Ex Parte Rondon et alDownload PDFPatent Trial and Appeal BoardMay 26, 201612970208 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/970,208 12/16/2010 23517 7590 05/31/2016 MORGAN, LEWIS & BOCKIUS LLP (BO) 1111 PENNSYLVANIA A VENUE, N.W. WASHINGTON, DC 20004 FIRST NAMED INVENTOR Sonia RONDON 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PTK-25617304322001 5680 EXAMINER ROBINSON, CHANCEITY N ART UNIT PAPER NUMBER 1722 NOTIFICATION DATE DELIVERY MODE 05/31/2016 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): kcatalano@morganlewis.com patents@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SONIA RONDON 1 and Kevin Ray Appeal2014-008513 Application 12/970,208 Technology Center 1700 Before CHUNG K. PAK, MARK NAGUMO, and A VEL YN M. ROSS, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Sonia Rondon and Kevin Ray ("Rondon") timely appeal under 35 U.S.C. § 134(a) from a non-final rejection2 of claims 1-12, which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6(b ). We affirm-in-part. 1 The real party in interest is listed as Presstek, Inc. (Appeal Brief, filed 28 February 2014 ("Br."), 2.) 2 Office action mailed 30 July 2013 ("Office Action"; cited as "OA"), in response to a Request for Continued Examination ("RCE") filed 19 July 2013, under 37 C.F.R. §1.114. Appeal2014-008513 Application 12/970,208 A. Introduction 3 OPfNION The subject matter on appeal relates to recording media said to be useful for waterless laser-imageable lithographic printing plates. The media comprise a oleophilic substrate on which is layered a laser-ablatable imaging layer, which is in tum covered by an oleophobic cured (cross-linked) silicone layer. (Spec. 2; Fig. 1) In use, the recording media is image-wise exposed to laser radiation, which is absorbed by the laser-ablatable imaging layer and converted into heat. The laser-ablatable layer is vaporized, leaving a void where the silicone layer is no longer anchored. (Fig. 2.) The de- anchored silicone layer and whatever is left of the laser-ablated layer is removed (e.g., by rubbing the plate, with or without a cleaning liquid, such as water) to reveal the oleophilic base layer. (Id. at 17, 11. 20-26; Fig. 3.) Printing ink applied to the developed recording media sticks only to the oleophilic regions (no water or "fountain solution" is needed to prevent the ink from sticking to the oleophobic regions, hence the epithet "dry"). The ink may be printed repeatedly onto a printing medium. (Id. at 18, 11. 3-7.) The inventors have discovered that the durability of the addition-cured silicone top layer depends strongly on certain parameters. In particular, in the words of the '208 Specification, "when combining a vinyl-functional polydialkylsiloxane with a silane cross-linking agent, the molecular weight of the vinyl-functional polydialkylsiloxane and the molar ratio of silicon 3 Application 12/970,208, Waterless printing members and related methods, filed 16 December 2010. We refer to the '"208 Specification," which we cite as "Spec." (The title was amended 19 July 2013 with the filing of the RCE to Recording media and related methods.) 2 Appeal2014-008513 Application 12/970,208 hydride functional groups to vinyl groups are both critical and interrelated." (Id. at 6, 11. 25-28.) Sole independent claim 1 is representative and reads: A recording medium comprising an oleophilic substrate and, thereover, a topmost oleophobic layer comprising a cured polymeric silicone matrix that consists essentially of the addition-cure reaction product of a vinyl- functional polydialkylsiloxane and a silane cross-linking agent, wherein: a) the vinyl-functional polydialkylsiloxane has a molecular weight ranging from 30,000 to 75,000 or 110,000 to 130,000; b) if the molecular weight of the vinyl-functional polydialkylsiloxane is within the range of 30,000 to 75,000, a molar ratio of silane groups in the cross-linking agent to vinyl groups in the polydialkylsiloxane is within the range of about 11:1 to about 25:1; and c) ifthe molecular weight of the vinyl-functional polydialkylsiloxane is within the range of 110,000 to 130,000, the molar ratio of silane groups in the crosslinking agent to vinyl groups in the polydialkylsiloxane is from about 5: 1 to about 2 7: 1. (Claims App., Br. 13; some indentation, paragraphing, and emphasis added.) Three definitions provided by the Specification are informative: First, "[a]s used herein, the term 'silane cross-linking agent' means a polydialkylhydrosiloxane polymer having multiple (e.g., terminal) silicon hydride functional groups." (Spec. 6, 1. 28, to 7, 1. 1.) 3 Appeal2014-008513 Application 12/970,208 Second, the term "about" means "±10% (e.g., by weight or by volume), and in some embodiments[4J, ±5%." (Id. at 9, 11. 20-21.) Third, "[t]he term 'consists essentially of' means excluding other materials that contribute to function." (Id. at 11. 21-22.)5 The Examiner maintains the following grounds of rejection6 : A. Claims 1--4 and 6-12 stand rejected under 35 U.S.C. § 103(a) in view of Fujiyoshi. 7 Al. Claims 5 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Fujiyoshi and Cowan. 8 4 No such embodiments, however, appear to be disclosed. 5 It should be noted that the example that follows immediately after this definition (Spec. 9, 11. 21-26) makes clear that the recited "function" is the principal function of the specified material: "For example, a cured polymeric silicone matrix that consists essentially of the addition-cure reaction product of a vinyl-functional polydialkylsiloxane and a silane cross-linking agent may include modifiers added to alter physical properties, such as adhesion or rheology, of the finished coating; and/or colorants, in the form of dyes or pigments, to facilitate quality-assurance evaluation or monitoring of the imaging process." (Spec. 9, 11. 22-26.) 6 Examiner's Answer mailed 30 May 2014 ("Ans."). 7 Kunitaka Fujiyoshi et al., Directly imageable waterless planographic printing plate precursor, and directly imageable waterless planographic printing plate, U.S. Patent No. 6,344,306B1 (2002). 8 Patrick Joseph Cowan, Cross-linked organosiloxane polymers, EP 0 282 927 Al (1988). 4 Appeal2014-008513 Application 12/970,208 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Rondon presents arguments for patentability based on limitations found in claim 1 and claim 12 only. Accordingly, remaining claims 2-11 stand or fall with claim 1. Claim 1 The error with the appealed rejections, in Rondon's view, is that "Fujiyoshi discloses a molecular weight range of 10,000 to 200,000 (or 30,000 to 150,000) and a silane:vinyl ratio of 1.5 to 30 (or 10 to 20)." (Br. 7, 11. 9-10; footnotes omitted; citing two passages in Fujiyoshi.) The two paragraphs in Fujiyoshi cited by Rondon for this finding (and by the Examiner: OA, sentence bridging 3--4, and the first full sentence at 4) read in most relevant part: A vinyl group-containing polydimethylsiloxane with a molecular weight of thousands to hundreds of thousands can be used, but in view of handling convenience, the ink repellency and flaw resistance of the obtained printing plate, etc., it is preferable to use a compound with a weight average molecular weight of 10,000 to 200,000. A more preferable range is 30,000 to 150,000. (Fujiyoshi col. 12, 11. 44--50.) As for the quantitative ratio of the compound having SiH groups to the polydimethylsiloxane, it is preferable that the molar ratio of the SiH groups/the carbon-carbon double bonds of the polydimethylsiloxane is 1.5 to 30. A more preferable range is 10 to 20. If the molar ratio is less than 1.5, the silicone rubber layer may be insufficiently cured, and if more than 30 on the contrary, the physical 5 Appeal2014-008513 Application 12/970,208 properties of the rubber become fragile, to adversely affect the flaw resistance, etc. of the printing plate. (Id. at col. 13, 11. 23-30.) However, Rondon urges, "[t]he claims expressly link the recited ranges so that their values depend on each other, i.e., they are not independent as in Fujiyoshi. That is, Fujiyoshi contains no suggestion to mutually restrict the ranges to the specific combinations set forth in the present claims." (Br. 7, 11. 12-15.) This is especially so, according to Rondon, because Fujiyoshi provides no examples within the scope of the appealed claims, as demonstrated in the testimony9 of Dr. Ray, one of the inventors. (Id. at 5, 11. 17-19; 9, 11. 18-19.) Paragraphs 7 and 9 of the Ray Declaration read: 7. Also as illustrated in the table, none of the Examples provided in Fujiyoshi falls within the present claims. Examples 3 through 7 relate to condensation-cure reactions and are, therefore irrelevant to the present claims. Examples 1 and 2 describe addition-cure reactions and the polydimethylsiloxane has a molecular weight of around 46,200 (assuming a monomer unit of ~60 and the stated polymerization degree of 770). Although not stated in Fujiyoshi, the silane:vinyl molar ratios in Examples 1 and 2 appear to be approximately 1: 1, based on technical data for the HMS-501 silane product referenced in Fujiyoshi and the disclosed vinyl composition. 9. More generally, Fujiyoshi fails to suggest optimizing either the molecular weight range or the silane:vinyl molar ratio in order to achieve superior results of any sort. This is consistent with the understanding of those skilled in the art at the time the present invention was made, who likewise would not have considered either molecular weight or the 9 Declaration of Kevin Ray, Ph.D., filed 19 July 2013 ("Ray Declaration"). 6 Appeal2014-008513 Application 12/970,208 silane:vinyl molar ratio to be a "result-effective variable" since the unexpected relationship between these variables and printing performance was unknown. (Ray Declaration, 3--4; emphasis added.) Notably, the Ray Declaration does not describe the "technical data for the HMS-501 silane product" or the technical data for the "disclosed vinyl composition" that Dr. Ray uses in his analysis supporting the conclusion that the Si-H:vinyl molar ratio in Examples 1 and 2 is about 1: 1. Nor does Dr. Ray describe or explain the calculations based on these data that lead to his conclusion. While we do not question Dr. Ray's qualifications to testify as to technical matters relating to silicones in this appeal, it has not escaped our attention that both the Examiner (OA 7, 11. 10 and 20; 8, 11. 1-2; 9, 11. 11- 13), and Rondon (Br. 7, 1. 10) find that Fujiyoshi teaches expressly that a more preferred range of the "molar ratio of the SiH groups/the carbon- carbon double bonds of the polydimethylsiloxane is ... 10 to 20." (Fujiyoshi col. 13, 11. 25-27.) We are therefore surprised that Dr. Ray reports that the molar ratio in the working examples is about 1: 1, which is less than the minimum value of 1.5, below which Fujiyoshi warns "the silicone rubber layer may be insufficiently cured." (Fujiyoshi col. 13, 11. 27- 28.) It is rather unusual that the working examples in an issued patent are all outside the bounds of a parameter said to be critical for the success of the disclosed invention. While we would in any event generally require a more 7 Appeal2014-008513 Application 12/970,208 detailed analysis of facts supporting a conclusion, even by an expert declarant10, the facts of this case make such a detailed analysis critical. We note further that "the monomer unit of ~60" reported by Dr. Ray in paragraph 7 of the Ray Declaration appears to underestimate the formula weight of the monomerunit-0Si(CH3)z-, 16 + 28 + 2 x (12 + 3) = 74, resulting in a nominal molecular weight of the 770 polymerization degree polydimethylsiloxane of about 57,000 rather than 46,200. The difference here is immaterial because both estimates of molecular weight values are within the range specified by claim 1, i.e., 30,000 to 75,000. Thus, even if the Examples of Fujiyoshi use a cross-linker having a ratio Si-H:C=C outside the range required by appealed claim 1 (and outside the range recommended by Fujiyoshi), it would still have been obvious to use a cross linker having a ratio in the range of 10 to 20 with the vinyl-terminated polydimethylsiloxanes recommended by Fujiyoshi. It is well-settled that the teachings of a reference are not limited to the specific embodiments. The statement of Dr. Ray in paragraph 9, that "Fujiyoshi fails to suggest optimizing either the molecular weight range or the silane:vinyl molar ratio in order to achieve superior results of any sort" is not well-taken. Fujiyoshi expressly teaches that if the ratio is too low, the rubber will not be sufficiently cured, and if the ratio is too high, the rubber becomes too fragile, thereby "adverse[ly] [] affect[ing] the flaw resistance, etc., of the printing plate." (Fujiyoshi col. 13, 11. 25-30.) To the extent Dr. Ray may be arguing that the higher range of 110,000 to 130,000 is not specifically recognized by 1° Cf Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) ("Nothing in the rules or in our jurisprudence requires the fact finder to credit the unsupported assertions of an expert witness.") 8 Appeal2014-008513 Application 12/970,208 Fujiyoshi, or that the presently excluded range of 75,000 to 110,000 11 is not recognized by Fujiyoshi, the range prefered by Fujiyoshi of the Si-H:C=C ratio of 10 to 20 applies to both ranges of silicone molecular weights recited in claim 1. It is fundamental Patent Law that the existence of a single obvious embodiment within the scope of a claim suffices to render that claim unpatentable. Claim 12 Claim 12 depends from claim 1 via a series of intermediate dependent claims and read (extraneous connecting verbiage omitted) as follows: The recording medium of claim 1, further comprising a laser-ablatable imaging layer between the substrate and the topmost layer, ... wherein the imaging layer is ablatable upon exposure to a laser beam having a fluence of at least 250 mJ/cm2 ... wherein the imaging layer is a thin metal/metal oxide layer; ... wherein the imaging layer has a thickness no greater than 50 nm. (Claims App., Br. 14; claims 9--12 combined, indentation and emphasis added.) Rondon urges that Fujiyoshi's teaching cited at column 12 is too broad to support the Examiner's conclusion that the subject matter of claim 12 would have been obvious. (Br. 11.) Fujiyoshi discloses that that "[i]t is preferable that the thickness of the ink acceptable layer is 0.1 to 10 g/m2 as a covering layer, in view of the 11 We may assume, without deciding, ± 10% in the endpoints. 9 Appeal2014-008513 Application 12/970,208 printing durability of the printing plate, likeliness to volatilize the diluting solvent, and excellent productivity." (Fujiyoshi col. 12, 11. 7-11.) The Examiner merely cites this passage and concludes, without any analysis or explanation, that the range disclosed by Fujiyoshi overlaps the range required by claim 12. We note that a layer have an area density having an areal density of 0.1 g/m2 has a thickness of less than 50 nm if the bulk density is greater than 2 g/ cm2 : (0.1 g/m2)/(2 g/cm2 x (100 cm/m)3) = (0.05/106) m = 50 x 10-9 m = 50 nm. The Examiner has not, however, explained what part or parts of Fujiyoshi column 4, line 65, through column 12, line 12, support the conclusion that Fujiyoshi teaches suggests or that the ink-acceptable layer be a metal/metal oxide layer less than 50 nm thick. On the present record, the weight of the evidence supports Rondon that the Examiner has not established a prima facie case of obviousness of claim 12. C. Order It is ORDERED that the rejection of claims 1-11 is affirmed. It is FURTHER ORDERED that the rejection of claim 12 is reversed. 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-IN-PART 10 Copy with citationCopy as parenthetical citation