Ex Parte Ma et al

Patent Trial and Appeal Board

Dec 11, 2012

11269041 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ZEYING MA, GARY W. LARSON and LUFEI LIN

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Appeal 2010-007919
Application 11/269,041
Technology Center 2800
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Before, ROBERT E. NAPPI, LARRY J. HUME and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-5, 7-22, 24, and 31-35 as
unpatentable under 35 U.S.C. § 103(a). Specifically, claims 1, 4, 5, 7-14,
18-22, 24, and 35 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Auslander et al. (US 2006/00443332 A1, March 2, 2006)
(“Auslander”) and Byers et al. (US 6,378,976 B1, April 30, 2002)
(“Byers”). Claims 2, 3, 15-17, and 31-34 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Auslander, Byers, and Treado et al. (US
2004/0184660 A1, September 23, 2004) (“Treado”).
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed to methods for tagging an ink with a
detectable marker and methods for identifying an ink. The tagged ink
includes a colorant visible under visible light and a detectable marker
capable of fluorescing when subjected to infrared light. Abstract.

GROUPING OF CLAIMS

Because Appellants argue that the Examiner erred for substantially
the same reasons with respect to independent claims 1, 8, 14, and 31, as
well as dependent claims 2-5, 7, 9-13, 15-22, 24, and 32-35, we select claim
1 as representative of the claims on appeal. Claim 1 recites:
1. A method for identifying an ink, the method
comprising:

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obtaining a sample of an unidentified ink including a non-
fluorescent, visible colorant;

subjecting the sample of the unidentified ink to infrared
light capable of causing an infrared fluorescing agent, if present,
in the sample of the unidentified ink to fluoresce, the infrared
fluorescing agent and the non-fluorescent, visible colorant in the
unidentified ink leaving the ink performance unaltered and the ink
quality and integrity preserved; and

determining whether fluorescence emitted from the sample
of the unidentified ink, if any, corresponds to fluorescence of an
authentic ink known to include the infrared fluorescing agent;

and wherein the infrared fluorescing agent does not
interfere with ink performance as a visible, non-fluorescent, inkjet
printed ink; is not visible to the naked eye under normal or white
light; and does not cause failure of an inkjet printing device.

App. Br. 16.

ISSUE

Appellants argue that the Examiner erred in finding that claim 1 is
unpatentable under 35 U.S.C. § 103(a) as being obvious over Auslander and
Byers. App. Br. 9. Specifically, Appellants argue that the Examiner erred
in finding that the combination of Auslander and Byers teaches or suggests
that an infrared (“IR”) luminescent chemical marker can be used as a
taggant for conventional inkjet printing without interfering with print
quality, as recited in claim 1. App. Br. 12. Appellants also argue that
Byers’ disclosure of an IR-fluorescent ink, for the reason provided supra,
and taken in the context of the method of implementation suggested by
Byers, teaches away from combining Byers with the teaching of Auslander.
App. Br. 13.
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We therefore address the issue of whether the Examiner erred in
improperly combining Auslander and Byers and in finding that the
combined prior art discloses or suggests the limitations of claim 1.

ANALYSIS
Appellants argue that Auslander teaches the use of ultraviolet (“UV”)-
fluorescent ink for use in a postal printing system, but does not disclose or
suggest the use of IR-fluorescent compounds in inks. App. Br. 11. Appellants
also argue that Byers teaches the use of UV- or IR-fluorescent markers, either
in a colorless fluid, or in colored inks, for the purpose of testing inkjet nozzle
alignment via printing test patterns. Id.
Appellants contend that Byer’s disclosure that IR-fluorescent markers
may have red absorption, making them appear cyan at high concentrations,
which interferes with the print quality of the conventional inkjet printing ink.
Id. According to Appellants, this is in contradistinction to the limitations of
claim 1 reciting “the infrared fluorescing agent does not interfere with ink
performance as a visible, non-fluorescent, inkjet printed ink; is not visible to
the naked eye under normal or white light; and does not cause failure of an
inkjet printing device.” App. Br. 12-13.
The Examiner agrees with Appellants that Auslander teaches the use of
UV-fluorescent, but not IR-fluorescent taggants, in inkjet inks. Ans. 8. The
Examiner also finds that Byers discloses the IR taggant as potentially having
red absorption at high taggant concentrations. Id. (citing Byers, col. 5, ll. 27-
36). The Examiner further finds, however, that Byers also teaches adjusting
the concentration level based on the desired results, going on to state that, “the
use of a luminescing chemical marker can be used with most colored inks, so
long as the absorption is not particularly strong in the region of the second
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wavelength emitting by the chemical marker.” Ans. 8 (quoting Byers, col. 6,
ll. 45-48). The Examiner finds, therefore, that Byers teaches that most colored
inks have no performance problems. Ans. 8.
We concur with the Examiner’s reasoning and adopt it as our own. We
agree with the Examiner that, although Byers admits that some contamination
in certain colors may occur at high concentrations of IR-fluorescent taggant,
color contamination by the IR-fluorescent taggant is generally not a problem at
lower concentrations, as demonstrated in Byers’ examples #6 and #7. Id.
(citing Byers, col. 8, ll. 9-11). We further agree with the Examiner’s finding
that since the claims as currently presented do not state a specific ink variety
or color, Appellants’ claimed ink solution and performance is disclosed by
Byers. We therefore conclude that the Examiner did not err in finding that
Byers discloses the limitations of claim 1 reciting “the infrared fluorescing
agent does not interfere with ink performance as a visible, non-fluorescent,
inkjet printed ink; is not visible to the naked eye under normal or white light;
and does not cause failure of an inkjet printing device.”
Appellants also assert that, because the teaching of Byers contemplates
use of fluorescent markers in testing the alignment of inkjet nozzles, and
because Byers allegedly discloses problems with print quality when using IR-
fluorescent taggants, Byers teaches away from combination with Auslander.
App. Br. 13. (“Byer's disclosure about IR ink in the situations disclosed by
Byers would instead be a reason not to combine Byers with Auslander”) Id.
(boldface in original).
The Examiner responds that, although the Auslander and Byers
references differ in topic (authenticating an ink vs. testing misdirected
nozzles), each attempts to address a problem in the art of inkjet printing by
providing a non-visible fluorescent taggant in an inkjet ink. Furthermore, the
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Examiner finds that Byers also teaches that “the chemical maker may also be
placed in one of the colored inks as well. Use of the chemical maker in one of
more of the pens containing a colored ink will serve the same purposes as in
the fixer fluid, namely, determining the status of the nozzles ...” and, further,
that “use of the chemical marker in the colored inks allows automatic
monitoring of the nozzle health with the same detector/sensor elements and
thus reduced complexity/expense.” Ans. 9 (quoting Byers, col. 6, ll. 33-36,
41-45). Thus, the Examiner finds, the IR-fluorescent taggant taught by Byers
not only provides adequate performance of the ink in normal inkjet functions,
but further facilitates monitoring of nozzle alignment. Ans. 9. Finally, the
Examiner finds that an artisan of ordinary skill would be motivated to combine
the teachings of Auslander and Byers to employ an IR-fluorescent taggant
when printing on UV absorptive material. Id.
We are persuaded by the Examiner’s reasoning and adopt it as our
own. “A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). We have addressed supra the issue of whether Byers
addresses the issue of interference with print quality. We further agree with
the Examiner’s finding that Byers’ method of implementation does not
teach away from combining its disclosures with those of Auslander. On the
contrary, Byers teaches that the problem of potential color contamination by
the IR-fluorescent taggant in certain ink colors can be successfully avoided
by lowering the concentrations and that IR-fluorescent taggants can be
employed in regular inkjet color inks to reduce complexity and expense,
while still monitoring inkjet nozzle alignment. Ans. 8-9.
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We consequently conclude that the Examiner did not err in
concluding that claim 1 would have been obvious to a person of ordinary
skill in the contemporary art over the combination of Auslander and Byer.

DECISION
The Examiner’s rejection of claims 1-5, 7-22, 24, and 31-35 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

ELD