Ex Parte Stelter et al

Patent Trials and Appeals BoardApr 23, 2013

11072781 - (D) (P.T.A.B. Apr. 23, 2013)

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. 11/072,781 03/04/2005 Eric C. Stelter H10510JAC 7229 1333 7590 04/23/2013 EASTMAN KODAK COMPANY PATENT LEGAL STAFF 343 STATE STREET ROCHESTER, NY 14650-2201 EXAMINER LIANG, LEONARD S ART UNIT PAPER NUMBER 2853 MAIL DATE DELIVERY MODE 04/23/2013 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 ERIC C. STELTER, JOHN C. WILSON, and DAVID D. PUTNAM ____________________ Appeal 2010-007571 Application 11/072,781 Technology Center 2800 ____________________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007571 Application 11/072,781 2 STATEMENT OF THE CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 5, 6, 11, 12, 14, 19-22, 25, 41, 43, and 50.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants disclose fixing agents that preferably contain a mordant and ink composition containing pigments or dyes combined with fusible material (Spec. 1:26 – 2:4). Appellants disclose printing systems that include an ink image forming device for producing an ink image on a receiver and a fuser for fixing the ink image to the receiver (Abs.). Exemplary Claims Exemplary independent claim 1 and dependent claim 14 under appeal, with emphases added, read as follows: 1. A printing method comprising: transferring an ink image formed with an aqueous ink to a receiver; applying at least one fixing agent comprising at least one mordant to said receiver; and fixing said transferred ink image to said receiver by subjecting said receiver to fixing energy. 1 Claims 7-10, 13, 15-18, 23, 26, 27, 30, 31, 36-40, 42, 44-47, and 49 have been canceled by Appellants. Claims 3, 4, 24, 28, 29, 32-35, and 48 were withdrawn from consideration as being drawn to a non-elected invention (Requirement for Restriction/Election mailed September 7, 2007). Appeal 2010-007571 Application 11/072,781 3 14. The printing method of claim 1, wherein said receiver also bears a toner image. Examiner’s Rejection The Examiner rejected claims 1, 2, 5, 6, 11, 12, 14, 19-22, 25, 41, 43, and 50 under 35 U.S.C. § 103(a) as being unpatentable over Smith (U.S. 6,142,618) in view of Snyder (U.S. 6,494,570 B1). Ans. 3-6. Appellants’ Contentions2 Appellants contend (Br. 2-5) that the Examiner erred in rejecting claims 1, 2, 5, 6, 11, 12, 14, 19-22, 25, 41, 43, and 50 under 35 U.S.C. § 103(a) over Smith and Snyder for numerous reasons. (1) With respect to representative claim 1, Appellants make multiple arguments including: (a) the Examiner has not established a prima facie case of obviousness since the two-step transfer and fusing process employed in the solid-ink printing system of Snyder is distinct from the direct inkjet fluid ink printing system of Smith, and there is no teaching or suggestion for the use of the solid ink fuser of Snyder for the mordant and ink images of Smith for any reason (Br. 3); and 2 Separate patentability is not argued for dependent claims 2, 5, 6, 11, 12, 41, 43, and 50 (Br. 2-4). Appellants group the subject matter common to independent claims 1 and 19 in their arguments (Br. 3). We select claim 1 as representative of the group of claims 1, 2, 5, 6, 11, 12, 19-22, 41, 43, and 50 pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(iv). In view of the foregoing, our analysis regarding this group will only address the merits of representative claim 1. Appeal 2010-007571 Application 11/072,781 4 (b) There is no disclosure of a need for application of fixing energy for the fluid inks of Smith (Br. 3-4). (2) With respect to dependent claim 14, Appellants additionally argue that the Examiner has not established that Smith teaches “receiver also bears a toner image,” as recited in claim 14, since the cited portions of Smith (Smith, col. 10, ll. 63-65) do not talk about a receiver that bears a toner image. Examiner’s Response to Appeal Brief The Examiner responded to Appellants’ contentions in the Examiner’s Answer (Ans. 6-11). With regard to Appellants’ Contention (1)(a) supra (that the Examiner failed to establish a prima facie case of obviousness since Smith and Snyder teach distinct systems and that there is no teaching or suggestion to use the solid ink fuser of Snyder for the mordant and ink images of Smith), the Examiner responded by presenting a new fact finding. Specifically, the Examiner argued (Ans. 7-10) that (i) Smith teaches solid ink printing as an alternative to liquid printing (Smith, col. 20, ll. 32-34 and col. 2, ll. 61-67); (ii) Smith incorporates by reference Titterington (US 5,380,769) which teaches a similar system as Snyder; and (iii) Snyder proposes to separate the transfer and fusing operations (Snyder, col. 3, ll. 38- 40) which implies that the fuser of Snyder can be separated from the solid ink printing component. Hence, the Examiner concluded that (i) the above facts weakens the Applicants’ argument that Smith and Snyder represent distinct systems and (ii) it was proper to incorporate the fuser assembly of Snyder into the ink jet printing system of Smith. With regard to Appellants’ Contention (1)(b) supra (that there is no disclosure of a need for application of fixing energy for the fluid inks of Appeal 2010-007571 Application 11/072,781 5 Smith), the Examiner relied upon Snyder to teach this limitation. The Examiner determined (Ans. 9) that application of fixing energy is known by Smith due to the background section of Smith teaching an inkjet printer applying fixing energy to a medium after printing (Smith, col. 4, ll. 10-15). The Examiner further explained (Ans. 10) the state of the ink jet printing art where it is known that (i) both aqueous and solid inks can be used in ink jet printing systems and (ii) applying heat to an ink image (regardless of whether it is an aqueous or melted down solid ink) is a method of fixing the ink image to the receiver. By providing these facts about Smith and Snyder, among others, the Examiner determined that it would have been obvious to incorporate the teachings of Snyder into the invention of Smith to prevent ink smudge through fixing. With regard to Appellants’ Contention (2) supra, the Examiner explained (Ans. 10-11) that the aqueous ink image can also be viewed as a toner image (Smith, col. 10, ll. 63-65). However, to further explain that Smith teaches a receiver that bears a toner image, the Examiner relied upon a different section of Smith (Smith, col. 21, l. 32 – col. 22, l. 33) that was not cited in the final Office Action. The Examiner argued that (i) use of a brilliant green toner pigment (Smith, col. 21, l. 57) by Smith indicates that Smith considers printing with xenographic toner compositions as well as ink compositions and (ii) any receiver that contains a toner image can be fed into an aqueous inkjet printing system and thereby contain both an aqueous image and a xenographic toner image. Appeal 2010-007571 Application 11/072,781 6 Reply Brief No Reply Brief has been presented. Therefore, Appellants have not disputed the Examiner’s new fact findings. Issues on Appeal Based on Appellants’ arguments in the brief, the following principal issues are presented on appeal: (1) Did the Examiner err in rejecting claims 1, 2, 5, 6, 11, 12, 19-22, 25, 41, 43, and 50 under 35 U.S.C. § 103(a) over Smith and Snyder for failure to establish a prima facie case of obviousness in combining Smith and Snyder? (2) Did the Examiner err in rejecting dependent claim 14 because the Examiner has not established that Smith teaches “receiver also bears a toner image,” as recited in claim 14? ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ contentions in the Appeal Brief (Br. 2-5) that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 3-11) in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. With regard to representative claim 1, we agree with the Examiner (Ans. 7-10; see supra Examiner’s Response to Appeal Brief) that Smith and Snyder can be combined to establish a prima facie case of obviousness in the Appeal 2010-007571 Application 11/072,781 7 rejection of representative claim 1 because (i) the new citation by the Examiner indicates that Smith considers inkjet systems where both solid and aqueous inks can be used, (ii) Snyder considers separating the transfer and fusing operations, and (iii) no reply was filed by Appellants to rebut Examiner’s new citations. With regard to claim 14 separately argued by Appellants (see Br. 4-5), we agree with the Examiner (Ans. 10-11; see supra Examiner’s Response to Appeal Brief) that Smith teaches the receiver to bear a toner image, as recited in claim 14, because (i) the new citation by the Examiner indicates that Smith considers printing with xenographic toner compositions and (ii) no reply brief was filed by Appellants to rebut Examiner’s new citations. In view of the foregoing, Appellants have not sufficiently shown that the Examiner erred in rejecting, under 35 U.S.C. § 103(a), (i) representative claim 1 and claims 2, 5, 6, 11, 12, 19-22, 25, 41, 43, and 50 grouped therewith and (ii) dependent claim 14 separately argued. Accordingly, we sustain the rejection before us. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1, 2, 5, 6, 11, 12, 19-22, 25, 41, 43, and 50 under 35 U.S.C. § 103(a) over Smith and Snyder since the Examiner has sufficiently established a prima facie case of obviousness in combining Smith and Snyder. (2) The Examiner has not erred in rejecting dependent claim 14 because the Examiner has established that Smith teaches “receiver also bears a toner image” as recited in claim 14. Appeal 2010-007571 Application 11/072,781 8 DECISION The Examiner’s rejection of claims 1, 2, 5, 6, 11, 12, 14, 19-22, 25, 41, 43, and 50 is affirmed. 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)(iv). AFFIRMED peb