Ex Parte Kross

Patent Trial and Appeal Board

Dec 22, 2016

14565190 (P.T.A.B. Dec. 22, 2016)

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 12/22/2016
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
12/22/2016 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. KROSS 1
Appeal 2016-0086922
Application 14/565,1903
Technology Center 2800
Before MARKNAGUMO, 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 Rejection4 of claims 1—8, which are all of the pending claims
We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The real party in interest is identified as Poly-Gel LLC. (Appeal Brief,
filed 1 April 2016 (“Br”), 1.)
2 This appeal is related to Appeal 2016-008998 in parent
application 13/275,400 (filed 18 October 2011), which is decided
concurrently. The specifications are substantially the same. Restriction
between the subject matter claimed in the two applications was required in
an Office Action mailed 9 October 2014, in the parent application.
3 A petition to make the application special for advancement of examination
under 37 C.F.R. § 1.102(c)(1) was granted on 26 October 2015.
Appeal 2016-008692
Application 14/565,190
OPINION
A. Introduction4 5
The subject matter on appeal relates to a monotype printing apparatus
comprising a non-gelatin-coated printing plate that further does not have a
manufactured pressure tool.
The ’400 Specification explains that “[a] monotype print is a
traditional fine art print made by pressing a piece of paper . . . against a
painted or inked surface.” (Spec. 2,11. 6—7.) Subsequent prints will vary
substantially from the first print, hence the name, “monotype.” {Id. at 11.7 —
9.) The process is said to have “a number of considerations with regard to
the plate surface, including smoothness, ability to accept a variety of paints
and inks, ease of release of paint or ink, storability under ambient conditions,
durability and reusability, and cleanability after use with either a water-
based or oil-based paint or ink.” {Id. at 11. 10-13.) Current printing plates, it
is said, “do not necessarily satisfy all these considerations, and the present
invention is a result of a search for an alternative printing plate composition
that will meet these needs.” {Id. at 11. 13—14.)
The ’190 Specification reveals that suitable materials for the non­
gelatin coating are disclosed in U.S. Patent No. 7,159,259, issued to Chen.
(Spec. 4,11. 5—8.) Such polymers, in combination with a plasticizing oil, are
4 Office action mailed 22 March 2016 (“Final Rejection”; cited as “FR”).
5 Application 14/565,190, Printing plate for monotype prints having
viscoelastic gels and method for its use, filed 9 December 2014 as a division
of 13/275,400, filed 18 October 2011 (Appeal 2016-008698), and claiming
the benefit of 61/460,209, filed 29 December 2010. We refer to the
“’190 Specification,” which we cite as “Spec.”
2
Appeal 2016-008692
Application 14/565,190
said to provide a viscoelastic gel coating suitable for monotype printing that
is reusable and durable, and to enable printing without the need for a press or
other type of pressure tool. {Id. at 2, last sentence.)
Claim 1 is representative and reads:
A printing apparatus for monotype prints, comprising:
a non-gelatin printing plate including
a viscoelastic gel composition having
a viscoelastic polymer selected from
the group consisting of
a hydrogenated polyisoprene/butadiene polymer,
poly(styrene-butadiene-styrene),
poly(styrene-butadiene)n,
poly(styrene-isoprene-styrene),
poly-(styrene-isoprene)n,
poly( styrene-ethylene-propylene),
po 1 y(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 printing plate,
said printing apparatus excluding a manufactured pressure tool.
(Br., Claims App. Al, some indentation, paragraphing, and emphasis
added.)
3
Appeal 2016-008692
Application 14/565,190
The Examiner maintains the following grounds of rejection6:
A. Claims 1—6 and 8 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Germain,7 Singular
Impressions,8 and Chen ’869.9
Al. Claim 7 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Germain, Singular Impressions,
Chen ’869, and Zirker.10
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Kross focuses the arguments for patentability on claim 1, expressly
stating that claims 2—8 stand or fall with claim 1. (Br. 9,11. 13—14.)
In particular, Kross urges that the Examiner erred by relying on
hindsight to combine the teachings of Germain (making and using gelatin
plates for monotype printing), Singular Impressions (using a palm of the
hand for applying pressure to a sheet of paper placed over a paint-prepared
6 Examiner’s Answer mailed 1 April 2016 (“Ans.”).
7 Print out of Linda Germaine, To make a gelatin plate,
http://www.linda-germain.com/howto.html
as captured by WaybackMachine on November 19, 2008.
8 Print out of Singular Impressions, The monotype process,
http ://www.americanart. si. edu/ exhibitions/online/monotypes/video.htm
as captured by WaybackMachine on April 14, 2009.
9 John Y. Chen, Tear resistant gels and articles for every uses, U.S. Patent
Application Publication 2005/000869 Al (2005) (“Chen ’869” is a
continuation-in-part of 10/334,542 (among many other parent applications),
which issued as U.S. Patent No. 7,159,259, to Chen.
10 Irving Joseph Zirker, Acrylic paint monotype artwork, U.S. Patent
Application Publication 2002/0066515 Al (2002).
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Appeal 2016-008692
Application 14/565,190
monotype plate), and Chen (tear resistant gels based on polymers and
plasticizing oil within the scope the gels required by claim 1). (Br. 12, last
para.) Kross urges that neither Germain nor Singular Impressions teach
using a viscoelastic polymer; that Germain is expressly limited to gelatin;
while Chen teaches ‘“fishing bait’ (and perhaps, other unspecified uses)”
(id. at 12,1. 6)n, but is silent regarding any type of printing apparatus
(id. at 11. 4—5)12. Thus, in Kross’s view, there would have been no reason to
combine the teachings of these references.
These arguments are not persuasive of harmful error. The use of a
known material for its known properties as a substitute for a similar material
having similar properties is a classical instance of obviousness. Hotchkiss v.
Greenwood, 52 U.S. 248, 265 (1850) (“the knob of clay was simply the
substitution of one [known] material for another [wood].”) Kross has not
directed out attention to any harmful error in the Examiner’s findings
regarding the teachings of the references. Nor has Kross explained why the
level of ordinary skill in the relevant arts was so low that they would not
have recognized that gels taught by Chen would be suitable for use as
substrates in place of the gelatin coatings taught by Germain.
We affirm the rejections of record.
11 Chen does discuss “fishing bait” (Chen 30 [0184]—31 [0188]), among
many, many other potential specified uses (id. at 28 [0171]—34 [0215]).
12 Kross does appear to be correct that the specifically suggested uses do not
include printing or monotype printing. But, as the Examiner finds, Chen
does teach that articles made from the disclosed compositions do not crack,
creep, tear or rupture from normal use. (FR 3,11. 8—11, citing
Chen 30 [0181],
5
Appeal 2016-008692
Application 14/565,190
C. Order
It is ORDERED that the rejection of claims 1—8 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
6