Ex Parte TengDownload PDFPatent Trial and Appeal BoardJan 7, 201512334774 (P.T.A.B. Jan. 7, 2015) Copy Citation 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. 12/334,774 12/15/2008 Gary Ganghui Teng GT-59 8888 75816 7590 01/08/2015 GARY GANGHUI TENG 14 Joslin Ln. Southborough, MA 01772 EXAMINER ZIMMERMAN, JOSHUA D ART UNIT PAPER NUMBER 2854 MAIL DATE DELIVERY MODE 01/08/2015 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 2013-001866 Application 12/334,774 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and GEORGE C. BEST, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner has finally rejected claims 1, 3‒5, 9‒16, and 20‒24 of Application 12/334,774 under 35 U.S.C. § 103(a) as obvious. Final Office Action (“Final Act.”) 2, 11 (April 27, 2012). Appellant seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. BACKGROUND The ’774 Application describes methods for processing a lithographic printing press plate. Spec. 1. In particular, it describes methods for on-press development of laser-sensitive lithographic plates through the use of a plate Appeal 2013-001866 Application 12/334,774 2 holder, i.e., a light-tight box, to transfer the exposed plate from the imager to the lithographic press. Id. Claim 1 is representative of the ’774 Application’s claims and is reproduced below: 1. A method of processing a lithographic printing plate, comprising in order: (a) providing a lithographic plate comprising (i) a substrate and (ii) a photosensitive layer; said photosensitive layer being capable of hardening (for negative plate) or solubilization (for positive plate) upon exposure to a laser having a wavelength selected from 200 to 1200 nm, and the non-hardened or solubilized areas of said photosensitive layer being soluble or dispersible in ink: and/or fountain solution; (b) imagewise exposing said plate with said laser to cause hardening or solubilization of said photosensitive layer in the exposed areas; (c) placing said exposed plate in a plate holder, wherein said plate holder has a light-tight box having a light-tight slot for sliding said plate into or out of said box, and said light-tight slot allows said plate to slide into or out of said box without letting light into said box; (d) transferring said plate from said plate holder to mount onto the plate cylinder of a lithographic press; and (e) developing said plate with ink and/or fountain solution on said lithographic press to remove the non-hardened or solubilized areas of said photosensitive layer. (App. Br. 25 (Claims App’x) (emphasis added).) Appeal 2013-001866 Application 12/334,774 3 REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1, 3‒5, 9‒13, 15, and 20‒24 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Applicant’s Admitted Prior Art (“AAPA”) and Teng ’516.1 Final Act. 211. 2. Claims 14 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of AAPA, Teng ’516, and Teng ’323.2 Final Act. 11. DISCUSSION Rejection 1. Claims 1, 3‒5, 9‒13, 15, and 20‒24 have been rejected as obvious over the combination of AAPA and Teng ’516. Final Act. 2. Appellant argues for reversal of this rejection on the basis of a claim limitation that is common to claims 1, 23, and 24—the ’774 Application’s independent claims. (App. Br. 9‒15.) We, therefore, limit our discussion to claim 1 with the understanding that our reasoning also applies to claims 23 and 24. In rejecting claim 1, the Examiner found that the AAPA describes a method comprising steps (a), (b), and (e) of claim 1. Final Act. 2. The Examiner also found that AAPA does not describe steps (c) and (d) of claim 1. Final Act. 3. The Examiner, however, further found that the AAPA describes the photosensitivity of the photosensitive layer as requiring special 1 U.S. Patent No. 7,213,516 B1, issued May 8, 2007. 2 U.S. Patent Application Publication 2007/0119323 A1, published May 31, 2007. Appeal 2013-001866 Application 12/334,774 4 handling of the lithographic plate between exposure of the plate and mounting of the plate on the press for development of the image. Final Act. 3‒4. In particular, the AAPA describes the use of special lighting conditions to protect photosensitive layer of the exposed-but-undeveloped plate. (Ans. 4.) The Examiner found that Teng ’516 also describes the need for special handling of the exposed lithographic plate between imaging and developing apparatuses. Final Act. 3 (citing Teng ’516 col. 13, l. 56‒col. 14, l. 6). The Examiner further found that Teng ’516 describes the use of a light-tight box as an alternative to the use of special lighting conditions to address this problem. Final Act. 3. Finally, the Examiner concluded that it would have been obvious to a person of ordinary skill in the art at the time of the invention to use a light- tight box to handle the exposed press plates between exposure and development in the AAPA process to overcome the problem of limited room-light stability. Ans. 45. Appellant argues that the rejection should be reversed for any of four reasons: (1) The combination of the AAPA and Teng ’516 does not result in the claimed method of placing an exposed plate in a light-tight box before moving the plate to a press for on-press development; (2) the AAPA and Teng ’516 are not combinable; (3) the AAPA and Teng ’516 do not provide a motivation for putting the exposed plate in a light-tight box before development; and (4) two of the Examiner’s factual findings are erroneous. (App. Br. 9‒16.) For the following reasons, we are not persuaded by any of these arguments. First, Appellant argues that the combination of AAPA and Teng ’516 does not lead to the claimed method. (App. Br. 9‒11.) In particular, Appeal 2013-001866 Application 12/334,774 5 Appellant argues that “[n]either AAPA nor Teng ’516 discloses [the claimed] method . . . .” (Id. at 9.) We are not persuaded by this argument. In an obviousness determination, a combination of references must be considered for what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art. See, e.g., In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, the Examiner found—and Appellant does not dispute—that the AAPA described on-press development of an exposed lithographic plate. Teng ’516 describes the use of a light-tight box to protect the exposed lithographic plate from light until either the plate is developed off-press or the photosensitive layer is deactivated. In view of these descriptions, we neither discern nor has Appellant persuaded us that the Examiner erred in concluding that use of a light-tight box to protect an exposed photosensitive plate while it is being moved to the press for on-press development would have been obvious to a person of ordinary skill in the art considering the combined descriptions of the AAPA and Teng ’516. Second, Appellant argues that Teng ’516 cannot be combined with the AAPA. (App. Br. 11‒12.) Appellant bases this argument upon differences between the AAPA and Teng ’516. (Id.) Appellant does not provide any technical reason why the process described in the AAPA could not be modified in the manner suggested by the Examiner. Indeed, Teng ’516 provides reasons why it might be desirable to modify the AAPA process. See Teng ’516 col. 2, ll. 1‒18. Thus, we are not persuaded by this argument. Third, Appellant argues that the rejection should be reversed because the AAPA and Teng ’516 do not provide a motivation for putting the Appeal 2013-001866 Application 12/334,774 6 exposed plate in a light-tight box before development. (App. Br. 12‒13.) The Examiner responds that use of a known technique to improve similar methods in the same way is obvious. (Ans. 14.) We agree with the Examiner that using a light-tight box in the AAPA process involves the use of a known step to accomplish a predictable result. Such improvements likely are obvious. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). This is especially true when, as here, the prior art describes a reason for making the modification. See Teng ’516 col. 2, ll. 1‒ 18. We, therefore, are not persuaded by this argument. Fourth, Appellant argues that the Examiner’s factual determinations regarding the content of Teng ’516 contain reversible error. (App. Br. 13‒ 16.) Having reviewed the Examiner’s findings and Teng ’516 reference and having considered Appellant’s arguments (id.; Reply Br. 7‒8) and the Examiner’s response thereto (Ans.15‒16), we are not persuaded that the Examiner reversibly erred in the manner argued by Appellant. In view of the foregoing, we affirm the rejection of claims 1, 3‒5, 9‒ 13, 15, and 20‒24. Rejection 2. Claims 14 and 16 were rejected as obvious over the combination of AAPA, Teng ’516, and Teng ’323. Final. Act. 11; Ans. 12. Appellant presents the same arguments for reversal of this rejection that we previously found unpersuasive in connection with Rejection 1. Therefore, we also affirm the rejection of claims 14 and 16. Appeal 2013-001866 Application 12/334,774 7 CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1, 3‒5, 9‒16, and 20‒24 of ’774 Application. 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 llw Copy with citationCopy as parenthetical citation