Ex Parte 6931992 et al

Patent Trial and Appeal Board

Apr 20, 2016

90013280 (P.T.A.B. Apr. 20, 2016)

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.
90/013,280 07/09/2014 6931992 1739/0210PUS1 2988
164 7590 04/20/2016
KINNEY & LANGE, P.A.
THE KINNEY & LANGE BUILDING
312 SOUTH THIRD STREET
MINNEAPOLIS, MN 55415-1002
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/20/2016 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 ESKO-GRAPHICS IMAGING GMBH,
Appellant and Patent Owner.
____________________

Appeal 2016-003425
Ex parte Reexamination Control 90/013,280
Patent 6,931,992 B1
Technology Center 3900
____________________

Before JOHN A. JEFFERY, JENNIFER L. McKEOWN, and
IRVIN E. BRANCH, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge McKEOWN.

Opinion Dissenting-in-part filed by Administrative Patent Judge BRANCH

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Esko-Graphics Gmbh (“Patent Owner”) appeals from the Examiner’s
decision to reject claims 1–27 of U.S. Patent No. 6,931,992 B1 (the
“’992 patent”). App. Br. 1.
This reexamination proceeding arose from an ex parte reexamination
request of the ’992 patent, filed by third party Muncy, Geissler, Olds &
Lowe, PLLC on April 3, 2014. The ’992 patent issued to Frank A. Hull and
Benn Horrisberger on August 23, 2005.
We have jurisdiction under 35 U.S.C. §§ 6(b), 134(b), and 306.
We affirm-in-part.

THE ’992 PATENT
The ’992 patent generally relates to an exposure system that surrounds
a photopolymer on a rotating cylinder ablation system. ’992 patent, Abstract.
More specifically, “[t]he exposure system linearly follows the ablation
source and operates to expose the ablated (masked) plate with high intensity
illumination from all sides so as to continuously expose all points on the
photopolymer.” Id.
The ’992 patent explains that the prior art systems included “an
exposing apparatus that is integrated into the ablation system” that is
moveable along the cylinder. Id. at col. 1, ll. 43–44. The ’992 patent
identifies that
Although the high intensity light source [of the prior art systems]
provides light continuously, this configuration effectively
provides a temporary pulse of light to each point of the plate (the
pulse beginning when the point on the plate rotates into the field
of light and ending when the point on the plate rotates out of the
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field of the light). Repeated pulses of light are not as effective in
exposing the plate as continuous exposure, making this solution
less than ideal.
Id. at col. 1, ll. 47–54. As such, the ’992 patent is directed to continuously
exposing masked flexographic printing plates without having to handle the
plates between the processes of ablation and exposure. Id. at col. 1, ll. 55–
58.
Claim 1 is illustrative and reads as follows:
1. (Amended) A system for exposing a photopolymer with
ultraviolet light, comprising:
a rotation system for rotating the photopolymer; and
a light source assembly arranged around the rotation
system, the light source assembly including at least one light
source providing a plurality of light outputs for directing light
onto the photopolymer and being movable across a length of the
photopolymer perpendicular to a direction of rotation of the
photopolymer, the plurality of light outputs being arranged so
that their light rays overlap one another, thereby continually
exposing all points around a circular section on the photopolymer
with at least one light output.
App. Br., Claims App’x.

REJECTIONS
A. Evidence Relied Upon
The Examiner relies on the following as evidence of unpatentability:
Gelbart US 6,180,325 B1 Jan. 30, 2001
Schoute EP 0007127 B1 Dec. 29, 1982
Yoshimoto EP 0237574 B1 Aug. 21, 1991
Juffinger EP 1154326 Al Nov. 14, 2001

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B. The Adopted Rejections
The Examiner maintains the following rejections:
1. Claims 1, 2, 71–9, 11, 12, 17–19, and 24–26 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Juffinger and Schoute
or Yoshimoto.
2. Claims 3–6, 10, 13–16, 20–23, and 27 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Juffinger, Schoute or
Yoshimoto, and Gelbart.

THE REJECTION BASED ON JUFFINGER AND
SCHOUTE OR YOSHIMOTO
The Examiner finds that Juffinger teaches the limitations of claim 1,
except for teaching that the plurality of light outputs are arranged so their
light rays overlap one another, thereby continually exposing all points
around a circular section on the photopolymer with at least one light output.
Ans. 2–3. The Examiner, however, relies on either Schoute or Yoshimoto
for teaching this limitation. Id. at 3. The Examiner concludes that either
combination would be obvious to a skilled artisan at the time of the

1 Although the Examiner includes claim 6 in the statement of this rejection
(Ans. 2), the Examiner nevertheless also rejects claim 6 over Juffinger,
Schoute or Yoshimoto, and Gelbart. Compare Ans. 2, with Ans. 9. Because
the Examiner does not discuss this claim in connection with the first
rejection, but rather the second rejection (see Ans. 11), we presume that the
Examiner intended to reject claim 6 solely over Juffinger, Schoute or
Yoshimoto, and Gelbart, and did not intend to include claim 6 in the first
rejection. Accord App. Br. 4 (omitting claim 6 from the first rejection). We,
therefore, omit claim 6 here for clarity, and deem the Examiner’s apparent
typographical error harmless.
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invention “in order to advantageously provide uniform distribution of light
onto the photopolymer and expose the photopolymer.” Id. at 5.
Additionally, the Examiner explains that the combination would have been a
predictable combination at the time of the invention.
Patent Owner, on the other hand, contends that a skilled artisan would
not have been motivated or had any reason to modify the prior art as
proposed by the Examiner. See App. Br. 8–14. For example, Patent Owner
asserts that a skilled artisan would not combine Juffinger with either Schoute
or Yoshimoto because the plurality of light sources used in Schoute and
Yoshimoto are not applicable to the system of Juffinger. App. Br. 8.
Additionally, according to the Patent Owner, there was no motivation to
modify Juffinger because there was no evidence that suggests there was any
problem or improvement to be made to Juffinger’s system. App. Br. 9.
Patent Owner also argues that the Examiner’s proposed combination is not
merely a substitution because it would require significant modification of
Juffinger. App. Br. 10.

ISSUE
Is the Examiner’s reason to combine the teachings of Juffinger with
either Schoute or Yoshimoto supported by articulated reasoning with some
rational underpinning to justify the Examiner’s obviousness conclusion?

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ANALYSIS
Claims 1, 2, 8, 9, 11, 12, 17–19, and 24–26
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1, 2, 8, 9, 11, 12, 17–19 and 24–26 as unpatentable
over Juffinger and Schoute or Yoshimoto.
Patent Owner contends that a skilled artisan would not combine
Juffinger with either Schoute or Yoshimoto because “the plurality of light
sources [] used in Schoute and Yoshimoto are not applicable to the system of
Juffinger.” App. Br. 8. Specifically, “Juffinger does not use a fast-spinning
plate/sleeve with liquid photopolymer flowing around its inner
circumference, and therefore the need for a plurality of light sources around
the circumference of the drum is not needed to address that concern.” Id.
Juffinger’s light source arrangement also already provides sufficiently high
intensity light to cure the photopolymer, according to Patent Owner, and,
thus, a skilled artisan would not have had any reason to add additional light
sources, as taught by Schoute and Yoshimoto. See, e.g., id. at 8. We note
that the Patent Owner particularly emphasizes an alleged difference of light
intensity levels between Juffinger and Schoute and Yoshimoto in presenting
these arguments. See, e.g., id. at 8, 11–13.
Patent Owner’s arguments are unavailing. Each of Juffinger, Schoute,
and Yoshimoto, like the ’992 patent, are directed to manufacturing or
preparing cylindrical printing forms and, therefore, are within the same field
of endeavor. We are not persuaded that the alleged differences between the
systems of Juffinger compared to Schoute and Yoshimoto, such as
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differences of intensity of light, detract from the teachings of the references
relied upon by the Examiner.
Namely, Juffinger teaches a light source arrangement that exposes a
rotating cylindrical photopolymer. Ans. 3. While Juffinger’s light source
arrangement extends over a portion of the cylinder circumference, Juffinger
does not disclose a plurality of light sources completely surrounding the
cylinder. Id.; see also Juffinger ¶ 28. Schoute and Yoshimoto, though,
demonstrate it was well known at the time of the invention to have an
arrangement of light sources all around the cylinder and “that the light
sources all around the cylinder are advantageously used to expose the
photopolymer.” Id. at 13. As the Examiner explains,
it would have been obvious to a person of ordinary skill in the art
to modify the system disclosed by Juffinger to provide an
arrangement of light outputs completely around the rotation
system as taught by either Schoute or Yoshimoto in order to
advantageously provide uniform distribution of light onto the
photopolymer and expose the photopolymer. Furthermore, one
of ordinary skill in the art would have recognized that the
successful exposure of the photopolymer would have been a
predictable result of using the light source arrangement
suggested by the combination of Juffinger in view of Schoute or
Yoshimoto.
Id. at 3–4. It would have been readily apparent to a skilled artisan that the
advantage of uniform distribution of light onto the photopolymer would
equally apply despite the alleged differences, such as different light
intensities. Moreover, even if some adjustment of light intensity would
have been required by the combination, we are not persuaded that this
adjustment would have been beyond the level of an ordinarily skilled artisan
at the time of the invention. See also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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398, 421 (2007) (“A person of ordinary skill in the art is also a person of
ordinary creativity, not an automaton.”).
We also agree with the Examiner that Patent Owner fails to
persuasively demonstrate that Schoute’s and Yoshimoto’s light sources are
incompatible with Juffinger. See, e.g., Ans. 15–16. For example, the
Examiner identifies that Yoshimoto teaches “that ‘a metal halide lamp’ may
be used (Yoshimoto, page 5, line 10), like the ‘metal halide lamps” already
disclosed by Juffinger, paragraph [0048]).” Ans. 15–16. Also,
[Patent Owner] only provides specification sheets for a
UV fluorescent lamp manufactured by Philips and a mercury arc
lamp manufactured by Heraeus as evidence in the Brief.
However, PO has not supplied any factual evidence (e.g., an
affidavit or declaration) that links the lamps taught by Juffinger,
Schoute, and Yoshimoto with the different lamps discussed by
Heraeus and Philips (that have not been relied upon by
Examiner).
Ans. 16. As such, we find Patent Owner’s bare, attorney argument
unconvincing.
Next, Patent Owner argues that none of the cited prior art realized
“that even for high intensity light above a threshold for curing
photopolymer, repeated pulses of light are not as effective in exposing the
plate as continuous exposure.” App. Br. 8. According to the Patent Owner,
“[t]his was the problem discovered and solved by the inventors of U.S.
Patent No. 6,931,992,” and concluding that “because this problem was not
known at the time of the inventions of Juffinger, Schoute and Yoshimoto, it
cannot be found obvious to solve this problem by combining those
references.” App. Br. 8 (emphasis omitted); see also App. Br. 9–10; Reply
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Br. 2–3 (asserting that the Examiner “over simplistically” defines the
problem being addressed).
KSR, however, directly rejects the notion that the prior art must solve
the same problem as that facing the patentee: “[i]n determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls.” KSR, 550 U.S. at 419. It
is “erred [to hold] that courts . . . should look only to the problem the
patentee was trying to solve.” Id. at 420.
Further, we note that while Patent Owner maintains that it was the
inventors of the ’992 patent that discovered the problem that repeated pulses
of light are not as effective in exposing the plate as continuous exposure, the
description of this issue is the background of the ’992 patent. See ‘992
patent, col. 1, ll. 42–54. In other words, despite Patent Owner’s assertions,
the ’992 patent itself at least suggests that the effectiveness of repeated
pulses as compared to continuous light exposure was well known at the time
of the invention. We also note that the ’992 patent discussion of the problem
includes no reference to a particular necessary dosage threshold, as
suggested by the Patent Owner (Reply Br. 2), but more generally describes
that “[r]epeated pulses of light are not as effective in exposing the plate as
continuous exposure, making this solution less than ideal.” ’992 patent, col.
1, ll. 52–54.
Moreover, as the Examiner points out, “the fact that [applicant] 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.” Ans. 14 (citing Ex parte Obiaya,
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227 USPQ 58, 60 (BPAI 1985)). Likewise, the secondary references also
teach that the benefit of uniform light distribution was known in the art.
Thus, we find Patent Owner’s arguments unavailing.
Patent Owner’s reliance on Leo Pharmaceutical Products v. Rea, 726
F.3d 1346, 1354 (Fed. Cir. 2013) is similarly misplaced. See App. Br. 9.
Notably, the Federal Circuit limited Leo Pharmaceutical to a situation where
the applied prior art did not provide any apparent reason for one of ordinary
skill in the art to arrive at the claimed subject matter not only due to the
failure of the applied prior art to recognize and address the problem found by
Appellants, but also due to the divergent teachings and express disclaimer in
the applied prior art that would have precluded one of ordinary skill in the
art from arriving at such combination. Such teachings are notably absent
here. For example, the Examiner explains that
the present case does not involve numerous possibilities
requiring “clues pointing to the most promising combinations”
as in Leo Pharmaceutical. Instead, Juffinger in view of Schoute
or Yoshimoto suggest a combination of teachings (i.e., placing
additional lights all the way around Juffinger's system) that
would have been straightforward and obvious for an engineer to
try. Moreover, the result of a successful exposure of the
photopolymer would have been expected.
Ans. 15. Further, unlike the claimed invention, Leo Pharmaceutical dealt
with unpredictable chemical technologies. As such, we disagree that Leo
Pharmaceutical supports the Patent Owner’s argument that the combination
of Juffinger with Schoute or Yoshimoto would not have been obvious in this
predictable art.
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Next, Patent Owner argues that the proposed combination is not
merely a substitution of light sources, but instead requires a significant
modification of the Juffinger light source. App. Br. 10. Specifically,
Schoute and Yoshimoto disclose bank lights that extend along
the entire length of the plate being exposed and surround the
plate. If the Juffinger light source were to be replaced by the light
source assembly of Schoute or Yoshimoto, without modification,
the resulting light source assembly would not be movable across
a length of the photopolymer perpendicular to a direction of
rotation of the photopolymer, as is required by claim 1.
App. Br. 10.
We disagree. “The test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference[;] . . . [r]ather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425 (CCPA 1981); Ans. 17. See also In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA
1973) (“Combining the teachings of references does not involve an ability to
combine their specific structures.”). Rather, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR, 550
U.S. at 417; see also KSR, 550 U.S. at 421 (“A person of ordinary skill in
the art is also a person of ordinary creativity, not an automaton.”).
As discussed above, each of Schoute and Yoshimoto demonstrate that
it was known at the time of the invention to have light sources completely
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around a rotating photopolymer, wherein the light sources continually
expose all points around a circular section of the polymer. Juffinger also
recognizes the advantages of increasing the exposure area by teaching that
the second processing station, including the plurality of light sources,
extends in the circumferential direction of the carrier cylinder exposure
station. Juffinger ¶ 28. Together, these teachings establish that it would
have been obvious at the time of the invention to further extend the second
processing station of Juffinger to provide an arrangement of light outputs
completely around the rotation system, as taught by Schoute and Yoshimoto,
to provide uniform distribution or exposure of the polymer around a circular
section. See, e.g., Ans. 3–4. This modification is merely a simple
substitution of one light source arrangement for another to obtain predictable
results.
Accordingly, based on the reasons discussed above and by the
Examiner, we sustain the Examiner’s rejections of claims 1, 2, 8, 9, 11, 12,
17–19, and 24–26 as unpatentable over Juffinger and Schoute or Yoshimoto.

Claim 7
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claim 7 as unpatentable over Juffinger and Schoute or
Yoshimoto.
Patent Owner contends that “Juffinger does not disclose or suggest
any reason to dynamically control the intensity of light outputs with a
control system.” App. Br. 15. Further, Patent Owner maintains that control
of the light intensity to provide sufficient radiation intensity, as taught by
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Juffinger, is not dynamic because “it is not based on any factors that vary
with time or operating conditions of the system.” Id. According to Patent
Owner, claim 7, in contrast, allows the system, for example, “to compensate
for warm-up time of the light source or operational temperatures of the light
sources.” Id.
This argument lacks merit. Notably, Patent Owner does not dispute
that Juffinger teaches a control system for controlling the intensity of light,
but instead merely challenges whether this control is dynamic. See App. Br.
15. We agree with the Examiner that it is. Ans. 8, 18. Namely, “any factors
that vary with time or operating conditions” would reasonably include the
turning on and off of the light source assembly, as suggested by Juffinger.
For example, the system would be turned on at one point in time, and
subsequently turned off at a second point in time after sufficient radiation
intensity has been obtained. See id. Juffinger at least suggests this type of
dynamic control.
Patent Owner’s remaining assertions are not commensurate with the
scope of the claim. Namely, claim 7 does not recite that the dynamic control
must “compensate for warm-up time of the light source or operational
temperatures of the light sources.” Nor does the Specification support this
narrow interpretation of dynamically controlling the light intensity of the
plurality of light outputs.
Accordingly, for the reasons discussed above and by the Examiner,
claim 7 is unpatentable over Juffinger and Schoute or Yoshimoto.
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THE REJECTION BASED ON JUFFINGER,
SCHOUTE OR YOSHIMOTO, AND GELBART
Claims 3, 5, 10, 13, 20, 22, and 27
With respect to claims 3, 5, 10, 13, 20, 22, and 27, Patent Owner
relies on the arguments presented with respect to claim 1. See, e.g., App. Br.
14–18. As discussed above, we find these arguments unpersuasive.
Accordingly, for the reasons discussed above and by the Examiner, claims 3,
5, 10, 13, 20, 22, and 27 are unpatentable over Juffinger, Schoute or
Yoshimoto, and Gelbart.

Claims 4, 6, 14–16, 21, and 23
Claim 4 recites: “The system of claim 1, wherein the at least one light
source includes a reflector coated with a dichroic coating that reflects only
actinic radiation.” Claims 14 and 21 recites similar limitations.
With respect to these claims, the Examiner finds Juffinger discloses a
reflector, but does not disclose a reflector with a dichroic coating that
reflects only actinic radiation. The Examiner relies on Gelbart and explains
that
Gelbart does not specifically further teach a dichroic coating that
reflects only actinic/ultraviolet radiation, but teaches passing
only such radiation using a filter (column 6, lines 15-18).
Selectively transmissive filters and selectively reflective
coatings are well understood in the art as ways to limit a light
output to a desired wavelength range.
Ans. 10. Notably absent is any evidentiary support for the Examiner’s
assertion that “selectively reflective coatings” were well known in the art.
The Examiner further reasons that
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It would have been also obvious to a person of ordinary skill in
the art to include a dichroic coating in the system described by
Juffinger in view of either Schoute or Yoshimoto, and further in
view of Gelbart, as an engineering design choice of an available,
known element for advantageously limiting the wavelength
range of the exposure light in a predictable way. In other words,
a known selectively reflective coating would be a simple
substitution for the known selectively transmissive filter taught
by Gelbart, where the substitution would yield the predictable
result of similarly limiting light output to a desired wavelength
range.
Ans. 10–11. This analysis similarly provides no evidentiary support for the
finding that a selectively reflective coating was a known element at the time
of the invention.
Although basic knowledge available to a person with ordinary skill in
the art may provide a reason to combine elements in prior art, it does not
establish the presence of the element itself. See K/S HIMPP v. Hear-Wear
Techs., LLC, 751 F.3d 1362, 1365–66 (Fed. Cir. 2014). General conclusions
about what is “basic knowledge” are not a substitute for documentary
evidence for describing core fact finding. Id. As such, we understand the
Examiner to take official notice that selectively reflective coatings were well
known at the time of the invention and that these “known” selectively
reflective coatings were well-known replacements for transmissive filters,
such as the one disclosed by Gelbart.
Section 2144.03(A) of the Manual of Patent Examining Procedure
states that
While “official notice” may be relied on, these circumstances
should be rare when an application is under final rejection or
action under 37 CFR 1.113. Official notice unsupported by
documentary evidence should only be taken by the examiner
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where the facts asserted to be well-known, or to be common
knowledge in the art are capable of instant and unquestionable
demonstration as being well-known. As noted by the court in In
re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA
1970), the notice of facts beyond the record which may be taken
by the examiner must be “capable of such instant and
unquestionable demonstration as to defy dispute[.]” (citing In re
Knapp Monarch Co., 296 F.2d 230, 132 USPQ 6 (CCPA 1961)).
Patent Owner, here, traverses the Examiner’s reliance by alleging that
“[n]one of the prior art of record discloses or suggests employing a dichroic
coating on the reflector to remove unusable (heat) radiation which would
otherwise be directed to the polymer.” App. Br. 15. Further, “there is no
reference or other evidence cited on the present record for the use of [a
known selectively reflective coating].” Id. We agree. We note that the
Patent Owner essentially challenges the lack of cited support as opposed to
the underlying facts. Nevertheless, given the limited circumstances where
official notice is appropriate, and based on the record before us, we are
persuaded that the Examiner fails to present a prima facie case of
obviousness for claims 4, 14, and 21. Accordingly, we reverse the rejection
as to these claims as well as claims 6, 15, 16, and 23 which depend from
claims 4, 14, and 21 respectively.

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CONCLUSION
We affirm the Examiner’s decision to reject claims 1–3, 5, 7–13, 17–
20, 22, and 24–27, but reverse the Examiner’s decision to reject claims 4, 6,
14–16, 21, and 23.
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).

AFFIRMED-IN-PART

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ESKO-GRAPHICS IMAGING GMBH,
Appellant and Patent Owner.
____________________

Appeal 2016-003425
Ex parte Reexamination Control 90/013,280
Patent 6,931,992 B1
Technology Center 3900
____________________

Before JOHN A. JEFFERY, JENNIFER L. McKEOWN, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge, Dissenting-in-part.

I respectfully dissent only as to the outcome regarding claims 4, 6, 14–16,
21, and 23. Majority Decision 14–16. I would affirm the rejection of these claims
as obvious over Juffinger, Schoute or Yoshimoto, and Gelbart.
Claim 4 recites “wherein the at least one light source includes a reflector
coated with a dichroic coating that reflects only actinic radiation.” The Examiner
found that both Juffinger and Gelbart teach reflectors and that Gelbart teaches
using a dichroic filter to selectively pass actinic radiation. Ans. 10–11 (citing
Juffinger ¶ 50 and Gelbart 6:6–18). In particular, the Examiner found that “Gelbart
does not specifically further teach a dichroic coating that reflects only
actinic/ultraviolet radiation, but teaches passing only such radiation using a filter.”
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Id. 10 (emphasis added). On these points, the majority and I agree. See Majority
Decision 14–15.2
We disagree, however, that the present record does not provide evidence that
“selectively reflective coatings” were well known in the art. Id. They were and
the present record includes that evidence. I therefore find Patent Owner’s
argument to the contrary unpersuasive. App. Br. 15. As a result, I do not agree
with Patent Owner’s conclusion that the rejection of claim 4 “is not supported by
the teachings of the prior art of record or the requisite rational underpinning for
modifying the references of record” (id. 14–15), because the conclusion is based
on a faulty premise.
Gelbart teaches a dichroic coating. Gelbart discloses that “light source 36
includes a filter which prevents undue heating of plate 18 or coating 40. For
example, a dichroic filter 50 which passes only [actinic] radiation may be provided
in front of light source 36.” Gelbart, 6:15–18. Gelbart’s dichroic filter is a
reflector coated with a dichroic coating. The only difference between Gelbart and
the claimed “reflector coated with a dichroic coating that reflects only actinic
radiation” is that Gelbart’s filter passes actinic radiation and reflects all others. In

2 The Examiner’s finding is limited: Gelbart does not specifically teach a coating
that reflects only actinic radiation. That Gelbart does not teach a selectively
reflective coating generally is neither found by the Examiner nor logically flows
from the Examiner’s finding. The Examiner states only that Gelbart does not teach
a coating that selectively reflects specific wavelengths, namely “reflect[ing] only
actinic radiation,” (Ans. 10) an important distinction. This understanding is not
contradicted by the Examiner’s subsequent finding that “[i]t would have been also
obvious . . . to include a dichroic coating in the system described by [the
references], as an engineering design choice of an available, known element for
advantageously limiting the wavelength range of the exposure light in a predictable
way.” Ans. 10–11.
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other words, the only difference between Gelbart and the claimed subject matter is
that, in Gelbart, the dichroic coating selectively passes actinic radiation and reflects
others, whereas in the claimed subject matter, the coating selectively reflects
actinic radiation and passes all others.
A dichroic filter filters certain wavelengths while reflecting others:
[D]ichroic filter: an optical filter that (transmits light selectively
according to wavelength, (b) usually is a high-pass filter or a low-pass
filter, . . . (d) is capable of transmitting all frequencies in an
electromagnetic wave above a certain cutoff frequency and reflecting
all lower frequencies, being either a high-pass or low-pass filter,
depending on whether the transmitted or reflected wave is used . . . .
Fiber Optic Standard Dictionary, 3rd Ed., 1997, Martin. H. Weik, p. 217 (emphasis
added).3 One of ordinary skill in the art capable of reading and understanding
Gelbart would know that Gelbart’s dichroic filter is a dichroic reflector as to
unfiltered wavelengths. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (an
artisan must be presumed to know something about the art apart from what the
references disclose). Dichroic filters are simultaneously selectively transmissive
with respect to certain wavelengths and selectively reflective with respect to
others.

3 Although I do not afford a Wikipedia reference the same weight, I note that it is
consistent with this understanding among those of skill in the art. See Wikipedia,
Dichroic filter, http://en.wikipedia.org/wiki/Dichroic_filter (“A dichroic filter,
thin-film filter, or interference filter is a very accurate color filter used to
selectively pass light of a small range of colors while reflecting other colors. . . .
Because unwanted wavelengths are reflected rather than absorbed, dichroic filters
do not absorb this unwanted energy during operation and so do not become nearly
as hot as the equivalent conventional filter (which attempts to absorb all energy
except for that in the passband).”) (as of April 19, 2016) (emphasis added).
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Further, the wavelength selectivity results from a coating: “dichroic. . . In
optics, a thin layered coating used on filters and mirrors to control the spectral
qualities of light. Dichroic filters are used to alter the colour temperature of lights,
and in colour printers to absorb certain wave-lengths and pass others.” Macmillan
Dictionary of Information Technology, 2nd Ed., 1985, p. 90 (emphasis added).4
Hence, the Examiner is correct that “[s]electively transmissive filters and
selectively reflective coatings are well understood in the art as ways to limit a light
output to a desired wavelength range.” Ans. 10. Gelbart evidences that by
teaching a dichroic filter having a coating that is simultaneously selectively
reflective and selective transmissive. What a reference teaches or suggests must be
examined in the context of the knowledge, skill, and reasoning ability of a skilled
artisan. What a reference teaches a person of ordinary skill is not limited to what a
reference specifically “talks about” or what is specifically “mentioned” or
“written” in the reference. Syntex (U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380
(Fed. Cir. 2005).
Patent Owner’s argument that “there is no reference or other evidence cited
on the present record for the use of such a coating” (App. Br. 15) is true only to the
extent the record does not evidence a dichroic coating tuned to the claimed
wavelength—to selectively pass actinic radiation. I find this argument
unpersuasive of error because I agree with the Examiner that, to one of ordinary
skill in the art, the modification necessary to meet the claim (i.e., selecting the

4 Again, Wikipedia is consistent with this understanding among those of skill in the
art. See, id., Wikipedia, Dichroic filter (“In a dichroic mirror or filter . . .
alternating layers of optical coatings with different refractive indices are built up
upon a glass substrate.”) (emphasis added).
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appropriate dichroic coating to reflect, rather than pass, actinic radiation) would
have been a mere “engineering design choice.” Ans. 10.
To whatever extent one might agree with Patent Owner’s sole argument that
“there is no reference or other evidence cited on the present record for the use of
such a coating” (PO App. Br. 15 (emphasis added)), merely because Gelbart does
not happen to mention the word “coating” or “dichroic coating” or for some other
doctrinaire reason, I disagree. A dichroic coating is of record here by virtue of
Gelbart’s disclosure of a dichroic filter. “[J]udges are free to consult dictionaries
and technical treatises at any time in order to better understand the underlying
technology and may also rely on dictionary definitions when construing claim
terms, so long as the dictionary definition does not contradict any definition found
in or ascertained by a reading of the patent documents.” Phillips v. AWH Corp.,
415 F.3d 1303, 1322–23 (Fed. Cir. 2005) (en banc) (citation omitted). Reference
to the definitions cited above for the proper understanding of “dichroic filters,”
“dichroic mirrors,” and “dichroic coatings,” is, therefore, appropriate where, as
here, to inform a full appreciation of the Examiner’s understanding of the subject
matter, the claimed invention, and the cited reference. With a sufficient
understanding of the technology, it is clear that the necessary “evidence” is of
record, and Patent Owner’s argument is unavailing.
Further, reference to the secondary sources to understand the Examiner’s
position, the teachings of the cited reference, and the meaning of the claim does
not amount to any improper introduction of “evidence.” “Evidence means
something (including testimony, documents and tangible objects) that tends to
prove or disprove the existence of an alleged fact, except that for the purpose of
this subpart Evidence does not include dictionaries, which may be cited before the
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Board.” 37 CFR § 41.30. The Federal Register (Vol. 76; No. 225; 72270 at
72272-3) states as to new rule 41.30 (2011):
Final Bd.R. 41.30 adopts the definition of ‘‘Evidence’’ from Black’s
Law Dictionary to provide clarity regarding the use of that term in
Subpart B. Toward that end, final Bd.R. 41.30. makes clear that for the
purposes of Subpart B, ‘‘Evidence’’ does not encompass dictionaries.
Excluding dictionaries from the definition of ‘‘Evidence’’ thus allows
appellants to refer to dictionaries in their briefs, which would otherwise
be precluded under final Bd.R. 41.33(d)(2) (absent existence of one of
the enumerated exceptions). It further allows examiners to refer to
dictionaries in the examiner’s answers without automatically rendering
a rejection a new ground under final Bd.R. 41.39(a)(2). Treating
dictionaries in this manner is consistent with Supreme Court and
Federal Circuit precedent, which contemplate that such materials may
be consulted by tribunals ‘‘at any time.’’
Accordingly, to whatever extent this Panel might require reference to secondary
sources to understand the “evidence” of record, such reference to secondary
sources does not amount to the introduction of new “evidence.”
To whatever extent one might argue that the secondary source definitions
“contradict” a definition found by reading the patent (Phillips, 415 F.3d at 1322–
23), I find no contradiction. With reference to “reflector coated with a dichroic
coating that reflects only actinic radiation,” the ’992 Patent mentions “dichroic” in
two locations. The Specification states “[e]ach light source 14 includes a reflector
16 surrounding a lamp 18, where reflectors 16 are dichroic coated to selectively
reflect the light spectrum (ultraviolet light) required to polymerize the flexographic
plate. The remaining light emission is absorbed into the liquid cooled body 12.”
Spec, 2:41–46. In another location, the ’992 Patent describes an exemplary
embodiment thusly: “light source 14 includes lamp 18 that is a 1000 Watt mercury
plasma capillary lamp, located in parabolic reflector 16 that is coated with a
dichroic coating on its inner surface so that actinic (ultraviolet) radiation is
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reflected and all other (non-useful) radiation is absorbed.” Spec, 3:19–24. In
neither of these citations does the Specification require both a reflector and a
dichroic coating to reflect actinic radiation.
To properly understand the Examiner’s rejection, one must first understand
that Gelbart’s dichroic filter is also a dichroic reflector with respect to non-filtered
wavelengths. See infra. Moreover, although Gelbart properly uses the
terminology (“a dichroic filter 50 which passes only [actinic] radiation may be
provided in front of light source”), Patent Owner muddles the terminology in its
strained analysis of the claim and the specification by redundantly implying that
the coating must be a distinct element. See, e.g., App. Br. 15 (“None of the prior
art of record discloses or suggests employing a dichroic coating on the reflector to
remove unusable (heat) radiation which would otherwise be directed to the
polymer.”); see also Spec, 2:41–46 (“[e]ach light source 14 includes a reflector 16
surrounding a lamp 18, where reflectors 16 are dichroic coated to selectively
reflect the light spectrum (ultraviolet light) required to polymerize the flexographic
plate”; Spec, 3: 19–24 (“light source 14 includes lamp 18 that is a 1000 Watt
mercury plasma capillary lamp, located in parabolic reflector 16 that is coated with
a dichroic coating on its inner surface so that actinic (ultraviolet) radiation is
reflected and all other (non-useful) radiation is absorbed.”). I find that one of
ordinary skill in the art would properly read Gelbart and the ’922 Patent as
disclosing a substrate coated with a dichroic coating to [reflect/pass] actinic
radiation. In any event, the Examiner’s asserting that a dichroic coating could be
substituted for Gelbart’s dichroic filter is sufficiently clear to support the rejection.
The majority obscures these evident facts by hyper-parsing the language used
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throughout this record to reach its incorrect conclusion that the Examiner narrowly
equates a coating to a filter.
The majority finds the Examiner to have engaged in “official notice”
practice. Majority Decision 15. See MPEP § 2144.03. I disagree. Neither the
Examiner nor Patent Owner invoked the term (see, e.g., Non-Final Office Action
10–11 (mailed Sept. 5, 2014); PO Remarks I, p. 16 (filed Nov. 5, 2014); Final
Action 10–11 (mailed Jan. 9, 2015)), Patent Owner made no attempt to traverse the
Examiner’s assertion as official notice (neither at the first opportunity as required
or elsewhere) (PO Remarks I, p. 16; see MPEP § 2144.03(C)), and the Examiner
did not thereafter document the finding as acknowledged (see. e.g., Final Action
10–11; Ans. 10–11).
Where I to agree with the majority that the Examiner relies on official, I
would nevertheless affirm, and now clarify the record by acknowledging the
inadequately traversed finding (“[s]electively transmissive filters and selectively
reflective coatings are well understood in the art as ways to limit a light output to a
desired wavelength range”) to be admitted prior art as a result of Patent Owner’s
failure to “specifically point out the supposed errors in the examiner’s action,
which would [have included] stating why the noticed fact is not considered to be
common knowledge or well-known in the art.” MPEP § 2144.03(C). Patent
Owner merely persisted to assert that the references are inadequate for the purpose
of showing a dichroic coating, without substantively undermining the fact
regarding the equivalence of filters and reflectors for producing desired
wavelengths in light. PO Remarks I, p. 16.
In reaching my opinion, I note the majority’s reliance on K/S HIMPP v.
Hear-Wear Techs. for the holding that “basic knowledge available to a person with
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ordinary skill in the art may provide a reason to combine elements in prior art, it
does not establish the presence of the element itself.” Majority Decision 15 citing
(K/S HIMPP, 751 F.3d at 1365–1366 (Fed. Cir. 2014)). The circumstance in that
case is materially different and the majority’s reliance on it is misplaced.
In HIMPP, the Federal Circuit affirmed the Board’s decision to affirm an
Examiner’s decision not to adopt a rejection. Here, the majority is reversing an
Examiner’s decision to adopt a rejection. The procedural postures of these two
situations are different in such critical respects that HIMPP is inapplicable.
Instead, I find the Supreme Court’s mandate in KSR to be controlling. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). KSR states that the Examiner’s
obviousness rejection must be based on
“some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness” . . . . [H]owever, the 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, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In
KSR, the Supreme Court found that “[a] person of ordinary skill in the art is also a
person of ordinary creativity, not an automaton” and that “[r]igid preventative rules
that deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” KSR, 550 U.S. at 421.
I disagree with the majority’s decision to reverse the Examiner’s rejection
here based on its conclusion that there is “no evidentiary support for the finding
that a selectively reflective coating was a known element at the time of the
invention.” Majority Decision 15. The only gap is the selection of an appropriate
coating for the wavelength selection properties claimed. Reversing the Examiner
is inconsistent with the Supreme Court’s articulation of the appropriate test for
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obviousness because it denies the Examiner recourse to the “ordinary creativity” of
one having ordinary skill in the art. I find the Examiner to have satisfied the
burden of providing some articulated reasoning with rational underpinning to
support the Examiner’s conclusion of obviousness. See KSR, 550 U.S. at 418. I do
not find Patent Owner to have persuasively rebutted the Examiner’s case. I find
this record sufficient to sustain the Examiner’s decision to reject claim 4.
Accordingly, I would affirm the rejection of claim 4. I also would affirm the
rejection of claims 14 and 21, for similar reasons. Because I do not agree with the
majority as to the rejection of claims 4, 14, and 21, I would not reverse the
rejection of claims 6, 15, 16, and 23 as depending therefrom. I would, instead,
affirm the rejection of these claims for the reasons stated by the Examiner. Ans.
10–11, 17–18.

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