Ex Parte Vrotacoe et alDownload PDFPatent Trial and Appeal BoardOct 24, 201311810036 (P.T.A.B. Oct. 24, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/810,036 06/04/2007 James Brian Vrotacoe 6003.1052 1843 23280 7590 10/24/2013 Davidson, Davidson & Kappel, LLC 485 7th Avenue 14th Floor New York, NY 10018 EXAMINER HINZE, LEO T ART UNIT PAPER NUMBER 2854 MAIL DATE DELIVERY MODE 10/24/2013 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 JAMES BRIAN VROTACOE, KENT DIRKSEN KASPER, and DAVID ROBERT DAWLEY ____________ Appeal 2011-008359 Application 11/810,036 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and GEORGE C. BEST, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-6, 10, 11, 13, 15-17, 27-32, and 34-37. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appellants claim an ink form roller comprising a hollow core 30, a first layer 32 surrounding the core and having a certain hardness, and a second layer 34 surrounding the first layer and having a hardness greater than the first layer, wherein the ink form roller has "a line load between Appeal 2011-008359 Application 11/810,036 2 about one pound per linear inch and about five pounds per linear inch during printing" (independent claim 1, Fig. 2) and a printing press comprising such ink form roller (independent claim 13). Appellants also claim a method for printing which comprises transferring ink from an ink form roller to a printing plate wherein during printing the ink form roller has the previously recited line load (remaining independent claim 27). A copy of representative claims 1 and 27, taken from the Claims Appendix of the Appeal Brief, appears below. 1. An ink form roller in a printing press comprising: a hollow core; a first layer surrounding part of the core, the first layer having a 25 to 40 Shore A durometer hardness; and a second layer surrounding part of the first layer, the second layer having a durometer hardness greater than the first layer; the ink form roller having a line load between about one pound per linear inch and about five pounds per linear inch during printing. 27. A method for printing comprising the steps of: providing an ink form roller, the ink form roller including a first layer surrounding part of a hollow core and a second layer surrounding part of the first layer, the second layer having a durometer hardness greater than the first layer; providing a plate cylinder having a printing plate mounted on an outer surface of the plate cylinder, the plate cylinder forming a nip with the ink form roller; applying ink to the ink form roller; and transferring ink from the ink form roller to the printing plate, during printing the ink form roller having a line load between about one pound per linear inch and about five pounds per linear inch, resulting from pressure applied at the nip. The Examiner rejects independent claims 1 and 13 under 35 U.S.C. § 102(b) as anticipated by MacLeod (US 3,152,387, patented Oct. 13, 1964) Appeal 2011-008359 Application 11/810,036 3 and rejects remaining independent claim 27 under 35 U.S.C. § 103(a) as unpatentable over Kamoda (US 6,058,837, patented May 9, 2000) in view of Suzuki et al. (Suzuki, US 5,376,448, patented Dec. 27, 1994) and MacLeod and rejects the remaining claims on appeal under § 102 or § 103 over these references alone or in combination with additional prior art. The § 102 rejection of independent claims 1 and 13 is based on the Examiner's position "it appears that this roller [of MacLeod] could be used in a printing machine at line loads between one pound per linear inch and five pounds per linear inch [as claimed]" (Ans. 4). Appellants persuasively argue that MacLeod contains no disclosure regarding line loads and that the Examiner's above position is "completely speculative" (App. Br. 7) and without "any actual evidence or technical reasoning" (id.). In responding to this argument, the Examiner contends that an isolated roller cannot have a line load and accordingly that the claim limitation under review "can be nothing more than an intended use of the roller" (Ans. 17). The Examiner's contention is without convincing merit. The line load recitation of roller claim 1, as well as printing press claim 13, defines a required characteristic which the claimed roller must possess and exhibit during a printing operation. For the above reasons, we will not sustain the § 102 rejection of independent claims 1 and 13 as anticipated by MacLeod or the § 102 and § 103 rejections of various dependent claims based on MacLeod alone or in combination with additional prior art. The § 103 rejection of remaining independent claim 27 is based on the Examiner's conclusion that "[i]t would have been obvious . . . to modify Kamoda wherein the nip pressure [i.e., line load] is between about one Appeal 2011-008359 Application 11/810,036 4 pound per linear inch and about five pounds per linear inch, as this value could easily be determined by one having ordinary skill in the art through routine experimentation" (Ans. 10). We fully agree with Appellants' argument that the Examiner's obviousness conclusion "is completely conclusory and is not supported by the articulated reasoning required to establish a prima facie case of obviousness" (App. Br. 13). See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections 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") quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). In an attempt to support the obviousness conclusion, the Examiner responds to this argument by stating "Appellant admits that it is known to use a line load of 15 to 25 pounds per inch (Specification: ¶ 0031)" (Ans. 20). However, a prior art line load of 15 to 25 pounds per inch is far outside of, and therefore would not have suggested, the claimed line load of about 1 to about 5 pounds per inch. See In re Sebek, 465 F.2d 904, 907 (CCPA 1972) (holding that a claimed range would not have been an obvious optimization of a prior art range outside the claimed range). It follows that we also will not sustain the § 103 rejection of independent claim 27 as unpatentable over Kamoda, Suzuki, and MacLeod or the rejections of various dependent claims over these references alone or in combination with additional prior art. Appeal 2011-008359 Application 11/810,036 5 The decision of the Examiner is reversed. REVERSED cam Copy with citationCopy as parenthetical citation