Ex Parte Ray et al

Patent Trial and Appeal Board

Jul 26, 2018

14808106 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/808,106 07/24/2015
23517 7590 07/30/2018
MORGAN, LEWIS & BOCKIUS LLP (BO)
1111 PENNSYLVANIA A VENUE, N.W.
WASHINGTON, DC 20004
FIRST NAMED INVENTOR
Kevin Ray
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PTK-260 1018
EXAMINER
ROBINSON, MICHAEL
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
07/30/2018 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):
kcatalano@morganlewis.com
patents@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN RAY, MARIA T. SYPEK, TRAVIS SOFTIC,
TRUAN NGUYEN, MICHAEL KARP, OREN ETZIONY, and
GEULA ZEGNIOYEV
Appeal 2017-011276
Application 14/808,106 1
Technology Center 2800
Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 19-35. We have jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Presstek, LLC.
Appeal Br. 2.
Appeal 2017-011276
Application 14/808, 106
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a lithographic printing
member that seeks to reduce or eliminate water-soluble materials from the
photoresponsive layer without losing post-imaging benefits. Spec. ,r 7.
Claim 19, reproduced below with emphasis added to certain key recitations,
is the only independent claim on appeal and is illustrative of the claimed
subject matter:
19. A lithographic printing member comprising:
a hydrophilic first layer; and
disposed over the first layer, an oleophilic imaging layer
comprising (i) a component polymerizable by a free-radical
polymerization mechanism, (ii) an initiator responsive to
imaging radiation for generating free radicals to initiate
polymerization of the polymerizable component, (iii) a near-IR
absorber, and (iv) a polymeric binder, wherein
the polymerizable component comprises a non-
particulate, aliphatic urethane acrylic oligomer that is
infinitely water-dilutable but not water-soluble.
Appeal Br. 20 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Nair et al.
("Nair")
Collins et al.
US 6,573,011 Bl
US 2010/0129616 Al
June 3, 2003
May 27, 2010
2 In this Decision, we refer to the Final Office Action dated December 12,
2016 ("Final Act."), the Appeal Brief filed March 31, 2017 ("Appeal Br."),
the Examiner's Answer dated July 10, 2017 ("Ans."), and the Reply Brief
filed September 1, 2017 ("Reply Br.").
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Application 14/808, 106
("Collins")
Water-Dilutable Oligomers, http://www.dymax-
oc.com/index.php/oligomers/select-novel-oligomers/water-dilutable (July
30, 2012) ("Dymax").
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 19--34 under 35 U.S.C. § 103 as unpatentable
over Collins in view of Dymax. Final Act. 2.
Rejection 2. Claim 35 under 35 U.S.C. § 103 as unpatentable over
Collins in view of Dymax in further view of Nair. Final Act. 6.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellants' arguments, we are not
persuaded that Appellants identify reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellants argue both rejections and all claims together as a group.
See Appeal Br. 4--16. Therefore, consistent with the provisions of 3 7 C.F .R.
§ 4I.37(c)(l)(iv) (2013), we limit our discussion to claim 19, and all other
claims on appeal stand or fall together with claim 19.
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The Examiner finds that Collins teaches a lithographic printing
member meeting most of the recitations of claim 19. Final Act. 2-3 ( citing
Collins). The Examiner finds that Collins teaches that the polymerizable
component may be a urethane acrylate. Id. at 3. The Examiner finds that
Collins does not teach "wherein the polymerizable component comprises a
non-particulate, aliphatic urethane acrylic oligomer that is infinitely water-
dilutable but not water soluble." Id. at 3. The Examiner finds, however, that
Dymax teaches such an acrylic oligomer-Bomar XR-9416. Id. (citing
Dymax). Appellants' Specification teaches that Bomar XR-9416 is infinitely
water-dilutable but not water-soluble. Id. ( citing Spec. ,r 71 ). The Examiner
finds that Bomar teaches that Bomar XR-9416 has superior water resistance
after curing but is dilutable before curing and also allows for reduction of
VOCs. Id. The Examiner determines:
Id.
Therefore, it would have been obvious to one of ordinary skill
in the art at the time that the invention was filed to use the
Bomar XR-9416 oligomer ofDymax Corp. as the generic
urethane acrylate of Collins because the Bomar XR-9416
oligomer of Dymax Corp. has superior water resistance after
cure and allows for reduction of VOCs (see pg. 2), and/or
because it has been shown in the art to be useful as a coating.
Furthermore, since it was commercially available at the time of
filing, one having ordinary skill in the art would select Bomar
because of the simplicity of using a commercially available
product.
Appellants argue that Collins teaches "innumberable other choices for
suitable polymerizable components" and there is no reason to select a
urethane acrylate from these many choices. Appeal Br. 4--5. Appellants'
argument does not persuade us of error. Although Collins teaches many
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Application 14/808, 106
different suitable polymerizable components, a prior art reference's
teachings can render a claim obvious even where a component appears
without emphasis in a longer list. See Merck & Co. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813 [prior art] patent
discloses a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the
claimed composition is used for the identical purpose taught by the prior
art"); see also In re Susi, 440 F.2d 442,445 (CCPA 1971) (affirming
obviousness rejection where disclosure of the prior art was "huge, but it
undeniably include[d] at least some of the compounds recited in appellant's
generic claims and [was] of a class of chemicals to be used for the same
purpose as appellant's additives"). Claim 19 uses urethane acrylate for the
identical purpose taught by Collins (i.e., as a polymerizable component).
Thus, selecting urethane acrylate from Collins's teachings would have been
no "more than the predictable use of prior art elements according to their
established functions." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Appellants also argue that, even if a person of skill were to choose to
use a urethane acrylate, there was no reason to pick XR-9416 from many
commercially available choices. Appeal Br. 6-8. Appellants emphasize that
Dymax markets Bomar XR-9416 as being an anti-fog and waterborne
coating for concrete and wood, emphasizes that Dymax markets different
products as being appropriate for printing plates, argues that Dymax does
not teach dilutability for removal by water, and argues that the Examiner's
stated reasons for selecting Bomar XR-9416 are too generic because many
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Collins products have, for example, low VOCs or water resistance and all
products are commercially available. Appeal Br. 6-11; Reply Br. 4--5.
Appellants' arguments are unpersuasive. The Examiner finds that a
person having skill in the art would have selected Bomar XR-9416 because
Dymax teaches that this specific urethane acrylate oligomer has improved
ability to dilute in water before curing and superior water resistance after
curing. Ans. 2-3; see also Dymax 1 ("Water-dilutable oligomers have the
bonus of having a hydrophilic nature when cured .... "). We agree with the
Examiner that a person of skill in the art choosing a urethane acrylate (per
the teachings of Collins) would be drawn toward Bomar XR-9416 for use in
lithographic imaging because the combination of dilutability when not-cured
and hydrophilic nature when cured. The Examiner's position is supported
by a preponderance of the evidence; in particular, Collins teaches the
desirability of such characteristics. See, e.g., Collins ,r,r 27 (discussing
removal of non-exposed regions of coating), 34 ("Such free radically
polymerizable polymers can also comprise hydrophilic groups .... "), 108-
109 ( discussing hydrophilic imageable elements), 149 ("unexposed regions
in the imageable layer are removed by a suitable fountain solution").
Appellants argue that dilution, as opposed to dissolution, "is not and
cannot be said to be equivalent to the full removal required for satisfactory
lithographic printing plate performance." Reply Br. 7. Collins, however,
does not teach that the unexposed layer must be dissolved rather than
diluted. Rather, Collins more broadly teaches that "[t]he imaged element is
mounted on press wherein the unexposed regions in the imageable layer are
removed by a suitable fountain solution, lithographic printing ink, or a
combination of both, when the initial printed impressions are made."
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Collins ,r 149. Collins further indicates that aspects of the unexposed
regions are not dissolved in solution. Id. at ,r 70 ( explaining that the first
polymeric binders of the imageable layer "exist at room temperature as
discrete particles, for example in an aqueous dispersion"). The
preponderance of the evidence before us does not indicate that a person of
skill in the art would have considered Bomar XR-9416 inferior in the
context of lithography merely because it is very dilutable rather than being
dissolvable.
Appellants also argue unexpected results. In particular, Appellants
argue that inventive examples 1 and 6 (using Bomar XR-9416) demonstrate
better make ready (i.e., non-imaged coating is more easily watched off) and
printing resolution than examples using different urethane acrylic oligomers
(using Ebecryl 220, Ebecryl 830, and CN975). Appeal Br. 11-15; see also
Spec. ,r,r 70-80. A party asserting unexpected results as evidence of
nonobviousness has the burden of proving that the results are unexpected. In
re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires
Appellants to proffer factual evidence that actually shows unexpected results
relative to the closest prior art. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). Here, we agree with the Examiner that
Appellants have not provided adequate evidence that the proffered results
are unexpected. Ans. 6-7. While the Specification states that make-ready
"surprisingly" is improved (Spec. ,r 7), the Examiner correctly emphasizes
that Dymax's teaching regarding the dilutability of Bomar XR-9416
suggests that Bomar XR-9416's make-ready would be good. Appellants
also do not present evidence that the dot reproduction ability (Spec. ,r 73) of
Bomar XR-9416 is unexpected.
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Appellants' evidence of unexpected results must also be reasonably
commensurate with the scope of claim 19. In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983). Appellants do not meet this burden. Rather, claim 19
is open as to the material used for the hydrophilic first layer, the initiator, the
near-IR absorber, and the polymeric binder. Claim 19 permits that any
"aliphatic urethane acrylic oligomer that is infinitely water-dilutable but not
water soluble" may be used for the polymerizable component. Appellants
present data that only relates to only one lithographic set up (i.e., only one
hydrophilic first layer, one initiator, etc.) and only tests a single urethane
acrylic oligomer within the scope of claim 19. Appellants' evidence does
not provide a basis to believe unexpected results would result across the
entire scope of claim 19.
Because Appellants' arguments do not demonstrate reversible error,
we sustain the Examiner's rejections.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 19--3 5.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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