Ex Parte Gottling et al

Board of Patent Appeals and Interferences

Apr 30, 2010

11015174 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOSEF GOTTLING, DIETER SCHMID,
JOSEF SCHNEIDER, and JURGEN SCHUSTER
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Appeal 2009-007572
Application 11/015,174
Technology Center 2800
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Decided: April 30, 2010
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Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
JEFFREY R. ROBERTSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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BACKGROUND
The invention relates to apparatus and corresponding method for
cleaning substrates such as rolls, cylinders, and printing forms.
Claim 1 is illustrative (emphasis added):
1. An apparatus for cleaning roll or cylinder surfaces or imaged
printing form surfaces comprising a supply of frozen water ice particles, a
blasting nozzle for discharging a pressurized jet of said frozen water ice
particles, said blasting nozzle being arranged to discharge the frozen water
ice particles at an angle relative to the surface to be cleaned such
that residue material on the surface to be cleaned is detached from the
surface.
The Examiner relies upon the following prior art references in the
rejection of the appealed claims:
Gasparrini 5,107,764 Apr. 28, 1992
Ohmori 5,147,466 Sep. 15, 1992
Verschueren US 2002/0104454 A1 Aug. 8, 2002

The Examiner has maintained, and Appellants seek review of, the
rejection of claims 1, 5, 9, and 11-14 under 35 U.S.C. § 103(a) as being
unpatentable over the combined prior art of Gasparrini and Ohmori. To
reject dependent claims 2-4, 6-8, and 10 under 35 U.S.C. § 103(a), the
Examiner added Verschueren to the combined prior art of Gasparrini and
Ohmori.
ISSUE ON APPEAL
Appellants argue all of the claims, whether rejected in the first or
second ground of rejection, as a group (App. Br. 3-4). Thus, in accordance
with 37 C.F.R. § 41.37(c)(1)(vii), we select independent claims 1 as the
representative claim on which our discussion will focus.
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The only argument presented in Appellants’ Appeal Brief is that the
rejection is improper because Ohmori is not analogous art (see generally
App. Br.).
Accordingly, the sole issue on appeal is:
Has the Examiner erred in his determination that the claimed
invention is obvious because Ohmori is not analogous art?
We answer this question in the negative.
FINDINGS OF FACT (FF)
Findings of fact throughout this opinion are supported by a
preponderance of the evidence.
We rely upon the factual findings of the Examiner as set out in the
Final Office Action and the Answer, including the Response to Argument
section (Final Office Action pp. 2-4; Ans. pp. 3-6). We add the following
primarily for emphasis.
One of ordinary skill in the art would have been well aware that dry
ice particles (that is, the frozen CO2 particles as exemplified in Gasparrini)
and frozen water ice particles (as exemplified in Ohmori) are both useful for
cleaning various substrates via a pressurized blasting nozzle.
PRINCIPLES OF LAW
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection." In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
The “field of endeavor” test asks if the structure and function of the
prior art is such that it would be considered by a person of ordinary skill in
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the art because of the similarity to the structure and function of the claimed
invention as disclosed in the application. In re Bigio, 381 F.3d 1320, 1325-
27 (Fed. Cir. 2004).
ANALYSIS
Appellants contend that Ohmori is nonanalogous art because it is
concerned with cleaning a semiconductor device, not cleaning ink residues
of printing rolls (App. Br. 3). This contention is not persuasive of reversible
error, since as the Examiner pointed out, both Gasparrini and Ohmori are
directed to the problem of cleaning a substrate and both use a blasting nozzle
of pressurized frozen particles (Ans. 6). Furthermore, the correct focus is
whether the references are analogous art to the claimed subject matter. In re
Kahn, 441 F.3d at 986-87. Under the correct focus, Appellants’ argument is
also unavailing since claim 1 is not limited to cleaning a printing roll, rather,
the claimed invention encompasses “for cleaning roll or cylinder surfaces or
imaged printing form surfaces” (claims 1, see also independent claims 11,
12; emphasis provided).
Accordingly, we determine that Ohmori is not only “reasonably
pertinent to the problem with which the inventor was concerned” but is also
in the same “field of endeavor” as claimed. In re Kahn, 441 F.3d at 986-87.
The Examiner’s position that one of ordinary skill in the art would
have appreciated that the frozen water ice particles of Ohmori may be useful
in any application for cleaning a substrate, including the roll of Gasparrini, is
reasonable. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 420-421 (2007)
(one of ordinary skill in the art is “also a person of ordinary creativity, not an
automaton”). The use of pressurized frozen water ice appears to be no more
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than the predictable use of such a material for its established function of
cleaning a substrate. Id. at 417.
In light of these circumstances, the weight of the evidence supports
the Examiner’s determination that the use of a supply of frozen water ice
particles to clean a roll would have been prima facie obvious.
In response to the Examiner’s Answer, Appellants, in the Reply Brief,
for the first time raises new arguments not previously presented in the
principal Brief.1 The Examiner's statement of rejection and thrust of the
rejection presented in the Answer appears to be the same as the statement of
the rejection presented in the Final Rejection. Appellants have not identified
new arguments presented in the Answer or provided a showing of good
cause explaining why the argument could not have been presented in the
Principal Brief. On this record, Appellant's new arguments are belated.
Under regulations governing appeals to the Board, any argument not
timely presented in the Principal Brief will not be considered when filed in a
Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Principal Brief, as explained more fully
in Ex Parte Borden, No. 2008-004312, 2010 WL 191083, at *1-5 (BPAI Jan.
07, 2010) and Ex Parte Nakashima, No. 2009-001280, 2010 WL 191183 at
*3-5 (BPAI Jan. 07, 2010) (informative ops).

1 For example, Appellants state "[t]he Examiner asserts in his answer that
the combination of Gasparini and Ohmori is well taken because it would
provide the advantage of an alternative cleaning fluid or cleaning particles
giving the user a choice of frozen particles that clean a surface of a roll or a
cylinder.” (Reply Br. 3). This analysis of the references by the Examiner
was first presented in the Final Rejection (see page 2).
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Accordingly, we will not consider the new arguments made in the
Reply Brief.

We therefore affirm the Examiner’s rejections of all the claims under
35 U.S.C. § 103.

ORDER
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).
AFFIRMED

PL Initial:
sld

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