Ex Parte Teng

Patent Trial and Appeal Board

Oct 27, 2016

11599734 (P.T.A.B. Oct. 27, 2016)

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.
11/599,734 11/15/2006 Gary Ganghui Teng GT-28 3437
75816 7590 10/27/2016
GARY GANGHUI TENG
14 Joslin Ln.
Southborough, MA 01772
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
10/27/2016 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 GARY GANGHUI TENG
____________

Appeal 2015-004347
Application 11/599,734
Technology Center 2800
____________

Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
LILAN REN, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision
rejecting claims 33–43 under 35 USC § 103(a) as follows:
1. Claims 33 and 35–42 over Onuma,3 Mori,4 Fuhrmann,5 and Blake;6

1 In our Decision herein we refer to the Specification filed November 15, 2006
(Spec.), the non-final Office Action appealed from mailed July 31, 2014 (Act.), the
Appeal Brief filed September 9, 2014 (App. Br.), the Examiner’s Answer mailed
January 2, 2015 (Ans.), and the Appellant’s Reply Brief filed February 28, 2015
(Reply Br.).
2 The real party in interest is identified as the inventor and applicant, Gary Ganghui
Teng. App. Br. 2.
3 Onuma et al., US 6,543,348 B2 issued Apr. 8, 2003.
4 Mori, US 2002/0088360 A1 published July 11, 2002.
5 Furhmann et al., US 5,413,043 issued May 9, 1995.
6 Blake et al., US 6,726,433 B1 issued Apr. 27, 2004.
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2. Claim 34 over Onuma, Mori, Fuhrmann, Blake, and Teng;7
3. Claim 43 over Onuma, Mori, Fuhrmann, Blake, and DeMoore.8
App. Br. 7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to a lithographic printing press. Spec. 1. Claims
33, 34, and 43 are representative of the claims on appeal and are reproduced below
from the Claims Appendix to the Appeal Brief:9
33. A lithographic printing press comprising:
(a) a plate cylinder mounted with a lithographic printing plate
comprising on a substrate a photosensitive layer soluble or dispersible
in ink and/or fountain solution and capable of hardening upon exposure
to a laser having a wavelength selected from 200 to 1200 nm;
(b) an exposure means capable of emitting said laser to
imagewise expose said mounted plate; and
(c) an inking means comprising an inking unit or both an inking
unit and a fountain unit;
(d) wherein at least said plate mounted on the plate cylinder is
within a compartment shielded with covers and other press parts so that
no or less than 10% of the room light with wavelength of shorter than
450 nm reaches the plate mounted on the plate cylinder; and said plate
is in the form of continuous web with one end rolled out from a fresh
roll of plate in a light-tight cartridge and the other end rolled into a used
roll in a second cartridge, both cartridges are installed within the plate
cylinder with the portion of the plate between the cartridges being
mounted on the plate cylinder, and said plate is capable of unwinding
from the light-tight cartridge and winding into the second cartridge at
the beginning of a printing operation.

7 Teng, US 6,387,595 B1 issued May 14, 2002.
8 DeMoore, US 5,540,152 issued July 30, 1996.
9 We will limit our discussion to independent claim 33 and dependent claims 34
and 43. Appellants do not separately argue the patentability of dependent claims
35–42. App. Br. 8–19. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), claims 35–
42 will stand or fall together with independent claim 33 from which they depend.
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34. The lithographic press of claim 33 wherein said laser is a
violet or ultraviolet laser with a wavelength of from 200 to 430 nm.
43. The lithographic press of claim 33 wherein said compartment
comprises at least one removable window to allow opening a portion of
the covers.
Claim 33
Regarding claim 33, the Examiner makes the following findings of fact
which are supported by a preponderance of the evidence on this record:
Onuma establishes that at the time of the invention, it was known in the
lithographic printing press art to mount a lithographic plate on a plate cylinder,
expose the mounted plate with a laser beam to print an image on the plate mounted
on the plate cylinder, and shield the plate cylinder compartment with covers. Act.
3 (citing Onuma Figs. 3, 4A, 4B, items 10, 21, 39, 40, 3:1–2).
Mori evidences that at the time of Appellant’s invention, it was known in the
art to form a plate as a continuous web with one end rolled out from a fresh roll of
plate and the other end rolled into a used roll in which both rolls are installed
within the plate cylinder such that the portion of the plate between the rolls is
mounted on the plate cylinder and the plate is capable of unwinding and winding at
the beginning of a printing operation so that it is automatically exchanged at a
certain frequency. Id. at 4 (citing Mori ¶¶ 4, 5). Mori also teaches that a
photosensitive layer soluble or dispersible in ink and/or fountain solution water
soluble or dispersible overcoat on the photo sensitive layer capable of hardening
upon exposure to an infrared laser which has a wavelength in the range from 200 to
1200 nm. Id. (citing Mori ¶¶ 54, 71, 92, 94).
Fuhrmann evidences that at the time of the invention, it was known in the art
to use a cartridge to easily change out used printing web. Id. at 5 (citing Fuhrmann
Fig. 1, item 130, 2:23–28).
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Blake evidences that at the time of the invention, it was known to handle
plates in a light-tight environment in order to prevent unintentional exposure of the
photosensitive plate, and specifically teaches putting printing plates in a light-tight
cassette. Id. (citing Blake 2:18–20, 3:67–4:1).
Based on the above findings of fact, the Examiner concludes it would have
been obvious to one of ordinary skill in the art “to modify the printing plate of
Onuma to include on a substrate a photosensitive layer soluble or dispersible in ink
and/or fountain solution water soluble or dispersible overcoat on said
photosensitive layer capable of hardening upon exposure to a laser having a
wavelength selected from 200 to 1200nm as taught by Mori in order to
manufacture a printing plate for use in a printing press.” Id. at 4 (citing Mori ¶ 92).
The Examiner reasons that it would have been obvious to modify Onuma based on
Mori’s teaching “to use the internal printing plate in the roll form stored within the
cylinder in order to have the advantage of being able to automatically exchange the
plates at a certain frequency.” Id. at 4–5. The Examiner also concludes that it
would have been obvious to “to modify the plate of Onuma and Mori to be inside a
cartridge in order to easily change out used printing web as suggested by
Fuhrmann.” Id. at 5 (citing Fuhrmann 2:23–28). The Examiner further concludes
that it would have been obvious to one of ordinary skill in the art to “modify the
lithographic plate of Onuma to be housed in a light-tight cassette in order to
prevent unintentional exposure of the photosensitive plate as suggested by Blake.”
Id. (citing Blake 2:18–20).
Appellant does not dispute the above findings of fact with respect to Onuma,
Mori, and Fuhrmann, but disputes whether the cassette of Blake is light-tight.
According to Appellant, the cassette of Blake “is actually not light-tight when the
plate is fed to the imager” and the design of Blake is for an imager and not a
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printing press. App. Br. 12. Appellant argues that none of the cited references
therefore teaches a light-tight cartridge. Id. Appellant also argues that none of the
references “discloses a press which is capable of handling a plate which is unsafe
under room light” or “shows a desire of using a plate which is unsafe under room
light on a printing press” because Blake teaches a plate handler before the plate is
put on press for printing. Id. at 13.
Appellant further contends the Examiner reversibly erred in rejecting the
claims because each of Mori, Fuhrmann, and Blake cannot be combined with
Onuma because Onuma’s plate is in the form of a sheet rather than a roll like Mori
and Fuhrmann (id. at 15) and because there is “no need for using a light-tight plate
cassette as disclosed by Blake” when “there is no mention of safe light requirement
in Onuma” (id. at 16). Similarly, Appellant argues that each of Mori and
Fuhrmann cannot be combined with Blake because Mori and Fuhrmann have “no
need for using a light-tight plate cassette as disclosed by Blake” (id. at 17, 18).
In the Reply Brief, Appellant further argues that “Blake et al. is not light-tight
during handling, because a removable cover of the cassette needs to be removed
before the plate is picked up by the picker from the cassette to feed to the imager.”
Reply Br. 2, 4.
We are not persuaded by Appellant’s argument that the combination of
Onuma, Mori, Furhmann, and Blake does not disclose all of the elements of claim
33 including the light tight cartridge. The Examiner’s finding that “Blake directly
discloses the desire to prevent unexposed light sensitive plate from being subject to
incident room light” is supported by Blake’s disclosure. Ans. 4 (citing Blake 2:10–
20). Blake states “[t]hese functions [handling unexposed plates] are optionally
performed within a covered light-tight environment to prevent unintentional
exposure of the light sensitive plate surface.” Blake 2:18–20. Indeed Blake further
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states “[c]overs and doors (not shown) are provided to enclose the entire handler
frame to maintain the cassette in a light tight environment.” Id. at 11:48–50.
Appellant’s argument that Blake’s plate is exposed to incident room light during
handling because a picker picks a plate from the cartridge and delivers the plate to
an imaging engine also disregards that the handler, picker, and imaging engine are
all within the platesetter 16 shown encompassed in a box in Figure 1 of Blake. In
addition, Appellant’s argument distinguishing the operation of Blake is
unpersuasive because, in a determination of obviousness, a reference may be relied
upon for all that it would have reasonably suggested to one having ordinary skill in
the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989). “The
test for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather, the test
is what the combined teachings of those references would have suggested to those
of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Similarly, Appellant’s arguments against the combination of the references
are unpersuasive because Appellant distinguishes each of the cited prior art
references separately and disputes the propriety of their combination based on
whether their disclosed features can be bodily fused together. Appellant does not
dispute the Examiner’s reasons for combining the references to modify Onuma.
The Examiner provides a persuasive reason for combining each reference to
modify Onuma’s printing press based on the teachings of the references
themselves. Regarding Appellant’s argument that Blake teaches a cartridge for
feeding an imager and not a printing press (App. Br. 12), the Examiner finds that
“all of the references are considered to be directed to the ordinary artisan working
in the art of printing using light sensitive plate.” Ans. 5. Each of Onuma, Mori,
and Furhmann exposes the plate to laser irradiation for forming an image and
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Blake explicitly states that its teachings are applicable to “photosensitive
lithographic printing plates recorded by light exposure.” Blake 12:4–5.
Additionally, Appellant does not dispute the Examiner’s finding that Onuma
teaches a plate within a compartment shielded by covers and other press parts so
that no or less than 10% of the room light with wavelength of shorter than 450 nm
reaches the plate mounted on the plate cylinder. See Act. 3 (citing Figs. 4A and
4B, item 21). Therefore, the preponderance of the evidence supports the
Examiner’s finding that the combination of Onuma, Mori, Furhmann, and Blake
teaches or suggests each of the elements of claim 33.
For the reasons stated above and in the Answer, including the Response to
Argument, we affirm the Examiner’s decision to reject claim 33 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Onuma, Mori, Furhmann, and
Blake.
Claim 34
Regarding claim 34, which depends from claim 33, the Examiner finds that
“Teng teaches sensitizing a plate to a violet laser with a wavelength of from 200 to
430nm in order to image a lithographic plate” as required by claim 34. Act. 6.
The Examiner further finds that it would have been obvious to further modify
Onuma by making the plate sensitive to a violet laser because such lasers have
easy availability as taught by Teng. Id. at 6–7 (citing Teng 7:55–8:3).
Appellant asserts the rejection of claim 34 is improper for the same reasons
discussed above with respect to independent claim 33. App. Br. 20. In addition,
Appellant asserts that “[b]ecause the plate of Teng ’595 has excellent white light
stability, there is no need to put the plate in a light-tight cartridge in order to image
the plate on press as required by the claims.” Id. at 21. Appellant also argues that
“[a] person with ordinary skill in the art would not rely on Teng ’595 for choosing
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a laser (as such laser is disclosed in Teng ’595 for imaging a plate which has
excellent white light stability) . . . .” Id. In the Reply Brief, Appellant asserts that
“Teng does not teach that the laser of claim 34 (violet or ultraviolet laser) is
preferred over other laser (such as infrared laser).” Reply Br. 6.
We are not persuaded by Appellant’s arguments for the reasons discussed
above in connection with independent claim 33. Appellant’s arguments also are
unpersuasive because Onuma teaches using a laser beam for exposing a plate and
the Examiner finds that it would have been obvious to one of ordinary skill in the
art to select a violet laser beam because Teng teaches a violet laser has easy
availability. Appellant does not dispute that a violet laser is easily available or that
one of ordinary skill in the art would not have selected a violet laser for any reason.
Therefore the preponderance of the evidence on this record supports the
Examiner’s reason for combining Teng’s teaching about a violet laser with the
printing press taught by Onuma as modified by Mori, Fuhrmann, and Blake.
Claim 43
Regarding claim 43, which depends from claim 33, the Examiner finds that
“DeMoore teaches a compartment comprising at least one removable window in
order to allow an operator access for maintenance, clean up and visual inspection
of infrared lamps.” Act. 7 (citing DeMoore 6:21–41). The Examiner further finds
that it would have been obvious to modify the combination to include a movable
window “to enable the operator to view inside the press during operation” as taught
by DeMoore. Id. at 7–8. DeMoore states “[o]ne purpose of the sheet control
window W is to permit the press operator to observe the freshly printed sheets as
they are transported along the transfer path.” DeMoore 6:15–17. DeMoore also
states “[a]nother purpose of the sheet control window W is to admit ambient air
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and to provide operator access to the inside of the delivery convey housing for
clean-up and repair.” Id. at 6:21–24.
Appellant asserts the rejection of claim 43 is improper for the same reasons
discussed above with respect to independent claim 33. App. Br. 22. In addition,
Appellant asserts that there is no need to install a window as taught by DeMoore
into the press of Onuma, Mori, Fuhrmann or Blake because none of the references
“has a problem of accessing to the inside of the press under room light.” Id. at 23.
In addition, Appellant argues that because DeMoore teaches a transparent window,
it “does not meet the definition of ‘window’ described in the instant application.”
Id. at 24. In the Reply Brief, Appellant contends that “there is no apparent
motivation to combine” DeMoore with Onuma, Mori, Fuhrmann, and Blake
because “there is no apparent need or motivation to install such a window on the
press of Onuma et al, Mori, or Fuhrmann et al to solve any issue suggested by the
references.” Reply Br. 6–7.
We are not persuaded by Appellant’s arguments for the reasons discussed
above in connection with independent claim 33. Appellant’s arguments also are
unpersuasive because claim 43 recites “one removable window” and Appellant
does not direct us to any portion of the Specification that would give the term
“window” a definition other than its ordinary meaning of an opening that usually
contains a sheet of glass.10 Even if claim 43 required the recited “window” to
selectively transmit a particular wavelength, the record does not show that it would
be beyond the skill of one of ordinary skill in the art to select a material for the

10 See The American Heritage Dictionary of the English Language (5th ed. 2016)
(Window: “1.a. An opening constructed in a wall, door, or roof that functions to
admit light or air to an enclosure and is often framed and spanned with glass
mounted to permit opening and closing”).
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window that is light safe for the particular photosensitive plate of the press. See
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”). In addition, the
motivation to combine identified by the Examiner comes from DeMoore and not
the other references.
For the reasons stated above and in the Answer, including the Response to
Argument, we affirm the Examiner’s decision to reject claims 33–43.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED