Ex Parte Flint et al

Patent Trial and Appeal Board

Feb 16, 2013

12355050 (P.T.A.B. Feb. 16, 2013)

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.
12/355,050 01/16/2009 W. Toriran Flint DAY 0820 VA/34380.757 5953
23368 7590 02/19/2013
DINSMORE & SHOHL LLP
FIFTH THIRD CENTER, ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402-2023
EXAMINER
WEDDLE, ALEXANDER MARION
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
02/19/2013 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 PATENT TRIAL AND APPEAL
BOARD
____________

Ex parte W. TORIRAN FLINT and
JOSEPH L. BYERS
____________

Appeal 2011-013385
Application 12/355,050
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013385
Application 12/355,050

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-14. Appellants appeal the “rejection of claims 3-
8 and 12 only” (App. Br. 2)1. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
We AFFIRM.

Sole independent claims 1 and claim 12 are illustrative of the claimed
subject matter:
1. A method of making a composite packing material for
use with a printing blanket construction on a printing cylinder
comprising:
providing a substrate having first and second surfaces
which is selected from the group consisting of fabric, scrim and
film;
applying to at least one of said first and second surfaces
of said substrate a polymeric compound selected from
polyvinyl chloride, urethanes, compounded synthetic rubbers,
and blends thereof to form said composite packing material;
and
positioning said composite packing material between a
printing blanket and a printing cylinder to which the printing
blanket is mounted.
12. The method of claim 1 wherein said polymeric
compound is applied to said first and second surfaces of said
substrate.

1 Consistent with the holding of BPAI precedential opinion Ex Parte
Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008), the Examiner should cancel
non-appealed claims 1, 2, 9-11, 13, 14.
Appeal 2011-013385
Application 12/355,050

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The Examiner maintains the following rejections:
1) Claims 1, 2, and 9-14 under 35 U.S.C. § 102(b) as being
anticipated by Sagawa (JP 11042869 published Feb. 1999; as
translated); as stated previously, Appellants appeal this rejection
only as it applies to claim 12;
2) claims 6-8 under 35 USC § 103(a) as unpatentable over Sagawa;
3) claim 3 under 35 USC § 103(a) as unpatentable over the combined
prior art of Sagawa and Ellison (US 4,615,934, issued Oct. 1986);
and
4) claims 4 and 5 under 35 USC § 103(a) as unpatentable over the
combined prior art of Sagawa and Ogita (JP S63-94767, also
known as JP application No. S61-190420, published June, 1988; as
translated).

Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s finding that the subject matter of Appellants’
claim 12 is anticipated by Sagawa. We likewise find that the preponderance
of evidence on this record supports the Examiner’s conclusion that the
subject matter of Appellants’ dependent claims 3-8 is unpatentable over the
prior art as applied. Accordingly, we sustain each of the Examiner’s
rejections of claims 3-8 and 12 on appeal substantially for the reasons set
forth in the Answer.
We provide the following for emphasis only. The main issue on
appeal for claim 12 turns on whether the language of claim 12 “said
polymeric compound is applied to said first and second surfaces of said
Appeal 2011-013385
Application 12/355,050

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substrate” encompasses the disclosure at paragraph [0022] of Sagawa.
Appellants’ argument that Sagawa does not “positively teach[] that ‘a
polymeric compound’ (i.e., the same polymeric compound) is applied to the
first and second surfaces of ‘a substrate’” (Reply Br. 2 (emphasis in
original)) is unavailing. Sagawa at paragraph [0022] describes that “an NBR
based rubber paste” is applied to the lower side of a polyester substrate (as
an adhesive layer between two polyester substrate fabrics) and is
subsequently applied to the upper side of that same polyester substrate as a
surface rubber layer in the process of forming a planar under blanket for a
printing apparatus. The broadest reasonable interpretation of the claim
language “applied to said first and second surfaces” in claim 12
encompasses applying the NBR rubber paste to a first surface of a first
substrate as an adhesive layer, then, after adhering a second substrate to the
first substrate, applying the NBR paste to the second surface of the first
substrate as a surface rubber layer, as described in Sagawa.
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) “[A]s applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id. While the Examiner has set
forth a broad interpretation of the claim language (Ans. 3, 7-9), Appellants
have not pointed to any definitions in the Specification or otherwise clearly
explained why the Examiner’s interpretation is unreasonable. Notably,
Appellants have provided no evidence, or any persuasive line of technical
Appeal 2011-013385
Application 12/355,050

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reasoning, explaining why the Examiner’s broadest reasonable interpretation
is in error (see generally Br.; Reply Br.).
With respect to claims 6, 7, and 8 which require that the polymeric
compound has a compression set of less than 25, 20, or 4 respectively, a
preponderance of the evidence supports the Examiner’s position that
compression set is a known result effective variable (Ans. 10-12).
Furthermore, Appellants have not shown any error in the Examiner’s
position that since the NBR as used in Sagawa is essentially incompressible,
it is reasonably expected that the compression set of the NBR polymeric
compound and the composite packing material of Sagawa is within the
recited range (e.g., id. at 10).
With respect to claim 3 which recites that the substrate comprises a
“weft insertion fabric comprising yarns of at least 1000 denier”, a
preponderance of the evidence supports the Examiner’s position that one of
ordinary skill would have reasonably used such a substrate fabric, as
exemplified in Ellison as having good mechanical properties in lamination
and coating techniques, in Sagawa, for its known, predictable use (id. at 12,
13).
Claims 4 and 5 require that the polymer compound “comprises
polyvinyl chloride” (claim 4). Appellants have not convinced us of any
error in the Examiner’s determination that since Sagawa expressly discloses
using an oil resistant polymer, the use of polyvinyl chloride as exemplified
in Ogita to be a known oil resistant polymer in preparing an offset blanket
for printing would have been no more than the predictable use of a known
prior art compound (e.g., Ans. 13, 14).
Accordingly, we sustain all of the rejections on appeal.
Appeal 2011-013385
Application 12/355,050

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ORDER
The rejection of claim 12 under 35 U.S.C. § 102(b) is affirmed.
The rejections of claims 3-8 under 35 U.S.C. § 103(a) are affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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