Ex Parte Mori et al

Board of Patent Appeals and Interferences

Jan 25, 2011

11224086 (B.P.A.I. Jan. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKANORI MORI and TAKAHIRO GOTO
____________

Appeal 2010-002042
Application 11/224,086
Technology Center 1700
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 3, and 5-11 under 35 U.S.C. § 103(a) as
unpatentable over Baumann (US 6,664,025 B2, issued Dec. 16, 2003) in

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-002042
Application 11/224,086

view of Yau (US 7,166,407 B2, issued Jan. 23, 2007) and Shimada (US
2004/0062939 A1, pub. Apr. 1, 2004). We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.
Appellants claim a lithographic printing plate precursor comprising a
hydrophilic support of aluminum, a photosensitive layer, and "a protective
layer containing a water-soluble polymer comprising polyvinyl alcohol and
. . . an inorganic stratiform compound [e.g., mica]" (claim 1).
Representative claim 1 reads as follows:
1. A lithographic printing plate precursor comprising:

a hydrophilic support, which comprises aluminum;

a photosensitive layer containing a sensitizing dye having an
absorption maximum in a wavelength range of 300 to 500 nm, a
polymerization initiator, a chain transfer agent, a compound having an
ethylenically unsaturated double bond and a polymer binder having a
crosslinkable group; and

a protective layer containing a water-soluble polymer comprising
polyvinyl alcohol and from 5 to 55% by weight of an inorganic stratiform
compound based on the total solids content of the protective layer,

in this order;

wherein the coating amount of the protective layer is from 0.5 g/m2 to
2.0 g/m2.

We will sustain the rejection on appeal for the reasons expressed in
the Answer and below.
It is undisputed that Baumann discloses a lithographic printing plate
precursor comprising an aluminum support, a photosensitive layer, and a
protective layer containing a water-soluble polymer comprising polyvinyl
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Appeal 2010-002042
Application 11/224,086

alcohol as required by claim 1. The Examiner acknowledges that Baumann's
protective layer does not include mica but finds that Yau teaches an imaging
element with an outer protective layer comprising polyvinyl alcohol and
mica (Ans. 4). The Examiner concludes that "[i]t would have been obvious
to one of ordinary skill in the art to use the mica of Yau in the protective
layer of Baumann to protect the imaging layer from defects as taught by Yau
(col. 3, lines 15-17)" (id.).
The dispositive issue in this appeal is whether the Examiner has
established a prima facie case of obviousness for the above combination of
the Baumann and Yau teachings. Because Appellants have not separately
argued dependent claims 3 and 5-11, these claims will stand or fall with
independent claim 1.
Appellants argue that there is no reason to combine Baumann and Yau
with a reasonable expectation of success because Yau relates to photographs
with supports made of paper rather than a printing plate having an aluminum
support (App. Br. 9).
This argument is unpersuasive. Contrary to Appellants' belief, Yau is
not limited to photographs having paper supports. Instead, Yau's invention
relates to an imaging element broadly (see Abst.) having supports which
include plates of metal such as aluminum (col. 34, ll. 57-62).
Appellants also argue that the above combination of references would
not have been obvious because the polyvinyl alcohol of Yau's protective
layer is not characterized as a binder and therefore differs from the polyvinyl
alcohol binder of Baumann's protective layer (App. Br. para. bridging 10-
11).

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Appeal 2010-002042
Application 11/224,086

The deficiency of this argument is that it is implicitly based on the
presumption that one with ordinary skill in this art would fail to recognize
the binding property possessed by the polyvinyl alcohol used by Yau in
forming the protective layer. The record contains no support for this
presumption. To the contrary, the record reflects that an artisan would have
known polyvinyl alcohol constitutes a binder since it is expressly referred to
as a binder by both Baumann (col. 10, ll. 33-35) and Yau (col. 31, ll. 26-37).
Appellants argue that an artisan would not have provided the
polyvinyl alcohol protective layer of Baumann with Yau's mica because the
artisan would have expected the mica to lower the desired oxygen blocking
property of the polyvinyl alcohol layer (App. Br. 11). Appellants then
inconsistently argue that the above provision would not have been made
because the polyvinyl alcohol protective layer of Yau cannot possess an
oxygen blocking property (id. at para. bridging 11-12).
Appellants have provided this record with no evidentiary support for
either of these arguments. Accordingly, on this record, the arguments are
mere allegations with no persuasive merit. In addition, Appellants’
arguments are contrary to the applied prior art since both Yau (col. 35, ll. 3-
9) and Baumann (col. 10, ll. 28-40) teach that polyvinyl alcohol possesses an
oxygen blocking property.
Finally, Appellants argue that
the purpose of using mica in Yau is different from the
purpose of the inorganic stratiform compound in the present
invention[, and therefore] [i]t would not have been obvious
for one of ordinary skill in the art to choose mica from the
various materials disclosed in Yau to obtain the effect of the
present invention

(Reply Br. 6).
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Appeal 2010-002042
Application 11/224,086

This argument is unconvincing for two reasons. First, Appellants
have not identified the purpose of using mica (i.e., an inorganic stratiform
compound) in either Yau's invention or their invention. As a consequence,
Appellants have not established that a difference actually exists between
Yau's purpose and Appellants' purpose of using mica. Second, even if such
a difference exists, it would not by itself militate against an obviousness
conclusion. This is because one of ordinary skill in the art need not see an
applicant's identical problem addressed in a prior art reference to be
motivated to apply its teachings. Cross Med. Prods., Inc., v. Medtronic
Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005).
For these reasons and those expressed in the Answer, we sustain the
Examiner's § 103 rejection of all appealed claims.
The decision of the Examiner 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) (2008).

AFFIRMED

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