Wade Johnson et al.

Patent Trials and Appeals Board

Jan 27, 2021

2019006445 (P.T.A.B. Jan. 27, 2021)

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