Ex Parte Teng

Patent Trial and Appeal Board

Mar 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. § 134(a) from a non-final rejection
of claim 1. We have jurisdiction under 35 U.S.C. § 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;
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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. § 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. § 112(b) has been withdrawn
(Ans. 2).
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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-....._ :
"'!·.·.
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
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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).
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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
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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
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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
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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.
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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.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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