Ex Parte Takada

Board of Patent Appeals and Interferences

Dec 9, 2010

11438736 (B.P.A.I. Dec. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TERUO TAKADA
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Appeal 2010-000084
Application 11/438,736
Technology Center 1700
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Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-000084
Application 11/438,736

A. Introduction2
Teruo Takada (“Takada”) timely appeals under 35 U.S.C. § 134(a)
from the final rejection3 of claims 2, 11, and 12, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to a planographic printing plate
said to be useful in computer-to-plate (“CTP”) off-set printing systems. The
claimed plates, which do not require chemical development (Spec. 2,
paras. 1-2), comprise an aluminum support and a light-sensitive image
formation layer. (Id. at 5, 1st full para.) According to the 736 Specification,
“a specific combination of an average surface roughness (Ra), Mr1, and Mr2
provides excellent anti-stain property and excellent printing durability.” (Id.
at 9, ll. 1-3.) The measurement of Mr1 and Mr2 is explained in detail at
pages 9-10 of the 736 Specification, but it is not necessary to review the
method of measurement to resolve this appeal.
Representative Claim 2 reads:
2. A light sensitive planographic printing plate material
comprising
an aluminum support and provided thereon, an image
formation layer,

2 Application 11/438,736, Aluminum Support for Light Sensitive
Planographic Printing Plate Material and Light Sensitive Planographic
Printing Plate Material, filed 22 May 2006, claiming the benefit of a
Japanese application filed 27 May 2005. The specification is referred to as
the “736 Specification,” and is cited as “Spec.” The real party in interest is
listed as Konica Minolta Medical and Graphic, Inc. (Appeal Brief,
filed 10 April 2009 (“Br.”), 2.)
3 Office action mailed 12 November 2008.
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Application 11/438,736

the aluminum support having an average surface
roughness (Ra) of 0.40 to 0.65 μm,
an Mrl of 3.0 to 6.0%, and an Mr2 of 80 to 86%,
the Mrl and Mr2 being measured according to
JIS 30672-2 (ISO 13565-1998),
wherein the support is obtained by a process comprising
the steps of electrolytically surface-roughening an
aluminum plate in an electrolyte solution containing a
hydrochloric acid, and then anodizing the surface-
roughened aluminum plate, and
wherein the image formation layer is a thermo sensitive
image formation layer containing a polymerizable
composition comprising (a) a light-to-heat conversion
material having an absorption band in a wavelength
region of from 700 to 1300 nm, (b) a polymerization
initiator and (c) a polymerizable unsaturated compound.
(Claims App., Br. 12; indentation, paragraphing, and emphasis added.)
The Examiner has maintained the following grounds of rejection:4
A. Claims 1, 11, and 12 stand rejected under 35 U.S.C. § 102(e) in
view of Suzuki.5
B. Claims 1, 11, and 12 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Suzuki.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.

4 Examiner’s Answer mailed 10 April 2009 (“Ans.”).
5 Toshitsugu Suzuki, Method of Processing Light Sensitive Planographic
Printing Plate Precursor and Pre-Washing Solution used in the Method,
U.S. Patent Application Publication US 2004/0072102 A1 (15 April 2004),
filed 28 July 2003.
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Appeal 2010-000084
Application 11/438,736

Takada argues the Examiner erred in finding anticipation by Suzuki
because, as shown by the declaration of Mr. Hiroshi Takagi,6 the Mr1 and
Mr2 ranges recited in the claims are not inherent in the Suzuki examples.
Takada argues further that because there was no recognition in the prior art
that Mr1 and Mr2 were result-effective variables, the Examiner erred in
holding that it would have been obvious to optimize conditions such that the
recited Mr1 and Mr2 values would be met.
It has long been recognized that, in a rejection based on inherency, the
alleged inherency
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient. (Citations omitted.) If,
however, the disclosure is sufficient to show that the natural
result flowing from the operation as taught would result in the
performance of the questioned function, it seems to be well
settled that the disclosure should be regarded as sufficient.
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981), quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214 (1939).
As Takada argues, the preponderance of the evidence of record,
including the reproduction of the Suzuki example in the Takagi Declaration,
and the results in Tables 1 and 2 of the 736 Specification, indicate that the
Mr1 and Mr2 ranges recited in the claims are not inherent results of the
processing steps recited in the claims. The Examiner has not established any
basis to doubt the accuracy or reliability of the evidence provided in

6 Declaration Under 37 C.F.R. § 1.132 of Mr. Hiroshi Takagi,
filed 31 July 2008, and presented in the Evidence Appendix to the Brief
(“Takagi Declaration”).
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Appeal 2010-000084
Application 11/438,736

the 736 Specification or in the Takagi Declaration. The rejection for
anticipation must therefore be reversed.
The Examiner’s remarks in the Response to Argument section of the
Examiner’s Answer (Ans. 6-11) indicate that the Examiner may have
conflated the argument that, inherently, the disclosure of Suzuki produces
aluminum substrates having those characteristics, with the argument that one
or more of the examples in Suzuki might meet the Mr1 and Mr2
requirements, as well as all the other requirements of the appealed claims.
The inherency argument is rebutted by a single example, as discussed supra.
As for the second potential argument, the Examiner has not directed our
attention to any example or teaching that indicates that the printing plates
now claimed were described to persons having ordinary skill in the art.
It has also long been recognized that optimization of a result-effective
variable cannot have been obvious if that variable was not recognized as
being result-effective. Application of Antonie, 559 F.2d 618, 620
(CCPA 1977) (“This case, in which the parameter optimized was not
recognized to be a result-effective variable, is another exception.”).
The Examiner admits that Suzuki does not identify Mr1 and Mr2 as result-
effective variables (Ans. 6), but nonetheless maintains that it would have
been obvious to “modify/optimize the electrochemical surface roughening
treatment to yield desired surface condition of the aluminum support with
the values of Mr1 and Mr2.” (Id.) The difficulty with the Examiner’s
argument is that the Examiner has not directed our attention to any teachings
in the prior art that would have led a person having ordinary skill in the art
to take steps that, whether recognized by that person or not, necessarily
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Application 11/438,736

would have resulted in aluminum samples having values of Mr1 and Mr2 in
the recited ranges. That it would have been within the level of ordinary skill
to do so is not dispositive, as enablement is a prerequisite, but not a proxy,
for obviousness.
C. Order
We REVERSE the rejection of claims under 35 U.S.C. § 102(e) and
under § 103(a) in view of Suzuki.
REVERSED

tc

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