Ex Parte Muraoka

Patent Trial and Appeal Board

Sep 26, 2017

13581751 (P.T.A.B. Sep. 26, 2017)

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.
13/581,751 08/29/2012 Kouji Muraoka U 018692-9 4120
140 7590 09/28/2017
LADAS & PARRY LLP
1040 Avenue of the Americas
NEW YORK, NY 10018-3738
EXAMINER
BELL, WILLIAM P
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
09/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
nyuspatactions@ladas.com
nymail@ladas.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOUJI MURAOKA
Appeal 2017-001771
Application 13/581,751
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
February 25, 2015 decision finally rejecting claims 6—8 as unpatentable
under 35 U.S.C. § 103(a). We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the real party in interest as Shuhou Co., Ltd. (Appeal
Br. 2).
Appeal 2017-001771
Application 13/581,751
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to printing blankets in printing
devices, and methods of manufacturing printing blankets suitable for pad
printing (Spec. 11). Claim 6 is representative and is reproduced below from
the Claims Appendix of the Brief (emphasis added):
6. A method of manufacturing a printing blanket including
an elastic body having a substantially semi-cylindrical shape
and a sheet bonded to a side surface of the elastic body, the
sheet having a substantially arcuate cross section at a location
from an apex of the arcuate cross section to a position away
from the apex, the method comprising the steps of:
molding the elastic body having a substantially semi-
cylindrical shape;
forming the sheet having a predetermined size whose
thickness gradually decreases from the center towards the
sides',
placing the sheet on a flat surface or a concave surface;
pressing a side surface of the elastic body against the
placed sheet; and
applying an adhesive to one or both of the side surface of
the elastic body at a location between the apex and a position
away from the apex and a surface of the sheet against which the
elastic body is to be pressed, prior to the pressing step;
wherein the thickness of the sheet bonded to the side
surface of the elastic body by the pressing step at the apex and
the vicinity thereof is greater than the thickness at the position
away from the apex.
Appeal Br. (Claims App. 1).
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Application 13/581,751
REJECTIONS
(1) Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kare2 in view of Galassi,3 and further in view of Schaafsma.4
(2) Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kare, Galassi, Schaafsma, and further in view of Harmony.5
(3) Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kare, Galassi, Schaafsma, and further in view of Portelli6 and Shell.7
The Examiner finally rejected claims 6—8 under 35 U.S.C. § 112,12
as indefinite (Final Act. 2 (February 25, 2015)). Appellant amended claim 6
after entry of the Final Rejection (Amendment 3^4 (June 22, 2015)). The
amendment was entered by the Examiner (Appeal Br. 5). Appellant
implicitly argues that this amendment moots the rejection of claims 6—8
under 35 U.S.C. § 112,12 as indefinite {id. at 5).
Notwithstanding the Examiner’s statement that “[ejvery ground of
rejection set forth in the Office action dated 25 February 2015 from which
the appeal is taken is being maintained by the examiner . . .,” we regard the
rejection as having been withdrawn in view of the entered June 22, 2015
2 Kare, WO 02/45961 Al, published June 13, 2002.
3 Galassi, EP 0718098 A2, published June 26, 1996.
4 Schaafsma et al., US 2008/0105145 Al, published May 8, 2008.
5 Harmony, US 4,181,765, issued Jan. 1, 1980.
6 Portelli, FR 2686547 A3, published July 30, 1993. We will refer to the
translation, as does the Examiner, because Portelli is in French.
7 Shell, US 5,452,658, issued Sept. 26, 1995.
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Application 13/581,751
amendment (Ans. 2) and the Examiner’s failure to note its withdrawal as a
mistake.8
Appellant does not offer separate arguments in support of any of the
dependent claims; arguments are directed to limitations recited in
independent claim 6 (see generally Appeal Br. 5—7; Reply Br. 2—5).
Accordingly, our discussion will focus on Rejection (1) to claim 6.
DISCUSSION
Appellant does not dispute the propriety of the Examiner’s proposed
combination of Rare and Galassi, nor the Examiner’s finding that neither
prior art reference teaches “that the sheet has a thickness that gradually
decreases from the center towards the sides” (Appeal Br. 5; Final Act. 3—5).
The Examiner finds that Schaafsma explicitly discloses that “when
printing a print object on a convex surface, the inner core 120 includes a
concave surface matched to the convex surface of the print object” (Ans. 2,
citing Schaafsma 122). The Examiner further finds that Schaafsma “teaches
‘outer contact pad 110 can be shaped to be complementary to the print
object’ ... or, in the alternative, ‘non-complementary to the print object’”
having a convex surface, as shown in Figure 1A (Ans. 2—3, citing Schaafsma
122; claim 3; Fig. 1A).
The Examiner determines that it would have been obvious for the
ordinary skilled artisan “to form a printing pad with an inner core having a
concave surface and an outer core having a convex shape to achieve the
8 Although the Examiner’s statement excludes “. . . the grounds of rejection
(if any) listed under the subheading “WITHDRAWN REJECTIONS,” we
note that the Answer includes no such subheading.
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Appeal 2017-001771
Application 13/581,751
desired resiliency of the printing pad and the desired contact force between
the outer pad and the object being printed” (Ans. 3). According to the
Examiner, “[i]n such a configuration, the sheet forming the outer core would
have a thickness that gradually decreases from the center towards the sides
as required by claim 6” (id.).
Appellant argues, inter alia, that there is “nothing in the cited
paragraph [of] Schaafsma [that] points to use of a pad that is thicker at the
apex and becomes gradually thinner as one moves away from the apex as is
required by all of the claims under consideration” (Appeal Br. 7). Appellant
further argues that “there is no teaching, suggestion or motivation i[]n
Schaafsma or any of the references that the outer core should be selected to
achieve a desired resiliency or that a convex shape would achieve this”
(Reply Br. 3).9
Appellant’s arguments are persuasive.
It is well understood that “rejections 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.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The
9 We note that Appellant presents arguments for the first time in the Reply
Brief filed November 14, 2016, asserting that: (i) the rationale for combining
Rare, Galassi, and Schaafsma is internally inconsistent (Reply Br. 3); and
(ii) neither Rare, Galassi, nor Schaafsma discloses or suggests the claimed
steps of placing the sheet on a flat surface or a concave surface and pressing
a side surface of the elastic body against the placed sheet (id. at 4—5). It is
generally improper for Appellant to discuss for the first time in the Reply
Brief matters that could have been raised in the Appeal Brief. 37 C.F.R.
§ 41.41(b)(2).
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Appeal 2017-001771
Application 13/581,751
fact that a reference may be modified to reflect features of the claimed
invention does not make the modification, and hence the claimed invention,
obvious unless the prior art suggested the desirability of such modification.
In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990).
The Examiner has not provided adequate reasoning to explain why a
person of skill in the art would have modified the teachings of Kare and
Galassi in combination with two of the embodiments disclosed in
Schaafsma: (i) an inner core complementary to the shape of a print object,
e.g., the concave inner core follows the shape of a golf ball; and (ii) a
convex outer pad shaped to be non-complementary to the print object (see
Ans. 2—5; see also Schaafsma 122; claim 3; Fig. 1A). In particular, the
Examiner’s reasoning does not explain how such a configuration of shaped
inner and outer cores would provide the desired contact force between the
outer pad and the object being printed. Without adequate reasoning, the
Examiner cannot establish a prima facie case of obviousness.
Furthermore, we agree with Appellant that Schaafsma does not
suggest the Examiner’s proffered reason for modification, i.e., “to achieve
the desired resiliency of the printed pad” (Ans. 3; see Reply Br. 3).
Thus, Appellant’s arguments have identified reversible error in the
Examiner’s determination that the proposed combination of Kare, Galassi,
and Schaafsma renders claims 6 obvious in Rejection (1).
The Examiner’s findings in support of Rejection (2) and Rejection (3)
of claims 7 and 8, respectively, do not address Schaafsma’s deficiency with
respect to claim 6 (see Final Act. 5—7). Therefore, we reverse Rejection (2)
and Rejection (3).
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Application 13/581,751
Accordingly, we reverse the rejection of claims 6—8 for the reasons set
forth above. 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
We REVERSE the rejection of claim 6 under 35 U.S.C. § 103(a) as
obvious over Rare in view of Galassi, and further in view of Schaafsma.
We REVERSE the rejection of claim 7 under 35 U.S.C. § 103(a) as
obvious over Rare, Galassi, Schaafsma, and further in view of Harmony.
We REVERSE the rejection of claim 8 under 35 U.S.C. § 103(a) as
obvious over Rare, Galassi, Schaafsma, and further in view of Portelli and
Shell.
REVERSED
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