Ex Parte Teng

Patent Trial and Appeal BoardMar 15, 2016

13194918 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/194,918 07 /30/2011 7590 03/15/2016 Gary Ganghui Teng 14 Joslin Ln. Southborough, MA 01772 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. 1877 EXAMINER ZIMMERMAN, JOSHUA D ART UNIT PAPER NUMBER 2854 MAILDATE DELIVERY MODE 03/15/2016 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 Appeal2014-004287 Application 13/194,918 Technology Center 2800 Before THU A. DANG, JOHN P. PINKERTON, and NORMAN H. BEAMER, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-004287 Application 13/194,918 l. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from a non-final rejection of claim 1. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. A. INVENTION According to Appellant, the invention relates to "lithographic printing" and more particularly to "treating a photosensitive lithographic printing plate after imagewise exposure and before development" (Spec. 1 ). B. CLAIM Claim 1 is the sole claim: 1. A lithographic printing plate imaging and treating assembly comprising: (a) an imager capable of imagewise exposing a lithographic plate with a laser having a wavelength selected from 200 to 1200 nm; (b) a lithographic plate having on a substrate a photosensitive layer capable of hardening upon exposure to said laser, the non-hardened areas of said photosensitive layer being removable on press with ink and/or fountain solution; ( c) a treating solution and a structure for providing said treating solution, said treating solution being capable of causing a chemical or physical change to said plate without developing said plate; and ( d) a transfer means for transporting said plate to said imager for imagewise exposure, then to said structure to contact with said treating solution, and further to the exit of said assembly as an exposed plate which is treated without being developed; 2 Appeal2014-004287 Application 13/194,918 ( e) wherein said assembly further comprising a drying unit for blowing hot or ambient air to the treated plate after passing said plate through said structure; (f) wherein said assembly does not have a developing means for developing said plate and is not connected to any developing device for developing said plate. C. REJECTION The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hayashi US 7 ,807 ,333 B2 Oct. 5, 2010 Claim 1 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Hayashi. 1 II. ISSUES The principal issue before us is whether the Examiner erred in finding Hayashi teaches or would have suggested an "assembly" comprising a "treating solution being capable of causing a chemical or physical change to said plate without developing said plate;" a "transfer means for transporting said plate ... to the exit of said assembly as an exposed plate which is treated without being developed;" and a "drying unit for blowing hot or ambient air to the treated plate ... " wherein "said assembly does not have a developing means ... and is not connected to any developing device ... " (claim 1 ) . 1 The rejection of claim 1 under 35 U.S.C. Â§ 112(b) has been withdrawn (Ans. 2). 3 Appeal2014-004287 Application 13/194,918 Ill. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Appellant's Invention 1. Appellant discloses a method for treating a photosensitive lithographic printing plate after imagewise exposure and before development (Spec. 1 ), wherein Figures 1-3 are reproduced below: FIG. l FIG.2 21 ~~.... " r--~~0:..,,,--,.,.,,;:r:ri i6-....._ : "'!Â·.Â·. L ....... ----"<"---"' FIG. 3 Figure 1 shows a lithographic printing plate treating device comprising a spray unit 12 for supplying a treating solution 11 to an imagewise exposed lithographic printing plate 31 to treat without developing the plate (id. at 9). Figure 2 shows a lithographic printing plate treating device comprising a spray unit and a roller 14 for supplying a treating solution 11 to an imagewise exposed lithographic printing plate 31 to treat without developing the plate (id. at 9). Figure 3 shows a lithographic 4 Appeal2014-004287 Application 13/194,918 printing plate treating device comprising a tank 16 containing a treating solution 11 and a transfer means 21 for passing an imagewise exposed lithographic printing plate 31 through the treating solution in the tank to treat without developing the plate (id. at 9). 2. The treatment solution can be a water-soluble organic compound having at least one carboxylic acid group (id. at 18). 3. Appellant acknowledges that it is known to provide on-press developable lithographic printing plates that can be directly mounted on the press after imagewise exposure to develop, without needing a separate development process (id. at 2). According to Appellant's invention, on- press development can be performed with the plate after treatment (id. at 16). Hayashi 4. Hayashi discloses a pretreatment step of treating a lithographic printing precursor with a neutral pretreatment liquid before development (col. 2, 11. 19-24; col. 5, 11. 1-12), wherein a pretreatment tank is provided such that the lithographic printing plate precursor being processed could be dipped in the pretreatment liquid therein or the pretreatment liquid could instead be sprayed onto the lithographic printing plate precursor (col. 7, 11. 9-17). 5. The pretreatment liquid may contain organic carboxylic acid (col. 5, 11. 19-29). 6. In Hayashi, development may be performed on-press (col. 2, 11. 24--25). 5 Appeal2014-004287 Application 13/194,918 IV. ANALYSIS Appellant contends "the apparatus of Hayashi not only treats the plate but also develops the plate" (App. Br. 10). According to Appellant, "the plate coming out of the development apparatus of Hayashi et al[.] is developed ... " (id.). Appellant also contends "Hayashi et al do not teach a drying unit for drying the plate after pretreatment and before development" (App. Br. 11 ). We have considered all of Appellant's arguments and evidence presented. However, we disagree with Appellant's contentions regarding the Examiner's rejection of the claims. We must give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, we will not read limitations from the Specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). As an initial matter of claim interpretation, although Appellant contends "the apparatus of Hayashi not only treats the plate but also develops the plate" (App. Br. 10), Appellant appears to be contending that a "treating assembly" encompasses an apparatus that is the combination of Hayashi's pretreating assembly and developing assembly. However, nothing in the claim precludes the "treating assembly" from being a pretreating assembly for pretreating the lithographic printing plate prior to developing, as long as the pretreating assembly comprises a "treating solution" for causing change to the plate "without developing" and a "transfer means" to transfer the plate to the exit of the pretreating assembly "without being developed," wherein the pretreating assembly "does not have 6 Appeal2014-004287 Application 13/194,918 a developing means" and is "not connected to any developing device." That is, claim 1 does not preclude a pretreating assembly separate and distinct from a developing assembly that 1) comprises a "treating solution" to cause change to the plate without developing the plate, since the plate will be developed later by a developing assembly; and 2) a "transfer means" that only transfer the plate through the pretreating assembly, and thus, does not transfer the plate through the developing assembly; 3) wherein the pretreating assembly "does not have a developing means" and is not directly "connected to a developing device," such that the developing can be done at a later time (claim 1 ). We also note that claim 1 does not define what it means to "caus[ e] a chemical or physical change to said plate without developing said plate." The Specification merely provides an example wherein "non-exposed areas can be developed to reveal the underneath substrate" (Spec. 2). Giving the term "developing" its broadest reasonable interpretation, we note claim 1 does not preclude "developing" from encompassing providing a "treating solution" to cause "a chemical or physical change" to a lithographic plate. Nevertheless, we agree with the Examiner's finding that Hayashi teaches or at least suggests the contested limitations of claim 1. In particular, Hayashi discloses a pretreatment assembly for treating a lithographic printing plate with a pretreatment liquid before development (i.e. without developing the printing plate), wherein the plate could be dipped in the pretreatment liquid in the pretreatment tank or the pretreatment liquid could instead be sprayed onto the plate (FF 3). That is, Hayashi discloses a pretreatment assembly before (i.e., separate and distinct from) a developing assembly (id.). Thus, we agree with the Examiner that Hayashi's 7 Appeal2014-004287 Application 13/194,918 pretreatment assembly (id.) is similar to Appellant's assembly for treating a lithographic printing plate after imagewise exposure and before development, wherein the treating assembly comprises transfer means for passing the plate through the treating solution in the treatment tank or a spray unit for supplying a treating solution to the plate without developing the plate (FF 1 ). Further, similar to Appellant's treating solution (FF 2), Hayashi's treatment solution can be a water-soluble organic compound having at least one carboxylic acid group (FF 5). As the Examiner points out, "the treating solution of Hayashi et al. is identical to that used by applicant" (Non-Final Act. 4). Thus, we find no error with the Examiner's reliance on Hayashi for teaching or at least suggesting a "treating solution" and a "transfer means," as recited in claim 1. Furthermore, the test for obviousness is not what each reference individually shows, but what the teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, even assuming arguendo that our reviewing court were to find Hayashi' s pretreatment assembly is not separate and distinct from (and thus is connected to) the developing assembly, we conclude that one of ordinary skill in the art, upon viewing Hayashi' s teaching of a pretreatment assembly for pretreating the lithographic plate before developing, would have found it obvious to provide a pretreatment assembly separate and distinct from a developing assembly. The Supreme Court has determined the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of 8 Appeal2014-004287 Application 13/194,918 demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The skilled artisan is "a person of ordinary creativity, not an automaton." Id. at 421. We are not persuaded, and Appellant has presented insufficient persuasive evidence, that providing an assembly for providing a treating solution that is not connected to a developing device is "uniquely challenging or difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Instead, we find that it would be obvious via routine experimentation to provide such developing device which is not used in the pretreatment process as a separate and distinct embodiment. We note that similar to Hayashi (FF 6), Appellant's invention also discloses a developing device on-press. Thus, assuming arguendo that our reviewing court were to find Hayashi' s pretreatment assembly is connected to a developing device, minor differences between the prior art and a claimed device may be a matter of design choice absent evidence to the contrary (see In re Rice, 341 F .2d 3 09, 314 ( CCP A 1965) ). As to Appellant's contention "Hayashi et al do not teach a drying unit for drying the plate after pretreatment and before development" (App. Br. 11 ), as the Examiner points out, "the rejection does not assert that Hayashi et al teach this limitation" (Ans. 3 (emphasis added)). We find no error with the Examiner's reliance on Hayashi for at least suggesting the contested limitation, wherein Appellant cannot attack the reference for what it fails to "teach[]." Merck, 800 F.2d at 1097. 9 Appeal2014-004287 Application 13/194,918 As the Examiner points out, "Hayashi et al. teach using a hot air drier as a fast way to dry" (Non-Fin Act. 5), and "Hayashi et al. show that it was known to dry a treated plate before being placed into the printer" (Ans. 3). We agree with the Examiner's finding "[o]ne having ordinary skill in the art would recognize that the chemicals used in the pretreatment solution, ... would not be desired in the printing press" as "the chemicals would have the unwanted effect of disturbing the chemical balance and other properties ... " (Non-Fin. Act. 5). We also agree "it would have been obvious to one having ordinary skill in the art to dry the plate after pretreatment and before mounting the plate on the press in order to remove organic solvents and water" in order to "to minimize the effect the pretreatment solution would have during the on-press developing or printing steps" (id.). We are persuaded that the Examiner has provided sufficient articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Accordingly, we find Appellant has not shown the Examiner erred in finding Hayashi teaches or at least would have suggested the contested limitations of claim 1. V. DECISION We affirm the Examiner's rejection of claim 1under35 U.S.C. Â§ 103(a). 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). AFFIRMED 10