Ex Parte Teng

Patent Trial and Appeal Board

Jan 7, 2015

12334774 (P.T.A.B. Jan. 7, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/334,774 12/15/2008 Gary Ganghui Teng GT-59 8888
75816 7590 01/08/2015
GARY GANGHUI TENG
14 Joslin Ln.
Southborough, MA 01772
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
01/08/2015 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
____________

Appeal 2013-001866
Application 12/334,774
Technology Center 2800
____________
Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner has finally rejected claims 1, 3‒5, 9‒16, and 20‒24 of
Application 12/334,774 under 35 U.S.C. § 103(a) as obvious. Final Office
Action (“Final Act.”) 2, 11 (April 27, 2012). Appellant seeks reversal of
these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’774 Application describes methods for processing a lithographic
printing press plate. Spec. 1. In particular, it describes methods for on-press
development of laser-sensitive lithographic plates through the use of a plate
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holder, i.e., a light-tight box, to transfer the exposed plate from the imager to
the lithographic press. Id.
Claim 1 is representative of the ’774 Application’s claims and is
reproduced below:
1. A method of processing a lithographic printing plate,
comprising in order:
(a) providing a lithographic plate comprising (i) a substrate
and (ii) a photosensitive layer; said photosensitive layer
being capable of hardening (for negative plate) or
solubilization (for positive plate) upon exposure to a laser
having a wavelength selected from 200 to 1200 nm, and
the non-hardened or solubilized areas of said
photosensitive layer being soluble or dispersible in ink:
and/or fountain solution;
(b) imagewise exposing said plate with said laser to cause
hardening or solubilization of said photosensitive layer in
the exposed areas;
(c) placing said exposed plate in a plate holder, wherein
said plate holder has a light-tight box having a light-tight
slot for sliding said plate into or out of said box, and said
light-tight slot allows said plate to slide into or out of
said box without letting light into said box;
(d) transferring said plate from said plate holder to mount
onto the plate cylinder of a lithographic press; and
(e) developing said plate with ink and/or fountain solution
on said lithographic press to remove the non-hardened or
solubilized areas of said photosensitive layer.
(App. Br. 25 (Claims App’x) (emphasis added).)
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 3‒5, 9‒13, 15, and 20‒24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Applicant’s
Admitted Prior Art (“AAPA”) and Teng ’516.1 Final Act. 211.
2. Claims 14 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of AAPA, Teng ’516, and Teng
’323.2 Final Act. 11.
DISCUSSION
Rejection 1. Claims 1, 3‒5, 9‒13, 15, and 20‒24 have been rejected
as obvious over the combination of AAPA and Teng ’516. Final Act. 2.
Appellant argues for reversal of this rejection on the basis of a claim
limitation that is common to claims 1, 23, and 24—the ’774 Application’s
independent claims. (App. Br. 9‒15.) We, therefore, limit our discussion to
claim 1 with the understanding that our reasoning also applies to claims 23
and 24.
In rejecting claim 1, the Examiner found that the AAPA describes a
method comprising steps (a), (b), and (e) of claim 1. Final Act. 2. The
Examiner also found that AAPA does not describe steps (c) and (d) of claim
1. Final Act. 3. The Examiner, however, further found that the AAPA
describes the photosensitivity of the photosensitive layer as requiring special

1 U.S. Patent No. 7,213,516 B1, issued May 8, 2007.
2 U.S. Patent Application Publication 2007/0119323 A1, published May 31,
2007.
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handling of the lithographic plate between exposure of the plate and
mounting of the plate on the press for development of the image. Final Act.
3‒4. In particular, the AAPA describes the use of special lighting conditions
to protect photosensitive layer of the exposed-but-undeveloped plate. (Ans.
4.)
The Examiner found that Teng ’516 also describes the need for
special handling of the exposed lithographic plate between imaging and
developing apparatuses. Final Act. 3 (citing Teng ’516 col. 13, l. 56‒col. 14,
l. 6). The Examiner further found that Teng ’516 describes the use of a
light-tight box as an alternative to the use of special lighting conditions to
address this problem. Final Act. 3.
Finally, the Examiner concluded that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to use a light-
tight box to handle the exposed press plates between exposure and
development in the AAPA process to overcome the problem of limited
room-light stability. Ans. 45.
Appellant argues that the rejection should be reversed for any of four
reasons: (1) The combination of the AAPA and Teng ’516 does not result
in the claimed method of placing an exposed plate in a light-tight box before
moving the plate to a press for on-press development; (2) the AAPA and
Teng ’516 are not combinable; (3) the AAPA and Teng ’516 do not provide
a motivation for putting the exposed plate in a light-tight box before
development; and (4) two of the Examiner’s factual findings are erroneous.
(App. Br. 9‒16.) For the following reasons, we are not persuaded by any of
these arguments.
First, Appellant argues that the combination of AAPA and Teng ’516
does not lead to the claimed method. (App. Br. 9‒11.) In particular,
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Appellant argues that “[n]either AAPA nor Teng ’516 discloses [the
claimed] method . . . .” (Id. at 9.)
We are not persuaded by this argument. In an obviousness
determination, a combination of references must be considered for what the
combination of disclosures taken as a whole would suggest to one of
ordinary skill in the art. See, e.g., In re McLaughlin, 443 F.2d 1392, 1395
(CCPA 1971).
Here, the Examiner found—and Appellant does not dispute—that the
AAPA described on-press development of an exposed lithographic plate.
Teng ’516 describes the use of a light-tight box to protect the exposed
lithographic plate from light until either the plate is developed off-press or
the photosensitive layer is deactivated. In view of these descriptions, we
neither discern nor has Appellant persuaded us that the Examiner erred in
concluding that use of a light-tight box to protect an exposed photosensitive
plate while it is being moved to the press for on-press development would
have been obvious to a person of ordinary skill in the art considering the
combined descriptions of the AAPA and Teng ’516.
Second, Appellant argues that Teng ’516 cannot be combined with the
AAPA. (App. Br. 11‒12.) Appellant bases this argument upon differences
between the AAPA and Teng ’516. (Id.) Appellant does not provide any
technical reason why the process described in the AAPA could not be
modified in the manner suggested by the Examiner. Indeed, Teng ’516
provides reasons why it might be desirable to modify the AAPA process.
See Teng ’516 col. 2, ll. 1‒18.
Thus, we are not persuaded by this argument.
Third, Appellant argues that the rejection should be reversed because
the AAPA and Teng ’516 do not provide a motivation for putting the
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exposed plate in a light-tight box before development. (App. Br. 12‒13.)
The Examiner responds that use of a known technique to improve similar
methods in the same way is obvious. (Ans. 14.)
We agree with the Examiner that using a light-tight box in the AAPA
process involves the use of a known step to accomplish a predictable result.
Such improvements likely are obvious. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007) (“The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.”). This is especially true when, as here, the prior art
describes a reason for making the modification. See Teng ’516 col. 2, ll. 1‒
18.
We, therefore, are not persuaded by this argument.
Fourth, Appellant argues that the Examiner’s factual determinations
regarding the content of Teng ’516 contain reversible error. (App. Br. 13‒
16.) Having reviewed the Examiner’s findings and Teng ’516 reference and
having considered Appellant’s arguments (id.; Reply Br. 7‒8) and the
Examiner’s response thereto (Ans.15‒16), we are not persuaded that the
Examiner reversibly erred in the manner argued by Appellant.
In view of the foregoing, we affirm the rejection of claims 1, 3‒5, 9‒
13, 15, and 20‒24.
Rejection 2. Claims 14 and 16 were rejected as obvious over the
combination of AAPA, Teng ’516, and Teng ’323. Final. Act. 11; Ans. 12.
Appellant presents the same arguments for reversal of this rejection that we
previously found unpersuasive in connection with Rejection 1. Therefore,
we also affirm the rejection of claims 14 and 16.
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CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1,
3‒5, 9‒16, and 20‒24 of ’774 Application.
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

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