with claim 1, making it unpersuasive of reversible error. On the record before us, we sustain the rejection of claim 1 over Laskey in view of Scarbrough. We likewise sustain the rejection of claims 2–4, 9, 10, 12, 13, 15, and 17–23 over these references. 37 C.F.R.§ 42.37(c)(1)(iv). 2. Rejection of claim 11 as obvious over Laskey, Scarbrough, and Yamauchi The Examiner rejects claim 11 over Laskey in view of Scarbrough, and further in view of Yamauchi. Non-Final Act. 13–14. Appellant argues that “Yamuchi [sic] does not make up for the deficiencies of either Laskey or Scarbrough.” Appeal Br. 16. Finding no deficiency in the combination of Laskey and Scarbrough, we sustain the rejection of claim 11 over Laskey, Scarbrough, and Yamauchi. CONCLUSION Appeal 2019-006445 Application 13/174,179 8 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 9, 10, 12, 13, 15, 17–23 103(a) Laskey, Scarbrough 1–4, 9, 10, 12, 13, 15, 17–23 11 103(a) Laskey, Scarbrough, Yamauchi 11 Overall Outcome 1–4, 9–13, 15, 17–23 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 Copy with citationCopy as parenthetical citation