Ex Parte Stebani et al

Patent Trial and Appeal Board

Sep 18, 2017

14145378 (P.T.A.B. Sep. 18, 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.
14/145,378 12/31/2013 Uwe Stebani 074019-0016-US (286720) 2742
123223 7590 09/20/2017
Drinker Biddle & Reath LLP (WM)
222 Delaware Avenue, Ste. 1410
Wilmington, DE 19801-1621
EXAMINER
ROBINSON, CHANCEITY N
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte UWE STEBANI1
and STEFANIE DOTTINGER
Appeal 2016-007865
Application 14/145,378
Technology Center 1700
Before MARK NAGUMO, AVELYN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Flint Group Germany GmbH (“Flint”) timely appeals
under 35 U.S.C. § 134(a) from a Final Rejection2 of all pending claims 1—
10. We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The applicant under 37 C.F.R. § 1.46, and hence the appellant under
35 U.S.C. § 134(a), is the real party in interest, identified as Flint Group
Germany GmbH (“Flint”). (Appeal Brief filed 15 October 2015 (“Br.”) 1.)
2 Office action mailed 9 April 2015 (“Final Rejection”; cited as “FR”).
Appeal 2016-007865
Application 14/145,378
OPINION
A. Introduction3
The subject matter on appeal relates to a photopolymerizable
flexographic printing plate for printing with UV inks.
The ’378 Specification explains that UV inks contain ethylenically
unsaturated groups for curing, such as hexanediol diacrylate. (Spec. 1,
11. 30-32.) Such monomers are said to swell standard flexographic printing
plates, leading to undesirable changes in the printed image along with
softening of the printing plate. (Id. at 2,11. 5—8.) Known methods to
ameliorate these problems are said to include adjusting the degree of cross-
linking in the binders for the printing plate (id. at 11. 10—17), using specific
binders for the printing plate (id. at 11. 19-25), and using various plasticizers
(id. at 1. 27, to 3,1. 2). Flint seeks patent protection for a printing plate in
which cyclohexane-polycarboxylic acids are used as the plasticizer.
(Id. at 3,11. 14—16.)
Claim 1 is representative and reads:
A photopolymerizable flexographic printing element for
producing flexographic printing forms for printing with UV
inks, which comprises at least
A) a dimensionally stable support and
3 Application 14/145,378, Photopolymerizable flexographic printing
elements for printing with UV inks, filed 31 December 2013 as a division of
12/993,182, filed 1 July 2011 (nowU.S. Patent No. 8,685,624), which was
filed as the national stage under 35 U.S.C. § 371 of PCT/EP2009/055775,
filed 13 May 2009, claiming the benefit of an application filed in Germany
on 19 May 2008. We refer to the “’378 Specification,” which we cite as
“Spec.”
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Appeal 2016-007865
Application 14/145,378
B) a photopolymerizable, relief-forming layer comprising
at least
1) from 40 to 90% by weight of a thermoplastic-
elastomeric block copolymer comprising
at least one block which consists essentially of
alkenylaromatics and
at least one block which consists essentially of
1,3-dienes,
2) from 1 to 20% by weight of ethylenically
unsaturated monomers,
3) from 0.1 to 5% by weight of photoinitiator and
4) from 1 to 40% by weight of at least one plasticizer,
where the amounts are in each case based on the total
amount of all components of the photopolymerizable
layer, and
wherein the at least one plasticizer comprises
from 1 to 40% by weight of at least one
cyclohexanepolycarboxylic ester of the general
formula R1-(COOR2)„ where
n is 2, 3 or 4,
R1 represents an n-valent cyclohexane radical, and
R2 represents, independently of one another, a
linear, branched or cyclic, aliphatic hydrocarbon
radical having from 3 to 20 carbon atoms.
(Claims App., Br. 21; some indentation, paragraphing, and emphasis
highlighting the disputed limitations added.)
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Appeal 2016-007865
Application 14/145,378
The Examiner maintains the following grounds of rejection4,5:
A. Claims 1—10 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Hiller4 5 6 and Bedat.7
B. Claims 1—4, 6, and 8—10 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Kaczun8 and Bedat.
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Flint urges the Examiner erred in two ways: (1) finding that Hiller and
Kaczun disclose printing plates comprising block copolymers in which one
block consists essentially of 1,3-dienes; and (2) combining the teachings of
Bedat regarding the use of cyclohexanepolycarboxylic esters as plasticizers
4 Examiner’s Answer mailed 4 August 2016 (“Ans.”).
5 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
6 Margit Hiller, Method for producing flexographic printing forms by
thermal development, WO 2005/050327 A1 (2005). (Uwe Stebani is listed
as a co-inventor; assigned to BASF Drucksysteme GmbH) Margit
Teltschick et al., Method for producing flexographic printing forms by
thermal development, U.S. Patent Application Publication 2008/0248428 Al
(2008) (issued as U.S. Patent No. 8,007,984 (30 August 2011)), the US
equivalent, is used as a translation.
7 Joelle Bedat et al., Printing inks comprising cyclohexanepolycarboxylic
acid derivatives, U.S. Patent Application Publication 2006/0178446 Al
(2006).
8 Jurgen Kaczun et al., Method for the production offlexographic printing
forms by means of electron beam cross-linking and laser engraving, U.S.
Patent Application Publication 2004/0197711 Al (2004).
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Appeal 2016-007865
Application 14/145,378
for printing inks with the teachings of either Hiller or Kaczun regarding
printing plates.
Flint’s first contention appears to be based on the misapprehension
that an elastomeric block copolymer, such as the styrene/butadiene
copolymers recommended by Hiller, which have both 1,4-linked units and
1,2-linked units, do not contain a block or blocks which consist essentially
of 1,3-dienes9. However, as the Examiner explains (Ans. 10,11. 18—20),
Flint’s ’378 Specification explains that the 1,3-dienes are preferably
butadiene and isoprene [2-methyl butadiene]. (Spec. 5,1. 11.) The
Specification teaches further that “[t]he diene units can be 1,2-linked or
1,4-linked.” (Id. at 11. 18—19.) Thus, the weight of the evidence is that the
styrene/butadiene block copolymers described by Hiller at
paragraphs [0029]—[0034], as well as the Kraton® polymers used in the
Examples, and the elastomeric block styrene/butadiene described by Kaczun
in paragraphs [0020] and [0021] (cited by Flint (Br. 19, 2d para.)), are within
the scope of the thermoplastic block copolymers specified in part (1) of
claim 1. No harmful error has been demonstrated in this part of the appealed
rejections.
Flint’s second contention stands differently. The Examiner finds that
the teachings of Bedat, regarding the use of a cyclohexane-polycarboxylic
ester as a plasticizer for photopolymerizable inks, would have suggested its
use as a plasticizer for the flexographic printing plates described by Hiller or
9 Strictly speaking, the blocks of the copolymer do not “consist essentially
of 1,3-dienes”: rather, they are polymerized from 1,3-dienes.
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Appeal 2016-007865
Application 14/145,378
by Kaczun because printing inks and printing plates are both “printing
elements (material).” (FR, para, bridging 5—6.)
As Flint argues, “[t]he plasticizers in each reference serve a different
purpose or function.” (Br. 15,11. 3—4.) The Examiner has not come forward
with any credible evidence that a person having ordinary skill in the art
would have thought that the properties of the packaging-printing inks
described by Bedat share significant mechanical properties with the binders
for flexographic printing plates described by Hiller or by Kaczun that would
have provided a reasonable expectation of some systematic improvement in
the plates arising from the use of the plasticizers for inks. Put another way,
flexographic printing plates and packaging-printing inks have not been
shown to be equivalent materials that would have been expected to respond
similarly to cyclohexanepolycarboxylic ester plasticizers.
On the present record, the Examiner has not come forward with
sufficient evidence to establish the factual premise of motivation to combine
the teachings of Bedat with those of Hiller or Kaczun. Put another way,
absent some substantive motivation, the combination is, at best, obvious to
try. The Examiner has not come forward with credible evidence that there
would have been a reasonable expectation of successfully improving the
properties of the flexographic printing plates described by Hiller or by
Kaczun using the ink-plasticizers taught by Bedat.
We conclude that Flint has demonstrated harmful error.
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Appeal 2016-007865
Application 14/145,378
C. Order
It is ORDERED that the rejection of claims 1—10 is reversed.
REVERSED
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