Ex Parte Shaul et al

Patent Trial and Appeal Board

Dec 7, 2017

14355097 (P.T.A.B. Dec. 7, 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.
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
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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).
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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.
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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).
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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).
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§ 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
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