Ex Parte Wier et alDownload PDFPatent Trial and Appeal BoardAug 26, 201612718301 (P.T.A.B. Aug. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121718,301 03/05/2010 30565 7590 08/30/2016 Woodard, Emhardt, Moriarty, McNett & Henry LLP 111 Monument Circle, Suite 3700 Indianapolis, IN 46204-5137 Edwin N. Wier 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 005590-000010 4588 EXAMINER ZIMMERMAN, JOSHUA D ART UNIT PAPER NUMBER 2854 NOTIFICATION DATE DELIVERY MODE 08/30/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): DocketDept@uspatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWIN N. WIER and CHRIS GREEN Appeal2014-004958 Application 12/718,301 1 Technology Center 2800 Before LARRY J. HUME, JUSTIN BUSCH, and JOYCE CRAIG, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-12, 30-35, and 40-50. Appellants have previously canceled claims 13-29 and 36---39. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is Precision Rubber Plate Co. App. Br. 6. Appeal2014-004958 Application 12/718,301 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed "invention is generally related to the production of flexographic printing plates according to a digital workflow ... [and] to systems and techniques for exposing a digital polymer plate in a reduced oxygen environment to increase the sharpness and clarity of the printed image." Spec. 1, 11. 9-12 ("TECHNICAL FIELD"). Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitation): 1. A method of transferring a digital image onto a printing plate comprising: providing a photopolymer printing plate including a photopolymer layer and an ablatable mask layer; ablating the mask layer to create an ablated mask layer corresponding to the image; subjecting exposed portions of the photopolymer layer to an environment that is not under reduced pressure and that is more inert than atmospheric air, said environment containing oxygen but having a concentration of oxygen that is less than 5 0% of the concentration of oxygen in atmospheric air; and during the subjecting, exposing the ablated mask layer to actinic radiation to polymerize the exposed portions of the photopolymer layer. 2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed Nov. 15, 2013); Reply Brief ("Reply Br.," filed Apr. 11, 2014); Examiner's Answer ("Ans.," mailed Feb. 11, 2014); Final Office Action ("Final Act.," mailed June 18, 2013); original Specification ("Spec.," filed Mar. 5, 2010); and Record of Oral Hearing ("Tr.," mailed June 17, 2016). 2 Appeal2014-004958 Application 12/718,301 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Hummel us 3,723,120 Mar. 27, 1973 Holt et al. ("Holt") US 2003/0039915 Al Feb.27,2003 Wier US 6,766,740 Bl July 27, 2004 Daems et al. ("Daems ") US 2006/0054040 Al Mar. 16, 2006 Kessenich et al. ("Kessenich") US 2006/0124008 Al June 15, 2006 Rejections on Appeal RI. Claims 1, 5-8, 10-12, 30-35, and 40-50 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Kessenich and Daems. Final Act. 2. R2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Kessenich, Daems, and Hummel. Final Act. 9. R3. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Kessenich, Daems, Hummel, and Holt. Final Act. 10. R4. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Kessenich, Daems, and Wier. Id. CLAIM GROUPING Based on Appellants' arguments (App. Br. 21-32), we decide the appeal of obviousness Rejection RI of claims 1, 5-8, 10-12, 30-35, and 40-50 on the basis of representative claim 1. 3 Appeal2014-004958 Application 12/718,301 Remaining claims 2--4 and 9 in rejections R2 through R4, not argued separately, stand or fall with independent claim 1 from which they depend. 3 ISSUES Appellants argue (App. Br. 2-31; Reply Br. 1-12) the Examiner's rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the combination of Kessenich and Daems is in error. These contentions present us with the following issues: (a) Did the Examiner err in rejecting claim 1 under§ 103 because the cited prior art combination purportedly would destroy the intended purpose of the Daems reference? (b) Did the Examiner err in rejecting claim 1 under § 103 because the cited prior art combination purportedly teaches away from the suggested combination for at least three reasons? ( c) Did the Examiner err in rejecting claim 1 under § 103 because the purported results and advantages of the claimed invention are absent from the prior art? ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). 3 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv). 4 Appeal2014-004958 Application 12/718,301 We disagree with Appellants' arguments with respect to claims 1-12, 30-35, and 40-50, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Issue (a) Appellants contend: Kessenich and Daems cannot be combined as the examiner proposes. Applicants' claimed invention selectively cures an entire layer of polymer through a mask and leaves uncured portions behind for processing and disposal. The stated goal of Daems, however, is to make a flexographic printing plate in an "environmentally friendly manner," without a mask and without leaving behind unexposed areas of polymer . . . . The rejection to Applicants claims over the combination of Kessenich and Daems should therefore be removed as improper. The combination would destroy the intended purpose of the Daems reference. App. Br. 22 (citing Daems i-fi-1 5, 10). An argument that the system is rendered "unsuitable for its intended purpose" is a "teach away" argument. In re Gordon, 733 F .2d 900, 902 (Fed. Cir. 1984) (The court concluded that in effect, "French teaches away from the board's proposed modification" because "if the French apparatus were turned upside down, it would be rendered inoperable for its intended purpose"). We also note "[w]hat the prior art teaches and whether it teaches toward or away from the claimed invention ... is a determination of fact." 5 Appeal2014-004958 Application 12/718,301 Para-Ordnance Mfg., Inc. v. SGS Importers Int'!, Inc., 73 F .3d 1085, 1088 (Fed. Cir. 1995). Further, the Federal Circuit has held '"[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.'" In re Kahn, 441F.3d977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir.1994)). However, other than alleging that a general goal of Daems "is to make a flexographic printing plate in an 'environmentally friendly manner,'" Appellants do not meaningfully explain why the Daems reference suggests that the line of development flowing from its disclosures is unlikely to be productive of the objective of Appellants' invention. See Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). We note a teaching of something different is not a teaching away, i.e., teaching an alternative or equivalent method does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). In response to Appellants' arguments, the Examiner finds such arguments are not persuasive because it is Kessenich et al. which is being modified, rather than Daems et al. The stated purpose of the invention of Kessenich et al. is the in-line production of flexographic printing plates by means of digital imaging (abstract). Therefore, since the proposed modification still results in an invention which produces flexographic printing plates inline by means of digital imaging, the stated purpose of the invention is not destroyed. Ans. 2. 6 Appeal2014-004958 Application 12/718,301 Moreover, we find Appellants have provided no evidence on this record to support the assertion that Daems and/or Kessenich teach away from Appellants' invention, apart from mere conclusory statements which are unsupported by factual evidence and entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Rather, only attorney argument was presented regarding why the combination of Kessenich and Daems would destroy the intended purpose of the Daems reference, i.e., by stating, "Applicants' claimed invention selectively cures an entire layer of polymer through a mask and leaves uncured portions behind for processing and disposal," limitations which we note are not found in the claim. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); Meitzner v. Mindick, 549 F.2d 775, 782 (CCP A 1977). Issue (b) With respect to their three "teach away" arguments, Appellants generally contend (1) "[t]here was no commonly recognized benefit to a laser engraving technique (a digital technique) to reduce the oxygen level during the curing step" (App. Br. 24 (citing U.S. 6,521,390 Bl assigned to BASF and Joint Rule 132 Deel. i-f 8)); (2) conventional "thinking was that all the oxygen had to be removed during the curing step of the flexographic printing plate precursor" (id.); and (3) a person of ordinary skill in the art "would not adopt ... Daems's method to cure drops of polymer for use with an entire sheet of polymer" because the problem Daems described could be attributed to curing the polymer drops under ultraviolet light using reduced oxygen levels. App. Br. 27. 7 Appeal2014-004958 Application 12/718,301 With respect to purported reason ( 1 ), Appellants contend the state of the art "was that a flexographic printing plate prepared from an ablated flexographic printing plate precursor should be cured in atmospheric levels of oxygen." Appellants cite as support (see App. Br. 40 ("Evidence App.")), U.S. Patent 6,521,390 Bl at column 6, lines 32-35, i.e., "[a]s disclosed in EP-A 767 407 it is advantageous to perform the irradiation with actinic light [UV light] in the presence of atmospheric oxygen." As for "teach away" reason (2), Appellants contend: When it was eventually recognized that flat-topped pedestals have a benefit over rounded-tipped pedestals (notably around the time of Applicants' priority date), the general thinking was that all the oxygen had to be removed during the curing step of the flexographic printing plate precursor. See Kodak's reasoning behind its FLEXCEL NX system in the following articles attached as exhibits A, B, and C to the Joint Rule 132 Declaration .... App. Br. 24. Further, "[i]n view of Kodak's extensive teachings and its commercial product that implemented those teachings, it is unlikely one of ordinary skill would think it wise to reduce, but not eliminate, the amount of oxygen present during the curing step ... [because] Kodak was a big player in the industry." App. Br. 26. With respect to "teach away" reason (3), Appellants contend a person of ordinary skill in the art "would not adopt ... Daems's method to cure drops of polymer for use with an entire sheet of polymer" because curing problems described by Daems could be attributed to curing polymer drops under UV light using reduced oxygen levels. App. Br. 27. Thus, to summarize, Appellants point to different references as purported evidence that the industry was divided in their thinking as to 8 Appeal2014-004958 Application 12/718,301 whether an atmospheric level or a reduced level of oxygen would be appropriate for curing polymer under UV light. In response to Appellants' arguments concerning reason (1 ), supra, the Examiner finds, and we agree, such arguments are not persuasive because Kessenich show[ s] that ablated flexographic printing plate precursors do not have to be exposed in atmospheric oxygen. Kessenich et al. teach the exposure may be done by exposing under an inert gas. See paragraph 51 of Kessenich et al. Thus, Kessenich et al. at least imply that it was known at the time that oxygen was not wanted during exposure because they teach exposing under an inert atmosphere as opposed to an oxygen-rich atmosphere. Regardless, the ill-effects that oxygen has on the photopolymers during curing are well-known in the art, as evidenced by Kessenich et al. and Daems et al. showing the desire to remove or reduce the amount of oxygen in the curing environment. Ans. 3. In response to argument (2), the Examiner responds by concluding that, even assuming arguendo that Appellants' contentions regarding the "general thinking" in the art were accepted, a person with skill in the art "would still have had the motivation and desire to use the known method of mitigating the ill-effects of oxygen in the curing environment taught by Daems et al. in the system of Kessenich et al." Ans. 3--4. The Examiner further finds, and we agree in light of the references cited by the Examiner, "in the art of flexographic plate making ... it was not necessarily true that 'the general thinking was that all the oxygen had to be removed during the curing step.'" Ans. 4. Concerning argument (3), the Examiner finds, and we again agree: 9 Appeal2014-004958 Application 12/718,301 Id. 4 Regardless of whether or not the exposure method of Daems et al. is different because drops of polymer are cured in a step-by- step manner, the method of reducing the oxygen is just as applicable to the curing system of Kessenich et al. That is, Daems et al. disclose a known method of reducing oxygen concentration in the curing environment that facilitates the curing process (paragraph 150). Issue (c) Appellants argue the cited prior art does not teach or suggest the results and advantages purportedly produced by the claimed invention. App. Br. 27. Appellants' analysis, however, is not the correct manner in determining motivation to combine. "Under the correct [obviousness] analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Moreover, for a prima facie case of obviousness to be established, the reference need not recognize the problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); Exparte Obiaya, 227 USPQ 58, 60 4 "For facilitating curing, the ink-jet printer often includes one or more oxygen depletion units. The oxygen depletion units place a blanket of nitrogen or other relatively inert gas (e.g. C02), with adjustable position and adjustable inert gas concentration, in order to reduce the oxygen concentration in the curing environment. Residual oxygen levels are usually maintained as low as 200 ppm, but are generally in the range of 200 ppm to 1200 ppm." Daems i-f 150. Thus, we agree with the Examiner and find Daems teaches or at least suggests curing in an oxygen environment below atmospheric levels. 10 Appeal2014-004958 Application 12/718,301 (BPAI 1985) ("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious"). There is no requirement that the problem solved by the secondary reference be discussed by the primary reference to apply the teachings of the secondary reference in a rejection under 35 U.S.C. § 103. The Supreme Court has held that in analyzing the obviousness of combining elements, a court need not find specific teachings, but rather may consider "the background knowledge possessed by a person having ordinary skill in the art" and "the inferences and creative steps that a person of ordinary skill in the art would employ." See KSR, 550 U.S. at 418. To be nonobvious, an improvement must be "more than the predictable use of prior art elements according to their established functions." Id. at 417. Along these lines, Appellants argue " [ t ]he hypothetical combination of Kessenich and Daems does not suggest the stated advantage of Applicant's invention-using digital imaging to make a flexographic printing plate with flat-topped printing pedestals without a vacuum and with oxygen present." App. Br. 30. We note Appellants' arguments are not commensurate with the scope of the claim, which does not recite a method that includes a step or steps to produce "flat-topped printing pedestals without a vacuum and with oxygen present." Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's 11 Appeal2014-004958 Application 12/718,301 resulting reference combination and legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 5-8, 10-12, 30-35, and 40-50 which fall therewith. See Claim Grouping, supra. § 103(a) Rejections R2-R4 of Claims 2--4 and 9 In view of the lack of any substantive or separate arguments directed to the obviousness Rejections R2 through R4 of claims 2--4 and 9 under § 103, we sustain the Examiner's rejections of these claims. We deem arguments not made waived. See Tr. 9-10. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 1-12) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellants have not shown. CONCLUSION The Examiner did not err with respect to obviousness Rejections RI through R4 of claims 1-12, 30-35, and 40-50 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. 12 Appeal2014-004958 Application 12/718,301 DECISION We affirm the Examiner's decision rejecting claims 1-12, 30-35, and 40-50. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation