Ex Parte Lappe

Patent Trial and Appeal Board

Jul 28, 2017

10579278 (P.T.A.B. Jul. 28, 2017)

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.
10/579,278 02/13/2007 Kurt Lappe 3988-150342 8252
28289 7590 08/01/2017
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
HINZE, LEO T
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
patents @ webblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT LAPPE
Appeal 2016-005020
Application 10/579,278
Technology Center 2800
Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1, 2, 7, 9, 19, 20, 22—25, 27—29, and 31—40. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to an apparatus and method for the
production of printed products (Spec. 11; claims 1, 19).
Claim 1 is illustrative:
1. A method for the production of print products by
combining various immediately successive processing methods,
the method comprising the steps of:
Appeal 2016-005020
Application 10/579,278
partially coating less than an entirety of a base material
with an adhesive at predetermined positions of the base material
corresponding to intended locations of the print products;
providing a transfer film including a carrier foil layer, a
parting layer, and a transfer layer;
removing said transfer layer from said carrier foil layer
and transferring less than an entirety of the transfer layer to the
base material exclusively at the predetermined positions of the
base material by adhering the transfer layer to the adhesive;
providing an embossing at the predetermined positions
of the base material after transferring the transfer layer to the
base material;
providing a print layer at the predetermined positions of
the base material after providing the embossing; and
actively drying the adhesive with a drying device;
wherein the print products to be produced successively
undergo the steps of the method in one continuous sequence
without intermediate storage; and
wherein, at each predetermined position on the base
material, a transferred portion of the transfer layer, the print
layer, and the embossing overlap and are positioned in stacked
vertical alignment with respect to the base material.
Appellant appeals the following rejections:
1. Claims 1, 2, 9, 19, 20, 22—25, 27—29, and 31—40 rejected under 35
U.S.C. § 103(a) as being unpatentable over Applicant’s Admitted
Prior Art (hereinafter “AAPA”) in view of LaBelle et al. (US
6,694,872, issued Feb. 24, 2004) and Gross et al. (US 5,603,259,
issued Feb. 18. 1997).
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Application 10/579,278
2. Claim 7 rejected under 35 U.S.C. § 103(a) as being unpatentable over
AAPA in view of La Belle, Gross, and Miyamoto et al. (US
6,033,509, issued Mar. 7, 2000).
REJECTION (1)
With respect to claims 2, 9, 23—25, 29, and 32—35, Appellant’s
arguments present us with the same dispositive issues as independent
method claim 1 (App. Br. 16—24; Reply Br. 2—5). The rejection of
dependent claims 2, 9, 23—25, 29, and claims 32—35 will stand or fall with
our analysis of the rejection of claim 1.
Independent apparatus claims 19 and 36, and dependent claims 20, 22,
27, 28, 31, and 37—40, are addressed below separately from claim 1.
FINDINGS OF FACT AND ANALYSES
Claim 1
The Examiner finds AAPA teaches coating a base material with an
adhesive at predetermined positions and providing a transfer layer, an
embossing, and a print layer at the predetermined positions (see Final Act.
6—8; see also Spec., p. 3, lines 13—15). The Examiner finds AAPA discloses
the embossing and print layer must be “exactly matched” to the base
material and transfer layer (Ans. 7; see also Spec., p. 3, lines 22—25). The
Examiner determines “the ordinarily skilled artisan possesses the knowledge
and creativity to create an aesthetic design” with the embossing and print
layer overlapping the transfer layer at the same predetermined positions in
stacked vertical alignment (Final Act. 7; see also Ans. 6—7).
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The Examiner finds AAPA fails to teach or suggest (1) performing the
method steps in one continuous sequence without intermediate storage, and
(2) actively drying the adhesive with a drying device (Final Act. 8).
The Examiner finds LaBelle teaches multiple stand-alone machines
for embossing, printing, and laminating, and further teaches machine
transfers reduce manufacturing speed and registration accuracy (id. ). The
Examiner further finds LaBelle’s single machine process, which combines
embossing, printing, and laminating into one continuous sequence, solves
these problems (id.). The Examiner concludes it would have been obvious
to modify the method of AAPA to be performed as one continuous sequence
without intermediate storage, as taught by LaBelle, to predictably increase
manufacturing speed and accuracy (id.; see also Ans. 10).
The Examiner finds Gross teaches a printing machine with a dryer to
set the adhesive in its intended location (id.). The Examiner concludes it
would have been obvious to modify the method of AAPA to actively dry the
adhesive with a dryer device to prevent it from running beyond its intended
location (id. at 8—9).
Appellant argues AAPA fails to teach or suggest the transfer,
embossing, and print layers overlapping at the predetermined positions on
the base material in stacked vertical alignment (App. Br. 16—18; Reply Br.
2—4). Appellant contends AAPA lacks any express teaching, suggestion, or
motivation to support the Examiner’s conclusion that it would have been
obvious to overlap AAPA’s layers at the same predetermined locations in
stacked vertical alignment based on a choice of the designer when choosing
patterns (Reply Br. 4).
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We disagree. That AAPA does not explicitly teach the claimed
overlapping arrangement of the transfer layer, embossing, and print layer at
the predetermined positions is not determinative. The Court has made clear
that the obviousness “analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
In the present case, the Examiner asserts choosing a pattern, including
the claimed overlapping arrangement of transfer, embossing, and print
layers, is nothing more than a design choice for creating an aesthetic design
(Ans. 5—7; Final Act. 7). The Examiner states a designer might “cho[o]se a
final design for the base material that requires each of film transfer,
stamping, and printing of the exact same design in the exact same location
on the base material” (Ans. 6—7) and “whether one choses to print and
emboss different designs, or the same exact design [i.e. overlapping at the
same location], is not a patentably distinguishing feature” (Final Act. 3).
As pointed out by the Examiner, Appellant has not provided
persuasive argument or evidence that modifying AAPA, as combined with
LaBelle and Gross, to have the claimed overlapping arrangement is anything
more than an obvious design choice (see Final Act. 3^4; see also Ans. 5—8).
Therefore, for the reasons set forth by the Examiner, we agree that the
ordinarily skilled artisan possesses the knowledge and creativity to create an
aesthetic design with the transfer, embossing, and print layers of AAPA,
LaBelle, and Gross, at the same predetermined positions in overlapping
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stacked vertical alignment.1 A person of ordinary skill in the art is a person
of ordinary creativity, not an automaton. KSR, 550 US at 421.
Additionally, Appellant argues the Examiner erred in combining
LaBelle with AAPA and Gross (App. Br. 20—22; Reply Br. 5).
First, Appellant contends there is no reasonable expectation of success
in combining the in-line process of LaBelle with AAPA (App. Br. 20—21).
Appellant argues LaBelle is limited to overcoming the highly specific
shortcomings associated with laminating and diecutting holographic stickers,
and would not yield predictable results when combined with AAPA (id. at
21). We are not persuaded.
Here, the Examiner’s proposed modification to AAPA, namely to
combine separate transfer film, embossing, and printing machines into a
single machine, does not appear to be beyond the skill of the ordinarily
skilled artisan, and Appellant has not presented persuasive evidence that a
person of ordinary skill in the art would not have had an expectation of
success in making the proposed modifications (see App. Br. 20—21; see also
Reply Br. 5). In re OTarrell, 853 F.2d 894, 903 (Fed. Cir. 1988). We
agree with the Examiner that both LaBelle and AAPA are directed toward
processing a base material with multiple, successive operations (Ans. 10).
Specifically, we note LaBelle is directed to successively embossing and
printing in addition to laminating and diecutting; we further note LaBelle
discloses overlapping embossed and print layers in a stacked vertical
alignment at predetermined positions on a base material (116 and 118 of
1 We note FIG. IB of Labelle, which discloses print (118), embossing (116),
and adhesive (117b) layers in stacked vertical alignment, further supports the
conclusion that a stacked vertical alignment is an obvious design choice.
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LaBelle, at FIG. IB). As correctly pointed out by the Examiner, LaBelle
combines printing, embossing, etc. into an in-line process carried out by a
single machine, thereby eliminating additional machine transfers, to provide
the predictable benefits of reducing manufacturing time and improving
accuracy (Ans. 9—10; see also Final Act. 8; see also LaBelle abstract).
Appellant has not persuaded us that the Examiner’s proposed combination of
AAPA and Labelle would not achieve these predictable results.
Second, Appellant contends the Examiner provided insufficient
motivation to combine AAPA with LaBelle. Appellant further contends the
Examiner instead relied on impermissible hindsight (App. Br. 21—22). We
are not persuaded.
Here, the Examiner provides articulated reasoning with rational
underpinnings, e.g., the Examiner concludes the concept of combining
separate devices into a single device to process the base material in one
continuous sequence, as in LaBelle, provides the benefit of reducing
manufacturing time and improving accuracy (see Ans. 10; see also Final
Act. 8). As correctly pointed out by the Examiner (Ans. 9—10), LaBelle
states performing operations in one continuous sequence “eliminates...
machine-transfer and machine-loading delays” and “reduces the need to
correct registration errors at each separate machine” (LaBelle, col. 2,11. SO­
SO. The Examiner cites specific teachings in LaBelle, not Appellant’s
disclosure, in support of the Examiner’s articulated reasoning with rational
underpinnings, and therefore, does not engage in impermissible hindsight
(Final Act. 8; Ans. 10).
As we “take account of the inferences and creative steps that a person
of ordinary skill in the art would employ,” we conclude it would have been
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obvious to one of ordinary skill in the art at the time the invention was made
to perform the method steps of AAPA in one continuous sequence without
intermediate storage, in view of LaBelle, to obtain predictable benefits from
reducing the number of machines (i.e. increasing manufacturing speed and
accuracy). KSR Int’l, 550 U.S. at 418. Although Appellant argues there is
no indication that using LaBelle’s in-line method would result in faster
production speed or improved accuracy in AAPA (App. Br. 21; Reply Br.
5), we note an ordinary skilled artisan would recognize the benefits gained
using an in-line, single machine process, e.g., reducing the number of
machines reduces the number of transfer delays and loading errors. For
these reasons, we do not agree that the Examiner reversibly erred in
combining LaBelle with AAPA and Gross.
On this record, we affirm the Examiner’s § 103 rejection of claim 1
over AAPA in view of LaBelle and Gross. In light of our affirmance of the
§103 rejections of claim 1, we affirm the Examiner’s § 103 rejections of
claims 2, 9, 23—25, 29, and 32—35 for the same reasons.
Claims 19 and 36
Appellant argues that independent claims 19 and 36 are patentable for
the same reasons as claim 1 (See App. Br. 22—24). As discussed above,
Appellant’s arguments are not persuasive.
Moreover, we agree with the Examiner that the combination of
AAPA, Labelle, and Gross is configured to perform the claimed operations,
since Appellant has not persuaded us that structural differences exist
between the combination proposed by the Examiner and the claimed
invention, or that the proposed combination is incapable of performing the
claimed operations (Ans. 8; see also Final Act. 3). See In re Schreiber, 128
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F.3d 1473, 1478 (Fed. Cir. 1997) (claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function).
Therefore, we are not apprised of Examiner error and affirm the § 103
rejection of claims 19 and 36, and claims 20, 22, 27, 28, 31, and 37^40
dependent thereof.
REJECTION (2)
FINDINGS OF FACT AND ANALYSES
Regarding dependent claim 7, the Examiner finds AAPA, LaBelle,
and Gross disclose the claimed invention except for stretching the transfer
film (Final Act. 24). The Examiner finds Miyamoto discloses stretching the
transfer film (Final Act. 24). The Examiner concludes it would have been
obvious to one of ordinary skill in the art to perform the method of AAPA,
LaBelle, and Gross with stretching the transfer film, in view of Miyamoto,
for the purpose of reducing wrinkles in the transfer film (Final Act. 24—25).
Appellant argues Miyamoto is non-analogous art (App. Br. 24). We
are not persuaded.
“Whether a reference in the prior art is ‘analogous’ is a fact question.”
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two criteria have evolved
for answering the question: “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” Id. at 658—59. Here, the Examiner finds AAPA is directed to the
application of transfer film, and Miyamoto is directed to stretching transfer
film prior to application (Final Act. 6, 24). Thus, Examiner has established
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the art is from the same field of endeavor, and Appellant has not provided
sufficient argument or evidence to the contrary. Because Appellant does not
explain sufficiently why Miyamoto is non-analogous art, Appellant’s
contention amounts to attorney argument without supporting evidence.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
As we are not apprised of Examiner error, we affirm the Examiner’s §
103 rejection of claim 7 over AAPA in view of LaBelle, Gross, and
Miyamoto.
DECISION
The Examiner’s decision 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)(l)(iv).
ORDER
AFFIRMED
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