Ex Parte Hoffman et al

Patent Trial and Appeal Board

Mar 28, 2014

11683850 (P.T.A.B. Mar. 28, 2014)

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.
11/683,850 03/08/2007 Ted M. Hoffman F12.12-0171 1639
93288 7590 03/28/2014
HID Global c/o Westman Champlin & Koehler, P.A
900 Second Avenue South, Suite 1400
Minneapolis, MN 55402
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
03/28/2014 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 PATENT TRIAL
AND APPEAL BOARD

____________

Ex parte TED M. HOFFMAN, JEFFREY L. STANGLER,
JOHN P. SKOGLUND, THOMAS G. GALE JR., and TONY NAUTH
__________

Appeal 2011-013085
Application 11/683,850
Technology Center 2800
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-3, 6-19, and 21-26. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We REVERSE.
Appellants’ invention is directed to a reverse-image credential
printing device and method in which a reverse-image is transferred to a
bottom surface of a credential substrate (Spec. 1:23-25; Claims 1, 13 & 19).
Appeal 2011-013085
Application 11/683,850

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Credentials include identification cards, driver’s licenses, passports and
other valuable documents (Spec. 1: 28-29).
Claim 1 is illustrative:
1. A reverse-image credential printing device comprising:
a credential substrate transport configured to feed a credential
substrate along a processing path, the credential substrate having a bottom
surface;
removable transfer ribbon and print ribbon cartridges containing
supply and take-up spools that are positioned side-by-side, wherein the
supply spool of the transfer ribbon cartridge underlies the take-up spool of
the transfer ribbon cartridge;
a transfer ribbon extending between the supply spool and the take-up
spool of the transfer ribbon cartridge; and
a transfer roller configured to transfer an image from the transfer
ribbon to the bottom surface of the credential substrate in the processing
path, wherein the transfer roller underlies the processing path and the bottom
surface of the credential substrate, but overlies the supply and take-up spools
of the transfer ribbon cartridge.

Appellants appeal the following rejection under 35 U.S.C. § 103(a):
Claims 1-3, 6-19, and 21-26 as unpatentable over Honma et al. (US
2003/0025781 A1, published Feb. 6, 2003) in view of Meier et al. (US
2004/0109715 A1, published Jun. 10, 2004).

ISSUE
Did the Examiner reversibly err in concluding that the combined
teachings of Honma and Meier teach or suggest all the features of claim 1,
including “a transfer roller . . . wherein the transfer roller underlies the
processing path and the bottom surface of the credential substrate, but
overlies the supply and take-up spools of the transfer ribbon cartridge”?
We decide this issue in the affirmative.

Appeal 2011-013085
Application 11/683,850

3
FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding Honma and Meier
with regard to the subject matter or claim 1 are located on pages 5-6 of the
Answer. The Examiner finds that Honma teaches most of the limitations of
claim 1, except for the positioning of the transfer roller (Ans. 5). The
Examiner finds that Meier teaches a credential printing device wherein the
printhead 106 underlies the processing path and the bottom surface of the
credential substrate but overlies the supply and take-up spools of the ribbon
cartridge (Ans. 5). The Examiner concludes that it would have been obvious
to modify the apparatus of Honma given the teachings of Meier “to reverse
the position of the entire printing structure to underlie the printing path and
print on the bottom surface of the substrate, so that the substrate could be
inserted face-up and the bottom face could be printed without having any
internal reversing mechanism” (Ans. 6).
Appellants argue that Honma and Meier fail to teach positioning the
transfer roller as required by the claims and therefore the prior art fails to
teach or suggest all the limitations of claim 1 (App. Br. 9). Appellants
contend that Meier’s printhead 106 is not equivalent to the claimed transfer
roller of Honma (App. Br. 9). Appellants argue that Honma’s printhead 1
prints the image, not the transfer roller that transfers the printed image from
the transfer film to the credential substrate (App. Br. 10).
While the Examiner attempts to equate Meier’s printhead and a
transfer roller (Ans. 13-14), we agree with Appellants that Honma teaches a
distinction between the two devices. Honma teaches that a thermal head 1
(i.e., printhead) forms an image on the transfer film (Honma, para. [0010]).
In other words, the transfer roller is used in an indirect image transfer
Appeal 2011-013085
Application 11/683,850

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process or the transfer roller is placed in an indirect image transfer apparatus
to transfer the printed image to the substrate (Honma, para. [0009]). In
contrast, Meier’s printhead 106 directly forms/prints the image on the
substrate (Meier, para. [0006]).
In light of this distinction, we find that the applied prior art fails to
teach or suggest the positioning of the transfer roller as required by the
claims. The only teaching we find in the record to position the transfer roller
as claimed is in Appellants’ Specification. Because the Examiner has not
satisfied the initial burden of establishing that the prior art teaches or would
have suggested all the limitations of the claims, we reverse the Examiner’s
§ 103 rejections.

DECISION
The Examiner’s decision is reversed.

ORDER
REVERSED

cdc