Ex Parte Aoshima

Patent Trial and Appeal Board

Apr 25, 2018

14449166 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/449,166 08/01/2014
79883 7590 04/27/2018
Solaris Intellectual Property Group, PLLC
401 Holland Lane, Suite 407
Alexandria, VA 22314
FIRST NAMED INVENTOR
Norio AOSHIMA
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.
FS-F05334-05 9545
EXAMINER
ROBINSON, CHANCEITY N
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
moss_sheldon@yahoo.com
y-yerks@taiyo-nk.co.jp
solaris@taiyo-nk.co.jp
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIO AOSHIMA
Appeal2017-007931
Application 14/449,166
Technology Center 1700
Before TERRY J. OWENS, DONNA M. PRAISS, and
CHRISTOPHER C. KENNEDY Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b ).
The Invention
The Appellant claims a method for making a planographic printing
plate. Claim 1 is illustrative:
1. A method of making a planographic printing plate,
comprising, in the following order:
subjecting a planographic printing plate precursor, which
comprises a support and a positive-working image recording
layer provided on the support, to image-wise exposure; and
Appeal2017-007931
Application 14/449,166
developing the planographic printing plate precursor
using an alkaline aqueous solution which comprises an anionic
surfactant and has a pH offrom 8.5 to 10.8,
the recording layer comprising: a lower layer comprising
a (A) water-insoluble and alkali-soluble resin and an (B)
infrared ray absorbing agent; and an upper layer comprising a
(C) water-insoluble and alkali-soluble polyurethane resin that
comprises a urethane bond in its main chain and a (D)
polyorganosiloxane.
The Rejection
Claims 1-15 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
OPINION
We reverse the rejection. We need address only the sole independent
claim, i.e., claim 1. That claim requires a "polyurethane resin that comprises
a urethane bond in its main chain."
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement the applicant's specification must "convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention." Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir.
1991 )).
The Appellant's Specification discloses a polyurethane resin whose
basic skeleton is the reaction product of a diisocyanate compound and at
least one carboxylic diol compound (i1i166, 67). Because reaction of the
isocyanate groups with the hydroxyl groups forms urethane bonds in the
basic skeleton and the basic skeleton is the main chain, that disclosure
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Appeal2017-007931
Application 14/449,166
indicates possession of a polyurethane having a urethane bond in its main
chain.
The Examiner finds that in the Appellant's Specification "there is no
showing that all the polyurethane resins will have a urethane bond in its
main chain" (Ans. 5), and in the Specification's disclosure that "[t]he (C)
water-insoluble and alkali-soluble polyurethane resin may be synthesized by
heating the diisocyanate compound and diol compound in an aprotic solvent
in the presence of a known catalyst whose activity is suitable for the
reactivity of these components" (i-f 74), the "may be synthesized" indicates
that "the disclosed synthesis is not mandated" (Ans. 6), so the "polyurethane
resin can have a urethane resin in the side chain and/or main chain" (Ans. 6-
7).
To comply with 35 U.S.C. § 112(a), the Appellant's Specification
must convey with reasonable clarity to those skilled in the art that the
Appellant was in possession of a polyurethane resin having a urethane bond
in its main chain. The Specification need not indicate that all polyurethanes
of which the Appellant was in possession have a urethane bond in the main
chain.
The Examiner finds that "Appellant does not have support for every
polyurethane covered in claim 1. Appellant only have [sic] support for a
specific urethane that is made only by specific diisocyanate and specific
diols" (Ans. 7).
The Examiner does not specifically address the Appellant's disclosure
of diisocyanates and diols and establish that the disclosure is insufficient to
indicate possession of the polyurethane resin recited in claim 1.
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Appeal2017-007931
Application 14/449,166
Thus, the Examiner has not established a prima facie case of lack of
written descriptive support for the Appellant's claimed method.
DECISION/ORDER
The rejection of claims 1-15 under 35 U.S.C. § 112(a) written
description requirement is reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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