Ex parte Simeth

Board of Patent Appeals and Interferences

Sep 27, 2000

08885399 (B.P.A.I. Sep. 27, 2000)

Application for patent filed June 30, 1997. The real party in interest is MAN Roland1
Druckmaschinen.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today (1) was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
__________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________
Ex parte CLAUS SIMETH
__________________
Appeal No. 1999-0872
Application 08/885,3991
________________
ON BRIEF
________________
Before McKELVEY, Senior Administrative Patent Judge, and LEE and MEDLEY,
Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s rejection of
appellant’s claims 2-5 and 30-34. No claim has been allowed. The real party in interest is
MAN Roland Druckmaschinen AG.
References relied on by the Examiner
DeMoore (‘644) 3,791,644 Feb. 12, 1974
DeMoore (‘267) 4,402,267 Sep. 6, 1983
Simeth 5,154,120 Oct. 13, 1992
Appeal No. 99-0872
Application 08/885,399
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The Rejection on Appeal
Claims 2-5, and 30-34 stand finally rejected under 35 U.S.C. § 103 as being
unpatentable over Simeth and either DeMoore ‘644 or DeMoore ‘267. A rejection of claim
31 under 35 U.S.C. § 112, first paragraph, has been withdrawn by the examiner.
The Invention
The claimed invention is directed to a printing machine plate cylinder assembly.
Claim 30, the only independent claim on appeal, is reproduced below:
30. A printing machine plate cylinder assembly comprising:
a plate cylinder having an outer cylindrical plate mounting surface,
a printing plate having an inner cylindrical mounting surface for positioning
about said plate cylinder,
a separating medium between said printing plate and plate cylinder
consisting solely of a layer of friction reducing material affixed to one of said mounting
surfaces,
and the other of said mounting surfaces having no layer of friction reducing
material affixed thereon and being positioned in direct contacting relation with the friction
reducing layer affixed to said one mounting surface for facilitating stable mounting of said
printing plate in predetermined position on said plate cylinder with enhanced heat
dissipation therebetween.
Opinion
The rejection of claims 2-5 and 30-34 is reversed.
A reversal of the rejection on appeal should not be construed as an affirmative
indication that the appellant’s claims are patentable over prior art. We address only the
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Application 08/885,399
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positions and rationale as set forth by the examiner and on which the examiner’s rejection
of the claims on appeal is based.
The claimed invention is a printing machine plate cylinder assembly comprising (1)
a plate cylinder, (2) a printing plate, and (3) a separating medium between the printing
plate and the plate cylinder. As is defined by claim 30, the plate cylinder has a plate
mounting surface and the printing plate has a mounting surface. Further according to claim
30, the separating medium consists solely of a layer of friction reducing material affixed to
one of the mounting surfaces, and the other mounting surface has no layer of friction
reducing material affixed thereto. The mounting surface without the friction reducing layer
directly contacts the friction reducing layer affixed to the mounting surface having the
friction reducing layer. According to claim 30, this structural arrangement is for facilitating
stable mounting of the printing plate in a predetermined position on the printing cylinder.
Very explicitly, claim 30 requires that there be no layer of friction reducing material
affixed to the mounting surface of one of (1) the plate cylinder and (2) the printing plate. In
contrast, Simeth does not disclose such a structure.
In Simeth’s assembly, two thin sheets 5 and 6 are disposed between the plate
cylinder and the printing plate (Abstract and Figure 1). The upper sheet contacts and
adheres to printing plate 3 and the lower sheet contacts and adheres to plate cylinder 1
(Column 2, lines 59-65). The thin sheets are coated with an appropriate plastic to form
easily sliding faces 8 and 10. (Column 2, lines 66-68). Whether Simeth’s thin sheets 5
Appeal No. 99-0872
Application 08/885,399
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and 6 or the plastic coatings 8 and 10 on the thin sheets 5 and 6 are regarded as friction
reducing layers, Simeth does not disclose either (1) a plate cylinder having a mounting
surface to which no friction reducing material is affixed thereto or (2) a printing plate having
a mounting surface to which no friction reducing material is affixed thereto.
The examiner made the following statement on pages 8-9 of the answer:
Having the teaching in Simeth of utilizing a separating
medium affixed to at least one of the printing plate and plate
cylinder mounting surfaces, it would have been obvious to one
having ordinary skill in the art at the time the invention was
made to broadly apply the friction reducing layer in Simeth
(5,154,120) directly to either: (1) the printing plate mounting
surface; (2) the plate cylinder mounting surface; or (3) to both
mounting surfaces so as to perform the function as disclosed
by Simeth (5,154,120) for improving the ease of mounting and
adjusting a printing plate on the outer surface of a plate
cylinder.
The above-quoted conclusion reflects insufficient consideration of the appellant’s
specific claim limitation that the friction reducing layer be affixed to one of the plate cylinder
and printing plate but not the other. It is misplaced to state that Simeth teaches a
separating medium affixed to at least one of the printing plate and plate cylinder mounting
surfaces, where Simeth discloses a separating medium affixed to both mounting surfaces
and the issue is whether it would have been obvious to not have a separating medium
affixed to one of the mounting surfaces.
Assuming that the examiner is correct that it would have been obvious to one with
ordinary skill in the art to apply the friction reducing layer in Simeth to either (1) the printing
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Application 08/885,399
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plate mounting surface; (2) the plate cylinder mounting surface, or (3) both the printing plate
and plate cylinder mounting surfaces, that does not indicate anything meaningful about the
appellant’s claimed feature of having the friction reducing layer affixed to just one of the
mounting surfaces but not the other.
The examiner has not articulated any motivation for one with ordinary skill in the art
to eliminate one of the thin sheets 5 or 6 or one of the plastic coating layers 8 and 10 in
Simeth. Instead, the examiner states (answer at 8):
It is noted that Appellant’s specification does not teach that
there is any criticality as to whether the friction reducing layer
is affixed to either one or both of the printing plate and plate
cylinder. The specification does not disclose that anyone of
such layer or coating placements, one relative to the other,
affects the desired and expected function of improving the
ease of mounting and adjusting a printing plate on the outer
surface of a plate cylinder. In fact, Appellant’s specification
teaches, and the original presentation of the claims evidences,
that the friction reducing material can be applied either: (1) to
the printing plate; (2) to the plate cylinder; or (3) to both
surfaces.
An applicant for patent need not disclose in its specification that there is any so
called “criticality” in a claimed limitation or feature. Nor is the applicant under any burden
to establish that there is any such “criticality.” Also, that the appellant’s specification
discloses alternative embodiments does not by itself indicate that the differences between
the embodiments are not of patentable significance. Furthermore, relying on the
appellant’s own specification to come to the conclusion that only one friction reducing layer
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Application 08/885,399
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may be necessary and that that layer can be affixed to either the printing plate or the plate
cylinder constitutes improper hindsight. The examiner’s citation to the two DeMoore
patents do not provide a remedy to the above-discussed deficiencies in the rejection. In
that regard, the examiner states (answer at 9):
[E]ach [DeMoore] patent teaches that a friction reducing
material (“Teflon”) can be applied directly onto a printing press
cylinder, and DeMoore (4,402,267) additionally teaches the
equivalency between: (1) applying a friction reducing material
directly to a press cylinder, and (2) applying a friction reducing
material onto an intermediate layer residing on a press
cylinder.
Both DeMoore patents, however, are directed to applying a separating medium
onto a skeleton wheel or cylindrical roller, a printing press component which is used for
supporting and transferring freshly inked printed material between printing stations and
which is neither a plate cylinder or a printing plate in the context of the appellant’s claimed
invention. As disclosed, the skeleton wheel or cylindrical roller described in the DeMoore
patents do not engage or contact any printing plate. Moreover, the TEFLON coating
applied to the skeleton wheel of DeMoore ‘644 is intended as an ink repellant, not a
friction reducing layer to facilitate relative movement between the skeleton wheel and the
printed material supported thereby. Note DeMoore ‘644 which states in column 6, lines
29-37:
The surface 50 so prepared is ink-repellant. As the
Appeal No. 99-0872
Application 08/885,399
Thus, the examiner’s above-quoted statement finds that in DeMoore ‘267 the fluoroplastic2
material is applied to an intermediate layer residing on the skeleton wheel.
7
inked areas of the printed sheets 30 engage the surface, there
is no transfer of ink from one sheet, to the skeleton wheel 12,
and thereafter to one or more succeeding sheets. While there
may be an extremely slight collection of ink on the surface 50,
quite unexpectedly there is still no marking of subsequent
sheets. Thus, the surface is ink-repellant in the sense that it
prevents transfer of ink between sheets.
DeMoore ’267 improves on DeMoore ‘644 by adding a fabric piece 32 between the
skeleton wheel and the printed material it supports. To support this fabric piece, a fabric
base layer coated with fluoroplastic is first bonded to the surface of the skeleton wheel. 2
Note DeMoore ‘267 from column 3, line 60 to column 4, line 2, which states:
Although the fluoroplastic covered skeleton wheel disclosed in
my previous patent provided improvements in handling freshly
inked sheet material I have discovered that, unexpectedly, the
provision of a layer of fabric on the supporting surface of the
skeleton wheel and rather loosely secured thereto further
enhances the ability of the skeleton wheel to support and
convey successive sheets of printed material with wet ink
thereon without transferring the wet ink from a previous sheet
to a successive sheet and without marring or depressing the
surface of the paper.
We find none of this disclosure from the DeMoore patents to be of substantial
significance in the context of the appellant’s claimed invention. The examiner has not
adequately explained why the teachings of DeMoore as is recognized by the examiner
would have suggested to one with ordinary skill in the art that one of Simeth’s friction
reducing layers can be removed or eliminated. If the examiner regards a sheet of printed
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Application 08/885,399
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material supported on and transferred by a skeleton wheel while on route between printing
stations as a printing plate in the context of the appellant’s claimed invention, that view is
without support on this record. Similarly, DeMoore’s skeleton wheel cannot be regarded
as a plate cylinder in the context of the appellant’s claimed invention, since it does not
receive or engage a printing plate. It is not necessary to find whether the two DeMoore
patents constitute analogous art proper for consideration in combination with Simeth,
because even considering the teachings therein as are explained by the examiner, the
rejection of the claims cannot stand.
For the foregoing reasons, the rejection of claims 2-5 and 30-34 cannot be
sustained.
We make the following additional discussion concerning dependent claims 3-5
which set forth respective Markush groups for the friction reducing material. Once the
examiner has made a specific finding that all of the materials listed in the Markush group of
these claims are known or art-recognized materials having friction reducing properties, as
the examiner apparently has done on page 10 of the answer, the appellant must step
forward to dispute the finding affirmatively. Whether the examiner had proper ground to
make the finding is immaterial if the appellant while in rebuttal does not dispute the finding.
Conclusion
The rejection of claims 2-5 and 30-34 under 35 U.S.C. § 103 as being unpatentable
Appeal No. 99-0872
Application 08/885,399
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over Simeth and either DeMoore ‘644 or DeMoore ‘267 is reversed.
REVERSED
FRED E. McKELVEY, Senior )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMESON LEE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
SALLY C. MEDLEY )
Administrative Patent Judge )
JL:yrt
Appeal No. 99-0872
Application 08/885,399
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Dennis R. Schlemmer
LEYDIG VOIT & MAYER
Two Prudential Plaza, Suite 4900
180 North Stetson
Chicago, IL 60601-6780