Ex Parte McLean et al

Patent Trial and Appeal Board

Dec 17, 2012

11124614 (P.T.A.B. Dec. 17, 2012)

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.
11/124,614 05/06/2005 Michael E. McLean DAY 0816 PA/40195.943 8649
23368 7590 12/18/2012
DINSMORE & SHOHL LLP
FIFTH THIRD CENTER, ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402-2023
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
12/18/2012 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 MICHAEL E. McLEAN, DIETER SCHULZE-BAING,
MICHAEL KOCKENTIEDT, and WILL GOSS
____________

Appeal 2012-004279
Application 11/124,614
Technology Center 2800
____________

Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 2-4, 6-9, and 11-27, which are all of the pending claims. Claims 1, 5,
and 10 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed Oct. 12, 2011), the Answer (mailed Nov.
30, 2011), and the Reply Brief (filed Jan. 20, 2012). We have considered in
this decision only those arguments Appellants actually raised in the Briefs.
Any other arguments which Appellants could have made but chose not to
make in the Briefs are deemed to be waived. See 37 C.F.R. §41.37(c)(1)(iv).

Appellants’ Invention
Appellants’ invention relates to a method of making a photopolymer
sleeve blank for use in flexographic printing in which a cushion layer is
applied over a base sleeve and a photopolymer layer is applied over the
cushion layer. According to Appellants, the disclosed method provides a
sleeve blank having an integral cushion layer, which takes the place of a
conventional “floor,” and eliminates the need to back expose the
photopolymer layer to form a “floor.” See generally Spec. 2:23-3:7.

Claim 27 is illustrative of the invention and reads as follows:
27. A method of making a seamless photopolymer sleeve blank for use in
flexographic printing comprising:
providing a cylindrical base sleeve including an inner surface and an
outer surface;
applying a cushion layer over said outer surface of said base sleeve
without back exposing said cushion layer; said cushion layer selected from
the group consisting of an open-cell foam, a closed-cell foam, or a soft,
volume displaceable material having a Shore hardness of about 30 to 70;
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grinding the surface of said cushion layer to achieve a predetermined
thickness and establish a relief depth for a final image; and
applying a photopolymer layer over said cushion layer.

The Examiner’s Rejections
The Examiner’s Answer cites the following prior art references:
Fan EP 0766142 A1 Apr. 2, 1997
Ogita US 6,182,568 B1 Feb. 6, 2001
Kalchbrenner US 2003/0129384 A1 Jul. 10, 2003
McLean US 2003/0188650 A1 Oct. 9, 2003

Claims 2-4, 6-9, 11-21, and 25-27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fan in view of Kalchbrenner and
McLean.
Claims 22-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fan in view of Kalchbrenner, McLean, and Ogita.

ANALYSIS
At the outset, we note that Appellants have properly made reference to
an earlier Board decision rendered August 30, 2010, in an appeal (2009-
004391) filed in this application (App. Br. 2). As correctly characterized by
Appellants, the prior Board decision reversed the Examiner’s rejection of
independent claim 27, which included a recitation that a cushion layer is
applied over the outer surface of a base sleeve “without back exposing said
cushion layer.”
Upon re-opening of prosecution following the prior Board decision,
Appellants added the “without back exposing said cushion layer” language
to independent claim 19, the other remaining pending independent claim.
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The Examiner issued new grounds of rejection of all claims, upon which
rejection this appeal was taken, relying on the same references as in the
earlier appeal with the addition of McLean, which was used to address the
“without back exposing said cushion layer” language.

Claims 2-4, 6, 7, 9, 11-13, 16, 17, and 27
Appellants argue, with respect to the obviousness rejection of
independent claim 27, that the Examiner has not provided a proper basis for
the proposed combination of Fan with Kalchbrenner and McLean. Initially,
Appellants contend that the Examiner erred in combining the foam cushion
layer teachings of Kalchbrenner with the flexographic printing sleeve blank
teachings of Fan. According to Appellants, i) Kalchbrenner’s cushion layer
teachings are directed to an offset printing process which is non-analogous
to Fan’s flexographic printing process, ii) Kalchbrenner’s cushion layer
would not function in the same manner as Fan’s cushioned element, and iii)
Kalchbrenner’s grinding step is disclosed as being optional and not required
(App. Br. 10-12).
Appellants’ arguments are not persuasive. We refer to the reasoning
in our earlier decision (pages 5 and 6) which concluded that i) an ordinarily
skilled artisan would have logically consulted Kalchbrenner’s cushion layer
printing blanket teachings to solve problems associated with creating a
resilient flexographic printing sleeve blank such as in Fan, ii) the Examiner’s
position did not suggest the bodily incorporation of Kalchbrenner’s printing
blanket to replace Fan’s cushion layer but instead relied on Kalchbrenner’s
teaching of a resilient foam cushion layer structure as a rationale for the
combination with Fan, and iii) Kalchbrenner’s disclosure of an optional
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grinding step nonetheless teaches an ordinarily skilled artisan to grind a
cushion layer to achieve consistent thickness.
We also find Appellants’ arguments directed to the Examiner’s
addition of McLean to the combination of Fan and Kalchbrenner to be
unpersuasive. According to Appellants, McLean’s disclosure is directed to
forming a flat printing element using a liquid polymerizable material while
Fan forms a flexographic printing plate on a cylindrical sleeve using a solid
polymer (App. Br. 13; Reply Br. 2-4). In Appellants’ view, there is no
teaching or suggestion that the digital light imaging system used by McLean
to form the polymer base would be effective when applied to a solid polymer
on a sleeve such as in Fan.
We find Appellants’ arguments unpersuasive of any error in the
Examiner’ stated position (Ans. 5-6). Contrary to Appellants’ contention,
and as pointed out by the Examiner (Ans. 15), the Examiner’s proposed
combination is not relying on the bodily incorporation of the imaging system
of McLean into the system of Fan. Rather, it is McLean’s teaching (¶ 0047)
of using an overall exposure to form a base layer instead of a backflash
exposure that is relied upon as a rationale for the combination with Fan.
Further, we also find that the Examiner’s conclusion of obviousness of the
claimed invention is supported by the disclosures of Fan and McLean, which
are both directed to forming photopolymer plates for flexography, while
McLean also recognizes the equivalence of forming a polymer base layer by
backflashing or by imaging from the top.
We further find Appellants’ conclusory arguments (App. Br. 13-15;
Reply Br. 2-3) unpersuasive of any error in the Examiner’s determination
(Ans. 14-15) that it would be well within the knowledge and technical skill
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of an ordinary artisan to adapt the flat plate polymer forming teachings of
McLean to the cylindrical sleeve blank forming process of Fan. The
Supreme Court has held that in analyzing an obviousness rationale, a court
need not find specific teachings, but rather may consider “the background
knowledge possessed by a person having ordinary skill in the art” and “the
inferences and creative steps that a person of ordinary skill in the art would
employ.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Further, an
artisan is presumed to possess both skill and common sense. See KSR., 550
U.S., at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”).
Lastly, we note that, aside from arguments of counsel, Appellants
have set forth no evidence which would overcome the Examiner’s stated
position. See Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed.
Cir. 1997) (“[A]rguments of counsel cannot take the place of evidence
lacking in the record.”).
For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claim 27, as well as dependent claims 2-4, 6, 7, 9, 11-13, 16,
and 17 not separately argued by Appellants, is sustained.

Claims 8, 14, 15, and 18
We also sustain the Examiner’s obviousness rejection of dependent
claims 8, 14, 15, and 18. With respect to dependent claims 8 and 14,
Appellants contend (App. Br. 16-17) that it is Fan’s photopolymer layer, not
a cushion layer, that is applied by extrusion and calendaring, and Fan’s
photopolymer layer is fused by heating to the base support, not to the
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cushion layer. These arguments are not persuasive since the Examiner has
relied on Fan’s teaching in an embodiment in which a first polymer layer
acts as a cushion layer for an overlying second polymer layer.
Appellants’ argument (App. Br. 17) with regard to dependent claim 15
is also not persuasive. We agree with the Examiner that Kalchbrenner’s
teaching of grinding any surface of a printing element to achieve a smooth
consistent surface would be applicable to any layer of the printing element
of Fan including the outer photopolymer layer.
Further, with regard to dependent claim 18, Appellants’ contention
(App. Br. 18) that the modification of Fan would not result in the claimed
photopolymer sleeve blank is not persuasive. We refer to our prior decision
(page 6) which found the Examiner did not error in determining that the
claimed purpose of the grinding step of base claim 27, i.e., to “establish a
relief depth for a final image,” is a mere statement of intended use which
results in no structural difference between the claimed invention and the
prior art.

Claims 19-21, 25, and 26
The Examiner’s obviousness rejection of claims 19-21, 25, and 26,
which include a recitation of a film-forming polymer barrier layer that is
applied over the cushion layer, is also sustained. We refer to our prior
decision (pages 8-9), which found the Examiner did not error in determining
that the use of an adhesive layer as taught by Kalchbrenner would serve as
an obvious enhancement to the printing sleeve of Fan, and further that such
adhesive layer would reasonably be considered as a barrier layer as broadly
claimed by Appellants. We further find that the barrier layer composition
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recited in claim 22 does not distinguish over the adhesive layer composition
disclosure of Kalchbrenner at paragraphs 0102-0113 and 0125-0127.

Claims 22-24
We also sustain the Examiner’s obviousness rejection of dependent
claims 22-24, in which Ogita is applied to the combination of Fan,
Kalchbrenner, and McLean to address the barrier layer application features
of the rejected claims. Appellants (App. Br. 21-22) have relied upon
arguments asserted against the rejection of independent claims 19 and 27,
which arguments we have found unpersuasive as discussed supra.

CONCLUSION OF LAW
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 2-4, 6-9, and 11-27 for obviousness under 35 U.S.C.
§ 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 2-4, 6-9, and 11-
27 under 35 U.S.C. § 103(a).
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)(2010).

AFFIRMED
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