Ex parte Dewey

Board of Patent Appeals and Interferences

May 3, 2000

08496234 (B.P.A.I. May. 3, 2000)

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journal and (2) is not binding precedent of the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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CRAIG D. DEWEY
____________
Appeal No. 1998-0488
Application No. 08/496,234
____________
ON BRIEF
____________
Before JERRY SMITH, FLEMING, and LALL, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-20, which constitute
all the claims in the application.
Appeal No. 1998-0488
Application No. 08/496,234
2
The invention pertains to a method and apparatus for
determining color misregistration in a multi-color printing
press. More particularly, the invention relates to a printing
press in which three separate printing stations, such as cyan,
magenta and yellow, cooperate to produce process black. A
process black registration mark is formed at a desired
location on a web where an image is to be printed. The
process black registration mark is examined to determine if
the separate printing stations have properly produced the
process black registration mark.
Representative claim 1 is reproduced as follows:
1. A method of determining color
misregistration in a multi-color printing press
having a plurality of printing stations that
each include a plate cylinder and that each
prints a color image on a web with a
predetermined color of ink, wherein the colors
printed by the plurality of printing stations
cooperate to produce process black, said method
comprising the steps of:
identifying an area of the desired image
that is intended to be printed in black;
forming registration images on the plate
cylinders of the printing stations, said
registration images being positioned on the
plate cylinders such that, during subsequent
printing operations, they will produce color
registration marks that cooperate to print a
process black registration mark on the web in
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Application No. 08/496,234
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the identified area when the printing stations
are in registration;
applying ink to the plate cylinders;
forming the color images on the web;
examining the identified area with an
apparatus capable of distinguishing the colors
printed by the printing stations; and
generating an error signal if the examining
apparatus senses that the color registration
marks are not in a desired registration to form
the process black registration mark.

Appeal No. 1998-0488
Application No. 08/496,234
4
The examiner relies on the following references:
Brovman 4,534,288 Aug. 13,
1985
Kishner et al. (Kishner) 4,546,700 Oct. 15,
1985
Brunner 4,852,485 Aug. 1,
1989
Harrington 5,331,438 Jul. 19,
1994
(filed Nov. 30,
1992)
Claims 1-20 stand rejected under 35 U.S.C. § 112,
first paragraph, as being based on an inadequate disclosure.
Claims 1-20 also stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Brunner in view of
Harrington and further in view of Brovman and Kishner.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments
in support of the rejections and the evidence of obviousness
relied upon by the examiner as support for the obviousness
rejection. We have, likewise, reviewed and taken into
Appeal No. 1998-0488
Application No. 08/496,234
5
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the disclosure in this application describes
the claimed invention in a manner which complies with the
requirements of
35 U.S.C. § 112. We are also of the view that the collective
evidence relied upon and the level of skill in the particular
art would not have suggested to one of ordinary skill in the
art the obviousness of the invention as set forth in claims 1-
20. Accordingly, we reverse.
We consider first the rejection of claims 1-20 as
being based on an inadequate disclosure. The rejection points
to the specification as failing to provide an enabling
disclosure of the invention. Thus, the rejection is based on
the enablement portion of the requirements of 35 U.S.C. § 112.
The examiner points to several recitations of the claimed
invention which, in the examiner’s view, have not been enabled
by the supporting disclosure. Appellant has argued that the
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6
recitations of the claimed invention are primarily implemented
in the very same manner as set forth in the disclosures of the
applied prior art references. Appellant has also submitted
two declarations in support of his position that the present
specification is enabling for the claimed invention. The
examiner has found all of appellant’s arguments and evidence
to be unpersuasive of enablement.
To comply with the enablement clause of the first
paragraph of 35 U.S.C. § 112, the disclosure must provide an
adequate description such that the artisan could practice the
claimed invention without undue experimentation. In re
Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974);
In re Brandstadter, 484 F.2d 1395, 1407, 179 USPQ 286, 295
(CCPA 1973). The burden is initially upon the examiner to
establish a reasonable basis for questioning the sufficiency
of the disclosure. In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982). Enablement is not precluded by
the necessity for some experimentation. However,
experimentation needed to practice the invention must not be
undue experimentation. The key word is "undue", not
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Application No. 08/496,234
7
"experimentation." In re Wands, 858 F.2d 731, 736-37, 8
USPQ2d 1400, 1404 (Fed. Cir. 1988).
When we apply the above-noted case law to the facts of
this case, we cannot escape the conclusion that the examiner
has failed to support his position that the disclosure in this
application is insufficient to support the claimed invention.
The determination of what constitutes undue experimentation in
a given case requires the application of a standard of
reasonableness, having due regard for the nature of the
invention and the state of the art. In our view, every step
and means recited in the appealed claims is essentially the
same as set forth in the applied prior art except that the
claimed invention makes decisions based on a process black
registration mark rather than some other form of registration
mark. The examiner’s position appears to suggest that since
the claimed invention is alleged to be different than the
prior art, then the prior art teachings cannot support the
claimed invention. The error in the examiner’s position,
however, is that the steps of forming registration images,
examining registration marks, generating error signals, and
adjusting printing stations for example, are all performed in
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the applied prior art, but not with respect to a process black
mark.
The examiner has not offered any convincing rationale
why the use of a process black registration mark as claimed
would cause problems for the artisan who is already familiar
with controlling registration based on black marks and color
marks. We are of the view that the claimed invention is
disclosed in a manner that would clearly have enabled the
artisan to make and use the invention. Therefore, we do not
sustain the rejection of the claims under the first paragraph
of 35 U.S.C. § 112.
Appeal No. 1998-0488
Application No. 08/496,234
9
We now consider the rejection of claims 1-20 under
35 U.S.C. § 103 as unpatentable over the teachings of Brunner,
Harrington, Brovman and Kishner. In rejecting claims under
35 U.S.C. § 103, it is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is
expected to make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior
art or to combine prior art references to arrive at the
claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or
knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Appeal No. 1998-0488
Application No. 08/496,234
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Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is met,
the burden then shifts to the applicant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147 (CCPA 1976). Only those arguments actually made
by appellant have been considered in this decision. Arguments
which appellant could have made but chose not to make in the
brief have not been considered [see 37 CFR § 1.192(a)].
The rejection points to general teachings of the
applied prior art, but does not address the specific language
of the claims. Independent claim 1 recites that an area of
the desired image which will be printed in black must be
identified, and a process black registration mark must be
formed within that area of the image. We cannot find even a
Appeal No. 1998-0488
Application No. 08/496,234
11
remote suggestion within any of the applied references for
forming a process black registration mark in such a specific
location. Although the examiner concludes that "it would have
been obvious to one having ordinary skill in the art at the
time the invention was made to select and evaluate any desired
mark relative to any other mark in Brunner for register
evaluation and correction, including those which are
conventionally formed by printer black or process black"
[answer, page 14], there is no evidence on this record that a
process black registration mark should be formed and examined
in the manner recited in claim 1. Therefore, we do not
sustain the rejection of claims 1-4.
With respect to independent claim 5, we find teachings
in the applied prior art that three separate color printing
stations can cooperate to produce process black and that
misregistration of the printing stations can be determined by
individually comparing each color printed with a corresponding
printer black mark, however, we find no teaching of the
printing stations having registration images positioned
thereon that will produce a process black registration mark as
recited in claim 5. Although the examiner asserts that
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Application No. 08/496,234
12
Brovman and Kishner teach distinguishing a black ink reference
indicator from process black for the purpose of
misregistration, the two references only teach distinguishing
marks made by each of the printing stations separately and not
as a process black mark. Therefore, we do not sustain the
rejection of claims 5-8.
Independent claim 9 recites the examination of a
process black registration mark and making color evaluations
of this process black registration mark. Although the
examiner is of the view that the applied prior art performs
these steps, we do not agree. As noted above, the applied
prior art teaches the color evaluation of separately located
color registration marks with respect to a printer black
registration mark. There is no suggestion that the
misregistration should be evaluated based on a process black
registration mark as claimed. Therefore, we do not sustain
the rejection of claims 9-15.
Independent claim 16 essentially contains all the
features of claim 9 with the additional recitation of printing
and examining a black ink registration mark along with the
process black registration mark. Therefore, we do not sustain
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Application No. 08/496,234
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the rejection of claims 16-20 for at least the reasons
discussed above with respect to claim 9.
We note that appellant has argued several of the
dependent claims separately. Since we have not sustained the
rejection of any of the independent claims, we need not
discuss in detail the limitations of these dependent claims.
We do observe, however, that the examiner has essentially
ignored these limitations of the dependent claims in
formulating the rejection and in responding to appellant’s
arguments. Therefore, we agree with appellant that these
claims would have been separately patentable even if we had
agreed with the examiner’s rejection of the independent
claims.
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Application No. 08/496,234
14
In summary, we have not sustained the examiner’s
rejection of the claims under either 35 U.S.C. § 112 or § 103.
Therefore, the decision of the examiner rejecting claims 1-20
is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 1998-0488
Application No. 08/496,234
15
DAVID B. SMITH
MICHAEL, BEST AND FRIEDRICH
100 EAST WISCONSIN AVE.
MILWAUKEE, WI 53202-4108
Shereece
Appeal No. 1998-0488
Application No. 08/496,234
APJ JERRY SMITH
APJ LALL
APJ FLEMING
REVERSED
Prepared: December 8, 2000