Ex Parte Rondon et al

Patent Trial and Appeal BoardMay 27, 2016

12697536 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/697,536 02/01/2010 23517 7590 06/01/2016 MORGAN, LEWIS & BOCKIUS LLP (BO) 1111 PENNSYLVANIA A VENUE, N.W. WASHINGTON, DC 20004 FIRST NAMED INVENTOR Sonia Rondon 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PTK-25117303462001 2202 EXAMINER ROBINSON, CHANCEITY N ART UNIT PAPER NUMBER 1722 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): kcatalano@morganlewis.com patents@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SONIA RONDON and KEVIN RA Y 1 Appeal2014-007839 Application 12/697 ,536 Technology Center 1700 Before TERRY J. OWENS, MARK NAGUMO, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting as obvious claims 1-7 and 10-14 over Goto2 and claim 8 over Goto in view of Lewis. 3, 4 We have jurisdiction pursuant to 35 U.S.C. Â§ 6. We AFFIRM. 1 Presstek, Inc. is identified as the Real Party in Interest. Appeal Brief filed January 14, 2014 ("App. Br."), 2. 2 Goto et al., US 2003/0228540 Al, published December 11, 2003. 3 Lewis, US 6,055,906, issued May 2, 2000. 4 The Examiner has withdrawn additional grounds of rejection under 35 U.S.C. Â§ 112, first and second paragraphs. Examiner's Answer mailed May 9, 2014 ("Ans."), 5. Appeal2014-007839 Application 12/697,536 Appellants' claimed invention relates to a three-layer printing member having a central polymeric layer including nonconductive carbon black particles. Spec. Abstract. As described in the Specification, the central polymeric layer is sensitive to imaging radiation and can be ablated by exposure to radiation thereby de-anchoring the topmost layer that can then be removed to form a lithographic image. Spec. i-fi-129-30; Fig. 2. The polymer in the central layer "can be any polymer capable of stably retaining, at the applied thickness, an IR-absorptive pigment [ nonconductive carbon black] ... adequate to cause ablation of the layer in response to an imaging pulse; and of exhibiting water compatibility following ablation" where "the nonconductive carbon back enhances, or even confers, the desired water compatibility of [the central polymeric] layer 204 or the ablation debris thereof." Spec. i137. Claim I-the sole independent claim-is reproduced below. 1. A lithographic printing member comprising: (a) a first layer presenting a hydrophilic or oleophobic lithographic affinity; (b) a second layer for ablating in response to an imaging pulse, the second layer consisting essentially of a polymeric matrix and, dispersed therein, nonconductive carbon black particles at a loading level sufficient to provide at least partial layer ablatability and water compatibility following ablation; and ( c) a third layer presenting an oleophilic lithographic affinity, the second layer being disposed between the first and third layers. App. Br. 14 (Claims Appendix). 2 Appeal2014-007839 Application 12/697,536 DISCUSSION Upon consideration of the evidence and opposing contentions of Appellants and the Examiner, we are not persuaded of reversible error in the Examiner's decision rejecting all claims as unpatentable for obviousness. 5 The Examiner relies on Goto for its disclosure of a printing plate precursor with heat sensitive layer on a substrate and further ink repellant layer on the heat sensitive layer. Ans. 2-5. Goto's substrate can be polyester or metal having oleophilic lithographic affinity---corresponding to the third layer in claim 1. Ans. 2 (citing Goto i-fi-f 112-113). Goto's heat sensitive layer preferably includes a binder polymer and can include carbon black in amounts from 0.5 to 40 wt.% where the carbon black acts to convert light to heat---corresponding to the second layer in claim 1. Ans. 2 (citing Goto i-fi-124, 28, 35, 72-76). Goto's ink repellant layer can be a hydrophilic silicone layer-corresponding to the first layer in claim 1. Ans. 2 (citing Goto i-fi-121-22, 86). The Examiner further finds that Goto's printing member-like the claimed lithographic printing member-is imaged using laser irradiation (Ans. 4, citing Goto i-f 156 and Examples) during which the carbon black absorbs laser light and converts it to heat (Goto Abstract, i-fi-126-28). The Examiner concedes Goto does not explicitly disclose that the carbon black particles are nonconductive, but determines it would have been obvious to one of ordinary skill in the art to select nonconductive carbon black after standard testing and without the exercise of inventive skill. Ans. 3. 5 We refer to the Final Office Action ("Final Act.") mailed November 7, 2013, the Appeal Brief filed January 14, 2014, the Examiner's Answer mailed May 9, 2014, and the Reply Brief ("Reply Br.") filed July 3, 2014. 3 Appeal2014-007839 Application 12/697,536 Critically, Goto discloses two different types of printing plate precursors that are developed differently from one another. In one, the heat generated by laser irradiation gives rise to a reaction forming cross links so that the layer corresponding to the first layer in claim 1 is not lost. Goto i-f 59. In the other, the heat generated by laser irradiation causes an already cross-linked polymer to undergo an elimination reaction weakening the polymer such that the layer corresponding to the first layer in claim 1 is lost. Goto i-fi-1 60-61. This second type of printing plate precursor most closely corresponds to the claimed invention. While not particularly preferred by Goto, the irradiation and development can be used to eliminate the heat sensitive layer. Goto i-f 61. Appellants proffer several arguments in support of their contention the Examiner erred in rejecting the claims as unpatentable for obviousness, which we consider in tum. First, Appellants argue that the Examiner has erred in ignoring claim limitations requiring at least partial layer ablatability and water compatibility following ablation. App. Br. 6-8. Appellants contend the Examiner erred in treating these as merely statements of intended use. App. Br. 6. Appellants contend further structural specificity is set forth in claims 3, 4, and 10-12. App. Br. 6-7. Appellants further argue the Examiner erred in treating claim 2 as a product-by-process claim. App. Br. 7-8. Having considered the record, we do not find Appellants' arguments persuasive of reversible error because the Examiner has set forth how Goto discloses the recited second polymer layer, including that it comprises carbon black in amounts of 0.5 to 40 wt.% (Ans. 2-3), and for the layer having at least partial layer ablatability and water compatibility following 4 Appeal2014-007839 Application 12/697,536 ablation, where the Examiner finds Goto discloses the second layer is removeable by irradiation and contact with an aqueous liquid (Ans. 3, citing Goto i-fi-159-60, 132-142). Appellants' arguments fail to sufficiently address these findings or to explain why Goto's second layer formed of cross-linked polymer containing carbon black does not meet the recited limitations, particularly given the range of polymers disclosed as suitable and that the included carbon black itself enhances or confers water compatibility. Spec. i-fi-137--41. Even assuming Goto was silent as to the second layer having at least partial layer ablatability and water compatability following ablation, the absence in the prior art of disclosure related to function would not preclude a finding of unpatentability where the structural limitations of the claimed product are otherwise disclosed or suggested in the prior art. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Appellants fail, therefore, to meet their procedural burden of establishing harm. See, e.g., Shinseki v. Sanders, 556 U.S. 396, 409-10 (2009) ("Lower court cases make clear that courts have correlated review of ordinary administrative proceedings to appellate review of civil cases in this respect ... [T]he party seeking reversal normally must explain why the erroneous ruling caused harm.") (Citations omitted). See also In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (discussing the role of harmless error in appeals from decisions of the Board of Patent Appeals and Interferences (now, the Patent Trial and Appeal Board)). Second, Appellants argue that Examiner failed to properly consider the Declaration of Dr. Ray dated September 3, 2013 ("Ray Declaration"). App. Br. 8-10. In particular, Appellants contend "the Ray Declaration establishes that a crosslinker or surfactant does not affect the function or 5 Appeal2014-007839 Application 12/697,536 performance-the 'basic and novel characteristic' --of the second layer recited in claim 1." App. Br. 8. As Appellants argue, the "function of the second layer, as set forth in the application and in the Ray Declaration, is to ablate." Reply Br. 4. Appellants further argue in the Reply Brief that the Examiner has erred in relying on PPG Industries v. Guardian Industries Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998) in order to interpret claim 1 as encompassing subject matter outside what is claimed. Reply Br. 3--4. In particular, Appellants contend the Examiner has erred in treating "consisting essentially of' in claim 1 as "comprising" and in doing so has denied the Appellants' ability to restrict claim scope. Reply Br. 3--4. Appellants' arguments are unpersuasive of harmful error. The highlighted standard from PPG is that use of "consisting essentially of' means that "the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention." Reply. Br. 4 (citing PPG, 156 F.3d at 1356). Accordingly, the phrase "consists essentially of' excludes only those materials that materially affect the basic and novel characteristics of the claimed invention, but no evidence has been offered to demonstrate that the additional components in Goto's cross-linked polymer would materially any basic and novel characteristics of the claimed invention. In re Janakirama- Rao, 317 F.2d 951, 954 (CCPA 1963). The Ray Declaration, in fact, is proffered as evidence that cross-linking the polymer does not materially affect the function or performance of the second layer, that is, to be ablated. Reply Br. 4; Ray Declaration i-fi-1 5-6. Further, Appellants provide no evidence that the cross-linked polymer containing carbon black in Goto---the 6 Appeal2014-007839 Application 12/697,536 polymer weakened by laser irradiation such that the layer corresponding to the first layer in claim 1 is lost (Goto i-fi-1 60-61 }-is materially different in regard to ablatability and water compatibility following ablation than that of the second layer according to the claims (Generally App. Br.; Reply Br.). Third, Appellants argue that Goto requires the formation of cross- links between its laser-responsive layer---corresponding to the second layer in claim I-and one or both of the other layers---corresponding to the first and third layers in claim 1-in response to laser irradiation to enhance the adhesive strength in these regions such that the irradiated regions are retained while layers in unirradiated regions are selectively removed. App. Br. 11; Reply Br. 6. In particular, Appellants point to Goto' s inclusion of an active hydrogen-group containing compound and metal organic compound that enhances inter-layer adhesive strength upon irradiation and argue that this would be detrimental to the intended use of the claimed printing members that are imaged by ablation and consequent de-anchorage of the topmost layer from underlying layers. App. Br. 11; Reply Br. 6. Appellants further argue the Examiner erred in equating the cross-linker in Goto with that of the instant application. App. Br. 12; Reply Br. 6-7. As explained above, Goto discloses two different approaches to developing printing members using laser irradiation-by elimination of unexposed regions and by elimination of exposed regions. See, e.g., Goto Abstract, i-fi-1 59-61, 133. Appellants' arguments---directed to the Goto' s disclosure relating to the first approach-are unpersuasive of reversible error because they fail to address the basis of the Examiner's rejection grounded on Goto' s second approach in which laser irradiation is used to heat portions of an already cross-inked polymeric layer comprising carbon black such that 7 Appeal2014-007839 Application 12/697,536 corresponding portions of the overlying layer are lost during development. Ans. 2--4. Further, Appellants provide no persuasive evidence that Goto's printing members as set forth by the Examiner would not be imaged by ablation and consequent de-anchorage of the topmost layer from underlying layers. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument ... cannot take the place of evidence."). For the reasons above, it cannot be said that Appellants have shown reversible error in the determination that one of ordinary skill in the art, armed with the knowledge of the cited prior art, would have been led to the subject matter recited in the appealed claims. See, e.g., In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we sustain the Examiner's obviousness rejection of claims 1-8 and 10-14 over Goto and claim 9 over Goto in view of Lewis. CONCLUSION The rejection of claims 1-14 under 35 U.S.C. Â§ 103 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). AFFIRMED 8