Ex Parte Shaul et alDownload PDFPatent Trial and Appeal BoardDec 7, 201714355097 (P.T.A.B. Dec. 7, 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. 14/355,097 04/29/2014 Itzik Shaul 83928133 5561 22879 HP Tnr 7590 12/11/2017 EXAMINER 3390 E. Harmony Road Mail Stop 35 CULLER, JILL E FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 2854 NOTIFICATION DATE DELIVERY MODE 12/11/2017 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): ipa.mail@hp.com barbl@hp.com y vonne.bailey @ hp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ITZIK SHAUL, GEORGE TRENDAFILOV, GILAD GREENBERG, SHAUN HENRY, and GREGORY DOYLE CREAGER Appeal 2017-000053 Application 14/355,097 Technology Center 2800 Before KAREN M. HASTINGS, JAMES C. HOUSEL, and SHELDON M. McGEE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’ decision rejecting claims 1—15 and 20 under 35 U.S.C. § 103(a) as unpatentable over at least the combined prior art of Vanmaele (US 2010/0007692 Al, published Jan. 14, 2010) and Iftime (US 2008/0218540 1 Appellants identify the real party in interest as “Hewlett-Packard Development Company, L.P.” (Appeal Br. 2). Appeal 2017-000053 Application 14/355,097 Al, published Sept. 11, 2008); and claims 16 and 20 as unpatentable over Vanmaele alone. The Examiner withdrew the § 112 rejection of claim 17 (Ans. 2; no other rejection of claim 17 is before us). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claims 1,12 and 16 are illustrative of the subject matter on appeal (emphasis added to highlight key limitations for purposes of this appeal): 1. A method for in-line integrated raised printing, said method comprising: using a design file comprising an image and an area of in-line integrated raised print, performing a plurality of separations, each separation corresponding to a layer of material printed in a stack to produce the area of raised print; printing the image; and generating the raised print based on said performing said plurality of separations by printing a layer of material for each of the plurality of separations, the layers of material being stacked to produce the raised print; wherein the printing of the image and the printing of the layers of material for each of the plurality of separations is performed on a same imaging drum such that the raised print is produced without requiring off line printing activities; and transferring the image and the stacked layers of material from the imaging drum to a print medium. 12. A printer for in-line integrated raised printing comprising: a printing engine for both printing an image and for performing a plurality of separations for generating a height of an in-line integrated raised print based on said performing said plurality of separations, without requiring off-line printing activities; a photo imaging drum on which both said image and said plurality of separations are formed by said printing engine; and a transfer drum to transfer said image and said plurality of separations from the photo imaging drum to a sheet of print medium. 16. A method for in-line integrated raised printing, said method 2 Appeal 2017-000053 Application 14/355,097 comprising: receiving a design file comprising an image and an area of in-line integrated raised print; and, in any order, printing the image, generating the raised print by performing a plurality of separations, each separation corresponding to a layer of material deposited in a stack to produce the raised print; wherein the printing of the image and the depositing of a layer of material for each of the plurality of separations comprises placing the printed image underneath the stacked layers of material, which are transparent. ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellants’ contentions, we find that the preponderance of the evidence supports the Examiner’s conclusion that the subject matter of Appellants’ claims is unpatentable over the applied prior art. We sustain the Examiner’s § 103 rejections because we are unpersuaded of error in the Examiner’s determination of obviousness essentially for the reasons set out by the Examiner in the Answer. We add the following primarily for emphasis. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264- 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). 3 Appeal 2017-000053 Application 14/355,097 With respect to claim 1, Appellants argue that Vanmaele is directed to 3D printing and does not teach or suggest both printing an image and generating the raised print (Appeal Br. 12, 13; see also Reply Br. 6, 7), and that “Iftime has nothing to do with raised print” (Appeal Br. 13). Appellants’ arguments are not persuasive of error. Appellants’ Specification describes use of virtually any printer for printing an image (e.g., Spec. H 8, 9, 13 (“Printer 100 can be, but is not limited to, [various printers listed]”)) and generating raised print may merely encompass multiple layers of ink (e.g., Spec. 124 (“a plurality of [ink] layers and print repetitions creates raised print”)). Notably, Appellants’ Specification also states that the technology described therein is “not intended to limit” the invention (Spec. 1 6). Furthermore, contrary to Appellants’ contention, Iftime is explicitly directed to raised print (Ans. 3; Iftime Title, Abstract). Indeed, Iftime may create the raised print through multiple passings of an inkjet printer “over the portions requiring the raised height” (Iftime 134, see also 1127,35 (controller controls inkjet print head to deposit multiple layers of ink)).2 The claim language only requires “printing” an image and raised print; it does not limit what type of printing is performed. In light of these circumstances, Appellants have not directed our attention to any persuasive reasoning or credible evidence to establish that the Examiner’s interpretation that the claims encompass the applied prior art combination is unreasonable. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (it 2 The Examiner’s statement that “Iftime does not create raised print through the application of multiple layers of ink” (Ans. 3) is harmless error, as the Examiner also relies upon Vanmaele for its teaching of raised print through applications of multiple layers of ink. 4 Appeal 2017-000053 Application 14/355,097 is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification” and if the Specification does not provide a definition for claim terms, the PTO applies a broad interpretation); see also Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540 F.3d 1337, 1345 (Fed. Cir. 2008) (“[W]e have repeatedly held that the fact that the specification describes only a single embodiment, standing alone, is insufficient to limit otherwise broad claim language,” declining to impute a limitation into a disputed claim term in the absence of a clear requirement in the Specification, even where “every disclosure of [the disputed term] in the specification shows [the alleged limitation.]”) Appellants have not shown error in the Examiner’s determination that one of ordinary skill in the art, using no more than ordinary creativity, would have printed an image (e.g., the first pass/layer of ink or de facto any designated layer of ink) and generated raised print (e.g., multiple additional layers of ink) as explained by the Examiner, and used a transfer imaging drum as found by the Examiner to be “a well-known alternative to directly applying the ink to the print medium” as exemplified in Iftime (Final Action 4; Ans. generally). KSR, 550 U.S. at 417 (the predictable use of known prior art elements performing the same functions they have been known to perform is normally obvious; the combination of familiar elements is likely to be obvious when it does no more than yield predictable results); Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” as well as routine steps, that an ordinary artisan would employ). 5 Appeal 2017-000053 Application 14/355,097 With respect to claim 12, Appellants argue that the applied prior art does not teach “a photo imaging drum” (Appeal Br. 11, 12; see also Reply Br. 11, 12).3 This is not persuasive of error as Iftime exemplifies use of a “photo imaging” drum 14 to apply an image including raised print and additionally using a transfer roll 22 as an alternative to placing an image directly onto a substrate (Iftime e.g., ]Hf 17, 25, 27); and, as the Examiner de facto points out, some of the features discussed by Appellants (e.g., an electrophotographic imaging technique) are not recited in the claims (Ans. 5). In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (it is well established that limitations not appearing in the claims cannot be relied upon for patentability). With respect to claim 16, Appellants’ arguments regarding claim interpretation are not persuasive of error as pointed out above with respect to claim 1. Contrary to Appellants’ contention that the Examiner does not address transparent layers of ink (Reply Br. 14), the Examiner pointed out that Vanmaele teaches that colorless ink (i.e., transparent ink) may be used (Final Action 8). Consequently, after consideration of Appellants’ arguments, we are unpersuaded of error in the Examiner’s determination of obviousness. Accordingly, we affirm the Examiner’s prior art rejections under 35 U.S.C. 3 We decline to consider the definition supplied for the first time in the Reply Brief as untimely. It is inappropriate for Appellants to discuss for the first time in the Reply Brief matters that could have been raised in the Appeal Brief. 37 CFR § 41.41(b)(2)(2013). 6 Appeal 2017-000053 Application 14/355,097 § 103(a) of all the claims on appeal for the reasons given above and presented by the Examiner. DECISION The Examiner’s § 103 rejections are affirmed. 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)(1). AFFIRMED 7 Copy with citationCopy as parenthetical citation