Ex Parte Lungu

Board of Patent Appeals and Interferences

Dec 22, 2009

09839803 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ADRIAN LUNGU
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Appeal 2009-010185
Application 09/839,803
Technology Center 1700
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Decided: December 22, 2009
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-19, and 31-33. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
BACKGROUND
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The invention relates to a photopolymerizable element that may be
used as a flexographic (i.e., relief) printing plate (Spec. 1:6-11; 2:26-30).
Claim 1 is illustrative:
1. A photopolymerizable element for use as a flexographic printing
plate comprising:

(a) a support;

(b) a photopolymerizable elastomeric layer on the support, comprising
a binder, at least one monomer, a photoinitiator, an onium salt and a leuco
dye, wherein the onium salt is present in greater reactive amount than the
leuco dye and is selected from the group consisting of phosphonium salts,
selenonium salts, triarylselenonium salts, iodonium salts, diaryliodonium
salts, sulfonium salts, triarylsulphonium salts, dialkyphenacylsulphonium
salts, triarylsulphoxonium salts, aryloxydiarylsulphoxonium salts,
diallcylphenacylsulphoxonium salts, and combinations thereof.

The Examiner relies upon the following prior art reference in the
rejection of the appealed claims:
Araki JP 59-21136 Nov. 29, 1984
(as translated)

The Examiner has rejected all the claims under 35 U.S.C. § 103(a) as
being unpatentable over Araki.
Appellant presents arguments concerning the rejected claims as a
group (Br. 2-5). Appellant does not advance an argument that is reasonably
specific to any particular claim on appeal1. Thus, in accordance with 37
C.F.R. § 41.37(c)(1)(vii), we select claim 1 as the representative claim on
which our discussion will focus.

1 Appellant merely pointing out what independent claim 33 recites is not a
separate argument in support of patentability (Br. 5).
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The Examiner finds that Araki suggests the claimed
photopolymerizable element, but acknowledges that Araki does not
explicitly describe that the onium salt is present in a greater reactive amount
that the leuco dye. Nonetheless, the Examiner finds that the ranges taught in
Araki for the amount of reducing dye (i.e., leuco dye) and the onium salt
render the claimed content relationship obvious, and accordingly concludes
that:
Given the ranges, one of ordinary skill in the art would have
been motivated to choose any amount within each range,
particularly the endpoints, thus the dye could have been
employed in an amount of 0.001 parts by weight and the onium
slat in an amount 2 parts by weight, thus employed in an
reactive amount greater than that of the dye.

(Ans. 4).
ISSUE
Has Appellant shown reversible error in the Examiner’s conclusion
that Araki would have suggested using the onium salt in a “greater reactive
amount than the leuco dye” as claimed?
We answer this question in the negative.
FINDINGS OF FACT (FF)
Findings of fact throughout this opinion are supported by a
preponderance of the evidence.
Appellant admits that the use of a leuco dye to produce colored
images in the exposed regions of a photopolymer are known (Spec. 2, ll. 34-
38).
The Examiner correctly found that Araki describes a
photopolymerizable material, that may be used as a relief printing plate,
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comprising the claimed components including a leuco dye (e.g., crystal
violet lactone), and onium salt (Araki, e.g., p. 2, para. 5; last para. of p. 3;
last para. of p. 5; top of p. 6); except that Araki does not explicitly describe
an elastomeric binder (Ans. 3, 4).
Appellant does not dispute the Examiner’s determination that it would
have been obvious to one of ordinary skill in the art to use an elastomeric
binder (Ans. 3; generally Br.).
Araki describe that the “recommended proportion” of onium salt is
0.001-2 parts by weight, and the amount of reducing dye is 0.01-10 parts by
weight, per 100 parts by weight of the binder.
Araki does not have an example wherein the amount of onium salt is
greater than the amount of leuco dye.
One of ordinary skill in the art would have appreciated that the
reducing agent (dye) and the onium salt may be used in any of the amounts
described in Araki, with a reasonable expectation of obtaining a
photopolymerizable material that may be used as a relief printing plate,
wherein “the light-exposed part can be clearly distinguished from the light-
unexposed part” (Araki p. 2, para. 2), and wherein the material “has good
photosensitivity and excellent workability, and is also suitable for multiple
exposure” (Araki p. 2, para. 4).
No Reply Brief was filed.
PRINCIPLES OF LAW
When claimed ranges overlap or lie inside ranges disclosed by the
prior art for every component in a claim, a prima facie case of obviousness is
established. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re
Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Indeed, the law is replete
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with cases in which the difference between the claimed invention and the
prior art is some range or other variable within the claims. These cases have
consistently held that the Appellant must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990).
“[I]n a section 103 inquiry, ‘the fact that a specific [embodiment] is
taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.”’ Merck & Co. Inc.
v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976).)
ANALYSIS
We understand Appellant’s position to be that Araki teaches away
from the claimed relative amount of onium salt to leuco dye because,
according to Appellant, the ranges given in Araki overall suggest more
reducing dye than onium salt would be used (Br. 4). Appellant also points to
Example 1 of Araki which uses 10 times more reducing dye than onium salt
(id.). Appellant further contends that their Specification Examples
demonstrate “the criticality of the onium salt being in greater reactive
amount than the leuco dye” (Br. 4). Appellant contends that employing the
onium salt in a greater reactive amount that the leuco dye is hindsight in
view of the present invention (Br. 5). These contentions are not persuasive
of reversible error for the following reasons.
A reference “teaches away” when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the
Appellant’s invention. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
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There is nothing in Araki that suggests that the use of the salt and the dye
within the claimed relationship would have been undesirable. To the
contrary, Araki explicitly describes that the dye may be used in the binder in
an amount as little as 0.01 parts by weight, whereas the onium salt may be
used in an amount as great as 2 parts by weight per 100 parts by weight of
binder. There is no dispute that the artisan could select amounts within each
of the described ranges of Araki such that an onium salt is present in an
amount greater than the leuco dye (see, FF).
Based on the foregoing, it is reasonable to conclude that the use of a
greater amount of an onium salt than a leuco dye as claimed would have
been prima facie obvious from the teachings of Araki, with a reasonable
expectation of obtaining a photopolymerizable element, that is useful as a
relief printing plate, wherein the light exposed part can be clearly
distinguished from the unexposed part by a color difference, and is also
suitable for multiple exposure.2 See Merck & Co. Inc. v. Biocraft
Laboratories Inc., 874 F.2d at 807; also, e.g., KSR Int’l Co. V. Teleflex Inc.,
550 U.S. 398, 420-421 (one of ordinary skill in the art is “also a person of
ordinary creativity, not an automaton”). The use of an onium salt in an
amount as large as 2 parts per weight in combination with a leuco dye in an
amount as little as 0.01 parts by weight appears to be no more than the
predictable use of such components for their established functions. KSR,
550 U.S. at 417.

2 Although independent claim 33 is not separately argued, we note that
claim 33 does not require any relative amounts of the onium salt versus the
leuco dye, and encompasses an intermediate product as well as a final
product.
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Appellant's contention that the rejection is based on hindsight is also
not persuasive of reversible error, since Appellant has failed to direct us to
any portion of the Examiner's rejection that relies on knowledge that was
outside the level of ordinary skill at the time the claimed invention was made
and/or includes knowledge gleaned only from the Appellant' disclosure. In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
To the extent that Appellant relies upon the examples in their
Specification to demonstrate the “criticality of the onium salt being present
in a greater reactive amount than the leuco dye” (Br. 4), the burden rests
with Appellant to establish that the results are unexpected compared to the
closest prior art, and that they are commensurate in scope with the claimed
subject matter. See, e.g., In re Peterson, 315 F.3d 1325, 1330-1331 (Fed.
Cir. 2003); In re Kulling, 897 F. 2d 1147, 1149 (Fed. Cir. 1990). Appellant
has not met this burden. For example only, the Specification Example 1
discussed by Appellant in the Brief relies upon uses twice as much onium
salt as leuco dye (Spec. 23-24, Example 1; also Br. 4), while claim 1 plainly
encompass using only a trace amount more onium salt than leuco dye. The
only other inventive example in Appellant’s Specification also uses twice as
much onium salt than leuco dye (Spec. 24-25, Example 2). Hence, it can
hardly be said that the exemplified inventive examples described in the
Specification establish results that would be expected to be obtained across
the entire breadth of the claimed composition.
CONCLUSION
On balance, the evidence, including the prior art of record and the
Appellant’s objective evidence of criticality, does not weigh in favor of a
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determination that the Examiner reversibly erred in rejecting the claims on
appeal under § 103.
Accordingly, we sustain the Examiner’s § 103 rejection of claims 1-8
based on Araki.
ORDER
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).
AFFIRMED

PL Initial:
sld

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