Ex Parte Teng

Patent Trial and Appeal Board

Aug 31, 2016

11859756 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111859,756 0912212007
75816 7590
GARY GANGHUI TENG
14 Joslin Ln.
Southborough, MA 01772
08/31/2016
FIRST NAMED INVENTOR
Gary Ganghui Teng
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.
GT-38 5299
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2854
MAILDATE DELIVERY MODE
08/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY GANGHUI TENG 1
Appeal2015-002906
Application 11/859,756
Technology Center 2800
Before: PETER F. KRATZ, MICHAEL P. COLAIANNI, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Appellant identifies the real party in interest as Gary Ganghui Teng. App.
Br. 2.
2 In our opinion below, we refer to the Non-Final Action mailed March 18,
2014 ("Non-Final Act."), the Appeal Brief filed June 14, 2014 ("App. Br."),
the Examiner's Answer mailed November 19, 2014 ("Ans."), and the Reply
Brief filed January 19, 2015 ("Reply").
Appeal2015-002906
Application 11/859,756
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
7, 11, 13-19, and 31. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons provided by the Examiner, we AFFIRM. We add the
following for emphasis.
The claims are directed to a lithographic printing plate treating device.
Claim 1, reproduced below with the limitations at issue highlighted, is the
sole independent claim, and is illustrative of the claimed subject matter:
1. A lithographic printing plate treating device comprising:
(a) a treating solution, and a structure for providing said
treating solution;
(b) a drying unit between said structure and the exit of
said treating device;
( c) an exposed lithographic plate comprising on a
substrate a photosensitive layer having hardened or solubilized
exposed areas and non-hardened or nonsolubilized non-exposed
areas, the non-hardened (for negative plate) or solubilized (for
positive plate) areas of said photosensitive layer being
removable on press with ink and/or fountain solution; and
( d) a transfer means for transporting said exposed plate
(i) through said structure to contact said treating solution with
at least the photosensitive layer coated side of said plate
without developing said plate, (ii) then through said drying unit
to dry off water and any solvent from the treated plate, and (iii)
further to the exit of the treating device as a dried and treated
plate without development; said transfer means being driven by
a motor;
( e) wherein said treating solution is capable of causing a
chemical or physical change to the plate without developing
said plate, and is incapable of developing said plate;
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Application 11/859,756
(t) wherein said treating device does not have a
developing means for developing said plate and is not
connected to any developing device for developing said plate;
(g) wherein the term development means selective
removal of the non-hardened (for negative plate) or solubilized
(for positive plate) areas of the photosensitive layer.
App. Br. 14 (Claim App'x).
Adachi
Hayashi et al.,
("Hayashi")
REFERENCES
US 2007 /0039500 Al
US 7 ,807 ,333 B2
REJECTIONS
Feb.22,2007
Oct. 5, 2010
The claims stand rejected as unpatentable under 35 U.S.C. § 103(a) as
follows: claims 1-7, 11, 13-18, and 31 over Hayashi (Non-Final Act. 3);
claim 19 over Hayashi in view of Adachi (id. at 8).
OPINION
According to the Specification, the inventor found that a simple
treatment with a treating solution can be used to modify, without developing,
an exposed on press developable photosensitive lithographic printing plate,
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Application 11/859,756
eliminating the common drawbacks that on press developable plates have of
limited room light stability and weaker visible images. Spec. 1-2.
Obviousness of claims 1-7, 13-18, and 31 over Hayashi
The Examiner concludes that claims 1-7, 13-18, and 31 would have
been obvious over Hayashi. Appellant does not argue any of these claims
separately from the others, thus these claims stand or fall together. See 37
C.F.R. § 41.37(c)(l)(iv).
In disputing the Examiner's obviousness conclusion, Appellant
focuses on two issues: (1) Hayashi discloses a development apparatus that
comprises both a pretreatment tank and a development tank (Hayashi col 7,
11. 54-61 ), while the claims at issue require that the plate coming out of the
treating device is not developed, and (2) Hayashi does not teach a drying
unit for drying the plate after pretreatment and before development. App.
Br. 8-9.
With regard to the "development apparatus" of Hayashi, the Appellant
contends that Hayashi teaches both a pretreatment tank and a development
tank are contained in the same apparatus (App. Br. 8 (citing Hayashi col. 7,
11. 54---61) ), and the plate coming out of the development apparatus of
Hayashi is developed (id. at 9). Appellant then argues that the development
apparatus of Hayashi is contrary to the Examiner's assertion that Hayashi
discloses element (t) of the claims, i.e., "(t) wherein said treating device
does not have a developing means for developing said plate and is not
connected to any developing device for developing said plate." Id.
In response, the Examiner explains that it is not the entire disclosure
of Hayashi which is used in the rejection. Ans. 2. In other words, the
Examiner does not rely on the entire "development apparatus" of Hayashi,
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Application 11/859,756
but only a portion of it. Specifically, the Examiner relies on Hayashi for
teaching:
[A] lithographic printing plate treating device (column 5, lines 1-
45) comprising:
(a) a treating solution (column 5, lines 19-25), and a structure for
providing said treating solution (column 7, lines 7-1 O);
( c) an exposed lithographic plate comprising on a substrate a
photosensitive layer having hardened or solubilized exposed
areas and non-hardened or nonsolubilized non-exposed areas, the
non-hardened (for negative plate) or solubilized (for positive
plate) areas of said photosensitive layer being removable on
press with ink and/or fountain solution (column 8, lines 10-18);
( d) a transfer means for transporting said exposed plate through
said structure to contact said treating solution with at least the
photosensitive layer coated side of said plate without developing
said plate (examiner interprets whatever means is used by
Hayashi et al. to move the plate through the tank to be the
claimed transfer means);
( e) wherein said treating solution is capable of causing a
chemical or physical change to the plate \vithout developing said
plate, and is incapable of developing said plate (column 5, lines
19-25: specifically, the carboxylic acid; since the treating
solution of Hayashi et al. is identical to that used by applicant,
the claimed properties of the treating solution are presumed
inherent. MPEP §2112.01.);
(f) wherein said treating device does not have a developing
means for developing said plate and is not connected to any
developing device for developing said plate (the pretreatment
device of Hayashi et al. is not disclosed as being physically
connected to the development tank; rather, the plate appears to
be physically carried from one to the other. Furthermore, the
plate of Hayashi et al. can be on-press developed, in the same
manner as Applicant's plate, therefore the development device
disclosed by Hayashi et al. would not be used, and thus the
treatment device of Hayashi et al. would not be connected to the
developing device);
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Application 11/859,756
(g) wherein the term development means selective removal of the
non-hardened (for negative plate) or solubilized (for positive
plate) areas of the photosensitive layer.
Non-Final Act. 3--4 (citations are to Hayashi). (We note that the Examiner
does not contend that Hayashi teaches element (b) related to a drying unit,
but we address this issue later in the opinion.)
The Examiner finds that "the treatment device of Hayashi is not
disclosed as being physically connected to the development tank; rather, the
plate appears to be physically carried from one to the other." Non-Final Act.
4, Ans. 2. Thus, the Examiner finds that the lithographic printing plate that
goes into the pretreatment tank of Hayashi need not proceed into the
development tank and be developed therein. In support, the Examiner
explains that the plate of Hayashi can be on press developed in the same
manner as Appellant's plate; in such a case, a pretreated plate would not go
into the development tank. See Ans. 2, 3.
Appellant's position that Hayashi requires the lithographic printing
plate to undergo development in a development tank is unpersuasive, given
the facts and the Examiner's rebuttal argument. See In re Preda, 401 F.2d
825, 826 (CCP A 1968) ("[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.").
Appellant argues multiple times that Hayashi teaches directly putting
the exposed plate on press for development with dampening water, which
excludes any pretreatment after exposure and before mounting on press.
Reply 4--7 (citing Hayashi col. 7, 11. 62---66). Essentially, Appellant is
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arguing that Hayashi teaches away from pretreating a plate before on press
development. However, the disclosure of Hayashi is broader than Appellant
would have us read it, and does not criticize, discredit, or otherwise
discourage pretreatment before on press development. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed in the '198 application.").
Disclosed examples do not constitute a teaching away from a broader
disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). This is a
rejection based on obviousness, not anticipation, so we consider the prior art
for all that it teaches and suggests. Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) ("[I]n a section 103 inquiry, the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.")
Hayashi states "a lithographic plate precursor exposed to light may be
directly set in a printer, in which damping water may be applied." Hayashi
col. 7, 11. 62-64 (emphasis added). Nothing in Hayashi requires that the
plate may not be pretreated, as taught in the reference, before being put on
press. Appellant's position that Hayashi prohibits pretreatment of a plate
before it is put on press is unpersuasive.
The Examiner has adequately explained that one of ordinary skill in
the art at the time of the invention would have been able to use the teachings
of Hayashi regarding pretreatment of the plate and apply those teachings to
on press development. See Ans. 2--4. "[T]he [obviousness] analysis need
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not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007).
We tum to consider element (b) of the claims, a drying unit between
the treating solution structure and the exit of the treating device. Appellant
urges that Hayashi does not teach a drying unit for drying the plate after
pretreatment and before development; only drying of the developed plate
after post-treatment is taught. App. Br. 9. The Examiner finds that Hayashi
teaches that it was known to dry a treated plate before it was placed into the
printer. Non-Final Act. 4 (citing Hayashi col. 19, 1. 60-col. 20, 1. 4). The
Examiner further contends that one of ordinary skill in the art at the time of
the invention would have been motivated to provide a drying unit after the
pretreatment device and before the printing press to be developed because it
has been shown to dry treated plates before putting them into a printer.
Ans. 3.
Appellant counters that Hayashi teaches directly putting the exposed
plate on press for development with dampening water, and the plate before
putting on press is itself dry, so there is no need for drying the plate. Reply
6. Appellant does not address the Examiner's findings regarding the
knowledge of one having ordinary skill in the art at the time of the invention.
"[T]he [obviousness] analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a comi can take
account of the inferences and creative steps that a person of ordinary skiH in
the art would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
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The Examiner has provided a convincing line of reasoning as to why
one of ordinary skill in the art would employ a drying unit in combination
with the teachings of Hayashi. See Ex parte Clapp, 227 USPQ 972, 973
(BPAI 1985). Appellant has not shown reversible error in the Examiner's
reasonmg.
Obviousness of claim 19 over Hayashi in view of Adachi
Appellant argues that neither Hayashi nor Adachi teach an apparatus
for treating and drying without development of the plate. Reply 9-10. This
argument has been addressed about with respect to Hayashi, and the
Examiner does not off er Adachi for such teaching.
Claim 19 depends on claim 1, and further requires that:
the device of claim 1 is shielded with covers which prevent all or
substantially all of the room light or of the unsafe portion of the
room light from reaching the plate when said plate is handled and
treated on the treating device at least before being treated.
App. Br. 16 (Claims App'x). The Examiner contends that Adachi teaches
that, when printing plates are susceptible to surrounding light in the work
environment, the entire plate processing line should be shielded from light
with a cover. Non-Final Act. 9 (citing Adachi i-f 302).
Appellant counters that Adachi' s teaching of a cover or filter for
shielding a plate from light is for a plate-making line like Adachi's, which
comprises a plate setter and a developing apparatus only. App. Br. 12. In
addition, Appellant argues that there is no suggestion from Adachi that such
a cover or filter is suitable for a device for treating and drying without
developing a plate. Id. Therefore, according to Appellant, Adachi does not
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teach a device for treating and drying without developing a plate and does
not teach a device with a lightshielding cover for treating and drying without
developing a plate. Id.
The Examiner responds that, contrary to Appellant's position,
Adachi' s teachings regarding shielding a printing plate from light with a
cover or a filter "would clearly be relevant to other systems where a plate
which is sensitive to light is being processed" and one of ordinary skill in the
art would have recognized this fact. Ans. 4.
In reply, Appellant states:
First, at the time the instant invention was made, all on-press
developable plates disclosed in the prior art are safe under white
room light, so an ordinary person in the art would not consider
any light-shielding covers for the pretreatment device for an on-
press developable plate. Secondly, the process of pretreating a
plate before putting on press was not known in the prior art at the
time the instant invention was made, and it was an inventive step
by the instant inventor to design a pretreatment device with light-
shielding covers in order to utilize an on=press developable plate
which is sensitive to light.
Reply 10.
Appellant's position is flawed. One cannot show non-obviousness by
attacking references individually when the rejection is based on a
combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. Id. The Examiner provides motivation for one of ordinary skill in
the art to combine the teachings of Hayashi and Adachi. Appellant does not
provide adequate support for limiting Adachi' s teachings solely to Adachi' s
particular system.
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With respect to Appellant's Reply, it is well settled that arguments of
counsel (in this case, the inventor representing himself) cannot take the place
of factually supported objective evidence. See, e.g., In re Huang, 100 F .3d
135, 139--40 (Fed. Cir. 1996) (a personal affidavit was insufficient proof to
establish nonobviousness); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) ("It is well settled that unexpected results must be established by
factual evidence. J\;fere argument or conclusory statements in the
specification does not suffice.").
DECISION
For the above reasons, the Examiner's rejections of claims 1-7, 11,
13-19, and 31 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)(l )(iv) (2009).
AFFIRMED
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