Ex Parte Vrotacoe et al

Patent Trial and Appeal Board

Oct 24, 2013

11810036 (P.T.A.B. Oct. 24, 2013)

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.
11/810,036 06/04/2007 James Brian Vrotacoe 6003.1052 1843
23280 7590 10/24/2013
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
HINZE, LEO T
ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
10/24/2013 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 JAMES BRIAN VROTACOE,
KENT DIRKSEN KASPER, and
DAVID ROBERT DAWLEY
____________

Appeal 2011-008359
Application 11/810,036
Technology Center 2800
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
GEORGE C. BEST, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-6, 10, 11, 13, 15-17, 27-32, and 34-37. We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellants claim an ink form roller comprising a hollow core 30, a
first layer 32 surrounding the core and having a certain hardness, and a
second layer 34 surrounding the first layer and having a hardness greater
than the first layer, wherein the ink form roller has "a line load between
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Application 11/810,036

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about one pound per linear inch and about five pounds per linear inch during
printing" (independent claim 1, Fig. 2) and a printing press comprising such
ink form roller (independent claim 13). Appellants also claim a method for
printing which comprises transferring ink from an ink form roller to a
printing plate wherein during printing the ink form roller has the previously
recited line load (remaining independent claim 27).
A copy of representative claims 1 and 27, taken from the Claims
Appendix of the Appeal Brief, appears below.
1. An ink form roller in a printing press comprising:
a hollow core;
a first layer surrounding part of the core, the first layer having a 25 to
40 Shore A durometer hardness; and
a second layer surrounding part of the first layer, the second layer
having a durometer hardness greater than the first layer;
the ink form roller having a line load between about one pound per
linear inch and about five pounds per linear inch during printing.

27. A method for printing comprising the steps of:
providing an ink form roller, the ink form roller including a first layer
surrounding part of a hollow core and a second layer surrounding part of the
first layer, the second layer having a durometer hardness greater than the
first layer;
providing a plate cylinder having a printing plate mounted on an outer
surface of the plate cylinder, the plate cylinder forming a nip with the ink
form roller;
applying ink to the ink form roller; and
transferring ink from the ink form roller to the printing plate, during
printing the ink form roller having a line load between about one pound per
linear inch and about five pounds per linear inch, resulting from pressure
applied at the nip.

The Examiner rejects independent claims 1 and 13 under 35 U.S.C.
§ 102(b) as anticipated by MacLeod (US 3,152,387, patented Oct. 13, 1964)
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Application 11/810,036

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and rejects remaining independent claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Kamoda (US 6,058,837, patented May 9, 2000) in view of
Suzuki et al. (Suzuki, US 5,376,448, patented Dec. 27, 1994) and MacLeod
and rejects the remaining claims on appeal under § 102 or § 103 over these
references alone or in combination with additional prior art.
The § 102 rejection of independent claims 1 and 13 is based on the
Examiner's position "it appears that this roller [of MacLeod] could be used
in a printing machine at line loads between one pound per linear inch and
five pounds per linear inch [as claimed]" (Ans. 4).
Appellants persuasively argue that MacLeod contains no disclosure
regarding line loads and that the Examiner's above position is "completely
speculative" (App. Br. 7) and without "any actual evidence or technical
reasoning" (id.). In responding to this argument, the Examiner contends that
an isolated roller cannot have a line load and accordingly that the claim
limitation under review "can be nothing more than an intended use of the
roller" (Ans. 17). The Examiner's contention is without convincing merit.
The line load recitation of roller claim 1, as well as printing press claim 13,
defines a required characteristic which the claimed roller must possess and
exhibit during a printing operation.
For the above reasons, we will not sustain the § 102 rejection of
independent claims 1 and 13 as anticipated by MacLeod or the § 102 and
§ 103 rejections of various dependent claims based on MacLeod alone or in
combination with additional prior art.
The § 103 rejection of remaining independent claim 27 is based on the
Examiner's conclusion that "[i]t would have been obvious . . . to modify
Kamoda wherein the nip pressure [i.e., line load] is between about one
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Application 11/810,036

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pound per linear inch and about five pounds per linear inch, as this value
could easily be determined by one having ordinary skill in the art through
routine experimentation" (Ans. 10).
We fully agree with Appellants' argument that the Examiner's
obviousness conclusion "is completely conclusory and is not supported by
the articulated reasoning required to establish a prima facie case of
obviousness" (App. Br. 13). See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) ("[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness") quoted with approval in KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 417-18 (2007).
In an attempt to support the obviousness conclusion, the Examiner
responds to this argument by stating "Appellant admits that it is known to
use a line load of 15 to 25 pounds per inch (Specification: ¶ 0031)" (Ans.
20). However, a prior art line load of 15 to 25 pounds per inch is far outside
of, and therefore would not have suggested, the claimed line load of about 1
to about 5 pounds per inch. See In re Sebek, 465 F.2d 904, 907 (CCPA
1972) (holding that a claimed range would not have been an obvious
optimization of a prior art range outside the claimed range).
It follows that we also will not sustain the § 103 rejection of
independent claim 27 as unpatentable over Kamoda, Suzuki, and MacLeod
or the rejections of various dependent claims over these references alone or
in combination with additional prior art.

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The decision of the Examiner is reversed.
REVERSED
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