Ex Parte Mayer

Patent Trial and Appeal Board

Jul 21, 2014

11637593 (P.T.A.B. Jul. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARTIN MAYER

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Appeal 2012-011904
Application 11/637,593
Technology Center 2800
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Before DEBORAH KATZ, HUNG H. BUI, and NATHAN A. ENGELS,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 seeks our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1 and 4-10. (App. Br. 1.) We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Appellant’s Specification is directed to methods of controlling the ink
feed of an offset printing press with a computer by calculating the necessary
ink layer thickness from spectral reflectance values. (Spec., abstract.)
Appellant’s claim 1 recites:
A method for controlling an ink feed of an offset printing press
having a control computer and at least one inking unit controlled by
the control computer, the method comprising the following steps:
[1] inputting, into the control computer, a spectral reflectance
value (βpw) of a current printing material and inputting a previously
determined reflectance value of (βo) an ink to be printed onto the
printing material;
[2] calculating, with the control computer, an ink layer
thickness necessary for a color by using the reflectance values, and
thereby relating the spectral reflectance value of the current printing
material to the reflectance value of the ink;
[3] relating the calculated ink layer thickness to a given ink
layer thickness when calculating the ink layer thickness using a ratio
of (βo)/(βpw); and
[4] performing necessary setting operations on the inking unit,
with the control computer, to obtain the calculated ink layer thickness.

(App. Br. 10, Claims App’x (bracketed numbers and emphasis added).)
35 U.S.C. § 112, second paragraph
The Examiner rejected claims 1 and 4-10 under 35 U.S.C. § 112,
second paragraph, as being indefinite. (Ans. 3-4.) The Examiner considered

1 The real party in interest is said to be Heidelberger Druckmaschinen AG.
(App. Br. 2.)
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the relating step (step [3], above) to be unclear because it requires the
calculated thickness to be in the process of being calculated and also related
to the given ink layer thickness after it has already been calculated in step
[2]. (Id.)
Appellant argues that the claim phrase “when calculating the ink layer
thickness using a ratio of (βo)/(βpw)” is clear because it is “temporal,”
wherein the relation to the “given ink layer thickness” takes place when or
during the calculation of the ink layer thickness, not in the calculation.
(App. Br. 4-5; Reply Br. 2.)
We are not persuaded by Appellant’s argument. The claimed method
is indefinite because, as the Examiner concluded, it is unclear how one
would “relate” a parameter (given ink layer thickness) to a value (ink layer
thickness) that has already been calculated. Appellant provides two distinct
steps: one for calculating an ink layer thickness (step [2]) and one for
relating the calculated ink layer thickness to a given ink layer thickness (step
[3]). It is not clear how the relationship determined in step [3] could be
performed if the calculation of step [2] is completed before step [3] is
performed.

35 U.S.C. § 103
We review Appellant’s arguments regarding the rejections over prior
art to the extent that we understand claim 1 to recite calculating an ink layer
thickness in light of a given ink layer thickness.
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The Examiner rejected claims 1, 8, and 10 under 35 U.S.C. § 103(a)
over Anweiler2 and Dalal.3 (Ans. 4-6.) We focus on the rejection of
independent claim 1 in our review. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner found that Anweiler teaches controlling the ink feed to
an offset printing press by considering spectral reflectance values of the
printing substrate (Appellant’s βpw) and the reflectance value of the ink
(Appellant’s βo). (Ans. 4, citing Anweiler at 6:33-45.) The Examiner also
found that Anweiler teaches including spectral reflectance values for at least
two layer thicknesses of printing ink in order to calculate the optimum
inking with settings for a desired color. (Ans. 5; Anweiler at 4:13-14.)
Because Anweiler does not teach using the ratio (Bo)/(Bpw) to
calculate an ink layer thickness, the Examiner cited to Dalal. Dalal relates to
printing devices and teaches calculating an ink layer thickness using a ratio
of (Bo)/(Bpw). (Ans. 5-6; Dalal at 5:10-37.) The Examiner concluded that
because using the ratio taught in Dalal would have allowed one skilled in the
art to have adjusted the predicted reflectance spectra on a new sheet after
having measured only the reflectance spectrum of a new paper (see Dalal at
5:16-17), the skilled artisan would have considered it obvious to modify the
method of Anweiler to include the ratio of Dalal. (Ans. 6.)
Appellant argues that the Examiner ignored step [3] in claim 1, which
requires “relating the calculated ink layer thickness to a given ink layer
thickness.” (App. Br. 6.) Appellant argues that Dalal does not consider a
given ink layer thickness (id. at 7) and that it does not indicate a relationship

2 Anweiler et al., US Patent 6,679,169 B2, issued January 20, 2004.
3 Dalal et al., US Patent 6,654,143 B1, issued November 25, 2003.
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between the at least two layers thicknesses discussed in column four (Reply
Br. 2). According to Appellant, the relationship between the given ink layer
thickness and the ink layer thickness to be calculated is provided on page 14
of Appellant’s Specification, in Equation 1. (App. Br. 6-7; Reply 2-3.)
Appellant’s claim 1 recites only “relating” the calculated and given
ink layer thicknesses. Claim 1 is not limited by Equation 1 on page 14 of
Appellant’s Specification because “[t]he claims, not specification
embodiments, define the scope of patent protection.” See Kara Tech. Inc. v.
Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009). Instead, the
broadest reasonable interpretation of step [3] of claim 1 encompasses any
relationship between the calculated ink layer and a given ink layer thickness.
Appellant argues that while Anweiler considers a relationship between
a first spectral reflectance value and a first ink layer thickness, and a
relationship between a second reflectance value and a second ink layer
thickness, Anweiler does not disclose any relationship between two ink layer
thicknesses. (Reply Br. 2.) We disagree.
Anweiler teaches, as one option: “If the spectral reflectance values of
the printing ink on the printing substrate which is used in the printing press
are not known, then it is required to measure the printing ink on the
corresponding printing substrate in advance.” (Anweiler at 3:64-4:1.)
Anweiler teaches another option wherein, if this preliminary measurement is
to be avoided, the relationship cited by Appellant (between a first spectral
reflectance value and a first ink layer thickness and a second reflectance
value and a second ink layer thickness) can be considered. (Id. at 4:1-10.)
Thus, the first option taught by Anweiler (measuring the printing ink when
spectral reflectance values are not known) is to use a given ink layer
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thickness. The further discussion in Anweiler of using at least two layer
thicknesses to calculate optimum settings refers to this given ink layer
thickness, as well as to the relationship argued by Appellant. (Id. at 4:13-
14.) Thus, Anweiler teaches relating a given ink layer thickness when
calculating an ink layer thickness.
Appellant has failed to persuade us that the Examiner erred in
rejecting claim 1 because the prior art lacks any teaching of a relationship
between a given ink layer thickness and the calculated ink layer thickness.
The Examiner also rejected dependent claims 4-7 and 9 under
35 U.S.C. § 103(a) over Anweiler and Dalal, in view of additional
references.4 (Ans. 7-11.) Appellant does not provide separate arguments
against these rejections. For the reasons provided above, the Examiner did
not err in rejecting these claims.

CONCLUSION
Upon consideration of the record and for the reasons given, we sustain
the Examiner’s rejections under 35 U.S.C. § 112, second paragraph, and
under 35 U.S.C. § 103(a).
Therefore, we affirm the decision of the Examiner.

4 Specifically, the Examiner rejected claims 7 and 9 over Anweiler and Dalal
and also in view of Kistler and Pfeiffer, US Patent 6,450,097 B1, issued
September 17, 2002 (Ans. 7-8); claims 4 and 6 over Anweiler and Dalal and
also in view of Engler et al., US Patent Application Publication
2003/0169440 A1, published September 11, 2003 (id. at 8-10); and claims 4
and 5 under 35 U.S.C. § 103(a) over Anweiler and Dalal and also in view of
Brydges and Tobiason, U.S. Patent Application Publication, 2002/0104457
A1, published August 8, 2002 (id. at 10-11).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

cdc