Ex Parte Oldorff

Patent Trial and Appeal Board

Feb 28, 2014

11748776 (P.T.A.B. Feb. 28, 2014)

1

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte FRANK OLDORFF
__________

Appeal 2011-012863
Application 11/748,776
Technology Center 2800
____________

Before TERRY J. OWENS, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

Colaianni, APJ, prepared the opinion for the Board which was joined by
Owens, APJ, and in part by Best, APJ.; Best, APJ, prepared an opinion
concurring-in-part.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1-7, and 20-30. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
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We REVERSE.
Appellant’s invention is directed to a method of producing a same
pattern on two different base materials that includes the steps of printing,
coating, and pressing two different base materials with the same pattern
which is covered with a synthetic resin and subsequently pressed therewith
(Spec. ¶ [0002]).
Claims 1 and 22 are illustrative:
1. A method for producing a same pattern comprising a
plurality of image points on respectively one side of two
different base materials from an original digital data set
comprising:
printing a pattern on one side of a first base material as a
sample print with an inkjet printer;
covering the pattern with a synthetic resin layer;
pressing the first base material with the pattern and the
synthetic resin layer;
printing the pattern on one side of a second base material
by use of a print roller with a raster in an intaglio printing
process;
covering the pattern on the second base material with a
synthetic resin layer;
pressing the second base material with the pattern and the
synthetic resin layer, wherein the original digital data set
controls the inkjet printer and produces the print roller so that a
number of image points per unit area on the first base material
essentially corresponds to a number of image points per unit
area on the second base material and a size of the image points
and nozzle spacings of the inkjet printer are coordinated with a
size of screen dots and raster sizes in the intaglio printing
process, and identical printing liquids are used for the printing
of the pattern on the first base material and the second base[]
material.
22. The method according to claim 21, wherein the original
data set contains additional control data to control inkjet
nozzles.
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Appellant appeals the following rejections:
1. Claims 22-30 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 1-4, 6, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Colvill (US 5,521,722, issued May 28, 1996)
in view of Karfiol (US 2,477,300, issued July 26, 1949) and Pavlin
(US 5,881,648, issued Mar. 16, 1999).
3. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Colvill in view of Karfiol, Pavlin, and Baxter (US 2003/0218663
A1, published Nov. 27, 2003).
4. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Colvill in view of Karfiol, Pavlin, and Germann (US 5,282,417,
issued Feb. 1, 1994).
ISSUES
1. Did the Examiner reversibly err in finding that the subject matter of
claims 22-30 lack written descriptive support? We decide this issue in
the affirmative.
2. Did the Examiner reversibly err in finding that Colvill1 discloses “a
size of the image points and nozzle spacings of the inkjet printer are
coordinated with a size of screen dots and raster sizes in the intaglio
printing process” as required by claim 1? We decide this issue in the
affirmative.

1 We need not address Karfiol or Pavlin because the Examiner relies solely
on Colvill to teach the disputed claim limitation (Ans. 6).
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FINDINGS OF FACT & ANALYSIS
Issue (1): Written Description
Appellant argues that the Specification establishes possession of the
claimed subject matter (App. Br. 5). Appellant contends that the Examiner’s
acknowledgement that the disputed claim language is provided in the written
description bolsters a finding that the claim language satisfies the written
description requirement. Id. Appellant argues that one of ordinary skill in
the art would recognize that the “additional control data” are parameters that
are used to control inkjet nozzles, such as fluid parameters of pressure,
viscosity, inter-droplet distance, nozzle opening time, density, and pressure
in the chamber (Reply Br. 6).
The Examiner finds that although the disputed claim language of
claim 22 appears in the written description, “there is no additional
description of the process and therefore it is unclear how a data set obtained
by photographing an original pattern can contain control data to control
inkjet nozzles” (Ans. 5). The Examiner further explains that “there is no
clear identification of what this ‘additional control data’ refers to or how it
differs from the control data already claimed and rejected in claim 1” (Ans.
9-10). The Examiner declines to examine the subject matter of claims 22-30
on the merits because of confusion regarding what Appellant intended to
claim2 (Ans. 5).

2 As stated in the Manual of Patent Examining Procedures (MPEP) § 2163
III, in addition to assessing the claims compliance with 35 U.S.C. § 112, first
paragraph, a complete patentability determination under all statutory
requirements must be completed. MPEP § 2163 III (8th ed. Rev. 9).
Therefore, the Examiner should have considered the merits of claims 22-30
under the other statutory requirements of Title 35.
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To satisfy the written description requirement of § 112, the
specification must describe the invention in sufficient detail so that one
skilled in the art can clearly conclude that the inventor invented the claimed
invention as of the filing date sought. In re Alonso, 545 F.3d 1015, 1019
(Fed. Cir. 2008). In the present case the Examiner finds that the written
description contains the language in recited in the claim (Ans. 5).
We understand the claim 1 phrase “ the original digital data set
controls the inkjet printer and produces the printer roller so that a number of
image points per unit area on the first base material essentially corresponds
to a number of image points per unit area on the second base material” to
mean that the original data set obtained from the photo of the image is used
as part of the data set of inkjet or laser control data (i.e., data sets 4 and 6).
In other words, the same data acquired from the photo is used in controlling
the inkjet printer and producing the print roller. Our interpretation is
supported by the Specification that describes that by using one original data
set to control the inkjet printer and to produce the print roller the greatest
possible conformity is achieved between a sample provided for inspection
and a series-manufactured end project (Spec. ¶¶ [0012], [0013]). As further
evidence that our interpretation is proper, the Specification further describes
that the data sets (e.g., 4 and 6 in Figures 1a and 1b) that are used in the
inkjet printer and the laser engraving process are composed of the original
data set 1 and additional control data or control parameters 4a to control
inkjet nozzles or control parameters 6a for the laser engraving process (Spec.
¶¶ [0031], [0034], [0035]).
Claim 22 depends from claim 21, which depends from claim 20.
Claim 20 depends from claim 1. Claim 21 recites “a data set for printing on
the first base material is obtained by the original digital data set and is used
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in an inkjet printer.” Claim 20 recites “wherein the pattern is obtained by
photographing an original pattern by a digital camera.” We understand
claim 20 to recite that the pattern is obtained by photographing an original
pattern and by using a digital camera to accomplish that step. We
understand the claim 21 limitation that “a data set for printing . . . is obtained
by the original digital data set” to mean that the original digital data set is
used in formulating the data set (e.g., data set 4) to control the ink jet printer.
In other words, we read claim 21 as reciting that the data set is obtained
from the original digital data set. We understand the recitation of “the
original data set” in claim 22 to be to “the original digital data set” as recited
in claim 20 and claim 1. The Specification disclosures noted supra support
our interpretation of the claims.
In light of these Specification disclosures, we find that Appellants
possessed the subject matter of claim 22 that ultimately depends from claim
1. Claim 22 merely adds to the subject matter of claim 1 that the original
data set (i.e., the data obtained from the photograph or image) contains
additional control data (i.e., 4a) to control the inkjet nozzles. In other words,
the additional control data for the inkjet nozzles 4a is added to the original
data set to obtain a data set for printing the image on the first base material
using an inkjet printer as understood from the written description disclosure.
Accordingly, Appellant established possession of the subject matter of
claim 22 and thus, satisfied the requirement of 35 U.S.C. § 112, first
paragraph.
We reverse the Examiner’s § 112, first paragraph, rejection of claims
22-30.
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Issue (2): Prima facie Case
The Examiner finds that Colvill discloses at column 11, line 58 to
column 12, line 40, and column 18 line 66 to column 19, line 11 that a
number of image points per unit area on the first base material essentially
corresponds to a number of image points per area on the second base
material and a size of the image points and nozzle spacings of the inkjet
printer are coordinated with a size of the screen dots and raster sizes in the
intaglio printing process (Ans. 6).
Appellant argues that Colvill does not teach nozzle spacings or a size
of screen dots and raster as recited in claim 1 (App. Br. 15). The Examiner
does not respond to this argument. Our review of the columns and lines
cited by the Examiner as teaching this feature reveals that Colvill does not
teach that the size of the image points and nozzle spacings of the inkjet
printer are coordinated with the size of the screen dots and raster sizes in the
intaglio printing process. The Examiner has not explained how Colvill’s
teachings in columns 11 to 12 and columns 18 to 19 disclose the disputed
limitation. We find that a claim limitation is missing from the prior art.
On this record, the Examiner has not satisfied the initial burden to
establish a prima facie case of obviousness. Therefore, we reverse all of the
Examiner’s prior art rejections of record that rely solely on Colvill to teach
the disputed feature.
DECISION
The Examiner’s decision is reversed.

ORDER
REVERSED

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BEST, Administrative Patent Judge, concurring-in-part.

I join my colleagues in holding that the rejections of claims 1-7 under
35 U.S.C. § 103(a) should be reversed for the reasons stated in the opinion.
Furthermore, I agree with my colleagues that the rejection of claims
20 and 21 under § 103(a) and of claims 22-30 under 35 U.S.C. § 112, ¶ 1 for
lack of written description support also should be reversed. I write
separately because I would reverse these rejections for a substantially
different reason than given by the panel majority.
After carefully reviewing the language of claims 20-30 and the ’776
application’s Specification, I conclude that these claims should have been
rejected under 35 U.S.C. § 112, ¶ 2 as indefinite. Because these claims, as
currently written, do not particularly point out and distinctly claim
Appellants’ invention, I would reverse the rejections of these claims either
as obvious or as unsupported by the originally filed disclosure. These
reversals would be procedural in nature, and the Examiner would remain
free to assert the rejections should Appellants provide definite claims.
For ease of reference, claims 20-22 are reproduced below:
20. The method according to claim 1, wherein the pattern is
obtained by photographing an original pattern by a digital
camera.
21. The method according to claim 20, wherein a data set for
printing on the first base material is obtained by the original
digital data set and is used in an inkjet printer.
22. The method according to claim 21, wherein the original
data set contains additional control data to control inkjet
nozzles.
(App. Br. 30 (Claims App’x).)
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During prosecution, a claim is examined for compliance with 35
U.S.C. § 112, ¶ 2 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (citing M.P.E.P. § 2173.02). In determining whether a
particular claim is definite, the claim’s language must be analyzed in light of
the content of the particular application, the prior art’s teaching, and the
interpretation that would be given to the claim’s language by a person of
ordinary skill in the art at the time the invention was made. Id.
Even a cursory review of these claims reveals several different
phrases that are unclear. First, claim 20 states that “the pattern is obtained
by photographing an original pattern by a digital camera.” Second, claim 21
states that “a data set for printing on the first base material is obtained by the
original digital data set and is used in an inkjet printer.” Third, claim 22
uses the term “the original data set.” This term lacks an antecedent basis.
Rather than conclude that these terms are indefinite and requiring
Appellants to make clarifying amendments, my colleagues avoid these
issues by construing the ’776 application’s claims. For the following
reasons, I believe that the construction they adopt unnecessarily limits claim
scope and improperly imports limitations from the Specification into the
claims. Thus, I cannot join the portions of the majority opinion construing
the ’776 application’s claims.
First, the panel majority construes claim 1 in a manner that assumes
that the original digital data set is necessarily obtained from a photograph.
In making this assumption, they are limiting claim 1 to one of several
alternative methods disclosed in the Specification. Compare Spec. ¶ 0027
with Spec. ¶¶ 0025, 0026. I believe that a person of ordinary skill in the art
would have understood that the original digital data set could have come
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from any of several sources, including digital drawing or editing programs.
Claim 1, therefore, should not be construed as limited to original digital data
sets that are obtained from a photo of an image. See, e.g., Oatey Co. v. IPS
Corp., 514 F.3d 1271, 1276-77 (Fed. Cir. 2008) (“We normally do not
interpret claim terms in a way that excludes embodiments disclosed in the
specification”); Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d
1295, 1305 (Fed. Cir. 2007) (rejecting proposed claim interpretation that
would exclude disclosed examples in the specification).
Second, the panel majority assumes that the antecedent basis of the
term “original data set” in claim 22 is “original digital data set” as used in
claims 1 and 21. After review of the Specification, I am not convinced that
this is obviously correct. The Specification is replete with discussion of
various data sets, many of which have similar names. E.g., Spec. ¶ 0026
(discussing data sets named “original data,” “data set,” and “further data
set”). Because the Specification discusses original data, original data sets,
and original digital data sets without clearly stating that these terms are
interchangeable, I would not assume that the claims use the terms “original
data set” and “original digital data set” to refer to the same thing. Instead, I
would reject claim 22 as indefinite and allow Appellants to clarify the
claims.
Third, I believe that the construction adopted by the majority results in
claims that may not comply with other provisions of § 112. For example,
the majority’s construction means that claim 22 requires that the original
digital data set, which is obtained by using a digital photograph, must also
contain control data or control parameters to control inkjet nozzles. As I
read the’776 application’s Specification, it does not describe or enable a
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process for obtaining the original digital data set from a photograph that
includes inkjet nozzle control instructions.
The Federal Circuit has observed that affording claims the broadest
reasonable interpretation in light of the Specification does not prejudice an
applicant because the applicant has the ability to amend claims to adjust the
scope of protection. See, e.g., In re Yamamoto, 740 F.2d 1569, 1571–72
(Fed. Cir. 1984). Similarly, rejecting claims 20-30 of the ’776 application as
indefinite would not prejudice Appellants because they can amend the
claims to comply with the statutory requirement for particularity and
definiteness in claiming. Such a course would result in claims that better
notified the public of the scope of protection afforded by a patent that might
issue from the ’776 application. See McClain v. Ortmayer, 141 U.S. 419,
424 (1891) (“The object of the patent law in requiring the patentee [to
specifically define his invention] is not only to secure to him all to which he
is entitled, but to apprise the public of what is still open to them.”);
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir.
2008) (explaining that definiteness requirement facilitates public notice of
claim scope); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573,
1581 (Fed. Cir. 1996) (“[T]he primary purpose of the requirement is ‘to
guard against unreasonable advantages to the patentee and disadvantages to
others arising from uncertainty as to their [respective] rights.’”) (quoting
Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938)).

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