Ex Parte 6966259 et al

Board of Patent Appeals and Interferences

Jun 27, 2011

90008004 (B.P.A.I. Jun. 27, 2011)

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.
90/008,004 06/29/2006 6966259 MSM0001 4056
7590 06/27/2011
JOHN L. CORDANI
CARMODY & TORRANCE LLP
50 LEAVENWORTH STREET
P.O. BOX 1110
WATERBURY, CT 06721
EXAMINER
PEIKARI, BEHZAD
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/27/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MacDERMID PRINTING SOLUTIONS, LLC
Appellant
____________

Appeal 2011-005931
Reexamination Control 90/008,004
Patent 6,966,259 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
MICHAEL HOELTER, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005931
Reexamination Control 90/008,004
Patent 6,966,259 B2

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MacDermid Printing Solutions, LLC, (“Appellant”) the owner of the
patent under reexamination (hereinafter the “‘259 Patent”), appeals under 35
U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-34 and 36-38
(Appeal Brief filed July 28, 2009, hereinafter “App. Br.,” at 2; Final Office
Action mailed March 30, 2009). We have jurisdiction under 35 U.S.C. §§
134(b) and 306.
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Michael S. Marcus (Request for Ex Parte
Reexamination filed June 29, 2006). According to the Appeal Brief, “[t]here
are no related appeals, interferences, or judicial proceedings known to
Appellant, Appellants’ [sic] legal representative or Assignee” (App. Br. 2).
We heard Patent Owner’s oral arguments on June 15, 2011, a written
transcript of which will be entered into the record in due course.
The ‘259 Patent states that the invention involves cylindrically shaped
printing sleeves which are readily axially mountable and dismountable from
a “complimentary” printing surface, where the printing sleeves have an
integral imageable surface. (Col. 1, ll. 5-10.)
Claims 1 and 19 on appeal read as follows (with underlining and
bracketing showing additions and subtractions relative to the original patent
claims):
1. A hollow cylindrical printing sleeve with an integral
imageable printing surface comprising:
a. a hollow cylindrical base;
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b. a substantially continuous cured floor layer
comprised of a cured polymer selected from the group
consisting of photopolymers[,] and polymers with a resilience
of at least 40% when cured; and
c. at least one layer of an imageable material.

19. A hollow cylindrical printing sleeve with an integral
imageable printing surface comprising:
(a) a hollow cylindrical base which is substantially
uniformly transparent or translucent to actinic radiation; and
(b) at least one layer of an imageable material on the
outer surface of the base,
wherein said imageable material comprises a
photopolymer and
wherein the base comprises a cured polymer resin which
is expandable using fluid pressure of less than about 100 psi
and which contracts to its original size when the fluid pressure
is removed.

(Claims App’x, App. Br. 37, 39.)

The Examiner relied upon the following as evidence of
unpatentability:
Fan EP 0 766 142 A1 February 4, 1997
McConell 5,301,610 April 12, 1994
Gruetzmacher 4,427,759 January 24, 1984
Leach 6,403,269B1 June 11, 2002
Cushner 5,798,019 August 25, 1998

Declaration of Robert M. Blomquist dated April 10, 2006.

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The Examiner rejected claims 1-34 and 36-38 as follows (Examiner’s
Answer mailed September 18, 2009, hereinafter “Ans.,” 5-32):
I. Claims 1, 2, 4-8, 10-17, 19-24, 26, 32, 33, and 38 under 35
U.S.C. § 102(b) as anticipated by Fan as evidenced by the
Blomquist Declaration (Ans. 5-20);
II. Claims 3, 9, 18, 25, 27-31, 34, 36, and 37 under 35 U.S.C. §
103(a) as unpatentable over Fan in view of Gruetzmacher (Ans.
20-26); and
III. Claims 1, 4-7, 13, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Leach in view of Cushner. (Ans. 27-32.)

ISSUES
Rejections I and II
The Examiner found that Fan as evidenced by the Blomquist
Declaration discloses a floor layer having a resilience of at least 40% as
recited in the claims. (Ans. 10.) Regarding claim 32, the Examiner
additionally stated, that Gruetzmacher, which is incorporated by reference in
Fan, discloses a desirable hardness for the cured polymers between 50-55
Shore A, which falls within the range of 30-70 Shore A. (Ans. 19.)
Appellant contends that the Blomquist Declaration is insufficient to
show that Fan inherently possesses a resilience as claimed because: (1) the
Blomquist Declaration does not test the resilience of the floor layer, but
rather the resilience of the photopolymerizable plate itself; (2) the Blomquist
Declaration does not use the same red dye as in Fan; and (3) the Blomquist
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Declaration uses a percentage of HEMA dye solution that is much greater
than the weight percentage used in Fan. (App. Br. 11-12.)
Regarding claim 32, Appellant additionally contends that resilience
and hardness are independent properties, such that the resilience values in
the Blomquist Declaration do not mean that a material having a specific
resilience value necessarily meets the hardness values recited in the claim.
(App. Br. 15-16.) Appellant also contends that Gruetzmacher discloses
different compositions than Fan. (Reply Br. 20-22, 34-35.)
Thus, the dispositive issues in this appeal are:
Did the Examiner err in finding that a cylindrical printing sleeve
including a floor layer having the recited resilience of at least 40% is
disclosed by Fan as evidenced by the Blomquist Declaration?
Did the Examiner err in finding that a cylindrical printing sleeve
including a floor layer having the recited hardness of 30 to 70 Shore A is
disclosed by Fan as evidenced by Gruetzmacher?

Rejection III
The Examiner found that Leach discloses all of the limitations of
claim 1 except that the base used to support the imageable layer is a hollow
cylinder. (Ans. 28.) The Examiner found that Cushner discloses that flat
printing plates may be reconfigured into seamless cylindrical printing
elements. (Ans. 28.) The Examiner concluded that it would have been
obvious to reconfigure the flat printing plates of Leach in accordance with
the methods disclosed in Cushner in order to enable the printing of
continuous designs. (Ans. 28-29.)
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Appellant contends that Leach discloses liquid photocurable
compositions that are cast as a layer between a backing sheet and a cover
sheet such that there is no teaching or suggestion to use the compositions in
cylindrical printing sleeves. (App. Br. 32.) Appellant argues that Cushner
discloses photopolymerizable materials, which are solid at room
temperature, and that the liquid layers of Leach would not be capable of
wrapping around a cylindrical printing cylinder. (App. Br. 32-33.)
An additional dispositive issue in this appeal is:
Did the Examiner err in concluding that the cylindrical printing sleeve
recited in the claims would have been obvious to one of ordinary skill in the
art in view of Leach and Cushner?

FINDINGS OF FACT (“FF”)
1. The ‘259 Patent discloses: “When cured the floor layer 14,
depending on the thickness and type of photopolymer should
have a resilience of from 40% to 70% and a hardness of from
30 to 70 Shore A….” (Col. 5, ll. 7-10.)
2. Fan discloses, in Example 3, a photopolymerizable hot melt
having the ingredients as indicated in the following table:

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The above table shows the components of Fan’s
photopolymerizable hot melt utilized in Example 3.
3. Fan is silent as to the resilience and hardness of the floor layers
expressly disclosed therein, including floor layers produced
from the photopolymerizable hot melts disclosed in Example 3.
4. The Blomquist Declaration provides data that is said to
replicate Example 3 of Fan, including a
“HMDA/Irgacure®/BHT/HEMA-Dye” “Monomer
formulation” in an amount of 13.24 Weight %, where the
“HEMA Dye Solution” is present in an amount of 36.30 weight
%, and contains 98.16% Hydroxyethyl methacrylate and 1.77%
Zappon 335 dye. (Blomquist Dec. para. 8.)
5. The Blomquist Declaration states that Red Dye 346, described
in Example 3 of Fan is no longer commercially available, but
that the chemical composition of the Zappon 335 dye is similar,
and that neither dye would alter the physical properties of the
resulting flexographic printing element. (Blomquist Dec. para.
10.)
6. The Blomquist Declaration measures the resilience of
“flexographic printing elements” including the components of
Table A in paragraph 8. (Blomquist Dec. para. 13.)
7. Gruetzmacher discloses that the printing plate has a Shore A
hardness in the range of 50-55. (Col. 14, ll. 29-30.)
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8. Leach discloses a flexographic printing plate including a
photosensitive composition that “is preferably a liquid at room
temperature.” (Col. 1, ll. 10-28; col. 11, ll. 20-23.)
9. Leach discloses that a floor layer is formed by back exposure of
a reasonable length of time. (Col. 10, ll. 40-48.)
10. Cushner discloses several techniques for forming a continuous
cylindrical printing element in the “BACKGROUND OF THE
INVENTION” section. (Col. 1, l. 53 – col. 2, l. 45.)
11. Cushner discloses that a “flat sheet element can be reprocessed
by wrapping the element around a cylindrical form” and “fusing
or joining the edges together to form a seamless, continuous
element.” (Col. 1, l. 64 – col. 2, l. 3.)
12. Cushner acknowledges that a problem with this method is that
printing with the joined cylinder produces unsatisfactory
results, because the joined edge may fail or the joined seam is
visible and interrupts the printed image. (Col. 2, ll. 6-11.)
13. Cushner discloses two other processes by which a
photosensitive resin cylinder may be formed, which both
involve melting of a wound or wrapped resin sheet to join the
ends around the surface of the cylinder in the presence of heat.
(Col. 2, ll. 12-45.)

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Patent 6,966,259 B2

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PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
Rejections I and II-Claims 1, 2, 4-8, 10-17, 24, 26, 33, and 38
After careful review of the evidence of record, we agree with
Appellant that the Examiner erred in finding claim 1 is anticipated by Fan.
In particular, claim 1 requires “a substantially continuous cured floor
layer . . . with a resilience of at least 40% when cured.” The Blomquist
Declaration is the only evidence of record that the recited resilience is
disclosed by Fan. (FF 3, 6.) However, the Blomquist Declaration measures
the resilience of a “printing element” and not the resilience of the floor layer.
(FF 6.) We have not been directed to any sufficient evidence of record that
the resilience of the printing element and the resilience of the floor layer are
equivalent. Thus, there is insufficient basis to support the position that a
printing element having a resilience of at least 40% when cured, necessarily
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means that a floor layer within the printing element has a resilience within
the recited range.
Moreover, despite the statements made in the Blomquist Declaration
that the data provided therein exactly replicates Example 3 of Fan, the
amounts of the “HEMA Dye Solution” are not consistent with the amounts
disclosed in Fan, and the Blomquist Declaration does not offer sufficient
explanation for the differences. Specifically, as pointed out by Appellant,
the amount of HEMA and Dye used in the Blomquist Declaration appears to
be significantly larger than in Example 3 of Fan. (FF 2, 4, 5.) Though the
Blomquist Declaration states that the difference between the chemical
composition in the dye used in Example 3 of Fan and the Example disclosed
in the Declaration would not alter the physical properties of the printing
element, the Declaration does not address any effect that the difference in
the amount of dye and HEMA would have. (FF 5.) For these reasons, the
Blomquist Declaration is insufficient to demonstrate that Fan inherently
meets the resilience recited in the claims.
Accordingly, we reverse the Examiner’s rejection of the claims
requiring a resilience of at least 40%, as in representative claim 1.

Claims 19-23
Claim 19 stands on different footing. In arguing that Fan does not
anticipate claim 19, Appellant reiterates the arguments made with respect to
claim 1 regarding the floor layer. (App. Br. 14.) However, Claim 19 does
not recite the presence of a floor layer. Appellant does not present separate
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arguments for claims 20-23. Accordingly, we affirm the Examiner’s
decision to reject claims 19-23.

Claim 32
Claim 32 does not require that the substantially continuous cured floor
layer have a particular resilience, but rather requires the floor layer to have a
“hardness of 30 to 70 Shore A.” The Examiner relies on Gruetzmacher,
which is incorporated by reference in Fan, as disclosing a Shore A hardness
of between 50-55. (Ans. 19; FF 7.) However, Gruetzmacher discloses the
hardness of the printing plate and not the floor layer, as recited in the claim.
(FF 7.) We have not been directed to any persuasive evidence of record that
the printing plate and the floor layer would necessarily contain the same
hardness. Accordingly, we reverse the Examiner’s rejection of claim 32.

Rejection II
As discussed above, Fan fails to disclose the recited resilience.
Gruetzmacher fails to remedy the deficiencies of Fan. Accordingly, because
all the claims subject to Rejection II either explicitly recite or depend from
claims that explicitly recite the resilience of the floor layer, we reverse the
Examiner’s decision to reject the claims as being obvious over Fan in view
of Gruetzmacher for the same reasons.

Rejection III
In reviewing the Examiner’s rejection of the claims over Leach and
Cushner, we are not convinced that the Examiner provided sufficient basis
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from which to conclude that the prior art renders obvious the cylindrical
printing sleeve recited in the claims. Specifically, Cushner discloses three
methods of forming a cylindrical printing element in the Background of the
Invention section relied upon by the Examiner. (FF 10-13.) In each of these
methods, flat sheet elements are wrapped or wound around a cylinder, and
the edges of the sheet are fused together through the use of heat. (FF 11,
13.) However, as argued by Appellant, Leach discloses liquid
photosensitive resin compositions. (FF 8.) The Examiner has not provided
a sufficient technical explanation as to how the liquid photosensitive
compositions of Leach would be applied in the methods of Cushner, which
required melting of a solid flat sheet.
For instance, even if the cured printing plates of Leach were applied
to a cylindrical sheet, we have not been directed to any evidence of record
that those printing plates could be melted in order to join the edges in
accordance with the methods disclosed in Cushner. Accordingly, we reverse
the Examiner’s decision to reject the claims as obvious over Leach in view
of Cushner.

CONCLUSION
On this record, we determine that:
the Examiner erred in finding that a cylindrical printing sleeve
including a floor layer having the recited resilience of at least 40% is taught
by Fan as evidenced by the Blomquist Declaration;
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the Examiner erred in finding that a cylindrical printing sleeve
including a floor layer having the recited hardness of 30 to 70 Shore A is
disclosed by Fan as evidenced by Gruetzmacher; and
the Examiner erred in concluding that the cylindrical printing sleeve
recited in the claims would have been obvious to one of ordinary skill in the
art in view of Leach and Cushner.

DECISION
Because claim 19 does not recite a floor layer, we affirm the
Examiner’s decision to reject claims 19-23 under 35 U.S.C. § 102(b).
We reverse the Examiner’s decision to reject claims 1, 2, 4-8, 10-17,
24, 26, 32, 33, and 38 under 35 U.S.C. § 102(b) as anticipated by Fan as
evidenced by the Blomquist Declaration.
We reverse the Examiner’s decision to reject claims 3, 9, 18, 25, 27-
31, 34, 36, and 37 under 35 U.S.C. § 103(a) as unpatentable over Fan in
view of Gruetzmacher.
We reverse the Examiner’s decision to reject claims 1, 4-7, 13, and 15
under 35 U.S.C. § 103(a) as unpatentable over Leach in view of Cushner.

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

rvb
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Reexamination Control 90/008,004
Patent 6,966,259 B2

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FOR PATENT OWNER:
JOHN L. CORDANI
CARMODY & TORRANCE, LLP
50 LEAVENWORTH STREET
P.O. BOX 1110
WATERBURY, CT 06721

FOR THIRD-PARTY REQUESTER:

MICHAEL S. MARCUS, ESQ.
DICKSTEIN SHARPIRO LLP
1825 EYE STREET, NW
WASHINGTON, DC 20006-5403