Ex Parte Kovacs et al

Patent Trial and Appeal BoardSep 29, 2014

12107520 (P.T.A.B. Sep. 29, 2014)

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. 12/107,520 04/22/2008 Gregory Joseph Kovacs 20052330USCIP-XER1857-01 9880 62095 7590 09/30/2014 FAY SHARPE / XEROX - ROCHESTER 1228 EUCLID AVENUE, 5TH FLOOR THE HALLE BUILDING CLEVELAND, OH 44115 EXAMINER PATEL, RUT N ART UNIT PAPER NUMBER 2853 MAIL DATE DELIVERY MODE 09/30/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GREGORY JOSEPH KOVACS, STEVEN E. READY, JENNIFER L. BELELIE, PETER GORDON ODELL, MOJGAN RABBANI and SHRIRAM V. REVANKAR Appeal 2012-012172 Application 12/107,520 Technology Center 2800 ____________ Before CHUNG K. PAK, ROMULO H. DELMENDO, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the Primary Examiner’s decision finally rejecting claims 1-7 and 9-14. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 The Real Parties-In-Interest are Xerox Corporation and Palo Alto Research Center Incorporated (Br. 1). Appeal 2012-012172 Application 12/107,520 2 CLAIMED SUBJECT MATTER The claimed invention is a method for forming an image on a corrugated substrate (Abstract). Claims 1 is representative of the claims on appeal and is reproduced below from the Claims Appendix of the Appeal Brief (key claim limitations in italics): 1. A method for forming an image on a corrugated substrate comprising: melting a radiation-curable gel based phase change ink; depositing at least one drop of the melted ink on the corrugated substrate in a pattern to form an image; allowing the ink to gel on the substrate; and curing the ink. DISCUSSION The only rejection on appeal is the rejection of claims 1-7 and 9-14 under 35 U.S.C. § 103(a) as being unpatentable over Ishikawa2 in view of You.3 Appellants state that claims 1-4, 6, 7, 9-11,13, and 14 stand or fall together, while claims 5 and 12 are grouped together but separate from the remaining claims (Br. 4). The Examiner finds that Ishikawa discloses a method for forming an image on a substrate which comprises heating an ultraviolet-curable gel based phase change ink, depositing at least one drop of the melted ink on the substrate in a pattern to form an image, allowing the ink to gel on the substrate, and curing the ink with UV radiation (Ans. 3-4, citing Ishikawa, ¶¶ 13-15, 17, 23, 77, and 111). Appellants do not dispute these findings (see, 2 Ishikawa et al., US Patent Application Publication 2003/0128264 A1, published July 10, 2003. 3 You et al., U.S. Patent No. 5,151,120, issued September 29, 1992. Appeal 2012-012172 Application 12/107,520 3 Br. 5 (stating that non-obviousness is based on the argument that neither Ishikawa nor You discloses the use of a corrugated substrate)). The Examiner also finds that Ishikawa discloses that its process may be used on substrate materials such as “sign boards, decorations of walls, buildings and also textiles” (Ans. 4). The Examiner further finds that You teaches a solid phase change inkjet printing method in which the substrate is a cardboard substrate (id.) The Examiner concludes that it would have been obvious to use a corrugated substrate as taught by You in Ishikawa’s process “for the purpose of labeling and creating a poster [sign]” (id.). Appellants’ do not contest the Examiner’s combination of Ishikawa and You (see, Br. 5-7), but instead argue that claim 1 would not have been obvious because neither Ishikawa nor You teaches the use of a corrugated substrate4 (Br. 5). Appellants’ arguments do not persuade us that the Examiner has reversibly erred in making the obviousness rejection. Appellants argue that the word “cardboard” as used in You (and relied on by the Examiner in making the obviousness rejection) refers to thick, heavy paper, such as the type used in birthday cards, and does not refer to a corrugated substance. However, Appellants provide no credible evidence to support this proposition, relying solely on attorney argument. However, mere attorney argument cannot take the place of evidence. See, e.g., In re Pearson, 494 F. 2d 1399, 1405 (CCPA 1974). 4 The Specification describes the term “corrugated” as materials which have “a design of alternating ridges and valleys manufactured to a specific pitch” (Spec. ¶ 7). The Specification also defines “cardboard” as a sheet-like product formed by having a “corrugated member glued or fixed to, or between, one or more relatively flat facing members” (id.). Appeal 2012-012172 Application 12/107,520 4 As noted by the Examiner, Taylor5 teaches that “cardboard” is a corrugated material (Ans. 7, citing Taylor, col. 4, ll. 47-49). Thus, the evidence of record supports that Examiner’s determination that a combination of Ishikawa and You (using You’s cardboard substrate in Ishikawa’s process) would yield the invention described in claim 1. Appellants do not dispute that Taylor teaches that “cardboard” is a corrugated material, but argue instead that Taylor teaches away from the claimed invention (Br. 6-7). However, Taylor’s teachings are not combined by the Examiner with those of Ishikawa and You in order to arrive at the claimed invention (Ans. 8). Instead, the Examiner relies on Taylor solely as evidence of the proposition that the term “cardboard,” as used, for example, in You, would be understood by a person of skill in the art to be a corrugated substrate (id.).6 We are not persuaded that this reliance creates reversible error. Thus, we determine that Appellants have not shown reversible error in the Examiner’s conclusion that claim 1 would have been obvious over Ishikawa and You, and affirm this rejection. Because Appellants states that claims 2-4, 6, 7, 9-11, 13, and 14 stand or fall with claim 1 (Br. 4), we also affirm the rejections of these claims. Dependent claims 5 and 12 each recite that the ink is heated to a temperature of about 70°C to about 95°C. Appellants argue that the rejections of these claims should be reversed because “Taylor teaches away from using inks in this range.” However, Taylor is not relied on by the Examiner in rejecting claims 5 and 12 (Ans. 5). Accordingly, whether it “teaches away 5 Taylor et al., U.S. Patent No. 5,672,413, issued September 30, 1997. 6 The Examiner also finds that the Specification defines “corrugated substrate” to include cardboard (e.g. Ans. 7, citing Spec. ¶ 7). Our affirmance of the rejection does not rely on this finding. Appeal 2012-012172 Application 12/107,520 5 from using inks in this range” is not pertinent to the rejection. Therefore, we affirm the rejections of claims 5 and 12. CONCLUSION We AFFIRM the rejections of claims 1-7 and 9-14 under 35 U.S.C. § 103(a) as being unpatentable over Ishikawa in view of You. 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 tc