Ex Parte KrossDownload PDFPatent Trial and Appeal BoardJan 31, 201814565190 (P.T.A.B. Jan. 31, 2018) Copy Citation United States Patent and Trademark Office 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. 14/565,190 12/09/2014 Robert D. Kross 7453 60333 7590 01/31/2018 FDWTN D NrmNDT FR EXAMINER 4 HIGH OAKS COURT ZIMMERMAN, JOSHUA D P.O. BOX 4259 HUNTINGTON, NY 11743-0777 ART UNIT PAPER NUMBER 2854 MAIL DATE DELIVERY MODE 01/31/2018 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 ROBERT D. KROSS1 Appeal 2018-000924 Application 14/565,190 Technology Center 2800 Before MARK NAGUMO, N. WHITNEY WILSON, and BRIAN D. RANGE, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Robert D. Kross (“Kross”) timely appeals under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 1—8 and 15. We have jurisdiction. 35 U.S.C. § 6. We affirm. 1 The real party in interest is identified as Poly-Gel L.L.C. (Appeal Brief, filed 13 July2017 (“Br”), 1.) 2 Office Action mailed 19 May 2017 (“Final Rejection”; cited as “FR”). Appeal 2018-000924 Application 14/565,190 OPINION A. Introduction3 The subject matter on appeal relates to an apparatus for making a plurality of prints. The apparatus comprises a non-gelatin, viscoelastic printing plate, wherein the surface to be printed on is pressed against the prepared printing plate only by the hand of the print-maker. The printing plate is capable of being cleaned with mild soap and water, and the apparatus comprises mild soap and water for cleaning the printing plate, which is capable of being re-used for producing a plurality of prints. This is the second time claims in this application have come before us on appeal. In the first decision,4 we affirmed rejections of similar claims under 35 U.S.C. § 103 for obviousness over a similar set of references. In due course, Kross filed a Request for Continued Examination under 37 C.F.R. § 114, amending the apparatus claims to include the printing plate having the capability of making a plurality of prints and of being washable with mild soap and water, and requiring that the apparatus further comprise mild soap and water for cleaning the plate. Key features of the claimed apparatus continue to be that the printing plate is a non-gelatin, viscoelastic printing plate, and that the apparatus excludes a manufactured pressure tool. 3 Application 14/565,190, Printing plate for producing a plurality ofprints having viscoelastic gels, filed 9 December 2014 as a division of 13/275,400, filed 18 October 2011 (Appeal 2016-008698), and claiming the benefit of a provisional application filed 29 December 2010. We cite the Specification as “Spec.” 4 Appeal 2016-008692, entered 22 December 2016, (affirmed); reconsideration denied 23 January 2017. 2 Appeal 2018-000924 Application 14/565,190 Claim 1 is representative and reads: A printing apparatus for producing a plurality of prints, comprising: a non-gelatin viscoelastic gel printing plate including a viscoelastic gel composition having a viscoelastic polymer selected from the group consisting of a hydrogenated poly-isoprene/butadiene polymer, poly( styrene-butadiene-styrene), poly(styrene-butadiene)n, poly(styrene-isoprene-styrene), poly-(styrene-isoprene)n, poly( styrene-ethylene-propylene), poly(styrene-ethylene-propylene-styrene)n, poly(styrene-ethylene-butylene-styrene)n, poly( styrene-ethylene-butylene), poly(styrene-ethylene-propylene)n, poly(styrene-ethylene-butylene)n, polystyrene, poly-butylene, poly(ethylene-propylene), poly(ethylene-butylene), polypropylene, poly ethylene, polyurethane and silicone, and a combination thereof, and a plasticizing oil, said viscoelastic gel composition having a smooth surface and being formed as a sheet and shaped for use as said non-gelatin viscoelastic gel printing plate capable of being re-used for producing a plurality of prints, said non-gelatin viscoelastic gel printing plate being washable with only mild soap and water, and, mild soap and water for cleaning said non-gelatin viscoelastic gel printing plate, said printing apparatus excluding a manufactured pressure tool. (Claims App., Br. Al; some indentation, paragraphing, and emphases added.) 3 Appeal 2018-000924 Application 14/565,190 The Examiner maintains the following grounds of rejection:5,6 A. Claims 1—6, 8 and 15 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Germain,7 Singular Impressions,8 Chen9 and Taylor.10 A1. Claim 7 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Germain, Singular Impressions, Chen, Taylor, and Zirker.11 B. Discussion The Board’s findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Briefly, the Examiner finds that Germain describes a printing apparatus comprising a viscoelastic gel printing plate that is made of gelatin, and that meets the smooth surface, sheet form, and re-use capabilities recited in the claims. (FR 2—3.) The Examiner finds that Germain does not 5 Examiner’s Answer mailed 5 October 2017 (“Ans.”). 6 Because this application was filed before the 16 March 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 7 Linda Germain, printout of http://www.linda-germain.com/howto.html as captured by WaybackMachine on 19 November 2008. 8 Singular Impressions, printout of http://americanart.si.edu/exhibitions/online/monotypes/video.html, as captured by WaybackMachine on 14 April 2009 9 John Y. Chen, Tear-resistant gels and articles for every uses, U.S. Patent Application Publication 2005/0008669) (2005). 10 Mary Taylor, printout of http://marytaylorartcom/FAQ/FAQ Gelatin Print.htm, as captured by WaybackMachine on 19 October 2009. 11 Irving Joseph Zirker, Acrylic paint monotype artwork, U.S. Patent Application Publication 2002/0066515 A1 (2002). 4 Appeal 2018-000924 Application 14/565,190 describe a print apparatus excluding a manufactured pressure tool, but that Singular Impressions describes printing “just using the back [sic: palm] of the hand” to press the surface to be printed against the printing plate. (Id. at paras. 2—3.) The Examiner also finds that Germain does not describe a viscoelastic polymer and plasticizing oil within the scope of claim 1, but that Chen describes such a material “that do[es] not crack creep, tear or rupture from normal use,” and that has “elastic memory enabling the articles to recover and retain its original molded shape after many extreme deformation cycles.” (Id. at 4th full para., citing Chen para. 181.) The Examiner reasons that it would have been obvious to use non-gelatin viscoelastic gels with plasticizing oil as disclosed by Chen in place of the viscoelastic gelatin disclosed by Germain (and Taylor) as printing plates. Such materials, unlike gelatin, would be washable with mild soap and water, and would be reusable. (Id. at 4.) The Examiner explains further that “when creating a new print with a different color palette,” the ordinary worker “would want to ensure that there would not be any colors left from the prior print-making step, and would, therefore, want to clean all of the paint from the prior print making step.” (Id. at last para.) The Examiner reasons further that the use of mild soap to avoid irritating the skin would also have been obvious as a well-known washing step. (Id. at 5.) Kross urges that [t]he Examiner’s application of the ‘Official notice’ doctrine as it concerns the use of soap and water to clean the plate in Singular Impressions in the parallel prosecution is submitted to be misplaced because literally Singular Impressions (as its title implies) teaches a printing process for making only a single impression with subsequent impressions being ‘significantly fainter than the first pull.’ [(Br. 14.)] 5 Appeal 2018-000924 Application 14/565,190 Kross concludes that “modifying the Singular Impressions publication for the production of a plurality of prints would appear to contradict the express teaching of the publication and would therefore not be an appropriate application of‘Official Notice.’” {Id. at 15,11. 2-4.) These arguments are not persuasive of harmful error because they do not address the rejection posed by the Examiner, which is based on the combination of teachings of the cited references. A piecemeal attack on Singular Impressions, which the Examiner cites primarily for its teaching that image transfer in a printing process may be accomplished by pressing a sheet of paper onto a prepared printing plate with the palm of one’s hand, is not persuasive. Kross’s argument that the title, “Singular Impressions” implies that only one strong impression can be taken is not persuasive as it does not address the teachings of the combination of references. Kross does not dispute the Examiner’s findings regarding the substitution of viscoelastic materials taught by Chen for the viscoelastic gelatin taught by Germain and by Taylor. Nor does Kross dispute the substance of the Examiner’s findings regarding the use of mild soap and water to clean the non-gelatin viscoelastic plates made from the materials suggested by Chen. Taylor and Germain appear to be directed to the home hobbyist, so the selection of common household cleaners such as dish detergent or hand-soaps, especially for water-soluble colorants, would have been a natural thing for the home hobbyist to do. Taking Official Notice of such an ordinary cleaning procedure is appropriate, because it deals with matters that the ordinary person encounters in daily life. Specialized knowledge and skills are not required to identify appropriate materials and to appreciate the efficacy of their use by the home hobbyist. Here, the ordinary 6 Appeal 2018-000924 Application 14/565,190 worker would have recognized that many commonly available cleaners, including mild soap and water, would have been useful for cleaning “paint” from printing plates made with the polymeric materials described by Chen. In this appeal, Kross has not explained how the teaching of image transfer by hand pressure affects or is affected by the taking of Official Notice of methods of cleaning the plate. Kross does not raise substantively distinct arguments for patentability for the remaining claims, and does not argue for patentability based on so- called “secondary considerations” such as unexpected results or commercial success.12 We therefore affirm the rejections of record. 12 Kross objects strenuously (Reply, filed 18 October 2017, 1—3) to the Examiner’s attempt to introduce new evidence in the Answer (Ans. 3—4, 17.) We have not relied on that untimely-presented evidence, so that error was harmless. But it is improper to introduce such evidence—here, not a dictionary definition of a well-known term of art—at so late a stage in the proceedings that the Appellant cannot respond effectively. If new evidence is required to establish the prima facie case of unpatentability, or to rebut arguments for, e.g., unexpected results based on timely filed evidence, the proper course is to re-open prosecution, to give the applicant a full and fair opportunity to respond. 7 Appeal 2018-000924 Application 14/565,190 C. Order It is ORDERED that the rejection of claims 1—8 and 15 is affirmed. 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 8 Copy with citationCopy as parenthetical citation