Ex Parte Schaafsma et alDownload PDFPatent Trial and Appeal BoardJun 30, 201712685247 (P.T.A.B. Jun. 30, 2017) 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. 12/685,247 01/11/2010 Christopher T. Schaafsma 22473 (35371-77805) 7012 44986 7590 07/05/2017 Levenfeld Pearlstein, LLC (ILLINOIS TOOL WORKS) 2 North LaSalle Street Suite 1300 Chicago, IL 60602 EXAMINER OLAMIT, JUSTIN N ART UNIT PAPER NUMBER 2854 NOTIFICATION DATE DELIVERY MODE 07/05/2017 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): ipdocket@lplegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER T. SCHAAFSMA and CHRISTOPHER J. SOBASZEK Appeal 2016-004609 Application 12/685,2471 Technology Center 2800 Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 7, 10, 12—15, and 18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify Illinois Tool Works Inc. as the real party in interest. Br. 3. 2 In this Opinion, we refer to the Specification filed January 11, 2010 (“Spec.”); the Final Action emailed February 23, 2015 (“Final Act.”); the Appeal Brief filed October 7, 2015 (“Br.”); and the Examiner’s Answer emailed February 2, 2016 (“Ans.”). Appellants did not file a Reply Brief. Appeal 2016-004609 Application 12/685,247 The claims are directed to a digital cliche pad printing system and method. Claims 7 and 14, reproduced below, are illustrative of the claimed subject matter: 7. A digital cliche pad printing system comprising: a conveyor for conveying a substantially non-elastic, elongate, continuous flexible support member, the support member formed from a paper tape, foil or polymeric material; a fluid jetting device for depositing a UV curable fluid onto the continuous support member in a desired pattern, the UV curable fluid adhered to the continuous support member, the desired pattern having at least one void space, the at least one void space having a shape defining a desired graphic to he transferred to an object; a UV energy source for curing the fluid in the desired pattern, the cured fluid defining a cliche having a top surface; an ink delivery system for depositing ink in the at least one void space and for wiping ink from the top surface; and a pad configured to contact the cliche and receive the ink from the void space, the received ink forming the desired graphic to be transferred, the pad further configured to move into contact with the object and transfer the desired graphic to the object, wherein the conveyor conveys the continuous support member from the fluid jetting device to the pad, through the UV energy source and the ink delivery system. 14. A method for pad printing comprising the steps of: dispensing a substantially non-elastic, elongate, continuous flexible support member from a dispenser along a conveyance path, the support member formed from a paper tape, foil or polymeric material; depositing a UV curable fluid onto the continuous support member, the UV curable fluid deposited in a desired 2 Appeal 2016-004609 Application 12/685,247 pattern, adhered to the continuous support member, and defining at least one void space, the at least one void space having a shape defining a desired graphic to be transferred to an object; subjecting the UV curable fluid to UV energy to cure the fluid to define a cliche having a top surface; filling the at least one void space with an ink and wiping ink from the top surface of the cliche; contacting a printing pad with the cliche to receive the ink on the printing pad from the void space, the received ink forming the desired graphic to be transferred; and contacting the printing pad with the object to transfer the desired graphic from the printing pad to the object, wherein a conveyor conveys the continuous support member along the conveyance path from the dispenser through the step of contacting the printing pad with the object. Br. 22—24 (Claims App’x). REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Lampinski US 6,314,880 B1 Nov. 13, 2001 Philipp US 6,363,849 B1 Apr. 2, 2002 Daems et al. US 2006/0054040 Al Mar. 16, 2006 (“Daems”) Velde et al. US 7,589,868 B2 Sept. 15,2009 (“Velde”) REJECTIONS The Examiner maintains—and Appellants appeal—the following rejections under 35 U.S.C. § 103(a): (1) claims 7, 10, 12, and 13 as unpatentable over Philipp in view of Velde, Daems, and Lampinski; and 3 Appeal 2016-004609 Application 12/685,247 (2) claims 14, 15, and 18 as unpatentable over Lampinski in view of Velde, Daems, and Philipp. Final Act. 2, 3 and 6; see also Br. 7. OPINION Appellants argue that the Examiner fails to make a prima facie case of obviousness with respect to independent claims 7 and 14. Br. 7, 15. Appellants do not make separate patentability arguments for the dependent claims, which will stand or fall with the independent claim from which they depend. 37 C.F.R. § 41.37 (c)(l)(iv). With respect to claim 7, the Examiner finds that Philipp teaches a digital cliche pad printing system comprising a conveyor (supply roll 16 and windup roll 20), an ink delivery system (ink fountain 28 and tampon 30), and a printing pad (tampon 30). Final Act. 3. The Examiner finds that Philipp does not explicitly teach an ink delivery system for depositing ink in at least one void space and for wiping ink from a top surface and that a pad receives ink from the void. Id. However, the Examiner finds that Lampinski teaches this element and that the pad receives ink from the void. Id. The Examiner concludes that it would have been obvious to modify Philipp’s ink fountain and pad to include Lampinski’s voids and doctor blade (for wiping ink from a top surface) in order to perform pad printing on irregular shaped objects. Id. However, nothing in Philipp, which employs a tampon printing process, suggests that the disclosed method cannot be printed on irregular surfaces. Thus, the Examiner’s reason for combining Lampinski with Philipp is unsupported. 4 Appeal 2016-004609 Application 12/685,247 The Examiner finds that Velde teaches 3-D printing to create a pad printing plate on-demand, while Philipp teaches an engraving method to create an on-demand pad printing plate. Final Act. 4. The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention to substitute one method of making an on- demand printing plate for another to create printing plates cheaply for short printing runs. Id. (citing Velde col. 2,11. 61—62; col. 2, In. 67—col. 3, In. 3). The Examiner finds that Velde teaches creating the 3-D structure is cheaper than engraving for short printing runs, and it is this advantage that renders the combination of Philipps and Velde obvious. Ans. 2. However, the portions of Velde cited by the Examiner describe “[gjravure rolls are manufactured by an expensive and time consuming etching process or by means of a diamond stylus which embosses the gravure roll,” which is not the process disclosed in Philipp, which teaches laser engraving. See Philipp Abstract. Velde provides no stated benefit or advantage over Philipp. Finally, the Examiner finds that Daems teaches a substantially non elastic, elongate, flexible continuous support member formed from a paper tape, foil or polymeric material; a fluid jetting device for positing UV curable fluid; and a UV energy source. Final Act. 4—5. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the digital cliche pad printing system of Philipp, Lampinski, and Velde by including the support member, fluid jetting device and UV energy sourced taught by Daems in order to have the specific structures to perform 3-D printing of a digital cliche onto a conveyed support member. Id. at 5. 5 Appeal 2016-004609 Application 12/685,247 However, Daems teaches use of flexographic printing plates. Daems 110 (“It is an object of the present invention to provide curable jettable liquid suitable for manufacturing a flexographic printing plate in a fast, simple, and environmental friendly manner.”) In flexographic printing, the raised parts of the plates are used for forming the image, while in gravure printing, the recesses form the image. Velde col. 15,11. 37-44. A person of ordinary skill in the art at the time of the invention, therefore, would not have had reason to combine the teachings of Daems with those of Philipp, Lampinski, or Velde, since Philipp would remove the image inked by Daems. Appellants persuasively argue that this combination involves impermissible hindsight. It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996). The Examiner fails to show prima facie obviousness of claim 7 over Philipp, Lampinski, Velde, and Daems. We, therefore, do not sustain the Examiner’s rejection of claim 7. For the same reasons, we do not sustain the rejections of claims 10, 12, and 13 which depend from claim 7. With respect to claim 14, the Examiner finds that Lampinski teaches most of the steps of the method, but does not teach the steps of dispensing, depositing, and subjecting as recited in the claim partly because Lampinski does not teach performing 3-D printing to create a printing pad plate. Final Act. 7. The Examiner finds that Velde teaches performing 3-D printing to create a pad printing plate. Id. The Examiner concludes that it would have 6 Appeal 2016-004609 Application 12/685,247 been obvious for one of ordinary skill in the art at the time of the invention to have modified Lampinski’s method to use Velde’s 3-D printing in order to create printing plates cheaply for short printing runs. Id. The Examiner concludes that Lampinski is changed by Velde because Velde teaches that creating the 3-D structure is cheaper than engraving and can be used for short printing runs. Ans. 5. However, as stated above with respect to claim 7, the portions of Velde cited by the Examiner describe “[gjravure rolls manufactured by an expensive and time consuming etching process or by means of a diamond stylus which embosses the gravure roll.” Final Act. 7 (citing Velde col. 2,11. 61—62; col. 2, In. 67—col. 3, In. 3). The “expensive and time-consuming” gravure process described in Velde differs from that of Lampinski, which teaches preparing a cliche with a photocurable pre-polymer. See Lampinski col. 2,11. 41—45. Thus, Velde does not provide a benefit or advantage over Lampinski. The Examiner provides no motivation for one of ordinary skill in the art at the time of the invention to modify Lampinski with the teachings of Velde. The Examiner acknowledges, with respect to claim 14, that Lampinski in view of Velde does not teach the steps of dispensing, depositing, and subjecting, as recited in the claim. Final Act. 8. The Examiner finds that Daems teaches these steps, and concludes that it would have been obvious for one of ordinary skill in the art at the time of the invention to have modified the method taught by a combination of Lampinski and Velde with the “providing, depositing and subjecting steps as taught by Daems in order to have the specific steps to perform 3-D printing of a digital cliche.” Id. 7 Appeal 2016-004609 Application 12/685,247 The Examiner finds that Philipp teaches the step of dispensing a continuous support member from a dispenser along a conveyance path and that a conveyor conveys the continuous support member from a printing plate creation station to a printing station. Id. at 9. According to the Examiner, it would have been obvious to include the conveyor taught by Philipp in order to have a convenient way to transport a printing plate so that a product can be printed with different labels. Id. Appellants persuasively argue that the Examiner’s proposed combination of references lacks the requisite articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. See Appeal Br. 15; see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). In the instant case, the reason to combine the references appears to be based only on hindsight reconstruction of the disclosed invention. “[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). The Examiner fails to show prima facie obviousness of claim 14 over Lampinski, Velde, Daems, and Philipp. We, therefore, do not sustain the Examiner’s rejection of claim 14. For the same reasons, we do not sustain the rejections of claims 15 and 18 which depend from claim 14. The Examiner reversibly errs in concluding that the pending claims are obvious over the cited references. 8 Appeal 2016-004609 Application 12/685,247 DECISION For the above reasons, the Examiner’s rejection of claims 7, 10, 12— 15, and 18 is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation