Ex Parte 6797454 et al

Patent Trial and Appeal Board

Nov 20, 2014

95001962 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,962 04/11/2012 6797454 2156-Reexam 9 4011
24998 7590 11/21/2014
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
11/21/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

MACDERMID PRINTING SOLUTIONS LLC
Requester and Appellant

v.

E.I. DUPONT de NEMOURS & CO.
Patent Owner and Respondent
____________

Appeal 2014-001756
Reexamination Control 95/001,962
Patent 6,797,454 B1
Technology Center 3900
____________

Before MARK NAGUMO, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal by the Third-Party Requester from the
Patent Examiner’s decision not to adopt proposed rejections of the claims in
an inter partes reexamination of U.S. Patent 6,797,454 B1. The Board’s
jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We
AFFIRM.
I. BACKGROUND
The patent in dispute in this appeal is U.S. Patent 6,797,454 B1
(hereinafter, “the ’454 patent”), which issued September 28, 2004 to Melvin
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Harry Johnson, et al. A request for inter partes reexamination under 35
U.S.C. §§ 311-318 and 37 C.F.R. §§ 1.902-1.997 for the ’454 patent was
filed April 11, 2012 by Requester and Appellant, MacDermid Printing
Solutions LLC (hereinafter “Requester”). Request for Inter Partes
Reexamination 1; Requester Appeal Brief 1, dated August 23, 2013
(hereinafter “Req. App. Br.”). The Patent Owner is the E.I. DuPont de
Nemours & Co. Patent Owner Respondent Brief 1, dated September 20,
2013 (hereinafter “PO Res. Br.”).
The ’454 patent is the subject of a civil action in U.S. District Court
for the District of New Jersey styled E.I. DuPont De Nemours & Co. v.
MacDermid Printing Solutions LLC, 3:10-cv-03409 (MLC), which is
currently stayed pending the outcome of the present reexamination
proceeding.
Originally patented claims 1, 7-14, and 17-22 have been cancelled.
Claims 2-6, 15, and 16 have been confirmed by the Examiner, which is
being appealed by the Requester. An oral hearing was held June 4, 2014,
and a transcript of the hearing was entered into the record on August 1,
2014.
The invention described in the ’454 patent is directed to a method and
apparatus for processing a relief pattern on a flexographic plate by taking
advantage of the melting point difference between irradiated and
unirradiated areas of a composition layer comprising a photoinitiator. The
method includes thermodeveloping a photosensitive element comprising the
composition layer supported by a flexible substrate. The photosensitive
element is developed by heating the composition layer above the melting
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point of the unirradiated area, but below the melting point of the irradiated
area and pressing a heated absorbent layer against the melted portion in
order to remove some of the composition layer in the unirradiated area to
form a relief pattern. See Abstract, col. 1, ll. 9-15, col. 3, l. 48-col. 4, l. 36,
and col. 5, ll. 26-38. The apparatus is defined by various devices and means
to accomplish the steps of the process.
Requester appeals the Examiner’s decision not to maintain 35 separate
proposed rejections under 35 U.S.C. § 103. Each proposed rejection
includes a similar reliance on some combination of Bhateja,1 Martens,2 or
both, in view of either Leavitt3 or Scott.4 Examiner’s Right of Appeal
Notice 7-12, mailed June 7, 2013 (hereinafter “RAN”).5 In the interest of
brevity, we will not list each of the individual rejections.
II. THE CLAIMS
Claims 2 and 156 are representative of the claims on appeal and read
as follows (with reference numerals added in brackets corresponding to
exemplary elements shown in the drawings of the ’454 patent) (emphasis
added):

1 Bhateja et al., WO 96/144603, published May 17, 1996.
2 Martens, et al., WO 98/13730, published April 2, 1998.
3 Minard A. Leavitt, US 3,850,635, issued November 26, 1974.
4 Richard D. Scott, US 4,198,145, issued April 15, 1980.
5 Requester identifies 39 separate proposed rejections because the Examiner
combines Requester’s Rejections 9 and 19, Rejections 10 and 20, Rejections
17 and 27, and Rejections 18 and 28 in Examiner’s Rejections IX, X, XVII,
and XVIII, respectively. See RAN 8-10; Req. App. Br. 5-8.
6 Claims 2 and 15 were amended during reexamination by cancelling
independent claims 1 and 14 and incorporating the language of claims 1 and
14 into claims 2 and 15, respectively. Accordingly, claims 2 and 15 contain
no new limitations over claims 2 and 15 from the original patent.
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2. An apparatus for forming a relief pattern from a
photosensitive element [11 (see Fig. 1); 16 (Fig. 15)]
comprising a flexible substrate [15 (Fig. 1)] having an exterior
surface and an interior surface, and a composition layer [17
(Fig. 1)]] on the substrate capable of being partially liquefied,
the composition layer having an exterior surface and an interior
surface, with the composition layer and flexible substrate joined
at their respective interior surfaces, comprising:
a roller [78 (shown in detail in Fig. 16)]] mounted for
rotation in a first frame portion for supplying an absorbent
material [76] to the exterior surface of the composition layer;
a drum [18] mounted for rotation in a second frame
portion with means for supporting the photosensitive element
on an outer circumferential surface of the drum with the
exterior surface of the flexible substrate contacting said outer
surface, the drum positioned for delivering the photosensitive
element to the absorbent material, wherein at least one of the
first and second frame portions are movable relative to the
other;
first heating means [300] for applying heat to the exterior
surface of the composition layer on the drum adjacent where the
absorbent material contacts the layer at the roller, the first
heating means adapted to heat the exterior surface of the layer
to a temperature T1 which is equal to or greater than a
temperature T2 sufficient to cause a portion of the layer to
liquefy, while maintaining the exterior surface of the flexible
substrate at a temperature T3 at least 20°F below temperature
T1;
second heating means for heating the roller to a
temperature capable of heating the exterior surface of the
composition layer to a temperature T4 which is equal to or
greater than temperature T2 while the absorbent material is
contacting the exterior surface of the layer and while
maintaining the exterior surface of the flexible substrate at the
temperature T3 which is at least 20°F below temperature T4;
pressure means [arms 312/314] for causing the
photosensitive element and the absorbent material to come into
contact between the drum and the roller at a pressure sufficient
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for at least a portion of the liquefied material of the composition
layer to be absorbed by the absorbent material;
separation means [idler roller 313] for separating the
photosensitive element from the absorbent material; and forced
cooling means [blower 356 and optional shroud 358 (Fig. 15) or
drum arrangement (Fig. 19)] for cooling the photosensitive
element.

15. A method for forming a relief pattern from a
photosensitive element comprising a flexible substrate having
an exterior surface and an interior surface, and a composition
layer on the substrate capable of being partially liquefied, the
composition layer having an exterior surface and an interior
surface, with the composition layer and flexible substrate joined
at their respective interior surfaces, comprising:
supplying an absorbent material to the exterior surface of
the composition layer with a roller operating at a temperature Tr
that heats the absorbent material;
delivering the photosensitive element to the absorbent
material with a rotating drum and supporting the element with
the exterior surface of the flexible substrate in contact with an
outer circumferential surface of the drum, wherein each rotation
of the drum defines a cycle;
heating the exterior surface of the composition layer
sufficient to cause a portion of the layer to liquefy with a heater
operating at a temperature Th;
pressing the photosensitive element and the heated
absorbent material into contact between the drum operating at a
rotation speed, S, and the roller at a pressure, P, sufficient for
the heated absorbent material to liquefy at least a portion of the
exterior surface of the composition layer and to absorb the
liquefied material;
separating the photosensitive element from the absorbent
material;
repeating the supplying, delivering, heating, pressing,
and separating steps for a predetermined number of cycles;
changing at least one of the process parameters selected
from the group consisting of temperature of the roller Tr,
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temperature of the heater Th, pressure P, and rotation speed S,
during at least one of the supplying, delivering, heating, and
pressing steps for at least one of the predetermined number of
cycles; and
forcefully cooling the photosensitive element after
separating the element from the absorbent material, by a
cooling means having a temperature Tc wherein the repeating
step includes the cooling step and the changing step includes
the temperature Tc of the cooling means as one of the process
parameters in the group.
According to the ’454 patent, the problem of thermal distortion of the
flexible substrate of the photosensitive element may be met by establishing a
temperature differential of at least 20° between the exterior surface of the
composition layer and the temperature of the substrate. See ’454 patent,
Abstract, col. 3, ll. 48-54, col. 4, ll. 12-28, col. 21, l. 57 to col. 22, l. 3, col.
22, ll. 23-42, col. 26, ll. 39-46. The ’454 patent discloses a second
embodiment which further includes a forced cooling means. See id., col., 4,
ll. 37-39, col. 23, l. 55 to col. 24, l. 42.
At issue in this appeal is the feature of claim 2 of “forced cooling
means for cooling the photosensitive element” and the step in claim 15 of
“forcefully cooling the photosensitive element after separating the
[photosensitive] element from the absorbent material, by a cooling means.”
Figure 15 of the ’454 patent is reproduced below and illustrates one
embodiment of a forced cooling means recited in claim 2 comprising a
blower 356 and optional shroud 358 “to extend from the blower in a
direction around the drum 18 in close proximity to the surface 22 of the
drum.” ’454 patent, col. 23, ll. 35-39.
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Figure 15 depicts a side cross-sectional view partially in schematic of
the second embodiment of the ’454 patent. ’454 patent, col. 5, ll. 1-2.
Blower 356 and optional shroud 358 depicted in the drawing is described as
a “cooling means.”
The ’454 patent further describes that the cooling means may
alternatively be “to circulate a cooling fluid beneath the drum support
surface 22 to cool the flexible substrate 15 by direct contact” or “forceably
circulating cooling gases, such as air, through the interior of the drum
structure 18 of the first or second embodiments” as illustrated in Figure 19,
which is reproduced below. Id. col. 23, l. 67-col. 24, l. 3 and col. 24, ll. 10-
13 (emphasis added).
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Figure 19 depicts a side cross-sectional view partially in schematic of
an alternative cooling embodiment for the drum. Id. col. 5, ll. 20-21.
The “cooling means” comprises electrically powered fans 434 which
force air [arrows 444] from axial ends 426 [left, not labeled] and 428
[right], into plenum 420. The impingement of air in plenum 420 directly on
the inner surface 424 of the drum 18 increases the heat transfer from the
surface 424. Heated air exits at the axial ends 426 and 428, following
arrows 440. Id. at col. 24, ll. 10-43.
The ’454 patent states that cooling drum is an alternative to a drum
that employs a heater 21 to stabilize the temperature of the drum and
substrate. Id., col. 24, ll. 5-9.

III. APPEAL BY REQUESTER
Requester’s proposed obviousness rejections each rely on Bhateja
and/or Martens for teaching the basic structure of the claimed apparatus and
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method. Bhateja recognizes a problem in the art of thermal distortion of the
flexographic printing plates (corresponding to the claimed “photosensitive
element”) during development. Bhateja, p. 2, ll. 16-21. Bhateja solves this
problem by annealing the polymeric substrate before development. Bhateja,
p. 3, l. 30 to p. 5, l. 6. This procedure was adopted by Martens. Martens, p.
5, ll. 17-20. Neither Bhateja nor Martens expressly teaches a forced
cooling means, as recited in claim 2, or a step of “forcefully cooling the
photosensitive element after separating the element from the absorbent
material, by a cooling means” as recited in claim 15.
Requester contends that the teaching in Bhateja and Martens of
thermal distortion in a flexible substrate would have suggested cooling the
photosensitive element to the skilled artisan. Req. App. Br. 9 and 18-21.
Alternatively, Requester contends that forced cooling of a photosensitive
element in the apparatus and method described in Bhateja and Martens
would have been obvious to the skilled artisan based on the teaching of force
cooling a substrate-backed photosensitive film in either Scott or Leavitt.
Req. App. Br. 13-18.
The Examiner does not adopt the rejections because Bhateja and
Martens are silent with respect to forced cooling in combination with either
a temperature differential (claim 2) or in combination with changing
processing parameters (claim 15) for addressing the problem of thermal
distortion. RAN 20-21. The Examiner also finds that Scott and Leavitt do
not solve the deficiencies of Bhateja and Martins. Id. at 15. The Examiner
determines that the teachings of Scott are incompatible with the process of
Bhateja and Martens in that Scott avoids contact between its heaters/blowers
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and the photographic film being processed. Id. at 16 and 22-29. The
Examiner further determines that the teachings of Leavitt are incompatible
with the process of Bhateja and Martens in that the film in Leavitt is not
supported directly by the drum, but rather is supported by air that escapes
from the passages in the microporous material that make up the cooled drum
34. Id. at 18-19 and 29-34.
The issue on appeal is:
Did the Examiner err in determining that using a forced cooling
means in the apparatus and method of Bhateja and Martens would not have
been obvious to one of ordinary skill in the art at the time of the invention
based on the teaching in Bhateja of thermal distortion and the teaching of a
forced cooling means described in Scott and/or Leavitt? We answer this
question in the negative and determine that the Examiner did not err in not
adopting the proposed rejection by Requester.
Discussion
Bhateja and/or Martens
Requester contends that “forced cooling” of the photosensitive
element would have been obvious to the skilled artisan based on the
teachings in Bhateja and incorporated in Martens of thermal distortion of the
photographic element. Req. App. Br. 18-21. Requester argues that Bhateja
teaches overheating of the substrate as the cause of thermal distortion. Id. at
18. According to the Requester, “[i]t is simply common sense to cool the
substrate if one knows that the substrate is being overheated during thermal
development leading to thermal distortion.” Id.
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Requester further contends that the terms “forced cooling means” and
“forcefully cooling . . . by a cooling means” in the claims means “actively
removes heat in order to cool the photosensitive element.” Id. at 19 (quoting
RAN 6-7). According to Requester, Bhateja and Martens inherently meet
this limitation by heating the drum to a maintenance temperature below that
of the developer roll to maintain a temperature gradient between the
substrate film and the photopolymer surface of the flexographic plate
(photosensitive element) which is squeezed between the drum and the roll.
Id. at 20.
We agree with the Examiner that forced cooling would not have been
either inherent or obvious based on the teachings of Bhateja and Martens.
RAN 14-15 and 20-21. Contrary to Requester’s proposed interpretation
(Req. App. Br. 19), a differential between a heated drum and hot
roller/developer roll cannot reasonably be encompassed under the phrases
“forced cooling means” or “forcefully cooling . . . by a cooling means,” as
the skilled artisan would have understood these phrases in light of the ’454
patent.
Since each of claims 2 and 15 refer to a “cooling means,” the recited
limitations are presumptively means-plus function limitations, and thus it is
necessary to look to the specification to identify the corresponding structure
(and equivalents thereof) for performing the recited function. In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc); Chicago
Board Options Exchange Inc. v. International Securities Exchange LLC, 677
F.3d. 1361, 1367 (Fed. Cir. 2012). The ’454 patent describes two structures
it considers “cooling means” each involving the application of a cooling
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element, namely an external blower or an internal coolant axially passed
through the drum. ’454 patent, col. 23, l. 55 to col. col. 24, l. 42; FIG. 15.
Therefore, the term “forced cooling means” is disclosed as a device that
forces a coolant fluid (e.g., air or a cooling liquid) over the substrate
(blower 356 and optional shroud 358 in Fig. 15) or under the surface of the
drum supporting the substrate (fans 434 in Fig. 19, or the alternative cooling
system described at column 24, lines 1-3). Requester has not provided
persuasive evidence to support a finding that the temperature differential
described in Bhateja and/or Martens is an equivalent structure, achieving
substantially the same function in substantially the same way by an art-
recognized equivalent structure. To the contrary, the ’454 patent
distinguishes a temperature differential between two heated surfaces from a
means for “forced cooling.” The means for “forced cooling” is described
only in the second embodiment of the ’454 patent and in addition to
providing the 20 degree temperature differential of the first embodiment,
which does not include a “forced cooling” means. ’454 patent, col. 21, l. 43
to col. 22, l. 43. Accordingly, Requester’s argument that Bhateja and/or
Martens teach either expressly or inherently a forced cooling means or a step
of forcefully cooling by a cooling means is based on an unreasonable
interpretation of the claim.
Whether a claimed invention would have been obvious is a question
of law, based on factual determinations regarding the scope and content of
the prior art, differences between the prior art and the claims at issue, the
level of ordinary skill in the pertinent art, and any objective indicia of non-
obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
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(2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18
(1966).
While we agree with the Requester that Bhateja and Martens
recognize that a problem to be solved is the thermal distortion of the
substrate, we are not persuaded that the skilled artisan would have solved the
problem of the thermal distortion by forcefully cooling the substrate as
taught by the ’454 patent. Bhateja and Martens teach two ways to alleviate
the problem of thermal distortion of the substrate, namely annealing the
substrate in advance, and providing a temperature differential between a
heated drum and a heated development roll. Bhateja, p. 3, l. 30 to p. 5, l. 6;
p. 2, l. 28 to p. 3, l. 2; Martens, p. 5, ll. 15-25; p. 15, ll. 12-17; p. 23, ll. 17-
26. Requester has not provided persuasive evidence to support a conclusion
that a skilled artisan having Bhateja and/or Martens would have added a
forced cooling means without the hindsight provided by the ’454 patent.
In KSR Int'l Co. v. Teleflex Inc., the Supreme Court set aside any
“rigid” application of the teaching, suggestion, motivation (“TSM”) test and
determined that the teaching may alternatively be implicit from the prior art
as a whole. 550 U.S. 398, 421 (2007). Nonetheless, it is the burden of the
moving party, here, the Requestor, to establish based on the evidence of
record what was common sense or common knowledge to the skilled artisan.
Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013) (“In
recognizing the role of common knowledge and common sense, we have
emphasized the importance of a factual foundation to support a party’s claim
about what one of ordinary skill in the relevant art would have known.”).
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The Requester relies on the Declaration of Dr. Vest to show that it is
reasonable for the skilled artisan to look to alternatives to annealing as a
solution to the thermal distortion problem described in Bhateja and Martens.
App. Br. 11-13; see Vest Decl. ¶¶ 10-17. Further, Drs. Cusdin, Gotsick, and
Vest provide unsupported opinion testimony that active cooling would have
been obvious. App. Br. 17; see Cusdin Decl. ¶¶ 62-63; Gotsick Decl. ¶ 48-
49; Vest Decl. ¶ 26. Dr. Vest in his declaration provided sufficient reasons
why a skilled artisan would have sought a different solution to the problem
described in Bhateja. However, there is insufficient evidence to find that
forced cooling would have been an obvious solution from a mere disclosure
that the distortion problem was caused by heating. We decline to accept a
conclusory assertion that to do so would have been “common sense” to the
skilled artisan without supporting evidence. In particular, the development
processes in Bhateja and Martens rely on controlled heating of the
photosensitive element substrate as a required feature. See Bhateja, p. 11, l.
9-11 (transport drum is maintained at 65°C); Martens, p. 16, l. 12-15
(element carrying substrate maintained at 60°C). Peterson, U.S. Patent
No. 5,279,697, is incorporated by reference into the teachings of Bhateja
(see Bhateja, p. 1, l. 30-p.2, l. 4) and is discussed in the ’454 patent. The
Examiner found that Peterson disclosed that the drum that supports the
substrate is a
preheating drum that is heated with an electrically heated
blanket mounted on an inner surface of a main wall of the
drum. The heat must travel through the wall of the drum and
through the flexible substrate to preheat the composition layer
to a temperature near the melt point of the unirradiated area.
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RAN 12-13 (quoting the ’454 patent, col. 2, ll. 34-39) (emphasis added).
Because the process that is used by Bhateja and Martens relies on preheating
of the drum that supports the substrate, the evidence of record is insufficient
to establish that the skilled artisan would have altered the controlled heating
of the substrate and instead employ forced cooling of the substrate.
Accordingly, we agree with the Examiner that claim 1 and claim 15,
and the claims that depend therefrom, are not obvious over the teachings of
Bhateja and/or Martens.

Bhateja and/or Martens and Scott or Leavitt
The Requester argues that Scott and Leavitt are analogous art to the
flexographic plates of Bhateja and Martens. App. Br. 15-17. While Scott
and Leavitt are directed to thermal development of a photographic image,
rather than a recessed flexographic plate as taught by Bhateja and Martens,
the photographic image is thermally developed on a substantially identical
substrate. App. Br. 15. The substrate of Scott and Leavitt, like the substrate
of Bhateja and Martens, suffers from thermal distortion during the
development process. Id. Scott solves this problem by supporting the film
substrate on a cool gas bearing as depicted in Figure 4 reproduced below.
See Scott, col. 2, ll. 5-31.
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Figure 4 depicts a schematic view of the profile of a thermal gradient
across the base of a photographic film emulsion 18. Scott, col. 2, ll. 45-46.
“Blower 46 may be arranged to counteract the air flow from preheater 42 as
well as the flow from heater 22 such that film 14 can be substantially evenly
suspended and supported by a gas bearing.”
Leavitt solves the thermal distortion problem in two ways. The first
solution is cumulative of the method described in Scott, namely spacing the
substrate between cool and hot air supplies, which may form a gas
supporting cushion, as depicted in Figure 1 reproduced below. See Leavitt,
col. 2, ll. 18-30.
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Figure 1 of Leavitt depicts a schematic, partially block diagram of
heat developing apparatus incorporating a decreasing temperature gradient is
established between first and second surfaces of a heat processable
photosensitive material. Leavitt, col 2, ll. 36-38 and col. 1, ll. 54-59. Spaces
labeled 18 and 23 indicate the spacing around film 10. Id., col. 3, ll. 4-7 and
22-29.
The second solution in Leavitt also involves supplying cooled and
heated air to opposing sides of the film. However, the teaching of Leavitt
includes cooled air supplied via a drum made of microporous material upon
which the film substrate is adjacently provided, as illustrated in Figure 3B
reproduced below. Leavitt, col. 4, l. 13 to col. 5, l. 8. The cooled air within
the drum escapes through the passages in the microporous material into the
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space between the film and the surface of the drum “to support film 30 in
spaced relationship from drum 34.” Leavitt, col. 4, ll. 23-27.

Figure 3B depicts a front partially sectional view of an alternative heat
developing apparatus. Leavitt, col. 2, ll. 41-44.
“To qualify as prior art for an obviousness analysis, a reference must
qualify as ‘analogous art,’ i.e., it must satisfy one of the following
conditions: (1) the reference must be from the same field of endeavor; or (2)
the reference must be reasonably pertinent to the particular problem with
which the inventor is involved.” K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d
1364, 1375 (Fed. Cir. 2012). “If a reference disclosure has the same purpose
as the claimed invention, the reference relates to the same problem, and that
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fact supports use of that reference in an obviousness rejection.” In re Clay,
966 F.2d 656, 659 (Fed. Cir. 1992).
Each of Scott and Leavitt addresses the same problem of thermal
distortion of a substrate as described in Bhateja. Accordingly, we agree with
Respondent that Scott and Leavitt are analogous art and thus relevant to the
teachings of Bhateja and Martens.
However, the mere presence of a known feature in analogous art is
insufficient to establish obviousness. “[A] patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). For a determination of obviousness,
there must be both a reason why the skilled artisan would have made the
combination and reasonable expectation of success based on a
preponderance of the evidence of record.
The Requester contends that cooling as taught by Scott and Leavitt is
a simple substitution for the annealing process of Bhateja. App. Br. 15.
Alternatively, the Requester contends that “a person of ordinary skill in the
art would need to make routine design choices to adapt the cooling means of
Leavitt and Scott to the apparatus of Bhateja and Martens; such alterations
would be simple and non-inventive.” App. Br. 16. For example, Requester
contends that “it would be easy to alter the drum to enable it to circulate
cooling gases, which would thereby cool the substrate.” App. Br. 18. In
support of this argument, Requester relies on the teachings of Hardin,7 which

7 US 4,756,249, issued July 12, 1998 to Philip J. Hardin. Requester did not
include Hardin as a prior art reference in the rejection of the claims of the
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describes providing a path for forcing cooling air through the interior of a
roller that is used in the inkers of printing presses. See Hardin, Abstract.
We disagree with the Requester. The difference in operation between
development of a flexographic plate and thermal development of a
photoimage are such that, without the hindsight knowledge of the ’454
patent, one of ordinary skill in the art would not have had predictable
expectation of success in applying forced cooling of a substrate as described
in Scott and Leavitt as part of the thermal development process and
apparatus of the flexographic plates of Bhateja and Martens. In particular,
the thermal development apparatuses of Bhateja and Martens operate
substantially the same as in the present invention, namely by heating the
irradiated photosensitive material and removing melted portions thereof by
pressing a web firmly against the photosensitive element. See e.g., Fig. 15 of
the ’454 patent reproduced above. In Bhateja, the material is only removed
by direct contact between the heated drum that holds the photosensitive
element and the heated roller supporting the web material. Accordingly, the
solution provided by Scott and the first solution of Leavitt, which include a
cooled gas bearing to support the film, is incompatible with the operation
taught by Bhateja and Martens because direct contact between the drum and
the hot developer roll is necessary to facilitate pressing the web into the
melted material. Requester has not shown that the ordinarily skilled worker
would have expected that the rigidity provided by a solid support also would
have been provided by a cooled gas bearing. We conclude that one of

’454 patent, only as evidence that designing a drum with a free flow of air
for cooling would have been within the skill of an ordinary artisan. App. Br.
17.
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ordinary skill in the art would not have had expected success in altering the
operation of the apparatus taught in Bhateja and Martens to facilitate forced
cooling of the substrate base in the manner described in Scott and the first
embodiment of Leavitt.
We recognize that “[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” App. Br. 17 (quoting In re Keller, 642 F.2d 413,425 (CCPA
1981). “A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” App. Br. 22 (quoting KSR, 550 U.S. at 420-21).
Nonetheless, Requester provides insufficient evidence that the skilled artisan
predictably would have been able to modify the gas bearing structure of
Scott and the first embodiment of Leavitt in a manner that would have
provided the necessary direct contact used in the development process of
Bhateja and Martens.
With respect to the second embodiment of Leavitt, in which the
cooling gas is provided in a microporous drum positioned adjacent the film,
we similarly find that the skilled artisan would not have had an expectation
of success in incorporating a cooled drum into the operation of the thermal
development apparatus of Bhateja and Martens. Our reasoning is explained
below.8

8 Similarly to the air bearing of the first embodiment of Leavitt, the
Examiner found that the microporous surface of the drum of Leavitt would
not have provided the direct contact used in the development process of
Bhateja and Martens. See RAN 19, 30-31, and 33. Requester presents
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However, Requester has not established that a skilled artisan would
have had a reasonable expectation that the processes of Bhateja and Martens
would operate properly with a cooled rather than a heated drum. The
development processes in Bhateja and Martens have specific heating
conditions that allow for the removal of the melted photosensitive material
without distorting the substrate. Those conditions include the controlled
heating of the photosensitive element substrate via a preheated drum as a
required feature. See Bhateja, p. 11, l. 9-11 (transport drum is maintained at
65°C [149°F]); Martens, p. 16, l. 12-15 (element carrying substrate
maintained at 60°C [140°F]). The record before us does not demonstrate
that the skilled artisan would have expected success in the overall process or
apparatus taught by Bhateja and Martens in cooling rather than heating the
drum supporting the substrate without the hindsight provided by the ’454
patent. See RAN 18 and 34.
Requester is proposing more than the simple and predictable
substitution of one known drum for another. The modification of the
process of Bhateja involves altering the thermal development process of

reasonable arguments about the nip of Bhateja and Martens overcoming the
air escaping from the micropores and pushing an air supported plate into
direct contact with the surface of the drum at the critical point in the process.
Req. App. Br. 26. However, we note that the embodiment of a drum
described in the ’454 patent has cooling air entering and exiting axially,
which does not interfere with the direct contact of the plate and the drum.
The axial arrangement is not described by Leavitt, and we have insufficient
evidence to determine whether an axial arrangement is critical to the
functioning of the process of Bhateja and Martens, to the extent that a cooled
rather than heated drum would have been obvious to one of ordinary skill in
the art in the first place.
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Bhateja and Martens to accommodate a cooled rather than a heated drum.
The only place where such a teaching is to be found in the present record is
in Patent Owner’s own disclosure of the invention. See ’454 patent, col. 24,
ll. 5-9. Requester has directed us to no persuasive evidence to suggest that
the skilled artisan would have understood such a change in drum
temperature reasonably would have been successful in the process of
Bhateja and Martens. While Scott teaches that the temperature of the
substrate in the photoimage development process of Scott could be
alternatively cooled or heated, there is insufficient persuasive evidence to
suggest that the heating conditions for developing a photo image are
substantially similar to that of the development process of Bhateja and
Martens that altering the support drum from a heated drum to a cooled drum
would have predictably allowed for the overall development (i.e., the
removal of material via a heated web) of the photosensitive plate.
While Hardin may provide evidence that cooled drums were known in
related art, the evidence of record does not show that the development
process of Bhateja and Martens would have been expected to be successful
with a cooled rather than a heated drum. Rather, the evidence shows that the
heating conditions for these devices are critical to their successful operation.
From the evidence of record, there is no persuasive expectation that
changing the drum from a heated structure to a cooled structure would
provide sufficient heating of the photosensitive element overall to allow for
removal of the melted photosensitive material.
Requester also argues that adding a forced cooling means would have
been obvious because there are a finite number of identified solutions in the
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art, and the skilled artisan would have good reason to use any of these
known techniques. App. Br. 15-16. The record before us lacks probative
evidence to support the Requester’s position that “there are a finite number
of identified solutions.” To the contrary, the record shows there are a great
variety of ways to address thermal distortion of the substrate, including
annealing of the substrate, and there may be others that are known in the art
that are not of record.

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
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appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

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PATENT OWNER:
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
WASHINGTON, DC 20006

THIRD-PARTY REQUESTER:
JOHN L. CORDANI
CARMODY & TORRANCE LLP
50 LEAVENWORTH STREET, P.O. BOX 1110
WATERBURY, CT 06271