HP INDIGO B.V.Download PDFPatent Trials and Appeals BoardJun 1, 202015076600 - (D) (P.T.A.B. Jun. 1, 2020) Copy Citation 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. 15/076,600 03/21/2016 Mark Sandler 84449618 2098 22879 7590 06/01/2020 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 EXAMINER HINZE, LEO T ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 06/01/2020 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): ipa.mail@hp.com jessica.pazdan@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK SANDLER, SHAI LIOR, EYAL PELEG, NATI SINUANY, DROR KELLA, SHAHAR STEIN, GEORGE TRENDAFILOV, and TSAHI ROSENBAOM Appeal 2019–004014 Application 15/076,600 Technology Center 2800 Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–6, 9–12, 14–16, and 18–23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as HP Indigo B.V. Appeal Br. 2. Appeal 2019–004014 Application 15/076,600 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below (with text in bold for emphasis): 1. An embossing apparatus comprising: an embossing die made up of a printed relief pattern made up of multiple layers of a deposited material; a first cylinder having a resilient surface to deposit an ink image onto a media, the resilient surface for pressing the media against the embossing die such that embossed features corresponding to the printed relief pattern on the embossing die are formed in the media; and an impression layer in a printer comprising a printed alignment image, the embossing die to be aligned with the alignment image on the impression layer of the printer. REFERENCES The prior art relied upon by the Examiner is: Appeal 2019–004014 Application 15/076,600 3 Name Reference Date Simson US 3,403,621 Oct. 1, 1968 Hook US 6,170,393 B1 Jan. 9, 2001 Jennings US 6,248,211 B1 June 19, 2001 Ben-Avraham US 7,078,141 B2 July 18, 2006 Sandler US 9,296,199 B2 Mar. 29, 2016 Verhoest US 2004/0131778 A1 July 8, 2004 Filzmoser US 2005/0212184 A1 Sept. 29, 2005 Boukaftane US 2009/0136679 A1 May 28, 2009 Vanmaele US 2010/0007692 A1 Jan. 14, 2010 Gullentops (“Gullentops ‘048”) US 2011/0249048 A1 Oct. 13, 2011 Gullentops (“Gullentops ‘065”) EP 2199065 A1 June 23, 2010 THE REJECTIONS 1. Claims 1, 3–6, 9–12, 15, 16, and 18–20 are rejected on the ground of nonstatutory double patenting. 2. Claims 1, 4–6, and 18–22 are rejected under pre-AIA 35 U.S.C. §103(a) as being unpatentable over Simson in view of Boukaftane, Verhoest, Gullentops ‘065, Gullentops ‘048, and Filzmoser. 3. Claim 3 is rejected under pre-AIA 35 U.S.C. §103(a) as being unpatentable over Simson, Boukaftane, Verhoest, Gullentops ‘065, Filzmoser and further in view of Ben-Avraham. 4. Claims 9, 14–16, and 23 are rejected under pre-AIA 35 U.S.C. §103(a) as being unpatentable over Simson in view of Ben-Avraham. 5. Claims 10–12 are rejected under pre-AIA 35 U.S.C. §103(a) as being unpatentable over Simson, Ben-Avraham, Boukaftane, Verhoest, Gullentops ‘065, and Filzmoser. Appeal 2019–004014 Application 15/076,600 4 OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in 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.”). After considering the argued claims and each of Appellant’s arguments, we are persuaded of reversible error in the appealed rejections (with the exception of Rejection 1 which is summarily affirmed). Rejection 1 Appellant has chosen not to address the double patenting rejection, and requests that this rejection be held in abeyance. Appeal Br. 11. Because Appellant does not contest this rejection, we summarily affirm it. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection). Rejections 2–5 There is a dispute as to whether Simson teaches the aspect of claim 1 pertaining to “an impression layer in a printer comprising a printed alignment image, the embossing die to be aligned with the alignment image on the impression layer of the printer”. This claim element is illustrated in Appellant’s Figure 5B (reproduced below), and discussed in paragraph [0045] of Appellant’s Specification. Appeal 2019–004014 Application 15/076,600 5 Paragraph [0045] of Appellant’s Specification discloses that as shown in Appellant’s Figure 5B, to properly align the separately formed embossing Appeal 2019–004014 Application 15/076,600 6 die (540), an alignment image or images (555) is printed on the impression layer (550). The alignment image(s) is used to align the embossing die (540) on the impression cylinder (545). The embossing die (540) can be adhered to the impression cylinder (545) in a number of ways, including adhesive, vacuum suction, electrostatic forces, clamping or other techniques. Spec. [0045]. In view of the above description, the alignment image (555) is a printed image which operates as an alignment feature. The Examiner views Simson as teaching a printed alignment image as explained on page 4 of the Answer (which we do not repeat herein). In so doing, the Examiner interprets the word “image” as being a mark on the surface of an impression layer. Ans. 4. However, this cannot be disconnected from the word “printed” in claim 1. That is, the claim requires that the image is a “printed” alignment image, not merely any image which includes a mark not printed (e.g., the aperture that is cut as in Simson (col. 4, l. 22)). The Examiner thus views the aperture 46 of Simson as satisfying this claim term. Ans. 4–5. Simson, col. 4, ll. 17–22. Appellant argues, inter alia, that Simpson does not teach this limitation. Appeal Br. 12. Appellant submits that claim 1 requires that the embossing die is to be aligned with a printed alignment image. Appellant argues that the Examiner relies on portions of Simson that teach at most aligning a die member with an aperture (the aperture is item 46 shown in Simson’s Figure 2; Simson, col. 4, ll. 17–31), and does not teach aligning the embossing die with a “printed alignment image” as claimed. Reply Br. 6. Appellant states that Simson thus does not teach or suggest “a printed alignment image” with which an embossing die is aligned, but rather Appeal 2019–004014 Application 15/076,600 7 describes an embossing die being aligned with an aperture. Id. We are persuaded by this argument, and thus reverse Rejection 2. We also reverse Rejection 3–5 since the Examiner’s reliance upon the additional secondary references in these rejections does not remedy the aforementioned deficiencies of Simson. CONCLUSION We reverse the Examiner’s decision, except for Rejection 1 (which is summarily affirmed). Appeal 2019–004014 Application 15/076,600 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Affirmed 1, 3–6, 9– 12, 15, 16, 18–20 Nonstatutory Double Patenting 1, 3–6, 9– 12, 15, 16, 18–20 1, 4–6, 18– 22 103(a) Simson, Boukaftane, Verhoest, Gullentops ‘065, Gullentops ‘048, Filzmoser 1, 4–6, 18– 22 3 103(a) Simson, Boukaftane, Verhoest, Gullentops ‘065, Filzmoser, Ben- Avraham 3 9, 14–16, 23 103(a) Simson, Ben- Avraham 9, 14–16, 23 10–12 103(a) Simson, Ben- Avraham, Boukaftane, Verhoest, Gullentops ‘065, Filzmoser 10–12 Overall Outcome 14, 21–23 1, 3–6, 9– 12, 15, 16, 18–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation