Ex Parte Markhart

Board of Patent Appeals and Interferences

Nov 5, 2009

11344653 (B.P.A.I. Nov. 5, 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 GARY T. MARKHART
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Appeal 2009-009314
Application 11/344,653
Technology Center 2800
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Decided: November 5, 2009
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Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
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A. Introduction1
Gary T. Markhart (“Markhart”) timely appeals under
35 U.S.C. § 134(a) from the final rejection2 of claims 45-74, which are all of
the pending claims. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
The subject matter on appeal relates to apparatuses and methods for
thermally developing flexographic printing elements. According to the
653 Specification, among the novel and nonobvious aspects of the invention
are the incorporation, in a single apparatus, of the exposing, developing, and
post-exposure detack steps, which are said to have been traditionally carried
out in separate devices.
Claims 45 and 46 illustrate the principal issues of contention, and are
reproduced infra from the Claims Appendix to the Principal Brief on
Appeal.
45. An apparatus for exposing and developing a flexographic
printing element, the apparatus comprising:
means for supporting, and preferably rotating, a printing
element;

1 Application 11/344,653, Apparatus and Method for Thermally Developing
Flexographic Printing Elements, filed 1 February 2006, as a CON of
10/891,351, filed 14 July 2004, now U.S. Patent 7,041,432, which is a CIP
of 10/811,763, filed 29 March 2004, now U.S. Patent 6,998,218. The
specification is referred to as the “653 Specification,” and is cited as “Spec.”
The real party in interest is listed as MacDermid Printing Solutions, LLC.
(Appeal Brief under 37 C.F.R. § 41.37, filed 15 September 2008 (“Br.”), 1.)
2 Office action mailed 5 June 2008 (“Final Rejection”; cited as “FR”).
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means for exposing a surface of the printing element to
actinic radiation to selectively crosslink and cure a
portion of the surface of the printing element; and
means for thermally developing the exposed surface of
the printing element comprising
a) means for softening or melting non-cross-linked
photopolymer on the exposed surface of the
printing element;
b) at least one element that is contactable with the
surface of the printing element and capable of
moving across at least a portion of the length of the
printing element to remove the softened or melted
non-crosslinked photopolymer; and
c) means for maintaining contact between the at
least one contactable element and the printing
element.
(Claims App., Br. 15; indentation added.)
46. The apparatus according to claim 45, further comprising means
for detacking and post-curing the printing element, wherein said
means for detacking and post-curing the printing element are capable
of moving over at least a portion of the printing element.
(Claims App., Br. 15; indentation added.)
The Examiner has maintained the following grounds of rejection:3
A. Claims 45-47, 49-52, 54-58, 61-64, 66, and 67
stand rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Johnson4 and Gelbart.5

3 Examiner’s Answer mailed 6 January 2009. (“Ans.”).
4 Melvin Harry Johnson, Method and Apparatus for Thermal Processing a
Photosensitive Element, U.S. Patent 6,797,545 B1 (28 September 2004),
accorded the benefit under 35 U.S.C. § 371 of 19 February 2002.
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B. Claims 48, 59, and 60 stand rejected6 under
35 U.S.C. § 103(a) in view of the combined teachings of
Johnson, Gelbart, and Huck.7
C. Claims 53 and 65 stand rejected8 under
35 U.S.C. § 103(a) in view of the combined teachings of
Johnson, Gelbart, and Okamoto.9
D. Claims 68-72 and 74 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Johnson, Gelbart, and Huck.
E. Claim 73 stands rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Johnson, Gelbart,
Huck, and Okamoto.
Markhart has limited the arguments against the Examiner’s rejections
to certain limitations recited in the independent claims (claims 45, 56,
and 68), and in dependent claims 46, 57, and 71. Most critically, according
to Markhart, Johnson does not suggest performing the steps of actinically
exposing and thermally developing the flexographic printing elements in a
single apparatus, “especially when taking into consideration the elevated
temperatures required for thermal development as compared to the
temperature required for imaging and exposing and also the differences in
the processing steps.” (Id. at 8, 1st para.) In Markhart’s view, Gelbart does
not make up for these deficiencies, and actually teaches away from

5 Daniel Gelbart, Non-Permanent Inkjetted Flexographic Mask, U.S. Patent
6,861,203 B2 (1 March 2005), based on an application filed 12 December
2002.
6 Rejection B combines Final Rejections 2 and 4.
7 W.F. Huck, U.S. Patent 2,997,951 (1961).
8 Rejection C combines Final Rejections 3 and 5.
9 Masaya Okamoto, U.S. Patent 6,490,424 B2 (3 December 2002).
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performing the developing step in the same apparatus as the imaging and
exposing steps. (Id. at 8, last para.) As for the further component or step of
detacking and post-curing recited in claims 46, 57, and 71, Markhart argues
that Johnson does not perform “a separate post-curing step after the printing
element has been thermally developed” (id. at 9, 2d full para.; see also 12,
4th para.), as required, according to Markhart, by the claims.
B. Findings of Fact (FF)
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The 653 Specification
1. The 653 Specification teaches that it is highly desirable in the
flexographic printing art to eliminate chemical processing of the printing
elements in order to speed up the printing process (Spec. 2, ll. 5-7) in the
production of newspapers and other publications (id. at ll. 15-17).
2. This goal has been obtained by providing a photopolymer layer on a
flexographic printing element that is selectively cured by exposure to actinic
radiation. (Spec. 3, ll. 5-16.)
3. The photopolymer is chosen to have a substantial difference between
the melt temperature of the cured and the uncured polymers. (Spec. 2,
ll. 30-32.)
4. The exposed printing element is developed by heating to a
temperature above the melt temperature of the unexposed, uncured polymer,
but below the melt temperature of the exposed, cured polymer, generally at
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least about 70° C, and removing the melted polymer, leaving the cured
polymer in place. (Spec. 3, l. 18, to 4, l. 2.)
5. The softened or melted polymer can be removed by a process
generally referred to as “blotting,” in which “the heated printing element is
contacted with a material that will absorb or otherwise remove the softened
or melted uncured photopolymer.” (Spec. 4, ll. 1-4.)
6. Removal of the softened or melted polymer can also be accomplished
by a doctor blade positioned adjacent to the printing element. (Spec. 13,
ll. 28-33.)
7. According to the 653 Specification, “exposing, developing and post
exposure/detack steps have traditionally been carried out in separate
devices.” (Spec. 5, ll. 26-27.)
8. A drawing of an embodiment of the claimed flexographic printing
apparatus is shown in Fig. 5, which is reproduced infra:

{Fig. 5 is said to show a printing apparatus}
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9. Printing element l6, with imaged surface 14 (Spec. 11, ll. 28-29) is
supported on the unlabeled shaft that is journaled in unlabeled bearings at
either end.10
10. Means for exposing the surface of the printing element to a source of
actinic radiation 52 is said to comprise, typically, one or more UV light
sources. (Spec. 15, ll. 12-17.)
11. Blotting material 20, which contacts the surface of the printing
element is carried by heatable roll 12, which is movably mounted on
shaft 26 (Spec. 14, ll. 9-11) and which functions as the means for softening
or melting the non-crosslinked photopolymer (Spec. 11, l. 21, to 12, l. 1).
12. As shown in Fig. 1 (not reproduced here), alternatively, a separate
means 50 for softening or melting the non-crosslinked photopolymer may be
provided as an infrared heater or hot air heater. (Spec. 12, ll. 21-25.)
13. In an alternative embodiment, the developing apparatus may comprise
a doctor blade positioned in place of the blotting material. (Spec. 13,
ll. 28-33.)
14. Means for detacking and post-curing the printing element 16 is said to
be provided by device 54 (Spec. 16, ll. 15-22), although no details of the
structure or functioning of device 54 are provided in the 653 Disclosure.
15. Means for maintaining contact between the contactable element 12
and the printing element 16 is provided by an air or hydraulic cylinder 18,
shown in Fig. 1 (not reproduced here). (Spec. 12, ll. 27-30.)

10 For clarity, labeled elements are presented in bold font regardless of how
they are presented in the references of record.
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Johnson
16. Johnson describes an apparatus for thermally developing an exposed
flexographic printing sheet 16.
17. Photosensitive flexographic printing sheet 16 comprises a flexible
substrate 15 that has been coated with radiation-curable composition
layer 17 and exposed to actinic radiation through, e.g., an image-bearing
mask, resulting in cross-linked (“cured”) regions and uncross-linked,
“uncured” regions. (Johnson, col. 8, l. 45, through col. 10, l. 2.)
18. According to Johnson, “the cured irradiated portions [of layer 17 of
sheet 16] have an elevated melting temperature, and are insoluble in
flexographic printing inks under normal conditions.” (Johnson, col. 10,
ll. 1-5.)
19. “Normal conditions” are said to include flexographic plate
temperatures of between about 12° C and 31° C. (Johnson, col. 10, ll. 5-7.)
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20. The Johnson developing apparatus is illustrated in Fig. 15, which is
shown below (element labels not helpful for understanding this appeal have
been deleted for clarity):

{Fig. 15 (redacted) shows a flexographic printing element developing device}
21. Drum 18 is mounted for rotation on stationary support frame 12, and
carries photosensitive element sheet 16 (see Fig. 14, not shown here).
(Johnson, col. 21, ll. 43-53.)
22. Heater 300 heats the sheet 16 sufficiently to liquefy the unexposed
regions. (Johnson, col. 21, ll. 53-62.)
23. Absorbent nonwoven web 76 is brought into contact with sheet 16 by
heated drum 78 (in back of element 315: see Fig. 17a, not shown here) to
remove the liquid material. (Johnson, col. 22, ll. 21-29; cf. id. at col. 17,
ll. 8-16, describing related embodiment shown in Fig. 6.)
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24. Johnson teaches that “[t]he photosensitive element composition
layer 17 is heated to between 40 and 200° C (104-392° F) while in contact
with the absorbent material.” (Johnson, col. 10, ll. 18-20.)
25. “The absorbent material contacts surface 27 of the radiation curable
layer of the heated photosensitive element,” Johnson continues, “and absorbs
the liquefied portions 31 of the elastomeric polymer from the unirradiated
portions of the composition layer 17, forming a flexographic printing plate
in which portions 31 are removed as shown to form a relief pattern or
surface.” (Johnson, col. 10, ll. 20-26.)
26. Cooling means 355 comprises a blower 356 and an optional
shroud 358, and is “positioned where the photosensitive element sheet 16 is
separated from the absorbent material web 76 for cooling the photosensitive
element sheet.” (Johnson, col. 23, ll. 55-62.)
27. Johnson does not describe exposure of the printing element to actinic
radiation in the disclosed developing apparatus.
Gelbart
28. Gelbart describes methods for exposing photosensitive flexographic
printing plates in which the printing plate is coated and exposed in a single
apparatus. (Gelbart, col. 2, ll. 28-39.)
29. The use of a single apparatus is said to avoid handling-induced
damage to the printing plates. (Gelbart, col. 2, l. 39.)
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30. Gelbart notes that “[s]ome of the advantages of the invention are
obtained by performing two or more steps that are conventionally performed
in separate apparatus in a single apparatus.” (Gelbart, col. 3, ll. 10-12.)
31. In particular, Gelbart describes, in Figure 2, item 36, a UV light
source for curing, i.e., crosslinking, a photosensitive layer 18B on
photosensitive printing plate 18. (Gelbart, col. 4, ll. 54-col 5, l. 1.)
32. Gelbart does not describe an apparatus that exposes and develops a
flexographic printing element.
C. Discussion
As the Appellant, Markhart bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d
977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness”) (citation and internal quote omitted). Arguments
not timely raised have been waived. 37 C.F.R. § 41.37(c)(1)(vii) (2009),
second sentence.
Markhart’s substantive arguments for the patentability of claims 45,
56, and 68 are substantially the same. Similarly, Markhart’s arguments for
the patentability of claims 46, 57, and 71 are substantially the same. No
other claims are identified as being separately patentable. Accordingly, all
claims stand or fall with claims 45 and 46. 37 C.F.R. § 41.37(c)(1)(vii).
Markhart’s argument that the Examiner erred because neither Johnson
nor Gelbart describes combining actinic exposure and thermal development
of a flexographic printing element in a single apparatus is not persuasive.
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As the Examiner correctly points out, the test for obviousness depends on
the combined teachings of the references, not on the deficiencies of the
individual references. In this case, Gelbart’s teaching that advantages of less
handling-induced damage arising from the combination of functions from
separate devices in a single apparatus would have suggested to a person
having ordinary skill in the art the desirability of combining the actinic
exposure and thermal developing functions in a single apparatus.
Markhart’s argument that the references do not suggest a blotting material
supported by at least one roll, in combination with thermal developing,
imaging, and exposing (Br. 7, last para.) is not well taken. Claim 45 does
not require that the blotting material11 be supported by at least one roll.
Markhart’s further argument that the elevated temperatures required
for thermal development would have discouraged the addition of actinic
exposure to the thermal development apparatus are not supported by citation
to substantial evidence of record. Moreover, Johnson indicates that a
“normal temperature” for the flexographic printing element is in the range
of 12-31° C (Johnson, col. 10, 11. 1-7), and that development can be
conducted at temperatures as low as 40° C (id. at col. 10, l. 19). Markhart
has not explained why a person having ordinary skill in the art would not
have been able to accommodate ambient temperatures and a temperature
only a few degrees above ambient in a single apparatus. Nor has Markhart
shown that even the 200° C upper end of the development temperature range
would have been beyond the level of ordinary skill to accommodate. Still

11 We understand the term “blotting material” to include an absorbent
material or a doctor blade: see the description of the term “blotting” in
the 653 Specification at page 4, ll. 1-4, quoted supra at page 6, FF 5.
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less has Markhart directed our attention to any teachings in either Johnson or
Gelbart that the proposed combination cannot, or should not be done. Para-
Ordnance Manufacturing, Inc. v. SGS Importers International, Inc., 73 F.3d
1085, 1090 (Fed. Cir. 1995) (to teach away, a reference must state that it
“should not” or “cannot” be used in combinations with the other reference).
Markhart’s arguments that Johnson does not perform a detacking and
post curing step after the printing element has been thermally developed is
not persuasive of harmful error. Markhart has not explained how the cooling
means 355 described by Johnson differs in structure or function from the
otherwise uncharacterized means 54 for detacking and post curing shown in
Figure 5 of the 653 Specification.
Finally, we note that Markhart has not raised any arguments for
patentability based on secondary considerations such as unexpected results.
On the present record, we conclude that Markhart has failed to prove
harmful error in the Examiner’s rejections.
D. Order
We AFFIRM the rejection of claims 45-47, 49-52, 54-58, 61-64, 66,
and 67 under 35 U.S.C. § 103(a) in view of the combined teachings of
Johnson and Gelbart.
We AFFIRM the rejection of claims 48, 59, and 60 under
35 U.S.C. § 103(a) in view of the combined teachings of Johnson, Gelbart,
and Huck.
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We AFFIRM the rejection of claims 53 and 65 under
35 U.S.C. § 103(a) in view of the combined teachings of Johnson, Gelbart,
and Okamoto.
We AFFIRM the rejection of claims 68-72 and 74 under
35 U.S.C. § 103(a) in view of the combined teachings of Johnson, Gelbart,
and Huck.
We AFFIRM the rejection of claim 73 under 35 U.S.C. § 103(a) in
view of the combined teachings of Johnson, Gelbart, Huck, and Okamoto.
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

PL Initial:
sld
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JOHN L. CORDANI
CARMODY&TORRANCE LLP
P.O. BOX 1110
50 LEAVENWORTH STREET
WATERBURY, CT 06721-1110