Ex Parte Teng

Patent Trial and Appeal Board

Dec 30, 2016

12176377 (P.T.A.B. Dec. 30, 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.
12/176,377 07/20/2008 Gary Ganghui Teng GT-054 2509
75816 7590 12/30/2016
GARY GANGHUI TENG
14 Joslin Ln.
Southborough, MA 01772
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
12/30/2016 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 2015-006316
Application 12/176,377
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 1–5 and 7–12 under 35 USC § 103(a) as follows:3

1 In our Decision herein we refer to the Specification filed July 20, 2008 (Spec.),
the Final Office Action appealed from mailed Oct. 1, 2014 (Final Act.), the Appeal
Brief filed Jan. 12, 2015 (App. Br.), the Examiner’s Answer mailed Apr. 29, 2015
(Ans.), and the Appellant’s Reply Brief filed June 9, 2015 (Reply Br.).
2 The real party in interest is identified as the inventor and applicant, Gary Ganghui
Teng. App. Br. 2.
3 Appellant does not appeal the rejection of claims 13–19 and 21–28, therefore we
summarily affirm the rejection of claims 13–19 and 21–28. App. Br. 1; Final Act.
11–25.
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1. Claims 1–5, 7, and 8 over Onuma,4 Mori,5 Dupertuis,6 DeMoore,7 and
Goodin;8
2. Claim 9 over Onuma, Mori, Dupertuis, Goodin, and Blake;9
3. Claim 10 over Onuma, Mori, Dupertuis, Goodin, Blake, and Fuhrmann;10
4. Claims 11 and 12 over Onuma, Mori, Dupertuis, Goodin, Fuhrmann, Blake,
and Williams.11
App. Br. 8–17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter in this appeal is directed to a lithographic printing press.
Spec. 1. Claims 1, 9, 10, and 11 are illustrative of the claims on appeal and are
reproduced below from the Claims Appendix to the Appeal Brief:12
1. 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

4 Onuma et al., US 6,543,348 B2 issued Apr. 8, 2003 (“Onuma”).
5 Mori, US 2002/0088360 A1 published July 11, 2002 (“Mori”).
6 Dupertuis et al., EP 1764215 A1, published Mar. 21, 2007 (“Dupertuis”).
7 DeMoore, US 5,540,152 issued July 30, 1996 (“DeMoore”).
8 Goodin et al., US 2004/0038152 A1, published Feb. 26, 2004 (“Goodin”).
9 Blake et al., US 6,726,433 B1 issued Apr. 27, 2004 (“Blake”).
10 Fuhrmann et al., US 5,413,043 issued May 9, 1995 (“Fuhrmann”).
11Williams, US 6,539,859 B2, issued Apr. 1, 2003 (“Williams”).
12 We will limit our discussion to independent claim 1 and dependent claims 9, 10,
and 11. Appellant does not separately argue the patentability of dependent claims
2–5, 7, 8, and 12. App. Br. 8–17. In accordance with 37 C.F.R. § 41.37(c)(1)(iv),
claims 2–5, 7, 8 will stand or fall together with independent claim 1 from which
they depend and claim 12 will stand or fall together with claim 11.
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(c) an inking means comprising an inking unit or both an inking
unit and a fountain unit;
(d) wherein said press is in a pressroom having white room light;
and at least said plate mounted on the plate cylinder is within a
compartment shielded with covers and other press parts so that, when
the covers are fully closed and when there is no light source turned on
within said compartment, the intensity of the light at each wavelength
below 450 nm around the plate cylinder is less than 10% of the intensity
of the room light around the outer top surface of the press at such
wavelength; wherein said covers include certain areas which are non-
transparent to any white light and other areas which are only transparent
to a yellow or red light.
9. The lithographic press of claim 1 further comprising a light-
tight cassette containing at least one lithographic plate for automatically
loading the lithographic plate onto the plate cylinder.
10. The lithographic press of claim 1 wherein the lithographic
plate is in the form of continuous web with one end rolled out from a
fresh roll of plate in a light-light [sic, 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.
11. The lithographic press of claim 10 wherein said plate cylinder
is mounted with 2 sets of plates, the first plate is mounted on the plate
cylinder surface from about 0° to about 180° of the rotating direction
of the cylinder with the corresponding fresh and used plate rolls
installed within the cylinder, and the second plate is mounted on the
same plate cylinder surface from about 180° to about 360° (0°) of the
rotating direction of the cylinder with the corresponding fresh and used
plate rolls installed within the cylinder.
Claim 1
Regarding claim 1, the Examiner makes the following findings of fact which
are supported by a preponderance of the evidence on this record:
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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. Final
Act. 2–3 (citing Onuma Figs. 3, 6, items 10, 21, 39, 40, 77, 3:1–2).
Mori evidences that at the time of Appellant’s invention, it was known in the
art to use as a printing plate in a printing press 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. at 3 (citing Mori
¶¶ 54, 71, 92).
Dupertuis evidences that at the time of the invention, it was known in the art
to use a cover with a removable window for viewing a cylinder under room light to
inspect the printing process during operation. Id. at 3–4 (citing Dupertuis ¶ 22,
item 72).
Goodin evidences that at the time of the invention, it was known to handle
undeveloped photosensitive printing plates in yellow light rooms or conditions to
prevent exposure to incidental white light or sunlight. Id. at 4 (citing Goodin ¶ 8).
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 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 3 (citing Mori ¶ 92). The Examiner reasons that it would have been obvious
to modify the cover of the printing press disclosed by Onuma based on Dupertuis’
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teaching “to include at least one removable window so the operator could visually
inspect the printing process during operation.” Id. at 3–4. The Examiner further
finds that:
it would have been obvious to one of ordinary skill in the art at the time
of the invention to modify the transparent areas of the cover taught by
the combination of Onuma, Mori and Dupertuis such that these
transparent areas were only transparent to a yellow-red light source in
order to prevent incidental exposure to white light that may
spontaneously harden the photosensitive layer of the printing plate as
suggested in Goodin (pg. 1, par [0008]).
Id. at 4.
Appellant does not dispute the above findings of fact with respect to Onuma,
Mori, Dupertuis, and Goodin, but argues that Onuma, Mori, and Goodin are all
designed for plates which are safe under white room light and do not teach press
covers with certain areas non-transparent to any white light or only transparent to
yellow or red light. App. Br. 8–10. Appellant further contends that Dupertuis is
directed to an intaglio printing press which is different from a lithographic printing
press in that it does not use a lithographic printing plate and it also does not teach
press covers with certain areas non-transparent to any white light or only
transparent to yellow or red light. Id. at 9.
In the Reply Brief, Appellant asserts without citation that it provided
arguments “based on the analysis of each reference as well as the combination of
all references.” Reply Br. 2. Appellant also reiterates its argument that “[b]ecause
the plates of Onuma et al, Mori, and DeMoore are safe under white light, there is
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no need to handle the plates of Onuma et al, Mori, and DeMoore under the low
light or yellow light [room] or conditions of Goodin et al.” Id. at 3–4.13
We are not persuaded by Appellant’s argument that the combination of
Onuma, Mori, Dupertuis, and Goodin does not disclose all of the elements of claim
1. Appellant’s argument distinguishing the operation of Dupertuis’ press 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).
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. Each
of Onuma, Mori, and Goodin exposes the plate to laser irradiation for forming an
image and Dupertuis explicitly states that its teachings are not limited to a cylinder
of an intaglio printing press. Dupertuis ¶ 1. Additionally, Appellant does not
dispute the Examiner’s finding that Onuma teaches a plate:

13 Appellant also refers to DeMoore and Blake in the Reply Brief, however, the
Examiner did not rely on DeMoore and Blake in the rejection as applied to claim 1.
Reply Br. 2–4: Final Act. 2–5.
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within a compartment shielded with covers and other press parts so that,
when the covers are fully closed and when there is no light source
turned on within said compartment, the intensity of the light at each
wavelength below 450 nm around the plate cylinder is less than 10% of
the intensity of the room light around the outer top surface of the press
at such wavelength.
See Final Act. 3 (citing Onuma items 21 and 77). Therefore, the preponderance of
the evidence supports the Examiner’s finding that the combination of Onuma,
Mori, Dupertuis, and Goodin teaches or suggests each of the elements of claim 1.
For the reasons stated above and in the Answer, including the Response to
Argument, we affirm the Examiner’s decision to reject claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Onuma, Mori, Dupertuis, and
Goodin.
Claim 9
Regarding claim 9, which depends from claim 1 and recites “a light-tight
cassette containing at least one lithographic plate,” the Examiner finds that Blake
evidences 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. Final Act. 8 (citing Blake 2:18–20,
3:67–4:1). The Examiner determines 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).
According to Appellant, Blake discloses a plate handler which contains a
supply of light-tight plate cassettes “for handling, imaging and processing of a
plate before the plate is put on press for printing.” App. Br. 12 (citing Blake Fig. 1,
3:51–56). Appellant argues that “Blake et al only teach a placesetter including a
plate handler as well as the handling of the plate on such a placesetter (including a
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plate handler), but do not teach a printing press.” Id. Appellant also argues that
none of the cited references including Blake discloses “a press having covers with
certain areas which are non-transparent to any white light and other areas which
are only transparent to a yellow or red light.” Id. Appellant reiterates the same
argument in the Reply Brief and adds “for a plate which is safe under white light, it
is generally not beneficial to use a light-tight cassette as it will make the design and
manufacture unnecessarily more complicated and more expensive.” Reply Br. 3–
4.
We are not persuaded by Appellant’s arguments for essentially the same
reasons discussed above in connection with independent claim 1. Appellant’s
arguments also are unpersuasive because the Examiner’s finding that “Blake
teaches a light-tight cassette . . . in order to prevent unintentional exposure of the
photosensitive plate” is supported by Blake’s disclosure. Final Act. 8 (citing Blake
2:18–20, 3:67–4:1). Appellant’s argument that Blake does not disclose covers is
unpersuasive because the Examiner cites Onuma for teaching “a compartment
shielded with covers” (Final Act. 2). Moreover, Blake states “[t]he functions
[handling unexposed plates] are optionally performed within a covered light-tight
environment to prevent unintentional exposure of the light sensitive plate surface”
and that “[c]overs and doors (not shown) are provided to enclose the entire handler
frame to maintain the cassette in a light tight environment.” Blake 2:18–20,
11:48–50. Additionally, Appellant’s belated argument in the Reply Brief that a
light-tight cassette would introduce complexity and expense if not needed, does not
negate the Examiner’s finding that “preventing unintentional exposure of a
photosensitive plate would be beneficial.” Ans. 3; cf. Reply Br. 3. Therefore, the
preponderance of the evidence on this record supports the Examiner’s reason for
combining Blake’s teaching about preventing unintentional exposure of a
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photosensitive plate to further modify the lithographic plate of Onuma to be
housed in a light-tight cassette.
Claim 10
Regarding claim 10, which depends from claim 1 and recites “the
lithographic plate is in the form of continuous web,” the Examiner finds 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. Final Act. 9 (citing Fuhrmann
Fig. 1, item 130, 2:23–28). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art “to further modify the plate of Onuma to
be inside a cartridge in order to easily change out used printing web as suggested
by Fuhrmann.” Id. (citing Fuhrmann 2:23–28). The Examiner further concludes
that “it would have been obvious to one of ordinary skill in the art at the time of
invention to further 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 (column 2, lines 18–20).” Id. at 9.
Appellant asserts the rejection of claim 10 is improper for the same reasons
discussed above with respect to independent claim 1. App. Br. 14–15. In addition,
Appellant asserts that Fuhrmann also “do[es] not teach press covers with certain
areas which are non-transparent to any white light and other areas which are only
transparent to a yellow or red light.” Id. at 14. Appellant contends that there is no
apparent need to handle the plate of Onuma, Mori, or Fuhrmann in a light-tight
cassette of Blake or under the yellow room light of Goodin, and that even under
the conditions of yellow room light of Goodin, there is no need for a light-tight
cassette. Id. at 15. In the Reply Brief, Appellant contends that:
neither any individual reference nor the combination of all the
references teaches or suggests a press cover with certain areas which
are non-transparent to any white light and other areas which are only
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transparent to a yellow or red light, which press cover is a key element
of the invention and is a limitation of the claims.
Reply Br. 5.
We are not persuaded by Appellant’s arguments for the reasons discussed
above in connection with independent claim 1. Appellant’s arguments also are
unpersuasive because 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 covers of the plate
mounted on the plate cylinder 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.”).

Claim 11
Regarding claim 11, which depends from claim 10, the Examiner finds:
Williams teaches plate cylinder is mounted with 2 sets of plates, the
first plate is mounted on the plate cylinder surface from about 0° to
about 180° of the rotating direction of the cylinder with [the
corresponding fresh and used plate rolls installed within the cylinder],
and the second plate is mounted on the same plate cylinder surface from
about 180° to about 360° (0°) of the rotating direction for multicolor
printing
as required by claim 11. Final Act. 10 (citing Williams Fig. 1, 4:14–16, 4:34–38).
The Examiner concludes that it would have been obvious to one of ordinary skill in
the art “to further modify the invention of Onuma to print multicolored images as
suggested by Williams.” Id. (citing Williams Fig. 1, 4:14–16, 4:34–38).
Appellant asserts the rejection of claim 10 is improper for the same reasons
discussed above with respect to independent claim 1. App. Br. 16–17. Appellant
does not dispute the Examiner’s findings with respect to Williams, but asserts that
Williams also “does not teach any light-tight cartridge or cover for the plate, so the
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plate used on the press of Williams is not sensitive to white room light.” Id. at 16.
Appellant contends that there is no apparent need to handle the plate of Onuma,
Mori, Fuhrmann, or Williams in a light-tight cassette of Blake or under the yellow
room light of Goodin, and that even under the conditions of yellow room light of
Goodin, there is no need for a light-tight cassette. Id. at 15. In the Reply Brief,
Appellant contends that:
neither any individual reference nor the combination of all the
references teaches or suggests a press cover with certain areas which
are non-transparent to any white light and other areas which are only
transparent to a yellow or red light, which press cover is a key element
of the invention and is a limitation of the claims.
Reply Br. 5.
We are not persuaded by Appellant’s arguments for the reasons discussed
above in connection with independent claim 1 and dependent claim 10. As
explained above, the Examiner provides a persuasive reason for combining each
reference to modify Onuma’s printing press based on the teachings of the
references themselves. Each of Onuma, Mori, and Goodin exposes the plate in a
lithographic press to laser irradiation for forming an image, Dupertuis teaches a
removable window for viewing a cylinder under room light (Final Act. 3;
Dupertuis ¶ 22, item 72), Goodin teaches handling undeveloped photosensitive
printing plates in yellow light rooms or conditions to prevent exposure to
incidental white light or sunlight (Final Act. 4; Goodin ¶ 8), Blake teaches a light-
tight cassette in order to prevent unintentional exposure of the photosensitive plate
(Final Act. 9; Blake 3:67–4:1), and Fuhrmann teaches a cartridge for easily
changing out used printing web (Final Act. 9; Fuhrmann 2:23–28). Additionally,
Appellant does not dispute the Examiner’s findings with respect to Williams or
that Onuma teaches a plate:
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within a compartment shielded by covers and other press parts so that,
when the covers are fully closed and when there is no light source
turned on within said compartment, the intensity of the light at each
wavelength below 450 nm around the plate cylinder is less than 10% of
the intensity of the room light around the outer top surface of the press
at such wavelength.
See Final Act. 3 (citing Onuma items 21 and 77); id. at 10 (citing Williams Fig. 1,
4:14–16, 4:34–38). Therefore, the preponderance of the evidence supports the
Examiner’s combination of Onuma, Mori, Dupertuis, Goodin, Fuhrmann, Blake,
and Williams as well as the Examiner’s finding that the combination of Onuma,
Mori, Dupertuis, Goodin, Fuhrmann, Blake, and Williams teaches or suggests each
of the elements of claim 11.

For the reasons stated above and in the Answer, including the Response to
Argument, we affirm the Examiner’s decision to reject claims 1–5 and 7–12.
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