Robert D. Kross

Patent Trials and Appeals Board

Aug 16, 2019

13275400 - (D) (P.T.A.B. Aug. 16, 2019)

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.
13/275,400 10/18/2011 Robert D. Kross 3641
60333 7590 08/16/2019
EDWIN D. SCHINDLER
4 HIGH OAKS COURT
P.O. BOX 4259
HUNTINGTON, NY 11743-0777
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
08/16/2019 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 ROBERT D. KROSS1, 2
________________

Appeal 2019-003195
Application 13/275,400
Technology Center 2800
________________

Before MARK NAGUMO, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Robert D. Kross (“Kross”) timely appeals under 35 U.S.C. § 134(a)
from a Non-final Rejection3 of all pending claims 31–50. We have
jurisdiction. 35 U.S.C. § 6. We affirm.

1 The real party in interest is identified as Poly-Gel L.L.C. (Appeal Brief,
filed 14 December 2018 (“Br.”), 2.)
2 A petition to make special under 37 C.F.R. § 1.102(c)(1) (age) was
granted on 16 December 2018.
3 Office Action mailed 17 May 2018 (“Office Action”; cited as “OA”).
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OPINION
A. Introduction4
This is the third time similar claims based on the ′400 Specification
have come before us for review: we presume full familiarity with our
previous decisions.5 Following the most recent decision
(Appeal 2018-000812), appellant Kross filed, on 2 April 2018, a Request for
Continued Examination under 37 C.F.R. § 1.114, canceling all claims and
presenting new claims 31–50. Kross also filed a Declaration by Lawrence
Kersen, the president of Poly-Gel L.L.C., the real-party-in-interest, in
support of commercial success and industry praise for the claimed
inventions, as a rebuttal to the still-contested primary case of obviousness.
The subject matter on appeal relates to the use of a non-gelatin,
viscoelastic gel printing plate. This printing plate is said to be superior to
similar prior art printing plates made from gelatin because it is durable,
reusable, and readily cleaned. (Spec. 6, ll. 18–19.) According to Kross, the
invention “overcomes the known problems of cracking, splitting, and just
plain ‘falling apart’ of using a gel printing plate made of gelatin, thereby

4 Application 13/275,400, Printing plate for producing a plurality of prints
having viscoelastic gels and method for its use, filed 18 October 2011,
claiming the benefit of a provisional application filed 29 December 2010.
We refer to the “′400 Specification,” which we cite as “Spec.”
5 Appeal 2018-000812 (31 Jan 2018) (aff’d) (“Kross2”) (main focus on
washing the printing plate);
Appeal 2016-008698 (22 Dec 2016) (aff’d) (“Kross1”) (main foci:
obviousness of substituting viscoelastic gels described by Chen for gelatin
taught as printing plate by Germain; and printing solely by hand); req. recon.
den’d (23 Jan 2017).
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solving a ‘long felt but unsolved need’ and the ‘failure of others.’ (Br. 10,
ll. 1–2.)
Claim 31 is representative and reads:
A printing method using a non-gelatin, viscoelastic gel
printing plate, comprising the steps of:
applying a layer of paint to a non-gelatin, viscoelastic gel
printing plate comprising
a viscoelastic gel composition having a viscoelastic
polymer selected from the group consisting of
a hydrogenated poly-isoprene/butadiene polymer,
poly(styrenebutadiene-styrene),
poly(styrene-butadiene)n,
poly(styrene-iso-prene-styrene),
poly(styrene-isoprene)n ,
poly(styrene-ethylene-propylene),
poly(styrene-ethylene-propylenestyrene)n,
poly(styrene-ethylene-butylene-styrene)n,
poly(styrene-ethylene-butylene),
poly(styrene-ethylene-propylene)n,
poly(styrene-ethylene-butylene)n,
polystyrene, polybutylene,
poly(ethylene-propylene), poly( ethylene-butylene),
polypropylene, polyethylene, polyurethane,
polyethylene and silicone,
and a combination thereof, and
a plasticizing oil,
said viscoelastic gel composition
excludes gelatin and has
a smooth surface formed as a sheet and shaped for
use as said non-gelatin, viscoelastic gel printing
plate;
laying over said non-gelatin, viscoelastic gel printing plate
a surface onto which said layer of paint for creating a print
is to be transferred; and,
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transferring at least a portion of said layer of paint from
said non-gelatin, viscoelastic gel printing plate to said
surface via pressure for producing said print,
said method for producing said print using said non-gelatin
printing plate being capable of being performed either
with a pressure tool,
without said pressure tool and
solely with the pressure being applied by a hand of a person,
or with both said pressure tool and the pressure being
applied by the hand of a person.
(Br., Claims App. A1–A2; some formatting, and emphasis added.)
The salient differences in the print-making method recited in
independent claim 31, and the previous representative independent claims,
are that paint is transferred from the printing plate to the surface to be
printed by pressure applied by the hand of the print maker, a pressure
applying tool, or both. Remaining independent claim 39 is similar, but
requires that a second printing be done. Certain dependent claims require
that the printing plate be washed, or more paint applied to the printing plate,
etc.
All of these limitations have been addressed in previous appeals,
although not necessarily in the specific combinations recited here.
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The Examiner maintains the following grounds of rejection6, 7:
A. Claims 31, 34–36, 38, 39, 44–47, and 50 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Singular Impressions,8 Taylor,9 and Chen.10
A1. Claims 48 and 49 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Singular Impressions,
Taylor, Chen, and Germain.11
A2. Claims 37, 40, and 41 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Singular Impressions,
Taylor, and Chen.
A3. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Singular Impressions, Chen,
Taylor, and Zirker.12
A4. Claims 42 and 43 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Singular Impressions, Chen,
Taylor, and Zirker.
All of the references have been relied on in previous rejections.

6 Examiner’s Answer mailed 8 February 2019 (“Ans.”).
7 Because this application was filed before 16 March 2013, the effective
date of the America Invents Act, we refer to the pre-AIA statute.
8 printout of Singular Impressions, the monotype process,
http://americanart.si.edu/exhibitions/online/monotypes/video.html
as captured by WaybackMachine on April 14, 2009.
9 Taylor, printout of httg://marytaylorartcom/FAQ/FAQ Gelatin Print.htm
as captured by WaybackMachine on October 19, 2009.
10 John Y. Chen, Gelatinous elastomer compositions and articles, U.S.
Patent No. 7,159,259 B2 (2007).
11 Linda Germain, Gelatin Printmaking-Monotype Prints, YouTube video
dated May 11, 2008, https://youtu.be/DyOJG-TEWf8
12 Irving Joseph Zirker, Acrylic paint monotype artwork, U.S. Patent
Application Publication 2002/0066515 A1 (2002).
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B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Kross does not identify or focus on any particular claim in the
arguments seeking reversal of the rejections. We select independent
claim 31 as representative, with which all claims stand or fall.
37 C.F.R. § 41.37(c)(1)(iv) (2018).
The Examiner’s statement of rejection (OA 3–10) tracks the findings
of fact and analyses of obviousness in the Board’s previous decisions and in
the Examiner’s previous actions.
Kross criticizes the prima facie case of obviousness on the basis that
Chen does not teach or suggest the new use of the disclosed viscoelastic
polymer compositions as a printing plate. (Br. 8–12.) As indicated supra,
Kross urges that the claimed invention represents a new use for a known
material, and, as indicated by the failure of others (i.e., Germain), a new
solution for the ‘long felt but unsolved need’ to provide a satisfactory
solution to “the known problems of cracking, splitting, and just plain ‘falling
apart’ when using a gel printing plate made of gelatin” (Br. 10, ll. 1–2).
This argument is not persuasive of harmful error because, as
explained in detail previously,13 the routineer would have expected,
reasonably, that the properties of the viscoelastic gel compositions described

13 E.g., Decision on Request for Rehearing, Appeal 2016-008698
(20 January 2017), 4.
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by Chen14 would likely address the cracking, splitting, etc., problems
identified by the prior art (e.g., Germain) with gelatin printing plates.
The reasonable expectation of successfully solving a known problem using
known properties of a known material in generally prima facie obvious.
Cf. In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991) (“Both the suggestion
and the reasonable expectation of success must be founded in the prior art.”)
(citations omitted).
Kross further urges the Examiner failed to give proper consideration
to the declaration by Mr. Lawrence Kerson, President of Poly-Gel L.L.C.
(the real-party-in-interest), supporting commercial success and critical
acclaim as secondary considerations rebutting the prima facie case of
obviousness. (Id. at 12–15.)
We do not find Mr. Kerson’s testimony persuasive of harmful error in
the rejections. So-called “secondary considerations,” to be probative of non-
obviousness, must have a nexus with the claimed invention. Demaco Corp.
v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)
(“a prima facie case of nexus is generally made out when the patentee shows
both that there is commercial success, and that the thing (product or method)

14 Chen teaches that
The gel compositions and articles exhibits high dimensional stability,
crack, tear, craze, and creep resistance, excellent tensile strength and high
elongation, long service life under stress and capable of repeated handling,
excellent processing ability for cast molding, non-toxic, nearly tasteless and
odorless, extremely soft and strong, highly flexible, possessing elastic
memory, substantially with little or no plasticizer bleedout. The gel can also
be made transparent.
(Chen, col. 2, ll. 13–20.)
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that is commercially successful is the invention disclosed and claimed in the
patent.”)
However, even accepting Mr. Kerson’s representations on this
matter,15 as our reviewing court found in a similar case, “the record is nearly
silent on whether the commercial success was caused by the merits of the
invention as distinct from the prior art.” In re Kao, 639 F.3d 1057, 1069
(Fed. Cir. 2011). We are not informed, for example, of the magnitude of the
sales, by number of units sold, or amount of money paid. Nor are we
informed of the size of the market for gel printing plates (whether gelatin or
nongelatin), the extent of demand for the gelatin printing plates and their
alternatives, the market share represented by the sales, or the market power
of the seller Gelli-Arts. Thus, we have not been placed in a position to
assess whether the condition that “the asserted commercial success of the
product must be due to the merits of the claimed invention beyond what was
readily available in the prior art,” J.T. Eaton & Co. v. Atl. Paste & Glue Co.,
106 F.3d 1563, 1571 (Fed. Cir. 1997) has been met.
As for the reported critical acclaim, represented here by the Parents’
Choice Award, again, we have no substantial evidence that the award was
based on the performance of the claimed material compared to prior art
alternatives. The Parents’ Choice Review, states that “[a]fter watching the

15 In the present case, we are not presented with objective evidence that
Mr. Kerson has personal knowledge that the material sold in the kits
marketed by Gelli-Arts L.L.C. is within the scope of the non-gelatin
viscoelastic gel printing plate recited in the appealed claims. Indeed, we are
not told what is in the composition. Mr. Kerson merely recites the claim and
asserts that the material is within the scope of the claim.
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instructional videos and getting some ideas online, our young testers were
ready to start printing. Aspiring abstract artists as young as eight enjoyed
being able to create their own designs and press them onto paper.”
(Declaration Exhibit 3.) We have not been informed of any relevant
expertise the designers of the test have with printing plate materials, such
that a test without comparisons to prior art materials could be considered a
reliable indicator of advantages of the claimed printing process. Indeed, it
may have been, for example, the instructional quality of the videos or
attractiveness to the young testers, that was persuasive to the reviewers for
Parents’ Choice, rather than the alleged advantages of the non-gelatin
printing plates, that led to the granting of the award, i.e., to the critical
acclaim.
As our reviewing court explained in Pro-Mold & Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996), all evidence
submitted in support of commercial success, including the level of
experience in the market, the degree of market power, evidence of industry
acceptance and copying by others, and any affidavits, must be considered
and weighed by the finder of fact. We have, accordingly, considered the
evidence as discussed above. We are not persuaded, however, that the
Examiner erred in determining that the evidence submitted in support of
commercial success and critical acclaim failed to rebut the evidence in favor
of obviousness.
We therefore affirm the appealed rejections.
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C. Order
It is ORDERED that the rejection of claims 31–50 is affirmed.
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