Udo Vogt

Patent Trials and Appeals Board

Sep 17, 2019

12999224 - (D) (P.T.A.B. Sep. 17, 2019)

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.
12/999,224 12/15/2010 Udo Vogt 226-004 (22182) 3504
157817 7590 09/17/2019
Pilloff & Passino LLP
1940 Duke Street
Suite 200
Alexandria, VA 22314
EXAMINER
EVANISKO, LESLIE J
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
09/17/2019 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):
mail@pilloffpassino.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte UDO VOGT1
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Appeal 2018-002713
Application 12/999,224
Technology Center 2800
________________

Before BRADLEY W. BAUMEISTER, SHARON FENICK, and
DAVID J. CUTITTA II, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–11 and 16–22, which constitute all the claims
pending in this Application. App. Br. 7–48.2 We have jurisdiction under
35 U.S.C. § 6(b). Oral arguments were heard September 9, 2019. A
transcript will be added to the record in due course. We reverse.

1 Appellant lists ITW MORLOCK GMBH as the real party in interest.
Appeal Brief filed June 13, 2016 (“App. Br.”) 2.
2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
November 5, 2015 (“Final Act.”); the Examiner’s Answer mailed November
18, 2016 (“Ans.”); and the Reply Brief filed November 13, 2017 (“Reply
Br.”).
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Application 12/999,224

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STATEMENT OF THE CASE
Appellant describes the present invention as follows:
A pad printing machine (1) to print an object (8) in at least
two stages, said machine comprising at least one printing pad (6)
to print said object and at least two printing plate zones (10)
within each of which a printing plate (14) may be moved into the
desired position, the pad printing machine furthermore
comprising an image recorder (44) generating an image of at
least a partial area of at least one printing plate zone (10), and a
comparator (46) to compare the image generated by said recorder
(44) with reference data.
Abstract.
Independent claim 16, reproduced below with added emphasis,
illustrates the appealed claims:
16. A pad printing machine for printing an object in first and
second stages, said machine comprising:
first and second printing plate zones;
a plate carrier configured to carry a printing plate
displaceable to the first and second printing plate zones;
an image recorder configured to generate a second image
of the second printing plate zone; and
a comparator configured to compare the second image of
the second printing plate zone with a reference image.
Claims 1–11, 16–18, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Binnen (US 5,383,398; issued Jan. 24,
1995) and Suenaga (JP 07-17029 A; published Jan. 20, 1995). Final Act. 4–
8.3

3 The Examiner omits claim 8 from the list of rejected claims (Final Act. 4).
But claim 8 is pending (App. Br. 51), and the Examiner does not indicate
that claim 8 is allowable (Final Act. cover sheet). Accordingly, we presume
for the purpose of this appeal that the Examiner intended to reject claim 8.
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Application 12/999,224

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Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Binnen, Suenaga, and Onozuka (JP 06-134977 A;
published May 17, 1994). Final Act. 9.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
The Examiner finds that Binnen discloses all of the elements of the
claimed pad printing machine except that “Binnen fails to teach the pad
printing machine further comprises at least one image recorder generating
an image of the second printing plate zone and at least a comparator to
compare the second image generated by the image recorder with reference
data.” Final Act. 6 (emphasis added). The Examiner finds that Suenaga
teaches these missing limitations. Id. at 6–7 (citing Suenaga ¶¶ 37–43;
Figs. 1, 2, 4, 8). The Examiner determines that motivation existed to
incorporate Suenaga’s teachings into Binnen’s system. Id. at 7.
Appellant asserts, inter alia, that Suenaga does not teach claim 16’s
last limitation of “a comparator configured to compare the second image of
the second printing plate zone with a reference image.” App. Br. 7–33.
More specifically, Appellant argues that the cited portions of Suenaga do not
teach that control devices 40, 40a compare images, as claimed. Id. at 25.
According to Appellant, Suenaga, instead, teaches comparing values that
represent the positions of the work (W) that is fixed onto work surface
plate (7) and the intaglio (P) that is fixed onto intaglio printing platen (6).
Id. at 27. Appellant frames the issue as follows:
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whether the person of ordinary skill in the art would [have]
construe[d] the recitations of the claim regarding the comparator
“compare[s] the second image . . . with a reference image” to
have such breadth as to encompass the feature “compare the
value of relative location of the alignment mark position with an
acceptable value” disclosed in Suenaga (emphasis added).
Id.
Suenaga discloses aligning the work (W) and intaglio (P) via an
alignment apparatus (4). Suenaga ¶ 22. The alignment apparatus performs
the alignment by comparing data representing the alignment marks of the
work and intaglio. Id.
The Examiner does not dispute that this is how Suenaga’s alignment
is carried out. The Examiner explains, though, that the alignment marks are
being interpreted as corresponding to the claimed second image of the
second printing plate zone and reference image. Ans. 4. The Examiner
more specifically reasons, as follows:
it is clear from the context of Suenaga that the detected image
generated by the image recorder (i.e., optical apparatus 4a, 4b) of
Suenaga is broadly compared to a reference image (i.e., an
expected or previously saved image) such that the image
information is converted into values or digital information that
can be used to determine relative position data to be compared
and saved. It is further noted, that a system of this type (such as
one using a [charge carrier device] CCD camera and a computer)
is only capable of comparing values or data such as digital
information that has been obtained from the images read or
detected by the CCD cameras. Any computer system ultimately
only manipulates values when performing calculations. That is,
a computer, being a computational device, performs calculations
based on values and not images. Thus, it is the Office’s position
that Suenaga teaches an image recorder and comparator to
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compare the image generated by the image recorder with a
reference image as broadly recited.
Id. at 4–5.
The Examiner’s interpretation is unreasonable. To be sure, a CCD
camera converts detected images into numerical values so that calculations
and comparisons can be performed. However, that fact is not dispositive.
Claim 16 does not merely recite using a comparator or computer to
compare data or numerical values that have been generated by an image
recorder, as the Examiner interprets the claims. Id. Rather, claim 16 sets
forth that the recorder is “configured to generate a second image of the
second printing plate zone,” and it is this generated second image that the
comparator compares with a reference image.
The Examiner has not established that the cited art generates an image
that is compared to a reference—only that the cited art entails comparing
data that is derived from an image. Accordingly, Appellant has persuaded
us of error in the Examiner’s obviousness rejection of independent claim 16.
We, therefore, reverse the obviousness rejection of claim 16, of independent
claims 1 and 21, which recite similar language, and of claims 2–11, 17, 18,
and 22, which depend from independent claims 1, 16, and 21.4
With respect to the remaining rejection of dependent claims 19 and
20, the Examiner does not rely on the additionally cited reference, Onozuka,
to cure the deficiency of the obviousness rejection explained above. Final

4 See Ans. 2 (wherein the Examiner acknowledges that the Claim Appendix
section of the Appeal Brief omits language from the last limitation of
claim 1 and wherein the Examiner sets forth that the last limitation is
intended to recite “wherein the comparator includes a system comparing the
generated image with a reference image”).
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Act. 9. Accordingly, we likewise reverse the obviousness rejection of these
claims for the reasons set forth in relation to claim 16.

DECISION
The Examiner’s decision rejecting claims 1–11 and 16–22 is reversed.

REVERSED