Ex Parte Schaafsma et al

Patent Trial and Appeal Board

Jun 30, 2017

12685247 (P.T.A.B. Jun. 30, 2017)

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
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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
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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.
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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.
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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
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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.
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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.
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DECISION
For the above reasons, the Examiner’s rejection of claims 7, 10, 12—
15, and 18 is reversed.
REVERSED
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