Ex Parte Oka

Patent Trial and Appeal Board

May 8, 2014

12153866 (P.T.A.B. May. 8, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/153,866 05/27/2008 Yuji Oka 81650(304478) 9239
7590 05/09/2014
Edwards Angell Palmer & Dodge LLP
P.O. Box 55874
Boston, MA 02205
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
05/09/2014 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 YUJI OKA
____________

Appeal 2012-005258
Application 12/153,866
Technology Center 2800
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-005258
Application 12/153,866

2
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 2 and 4. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We reverse.

CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a letterpress printing plate made of
a material having flexibility (Abstract). The printing plate includes a
plurality of raised parts to which ink is applied (id.). The raised parts
include a raised part for a solid shade and a raised part for a halftone shade
(Spec. 0014-0015; claim 2). The printing plate further includes a buildup
part formed at a backside position of the raised part for solid shade with
respect to the printing plate (Abstract). There is also a buildup part formed
at the backside positions of the raised part for a halftone shade, which is
thinner than the buildup part corresponding to the raised part for the solid
shade (Spec. 0015). The buildup parts are formed of ink (Spec. 0015, 0027).
The invention may be visualized with reference to the following annotated
version of FIG. 3:

1 The real Party-In-Interest is Sumita Company Ltd. (Br. 2).
Appeal 2012-005258
Application 12/153,866

3

Annotated FIG. 3 shows a schematic view of a letterpress printing
plate according to the invention.

When the claimed printing plate is in use, the buildup part causes the
raised part for a solid shade to be higher above the main body of the printing
plate than the raised part for the halfshade, as shown in the following
annotated version of FIG. 2:

Appeal 2012-005258
Application 12/153,866

4
Annotated FIG. 2 shows a schematic view illustrating printing using
the letterpress printing plate of the invention.

As explained in the Specification, the thickness of buildup part 121
functions to equalize the pressure applied to the contact area of the raised
part for solid shade 111 and the pressure applied to the contact area of the
raised part for halftone shade 112 (Spec. 0030). Therefore, when an
appropriate pressure is applied to the raised part for halftone shade 112, a
sufficient and appropriate pressure is applied also to the raised part for solid
shade 111, so that excellent printing quality is obtained for both the solid
part and the halftone part (id.).
Claim 2 is representative of the claims on appeal, and is reproduced
below from the Claims Appendix of the Appeal Brief (key claim element
shown in italics):

2. A letterpress printing plate made of a material having
flexibility, comprising:
a first face;
a second face being opposite the first face of the
letterpress printing plate;
a plurality of raised parts for applying printing ink to,
the raised parts being provided on the first face, and
a plurality of buildup parts formed on the second face at
backside positions of the raised parts with respect to the
printing plate,
the raised parts including a raised part for solid shade
and a raised part for halftone shade, the raised part for solid
shade and the raised part for halftone shade being of a same
height,
the buildup parts including:
a buildup part for solid shade, formed on the second
face at a backside position of the raised part for solid shade;
and
Appeal 2012-005258
Application 12/153,866

5
a buildup part for halftone shade, formed on the second
face at a backside position of the raised part for halftone shade
and being of a thickness smaller than the buildup part for
solid shade, the thickness being set in accordance with a
halftone percentage of the raised part for halftone shade, and
the buildup parts being formed of ink.

REJECTION
The Examiner has rejected claims 2 and 4 under 35 U.S.C. § 103(a) as
being unpatentable over Toshiki2 in view of Masaki.3 The Examiner finds
(see, Ans. 4-5) and Appellant does not dispute (see, Br. 4) that Toshiki
discloses each of the following: (1) a letterpress printing plate made of a
material having flexibility (¶¶ 10, 15); (2) first and second faces as recited in
the claim (Fig. 3); (3) a plurality of raised parts provided on the first face to
which printing ink is applied, including a raised part for solid shade and a
raised part for halftone shade which are the same height (¶ 8; Fig. 3); and
(4) a plurality of buildup parts formed on the second face, including a
buildup part for the solid shade raised part, and a buildup part for the
halftone shade (¶ 25, Fig. 3).
The Examiner also finds that the buildup parts of Toshiki’s printing
plate are made of “ink” as required by the claim because “the materials used
for the buildup parts can technically be used to form images [so that] they
can broadly be considered to be ‘ink’” (Ans. 5). Appellant disputes this
finding, on the grounds that the Examiner’s construction of the term “ink” is
too broad (Br. 6; Rep. Br. 2-3).

2 Toshiki, et al., JP 2002-019323, published January 23, 2002.
3 Masaki, et al, JP 2007-185917, published July 26, 2007.
Appeal 2012-005258
Application 12/153,866

6
The Examiner further finds (Ans. 6) that Toshiki teaches that the
different portions of the printing plate have different types of cushion (i.e.
buildup parts), with harder cushions under solid shades than under halftone
shades (¶ 25), in order to alleviate the art-recognized problem of dot gain in
the halftone shade portions or blurriness in the solid shade portions (¶ 8).
Finally, the Examiner finds that one having ordinary skill in the art would
have recognized that Toshiki’s system works to alleviate the problem of dot
gain/blurriness by controlling the pressure profile of the printing plate at the
surface of the substrate because the differing hardnesses of the cushion
layers cause the halftone regions of the printing plate to absorb more of the
force applied at the contact region than the solid shade portions (Ans. 6).
The Examiner acknowledges that Toshiki does not teach that the
buildup part for halftone shade has “a thickness smaller than the buildup part
for the solid shade” (Ans. 5).
The Examiner finds that Masaki teaches an alternative method of
solving the problem of dot-gain or blurriness, the alternative method being a
variation in the heights of the raised parts for the solid shade regions and the
halftone regions (Ans. 6, citing Masaki, ¶ 5). The Examiner concludes that
it would have been obvious to modify Toshiki’s system by varying the
height of the buildup parts:
[I]t would have been obvious to one having ordinary skill in the
art to substitute the alternative method of controlling pressure
by varying the heights of the reliefs in accordance with the
halftone percentages (as taught by Masaki et al.) for the method
of controlling pressure taught by Toshiki et al. because they are
art-recognized equivalents for solving the same problem.
Furthermore, since Toshiki et al. teach using different types of
buildup parts for each portion of the plate, one having ordinary
skill in the art would logically have varied the heights of the
Appeal 2012-005258
Application 12/153,866

7
buildup parts and not the raised parts. Namely, the buildup parts
for the solid shade portions would be thicker than the halftone
shade portions. (Ans. 6-7).

ANALYSIS
Based on the evidence of record, we are persuaded that the Examiner
has erred in rejecting the claims and reverse the rejection.
As noted above, Appellant disputes the Examiner’s finding that
Toshiki discloses buildup parts being formed of ink (one of the elements of
appealed claim 2), arguing that the term “ink,” as used in the claims, is “a
colored liquid material for writing and printing that has been dried and/or
solidified” (Reply Br. 3, underlining deleted), and that Toshiki’s cushioning
materials – identified as foaming synthetic rubber, foaming crude rubber,
foaming polyurethane, and hardened photopolymers (¶ 0018) – are not
formed of “ink” as used in the claims (id.).
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification . . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id. To the extent possible, claim
terms are given their ordinary and customary meaning, as they would be
understood by one of ordinary skill in the art in question at the time of the
invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005)
(en banc).
Appeal 2012-005258
Application 12/153,866

8
In this instance, the Specification does not explicitly define the term
“ink.” However, the Specification does state that the ink used to make up
the buildup parts is deposited on the second face of the printing plate by
being sprayed on by an inkjet printing machine (Spec. ¶ 0028). This is
consistent with the dictionary definition of ink identified by Appellant: “a
colored usually liquid material for writing and printing” (Reply Br. 2, citing
the Merriam Webster Online Dictionary, http://www.merriam-
webster.com/dictionary/ink). Importantly, the Examiner has not provided
credible evidence, either from the Specification or elsewhere, to support the
broad definition of “ink” advanced in support of the rejection – any material
which can be used to form images (see, Ans. 5, 10).
In light of the evidence of record, we find that the cushioning
materials of Toshiki (corresponding to the claimed buildup parts) are not
“formed of ink” as required by claim 2. Therefore, we conclude that the
Examiner has not made out a prima facie case that the prior art teaches a
letterpress printing plate having buildup parts formed of ink.
Moreover, we agree with Appellant’s arguments (Br. 4-5; Reply Br.
4) that the Examiner has not articulated a reason, other than one reliant on
impermissible hindsight, why a person of ordinary skill in the art would have
combined and modified the teachings of the cited references to arrive at the
claimed invention. In particular, Toshiki teaches using buildup parts of
equal thickness for both the solid shade raised parts and the halftone shade
raised parts. Masaki does not teach the use of buildup parts at all, instead
relying on raised parts of different heights for solid shades and halftone
shades. Therefore, even a direct combination of Toshiki and Masaki would
not have yielded the claimed structure, which has buildup parts of varying
Appeal 2012-005258
Application 12/153,866

9
thicknesses. In order to arrive at the present invention, therefore, the
Examiner argues that:
[O]ne having ordinary skill in the art, when presented with the
teachings of Masaki et al., would have been motivated to, as an
art-recognized equivalent means of controlling the pressure
profile of the printing plate, alter the height differential between
the halftone regions and the solid regions. Furthermore,
common sense dictates that there would be only two ways of
accomplishing the goal of creating the height differential: 1) by
changing the height of the upper, image portions; or 2) by
changing the height of the cushioning/buildup material.

Since there are at most two methods which would be intuitively
obvious to one having ordinary skill in the art, and given the
fact that Toshiki et al. already have established changing the
buildup portions in dependence upon the halftone, Examiner
maintains that one having ordinary skill in the art, at the time of
the invention, would have at least had the suggestion from the
teachings of Masaki (combined with common sense reasoning)
to change the height of the buildup portions in order to achieve
the necessary height differential in order to reduce the crushing
of the halftone dots and to improve the printing quality

(Ans. 9, underlining added, italics in original).

We find that the Examiner has not established that “there would be
only two ways of accomplishing the goal of creating the height differential.”
As noted by Appellant (Reply Br. 4), the evidence of record reveals at least
three methods of accomplishing height differential, exemplified by the two
prior art references and the claimed invention. There may be others. We
conclude that it is only with benefit of hindsight that it would have been
obvious to construct a letterpress printing plate having buildup parts with
Appeal 2012-005258
Application 12/153,866

10
varying thicknesses as required by the claims, because none of the cited
references teaches that feature.

CONCLUSION
We REVERSE the rejection of claims 2 and 4 under 35 U.S.C. § 103(a)
as unpatentable over Toshiki in view of Masaki.

REVERSED

cam