Ex Parte Shigeta

Patent Trials and Appeals Board

Jun 12, 2019

14241579 - (D) (P.T.A.B. Jun. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/241,579 02/27/2014
23872 7590 06/13/2019
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
FIRST NAMED INVENTOR
Tatsuo Shigeta
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.
74680 8444
EXAMINER
THOMAS, CIEL P
ART UNIT PAPER NUMBER
1794
MAIL DATE DELIVERY MODE
06/13/2019 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 T ATSUO SHI GET A
Appeal2017-006416
Application 14/241,579
Technology Center 1700
Before WESLEY B. DERRICK, SHELDON M. McGEE, and
JANEE. INGLESE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Appellant2 seeks review under 35 U.S.C. § 134(a) from the
Examiner's maintained rejection under 35 U.S.C. § 103 of claims 1-8, 13-
16, 19, and 20 over Shigeta3 in view ofiida4 and of claims 9-12, 17, and 18
1 We refer to the Specification filed February 27, 2014 ("Spec."), the Final
Office Action mailed March 23, 2016 ("Final Act."), the Appeal Brief filed
August 22, 2016 ("App. Br."), the Examiner's Answer dated January 12,
2017 ("Ans."), and the Reply Brief filed March 9, 2017 ("Reply Br.").
2 The Appellant, Think Laboratory Co., Ltd., is also identified as the real
party in interest. App. Br. 1.
3 Shigeta, US 4,519,887, issued May 28, 1985.
4 Iida, US 5,766,428, issued June 16, 1998.
Appeal2017-006416
Application 14/241,579
over Shigeta and Iida, in further view of Castle. 5 An oral hearing was held
on April 30, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the decision to reject claims 1-20 and enter a new ground
of rejection of claims 1-20.
CLAIMED SUBJECT MATTER
Appellant's invention relates to a processing unit or system for
making a gravure plate including a condenser to condense vaporized
processing solution. Spec., Abstract. Claims 1, 4, and 13 are independent.
1. A processing unit including a condenser, which is to be
used for a fully automatic gravure plate-making processing
system for manufacturing a plate-making roll by performing a
series of processes on an unprocessed plate-making roll, the
processing unit comprising:
a processing bath;
a chuck means for holding a gravure cylinder inside the
processing bath;
an intake port for taking in air, which is provided in a
part of the processing bath, said intake port being located on
one side of said processing bath;
an exhaust port for exhausting gas, which is provided in
another part of the processing bath, said exhaust port being
provided on another side of said processing bath, said intake
port facing in a direction of said exhaust port, said intake port,
said exhaust port and said processing bath defining a fluid flow
path, wherein fluid moves along said fluid flow path from said
one side of said processing bath to said another side of said
processing bath, the gravure cylinder being located between the
intake port and the exhaust port, at least a portion of the
gravure cylinder being located in said fluid flow path during a
plating process of the gravure cylinder, said at least said
5 Castle, US 5,149,411, issued September 22, 1992.
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Application 14/241,579
portion of the gravure cylinder being located at a spaced
location from said processing bath, at least another portion of
the gravure cylinder being in contact with said processing bath;
a condenser provided between the processing bath and
the exhaust port; and
a processing solution return pipe for returning, to the
processing bath, a processing solution obtained by the
condenser that liquefies a part of the gas to be exhausted, said
condenser being arranged adjacent to said processing solution
return pipe, said processing bath and said exhaust port.
4. A fully automatic gravure plate-making processing
system, comprising:
a processing unit including a condenser, said processing
unit comprising:
a processing bath;
a chuck means for holding a gravure cylinder
inside the processing bath;
an intake port for taking in air, which is provided
in a part of the processing bath, said intake port being provided
on a first side of said processing bath;
an exhaust port for exhausting gas, which is
provided in another part of the processing bath, said exhaust
port being provided on a second side of said processing bath,
said first side being located opposite said second side, said
intake port, said processing bath and said exhaust port defining
a fluid flow path, at least a portion of the gravure cylinder
being located in said fluid flow path, said portion of the gravure
cylinder being in contact with a flow of fluid during a plate-
making process of the gravure cylinder and another portion of
the gravure cylinder being in contact with said processing bath
during said plate-making process of the gravure cylinder,
wherein the fluid moves along said fluid flow path from said
first side of said processing bath to said second side of said
processing bath;
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Application 14/241,579
a condenser provided between the processing bath
and the exhaust port; and
a processing solution return pipe for returning, to
the processing bath, a processing solution obtained by the
condenser that liquefies a part of the gas to be exhausted, said
condenser being arranged adjacent to said processing solution
return pipe, said processing bath and said exhaust port.
13. A processing unit including a condenser, which is to be
used for a fully automatic gravure plate-making processing
system for manufacturing a plate-making roll by performing a
series of processes on an unprocessed plate-making roll, the
processing unit comprising:
a processing bath, said processing bath being in fluid
communication with a processing bath outlet;
an intake port for taking in air, which is provided in a
part of the processing bath, said intake port being arranged on
one side of said processing bath;
an exhaust port for exhausting gas, which is provided in
another part of the processing bath, said exhaust port being
arranged on another side of said processing bath, said intake
port facing in a direction of said exhaust port, said exhaust port,
said intake port and said processing bath defining at least a
portion of a fluid flow path, wherein a fluid is moved along said
fluid flow path;
a chuck means for holding a gravure cylinder inside the
processing bath such that a first portion of the gravure cylinder
is arranged in said fluid flow path during a plate-making
process of the gravure cylinder and a second portion of the
gravure cylinder engages the processing bath during the plate-
making process of the gravure cylinder, said first portion being
located at a spaced location from said second portion, said first
portion of the gravure cylinder being located at a spaced
location from said processing bath, whereby the first portion of
the gravure cylinder engages the fluid during the plate-making
process of the gravure cylinder;
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Appeal2017-006416
Application 14/241,579
a condenser provided between the processing bath and
the exhaust port, said condenser being arranged adjacent to said
processing bath outlet and said exhaust port; and
a processing solution return pipe for returning, to the
processing bath, a processing solution obtained by the
condenser that liquefies a part of the gas to be exhausted.
App. Br. (Claims App.), 34--36, 38-39 (emphases added).
DISCUSSION
We do not reach the merits of the rejections under 35 U.S.C. § 103 at
this time. Before a proper review of the Examiner's rejections can be
performed, the subject matter encompassed by the claims on appeal must be
reasonably understood without resort to speculation.
The pending claims are not subject to being understood without such
speculation. Each of the independent claims recites a "processing bath" and
the arrangement of an intake port, the processing bath, and an exhaust port to
define a fluid flow path. Also, in each independent claim, the intake port is
recited as being "provided in a part of the processing bath" and the exhaust
port is recited as being "provided in another part of the processing bath."
Further, in each independent claim, chuck means are recited "for holding a
gravure cylinder inside the processing bath." Having indicated that the
elements defining the fluid flow path-the intake port, the processing bath,
and the exhaust port-are either "part of the processing bath" or are the
"processing bath" itself, and that there are means "for holding a gravure
cylinder inside the processing bath," the independent claims set forth
seemingly inconsistent requirements. Independent claim 1 recites that:
at least a portion of the gravure cylinder being located in said
fluid flow path ... , said at least said portion of the gravure
cylinder being located at a spaced location from said processing
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bath, at least another portion of the gravure cylinder being in
contact with said processing bath.
App. Br. 34. Independent claim 4 recites that:
a portion of the gravure cylinder being in contact with a flow of
fluid ... and another portion of the gravure cylinder being in
contact with said processing bath.
Id. at 35-36. Independent claim 13 recites that:
a first portion of the gravure cylinder is arranged in said fluid
flow path ... and a second portion of the gravure cylinder
engages the processing bath ... , said first portion being located
at a spaced location from said second portion, said first portion
of the gravure cylinder being located at a spaced location from
said processing bath.
Id. at 38. In sum, there are significant issues in regard to what elements are
properly included in, or are part of, the "processing bath," and what elements
are separate from it, and how such elements either contact or are positioned
apart from the recited gravure cylinder.
For these reasons, we determine that each of the independent claims,
and the claims depending from them, are indefinite. Section 112, second
paragraph, requires that "[t]he specification ... conclude with one or more
claims particularly pointing out and distinctly claiming the subject matter
which the applicant regards as his invention. " 6 "As the statutory language of
'particular[ity ]' and 'distinct[ ness ]' indicates, claims are required to be cast
in clear-as opposed to ambiguous, vague, indefinite-terms." In re Packard,
751 F.3d 1307, 1313 (Fed. Cir. 2014).
Accordingly, we enter a new ground of rejection as to claims 1-20
under 35 U.S.C. § 112, second paragraph.
6 The application is subject to examination under the pre-AIA first to invent
provisions. Final Act. 2.
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It necessarily follows that we are unable to determine the propriety of
the Examiner's§ 103 rejections because to do so would require considerable
speculation with regard to the metes and bounds of the claimed subject
matter. In re Steele, 305 F.2d 859,862 (CCPA 1962) ("Our analysis of the
claims indicates that considerable speculation as to meaning of the terms
employed and assumptions as to the scope of such claims were made by the
examiner and the board. [W]e do not think a rejection under 35 U.S.C.
§ 103 should be based on such speculations and assumptions."); In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("Ifno reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious-the claim becomes indefinite."). Therefore, we
procedurally reverse the rejections of claims 1-20 under 35 U.S.C. § 103.
In doing so, we emphasize that we do not take any position on the
merits of the underlying prior art rejections, and upon clarifying the
indefinite language in the claims, we will consider such rejections based on
the prior art of record, if maintained by the Examiner and then brought
before us again on appeal.
DECISION
The Examiner's rejections of claims 1-20 under 35 U.S.C. § 103 is
procedurally REVERSED.
Pursuant to 37 C.F.R. § 4I.50(b), we enter a NEW GROUND OF
REJECTION under 35 U.S.C. § 112, second paragraph, of claims 1-20.
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Section 4I.50(b) provides "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
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Application 14/241,579
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; NEW GROUND OF REJECTION PURSUANT TO
37 C.F.R. § 4I.50(b)
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