Ex Parte Teng

Patent Trial and Appeal BoardAug 31, 2016

11859756 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111859,756 0912212007 75816 7590 GARY GANGHUI TENG 14 Joslin Ln. Southborough, MA 01772 08/31/2016 FIRST NAMED INVENTOR Gary Ganghui Teng 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. GT-38 5299 EXAMINER ZIMMERMAN, JOSHUA D ART UNIT PAPER NUMBER 2854 MAILDATE DELIVERY MODE 08/31/2016 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 GARY GANGHUI TENG 1 Appeal2015-002906 Application 11/859,756 Technology Center 2800 Before: PETER F. KRATZ, MICHAEL P. COLAIANNI, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL 2 1 Appellant identifies the real party in interest as Gary Ganghui Teng. App. Br. 2. 2 In our opinion below, we refer to the Non-Final Action mailed March 18, 2014 ("Non-Final Act."), the Appeal Brief filed June 14, 2014 ("App. Br."), the Examiner's Answer mailed November 19, 2014 ("Ans."), and the Reply Brief filed January 19, 2015 ("Reply"). Appeal2015-002906 Application 11/859,756 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1- 7, 11, 13-19, and 31. We have jurisdiction under 35 U.S.C. Â§ 6(b). For the reasons provided by the Examiner, we AFFIRM. We add the following for emphasis. The claims are directed to a lithographic printing plate treating device. Claim 1, reproduced below with the limitations at issue highlighted, is the sole independent claim, and is illustrative of the claimed subject matter: 1. A lithographic printing plate treating device comprising: (a) a treating solution, and a structure for providing said treating solution; (b) a drying unit between said structure and the exit of said treating device; ( c) an exposed lithographic plate comprising on a substrate a photosensitive layer having hardened or solubilized exposed areas and non-hardened or nonsolubilized non-exposed areas, the non-hardened (for negative plate) or solubilized (for positive plate) areas of said photosensitive layer being removable on press with ink and/or fountain solution; and ( d) a transfer means for transporting said exposed plate (i) through said structure to contact said treating solution with at least the photosensitive layer coated side of said plate without developing said plate, (ii) then through said drying unit to dry off water and any solvent from the treated plate, and (iii) further to the exit of the treating device as a dried and treated plate without development; said transfer means being driven by a motor; ( e) wherein said treating solution is capable of causing a chemical or physical change to the plate without developing said plate, and is incapable of developing said plate; 2 Appeal2015-002906 Application 11/859,756 (t) wherein said treating device does not have a developing means for developing said plate and is not connected to any developing device for developing said plate; (g) wherein the term development means selective removal of the non-hardened (for negative plate) or solubilized (for positive plate) areas of the photosensitive layer. App. Br. 14 (Claim App'x). Adachi Hayashi et al., ("Hayashi") REFERENCES US 2007 /0039500 Al US 7 ,807 ,333 B2 REJECTIONS Feb.22,2007 Oct. 5, 2010 The claims stand rejected as unpatentable under 35 U.S.C. Â§ 103(a) as follows: claims 1-7, 11, 13-18, and 31 over Hayashi (Non-Final Act. 3); claim 19 over Hayashi in view of Adachi (id. at 8). OPINION According to the Specification, the inventor found that a simple treatment with a treating solution can be used to modify, without developing, an exposed on press developable photosensitive lithographic printing plate, 3 Appeal2015-002906 Application 11/859,756 eliminating the common drawbacks that on press developable plates have of limited room light stability and weaker visible images. Spec. 1-2. Obviousness of claims 1-7, 13-18, and 31 over Hayashi The Examiner concludes that claims 1-7, 13-18, and 31 would have been obvious over Hayashi. Appellant does not argue any of these claims separately from the others, thus these claims stand or fall together. See 37 C.F.R. Â§ 41.37(c)(l)(iv). In disputing the Examiner's obviousness conclusion, Appellant focuses on two issues: (1) Hayashi discloses a development apparatus that comprises both a pretreatment tank and a development tank (Hayashi col 7, 11. 54-61 ), while the claims at issue require that the plate coming out of the treating device is not developed, and (2) Hayashi does not teach a drying unit for drying the plate after pretreatment and before development. App. Br. 8-9. With regard to the "development apparatus" of Hayashi, the Appellant contends that Hayashi teaches both a pretreatment tank and a development tank are contained in the same apparatus (App. Br. 8 (citing Hayashi col. 7, 11. 54---61) ), and the plate coming out of the development apparatus of Hayashi is developed (id. at 9). Appellant then argues that the development apparatus of Hayashi is contrary to the Examiner's assertion that Hayashi discloses element (t) of the claims, i.e., "(t) wherein said treating device does not have a developing means for developing said plate and is not connected to any developing device for developing said plate." Id. In response, the Examiner explains that it is not the entire disclosure of Hayashi which is used in the rejection. Ans. 2. In other words, the Examiner does not rely on the entire "development apparatus" of Hayashi, 4 Appeal2015-002906 Application 11/859,756 but only a portion of it. Specifically, the Examiner relies on Hayashi for teaching: [A] lithographic printing plate treating device (column 5, lines 1- 45) comprising: (a) a treating solution (column 5, lines 19-25), and a structure for providing said treating solution (column 7, lines 7-1 O); ( c) an exposed lithographic plate comprising on a substrate a photosensitive layer having hardened or solubilized exposed areas and non-hardened or nonsolubilized non-exposed areas, the non-hardened (for negative plate) or solubilized (for positive plate) areas of said photosensitive layer being removable on press with ink and/or fountain solution (column 8, lines 10-18); ( d) a transfer means for transporting said exposed plate through said structure to contact said treating solution with at least the photosensitive layer coated side of said plate without developing said plate (examiner interprets whatever means is used by Hayashi et al. to move the plate through the tank to be the claimed transfer means); ( e) wherein said treating solution is capable of causing a chemical or physical change to the plate \vithout developing said plate, and is incapable of developing said plate (column 5, lines 19-25: specifically, the carboxylic acid; since the treating solution of Hayashi et al. is identical to that used by applicant, the claimed properties of the treating solution are presumed inherent. MPEP Â§2112.01.); (f) wherein said treating device does not have a developing means for developing said plate and is not connected to any developing device for developing said plate (the pretreatment device of Hayashi et al. is not disclosed as being physically connected to the development tank; rather, the plate appears to be physically carried from one to the other. Furthermore, the plate of Hayashi et al. can be on-press developed, in the same manner as Applicant's plate, therefore the development device disclosed by Hayashi et al. would not be used, and thus the treatment device of Hayashi et al. would not be connected to the developing device); 5 Appeal2015-002906 Application 11/859,756 (g) wherein the term development means selective removal of the non-hardened (for negative plate) or solubilized (for positive plate) areas of the photosensitive layer. Non-Final Act. 3--4 (citations are to Hayashi). (We note that the Examiner does not contend that Hayashi teaches element (b) related to a drying unit, but we address this issue later in the opinion.) The Examiner finds that "the treatment device of Hayashi is not disclosed as being physically connected to the development tank; rather, the plate appears to be physically carried from one to the other." Non-Final Act. 4, Ans. 2. Thus, the Examiner finds that the lithographic printing plate that goes into the pretreatment tank of Hayashi need not proceed into the development tank and be developed therein. In support, the Examiner explains that the plate of Hayashi can be on press developed in the same manner as Appellant's plate; in such a case, a pretreated plate would not go into the development tank. See Ans. 2, 3. Appellant's position that Hayashi requires the lithographic printing plate to undergo development in a development tank is unpersuasive, given the facts and the Examiner's rebuttal argument. See In re Preda, 401 F.2d 825, 826 (CCP A 1968) ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."). Appellant argues multiple times that Hayashi teaches directly putting the exposed plate on press for development with dampening water, which excludes any pretreatment after exposure and before mounting on press. Reply 4--7 (citing Hayashi col. 7, 11. 62---66). Essentially, Appellant is 6 Appeal2015-002906 Application 11/859,756 arguing that Hayashi teaches away from pretreating a plate before on press development. However, the disclosure of Hayashi is broader than Appellant would have us read it, and does not criticize, discredit, or otherwise discourage pretreatment before on press development. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed in the '198 application."). Disclosed examples do not constitute a teaching away from a broader disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). This is a rejection based on obviousness, not anticipation, so we consider the prior art for all that it teaches and suggests. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("[I]n a section 103 inquiry, the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.") Hayashi states "a lithographic plate precursor exposed to light may be directly set in a printer, in which damping water may be applied." Hayashi col. 7, 11. 62-64 (emphasis added). Nothing in Hayashi requires that the plate may not be pretreated, as taught in the reference, before being put on press. Appellant's position that Hayashi prohibits pretreatment of a plate before it is put on press is unpersuasive. The Examiner has adequately explained that one of ordinary skill in the art at the time of the invention would have been able to use the teachings of Hayashi regarding pretreatment of the plate and apply those teachings to on press development. See Ans. 2--4. "[T]he [obviousness] analysis need 7 Appeal2015-002906 Application 11/859,756 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 Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We tum to consider element (b) of the claims, a drying unit between the treating solution structure and the exit of the treating device. Appellant urges that Hayashi does not teach a drying unit for drying the plate after pretreatment and before development; only drying of the developed plate after post-treatment is taught. App. Br. 9. The Examiner finds that Hayashi teaches that it was known to dry a treated plate before it was placed into the printer. Non-Final Act. 4 (citing Hayashi col. 19, 1. 60-col. 20, 1. 4). The Examiner further contends that one of ordinary skill in the art at the time of the invention would have been motivated to provide a drying unit after the pretreatment device and before the printing press to be developed because it has been shown to dry treated plates before putting them into a printer. Ans. 3. Appellant counters that Hayashi teaches directly putting the exposed plate on press for development with dampening water, and the plate before putting on press is itself dry, so there is no need for drying the plate. Reply 6. Appellant does not address the Examiner's findings regarding the knowledge of one having ordinary skill in the art at the time of the invention. "[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a comi can take account of the inferences and creative steps that a person of ordinary skiH in the art would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 8 Appeal2015-002906 Application 11/859,756 The Examiner has provided a convincing line of reasoning as to why one of ordinary skill in the art would employ a drying unit in combination with the teachings of Hayashi. See Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). Appellant has not shown reversible error in the Examiner's reasonmg. Obviousness of claim 19 over Hayashi in view of Adachi Appellant argues that neither Hayashi nor Adachi teach an apparatus for treating and drying without development of the plate. Reply 9-10. This argument has been addressed about with respect to Hayashi, and the Examiner does not off er Adachi for such teaching. Claim 19 depends on claim 1, and further requires that: the device of claim 1 is shielded with covers which prevent all or substantially all of the room light or of the unsafe portion of the room light from reaching the plate when said plate is handled and treated on the treating device at least before being treated. App. Br. 16 (Claims App'x). The Examiner contends that Adachi teaches that, when printing plates are susceptible to surrounding light in the work environment, the entire plate processing line should be shielded from light with a cover. Non-Final Act. 9 (citing Adachi i-f 302). Appellant counters that Adachi' s teaching of a cover or filter for shielding a plate from light is for a plate-making line like Adachi's, which comprises a plate setter and a developing apparatus only. App. Br. 12. In addition, Appellant argues that there is no suggestion from Adachi that such a cover or filter is suitable for a device for treating and drying without developing a plate. Id. Therefore, according to Appellant, Adachi does not 9 Appeal2015-002906 Application 11/859,756 teach a device for treating and drying without developing a plate and does not teach a device with a lightshielding cover for treating and drying without developing a plate. Id. The Examiner responds that, contrary to Appellant's position, Adachi' s teachings regarding shielding a printing plate from light with a cover or a filter "would clearly be relevant to other systems where a plate which is sensitive to light is being processed" and one of ordinary skill in the art would have recognized this fact. Ans. 4. In reply, Appellant states: First, at the time the instant invention was made, all on-press developable plates disclosed in the prior art are safe under white room light, so an ordinary person in the art would not consider any light-shielding covers for the pretreatment device for an on- press developable plate. Secondly, the process of pretreating a plate before putting on press was not known in the prior art at the time the instant invention was made, and it was an inventive step by the instant inventor to design a pretreatment device with light- shielding covers in order to utilize an on=press developable plate which is sensitive to light. Reply 10. Appellant's position is flawed. One cannot show non-obviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. Id. The Examiner provides motivation for one of ordinary skill in the art to combine the teachings of Hayashi and Adachi. Appellant does not provide adequate support for limiting Adachi' s teachings solely to Adachi' s particular system. 10 Appeal2015-002906 Application 11/859,756 With respect to Appellant's Reply, it is well settled that arguments of counsel (in this case, the inventor representing himself) cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F .3d 135, 139--40 (Fed. Cir. 1996) (a personal affidavit was insufficient proof to establish nonobviousness); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("It is well settled that unexpected results must be established by factual evidence. J\;fere argument or conclusory statements in the specification does not suffice."). DECISION For the above reasons, the Examiner's rejections of claims 1-7, 11, 13-19, and 31 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 )(iv) (2009). AFFIRMED 11