Ex Parte Maynard et al

Patent Trial and Appeal Board

Oct 25, 2016

12351823 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/351,823
97928 7590
Zebra/ Alston & Bird
101 S. Tryon Street
Suite 4000
FILING DATE
01/10/2009
10/27/2016
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Raymond Eugene Maynard
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
054054/367237 9600
EXAMINER
SIMMONS, JENNIFER E
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
10/27/2016 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):
jonathan.thomas@alston.com
IP _Legal@zebra.com
USPTOmail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND EUGENE MAYNARD and
THOMAS RICHARD HELMA
Appeal2015-005254
Application 12/351,823
Technology Center 2800
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1-24 of Application 12/351,823.
We have jurisdiction under 35 U.S.C. § 6(b ). We affirm and designate part
of our affirmance as a New Ground of Rejection pursuant to 37 C.F.R.
§ 41.50.
1 Appellants identify the real party in interest as ZIH Corp., a wholly owned
subsidiary of Zebra Technologies Corp. App. Br. 2.
Appeal2015-005254
Application 12/3 51, 823
BACKGROUND
The subject matter on appeal relates to an assembly for intermediate
transfer printing, such as thermal transfer printing, which uses heat to
transfer an image from an intermediate transfer media to a product. Spec.
if 3. The printing assembly includes a device configured to provide a
cooling stream of air near the product for facilitating removal of the
intermediate transfer media from the product. Spec. if 2.
Representative claim 1 is reproduced below with emphasis added:
1. An intermediate transfer printing assembly configured to
transfer an image to a product, the intermediate transfer printing
assembly comprising:
an intermediate transfer media comprising an image
disposed thereon;
a transfer assembly comprising a transfer device, wherein
the transfer assembly is configured to transfer the image from
the intermediate transfer media to the product by:
receiving the product and intermediate transfer media
into the transfer assembly along a first direction,
compressing the intermediate transfer media between the
transfer device and the product,
expelling the product from the transfer assembly along a
second direction, and
peeling the intermediate transfer media from the product
such that the image is transferred from the intermediate transfer
media to the product; and
a blower configured to intermittently provide a cooling
stream of air along and in contact with a peel interface defined
where the intermediate transfer media is peeled from the
product.
App. Br. 15 (Claims Appx.).
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Application 12/3 51, 823
THE REJECTIONS
1. Claims 1-3, 5, 10-12, 16, and 17 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Kikuchi. 2
2. Claims 1, 4, 10, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kitami 3 and Kikuchi.
3. Claims 6-8, 14, 18, 22, and 23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kikuchi and
Yamamoto. 4
4. Claims 9 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kikuchi and Fukuda. 5
5. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kikuchi, Yamamoto, and Okamoto. 6
6. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kikuchi, Yamamoto, and Fukuda.
7. Claims 21and24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kikuchi, Yamamoto, and
Okamoto.
DISCUSSION
Appellants argue for reversal of the rejections on the basis of the
limitation of claim 1 italicized above, which is also recited in independent
2 Kikuchi (US 5,600,359, issued Feb. 4, 1997).
3 Kitami (JP 08-058125 A, published Mar. 5, 1996).
4 Yamamoto (US 7,076,867 B2, issued July 18, 2006).
5 Fukuda (JP 2001-331043 A, published Nov. 30, 2001).
6 Okamoto (US 5,891,291, issued Apr. 6, 1999).
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Application 12/3 51, 823
claims 10 and 16. See generally App. Br. 7-12. With the exception of claim
2, Appellants do not separately argue any dependent claims. We limit our
discussion accordingly. After review of the evidence in the appeal record
and the opposing positions of the Appellants and the Examiner, we
determine that Appellants have not identified reversible error in the
Examiner's rejections. With respect to claim 2, however, our reasoning
differs somewhat from the Examiner's. Accordingly, we designate the
decision with respect to claim 2 as a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
Appellants argue that Kikuchi does not disclose "a blower configured
to intermittently provide a cooling stream of air along and in contact with a
peel interface defined where the intermediate transfer media is peeled from
the product." App. Br. 8. Specifically, Appellants argue that Kikuchi's
nozzle 51 as shown in Figure 25 is configured to direct air only onto the
surface of shutter 5, rather than at the peel interface, and that no cooling is
occurring as Kikuchi' s intermediate transfer media is peeled from the shutter
(which corresponds to the "product" recited in the claims). App. Br. 9-11.
Appellants do not dispute the Examiner's interpretation of "peel
interface" as "a location where the intermediate transfer media is peeled
from the product." Ans. 3. See App. Br. 11; Reply Br. 3 ("The peel
interface of example embodiments of the claims is illustrated in Fig. 3 of the
present application ... as element 66, 'defined where the intermediate
transfer media is peeled from the product."') We have reviewed the claim
language and Specification in light of the interpretation of "peel interface"
presented by the Examiner, and determine that the Examiner's interpretation
is the broadest reasonable interpretation, as we are required to apply. See In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) ("the
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Application 12/3 51, 823
PTO must give claims their broadest reasonable construction consistent with
the specification. . . . Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.").
Applying that construction of "peel interface" to Kikuchi, the
Examiner's findings support the conclusion that Kikuchi anticipates claim 1.
The Examiner correctly finds that Kikuchi teaches in Figures 18, 19, and 25
that nozzle 51 provides a cooling stream of air to the side of shutter 5 in the
location where thermal transfer film 10 is peeled from shutter 5. Ans. 4.
Additionally, Appellants' arguments concerning the direction of air from
nozzle 51 as shown in Figure 25 are not persuasive of reversible error
because Figure 18 (not Figure 25) shows the location of nozzle 51. See id.
A person of ordinary skill in the art would have understood that the
depiction of nozzle 51 in Figure 25 does not represent its location in relation
to other parts of the apparatus; for example, Figure 25 does not show the
thermal transfer cooling unit to which nozzle 51 is attached, as shown in
Figure 18.
Any additional arguments concerning claim 1 raised by Appellants in
their Appeal Brief, but not discussed explicitly in this Decision, have been
fully addressed by the Examiner in the Answer and we concur in the
Examiner's determination that these arguments are unpersuasive for the
reasons stated in the Answer. See Ans. 2-9 (Response to Argument). With
respect to the rejections under 35 U.S.C. § 103(a), all of which include
Kikuchi, Appellants rely on the same arguments as above. Accordingly, we
find that the Examiner did not reversibly err, and we affirm the rejections of
claims 1 and 3-24.
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Application 12/3 51, 823
Claim 2: New Ground of Rejection
Claim 2 depends from claim 1 and additionally recites that the blower
is configured to selectively provide the cooling stream of air
proximate the peel interface between the intermediate transfer
media and the product when the product is expelled from the
transfer assembly along the second direction, but not provide the
cooling stream of air proximate the peel interface between the
intermediate transfer media and the product when the product is
received into the transfer assembly along the first direction.
App. Br. 15, Claims App'x. Appellants argue that claim 2 is patentably
distinct because Kikuchi does not provide a cooling stream of air proximate
the peel interface when the product is expelled from the transfer assembly
along the second direction. App. Br. 13-14.
As with our analysis of claim 1 above, we begin by determining the
scope of the claim. As an apparatus claim, claim 2 is directed to a structure,
i.e., a blower. Functional recitations concerning how the blower is used do
not limit the claimed structure. Therefore, claim 2 must be distinguished
from the prior aii in terms of structure rather than function. See Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990)
("[A]pparatus claims cover what a device is, not what a device does."); see
also In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (holding that
a funnel disclosed for oil dispensing anticipated a claim to a funnel-like
structure employed for dispensing popcorn and that applicant had the burden
to prove that the funnel was not capable of dispensing popcorn once the
Examiner established a similarity in structure). Appellants' argument about
the operation of Kikuchi's blower (App. Br. 13-14), however, is based on
distinguishing Kikuchi's function, rather than its structure.
The Examiner's Answer responded to Appellants' argument by
describing the operation of Kikuchi's blower (nozzle 51) rather than setting
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Application 12/3 51, 823
forth a proper claim interpretation based on the structure recited in claim 2.
Ans. 9--10. Thus, we enter a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b) of claim 2 as anticipated by Kikuchi. Based on the same findings
of the Examiner with regard to claim 1, Kikuchi is capable of performing the
function recited in claim 2 and therefore meets the claim. In re Schreiber,
128 F.3d at 1477. The Examiner established a reasonable basis that
Kikuchi's nozzle 51 is capable of the claimed use. Id. at 1478.
Accordingly, Appellants' arguments with respect to claim 2 do not persuade
us of reversible error in the rejection.
SUMMARY
We AFFIRM the Examiner's rejections of claims 1-24, but we
designate our affirmance a NEW GROUND OF REJECTION with respect
to claim 2 because our reasoning differs from that of the Examiner.
37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . ..
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Application 12/3 51, 823
ORDER
AFFIRMED&
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
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