Ex Parte Vest

Patent Trial and Appeal Board

Nov 24, 2014

12267642 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RYAN W. VEST ____________ Appeal 2013-000644 Application 12/267,642 Technology Center 1700 ____________ Before CHUNG K. PAK, TERRY J. OWENS, and N. WHITNEY WILSON, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal1 under 35 U.S.C. § 134(a) from the Examiner’s decision2 rejecting claims 1 through 4. We have jurisdiction under 35 U.S.C. § 6(b). 3 For the reasons set forth below, we AFFIRM and enter a new ground of rejection against claim 5 under 35 U.S.C. § 103(a) pursuant to 37 C.F.R. 1 Appeal Brief filed July 20, 2012 (“App. Br.”) at 2 and Reply Brief filed October 5, 2012 (“Reply Br.”) at 2-3. 2 Non-Final Rejection mailed May 14, 2012 (“NFR.”) at 1-6 and the Examiner’s Answer mailed September 19, 2012 (“Ans.”) at 3-9. 3 Although the action appealed from was a non-final rejection, we have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134 because the claims have been twice presented and rejected. See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994). Appeal 2013-000644 Application 12/267,642 2 § 41.50(b). STATEMENT OF THE CASE The subject matter on appeal is said to be an improvement over a conventional method of thermally developing a flexographic printing involving the removal of uncured portions of the photopolymer by using an absorbent sheet material (i.e., a blotting material). (Spec. 4, ll. 10-30.) The uncured portion of the photopolymer is known to be transferred to the absorbent sheet material upon maintaining intimate contact of the absorbent sheet material (the blotting material) with the photocurable layer. (Spec. 4, ll. 10-17.) Upon separating the absorbent sheet material from the cured photopolymer layer in contact with a support layer, the absorbent sheet material is said to reveal a relief structure, i.e., the image created on the absorbent sheet material by the transferred uncured (non-crosslinked) photopolymer material. (Spec. 4, ll. 10-20.) To obscure or hide the image left on the absorbent sheet or blotter material for the security purpose, the improvement of the invention covered by the appealed subject matter is said to be in employing a dark colored absorbent sheet material (a dark colored blotter material), such as black, blue, brown, or green colored absorbent sheet material (blotter material) comprising paper or woven or non-woven fabrics. (Spec. 4, ll. 25-30, 5, ll. 17-20, and 11, ll. 4-10.) Details of the appealed subject matter are recited in representative claim 14 reproduced below from the Claims Appendix of the Appeal Brief: 4 Appellant has not separately argued the individual claims on appeal in their principal Brief. (App. Br. 5-12.) Therefore, for purposes of this appeal, we Appeal 2013-000644 Application 12/267,642 3 1. A method of developing a flexographic printing element which comprises cross-linked and non-crosslinked photopolymer, the method comprising the steps of: a) supporting the flexographic printing element; b) melting or softening non-crosslinked photopolymer on the flexographic printing element; c) causing contact between the surface of the flexographic printing element and a web of blotting material supported by at least one roll; and d) rotating the at least one roll against at least a portion of the surface of the flexographic printing element to remove non-crosslinked photopolymer from the flexographic printing element and transfer the non- crosslinked photopolymer to the web of blotting material; wherein the web of blotting material is colored in such a manner that the image created on the web of blotting material by the transferred non-crosslinked photopolymer is not discernable by the unaided human eye. [(App. Br. 13(emphasis added).)] Appellant seeks review of the Examiner’s rejection of claims 1 through 4 under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Johnson (U.S. Patent 6,797,454 B1 issued to Johnson et al. on September 28, 2004) and Brown (“Paper, Pasteboard, and Papier Mache,” Patents for Inventions, Abridgement of Specifications, Parts 2-3, No. 1192, Brown et al., Great Britain Patent Office, p. 212 (May 12, 1864)) maintained in the Answer. (App. Br. 4 and Reply Br. 3.) DISCUSSION Upon consideration of the evidence on this record and each of confine our discussion to independent claim 1. See, e.g., 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2013-000644 Application 12/267,642 4 Appellant’s contentions,5 we find that the preponderance of evidence supports the Examiner’s determination that the collective teachings of Johnson and Brown would have rendered the subject matter recited in claims 1 through 4 obvious within the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s rejection of the claims on appeal for the reasons set forth in the Non-Final Rejection discussed above and the Answer. We add the following primarily for emphasis and completeness. There is no dispute that Johnson, like Appellant’s admitted prior art at page 4 of the Specification, teaches a method of thermally developing a flexographic graphic element corresponding to the claimed method, except that its blotting web material is not expressly mentioned to be “colored in such a manner that the image created on the web of blotting material by the transferred non-crosslinked photopolymer is not discernable by the unaided human eye” as required by the claims on appeal. (Compare Ans. 2-3 with App. Br. 4-12.) Thus, the issue raised by Appellant is: Has the Examiner erred in determining that one of ordinary skill in the art, armed with the knowledge imparted by Johnson and Brown, would have been led to employ a dark colored or black blotting material as the blotting material in the method of 5Any arguments not timely presented in the Principal Brief will not be considered, when filed in in the Reply Brief, absent a showing of good cause explaining why the arguments could not have been presented in the Principal Brief. Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). Appeal 2013-000644 Application 12/267,642 5 thermally developing a flexographic printing element taught by Johnson? On this record, we answer this question in the negative. Although Appellant, at page 7 of the Appeal Brief, contends that “typical blotting materials for thermally developing flexographic printing element are white woven [absorbent] fabrics” (emphasis added), Johnson does not limit its blotting material to any specific color. Moreover, when the typical white absorbent fabrics were conventionally used as the blotting material in a method of thermally developing a flexographic printing element, as argued by Appellant, one of ordinary skill in the art would have readily noticed the image, i.e., the flexographic printing element, created on the typical white blotting fabrics by the transferred uncured (non- crosslinked) photopolymer material through simple observation of the resulting blotting fabrics prior to discarding them. In re Ludwig, 353 F.2d 241, 244 (CCPA 1965) (holding that discovery of a problem readily noticeable by one of ordinary skill in the art does not impart patentability). As found by the Examiner at page 3 of the Answer, Brown6, like Appellant, teaches using black colored or dark colored blotting material that approximate the color of the printing or writing element to render the image 6 Appellant does not argue that Brown is non-analogous art in the Appeal Brief. To the extent that Appellant may have impliedly made such argument in the Appeal Brief as can be seen from the belated arguments at page 5 of the Reply Brief, we find that Brown is analogous art because it “is reasonably pertinent to the problem with which the inventor was [involved]” as required by In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006). As found by the Examiner at page 3 of the Answer, Brown, like the inventors, is interested in using dark colored blotting materials to render the image created on the blotting material by the transfer of the blotted material (ink writing or non-crosslinked photopolymer) invisible or nearly invisible to the unaided human eye for the security purpose. Appeal 2013-000644 Application 12/267,642 6 (the printing or writing content) left on the blotting material invisible or nearly invisible. Thus, on this record, we determine that one of ordinary skill in the art would have been led to employ dark colored or black blotting absorbent fabrics as the blotting material in the method of thermally developing a flexographic printing element taught by Johnson, with a reasonable expectation of successfully and advantageously removing the non- crosslinked (uncured) photopolymer and rendering the image created on the blotting material by the transferred non-crosslinked photopolymer not discernable by the unaided human eye for the security purpose as required by claims 1 through 4 on appeal. Pursuant to 37 C.F.R. § 41.50(b), we also enter a new ground of rejection against claim 5 under 35 U.S.C. § 103(a) for the reasons indicated above. As indicated supra, Appellant acknowledges that the use of absorbent fabrics as blotting materials in a method of thermally developing a flexographic printing element, such as that taught by Johnson, was known at the time of the invention. (Spec. 4 and App. Br. 7.) Thus, we determine that one of ordinary skill in the art would have been led to employ dark colored or black absorbent fabrics as the blotting material in the method of thermally developing a flexographic printing element taught by Johnson, with a reasonable of expectation of successfully and advantageously removing non- crosslinked photopolymer and rendering the image created on the blotting material by the transferred non-crosslinked photopolymer not discernable by the unaided human eye for the security purpose. Appeal 2013-000644 Application 12/267,642 7 ORDER Upon consideration of the record, and for the reasons given above and in the Answer, it is ORDERED that the decision of the Examiner to reject claims 1 through 4 under 35 U.S.C. § 103(a) is AFFIRMED; and FURTHER ORDERED that pursuant to 37 C.F.R. § 41.50(b), a new ground of rejection against claim 5 under 35 U.S.C. § 103(a) is ENTERED. In addition to affirming the examiner’s rejection of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should the Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the Appeal 2013-000644 Application 12/267,642 8 prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If the appellant elects prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Board of Patent Appeals and Interferences for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED; 37 C.F.R. § 41.50(b) cdc