Ex Parte Pattekar et al

Patent Trial and Appeal Board

Aug 8, 2016

12856489 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/856,489 08/13/2010 Ashish Pattekar
81941 7590 08/09/2016
PARC-XEROX/BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
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.
20090939-US-NP I
8538P023
2225
EXAMINER
THIES, BRADLEY W
ART UNIT PAPER NUMBER
2853
MAILDATE DELIVERY MODE
08/09/2016 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 ASHISH P ATTEKAR and ERIC PEETERS 1
Appeal2015-002435
Application 12/856,489
Technology Center 2800
Before PETER F. KRATZ, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-9, 11, and 23-27. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to an apparatus for thermal ink
transfer. E.g., Spec. i-f 1; Claim 1. Claim 1 is reproduced below from page
19 (Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the Real Party in Interest is Palo Alto
Research Center Incorporated. Br. 3.
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Application 12/856,489
1. An apparatus comprising:
an endless belt having a thin thickness to transfer ink from an ink
donor roll to an image substrate based on a pattern of a fountain
solution on the belt, wherein thickness of the fountain solution is
less than 2 µm, and wherein the thin thickness of the belt is less
than 1 mm;
a heating unit to heat the belt to an ink accepting temperature
uniformly across a width of the belt in vicinity of contact
between the belt and the ink donor roll,
wherein the belt includes a surface that comprises silicone; and
a cooling roll to cool the belt as the belt travels from the ink donor
roll to the image substrate by making contact with a side of the
belt that is opposite to a side of the belt receiving ink from the
ink donor roll,
wherein the fountain solution pattern is created by a fountain
solution subsystem, the belt being blanket coated with the
fountain solution and then the fountain solution being selectively
removed from certain regions to create the pattern, and
wherein the fountain solution is selectively removed from
regions of the endless belt through application of energy using
(i) a laser prior to the contact between the belt and the ink donor
roll or (ii) an array of hot air jets.
REJECTIONS ON APPEAL
1. Claims 1-9, 11, and 23-27 stand rejected under 35 U.S.C. § 112,
i-f 1, for failure to comply with the written description requirement.
2. Claims 1-5, 7-9, 11, and 23-27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over De Joseph et al. (US 2009/0056578 Al,
published Mar. 5, 2009) in view of Stowe et al. (US 2010/0085585 Al,
published Apr. 8, 2010), further in view of Berg et al. (US 2005/0178281
Al, published Aug. 18, 2005), Wu et al. (US 2010/0255413 Al, published
Oct. 7, 2010), and Furuyama (US 6,879,333 B2, issued Apr. 12, 2005).
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Application 12/856,489
3. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over De Joseph in view of Stowe, Berg, and Wu, and Furuyama, further in
view of Gray (US 2004/0011232 Al, published Jan. 22, 2004).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final Act.
4--17; Ans. 2-7.
Rejection 1
In the Final Action, the Examiner concludes that all claims on appeal
"fail[] to comply with the enablement requirement" because "the
[S]pecification does not disclose heating the belt to an ink accepting
temperature uniformly across a width of the belt in vicinity of contact
between the belt and ink donor roll." Final Act. 2-3 (emphasis in original).
The Examiner's analysis, however, implicates the written description
requirement of§ 112. See id. (discussing whether the Specification
discloses certain claim limitations). In the Answer, the Examiner refers to
the rejection as a written description rejection. See Ans. 2--4. In the Appeal
Brief, the Appellants treat the rejection as a written description rejection.
See Br. 2 7-9. Because the Examiner and the Appellants appear to agree that
the rejection was based on the written description requirement of§ 112,
2 In this decision, citations to "Br." are to the Supplemental Appeal Brief
filed on January 22, 2015.
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Application 12/856,489
rather than the enablement requirement, we likewise treat the rejection as a
written description rejection.
We affirm the rejection. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) ("[T]he test for [compliance with the
written description requirement] is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date."). In a
claim amendment dated October 28, 2013, the Appellants amended the
"heating unit" limitation of claim 1 as follows:
a heating unit to heat the belt to an ink accepting temperature
uniformly across a width of the belt locally as needed in vicinity
of contact between the belt and the ink donor roll[.]
As the Examiner explains, the Specification repeatedly references heating
the belt "locally" "as needed," e.g., Spec. i-f 5 ("Summary" of the invention),
i-f 6 (same), i-f 13 (Detailed Description), i-f 27, but nowhere refers to heating
the belt "uniformly across a \vidth."
The Appellants' argument consists almost entirely of lengthy block
quotes from the Specification with certain portions emphasized. See Br. 7-
8. As the Examiner points out, however, it is not clear from the face of the
quoted language how that language shows written description support for the
disputed claim language, see Ans. 3, and the Appellants provide no
persuasive explanation, see Br. 7-9. As the Examiner notes, Ans. 3,
portions of the quoted and emphasized language specifically disclose, for
example, "heating and cooling at the desired local regions," Spec. i-f 16
(emphasis added), which seems to suggest targeted "local" heating of the
belt rather than heating "uniformly across a width of the belt," as currently
recited by claim 1.
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Application 12/856,489
On this record, a preponderance of the evidence supports the
Examiner's findings, and the Appellants have not adequately explained how
the Specification provides written description support for the disputed claim
language. The Appellants have not identified reversible error in the
Examiner's rejection. Cf In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections .... ").
Re} ections 2 and 3
The Appellants argue the claims as a group, focusing on limitations
that appear in claim 1. Therefore, our decision with respect to claim 1 is
dispositive of all claims on appeal.
The Examiner finds, inter alia, that Stowe teaches a heating unit that
heats the belt uniformly across the width of the belt, Final Act. 8; Ans. 4--5,
and that Berg teaches the use of a fountain solution subsystem to create a
fountain solution pattern by selectively removing certain regions of the
found solution to create a pattern, Final Act. 10-11; Ans. 5---6.
The Appellants first argue that Stowe teaches "pattern-wise" heating
of the belt and therefore fails to teach heating uniformly across the width of
the belt. Br. 10.
In the Answer, the Examiner acknowledges that Stowe teaches
pattern-wise heating, but the Examiner explains that Stowe also teaches that
"[ m ]any different optical configurations can be used to generate the second
optical energy source into the shape of a line source with a flat-top uniform
profile across the width of the imaging drum." Ans. 4--5 (emphasis added;
quoting Stowe i-f 38). The Examiner further finds that "Stowe would have to
include in the pattern-wise heating a pattern heating uniformly across the
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Application 12/856,489
width of the belt as one of the patterns. At some point the printer would
have to print a line across the width of the belt." Ans. 5.
Stowe teaches the use of two energy sources. Stowe i-fi-135-38. The
first energy source "pattern-wise tune[ s] the energy transfer characteristic of
the material of the mask layer 12." Id. i135. The second energy source
"deposit[s] optical energy in a narrow line fashion over mask layer 12,
which then selectively reflects, absorbs, or transmits this energy based upon
the tuned state of the mask layer. Thus, the temperature profile of the
surface 10 is then image-wise realized." Id. Stowe teaches that "[m]any
different optical configurations can be used to generate the second optical
energy source into the shape of a line source with a flat-top uniform profile
across the width of the imaging drum." Id. i138.
In view of those teachings, it appears that Stowe's second energy
source heats the belt according to the pattern-wise tuning of the mask layer
12, and that the second energy source is capable of heating uniformly across
a width of the belt, i.e., in a "uniform profile across the width of the imaging
drum." Id. i-fi-135-38. While it does not appear that Stowe's second energy
source constantly heats the belt uniformly across its width, the Examiner
finds that the second energy source would heat uniformly across the width at
least when "the printer would have to print a line across the width of the
belt." Ans. 5.
The Appellants have not filed a Reply Brief to challenge the
Examiner's interpretation of Stowe i138 or to challenge the Examiner's
finding that Stowe's heating unit would heat the belt uniformly across its
width at least when a line is being printed across the width of the belt. The
Examiner's findings on those issues are supported by the record.
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Accordingly, the Appellants' arguments do not persuade us of reversible
error. Cf Jung, 637 F.3d at 1365.
The Appellants also argue that "there is no teaching in Berg [of]
selectively removing the fountain solution layer from regions of the surface
of the print carrier 10 using (i) a laser prior to the contact between the belt
and the ink donor roll or (ii) an array of hot air jets." Br. 16 (emphases in
original).
In the Final Action, the Examiner relies on i-f 27 of Berg, which
teaches:
The generally ink-repelling fountain solution layer 1s
subsequently structured via an image generation device 26. In
the present case, a laser beam 28 is used for this. In this
structuring process, ink-attracting regions and ink-repelling
regions are generated corresponding to the structure of the print
image to be printed. The structured fountain solution layer
subsequently arrives at an inking system 30 which transfers ink
from a reservoir 3 8 to the surface of the print carrier 10 with the
aid of the rollers 32, 34, 36. The oil-containing ink attaches at
regions without the water-containing fountain solution. It is to
be noted that the ink can also be transferred onto the surface of
the print carrier 10 via spraying, scraping or condensation.
As the Examiner explains in detail in the Answer, see Ans. 6, that paragraph
does appear to teach or otherwise render obvious the limitations disputed by
the Appellants. In particular, it suggests that a laser is used to selectively
remove fountain solution to generate ink-attracting and ink-repelling regions
that correspond to the image to be printed, and that the selective removal
occurs prior to inking. Berg i-f 27. The Appellants' argument, which
consists primarily of lengthy quotes with certain portions emphasized, see
Br. 16-18, fails to show reversible error in the Examiner's findings and
conclusions. Cf Jung, 637 F.3d at 1365; In re Lovin, 652 F.3d 1349, 1357
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Application 12/856,489
(Fed. Cir. 2011) ("a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art" is
unpersuasive).
In view of the arguments presented by the Appellants, we affirm the
Examiner's rejection of claim 1.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-9, 11, and 23-27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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