Ex Parte Stowe et al

Patent Trial and Appeal BoardMar 20, 2018

13095757 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/095,757 04/27/2011 33726 7590 03/22/2018 Xerox-PARC c/o BEVER, HOFFMAN & HARMS, LLP 39500 Stevenson Place Suite 209 Fremont, CA 94539 FIRST NAMED INVENTOR Timothy Stowe 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2009 l 608Q2-US-NP 3251 EXAMINER ZIMMERMAN, JOSHUA D ART UNIT PAPER NUMBER 2854 NOTIFICATION DATE DELIVERY MODE 03/22/2018 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): creddick@beverlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY STOWE, ASHISH PATTEKAR, DA VE BIEGELSEN, ERIC PEETERS, and JAMES LARSON Appeal 2016-004586 Application 13/095,757 Technology Center 2800 Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's July 31, 2014 decision finally rejecting claims 1-15. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellants identify the real party in interest as Palo Alto Research Center, Inc. (Br. 3). Appeal 2016-004586 Application 13/095,757 CLAIMED SUBJECT MATTER Appellants' invention is directed to methods for controlling the rheology of ink applied to an imaging surface of a variable data lithography system by partially curing the ink while on the imaging surface (Abstract; Spec. i-f 23). Independent claim 1 is representative and is reproduced below from the Claims Appendix of the Appeal Brief: 1. A method for improved application of ink in a variable data lithography system of a type including an arbitrarily reimageable imaging member having reimageable surface, a dampening solution subsystem for applying a layer of dampening solution to said reimageable surface, a patterning subsystem for selectively removing portions of the dampening solution layer so as to produce a latent image in the dampening solution, an inking subsystem for applying a hydrophobic ink over the reimageable surface such that said ink preferentially occupies regions where said dampening solution was removed by the patterning subsystem to thereby form an inked latent image, an image transfer subsystem for transferring the inked latent image to a substrate, and a cleaning subsystem for removing residual ink from the reimageable surface of the reimageable imaging member, comprising: applying said hydrophobic ink with a first complex viscoelastic modulus in a uniform ink layer over said reimageable surface such that the hydrophobic ink readily separates in regions over the reimageable surface covered by said dampening solution and into regions over said reimageable surface at which said dampening solution has been removed by said patterning subsystem, thereby forming said inked latent image; following application of said hydrophobic ink over said reimageable surface and before transferring said inked latent image to said substrate, increasing, by way of a viscosity- increasing subsystem, the complex viscoelastic modulus of said hydrophobic ink to a second complex viscoelastic modulus, but below a complex viscoelastic modulus at which the hydrophobic ink solidifies, while said hydrophobic ink is over said 2 Appeal 2016-004586 Application 13/095,757 reimageable surface, thereby partially curing the hydrophobic ink and increasing the level of at least one of ink cohesive energy and ink tack to said substrate prior to the transfer of said hydrophobic ink to said substrate at said image transfer subsystem; and transferring said hydrophobic ink to said substrate at said image transfer subsystem. REJECTIONS 1. Claims 1-14 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Berg2 in view of Bocko. 3 2. Claim 15 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Berg and Bocko and in view of Taniuchi. 4 DISCUSSION Rejection 1. The Examiner finds that Berg teaches each limitation of claim 1, except that Berg does not teach (a) how the ink is fixed, and (b) that the second complex viscoelastic modulus is "below a complex viscoelastic modulus at which the ink solidifies, while said hydrophobic ink is over said reimageable surface, thereby partially curing the ink" (Final Act. 2--4 ). The Examiner further finds that Bocko discloses increasing the viscosity of the ink by increasing the viscosity of the ink by either partially curing the ink or cooling the ink in order to facilitate the transfer to the final substrate and avoid cohesive splitting between the substrate and transfer surface and prevent pinholes (Final Act. 4, citing Bocko 4:38--43, 11:26-32, and 12:14-- 20). 2 Berg et al., US 7,191,705 B2, issued March 20, 2007. 3 Bocko et al., US 5,701,815, issued December 30, 1997. 4 Taniuchi et al., US 2006/0152566 Al, published July 13, 2006. 3 Appeal 2016-004586 Application 13/095,757 The Examiner determines that it would have been obvious to partially cure Berg's ink as described by Bocko in order to facilitate the transfer to the final substrate, avoid cohesive splitting between the substrate and transfer surface, and prevent pinholes (Final Act. 4). Appellants contend that the rejection should be reversed because (1) Bocko is "an improper reference under 35 [U.S.C. Â§] 103" (i.e., non- analogous art), and (2) even if Bocko were considered analogous art, a person of skill in the art "would not have been motivated to modify the teachings of Berg using the teachings of Bocko to address the problem addressed by the present invention" (Br. 8). In order to be properly relied upon in an obviousness analysis, a prior art reference must qualify as "analogous art," i.e., it must satisfy one of the following conditions: (i) the reference must be from the same field of endeavor as the claimed invention; or (ii) the reference must be reasonably pertinent to the particular problem with which the inventor is involved. Innovention Toys, LLCv. MGA Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011 ). "A reference is reasonably pertinent if it, as a result of its subject matter, 'logically would have commended itself to an inventor's attention in considering his problem."' K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (citing Innovention Toys, 637 F.3d at 1321). As noted above, Appellants do not dispute that Berg is analogous art (Br. 8), but argue that Bocko is non-analogous art and cannot be used in an obviousness rejection of the claims (Br. 9). With respect to the second prong of the analogous test, Appellants argue that "Bocko does not address the problem with which the applicant was concerned" (Br. 14). However, even if Appellants were correct-an 4 Appeal 2016-004586 Application 13/095,757 issue we need not address - that argument does not address the relevant standard, namely whether Bocko is reasonably pertinent to the particular problem with which Appellants were involved. Appellants do not dispute that Bocko teaches increasing the viscosity of a printed material (Br. 15). The Examiner finds among the problems addressed by Appellants' invention is "select[ing] the proper characteristics of the ink used to provide optimized spreading on the belt or plate surface, ... [and] transfer to the substrate" (Ans. 3, citing to Spec. i-f 17). The Examiner further finds that Bocko is concerned with both of these issues because it "teach[ es] ways to: a) avoid cohesive splitting of the ink between the substrate and transfer surface; [and] b) address the problem of inadequate wetting (i.e., spreading) of transfer surfaces by the ink; and c) achieve 100% transference between surfaces" (Ans. 3, internal citations omitted). Appellants do not dispute these findings, and we agree with the Examiner that these teachings mean that Bocko is reasonably pertinent to the particular problem with which Appellants were involved. Therefore, Bocko is analogous art and is properly used in an obviousness rejection. Appellants also argue that the Examiner has impermissibly used hindsight as the reason to combine the teachings of Berg and Bocko (Br. 18- 19 ). However, as noted above, the Examiner specifically explained that the reason a person of skill in the art would have combined the relevant teachings of Bocko with Berg in order to facilitate the transfer of ink to the final substrate, avoid cohesive splitting between the substrate and transfer surface, and prevent pinholes (Final Act. 4). These reasons are set forth in Bocko, as detailed in the Final Action at page 4. Thus, we determine that 5 Appeal 2016-004586 Application 13/095,757 Appellants have not shown reversible error in Rejection (1 ), and we therefore affirm this rejection. Rejection 2. The Examiner finds that Berg does not disclose the limitations set forth in the last four paragraphs of claim 15: heating said hydrophobic ink on a surface of a first roller by a heating subsystem associated with said first roller immediately prior to application of said hydrophobic ink over said imaging surface; applying said hydrophobic ink having a first complex viscoelastic modulus in a uniform ink layer over said reimageable surface, whereby said hydrophobic ink readily separates from regions over the reimageable surface covered by said water-based dampening solution and into regions over said reimageable surface at which said water-based dampening solution has been removed by said optical patterning subsystem, thereby forming said inked latent image; following application of said hydrophobic ink over said reimageable surface and before transferring said inked latent image to said substrate, cooling said hydrophobic ink, by way of a cooling subsystem, while said hydrophobic ink is over said reimageable surface to thereby increase the complex viscoelastic modulus of said hydrophobic ink to a second complex viscoelastic modulus, below a complex viscoelastic modulus at which the hydrophobic ink solidifies, and thereby partially curing the hydrophobic ink and increasing the level of at least one of ink cohesive energy and ink tack to said substrate prior to the transfer of said inked latent image to said substrate at said image transfer subsystem; and transferring said hydrophobic ink comprising said inked latent image to said substrate at said image transfer subsystem. The Examiner further finds that Taniuchi teaches heating an ink by heating an intermediate roller to evaporate the solvent; and then to further 6 Appeal 2016-004586 Application 13/095,757 cool the surface of the image on the image transfer roller by fans in order to increase the viscosity of the ink in order to achieve a good image after transfer (Final Act. 8, citing Taniuchi i-fi-f 126-127). The Examiner determines that it would have been obvious to heat the intermediate roller and then cool the surface of the image transfer layer in order to increase the viscosity and better transfer the image (id.). Appellants rely in part on the arguments set forth in connection with Rejection (1) (Br. 20). These arguments are not persuasive for the reasons set forth above. However, Appellants also argue that Taniuchi does not disclose the step of "heating said hydrophobic ink on a surface of a first roller by a heating subsystem associated with said first roller immediately prior to application of said hydrophobic ink over said reimagable surface" (id.). In response, the Examiner finds that Bocko includes a heated roll (14) which heats the ink before application to the imaging roll (transfer roll 18) and states that "even if Taniuchi[] do not teach heating the ink on a first roller before transferring to the imaging (intermediate) roller, the limitation is already met by the combination of Berg[] and Bocko[]" (Ans. 4). Appellants do not dispute this finding and, therefore, have not shown reversible error in it. Appellants also argue that Taniuchi does not teach or suggest cooling the ink over an image surface before transferring it to a substrate and that, in fact, Taniuchi teaches passing warm air over the image and thus teaches away from this limitation. However, as explained by the Examiner, Taniuchi teaches that a fan "may send warm air" in order to evaporate the water in the ink (Ans. 4--5, citing Taniuchi i-f 127). The Examiner correctly finds that the air is not required to be warmer. The Examiner also finds that 7 Appeal 2016-004586 Application 13/095,757 evaporation of water caused by air passing over the ink necessarily results in a cooling effect, and that the ink would be cooled before transferring it to a substrate. Appellants have not disputed these findings. Accordingly, they have not shown reversible error in the rejection of claim 15. CONCLUSION We AFFIRM the rejection of claims 1-14 under 35 U.S.C. Â§ 103(a) as unpatentable over Berg in view of Bocko. We AFFIRM the rejection of claim 15 under 35 U.S.C. Â§ 103(a) as unpatentable over Berg and Bocko and in view of Taniuchi. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 8