Ex Parte Dilling et al

Board of Patent Appeals and Interferences

Jun 22, 2012

11121736 (B.P.A.I. Jun. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PEER DILLING, ANDREAS BERCHTOLD, and JOHANN
KONIGER
____________

Appeal 2010-001842
Application 11/121,736
Technology Center 2800
____________

Before LANCE L. BARRY, CAROLYN D. THOMAS, and
JAMES R. HUGHES, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Patent Examiner rejected claims 1, 2, 6, 7, 13, and 19. (Ans. 2.)
The Appellants appeal therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
Appeal 2010-001842
Application 11/121,736
2

INVENTION
The following claim illustrates the invention on appeal.

1. A method for preparing a printing form within a press,
comprising:

erasing a rewritable surface of the printing form section
by section and along an entire surface of the printing form;

imaging the surface of the printing form section by
section and along an entire surface of the printing form to
provide a permanent and erasable image on the surface of the
printing form;

fixing the imaged surface section by section on the entire
imaged surface of the printing form along a relative movement
path established between the printing form and a fixing device
carrying out the fixing; and

conditioning the imaged surface section by section on the
entire surface of the printing form subsequent to imaging but
before or after the fixing for enhancing durability of the imaged
surface during printing;

wherein the erasing and imaging steps are carried out in
parallel during a first movement of the corresponding erasing
and imaging devices in the longitudinal direction of the printing
form, and the fixing and the conditioning are then carried out in
parallel during a second movement of the corresponding fixing
and conditioning devices in the longitudinal direction of the
printing form, and wherein the second movement runs in an
opposite direction of the first movement, and wherein said
section to section erasing, imaging, fixing and conditioning of
the imaged surface is carried out over respective sections of the
entire surface of the printing form which concurrently lie in an
area of influence of respective erasing, imaging, fixing and
Appeal 2010-001842
Application 11/121,736
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conditioning devices as such devices move past the surface as
an incident to relative longitudinal and rotational movement of
the printing form and their respective devices.

REJECTION
Claims 1, 2, 6, 7, 13, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over U.S. Patent Application Pub. No. 2003/0005834
A1 ("Jentzsch"); U.S. Patent Application Pub. No. 2002/0096074 A1
("Hartmann"); and U.S. Patent No. 6,424,366 B1 ("Probian").

DISCUSSION
Based on the Appellants' arguments, we will decide the appeal of the
obviousness rejection of claims 1, 2, 6, 7, and 13, on the basis of claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii). We will decide the appeal of the
obviousness rejection of claim 19 individually.

CLAIMS 1, 2, 6, 7, AND 13
The issue before us follows: did the Examiner err in finding that the
combined teachings of Jentzsch, Hartmann, and Probian would have
suggested that "erasing and imaging steps are carried out in parallel during a
first movement . . . and . . . fixing and . . . conditioning are then carried out
in parallel during a second movement," as required by representative
claim 1?
The Appellants present two arguments. We address the arguments
seriatim.
First, the Appellants make the following argument.
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Application 11/121,736
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Neither Jentzsch nor Hartman [sic] teach that i) erasing and
imaging and ii) fixing and conditioning could be executed in
multiple independent passes. . . . Neither Jentzsch nor Probian
even contemplates conditioning, and Hartmann provides no
suggestion for how imaging could be carried out in a multiple-
pass process over the entire surface of the printing form as
claimed.
(App. Br. 5.)
"The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art." In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)). "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). In determining
obviousness, furthermore, a reference "must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole." Id.
Here, the Examiner relies on the combined teaching of Jentzsch,
Hartmann, and Probian in combination with the prior art as a whole to reject
the limitations at issue. (Ans. 3-6.) The Appellants' individual attacks on
Jentzsch, Hartmann, and Probian cannot establish non-obviousness. The
Appellants' arguments also fail to address the Examiner's aforementioned
findings and conclusions.
Second, the Appellants argue that "[w]hile Probian et al. fixes the
image on a return pass in it is [sic] an image-data-specific manner and it
does not apply to the entire surface, but only those portions having pixels on
them. (See Probian col. 4, ll. 333-37 [sic])." (App. Br. 5.)
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Application 11/121,736
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Representative claim 1 in pertinent part recites "fixing the imaged
surface section by section on the entire imaged surface of the printing
form. . . ." (Emphasis added.)
"'[T]he main purpose of the examination, to which every application is
subjected, is to try to make sure that what each claim defines is
patentable . . . . [T]he name of the game is the claim. . . .'" In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles S. Rich, The
Extent of the Protection and Interpretation of Claims-American
Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)).
Here, representative claim 1 does not require fixing the entire surface
of the print form. To the contrary, it merely requires fixing an image on a
portion of the surface, viz., the claimed "entire imaged surface." We find
that the claim limitation at issue reads on the Appellants' argued
interpretation of Probian.
Therefore, we conclude that the Examiner did not err in finding that
combined teachings of Jentzsch, Hartmann, and Probian would have
suggested that "erasing and imaging steps are carried out in parallel during a
first movement . . . , and . . . fixing and . . . conditioning are then carried out
in parallel during a second movement," as required by representative
claim 1.

CLAIM 19
The issue before us follows: did the Examiner err in concluding that
combined teaching of Jentzsch, Hartmann, and Probian would have
suggested that "the erasing device, the imaging device, the fixing device, and
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the conditioning device are positioned on a common platform," as required
by claim 19.
The Appellants argue that "[t]he prior art further fails to disclose an
apparatus . . . in which the erasing, imaging, fixing, and conditioning devices
are mounted on a common platform . . . ." (App. Br. 5.)
The Examiner makes the following extensive findings and
conclusions.
Regarding claim 19, Jentzsch further teaches "wherein
the erasing device, the imaging device, and the fixing device,
are positioned on a common platform movable in a longitudinal
direction of the printing form (figure 2, item 6)." Jentzsch does
not disclose "a conditioning device for conditioning the imaged
surface after or before the fixing of the imaged surface, the
conditioning device being constructed to be movable relative to
the printing form over the entire surface of the printing form to
condition the imaged surface section by section along the entire
surface of the printing form." Hartman [sic] et al. teach a
conditioning step for erasable lithographic printing plates, said
conditioning step taking place before printing in order to
hydrophilize the surface and put the printing form in a better
mode for printing (column 2, lines 10-13 and 24-30. See also
applicants' specification, paragraph 0114). Therefore, it would
have been obvious to one of ordinary skill in the art at the time
of the invention to add a conditioning device to the apparatus of
Jentzsch in order to put the printing form in a better mode for
printing.
(Ans. 9-10.)
"The Patent and Trademark Office (PTO) must consider all
claim limitations when determining patentability of an invention over the
prior art." In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (citing In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)).
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Here, the Examiner's extensive findings and conclusion fail to even
mention the common platform, let alone the motivation of the mounting of
the conditioning device on the common platform.
Therefore, we conclude that the Examiner erred in concluding that
combined teaching of Jentzsch, Hartmann, and Probian would have
suggested "the erasing device, the imaging device, the fixing device, and the
conditioning device are positioned on a common platform," as required by
claim 19.
DECISION
We affirm the rejection of claim 1 and that of claims 2, 6, 7, and 13,
which fall therewith.
We reverse the rejection of claim 19.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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