Ex Parte Kross

Patent Trial and Appeal Board

Jan 23, 2017

14565190 (P.T.A.B. Jan. 23, 2017)

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.
14/565,190 12/09/2014 Robert D. Kross 7453
60333 7590 01/23/2017
FDWTN D NrmNDT FR
EXAMINER
4 HIGH OAKS COURT ZIMMERMAN, JOSHUA D
P.O. BOX 4259
HUNTINGTON, NY 11743-0777 ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
01/23/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT D. KROSS 1
Appeal 2016-0086922
Application 14/565,190
Technology Center 2800
Before MARKNAGUMO, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Robert D. Kross (“Kross”) timely requests rehearing3 under
37 C.F.R. § 41.52 (“Rule 52”) of our Decision, issued 22 December 2016, in
which we affirmed the rejections of all pending claims 1—8 as obvious under
1 The real party in interest is identified as Poly-Gel LLC. (Appeal Brief,
filed 1 April 2016 (“Br”), 1.)
2 This appeal is related to Appeal 2016-008698 in parent
application 13/275,400 (filed 18 October 2011), which was decided
concurrently. A Request for Rehearing was filed simultaneously in that
case, raising substantially similar issues, and is decided concurrently.
3 Request for Rehearing filed 9 January 2017 (“Request”).
Appeal 2016-008692
Application 14/565,190
35 U.S.C. § 103(a)4 over the combined teachings of Germain, Singular
Impressions, and Chen ’6695 (full cites in the original Opinion)6.
Rule 52 states in most relevant part, “[t]he request for rehearing must
state with particularity the points believed to have been misapprehended or
over-looked buy the Board.” 37 C.F.R. § 41.52(a)(1) (2016).
We have considered the Request, and we clarity our Opinion in minor
respects, but we deny the requested relief.
The arguments of record are sufficiently succinct that we may review
them to put Kross’s arguments in its Request into context without unduly
burdening the reader.
On appeal, Kross urged first that Germain is limited to making a
gelatin printing plate, and in particular, that Germain does not teach or
suggest a non-gelatin printing plate. (Br. 11,11. 1—9.) Kross argued further
that Simple Impressions teaches a printing plate for monotype printing, but
does not teach or suggest using any type of “gel” printing plate {id. at 11. 10—
14), and moreover, “does not disclose a printing plate for producing a
monotype printing plate that is necessarily limited to solely the pressure of
one’s hand” {id. at 11. 16—18). Kross then urged that Chen ’669 “has no
4 Because the application was filed before 16 March 2013, we refer to the
pre-America-Invents-Act version of Title 35 U.S.C.
5 John Y. Chen, Tear resistant gels and articles for every uses, U.S. Patent
Application Publication 2005/0008669 A1 (2005) was mis-cited in the
original Opinion as 2005/000869 Al; and all references to “Chen ’869”
should read “Chen ’669”.
6 A rejection in view of an additional reference, Zirker, was not argued
separately.
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Application 14/565,190
relevance to any type of printing apparatus or method.” (Id. at 12,11. 3 4.)
Instead, Kross argued, Chen ’669 teaches “gelatinous elastomer
compositions and articles with a disclosed use as ‘fishing bait’ (and perhaps,
other unspecified uses) and, as such, should not be considered pertinent for
application in an obviousness rejection of Appellant’s claims.” (Id. at 11. 5—
7.) Nor, Kross continued, should Chen ’669 be considered in combination
with Germain or Singular Impressions. (Id. at 11. 7—10.) In Kross’s view,
the only source of teachings for the combination of a non-gelatin printing
plate with monotype printing apparatuses or techniques is
the ’190 Specification. (Id. at 11. 11—16.) Kross reiterated these arguments
in the Reply, emphasizing that Germain merely sought to “cope with the
gelatin cracking and splitting” and did not teach or suggest looking for any
other materials. (Reply 3,11. 9-11.)
On Request for Reconsideration, Kross argues that we
mischaracterized and misapplied the law of obviousness in citing Hotchkiss
(prima facie obvious to use known materials disclosed as having suitable
properties) because we overlooked or misapprehended the new functions and
properties afforded by the use of non-gelatin viscoelastic polymers in place
of the gelatin sheet printing material taught by Germain. (Request 3,11. 4—
10.) Rather than seeking a new material, Kross urges, Germain was content
to cope with the cracking of the gelatin plate and the difficulties attendant to
clean-up. (Id. at 11. 15—18.) Kross further criticizes our determination that
the level of skill in the art was sufficiently high that the routineer would
have recognized the suitability of the viscoelastic gels taught by Chen ’669
as substitutes for the gelatin taught by Germain. (Id. at 6—7.) Kross
emphasizes the absence of any teaching or suggestion in the prior art,
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Application 14/565,190
particularly Chen ’669, that the viscoelastic gels were “known to have been
used in any type of printing technology, let alon[e] the monotype printing of
the nature to which Appellant’s claimed invention is directed.” (Id. at 6,
11. 21—23.) Kross then reiterates the argument that only hindsight motivates
the appealed rejection (id. at 7—8).
We are not persuaded of harmful error in the appealed rejection or in
our affirmance of that rejection.
The recognition by Germain of mechanical problems with gelatin in
printing (splitting, cracking) would have prompted a person having ordinary
skill in the art to consider materials having similar properties, but less prone
to splitting. As the Examiner found, and as Kross does not dispute,
Chen ’669 discloses “an improved viscoelastic gel composition which
results in articles that do not crack, creep, tear or rupture from normal use
and have elastic memory enabling the articles to recover and retain its
original molded shape after many extreme deformation cycles.” (FR 3,11. 8—
11, citing Chen ’669 paragraph [0181].) Thus, a preponderance of the
evidence supports the Examiner’s underlying findings concerning why a
person of skill in the art would have considered Chen ’669 in order to
address cracking of non-gelatin plates because of its advantages (Ans. 3—4,
citing Chen ’669 ^fl[ [0007], [0038], [0039], and [0182]), and a
preponderance of the evidence supports the Examiner’s obviousness
conclusion. The silence of Chen ’669 as to a particular application is of little
or no moment given the teachings of the properties and the resulting general
uses of the viscoelastic gel-like materials, which would have suggested those
materials as, more likely than not, a successful solution to the problems of
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Application 14/565,190
gelatin cracking and splitting and clean-up issues encountered by the prior
art, such as Germain.
We are well aware that seemingly simple and “obvious” inventions
have been overlooked by entire industries (cases of long-felt but unfilled
need often fall into this category); and that some “simple” inventions have
unforeseen and thus unexpected advantages7. The present case is
distinguished from these classes of cases by the absence of argument
supported by credible evidence of record of the presence of long-felt need,
unexpected results, or other so-called “secondary” indicia of non­
obviousness. In these regards, there are no working examples in the
Specification, and Kross has not directed our attention to experimental
evidence of record comparing the claimed invention with the prior art.
The Supreme Court, in its most recent decision on obviousness,
explained,
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
7 Kross appears to place the Teflon®-coated electrodes at issue in Leesona
Corp. Leesona Corp. v. United States, 530 F.2d 896 (Ct. Claims 1976), in
this category. (Request 4—5.) But the facts of that case render it inapposite
to the present case. In Leesona, the court found that the differences between
the claimed electrode and the prior art resided “both in the use of a
fluorocarbon as the binder material and in mixing particles of the
fluorocarbon with particles of the catalyst instead of coating the catalytic
particles with a solution of the plastic binder material as is the case with [the
other prior art references].” 530 F.2d at 902; emphasis added. Thus, the
invention in Leesona did not involve a simple substitution of one material
for another. Moreover, as indicated in the passage cited by Kross indicates,
it was not known why the claimed combination worked, and “even now,
only theories have been developed to explain its superior performance.” Id.
at 903.
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Application 14/565,190
reason, 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. ... a court must ask whether the
improvement is more than the predictable use of prior art
elements according to their established functions likely to be
obvious when it does no more than yield predictable results.
KSR Inti Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). We, following the
Examiner, have done no more—and no less—than apply these principles to
the evidence advanced by the Examiner and by Kross.
Kross has not shown error in the findings of fact or in the application
of the law of obviousness to this case.
C. Order
It is ORDERED that the Request for Reconsideration is granted.
It is FURTHER ORDERED that the Request for Relief is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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