Ex Parte Cyman et al

Patent Trial and Appeal Board

Sep 24, 2014

11709497 (P.T.A.B. Sep. 24, 2014)

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.
11/709,497 02/21/2007 Theodore F. Cyman JR. 27600/X137A 3246
29471 7590 09/25/2014
MCCRACKEN & FRANK LLC
P.O. Box 787
Elmhurst, IL 60126
EXAMINER
BANH, DAVID H
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
09/25/2014 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 THEODORE F. CYMAN JR. and
ANTHONY B. DeJOSEPH
____________

Appeal 2012-008231
Application 11/709,4971
Technology Center 2800
____________

Before CHUNG K. PAK, LINDA M. GAUDETTE, and
N. WHITNEY WILSON, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeals under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 46 through 54 and 73 through 84, which
are all of the claims pending in the above-identified application. We have
jurisdiction under 35 U.S.C. § 6.

1 According to Appellants, the Real Party in Interest is Moore Wallace North
America, Inc., a subsidiary of R.R. Donnelley. (Appeal Brief filed August
23, 2011 (“App. Br.”) at 2.)
Appeal 2012-008231
Application 11/709,497

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STATEMENT OF THE CASE
The subject matter on appeal is directed to a method involving high
speed variable lithographic quality printing. (Spec. 4, ¶ [0011].) Figure 2,
which is illustrative of the appealed subject matter, is reproduced below:

Figure 2 depicts a high speed variable printing apparatus identified as
lithographic deck 200 which is identical to a conventional lithographic deck,
except for using aqueous jet system 214 and cleaning system 212, in lieu of
a dampening system. (Spec. 9, ¶ [0035].) Lithographic deck 200
comprising plate 204, plate cylinder 206, aqueous jet system 214, inking
system 202, cleaning system 212, and blanket and impression cylinders 208
and 210 for transmitting the image on plate cylinder 206 to web 216. (Spec.
9-11 and 14, ¶¶ [0035] and [0039].) “Plate 204 may be entirely hydrophilic
(e.g., a standard aluminum lithographic plate).” (Spec. 9, ¶ [0035].)
“Aqueous jet system 214 may contain a series of ink jet cartridges (e.g.,
bubble jet cartridges, thermal cartridges, piezoelectric cartridges, etc.)” and
“may be used to emit an aqueous solution (e.g., water, ethylene glycol,
propylene glycol, or any combination thereof.” (Spec. 9, ¶¶ [0036] and
[0037].)
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Application 11/709,497

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In operation of lithographic deck 200, aqueous jet system 214, which
may be electrically controlled by a data system, is used to print or jet a
negative image of the image to be printed on plate 204, which subsequently
receives ink from inking system 202. (Spec. 10-11, ¶¶ [0039] and [0040].)
In some circumstances, ink may be transferred to plate 204 and then aqueous
solution may be placed “on top of the ink layer at points that should not be
transferred to the web.” (Spec. 14-15, ¶ [0047].) As plate cylinder 206
completes its revolution, after transferring the image to blanket cylinder 208,
the surface of plate cylinder 206 “passes through cleaning system 212,
which may remove ink and/or aqueous solution residue so that plate cylinder
206 may be re-imaged by aqueous jet system 214 during the next revolution
(or after a certain number of revolutions).” (Spec. 11, ¶ [0041].)
Rather than using plate 204, “the surface of plate cylinder 206 may be
treated, processed, or milled to receive the aqueous solution from aqueous
jet system 214.” (Spec. 12, ¶ [0043].) In such and other situations, “blanket
cylinder 208 may be eliminated entirely, if desired, by transferring the image
directly to web 216.” (Id.) “In some embodiments, plate cylinder 206 may
have all of the static data for a particular print job etched onto plate 204 by
traditional lithographic techniques. (Spec. 12, ¶ [0042].) “Aqueous jet
system 214 may then be used to image only variable portions of the job
represent by the variable…image data on specified portions of plate 204.”
(Id.)
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Application 11/709,497

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Details of the appealed subject matter are recited in representative
claim 462 reproduced below (emphasis added):
46. A method of waterless printing, the method
comprising the steps of:
placing individual drops of an aqueous solution on an
area of an oleophobic surface wherein the area defines an
image to be produced, wherein placement of each drop on the
surface is individually controlled and wherein the aqueous
solution is oleophilic,
applying ink to the surface,
transferring ink from the surface to a print medium, and
cleaning aqueous solution and ink that remain on the
surface after transferring ink.

The Examiner maintains the following grounds of rejection in the
Examiner’s Answer mailed November 18, 2011 (“Ans.”):
1. Claims 46 through 51, 53, 54, 73 through 77 and 81 through 84
under 35 U.S.C. § 103(a) as unpatentable over Teng (U.S. Patent 6,566,039
B1 issued May 20, 2003) in view of Love, III (U.S. Patent 4,718,340 issued
January 12, 1988); and
2. Claims 51 and 78 through 80 under 35 U.S.C. § 103(a) as
unpatentable over Teng in view of Love, III and Matsumoto (U.S. Patent
5,221,330 issued June 22, 1993).

2 Appellants have not separately argued the claims on appeal. (App. Br. 5-
7.) Therefore, for the purposes of this appeal, we select claim 46 as
representative of the claims on appeal and decide the propriety of the
Examiner’s § 103(a) rejections based on claim 46 alone. See, e.g.,
37 C.F.R. § 41.37(c)(iv).
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Application 11/709,497

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DISCUSSION
Appellants rely on the same arguments directed to the § 103(a)
rejection of claim 46 based on the combination of Teng and Love, III to
show reversible error in the Examiner’s § 103(a) rejection based on the
combination of Teng, Love, III, and Matsumoto. (App. Br. 5-7.) Appellants
focus their arguments on the propriety of combining the teachings of Teng
and Love, III and do not challenge the Examiner’s findings or conclusions as
to the remaining reference, Matsumoto. (Id.)
Therefore, the dispositive question raised is: Have Appellants
identified reversible error in the Examiner’s determination that one of
ordinary skill in the art would have been led to combine the teachings of
Teng and Love, III, to arrive at the subject matter recited in claim 46? On
this record, we answer this question in the negative.
As recognized by both Appellants and the Examiner, Teng teaches a
variable data lithographic printing device comprising, inter alia, cylinder 10
having an external substrate surface, coating means 12, exposure means 14,
developing means 16, and inking means 18 capable of delivering ink or both
fountain solution and ink and erasing (cleaning) means 22 capable of
recovering the substrate surface. (Teng, col. 5, ll. 25-35 and Fig. 2.) During
a printing operation, Teng’s coating means 14 is used to apply coating fluid
30 to the external substrate surface of cylinder 10 to form a photosensitive
layer. (Teng, col. 5, ll. 44-47.) According to the Examiner, Teng’s coating
fluid and external substrate surface of cylinder 10 correspond to the
oleophilic aqueous solution and the oleophobic surface recited in claim 46.
(Ans. 4-5 and Teng, col. 16, ll. 5-24.) The photosensitive layer taught by
Teng is exposed to actinide radiation from exposure means 14, according to
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digital imaging information, to form hardened (exposed) areas 32 and non-
hardened (non-exposed) areas 34 with non-hardened areas 34 being removed
or etched by developing means 16. (Teng, col. 5, ll. 46-51.) Teng’s inking
means 18 applies ink to hardened areas 32 (formed with the aqueous
solution (oleophilic material)) to form ink imaging 36 which is transferred or
printed to object 50 (e.g., a web). (Teng, col. 5, ll. 51-55 and Fig. 2.) After
the printing or transferring ink imaging 36, the hardened photosensitive layer
and left over ink on the external substrate surface of Teng’s cylinder 10 are
cleaned off with erasing means 22, such as a blade or wiping means
involving a cloth or ribbon soaked with a solvent or a solution. (Teng, col.
5, ll. 54-57 and col. 6, ll. 30-34.)
The Examiner acknowledges that Teng does not teach forming an area
defining an image to be printed by “placing individual drops of an
[oleophilic] aqueous solution on an area of an oleophobic surface[,] wherein
placement of each drop on the surface is individually controlled” as recited
in claim 46. (Ans. 5.)
To remedy this deficiency in Teng, the Examiner relies upon the
disclosure of Love, III. (Id.) The Examiner finds, and Appellants do not
dispute, that Love, III teaches forming an area defining an image to be
printed on the oleophobic surface of a printing cylinder by “placing
individual drops of an [oleophilic] aqueous solution on an area of an
oleophobic [or hydrophilic] surface, wherein [such] placement of each drop
on the surface is individually controlled” as required by claim 46, prior to
applying an oleophilic ink for the printing purposes. (Compare Ans. 5 with
App. Br. 5-7; see also Love, III, col. 21, ll. 13-29, together with Love, III,
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Table 1 listing a hydrophobic material as the oleophilic aqueous solution
recited in claim 46 at cols. 7-10, and col. 12, 4-45.)
In carrying out such printing operation, Love, III, like Teng and
Appellants, describes using a variable data rotary (cylinder) lithographic
printing system in which control system 80 (e.g., a digital-type control
system) is used to control ink jet printing assembly or hydrophobic layer
application system 64 for applying a hydrophobic material (the aqueous
solution recited in claim 46) to an area that defines an image to be printed,
inking system 50 for applying an oleophilic ink on such area, and cleaning
system 62 for cleaning the surface of the printing cylinder or rotary for the
re-imaging purposes after transferring or printing an image to web 8 or 8a
via using roll 6 and/or roll 4 (Love, III, col. 19, ll. 12-68, col. 21, ll. 25-29,
and Fig. 7.) As argued by Appellants at pages 5-7 of the Appeal Brief,
Love, III encourages using its printing operation over that taught by Teng.
Thus, we find no reversible error in the Examiner’s determination that
one of ordinary skill in the art would have been led to employ the claimed
printing operation taught by Love, III, in lieu of the photo-induced printing
operation taught by Teng, in the variable data rotary (cylinder) printing
assembly taught by Teng and/or Love, III, with a reasonable expectation of
successfully printing various images via imaging and re-imaging the surface
of the printing cylinder or rotary.
CONCLUSION OF LAW AND DECISION
In view of the foregoing, we affirm the Examiner’s decision rejecting
the claims on appeal under 35 U.S.C. § 103(a).

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Application 11/709,497

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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).

AFFIRMED

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