X-Celeprint Limited

Patent Trials and Appeals Board

Sep 22, 2021

2020005908 (P.T.A.B. Sep. 22, 2021)

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.
14/804,031 07/20/2015 Christopher Bower 2011486-0328 1668
24280 7590 09/22/2021
CHOATE, HALL & STEWART LLP
TWO INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
NGUYEN, QUANG X.L.
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
09/22/2021 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):
jnease@choate.com
patentdocket@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER BOWER, MATTHEW MEITL, DAVID
GOMEZ, SALVATORE BONAFEDE, and DAVID KNEEBURG
Appeal 2020-005908
Application 14/804,031
Technology Center 2800
Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 9, 17, 20–24, 33, and 87–90. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies X-Celeprint Limited as the real party
in interest. Appeal Brief (“Appeal Br.”) filed December 18, 2019, 2.
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CLAIMED SUBJECT MATTER
The invention relates to micro-transfer-printing devices. Specification
(“Spec.”) filed July 20, 2015, 1 (Field of the Invention).2 Appellant discloses
that such devices allow deterministic assembly and integration of arrays of
micro-scale, high performance solid-state semiconductor devices (“printable
elements”) onto non-native substrates. Id. at 1 (Background of the
Invention). Due to adhesion between the printable elements and the
elastomeric print head of the micro-transfer-printing devices, Appellant
discloses that the devices select and “pick” the printable elements from their
native substrates. Id. at 2:3–11. In addition, Appellant discloses that such
adhesion can be selectively tuned by varying the speed of the devices, such
that when moved quickly, the adhesion is large enough to pick the elements
away from their native substrates, and when moved slowly, the adhesion is
low enough to release or print the elements onto a non-native substrate. Id.
Appellant further discloses that posts may be provided on the print
heads to permit selective picking of a plurality of elements from the native
substrate. Spec. 3:8–10. Compression of the elastomeric print head can be
used to fully laminate the array of printable elements to the posts, but
Appellant discloses that, among other concerns, there is a possibility of
“crowning” at the end of the print heads caused by thermal mismatch
between the elastomeric bulk material of the print head and a rigid or hard
support plate. Id. at 3:16–22. Appellant describes one solution to this
crowning problem is providing the bulk material with a tapered surface

2 This Decision also cites to the Final Office Action (“Final Act.”) dated
April 18, 2019, the Examiner’s Answer (“Ans.”) dated June 15, 2020, and
the Reply Brief (“Reply Br.”) filed August 14, 2020.
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connecting the side to the surface carrying the posts. Id. at 16:10–17.
Appellant also describes another solution to this crowning problem is
providing a mesa between the bulk material and the posts, wherein the mesa
thickness may be greater than the height of the crowning on the bulk
material. Id. at 68:4–16.
Independent claims 1 and 22, reproduced below from the Claims
Appendix to the Appeal Brief, are illustrative of the claimed subject matter:
1. A conformable transfer device with reduced crowning,
the transfer device comprising:
a rigid planar glass support;
a cured polymer bulk volume having a single first surface
and a single second surface opposite the first surface, the
second surface in direct contact with the rigid planar glass
support, and a tapered side surface that tapers continuously
between the single first surface and the second single surface,
wherein the cured polymer bulk volume is a single layer; and
a plurality of printing posts, each having a contact
surface on an end of the printing post opposite the rigid planar
glass support, disposed on the single first surface of the bulk
volume to pick up printable semiconductor devices, wherein the
plurality of printing posts and the bulk volume are arranged
such that a force applied to the single second surface of the bulk
volume is transmitted to the plurality of printing posts, and
wherein the single first surface and the single second surface
are substantially parallel, the single first surface and the single
second surface are each substantially and continuously planar,
the plurality of printing posts are substantially identical in size
and shape, and the contact surfaces of the plurality of printing
posts are substantially in the same plane.

22. A conformable transfer device comprising:
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a rigid planar glass support;
a single layer of cured polymer elastomer on the rigid
planar support comprising a bulk layer in direct contact with the
rigid planar glass support; and
a mesa, disposed on the bulk layer, having an area over
the rigid planar support smaller than that of the bulk material,
the mesa having a single first surface on a side of the mesa
opposite the bulk layer upon which a plurality of printing posts
are disposed to pick up printable semiconductor devices,
wherein the edge of the mesa has a continuously beveled and/or
rounded edge so as to reduce distortion of the surface and allow
accurate spacing of the plurality of printing posts, wherein the
plurality of printing posts are substantially identical in size and
shape and comprise contact surfaces that are substantially in the
same plane, and wherein the mesa has a second surface
opposite the first surface, the first surface and the single second
surface are substantially parallel, the single first surface and the
single second surface are each substantially and continuously
planar, and the single second surface is in contact with the
single layer of cured polymer elastomer, and wherein one or
more of the following is true:
(i) the posts are arranged on the first surface of the
mesa at least 1 mm away from the edge; and
(ii) the mesa has a thickness no greater than 10 mm.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Nuzzo et al. (“Nuzzo”) US 2009/0199960 A1 Aug. 13, 2009
Menard US 2010/0123268 A1 May 20, 2010
Gullentops et al.
(“Gullentops”)
US 2011/0219973 A1 Sept. 15, 2011

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REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103:
1. Claims 1, 2, 9, 17, 20, 21, 87, and 89 as unpatentable over
Menard in view of Nuzzo; and
2. Claims 22–24, 33, 88, and 90 as unpatentable over Menard
in view of Gullentops.
OPINION
Rejection 1: Obviousness of Claims 1, 2, 9, 17, 20, 21, 87, and 89
The Examiner rejects these claims under 35 U.S.C. § 103 as
unpatentable over Menard in view of Nuzzo. Final Act. 2–6. Appellant’s
arguments are directed to claim 1 only. Appeal Br. 10–15. Therefore, claims
2, 9, 17, 20, 21, 87, and 89 stand or fall with claim 1.
The Examiner finds that Menard teaches a conformable transfer
device substantially as recited in claim 1, but fails to teach that cured
polymer bulk volume 202 has a tapered side surface that tapers continuously
between first and second surfaces thereof. Final Act. 2–3. However, the
Examiner finds that Nuzzo teaches a cured polymer bulk volume having a
tapered side surface that tapers continuously between first and second
surfaces thereof. Id. at 3. The Examiner concludes that it would have been
obvious to provide a side surface of Menard’s cured polymer bulk volume
202 with a continuous taper between first and second surfaces thereof to
provide high yield transfer efficiencies. Id.
Appellant argues that the Examiner relies on impermissible hindsight
instead of a reasoned explanation of motivation to combine Menard and
Nuzzo. Appeal Br. 10. In particular, Appellant contends that the Examiner’s
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reliance on one of Nuzzo’s large number of diverse examples is arbitrary
and Nuzzo does not tie “high yield transfer efficiencies” (the reason the
Examiner provides for the combination) to the shape of the bulk volume, or
more specifically to the Figure 22 embodiment on which the Examiner
relies. Id.; see also Reply Br. 4–5. Instead, Appellant asserts that Nuzzo
generally teaches that “high yield transfer efficiencies” are dependent on the
bulk volume composition, its physical dimensions, and its mechanical
properties. Appeal Br. 11. Appellant notes that the Specification teaches
both the various effects of crowning of the bulk volume, as well as how
tapered/beveled or rounded sides are effective to mitigate negative crowning
effects. Id. at 12. As such, Appellant contends that the combination of
Menard and Nuzzo would only have been made based upon Appellant’s
disclosure, i.e., based on impermissible hindsight. Id.
In response, the Examiner notes that Nuzzo depicts the transfer device
in Figures 1A–1D, 20, 22, and 28, but only Figure 22 shows the sides of
bulk volume 202 and posts 70. Ans. 5. The Examiner thus notes that Nuzzo
does not disclose a large number of examples of bulk volume profiles. Id.
The Examiner acknowledges that Nuzzo does not specifically teach that the
side surface profile per se is critical to provide high yield transfer
efficiencies, but finds that such a side surface profile is part of the “physical
dimensions” that Nuzzo does teach to be important for such efficiencies. Id.
And the Examiner again notes that Nuzzo nonetheless depicts such a side
surface profile in Figure 22. Id.
Appellant’s argument that the combination of Menard and Nuzzo is
based on impermissible hindsight is not persuasive of reversible error
because the Examiner’s reasons for modifying Menard’s bulk volume profile
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with a tapered side surface are supported by the prior art disclosures
themselves. We are aware “of the distortion caused by hindsight bias and
[that we] must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421(citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the teachings
of the invention in issue”)); see also Sensonics, Inc. v. Aerosonic Corp., 81
F.3d 1566, 1570 (Fed. Cir. 1996) (“The invention must be viewed not after
the blueprint has been drawn by the inventor, but as it would have been
perceived in the state of the art that existed at the time the invention was
made.” (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138
(Fed. Cir. 1985))).
However, as the Examiner explains, Nuzzo’s Figure 22 clearly depicts
a bulk volume having a tapered side surface, thus providing evidence that
the claimed bulk volume profile was known in the art at the time of the
invention. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (drawings
showing feature with great particularity or greatly enlarged may support
prior art rejection); In re Heinrich, 268 F.2d 753, 755 (CCPA 1959); In re
Bager, 47 F.2d 951, 953 (CCPA 1931) (“[d]escription for the purposes of
anticipation can be by drawings alone as well as by words.”). Moreover,
although Nuzzo does not specifically include the bulk volume’s shape as one
factor leading to high yield transfer efficiencies, an ordinary artisan would
have understood that such shape would be included in the physical
dimensions factor that Nuzzo specifically discusses. We further note that
although Appellant urges that Nuzzo teaches a large number of bulk volume
shapes possibilities, we can find only two shown in Nuzzo’s figures: 1) a
non-tapered vertical side surface profile such as in Figures 1A–1D; and 2) a
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tapered side surface profile as in Figure 22. Thus, there is sufficient evidence
in Nuzzo that a tapered side bulk volume was known in the art at the time of
the invention such that its use in Menard would have been obvious absent a
showing of unexpected results (of which Appellant neither argues nor directs
us to supporting evidence).
Appellant next argues that the combination of Menard and Nuzzo
does not render claim 1 taken as a whole obvious to those of ordinary skill in
the art. Appeal Br. 13. Appellant asserts that the present application
recognizes the problem of unintended object pick-up and that the source of
that problem relates both to sag between posts and bulk volume crowning.
Id. Appellant further asserts that providing a bulk volume with a tapered side
mitigates crowning and reduces or eliminates unintentional pick-up. Id.
Therefore, Appellant urges that claim 1 includes not only problem
recognition, but also a solution to that problem: a tapered side surface of a
bulk volume. Id. at 13–14. Appellant contends that neither Menard nor
Nuzzo recognizes the problem of unintentional pick-up, that a source of the
problem is bulk volume crowning, and that tapering the bulk volume side is
a solution to that problem. Id. at 14–15 (citing In re Sponnoble, 405 F.2d
578, 585 (CCPA 1969); In re Wiseman, 596 F.2d 1019, 1022 (CCPA 1979)).
Appellant’s argument that the combination of Menard and Nuzzo is
improper because neither reference recognizes the problem of unintentional
pick-up caused, in part, by bulk volume crowning is not persuasive of
reversible error. The applied prior art need not recognize the problem solved
by Appellant. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“[T]he
motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness.”); In re Beattie,
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974 F.2d 1309, 1312 (Fed. Cir. 1992)(“[T]he law does not require that the
references be combined for the reasons contemplated by the inventor.”); Ex
parte Obiaya, 227 USPQ 58, 60 (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.”); In re Fear, 136 F.2d 908, 909
(CCPA 1943) (“[A]ppellant cannot secure a patent on the essential feature of
the patentee’s process merely because it has another advantage.”). The
Supreme Court has emphasized that “the [obviousness] analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l v.
Teleflex Inc., 550 U.S. 398, 418 (2007). “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id. at
417.
Here, Nuzzo clearly depicts a bulk volume having a tapered side
surface, thus indicating that such a feature was known in the art. Although
Appellant is correct that neither Menard nor Nuzzo teaches that tapering a
side surface of the bulk volume solves the problem of unintended pick-up
due, in part, to bulk volume crowning, Appellant may not obtain a patent for
a known bulk volume profile that was known in the art as evidenced by
Nuzzo. As to Appellant’s reliance on Sponnoble, we note there that the art
on which the Examiner relied for showing the solution to the problem would
not have been relied on absent Sponnoble’s disclosure that moisture
transmission was passing through, rather than around, the plug of a mixing
vial. Sponnoble, 405 F.2d at 833–34. Here, unlike Sponnoble, the
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Examiner’s reliance on Nuzzo is not based on Appellant’s disclosure of the
problem, but on the basis that Nuzzo teaches that a bulk volume tapered side
profile—Appellant’s solution—was already known in the art. Applying such
in Sponnoble would be equivalent to the prior art reference teaching that
butyl rubber plugs for mixing vials were already known in the art. We,
likewise, find the present situation similarly distinguished over the same
principle recited in Wiseman (which cites to Sponnoble), again because
Nuzzo teaches that Appellant’s solution was known.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1, and claims 2, 9, 17, 20, 21, 87, and 89, over the combination of
Menard and Nuzzo.
Rejection 2: Obviousness of Claims 22–24, 33, 88, and 90
The Examiner rejects these claims under 35 U.S.C. § 103 as
unpatentable over Menard in view of Gullentops. Final Act. 6–9. Appellant’s
arguments are directed to claim 22 only. Appeal Br. 15–24. Therefore,
claims 23, 24, 33, 88, and 90 stand or fall with claim 22.
The Examiner finds that Menard teaches a conformable transfer
device substantially as recited in claim 22, but fails to teach a mesa disposed
on bulk layer 202 upon which printing posts are disposed and having an area
over rigid planar support 201 smaller than that of bulk layer 202 with an
edge of the mesa having a continuously beveled and/or rounded edge. Final
Act. 6–7. However, the Examiner finds that Gullentops teaches mesa 212
disposed on bulk layer 220 upon which printing posts 210, 211 are disposed
and having an area over rigid planar support 200 smaller than that of bulk
layer 220 (as shown in Figure 1) with an edge of mesa 212 having a
continuously beveled edge so as to reduce distortion of the surface and allow
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accurate spacing of the plurality of printing posts. Id. at 7. The Examiner
concludes that it would have been obvious to add a mesa relief between
Menard’s bulk volume and printing posts to strengthen and reduce breakage
of the posts. Id.
The Examiner acknowledges that Menard, as modified in view of
Gullentops, fails to teach either that the posts are arranged on the mesa at
least one mm from the edge or that the mesa has a thickness no greater than
10 mm. Final Act. 8. Nonetheless, the Examiner concludes that it would
have been obvious to change the relative dimensions of the different features
of Menard’s modified conformable transfer device, including the mesa,
depending on a user’s specifications with a reasonable expectation of
retaining functionality. Id. (citing In re Rinehart, 531 F.2d 1048 (CCPA
1976) and Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984).
Appellant argues that the combination of Menard and Gullentops is
improper because Gullentops is non-analogous prior art. Appeal Br. 14. In
particular, Appellant contends that Gullentops, unlike Menard and the
claimed invention which teach micro-transfer printing, is directed to
improved flexographic printing of liquid ink onto paper. Id. at 15. Appellant
asserts that flexographic printing uses different materials with different
dimensions to print liquid ink using rigid, durable shapes for faithful
reproduction, whereas micro-transfer printing relies on fundamentally
different principles of operation such as rate-dependent adhesion resulting
from use of conformable viscoelastic materials. Id. at 16. Appellant urges
that deformability in flexography is avoided as it reduces print fidelity, in
contrast to micro-transfer printing in which deformability enables printing.
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Id. As such, Appellant contends that Gullentops is not in the same field of
endeavor as Menard and the claimed invention. Id.
Appellant further contends that Gullentops is also not reasonably
pertinent to the problem faced in the present invention. Appeal Br. 17.
Appellant asserts that the present application recognizes the problem of
unintended object pick-up and that the source of that problem relates to
crowning. Id. Appellant asserts that Gullentops, on the other hand, is
concerned specifically with providing improved stability of its printing posts
to prevent premature wear, which is not a concern for the claimed
conformable transfer device, nor for Menard (and Nuzzo). Id. Appellant
further asserts that posts of the claimed conformable transfer device are
necessarily conformable, whereas Gullentops posts have contact surfaces
with relatively high hardness. Id.
In response, the Examiner finds that Menard and Gullentops are
combinable because of “their common teaching of printing using printing
posts.” Ans. 7. The Examiner further finds that “the issues that [are]
exhibited by the printing posts during the printing process would be similar
to both Menard and Gullentops.” Id. at 8. The Examiner, therefore,
determines that Menard and Gullentops are analogous in the printing art
such that an ordinary artisan would look to Gullentops for modifying
Menard to strengthen and reduce breakage of Menard’s printing posts. Id.
Appellant’s argument that Gullentops is directed to non-analogous
prior art is not persuasive of reversible error. A reference is analogous art if
it is either in the field of the applicant’s endeavor, or is reasonably pertinent
to the particular problem with which the inventor was concerned. In re
Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). The same field of endeavor test
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“for analogous art requires the PTO to determine the appropriate field of
endeavor by reference to explanations of the invention’s subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(reference describing a toothbrush found to be in the same field of endeavor
as a claim to a hairbrush based on findings regarding function and structural
similarity). “A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor’s endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.” In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992).
Here, the Examiner appears to find that Gullentops is in the same field
of endeavor as the claimed invention. In this regard, the Examiner finds that
Gullentops and the claimed invention share the common teaching of printing
with printing posts. This finding appears to be indicating that Gullentops is
in the same field of endeavor—printing with printing posts—as the claimed
invention. We agree with the Examiner’s analogous art determination that
Gullentops is in the same field of endeavor as the claimed invention. We
note that Appellant discloses that, “[i]n its simplest embodiment, micro-
transfer-printing is analogous to using a rubber stamp to transfer liquid-
based inks from an ink-pad onto paper.” Spec. 1:19–21. This disclosure, in
our view, is sufficient to establish that Gullentops is in the same field of
endeavor as the claimed invention.
Appellant next argues that the Examiner relies on impermissible
hindsight instead of a reasoned explanation of motivation to combine
Menard and Gullentops. Appeal Br. 17. In particular, Appellant contends
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that the Examiner’s reason for modifying Menard’s transfer device in view
of Gullentops—to strengthen and reduce the breakage of the posts—is not a
concern in micro-transfer printing. Id. at 18. Appellant also asserts that the
improved resistance to post breakage is expressly tied to the slope angle of
the “top hat” structure (i.e., posts) and not the presence of the mesa. Reply
Br. 8–9. Appellant contends that the “[m]odification of Menard as proposed
would result in a more complicated structure whose fabrication requires
additional processing steps having associated costs.” Appeal Br. 18.
Appellant’s argument that the combination of Menard and Gullentops
is based on impermissible hindsight is not persuasive of reversible error
because the Examiner’s reasons for modifying Menard’s conformable
transfer device with a mesa having a tapered edge are supported by the prior
art disclosures themselves. KSR, 550 U.S. at 421. As the Examiner explains,
Gullentops teaches that providing a mesa would reduce post breakage and
would maintain the quality of the print pattern. Ans. 10. Gullentops also
teaches that providing a low slope angel tapered edge of the mesa has the
advantage that small features on the master will suffer less from buckling.
Gullentops ¶ 31. Gullentops attributes reduced post breakage to the mesa. Id.
¶ 15. Thus, the Examiner has articulated a reasonable motivation based on
the prior art disclosures themselves for the proposed combination. We
recognize that modifying Menard with a mesa adds additional structure
necessitating additional processing steps. However, one of ordinary skill in
the art may be motivated to pursue the desirable properties taught by one
reference, even if that means foregoing the benefit taught by another
reference. In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016); see also
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
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2000) (“The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).
Appellant next argues that the combination of Menard and Gullentops
does not render claim 22 taken as a whole obvious to those of ordinary skill
in the art. Appeal Br. 19. Appellant asserts that the present application
recognizes the problem of unintended object pick-up and that the source of
that problem relates both to sag between posts and mesa crowning. Id.
Appellant further asserts that providing a mesa with a beveled edge mitigates
crowning and reduces or eliminates unintentional pick-up. Id. at 19–20.
Therefore, Appellant urges that claim 22 includes not only problem
recognition, but also a solution to that problem: a mesa with a beveled edge.
Id. at 20. Appellant contends that neither Menard nor Gullentops recognizes
(1) the problem of unintentional pick-up, (2) that a source of the problem is
crowning, and (3) that beveling the mesa is a solution to that problem. Id. at
19–22 (citing In re Sponnoble, 405 F.2d at 585; In re Wiseman, 596 F.2d at
1022).
Appellant’s argument that the combination of Menard and Gullentops
is improper because neither reference recognizes the problem of
unintentional pick-up caused, in part, by crowning is not persuasive of
reversible error. As discussed above, the applied prior art need not recognize
the problem solved by Appellant. Kemps, 97 F.3d at 1430; Beattie, 974 F.2d
at 1312; Obiaya, 227 USPQ at 60; see also KSR, 550 U.S. at 418.
Here, we note that Gullentops discloses that bulk layer is elastomeric
and that the mesa and printing posts are produced from a UV-curable liquid
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having elastomeric properties after being cured. Gullentops ¶¶ 32–37. Also,
Gullentops teaches that flexographic printing masters are more susceptible to
damage during handling before printing, but that, during printing, very small
printing dots can break off. Id. ¶ 13. Gullentops further teaches that a mesa
relief having a tapered edge with a low slope angle has the advantage that
small features on the master will suffer less from buckling. Id. ¶ 31.
Although Appellant is correct that neither Menard nor Gullentops
teaches that a beveled mesa solves the problem of unintended pick-up due,
in part, to crowning, Gullentops nonetheless motivates the provision of a
beveled mesa in Menard in order to reduce post breakage and buckling. As
to Appellant’s reliance on Sponnoble, we again note there that the art on
which the Examiner relied for showing the solution to the problem would
not have been relied on absent Sponnoble’s disclosure that moisture
transmission was passing through, rather than around, the plug of a mixing
vial. Sponnoble, 405 F.2d at 833–34. Here, unlike Sponnoble, the
Examiner’s reliance on Gullentops is based not on Appellant’s disclosure of
the problem, but on the basis that Gullentops teaches that a beveled mesa—
Appellant’s solution—was already known in the art. We, likewise, find the
present situation similarly distinguished over the same principle recited in
Wiseman (which cites to Sponnoble), again because Gullentops teaches that
Appellant’s solution was known.
Appellant next argues that Menard in view of Gullentops fails to teach
all the limitations of claim 22 because Gullentops fails to teach that all the
plurality of posts are substantially identical in size and shape, and indeed
requires that the posts not be identical in size and shape. Appeal Br. 22–24.
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This argument is not persuasive of reversible error because it
misapprehends the Examiner’s proposed combination in the rejection. There
is no dispute that Menard discloses a plurality of posts that are substantially
identical in size and shape. The rejection proposes modifying Menard by
including a beveled mesa between the underlying bulk elastomeric layer and
the plurality of printing posts in view of Gullentops teaching of such a
beveled mesa in order to reduce post breakage and buckling. Gullentops
need not teach what Menard already teaches.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 22, and claims 23, 24, 33, 88, and 90, over the combination of Menard
and Gullentops.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claims 1, 2, 9, 17, 20–24, 33, and 87–90 under 35 U.S.C.
§ 103 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 9, 17,
20, 21, 87,
89
103 Menard, Nuzzo 1, 2, 9, 17,
20, 21, 87,
89

22–24, 33,
88, 90
103 Menard, Gullentops 22–24, 33,
88, 90

Overall
Outcome
1, 2, 9, 17,
20–24, 33,
87–90

Appeal 2020-005908
Application 14/804,031

18

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED