Ex parte Buschulte

Board of Patent Appeals and Interferences

Apr 14, 1998

08020570 (B.P.A.I. Apr. 14, 1998)

Application for patent filed February 22, 1993. 1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RAINER BUSCHULTE
_____________
Appeal No. 96-3101
Application 08/020,5701
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge and
FRANKFORT and NASE, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 30 under 35 U.S.C.
§ 103. No other claims are pending in the application.
Appeal No. 96-3101
Application 08/020,570
2
Appellant’s invention relates to a circuit arrangement
having an array of electrical circuits (21) for forming a
reversible image on a printing form (2) in a printing machine.
The printing form has a surface matrix (1) in which discrete
regions or image points (3) define the image. Each electrical
circuit is associated with a separate region or image point in
the surface matrix. According to appealed claim 1, the only
independent claim on appeal, each electrical circuit includes
at least one threshold value switch (R1, R2 or R3). Claim 1
recites that the resistance of the threshold value switch is
varied between low and high resistance states by a triggering
operation to activate and deactivate the associated region or
image point in the matrix.
A copy of appealed claim 1, as this claim appears in
the appendix to appellant’s brief, is appended to this
decision.
The following reference is relied upon by the examiner
as evidence of obviousness in support of his rejection under
35 U.S.C. § 103:
Appeal No. 96-3101
Application 08/020,570
According to the PTO translation branch, U.S. Patent No. 5,109,240 (copy2
attached), which has now been cited by the examiner on page 2 of his answer in this
appeal, is the equivalent of this European patent document. Our understanding of the
European patent document is based on Patent No. 5,109,240.
3
European Patent Application 0 367 048 Oct. 21, 19892
Appealed claims 1 through 30 stand rejected under 35
U.S.C. § 103 as being unpatentable over the cited European
patent document. The examiner’s main position is that the
threshold value switch recited in claim 1 does not distinguish
from the transistor 16 in each of the image point addressing
circuits in the European patent document (see pages 4 and 5 of
the answer). In particular, the examiner has made the
following findings with regard to this reference:
European patent 367 048 contains a circuit
similar to applicant’s for controlling
activated regions of a print form. As shown
in figure 2, each region of the surface
matrix is addressable by specific voltage
applications to the appropriate transistor.
The transistors act as switches to each
point on the matrix while the capacitors
are used to store a charge that indicates
that the given point is activated. All
points that are ?activated? will attract and
Appeal No. 96-3101
Application 08/020,570
4
hold ink. Once all the activated points
have been charged, the print form is used
to print the desired image. This circuit
arrangment [sic, arrangement] of the <048
patent ?activates and de-activates regions
of a surface matrix? as claimed. The
transistors used in <048 act as the recited
?threshold value switches?. As is
conventional in the art of electronic
switching, transistors are used to switch
between on and off states. When no voltage
is applied to the gate of the transistors,
they are in a non-conducting (high
resistance or off) state. When a positive
voltage is applied to the gates of the
transistors in the <048 circuit, the
transistors are in a low resistance
conducting ?on? state. Therefore the
transistors in <048 act as the recited
?threshold value switches?. [Answer, page
3.]
We have carefully considered the issues raised in this
appeal together with the examiner’s remarks and appellant’s
arguments. As a result, we will sustain the rejection of
claims 1 through 12 and 14 through 30, but not the rejection
of claim 13.
In presenting various arguments in the argument section
commencing on page 26 of the brief, appellant does not
expressly refer to any particular claim with the exception of
Appeal No. 96-3101
Application 08/020,570
5
claim 1. With regard to claim 1 (see page 30 of the brief),
the only limitation expressly argued as a distinction over the
European patent document is the recitation that the resistance
of the threshold value switch is varied between its lower and
higher resistance states for activating and deactivating the
associated image point or ?region? as it is called in the
claim. We cannot agree with appellant’s position for the
reasons stated by the examiner as quoted supra. When rendered
conductive by a triggering voltage, the transistor 16 of the
European patent document will have a low resistance state, and
when rendered nonconductive by reducing the base or gate
voltage to zero, the transistor 16 will have a high resistance
state.
Admittedly, the transistor 16 in the addressing circuit
of the European patent document is a three terminal device,
not a two terminal device as argued by appellant on page 28 of
the brief. However, none of the appealed claims is limited to
a two terminal switch with the exception of claim 13.
Therefore, as far as claims 1 through 12 and 14 through 30 are
concerned, this argument, like others made in the argument
Appeal No. 96-3101
Application 08/020,570
6
section of the brief, is without merit because it is well
established patent law that features not claimed may not be
relied upon to support patentability. See In re Self, 671 F.2d
1344, 1348, 213 USPQ 1, 5 (CCPA 1982) and In re Richards, 187
F.2d 643, 644-45, 89 USPQ 64, 66 (CCPA 1951).
Appellant’s argument on page 26 of the brief that the
European patent document ?does not . . . . have hydrophilic
and hydrophobic image points? is also without merit. In the
first place, none of the appealed claims requires that the
image points or ?regions,? as they are called in the claims, be
hydrophilic or hydrophobic. Accordingly, this feature also may
not be relied upon to support patentability. Id.
Furthermore, contrary to appellant’s argument, the
European patent document does disclose that the image points
or ?domains,? as they are called in this patent document,
become hydrophobic upon being depolarized and, conversely,
hydrophilic upon being polarized. See column 2, lines 40-49 of
Appeal No. 96-3101
Application 08/020,570
7
Patent No. 5,109,240.
On pages 27-29 of the brief, appellant asserts that the
use of a threshold value switch as an addressing device has an
advantage which is lacking in the addressing circuit of the
European patent document. In particular, appellant asserts on
page 29 of the brief that:
[u]sing such a threshold value switch as an
addressing device has the significant
advantage that the threshold value switch,
once it has been addressed by the voltage
pulse, ?remembers? that is [sic, it] has
been selected and in this manner it
maintains the selected matrix point in the
selected state until it is later turned
off.
With further regard to this addressing feature, appellant
states:
When a new image is to be printed, the
plate is again being addressed, and
Appeal No. 96-3101
Application 08/020,570
8
according to an important feature the
addressing can be performed while the old
image is still being printed. This is
possible because the addressing does not
immediately affect the printing plate,
since the addressing time takes about 15
minutes.
These arguments regarding the addressing feature are also
unpersuasive. In the first place, it is significant to note
that this addressing feature is not expressly disclosed in
appellant’s specification. In fact, appellant does not even
explain how the low resistance state of the threshold switches
R1 and R3 can be maintained if the addressing state on the
associated X address line 24 is changed to a logical 0 (i.e.,
zero volts). More importantly, the argued addressing feature
is not recited in the appealed claims. Nor is it necessarily
inherent from the claimed details of the electrical circuit.
Appellant’s arguments regarding this feature, therefore, are
simply not commensurate with the scope of the claimed
invention.
For the foregoing reasons we will sustain the examiner’s
§ 103 rejection of claims 1 through 12 and 14 through 30, it
Appeal No. 96-3101
Application 08/020,570
9
being noted that the patentability of claims 2 through 12 and
14 through 30 have not been separately argued. See In re
Nielson,
816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987) and
In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA
1979).
With regard to claim 13, the examiner presents no reason
why it would have been obvious to employ varistors in the
addressing circuit of the European patent document. Such a
modification is not suggested by the prior art especially in
view of the fact that it would require a complete redesign of
the circuit in the European patent document. We therefore must
reverse the § 103 rejection of claim 13.
The examiner’s decision rejecting the appealed claims is
affirmed with respect to claims 1 through 12 and 14 through
30, but is reversed with respect to claim 13.
Appeal No. 96-3101
Application 08/020,570
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
HARRISION E. McCANDLISH, Senior )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Appeal No. 96-3101
Application 08/020,570
11
Administrative Patent Judge )
LERNER and GREENBERG
P.O. Box 2480
Hollywood, FL 33022-2480
Appeal No. 96-3101
Application 08/020,570
12
APPENDIX
1. Circuit arrangement for a reversible image
build-up of a surface matrix of a printing form for a printing
machine, wherein the surface matrix has regions which are
activatable and de-activatable by repeated triggering, the
circuit arrangement including a respective electrical circuit
operatively associated with every region of the surface matrix
activatable and de-activatable by the repeated triggering,
comprising at least one threshold value switch with variable
resistance states connected in each of the electrical
circuits, said threshold value switch having a switching state
variable by the triggering for varying the resistance of said
threshold value switch between a lower and a higher resistance
state for respectively activating and de-activating the region
operatively associated therewith.