10487026 (B.P.A.I. Mar. 16, 2012)

Ex Parte Giori

Board of Patent Appeals and InterferencesMar 16, 2012

10487026 (B.P.A.I. Mar. 16, 2012)

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. 10/487,026 02/17/2004 Fausto Giori KBAG-3 8555 52450 7590 03/16/2012 KRIEG DEVAULT LLP ONE INDIANA SQUARE SUITE 2800 INDIANAPOLIS, IN 46204-2079 EXAMINER HEINRICH, SAMUEL M ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 03/16/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte FAUSTO GIORI ____________________ Appeal 2010-003097 Application 10/487,026 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and MICHAEL C. ASTORINO, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003097 Application 10/487,026 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 41 and 43-63. App. Br.1 5-7. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to method of manufacturing an engraved plate. Claim 41, reproduced below, is illustrative: 41. A method of engraving a plate for intaglio printing of sheets carrying a pattern of rows and columns of security papers, comprising the steps of generating on a computer at least one original depth-map consisting of a three-dimensional raster image of at least a part of one of said security papers; generating a master depth-map of the plate to be engraved, which master depth-map consists of three- dimensional pixel data and provides for multiple repetitions on the plate of said at least one original depth-map according to a pattern of rows and columns corresponding to the security papers to be printed on said sheets of security papers, wherein said master depth-map is generated by taking into account information necessary for compensating for sheet distortion created during the intaglio printing process; and controlling a computer-controlled engraving tool to engrave the plate according to the three-dimensional pixel data of said master depth-map, whereby the plate is engraved pixel by pixel by performing a plurality of elementary three- dimensional engraving steps each corresponding to a pixel of said three-dimensional pixel data. REFERENCES The Examiner relies on the following prior art: Garnier Hann Tatah US 4,970,600 US 5,152,861 US 5,519,724 Nov. 13, 1990 Oct. 6, 1992 May 21, 1996 1 Appellant’s Reply Brief is considered untimely and was not considered in this Decision. See 37 C.F.R. § 41.41(c). Appeal 2010-003097 Application 10/487,026 3 Yoshida Gelbart Fangmeyer US 5,828,464 US 6,158,345 US 6,523,467 B2 Oct. 27, 1998 Dec. 12, 2000 Feb. 25, 2003 Xu Fischer Rafey Franz Nakao US 2002/0085247 A1 US 2002/0135745 A1 US 2003/0043270 A1 US 2004/0007145 A1 JP-06-293191 Jul. 4, 2002 Sep. 26, 2002 Mar. 6, 2003 Jan. 15, 2004 Oct. 21, 1994 Hnatek DE 019952598 Nov. 2, 1999 REJECTIONS2 Claims 41 and 43-63 are rejected under 35 U.S.C. § 103(a) as unpatentable over Applicant’s Admitted Prior Art (AAPA), Garnier, Hnatek, Tatah, Rafey, and Hann. Claim 47 is rejected under 35 U.S.C. § 103(a) as unpatentable over AAPA, Garnier, Hnatek, Tatah, Rafey Hann, Yoshida, and Fangmeyer. Claims 54 and 63 are rejected under 35 U.S.C. § 103(a) as unpatentable over AAPA, Garnier, Hnatek, Tatah, Rafey, Hann, and Fischer. Claims 41 and 43-63 are rejected under 35 U.S.C. 103(a) as unpatentable over AAPA, Garnier, Hnatek, Tatah, Gelbart, and Xu. Claim 47 is rejected under 35 U.S.C. 1 03(a) as being unpatentable over AAPA, Garnier, Hnatek, Tatah, Gelbart, Xu, Yoshida, and Fangmeyer. Claims 54 and 63 are rejected under 35 U.S.C. § 103(a) as unpatentable over AAPA, Garnier, Hnatek, Tatah, Gelbart, Xu, and Fischer. Claims 41 and 43-63 are rejected under 35 U.S.C. § 103(a) as unpatentable over AAPA and Nakao. 2 The rejections of claim 55 based in part on Furukawa have been withdrawn by the Examiner. Ans. 2-3. Appeal 2010-003097 Application 10/487,026 4 OPINION The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. In re Warner, 379 F.2d 1011, 1016 (CCPA 1967). This includes those factual inquiries delineated in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) noted that the analysis supporting a rejection under 35 U.S.C. § 103 should be made explicit. The Federal Circuit stated that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) cited with approval in KSR, at 418. In each rejection the Examiner relies on AAPA, specifically Franz, as “pertain[ing] to use of an image in pixel data form stored in a computer and used to guide an engraving tool.” See, e.g., Ans. 5. The Examiner found that Franz describes both “‘data format based on vector representation’ and ‘pixel-based data.’” See, e.g., id. citing Franz, para. [0025]. We fail to see how this meets the limitation of “controlling a computer-controlled engraving tool to engrave the plate according to the three-dimensional pixel data of said master depth-map, whereby the plate is engraved pixel by pixel by performing a plurality of elementary three-dimensional engraving steps each corresponding to a pixel of said three-dimensional pixel data,” some form of which is included in each of the independent claims involved in this appeal. There is no legally recognizable essential gist or heart of the invention test. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, Appeal 2010-003097 Application 10/487,026 5 1548 (Fed. Cir. 1983). All words in a claim must be considered in judging the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Appellant correctly points out that though the data for producing the image may start out as pixels, Franz transforms this data into a vector-based format and therefore does not “engrave[] pixel by pixel.” App. Br. 15-18; Franz, paras. [0018], [0025]. The Examiner provides only minimal discussion of the actual claim language, and does not appear to rely on any of the other cited references to cure this deficiency.3 Tatah, which involves a laser heat treatment that could be used in semiconductor etching, appears to be the only other cited reference pertinent to this limitation. Tatah briefly discusses associating a depth with pixels. However, it is not apparent, and the Examiner does not explain, how Tatah’s pixels form a depth-map of a plate that is engraved pixel by pixel. Since the Examiner failed to establish the obviousness of the claimed subject matter, we are constrained to reverse the Examiner’s rejections of claims 41 and 43- 63. DECISION The Examiner’s rejections of claims 41 and 43-63 are reversed. REVERSED nlk 3 Since the Examiner does not appear to rely on Nakao regarding this limitation in the rejection over AAPA and Nakao, it appears that the Examiner interprets Franz alone as teaching this step.