Ex Parte Balmer et al

Board of Patent Appeals and Interferences

Jan 21, 2009

10961596 (B.P.A.I. Jan. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RODNEY P. BALMER, MICHAEL P. HAZELL, and
THOMAS R. MAWBY
____________

Appeal 2008-5576
Application 10/961,596
Technology Center 2800
____________

Decided: January 21, 2009
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Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the

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Examiner’s final rejection of claims 7-10, 13, and 14.1 (Examiner’s Answer
entered March 22, 2007, hereinafter “Ans.”). We have jurisdiction pursuant
to 35 U.S.C. § 6(b) (2002).
We AFFIRM.
THE INVENTION
Appellants’ claimed invention is directed to a method of printing with
a newspaper cold-set lithographic press including printing an absorbent
substrate with cold-set news ink. The method further includes printing at
least one of nonabsorbent and semi-absorbent substrates with an energy
curable ink composition. The energy curable ink composition comprises an
acrylate-functional derivative of soybean oil and one or more additional
acrylate-functional materials. The method also includes curing the ink on
the printed substrate with actinic radiation from a source located on the
press. (Spec. [0004]-[0006] and [0024]-[0027]).
Claims 7, 13, and 14, reproduced below, are representative of the subject
matter on appeal.
7. A method of printing with a newspaper cold-set
lithographic press, comprising steps of:

printing on the press an absorbent substrate with cold-set
news ink;

printing at least one of nonabsorbent and semi-absorbent
substrates on the press with an energy curable ink composition
comprising an acrylate-functional derivative of soybean oil and
one or more further acrylate-functional materials, curing the ink
on the printed substrate with actinic radiation from a source
located on the press.

1 Claims 1-6, 11, and 12 have been canceled. (Appeal Brief filed November
22, 2006, hereinafter “Br.,” 9 and 10).
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13. A method according to claim 7, wherein the actinic
radiation is electron beam radiation.

14. A method according to claim 7, wherein the source
comprises at least one UV lamp installed on each side of the
printed substrate.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ackerman US 3,673,140 June 27, 1972
Pennaz US 5,354,366 Oct. 11, 1994
Ishiguro US 5,376,237 Dec. 27, 1994
Meyer US 2001/0009706 A1 July 26, 2001
Appellants’ Admitted Prior Art (AAPA) in the Specification, ¶
[0002]2

There are three rejections under 35 U.S.C. § 103(a) on appeal: (1) the
Examiner rejected claims 7-10 as being unpatentable over Ackerman in view
of Ishiguro and AAPA; (2) the Examiner rejected claim 13 as being
unpatentable over Ackerman in view of Ishiguro and AAPA, further in view
of Pennaz; and (3) the Examiner rejected claim 14 as being unpatentable
over Ackerman in view of Ishiguro and AAPA, further in view of Meyer.
The Examiner found that Ackerman teaches the claimed method
except that Ackerman fails to teach printing an absorbent substrate with
cold-set news ink and that the lithographic press used is a cold-set press.
(Ans. 4). The Examiner found that the modified Webendorfer press

2 We note that the Examiner’s Answer did not list AAPA in the Evidence
Relied Upon as required in the MPEP. (See MPEP § 1207.02, 8th Ed. Rev.
3, Aug. 2005). However, because both Appellants and the Examiner discuss
AAPA, we will treat this omission as harmless error.
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disclosed by Ackerman is a newspaper press and would have been used to
print newspapers. (Ans. 4 and 5). The Examiner also found that Ackerman
fails to disclose that the printing method involves printing more than one
type of substrate. (Ans. 5). The Examiner found that Ishiguro teaches that
cold-set inks have high production efficiency and that AAPA teaches
printing more than one job fills available downtime. (Ans. 5). The
Examiner concluded that it would have been obvious to use cold-set ink in
Ackerman’s press and to print more than one type of substrate, because of
the high production efficiency of cold-set inks and to fill available downtime
on the press. (Ans. 5).
The Examiner found that Ackerman in view of Ishiguro and AAPA
fails to teach the limitations of claims 13 and 14. (Ans. 5 and 6). The
Examiner found that Pennaz teaches that acrylic inks may be cured by either
ultraviolet (UV) or electron beam radiation, and determined that one of
ordinary skill in the art would have used electron beams to cure the inks,
because Pennaz teaches that UV and electron beam curing are equivalent.
(Ans. 6). The Examiner found that Meyer teaches exposing a UV-curable
web on both sides and concluded that it would have been obvious to use UV
lamps on both sides of the web in order to enhance and quicken the cure.
(Ans. 6).
Appellants contend that Ackerman does not disclose a cold-set press
or cold-set news ink. (Br. 5). Appellants argue that the press disclosed in
Ackerman’s examples, the Webendorfer press, is a heat set press, and not a
cold-set press because cold-set presses do not include dryers. (Br. 6; Reply
Brief, filed April 16, 2007, hereinafter, “Rep.,” 2). Appellants contend that
neither Ackerman nor Ishiguro teaches printing both news ink and energy
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curable ink on a cold-set lithographic press. (Br. 6). Appellants also argue
that Meyer is non-analogous art. (Br. 7, Rep. 3).

ISSUE
Have Appellants shown that the Examiner erred in concluding that it
would have been obvious to use Ackerman’s printing apparatus for printing
an absorbent substrate with cold-set news ink in view of Ishiguro and
AAPA?
Have Appellants shown that the Examiner erred in determining that
Meyer is analogous art?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification states:
[n]ewspapers are predominantly printed lithographically with
cold-set inks that set by penetration into the absorbent paper
stock. Printer[s] who print daily newspapers may devote
considerable press time to it, but those printer[s] who print
newspapers for smaller towns and cities that publish only
weekly or bi-weekly may find considerable downtime. The
presses represent a costly investment, and it is desirable to have
enough jobs to fill available time. Consequently, printers may
seek other jobs such as insert material, covers, and color
advertisements. Many of these print jobs, however, require
heatset equipment to print on coated stock for printed materials
with better gloss or better print definition. The cold-set process
is capable of printing only on uncoated (thus absorbent) stock.
(Spec. [0002]).

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2. Appellants’ Specification states that “[t]he inks of the invention are
lithographically printed onto a substrate, preferably using a cold-
set lithographic press augmented with an actinic radiation source
for curing the inks.” (Spec. [0024]).
3. Ackerman describes a process in which actinic curing printing ink
is printed on a coated (nonabsorbent or semi-absorbent) substrate
and cured. (Col. 1, ll. 5-8; col. 6, ll. 53-67).
4. Ackerman discloses that the printing methods “are adaptable to
conventional equipment.” (Col. 1, ll. 43-45).
5. Ackerman discloses that an advantage of the inventive process is
that it is a “relatively ‘cold’ process” and “does not deteriorate
paper substrates as the high temperatures of conventional drying
ovens tend to do.” (Col. 1, ll. 48-53).
6. Ackerman discloses that a Webendorfer web offset press, fitted
with mercury lamps, is used to carry out the process where the
dryer on the press is not used. (Col. 6, ll. 53-61).
7. Ishiguro discloses that it is conventional to use cold-set ink on
common newsprint because of production requirements and
printing costs. (Col. 1, ll. 18-22).
8. Ishiguro discloses that presses equipped with dryers utilize heat-set
ink to print newsprint. (Col. 1, ll. 31-35).
9. Pennaz teaches that acrylic inks may be cured by either ultraviolet
or electron beam techniques. (Col. 6, ll. 49-51).
10. Meyer describes coating substrates with UV curable material,
where both sides of the substrate are irradiated with ultraviolet
lamps. (¶ [0055]).
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PRINCIPLES OF LAW
In an obviousness rejection, the combination of references must be
considered as a whole, rather than the specific teaching of each reference. In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); In re Simon, 461 F.2d
1387, 1390 (CCPA 1972). In KSR, the Supreme Court explained, “[w]hen a
work is available in one field of endeavor, design incentives and other
market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1740 (2007). Further, the Court emphasized the need to
account for common sense when considering whether a combination of
references would have been obvious: “[c]ommon sense teaches, however,
that familiar items may have obvious uses beyond their primary purposes,
and in many cases a person of ordinary skill will be able to fit the teachings
of multiple patents together like the pieces of a puzzle.” Id. at 1742.
Determining whether a reference is non-analogous art is a two-fold
inquiry. First, we must decide if the reference is within the field of the
inventor’s endeavor; if it is not, we proceed to determine whether the
reference is reasonably pertinent to the particular problem with which the
inventor was involved. See In re GPAC Inc., 57 F.3d 1573, 1577 (Fed. Cir.
1995); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor’s endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).

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ANALYSIS
Appellants rely on similar arguments for each ground of rejection.
Accordingly, we confine our discussion to the first ground of rejection as
applied to appealed claim 7, and address the other grounds of rejection to the
extent Appellants have argued them separately pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).
Appellants’ arguments fail to consider the rejection as a whole. The
Examiner determined that in view of Ishiguro and AAPA, one of ordinary
skill in the art would have also used the modified Webendorfer press
disclosed in Ackerman as a cold-set lithographic press to print an absorbent
substrate with cold-set news ink in order to reduce downtime. (Ans. 5). The
Examiner also contends that the Webendorfer press is a newspaper press,
which one of ordinary skill in the art would have modified to print cold-set
ink. (Ans. 8). Appellants have not sufficiently rebutted the Examiner’s
rationale. Although the unmodified Webendorfer press may have originally
been used as a heat-set press, both the Examiner’s rationale and Ackerman
are consistent with the proposition that a familiar item may have obvious
uses beyond its primary purpose. See KSR, supra. Indeed, Ackerman
expressly demonstrates this proposition by teaching that the Webendorfer
press is modified to perform a cold process. (FF 3-6). In addition, Ishiguro
discloses that presses having dryers are conventionally used for printing
newsprint. (FF 8). Thus, there is no persuasive evidence on the record that
the Webendorfer press would be incapable of also functioning as a cold-set
lithographic press to print newspaper.
Regarding claim 14, Appellants additionally argue that Meyer is non-
analogous art. However, Appellants have not shown error in the Examiner’s
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determination that Meyer is reasonably pertinent to the problem of curing a
UV-curable web. (Ans. 9 and 10) Appellants argue that Meyer is not within
their field of endeavor, but have not sufficiently rebutted the Examiner’s
determination that Meyer would have commended itself to Appellants’
attention in curing both sides of the web.

CONCLUSION
Appellants have failed to demonstrate that the Examiner erred in
concluding that it would have been obvious to use Ackerman’s printing
apparatus for printing an absorbent substrate with cold-set news ink in view
of Ishiguro and AAPA.
Appellants have failed to show that the Examiner erred in determining
that Meyer is analogous art.

ORDER
We affirm the Examiner’s decisions rejecting claims 7-10 under 35
U.S.C. § 103(a) as being unpatentable over Ackerman in view of Ishiguro
and AAPA; claim 13 under 35 U.S.C. § 103(a) as being unpatentable over
Ackerman in view of Ishiguro and AAPA, further in view of Pennaz; and
claim 14 under 35 U.S.C. § 103(a) as being unpatentable over Ackerman in
view of Ishiguro and AAPA, further in view of Meyer.

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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)(iv).

AFFIRMED

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