Ex Parte KrossDownload PDFPatent Trial and Appeal BoardDec 22, 201613275400 (P.T.A.B. Dec. 22, 2016) 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. 13/275,400 10/18/2011 Robert D. Kross 3641 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 2016-0086982 Application 13/275,400 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 Rejection3 of claims 9—12, 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 L.L.C. (Appeal Brief, filed 19 May 2016 (“Br”), 1.) 2 This appeal is decided concurrently with appeal 2016-008692 in application 14/565,190 (filed 9 December 2014 as a division of the present application). 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. 3 Office action mailed 5 May 2016 (“Final Rejection”; cited as “FR”). Appeal 2016-008698 Application 13/275,400 OPINION A. Introduction4 The subject matter on appeal relates to a process of monotype printing using a printing plate comprising a specified viscoelastic gel and, during printing, applying pressure only by the hand of a person to the substrate- prepared printing plate combination. 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 ’400 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 said to provide a viscoelastic gel coating suitable for monotype printing that 4 Application 13/275,400, Printing plate for monotype prints having viscoelastic gels and method for its use, filed 18 October 2011, claiming the benefit of 61/460,209, filed 29 December 2010. We refer to the “’400 Specification,” which we cite as “Spec.” 2 Appeal 2016-008698 Application 13/275,400 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 9 is representative and reads: A method for producing a monotype print using a viscoelastic gel printing plate, comprising the steps of: applying a layer of paint to a printing plate capable of producing a monotype print said printing plate comprising 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 excludes gelatin and has a smooth surface formed as a sheet and shaped for use as a non-gelatin printing plate; laying over said non-gelatin printing plate a surface onto which said layer of paint for creating a monotype print is to be transferred; and, transferring at least a portion of said layer of paint from said non-gelatin printing plate to said surface 3 Appeal 2016-008698 Application 13/275,400 via pressure applied by a hand of a person for producing said monotype print, said method for producing a monotype print using said non-gelatin printing plate excluding application of pressure via a pressure tool with the application of pressure being limited to the pressure applied by the hand of a person. (Br., Claims App. Al—A2; some indentation, paragraphing, and emphasis added.) The Examiner maintains the following grounds of rejection5: A. Claims 9, 11, and 12 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Singular Impressions,6 Chen,7 and Marculewicz.8 Al. Claim 10 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Singular Impressions, Chen, Marculewicz, and Zirker.9 5 Examiner’s Answer mailed 25 August 2016 (“Ans.”). 6 Printout of Singular Impressions, the monotype process, http:// americanart. si. edu/ exhibitions/online/monotypes/video.html as captured by WaybackMachine on April 14, 2009. 7 John Y. Chen, Gelatinous elastomer compositions and articles, U.S. Patent No. 7,159,259 B2 (2007). 8 Marculewicz, Making monotypes using a gelatin plate: printmaking without a press, (title only); not disputed as prior art. 9 Irving Joseph Zirker, Acrylic paint monotype artwork, U.S. Patent Application Publication 2002/0066515 Al (2002). 4 Appeal 2016-008698 Application 13/275,400 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 9, expressly stating that claims 10—12 stand or fall with claim 9. (Br. 9,11. 11—12.) In particular, Kross urges that the Examiner erred by relying on hindsight to combine the teachings of Singular Impressions (using a palm of the hand for applying pressure to a sheet of paper placed over a paint- prepared monotype plate), Marculewicz (as indicated by the title, using gelatin plates for monotype printing without using a printing press), and Chen (gels having high dimensional stability, crack and tear resistance that are based on polymers and plasticizing oil within the scope the gels required by claim 1). (Br. 12, last para.) According to Kross, neither Singular Impressions nor Marculewicz teach using a viscoelastic polymer required by claim 1; Marculewicz, like Germain10 is expressly limited to gelatin; while Chen teaches uses as ‘“fishing bait’” {id. at 12,1. 20)* 11, but is silent regarding any type of printing apparatus {id. at 11. 18—19)12. Thus, in Kross’s 10 Linda Germaine, Gelatin printmaking tips, printed 30 November 2015, from http://www.lindagermain.com/workshops/gelatin-printmaking-tips/ of record in related application 13/275,400 and provided in the Evidence Appendix to the Appeal Brief in this appeal. 11 Chen does mention “fishing bait” (Chen, col. 20,1. 23), among many, many other potential uses. {Id. at col. 19,1. 53, to col. 20,1. 67.) 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 teaches viscoelastic compositions within the scope of claim 1, having high dimensional stability, crack and tear resistance, and long service life and capable of repeated handling.” (FR 3, 15—17, citing Chen, col. 2,11. 13—20; 5 Appeal 2016-008698 Application 13/275,400 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 our attention to any harmful error in the Examiner’s findings regarding the teachings of the references. Nor has Kross explained convincingly why the level of ordinary skill in the relevant arts was so low that the artisan would not have recognized that gels taught by Chen would be suitable for use as substrates in place of the gelatin coatings taught by Marculewicz (or Germain), based on their similar properties. We affirm the rejections of record. C. Order It is ORDERED that the rejection of claims 9—12 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 see also Chen, col. 19,11. 62—65, “[i]n applications where low rigidity, high elongation, good compression set and excellent tensile strength are important, the instant gel compositions would be preferred.”) 6 Copy with citationCopy as parenthetical citation