Ex Parte Ougi et al

Board of Patent Appeals and Interferences

Apr 6, 2010

10855868 (B.P.A.I. Apr. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HIROSHI OUGI and ATSUSHI HIBINO
____________

Appeal 2009-015416
Application 10/855,868
Technology Center 1700
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Decided: April 06, 2010
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
ADRIENE LEPIANE HANLON, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 9 and 11. We have
jurisdiction under 35 U.S.C. § 6(b).
Claim 9 is illustrative:

Appeal 2009-015416
Application 10/855,868

9. An aluminum alloy sheet for a lithographic printing
plate, consisting of 0.1-0.3% of Mg, 0.06-0.5% of Zn, 0.2-0.6%
of Fe, 0.03-0.15% of Si, Cu in amount up to 0.02%, 0.003-0.05%
of Ti, optionally B, no more than 100 ppm of Pb, no more than
100 ppm of Cr, no more than 50 ppm of In, no more than 50 ppm
of Sn, no more than 50 ppm of Ni, no more than 300 ppm of Ga,
no more than 200 ppm of V, and the balance being Al and
impurities.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Takizawa 5,114,825 May 19, 1992
von Asten 6,447,982 B1 Sep. 10, 2002
Yamaguchi 6,555,247 B2 Apr. 29, 2003

Appellants’ claimed invention is directed to an aluminum alloy sheet
that finds utility as a lithographic printing plate. The alloy sheet consists of
the specified elements in the recited amounts.
Appealed claims 9 and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over von Asten in view of Yamaguchi. Claims 9 and 11
also stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Takizawa.
Appellants do not present separate substantive arguments for claims 9
and 11. Accordingly, the claims stand or fall together.
We have thoroughly reviewed each of Appellants’ arguments for
patentability, as well as the Declaration evidence relied upon in support
thereof. However, we agree with the Examiner that the claimed subject
matter would have been obvious within the meaning of § 103 over the
Takizawa reference. Accordingly, we will sustain the Examiner’s rejection
of the appealed claims over Takizawa, but not over the combined teachings
of von Asten and Yamaguchi.
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Application 10/855,868

We consider first the Examiner’s § 103 rejection over Takizawa.
There is no dispute that Takizawa, like Appellants, discloses an aluminum
alloy sheet used for lithographic printing plates comprising the recited
elements in amounts which fall within the claimed ranges. The sole
argument advanced by Appellants is that the aluminum alloy of Takizawa
comprises Mn as a critical element whereas the “consisting of” language of
the appealed claims excludes Mn. Indeed, Takizawa teaches that “the
content of Mn is 0.3 to 1.5% by weight for the purposes of improving the
strength of the aluminum alloy and obtaining a uniform grained surface by
electrolytic graining” (col. 5, ll. 11-15). Takizawa discloses that the
“[p]referred strength of the aluminum alloy plates is not less than 15 kg/mm2
expressed in proof stress” (col. 5, ll. 7-9).
However, we agree with the Examiner that it would have been
obvious for one of ordinary skill in the art to formulate an aluminum alloy
for use as a lithographic printing plate by eliminating the Mn of Takizawa
when the strength of the alloy is not required to be in the preferred range
desired by Takizawa. It is well settled that the omission of a feature
disclosed by the prior art along with its attendant function is a matter of
obviousness for one of ordinary skill in the art. In re Thompson, 545 F.2d
1290, 1294 (CCPA 1976); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In
re Marzocchi, 456 F.2d 790, 793 (CCPA 1972); In re Larson, 340 F.2d 965,
969 (CCPA 1965); In re Keegan, 331 F.2d 315, 319 (CCPA 1964); In re
Porter, 68 F.2d 971, 973 (CCPA 1934). In the present case, Appellants have
presented no argument, let alone the requisite objective evidence, that they
have unexpectedly achieved a strength comparable to the one preferred by
Takizawa by eliminating the Mn component of the aluminum alloy. We
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Appeal 2009-015416
Application 10/855,868

note that Yamaguchi evidences that an aluminum alloy comprising Mn can
be used to make lithographic printing plates.
We will not sustain the Examiner’s § 103 rejection over von Asten in
view of Yamaguchi. Von Asten discloses an aluminum alloy for
lithographic printing plates comprising no more than 0.02 weight % Zn,
which amount is below the claimed lower limit of 0.06 weight %. The
Examiner cites Yamaguchi for teaching 0.12 weight % Zn for increasing the
wear resistance of a printing plate formed of an aluminum alloy. However,
as emphasized by Appellants, Yamaguchi expressly teaches that “in order to
permit the aluminum alloy plate to effectively exhibit enhanced wear
resistance, it is required that the alloy plate contains at least one of Sn, In
and Zn as well as Zr” (col. 4, ll. 56-59). Zr is a required element in the
Yamaguchi alloy, and the appealed claims exclude Zr from the recited alloy.
Hence, we do not subscribe to the Examiner’s disagreement that the addition
of Zn to the Yamaguchi alloy requires the addition of zirconium. While the
Examiner states that Yamaguchi “teaches adding tin can avoid the problem
of adding Zr” (Ans. 8, last para.), the Examiner fails to cite any specific
disclosure in the reference of such a teaching.
In addition, Appellants have proffered a Declaration as evidence that
the claimed alloy, without Zr, exhibits good etch pit uniformity compared to
the Yamaguchi alloys that contain Zr. On the other hand, the Examiner has
not provided the required analysis of the Declaration, but only states that the
Declaration is insufficient because Appellants compare “the data of the
invention with the data of the comparative alloy as disclosed in Yamaguchi,
but does not compare the data disclosed by the closest prior arts, von Asten
in view of Yamaguchi” (Ans. 9, second para.). Manifestly, the requirement
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Appeal 2009-015416
Application 10/855,868

for an applicant to make a comparison with the closest prior art does not
require the applicant to concoct a composition representative of the
combined teachings of a plurality of references since this would amount to a
comparison of an applicant’s invention with itself. See In re Tiffin, 443 F.2d
394, 399-400 (CCPA 1971).
Accordingly, regarding the rejection over von Asten in view of
Yamaguchi, it is our judgment that the argument and evidence presented by
Appellants outweigh the Examiner’s evidence of obviousness for the
claimed subject matter.
In conclusion, the Examiner’s decision rejecting the appealed claims
over Takizawa is affirmed and the rejection over the combined teachings of
von Asten and Yamaguchi is reversed. Consequently, the Examiner’s
decision rejecting the appealed claims is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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