Ex Parte 6797454 et al

Patent Trial and Appeal BoardMar 27, 2015

95001962 (P.T.A.B. Mar. 27, 2015)

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. 95/001,962 04/11/2012 6797454 2156-Reexam 9 4011 24998 7590 03/30/2015 DICKSTEIN SHAPIRO LLP 1825 EYE STREET NW Washington, DC 20006-5403 EXAMINER DIAMOND, ALAN D ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 03/30/2015 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 PATENT TRIAL AND APPEAL BOARD ____________ MACDERMID PRINTING SOLUTIONS LLC Requester and Appellant v. E.I. DUPONT de NEMOURS & CO. Patent Owner and Respondent ____________ Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 Technology Center 3900 ____________ Before MARK NAGUMO, RICHARD M. LEBOVITZ, and RAE LYNN P. GUEST, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON REHEARING Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 2 In the Decision on Appeal dated November 21, 2014 (“Decision”), the panel affirmed the Examiner’s decision not to maintain 35 separate proposed rejections under 35 U.S.C. § 103. Each proposed rejection included a similar reliance on some combination of Bhateja, 1 Martens, 2 or both, in view of either Leavitt 3 or Scott. 4 Decision 3; Examiner’s Right of Appeal Notice 7-12, mailed June 7, 2013 (hereinafter “RAN”). 5 Again, in the interest of brevity, we will not list each of the individual rejections. The dispositive issue on appeal was: Did the Examiner err in determining that using a forced cooling means in the apparatus and method of Bhateja and Martens would not have been obvious to one of ordinary skill in the art at the time of the invention based on the teaching in Bhateja of thermal distortion and the teaching of a forced cooling means described in Scott and/or Leavitt? See Decision 10. We answered this question in the negative and determined that the Examiner did not err in not adopting any of the proposed rejections by Requester. Requester requests rehearing of the Decision under 37 C.F.R. § 41.79. Request for Rehearing (“Req. R’hg.”) dated December 16, 2014. Patent 1 Bhateja et al., WO 96/144603, published May 17, 1996. 2 Martens, et al., WO 98/13730, published April 2, 1998. 3 Minard A. Leavitt, US 3,850,635, issued November 26, 1974. 4 Richard D. Scott, US 4,198,145, issued April 15, 1980. 5 Requester identifies 39 separate proposed rejections because the Examiner combines Requester’s Rejections 9 and 19, Rejections 10 and 20, Rejections 17 and 27, and Rejections 18 and 28 in Examiner’s Rejections IX, X, XVII, and XVIII, respectively. See RAN 8-10; Req. App. Br. 5-8. Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 3 Owner submitted comments on Requester’s Request for Rehearing on January 13, 2015 (hereinafter “PO Comments”). Requester contends the Board misapprehended or overlooked that: I. Using a blower to direct air at an object was a common sense solution given that overheating was known to cause the thermal distortion of the substrates. Req. R’hg. 3 and 6-9. II. The broadest reasonable interpretation of the phrases “forced cooling” and “forcefully cooling” does not restrict “cooling” to temperatures less than ambient temperature. Req. R’hg. 3-4 and 9-13. The broadest reasonable interpretation of the phrases “cooling” is not restricted to an axially cooled drum. Id. at 28- 29. III. The reasonable expectation of success standard and the level of skill of the ordinary artisan. Req. R’hg. 4-5 and 13-25 and 27- 28. IV. The obvious to try standard as a matter of law. Req. R’hg. 5-6 and 25-27. I. OBVIOUSNESS BASED ON COMMON SENSE REASONING Requester contends that the Board erred by not considering that forced cooling was a common sense solution to the known problem of overheated substrates, but instead rigidly required supporting evidence contrary to the expansive approach put forth by our reviewing Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Req. R’hg. 6-7 (citing e.g., Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). According to Requester, Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 4 It is a matter of simple common sense to cool that which is known to be too hot, and electrically powered fans, i.e. blowers, have been known as cooling instruments since the dawn of electricity and were employed by Scott and Leavitt for that purpose. It would be common sense and obvious to position such a fan at the point where the photosensitive element is the hottest - right after it leaves the nip. Req. R’hg. 8. After carefully consideration of Requester’s contentions, we are not persuaded that the panel misapprehended or overlooked whether the application of forced cooling was a common sense approach solution to the problem of overheated substrates. See Decision 13-15. The panel acknowledged expressly in the Decision that there is insufficient evidence to find that forced cooling would have been an obvious solution from a mere disclosure that the distortion problem was caused by heating. Decision 14. While we agree with Requester that it is common sense to cool something that is too hot, the application of this common knowledge to the known process and apparatus for developing a flexographic plate taught by Bhateja and Martens, is anything but straightforward. For example, the structures of the flexographic plate development apparatus and the processes of Bhateja and Martens require the substrate of the photosensitive element to remain directly adjacent the drum, so that the drum can provide opposing pressure to the web as it moves through the nip rolls. See ’454 patent, col. 2, ll. 7-22. Thus, from Bhateja’s and Martens’ disclosures alone, it would not have been obvious to the skilled artisan how to cool the substrate (which is the only portion of the photosensitive element for which thermal distortion is identified as being problematic) using conventional “electrically powered fans, i.e. blowers, [that allegedly] have been known as cooling instruments Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 5 since the dawn of electricity and were employed by Scott and Leavitt for that purpose” (see Req. R’hg. 8) because, in the apparatus and method of Bhateja and Martens, doing so would also cool the composition layer, which must be heated throughout repeated cycles. See ’454 patent, col. 3, ll. 39-45 (“There is a need for an improved process and apparatus of the type described by Peterson et al. that rapidly heats a substantial thickness of the composition layer to the required temperature while limiting unnecessary heating of the flexible film substrate. There is a need to control accumulated heating of the flexible film substrate with each cycle of heating and absorbing.”). Although it was well known that blowing air via a fan cools, it is only with the hindsight of the ’454 patent that the skilled artisan would have considered blowing air in the apparatus of Bhateja or Martens such that the composition layer on the substrate of the photosensitive element is cooled after each cycle, with the air focused as much, or more so, on the composition layer than on the substrate underneath, as exemplified in the ’454 patent. See col. 23, ll. 55-67; Fig. 15. An arrangement and process that cools both the composition layer and the substrate is not described anywhere in the prior art. All the embodiments of Scott and Leavitt teach cooling only the substrate side of a photosensitive element, while the composition layer side is only subjected to heat. Accordingly, contrary to Requester’s contention, “simple common sense” blown-air cooling of the substrate in the apparatus and process described in Bhateja or Martens has not been established to be routine. Further, as stated in the Decision: “[b]ecause the process that is used by Bhateja and Martens relies on preheating of the drum that supports the substrate, the evidence of record is insufficient to establish Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 6 that the skilled artisan would have altered the controlled heating of the substrate and instead employ forced cooling of the substrate.” Decision 15. II. INTERPRETATION OF “FORCED COOLING MEANS” AND “FORCEFULLY COOLING . . . BY A COOLING MEANS” Requester further contends that the Board misapprehended the relative nature of cooling in restricting cooling temperatures to less than ambient temperatures. Req. R’hg. 3. Requester argues that the phrase “forced cooling” only requires circulating air or liquid “at any temperature below the temperature of the heating composition layer” including at “60 C or 65 C in accordance with the drum temperatures of Bhateja and Martens.” Req. R’hg. 11. Under such a situation, Requester contends that the skilled artisan would have a certainty of success. Req. R’hg. 12-13. After careful consideration of Requester’s contentions, we are not persuaded that the panel misapprehended or overlooked the broadest reasonable interpretation of the phrase “forced cooling” or ignored the relative nature of cooling. The Decision expressly addressed this argument. See Decision 11-12. Contrary to Requester’s assertion, the panel did not place any requirements on the temperature of the “cooling fluid.” In any event, Requester’s new arguments regarding the skilled artisan expecting success at circulating heated air to maintain the drum temperatures described in Bhateja and Martens (60°C, 65°C or 72°C) are not supported by the evidence. Further, contrary to Requester’s contention, Bhateja and Martens indicate that thermal distortion of the substrate is to be expected when the drum is at temperatures of 60°C to 72°C, and thus the need for annealing of Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 7 the substrate materials to provide dimensional stability. See Bhateja, p. 3, ll. 12-14, p. 10, ll. 10-12 (Table 2), Martens, p. 5, ll. 19-20, ’454 patent, col. 3, ll. 1-10. The skilled artisan would have expected thermal distortion of the substrate whether the drum is heated by an internal heating mantle, as taught by Bhateja and Martens, or by circulation of heated air through the drum. As discussed in the Decision, the ’454 patent distinguishes a temperature differential between two heated surfaces from a means for “forced cooling.” Decision 11-12. Accordingly, the broadest reasonable interpretation of the phrases “forced cooling means” and “forcefully cooling…by a cooling means” must be a device that forces a cooling fluid, such as unheated air (see ’454 patent, col. 24, ll. 1-42), at a temperature sufficient to cool the substrate in the Bhateja and Martens process without heating the drum to the temperatures taught by Bhateja and Martens. Further, we disagree with Requester’s assertion that the Decision interpreted the term “cooling” such that any drum embodiment as a “cooling means” requires axially circulation of cooling fluid. Req. R’hg. 28-29. In the discussion of whether or not the skilled artisan would have had an expectation of success in incorporating a cooled drum into the operation of the thermal development apparatus of Bhateja and Martens, the Decision included a footnote identifying that the ’454 patent described a drum embodiment with cooling air entering and exiting axially. See Dec. 21, n. 8. Additionally, in this footnote, the panel declined to opine as to whether or not such a structure would have been critical in the development apparatus of Bhateja and Martens due to a lack of evidence one way or another. Id. Accordingly, the Decision specifically did not limit the scope of the term “cooling means” to require an axially cooled drum, particularly in light of Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 8 Requester’s reasonable arguments regarding how a surface circulating drum might work in the Bhateja and Martens structure were it obvious to the skilled artisan to add a cooling means in the Bhateja and Martens apparatus in the first place. Id. III. REASONABLE EXPECTATION OF SUCCESS As stated in the Decision: “[t]he record before us does not demonstrate that the skilled artisan would have expected success in the overall process or apparatus taught by Bhateja and Martens in cooling rather than heating the drum supporting the substrate without the hindsight provided by the ’454 patent.” Decision 22. Requester further contends that the Board misapprehended the reasonable expectation of success standard. Requester suggests that the fact that Scott and Leavitt are analogous prior art means that the skilled artisan would have predictably used a cooled drum instead of the heated drum. Req. R’hg. 15. After careful consideration of Requester’s contentions, we are not persuaded that the panel misapprehended or overlooked the requirements for a determination of obviousness. Requester’s reasoning ignores the requirement that, for a determination of obviousness, the skilled artisan must have had both a reason to combine the reference and a reasonable expectation of success, i.e., reasonable predictability that the combination would lead to the desired results. As discussed above, while it was well known that blowing air via a fan cools, it is only with the hindsight of the ’454 patent that the skilled artisan would have considered blowing air in the apparatus of Bhateja or Martens such that the composition layer is cooled Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 9 after each cycle, with the air focused as much, or more so, on the composition layer than on the substrate underneath. While we agree with Requester that the prior art teaches using a cooling fluid in a drum to avoid thermal distortion of a substrate used in photoimage development, the photoimage development process requires only the heating of the composition layer side of a photosensitive element to develop. Unlike the photoimage development process, at the time of the invention, the known flexographic plate art apparatus and processes required the heating of both the substrate and the composition layer. See Bhateja, p. 11, l. 9-11 (transport drum is maintained at 65°C [149°F]); Martens, p. 16, l. 12-15 (element carrying substrate maintained at 60°C [140°F]). The flexographic plate development process requires exploiting melting temperature differences of non-crosslinked and crosslinked portions of the composition layer, applying pressure between the composition layer and an absorbent web, and repeatedly heating the composition layer over multiple cycles. Therefore, the problem to be solved involved cooling a substrate in the particular process of Bhateja and Martens, a process which uses a heated drum and relies on the liquification and reliquification of a polymer material over several cycles. See ’454 patent, col. 3, ll. 39-45 (identifying “a need for an improved process and apparatus of the type described by Peterson et al. that rapidly heats a substantial thickness of the composition layer to the required temperature while limiting unnecessary heating of the flexible film substrate” and “a need to control accumulated heating of the flexible film substrate with each cycle of heating and absorbing.”). Only the ’454 patent recognized that “[i]f such a cooling means is employed, the drum Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 10 temperature stabilization by heating mentioned above, referring to the heater 21 in the first embodiment of FIG. 6, would not be employed; the drum temperature could be stabilized by cooling instead.” Id., col. 24, ll. 5-9. We agree with Requester that the temperatures are not critical and that the skilled artisan could have adjusted temperatures routinely. See Req. R’hg. 21-22 (citing Vest ¶ 22 (“Martens and Bhateja both teach that the preheating drum should be set to a temperature that is substantially less than that taught by Peterson.”). However, such optimization occurs only after the inventive concept of using a cooling means in a process that was only known in the art to use heating means. See Leo Pharm. Prods., Ltd. v. Rea, 726 F. 3d 1346, 1353 (Fed. Cir. 2013) (“[A]n invention can often be the recognition of a problem itself.”). Here, the evidence is not persuasive that the skilled artisan would have expected that adding a cooling means would have been successful using the apparatus and process of Bhateja and Martens and would have successfully solved the problem of thermal distortion therein, without hindsight knowledge of the ’454 patent. Requester argues that Martens’ IR preheater may supply the preheating component that the drum supplied. See Req. R’hg. 21-22 (citing Vest ¶¶ 25-26 (“The power of the preheater could be adjusted to completely make up for the decreased temperature of the drum.”)). However, Requester provides insufficient evidence to support a conclusion that such an adjustment would have been obvious to the skilled artisan, without the knowledge provided by the ’454 patent, since even Martens, which used an IR preheater, nonetheless still used a heated drum. Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 11 Regarding Requester’s assertion that the level of ordinary skill in the art is “indisputably high” (Req. R’hg. 5), the level of ordinary skill in the art is evidenced by the references. See In re Oelrich, 579 F.2d 86, 91 (CCPA 1978) (“[T]he PTO usually must evaluate both the scope and content of the prior art and the level of ordinary skill solely on the cold words of the literature”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (holding that the Board did not err in adopting the approach that the level of skill in the art was best determined by the references of record); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level.’”). The ’454 patent identifies that the common practice of heating a film substrate to a temperature near the melting point of the non-irradiated composition was disclosed in Burg et al., Martens et al., and Peterson et al. ’454 patent, col. 3, ll. 1-4. Burg et al. (US Patent 3,060,023) was filed in 1959. Peterson et al. (US Patent 5,175,072) has a priority filing date of 1990. Thus, in 1999, thermal development of flexographic plates was not new, cutting-edge, or specialized technology for which an ordinary artisan would be of particularly high skill, which is consistent with the statements of Requester’s own experts regarding the level of skill of the ordinary artisan. See Gotsick Decl. ¶ 12; Cusdin Decl. ¶ 10. Requester directs us to no persuasive evidence that the ordinary artisan’s skill is so high that he or she would have routinely resolved the competing considerations of heating and cooling in the Bhateja and Martens apparatus and process based on the teachings of the prior art references, as discussed supra. Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 12 IV. OBVIOUS TO TRY The Decision states that “[t]he record before us lacks probative evidence to support the Requester’s position that ‘there are a finite number of identified solutions’ [such that it would have been obvious to try forced cooling].” Dec. 24. Requester contends that the Board misapprehended that “the record shows there are only three known solutions to the thermal distortion problem: annealing, controlled heating and cooling.” Req. R’hg. 26. After careful consideration of Requester’s contentions, we are not persuaded that the panel misapprehended or overlooked any fact or matter of law such that the invention recited in the ’454 patent was obvious to try. It is of no moment that the record before us only describes three solutions to a problem. Requester has provided no probative evidence that there are no other solutions to thermal distortion of a substrate that would have been available to the skilled artisan. While Requester considers this a requirement to “prove a negative—that there are no other solutions in the world outside of this record to the thermal distortion problem,” this burden is appropriate where Requester relies on an “obvious to try” theory under the post-KSR line of cases. Req. R’hg. 27. In addition to a finding of “design need or market pressure to solve a problem,” these cases require a finding of “a finite number of identified, predictable solutions.” See KSR, 550 U.S. at 421; see also In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation, 676 F.3d 1063, 1072 (Fed. Cir. 2012) (“Evidence of obviousness, especially when that evidence is proffered in support of an Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 13 ‘obvious-to-try’ theory, is insufficient unless it indicates that the possible options skilled artisans would have encountered were ‘finite,’ ‘small,’ or ‘easily traversed,’ and that skilled artisans would have had a reason to select the route that produced the claimed invention.”). The art of record shows that apparatus and methods that were known to address the problem of thermal distortion, but there is no persuasive evidence to suggest that these ways represent all methods and apparatus that the skilled artisan could have looked to for a solution to substrate thermal distortion. Moreover, the evidence of record is not persuasive that the methods and apparatus of record for solving the problem of thermal distortion in analogous arts would predictably work in the apparatus and method described in Bhateja and Martens, as discussed above. The subject Request has been granted to the extent that the Decision has been reconsidered, but is denied with respect to making any changes therein. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. REHEARING DENIED Appeal 2014-001756 Reexamination Control 95/001,962 Patent 6,797,454 B1 14 alw PATENT OWNER: DICKSTEIN SHAPIRO LLP 1825 EYE STREET NW WASHINGTON, DC 20006 THIRD-PARTY REQUESTER: JOHN L. CORDANI CARMODY & TORRANCE LLP 50 LEAVENWORTH STREET, P.O. BOX 1110 WATERBURY, CT 06271