Ex Parte Trilk et al

Patent Trial and Appeal Board

Nov 30, 2012

11116709 (P.T.A.B. Nov. 30, 2012)

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.
11/116,709 04/28/2005 Axel Trilk HK-0855 6955
24131 7590 11/30/2012
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
CULLER, JILL E
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
11/30/2012 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 AXEL TRILK and LARS PAULSEN
____________

Appeal 2010-005709
Application 11/116,709
Technology Center 2800
____________

Before ST. JOHN COURTENAY III, MARC S. HOFF, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005709
Application 11/116,709
2

STATEMENT OF THE CASE
The Patent Examiner finally rejected claims 1-11. Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

INVENTION
This invention relates to a method and apparatus "for providing and
transferring cassettes for printing plates, preferably into a loading device,
with which the printing plates are removed automatically from a cassette and
are supplied to a printing plate exposer, which then records a printing
original on the printing plate." (Spec. 1). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for providing and transferring cassettes for
printing plates to a device for removing the printing plates from
a respective cassette, which comprises the steps of:
storing the cassettes in compartments disposed above one
another in a magazine;
introducing and removing the cassettes into/from the magazine
through a loading opening;
transferring the cassettes into the device for removing the
printing plates through a transfer opening and removing the
cassettes from the device for removing the printing plates
through the transfer opening;
moving the cassettes in a horizontal movement plane between
the loading opening and the magazine and between the transfer
opening and the magazine;
Appeal 2010-005709
Application 11/116,709
3
disposing the loading opening, the transfer opening and the
horizontal movement plane at a same height; and
raising and lowering the magazine vertically until a desired
cassette is in the horizontal movement plane.

REJECTIONS
R1. Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blake et al. (U.S. Patent No. 5,655,452) (hereinafter
"Blake") in view of Iizuka (U.S. Patent No. 4,999,671) and Kushima et al.
(U.S. Patent No. 5,201,506) (hereinafter "Kushima").
R2. Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blake in view of Iizuka and Kushima and further in view
of Azzaroni (U.S. Patent No. 4,354,336).
R3. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blake in view of Iizuka and Kushima and further in view
of Boutet (U.S. Patent No. 5,246,326).

GROUPING OF CLAIMS
Based on Appellants' arguments, we will decide the appeal of the
obviousness rejection (R1) of claims 1, 3-5, and 7 on the basis of claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
We address the Examiner's obviousness rejection (R1) of claims 2 and
6 individually.
We address the rejections R2 and R3 separately, infra.

Appeal 2010-005709
Application 11/116,709
4
ANALYSIS
R1.
A.
Appellants argue that Blake does not disclose the preamble of
independent claims 1 and 5 because Blake does not disclose that the
cassettes are transferred between the handler and the imaging engine. (App.
Br. 8).
The Examiner responds that "Blake does not disclose that the
cassettes are transferred between the handler and the imaging engine. Blake
does, however, provide the cassettes to a device for removing the printing
plates which is itself transferred to the imaging engine as claimed in the
rejection." (Ans. 11).
Appellants' argument is not persuasive because we accord the
preamble no patentable weight. The preamble merely states an intended
purpose or intended use.1 Even assuming arguendo that weight is accorded
to the preamble limitations, we agree with the Examiner that Blake would
have taught or suggested the disputed preamble limitations by providing
cassettes 24 to a picker 28 (device for removing the printing plates). (Ans.
11; Blake Fig. 1). We also observe that Appellants do not file a Reply Brief
to rebut the Examiner's findings. Thus, on this record we are not persuaded

1 Language in a claim preamble acts as a claim limitation only when it gives
meaning to a claim and properly defines the invention and not merely when
it states a purpose or intended use of the invention. In re Paulsen, 30 F.3d
1475, 1479 (Fed. Cir. 1994).

Appeal 2010-005709
Application 11/116,709
5
of error regarding the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness.

B.
Issue: Under § 103, did the Examiner err in combining the cited
references relied upon in the rejection (R1) of claims 1-7?
The Examiner provides the following reasoning for the combination
of Blake and Iizuka:
One having ordinary skill in the art would find it obvious
that the apparatus of Blake could be modified to move the
cassettes through an opening before removing the plates, as
taught by Iizuka. One possible reason that this might be
desirable is that the magazine is more likely than an inner
chamber to be exposed to light or contamination from outside
the system which might compromise the photosensitive printing
plates.
(Ans. 11).
Appellants contend:
Blake discloses that each cassette holds a plurality of image
plates that may be separated by a protective interleaf sheet.
Blake discloses that the picker (28) places the plate (18) directly
into the imaging engine (20) from the handler (18). Therefore,
Blake does not require a more secure environment than already
provided for in Blake. Additionally, the Examiner has not
shown that the modification would even provide a more secure
environment for the printing plates, than the environment
disclosed in Blake.
(App. Br. 13-14).
The Examiner disagrees:
In response to [Appellants'] argument that Blake does not
require a more secure environment than already provided for, it
would seem that moving the cassette further within the
Appeal 2010-005709
Application 11/116,709
6
apparatus before opening it to remove the printing plate could
not help but provide additional protection from the exterior
environment. Although [this] may not be required, it seems
that it may be desirable.
(Ans 12-13).
The Supreme Court guides that “‘rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”’ KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting Kahn, 441 F.3d at 988).
Here, we find the Examiner's articulated reasoning for modifying
Blake with Iizuka's teachings to reduce light and contamination to the photo
sensitive plates provides the requisite rational underpinning to support the
legal conclusion of obviousness. (Ans. 4, 11, 12-13). This is because
Blake's use of the interleaf sheet evidences that light and contamination is a
known problem with printing plates. (Blake Abstract). Thus, we agree that
one skilled in the art would have been motivated to take further steps to
protect the plates from light and contamination.
Appellants' conclusory statement that Blake does not require any
further light and contamination protection is not persuasive because
Appellants' do not cite to any sections in Blake supporting this contention.
(App. Br. 13). Moreover, Blake stresses the importance of maintaining the
cassette in a protective environment to enclose the entire handler frame in a
light-tight environment. (Blake col. 11, ll. 29-32). We find it rational that
one skilled in the art would have been motivated to try to provide a more
secure environment for the cassettes, such as by combining the cited
references in the manner proffered by the Examiner, to move the cassettes
Appeal 2010-005709
Application 11/116,709
7
through an opening of a chamber to further protect the cassettes and plates.
(Ans. 11). On this record, we find that the weight of evidence supports the
Examiner's proffered combination and ultimate legal conclusion of
obviousness.
Appellants also make numerous arguments against the combination of
Blake and Iizuka by attacking the teachings of Blake and Iizuka
individually. Appellants argue, inter alia, that the combination would
change the principle of operation of Blake and change the intended purpose
of Blake. Appellants also argue that the combination was made using
hindsight. (See App. Br. 11-14).
We agree with the Examiner that the proffered modification does not
change the principle of operation of providing printing plates to an imaging
engine but rather modifies the method by moving the cassette before
removing the plate. (Ans. 11-12).
We also agree with the Examiner that the modification does not
change the intended purpose of Blake and Iizuka of providing individual
plates on demand (Ans. 12).
Regarding Appellants' hindsight argument, we are cognizant that our
reviewing courts have not established a bright-line test for hindsight.
In KSR Int’l v. Teleflex, Inc., 550 U.S. 398 (2007), the U.S. Supreme Court
guides that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of argument reliant upon ex
post reasoning.” See KSR, 550 U.S. at 421 (citing Graham v. John Deere
Co., 383 U.S. 1, 36 (1966)). Nevertheless, in KSR the Supreme Court also
qualified the issue of hindsight by stating that “[r]igid preventative rules that
Appeal 2010-005709
Application 11/116,709
8
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” KSR, 550 U.S. at 421.
Here, post-KSR, we see the test for hindsight as a balancing test: (1)
whether the Examiner’s proffered modification of Blake with Iizuka's
removing cassettes from the device through the transfer opening (Ans. 4) is
merely “the predictable use of prior art elements according to their
established functions” (KSR, 550 U.S. at 417), consistent with common
sense, or (2) would an artisan have reasonably modified Blake with Iizuka's
teaching in the manner proffered by the Examiner so as to practice the
claimed method but for having the benefit of Appellants' claims and
Specification to use as a guide (i.e., impermissible hindsight)?
It is our view that an artisan having knowledge of printing plates and
common sense at the time of Appellants' invention would have been
motivated to modify Blake with Iizuka to provide a more secure
contamination and light-free chamber for the cassettes and plates. We also
find that the combination was a predictable use of familiar elements
according to their established functions. Id. at 417.
For these reasons, on this record, we are not persuaded that the
Examiner erred. Accordingly, we sustain the Examiner's rejection (R1) of
claims 1 and 5. We also sustain the rejection (R1) of claims 3, 4, and 7,
which fall therewith.

C.
Appellants argue that Blake does not disclose the limitations of claims
2 and 6. (App. Br. 18). The Examiner concedes that Blake does not teach
moving the cassettes horizontally by use of a friction drive but provides an
Appeal 2010-005709
Application 11/116,709
9
alternative basis to support the rejection of these claims. (Ans. 14). On this
record, we are not persuaded that the Examiner erred because Appellants did
not file a Reply Brief to further rebut the Examiner's findings and legal
conclusion of obviousness. Therefore, we sustain the Examiner's rejection
(R1) of claims 2 and 6.

R2.
Appellants argue that claims 8-10 are patentable by virtue of their
dependency from independent claim 5. (App. Br. 19-20). Appellants further
argue that the additionally cited reference does not cure the deficiencies
previously advanced regarding the rejection of independent claim 5. (App.
Br. 20). However, we find no deficiencies regarding the Examiner’s
rejection of claim 5 for the reasons discussed above. Therefore, we sustain
the Examiner's rejection (R2) of claims 8-10.

R3.
Appellants argue that claim 11 is patentable by virtue of its
dependency from independent claim 5. (App. Br. 20). Appellants further
argue that the additionally cited reference does not cure the deficiencies
previously advanced regarding the rejection of independent claim 5.
However, we find no deficiencies regarding the Examiner’s rejection of
claim 5 for the reasons discussed above. Therefore, we also sustain the
Examiner's rejection (R3) of claim 11.

Appeal 2010-005709
Application 11/116,709
10
DECISION
We affirm the Examiner's rejections under § 103 of claims 1-11.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

peb