Xerox Corporation

Patent Trials and Appeals BoardMay 27, 2021

2020004046 (P.T.A.B. May. 27, 2021)

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. 15/630,109 06/22/2017 David C. Craig 20170318US01 2608 75931 7590 05/27/2021 Basch & Nickerson LLP 1751 Penfield Road Penfield, NY 14526 EXAMINER CARTER, WILLIAM JOSEPH ART UNIT PAPER NUMBER 2875 NOTIFICATION DATE DELIVERY MODE 05/27/2021 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): usptomail@bnpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID C. CRAIG and CHU-HENG LIU Appeal 2020-004046 Application 15/630,109 Technology Center 2800 Before TERRY J. OWENS, LINDA M. GAUDETTE, and KAREN M. HASTINGS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 6–10, 12–25, 27–29, 31–41, and 43. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Xerox Corporation (Appeal Br. 2). Appeal 2020-004046 Application 15/630,109 2 CLAIMED SUBJECT MATTER The claims are directed to a device and process for image specific illumination of an image printed on an optical waveguide. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A display device component comprising: an optical waveguide for providing total internal reflection of light travelling within said optical waveguide, said optical waveguide having a viewing surface and a light source interface surface for receiving the light travelling within said optical waveguide, said light source interface surface being orthogonal to said viewing surface; a first UV curable marking material formed on a portion of said viewing surface of said optical waveguide; and a second UV curable marking material formed on a portion of said first UV curable marking material; said first UV curable marking material having light scattering properties. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hill ’609 US 4,673,609 June 16, 1987 Davenport US 5,101,325 Mar. 31, 1992 Jeoung US 2013/0229824 A1 Sept. 5, 2013 Hill ’197 US 2014/0141197 A1 May 22, 2014 Liu US 2016/0025906 A1 Jan. 28, 2016 APA Appellant’s Admitted Prior Art (Figures 1 and 3) Appeal 2020-004046 Application 15/630,109 3 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 2, 4, 6, 7, 12, 14–18, 21, 24, 28, 32, 34, 36, 41, 43 103 Liu, Hill ’197, APA 3, 8–10, 13, 25, 27, 29, 31, 35, 37 103 Liu, Hill ’197, APA, Hill ’609 19, 38–40 103 Liu, Hill ’197, APA, Davenport 20 103 Liu, Hill ’197, APA, Davenport, Hill ’609 22, 23, 33 103 Liu, Hill ’197, APA, Jeoung OPINION We need address only the independent claims (1, 12, 19, 21, 32, 38, 41, and 43). Those claims require a light-scattering first UV curable marking material on a portion of the viewing surface of an optical waveguide, and a second UV curable marking material on at least a portion of the first UV curable marking material. Liu discloses a backlit display (100) comprising a multi-point illumination source (70) that illuminates a film structure comprising a light- diffusing layer (10) containing white or black light-diffusing particles (11) in a matrix material (12) and having thereon a colored layer (20) containing pigment particles (21) in a continuous phase material (22) (¶¶ 28, 30, 39, 56, 57; Fig. 4). Liu exemplifies numerous polymers as the continuous phase material (22), none of which is identified by Liu or found by the Examiner to be UV curable (¶ 46). The matrix material (12) can comprise any of the exemplified continuous phase (22) materials (¶ 66). Appeal 2020-004046 Application 15/630,109 4 Hill ’197 discloses a perforated (with holes 6), imaged self-adhesive assembly (28), comprising, in order, a removable liner (42), an adhesive layer (32), a film (26) consisting of a white film (22) on a light-absorbing black film (24), and a design image (52) (¶ 104; Figs. 7A, 7B). Removal of the liner (42) permits the imaged assembly to be fastened by the adhesive layer (32) to a window (10) such that an observer can see the design (52) from outside the window (10) while good visibility from inside the window (10) is provided through the perforation holes (6) (¶ 106; Fig. 7C). “The design 52 is typically a multi-color process design, for example comprising deposits of CMYK (cyan, magenta, yellow and black) process inkjet inks” (¶ 110). The exemplified inkjet inks are solvent-based, UV curable and latex inkjet inks (id.).2 Hill ’197 teaches that prior art assemblies in which a perforated liner (42) is replaced by an imperforate liner (46) and the design (52) is formed using UV inkjet ink, the “UV ink undergoes chemical cross-linking when cured, providing substantial in-plane strength” (¶ 101) such that the cured ink (53) undesirably “spans across the holes, causing obstruction to through-vision” (id., Fig. 6H). In view of that teaching, “the Examiner found it reasonable to replace the black dots/particles (11) in the polyester sheet (12) of Liu with the black dots/particles (52) from the polyester sheet (26) of Hill ‘197, in order to provide dots/particles with substantial in- 2 The Examiner finds that “the APA teaches a light source interface surface for receiving the light travelling within said optical waveguide, said light source interface surface being orthogonal to said viewing surface (Figs. 1 and 3 of the Present Application)” (Final 3). Appeal 2020-004046 Application 15/630,109 5 plane strength (paragraph 101 of Hill ‘197) meaning the dots/particles themselves will have great durability” (Ans. 4). Hill ’197 does not disclose that the pigment particles in the UV ink have great durability but, rather, discloses that the cured UV ink (53) has “substantial in-plane strength” (¶ 101) such that it “spans across the holes” (id.; Fig. 6H). Thus, the Examiner’s reason for combining Liu and Hill ’197 is based upon a misinterpretation of Hill ’197. The Examiner has not established that Liu would have indicated to one of ordinary skill in the art that additional durability of the light-diffusion particles (11) or pigment particles (21) is needed or that replacing those particles with the pigment particles in Hill ’197’s UV ink would provide increased particle durability. The Examiner finds that “[t]he ink-like material of the black dots/particles (11) of Liu is replaced with the black UV-curable ink (52) from the polyester sheet (26; paragraph 104) of Hill ‘197, thus layer 10 comprises a first UV curable marking material” (Ans. 6), and “[u]pon the combination of the durable yellow dots/particles (52; paragraph 110) of Hill ‘197 to replace the yellow dots/particles (21) of Liu, the second layer (20) of Liu would comprise a second UV curable marking material” (id.). Thus, the Examiner finds that because Hill ’197’s pigment particles are in UV curable ink, the pigment particles themselves are UV curable marking material. “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellant’s Specification states that the marking materials are materials “such as liquid inks, UV curable inks, Appeal 2020-004046 Application 15/630,109 6 toners, solid inks, etc.” (¶ 61). The Examiner does not point out, and it is not apparent, where the Specification would have indicated to one of ordinary skill in the art that the claim term “UV curable marking material” encompasses the pigment particles in a UV curable ink. The Examiner, therefore, has not established that Hill ’197’s UV ink’s pigment particles separated from the remainder of the UV ink are a UV curable marking material according to the broadest reasonable interpretation of that term consistent with the Appellant’s Specification. Thus, the Examiner has not set forth a factual basis that is sufficient to support a conclusion of obviousness of the Appellant’s claimed invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art.”). Accordingly, we reverse the rejections. CONCLUSION The Examiner’s decision to reject claims 1–4, 6–10, 12–25, 27–29, 31–41, and 43 is REVERSED. Appeal 2020-004046 Application 15/630,109 7 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 6, 7, 12, 14–18, 21, 24, 28, 32, 34, 36, 41, 43 103 Liu, Hill ’197, APA 1, 2, 4, 6, 7, 12, 14–18, 21, 24, 28, 32, 34, 36, 41, 43 3, 8–10, 13, 25, 27, 29, 31, 35, 37 103 Liu, Hill ’197, APA, Hill ’609 3, 8–10, 13, 25, 27, 29, 31, 35, 37 19, 38–40 103 Liu, Hill ’197, APA, Davenport 19, 38–40 20 103 Liu, Hill ’197, APA, Davenport, Hill ’609 20 22, 23, 33 103 Liu, Hill ’197, APA, Jeoung 22, 23, 33 Overall Outcome 1–4, 6–10, 12–25, 27– 29, 31–41, 43 REVERSED