Ex Parte Queen et al

Patent Trial and Appeal Board

Jul 24, 2017

13832854 (P.T.A.B. Jul. 24, 2017)

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.
13/832,854 03/15/2013 Mark Queen DAY 0952 P2/34380.368 7003
23368 7590 07/26/2017
DINSMORE & SHOHL LLP
FIFTH THIRD CENTER, ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402-2023
EXAMINER
MARINI, MATTHEW G
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
07/26/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
daytonipdocket@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK QUEEN,
RICHARD CZERNER, CREG BRADLEY,
and DAVID BLENDER
Appeal 2015-005415
Application 13/832,854
Technology Center 2800
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MONTE T. SQUIRE, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an
Examiner’s decision finally rejecting claims 1—12 and 14—21. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claims on appeal are directed to a printing blanket and a method
of making a printing blanket. Representative claims 1 and 12 are reproduced
below from the Claims Appendix of the Appeal Brief dated December 5,
2014 (“App. Br.”). The limitations at issue are italicized.
Appeal 2015-005415
Application 13/832,854
1. A printing blanket comprising:
a base layer;
a compressible layer;
a first polymeric fabric reinforcing layer on said
compressible layer, said polymeric fabric having a melting
point or softening point below the curing temperature for said
printing blanket', wherein at least a portion of adjacent filaments
of said fabric reinforcing layer have flowed together and
bonded to form a reinforcing layer having reduced thickness;
and
a printing surface layer on said fabric reinforcing layer.
App. Br. 15.
12. A printing blanket comprising:
a base layer;
a compressible layer;
a polymeric reinforcing layer over said compressible
layer; said polymeric reinforcing layer comprising a film
selected from rubber, polycarbonate, and rigid polyurethane
and having a thickness between about 0.003 inches and 0.010
inches (0.076 to 0.25 mm); and
a printing surface layer.
App. Br. 17.
The claims on appeal stand rejected as follows:
(1) claims 12, 14, and 19-21 under 35 U.S.C. § 102(b) as
anticipated by Invemizzi;1
(2) claims 1—11 and 16—18 under 35 U.S.C. § 103(a) as
unpatentable over Invemizzi in view of Hertzog;2 and
1 US 6,899,029 B2, issued May 31, 2005 (“Invemizzi”).
2 US 2003/0140805 Al, published July 31, 2003 (“Hertzog”).
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Appeal 2015-005415
Application 13/832,854
(3) claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Invemizzi in view of Gurin.3
B. DISCUSSION
1. Rejection (1)
Referring to the embodiment depicted in Invemizzi Figure 6, the
Examiner finds Invemizzi describes a printing blanket comprising base layer
20, compressible layer 26, polymeric reinforcing layer 24, and printing
surface layer 28. Final 2.4 The Examiner finds polymeric reinforcing layer
24 comprises a mbber film having a thickness between about 0.003 inches
and 0.010 inches (0.076 to 0.25 mm) as recited in claim 12. Final 2 (citing
Invemizzi, col. 7,11. 29—32, col. 12,11. 26—35).
The Appellants argue that layer 24 in Invemizzi Figure 6 is a “fabric
layer.” App. Br. 7. To remedy that defect, the Appellants argue that the
Examiner selects mbber from the various materials disclosed in Invemizzi
column 7. App. Br. 7. However, the Appellants argue that “[t]he need for
selection, picking, and choosing negates anticipation.”5 App. Br. 7 (citing In
reArkley, 455 F.2d 586 (CCPA 1972)).
3 US 3,235,772, issued February 15, 1966 (“Gurin”).
4 Final Office Action dated August 7, 2014.
5 As for the claimed thickness of the polymeric reinforcing layer, the
Appellants recognize Invemizzi discloses that fabric layer 24 has a thickness
of about 0.016 mm, i.e., a thickness within the range recited in claim 1.
App. Br. 8 (citing Invemizzi, col. 12,1. 32). Nonetheless, the Appellants
argue that “there is no guidance or direction provided by [Invemizzi] as to
what constitutes a proper thickness when mbber sheets are used.” App. Br.
8. It is not necessary to address that argument in view of our reversal of the
§ 102(b) rejection based on other arguments presented by the Appellants.
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Appeal 2015-005415
Application 13/832,854
In response, the Examiner finds that rubber film is a species of the
generic disclosure in Invemizzi, and thus anticipates the claimed invention.
Ans. 26 (citing MPEP § 2131.02).
The Appellants’ argument is persuasive of reversible error. Invemizzi
discloses that the blanket depicted in Figure 6 comprises, inter alia, “fabric
layer 24b.” Invemizzi, col. 12,11. 30—31. Invemizzi discloses that fabric
layers 24a, 24b, and 24c “should be made of plain woven fabric of lower
extensibility in the warp direction” and “are typically high grade cotton
yams” but may also be a synthetic material such as rayon, nylon, and/or
polyester. Invemizzi, col. 6,11. 56—63.
Invemizzi discloses that “materials such as porous plastic, paper, or
mbber sheets having the appropriate characteristics may also be substituted
for the . . .fabrics.'1'’ Invemizzi, col. 7,11. 29-32 (emphasis added). Based
on that disclosure in Invemizzi, we find Invemizzi teaches that mbber is an
alternative to the fabrics disclosed in Invemizzi, and not a species of the
disclosed fabrics as found by the Examiner. See App. Br. 7 (arguing that
one would have to select an alternative material for fabric layer 24 and then
would have to select mbber from among the alternative materials disclosed
in Invemizzi (e.g., porous plastic, paper, and mbber sheets)). As the Court
in Arkley stated, “picking and choosing may be entirely proper in the making
of a 103, obviousness rejection,. . . but it has no place in the making of a
102, anticipation rejection.” 455 F.2d at 587—88. For that reason, the
§ 102(b) rejection of claims 12, 14, and 19-21 is not sustained.
6 Examiner’s Answer dated March 12, 2015.
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Appeal 2015-005415
Application 13/832,854
2. Rejection (3)
Claim 15 indirectly depends from claim 12 and recites that “said
polymeric reinforcing materials comprise fillers selected from carbon black,
clay, or silica.” App. Br. 18. The Examiner relies on Gurin to show that
adding carbon fillers to Invemizzi’s polymeric reinforcing materials would
have been obvious to one of ordinary skill in the art. Final 7. The
Examiner, however, does not show that the printing blanket recited in claim
12 would have been obvious to one of ordinary skill in the art based on
Invemizzi, either alone or in combination with Gurin. For that reason, the
§ 103(a) rejection of claim 15 is not sustained.
3. Rejection (2)
Referring to the embodiment depicted in Invemizzi Figure 3, the
Examiner finds Invemizzi discloses a printing blanket comprising base layer
20, compressible layer 26, first polymeric fabric reinforcing layer 24b, and
printing surface layer 28. Final 4. The Examiner finds that “at least a
portion of adjacent filaments (55/57) of said fabric reinforcing layer have
flowed together and bonded (via heating/curing) to form a reinforcing layer
(24b)” as recited in claim 1. Final 4. The Examiner, however, does not find
that Invemizzi discloses that the polymeric fabric in polymeric fabric
reinforcing layer 24b has a melting point or softening point below the curing
temperature of the printing blanket as recited in claim l.7 See Final 4
7 The Appellants disclose that the blanket is cured at a temperature of about
107°C to 177°C and at least a portion of the fabric reinforcing layer
softens/melts and flows to fill the spaces between adjacent filaments. Spec.
140. The Appellants disclose that “the flow of the fabric material reduces
the thickness of the reinforcing layer.” Spec. 126; see also App. Br. 9
(citing Spec. 17).
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Appeal 2015-005415
Application 13/832,854
(emphasis added); see also Ans. 4 (finding that the curing temperature of the
printing blanket is 143°C to 149°C (citing Invemizzi, col. 11,11. 16—20)).
Nonetheless, the Examiner substitutes the polymeric fabric of Invemizzi
with polyethylene as disclosed in Hertzog, which the Examiner finds has a
melting temperature of 85°C to 130°C. Final 4 (citing Hertzog | 51).
The Appellants argue that “[tjhere is nothing in Invemizzi which
indicates the use of a reinforcing layer which is designed to melt below the
temperatures used to cure the blanket.”8 App. Br. 8—9 (emphasis added).
Thus, “without the benefit of applicants’ specification,” the Appellants
argue, “there is no reason why one would choose a lower melting point
material and substitute it in Invemizzi.” App. Br. 10; see also Reply Br. 49 10
(arguing that “only by using prohibited hindsight knowledge of applicants’
claimed invention would anyone want to use a low melting point material”).
In response, the Examiner points out that “Invemizzi has been
modified by replacing the high melting point material of polyester[10] with
8 Similarly, the Appellants argue that Hertzog does not “teach or suggest a
polymeric fabric having a melting point or softening point below the curing
temperature for the printing blanket such that the adjacent filaments of the
layer flow together to form a layer having reduced thickness.” App. Br. 9.
9 Reply Brief dated April 22, 2015.
10 According to the Declaration of Mark Queen included in the Evidence
Appendix of the Appeal Brief (“Queen Declaration”) and previously filed on
June 18, 2014, in response to the Non-Final Office Action dated March 27,
2014 (see Reply Br. 5—6):
Invemizzi. . . teaches the use of rayon, nylon, and polyester for
the fabric reinforcing layer; however, rayon decomposes at
temperatures between 185 to 205°C; nylon softens at a
temperature of 180°C and melts at a range of 215-220°C;
polyesters soften at a temperature of about 240°C and melt at
about 260°C. Thus, the rayon does not melt, and the nylon and
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Appeal 2015-005415
Application 13/832,854
the lower melting point material of polyethylene as taught by Hertzog.”
Ans. 4—5 (emphasis added). We recognize as much. The Examiner,
however, does not explain, in any detail, why one of ordinary skill in the art
would have expected a reinforcing material that has a melting point below
Invemizzi’s final curing temperature, such as the polyethylene disclosed in
Hertzog, to be a suitable substitute for polyester that melts at a temperature
higher than Invemizzi’s final curing temperature. See Reply Br. 5 (arguing
that one of ordinary skill in the art “would not assume that a material. . . not
having the higher melting point of all of Invemizzi’s disclosed synthetic
materials, would be suitable for use in Invemizzi’s blanket”). The mere fact
that polyethylene was known to be used as a reinforcing material in printing
blankets does not suffice. See Final 4 (finding that Hertzog teaches that
polyethylene provides stmctural reinforcement in a printing blanket (citing
Hertzog 151)).
In sum, a preponderance of the evidence of record does not support
the Examiner’s conclusion of obviousness. Therefore, the § 103(a) rejection
of claims 1—11 and 16—18 is not sustained.
C. DECISION
The Examiner’s decision is reversed.
REVERSED
polyester materials of Invemizzi soften and flow at higher
melting temperatures which are outside the curing temperature
of Invemizzi’s blanket, which is from 132°C to 160°C.
Queen Decl. 2; see also Final 6 (finding that the melting point of polyester is
greater than 250°C).
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