Ex parte Bhateja et al.

Board of Patent Appeals and Interferences

Jun 29, 2000

08335892 (B.P.A.I. Jun. 29, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte SUDERSHAN K. BHATEJA, JOHN A. MARTENS
and KURT F. FEIL
________________
Appeal No. 1997-0085
Application 08/335,892
________________
ON BRIEF
________________
Before GARRIS, PAK and LIEBERMAN, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1-
21. The only other claims in the application, which are
claims 22-24, stand withdrawn from further consideration by
the examiner.
Appeal No. 1997-0085
Application 08/335,892
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The subject matter on appeal relates to a photosensitive
plate which has a thermal distortion which is limited to
specified values. This appealed subject matter is adequately
illustrated by independent claims 1 and 3 which read as
follows:
1. A photosensitive plate suitable for use as a
flexographic printing plate comprising a dimensionally stable,
flexible, polymeric substrate and a photosensitive elastomer
layer, wherein the plate has a thermal distortion in both the
machine and the transverse directions which is less than 0.03%
when the plate is exposed to actinic radiation and, after
exposure, is developed at temperatures between 100 and 180EC.
3. A photosensitive plate suitable for use as a
flexographic printing plate comprising a dimensionally stable,
flexible, polymeric substrate and a photosensitive elastomer
layer, wherein said polymeric substrate experiences less than
0.07% distortion in any planar direction when heated to
temperatures from 110 to 180EC.
The references set forth below are relied upon by the
examiner in the rejections before us:
Locey et al. (Locey) 4,160,799 Jul. 10, 1979
Worns et al. (Worns) 4,686,172 Aug. 11, 1987
Gibson, Jr. et al. (Gibson) 5,085,976 Feb. 4, 1992
Martens 5,215,859 Jun. 1, 1993
Lu, Research Disclosure 19809, (Oct. 1990).
Claims 1-7 and 9-11 are rejected under 35 U.S.C. § 102(b)
Appeal No. 1997-0085
Application 08/335,892
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as being unpatentable over Martens.
Claims 1-8, 10 and 11 are rejected under 35 U.S.C. §
102(b) as being unpatenable over Gibson or Worns.
Claims 1-7 and 9-21 are rejected under 35 U.S.C. § 103 as
being unpatentable over Martens in view of Lu or Locey.
Finally, claims 1-8 and 10-21 are rejected under 35
U.S.C.
§ 103 as being unpatentable over Gibson or Worns in view of Lu
or Locey.
We cannot sustain any of the above noted rejections.
Each of the § 102 rejections before us on this appeal is
based upon the examiner's proposition that the respective
plates of the applied references inherently possess limited
distortion within the here claimed ranges because the prior
art and here claimed plates may be manufactured from the same
polymeric material, namely, polyethylene terephthalate. The
appellants point out, however, that polyethylene terephthalate
printing plates which are not annealed in accordance with
their disclosed invention (i.e., the plates of Martens, Gibson
or Worns) do not necessarily and inherently possess distortion
Appeal No. 1997-0085
Application 08/335,892
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values within the appealed claim ranges as evidenced by
Example 4 including Table IV on pages 13 and 14 of the subject
specification. Significantly, the examiner has not responded
meaningfully to the appellants' point on this matter.
It is well settled that inherency may not be established
by probabilities or possibilities and that inherency is not
established merely because a certain thing may result from a
given set of circumstances. In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981)(citing Hansgirg v. Kemmer, 102
F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939)). Under the
circumstances recounted above, it is clear that the record
before us on this appeal reflects that polyethylene
terephthalate printing plates which have not been subjected to
the annealing process disclosed by the appellants, that is,
the plates of the references under consideration, do not
necessarily and inherently possess the appellants' claimed
distortion values.
It follows that we cannot sustain the examiner's § 102
rejection of claims 1-7 and 9-11 as being anticipated by
Martens or his § 102 rejection of claims 1-8, 10 and 11 as
being anticipated by Gibson or Worns.
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Application 08/335,892
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As for the examiner's § 103 rejections, we perceive
substantial merit in the appellants' arguments against the
examiner's conclusion of obviousness. In particular, we agree
with the appellants that even if the plates of the primary
references were subjected to the treatments of the secondary
references, the resulting plates cannot be regarded as
possessing distortion values of the type defined by the
independent claims on appeal. Indeed, the examiner points to
nothing and we find nothing independently in the secondary
references which reflects that the treatments of Lu or Locey
would be even capable of producing the here claimed distortion
values.
In light of the foregoing, we also cannot sustain the
examiner's § 103 rejection of claims 1-7 and 9-21 as being
unpatentable over Martens in view of Lu or Locey or his § 103
rejection of claims 1-8 and 10-21 as being unpatentable over
Gibson or Worns in view of Lu or Locey.
The decision of the examiner is reversed.
REVERSED
Appeal No. 1997-0085
Application 08/335,892
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BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
BRG/ki
Appeal No. 1997-0085
Application 08/335,892
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Susan, Moeller, Zerull
3M Office of Intellectul Property
Counsel
P. O. Box 33427
St. Paul, MN 55133-3427