Kernig, Bernhard et al.

Patent Trials and Appeals Board

Sep 2, 2020

2019003463 (P.T.A.B. Sep. 2, 2020)

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.
15/466,671 03/22/2017 Bernhard Kernig 509701-CON 2553
53609 7590 09/02/2020
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNHARD KERNIG, CHRISTOPH SETTELE, and
OLAF GÜßGEN
Appeal 2019-003463
Application 15/466,671
Technology Center 2800
Before MICHAEL J. STRAUSS, JOHN A. EVANS, and
JON M. JURGOVAN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–14 and 16–19. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We refer to the Specification, filed March 22, 2017 (“Spec.”); Final Office
Action, mailed February 9, 2018 (“Final Act.”); Appeal Brief, filed October
8, 2018 (“Appeal Br.”); Examiner’s Answer, mailed January 22, 2019
(“Ans.”); and the Reply Brief, filed March 22, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Hydro Aluminium
Rolled Products GmbH. Appeal Br. 2.
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PRIOR APPEAL
This Application is a continuation of parent application 13/866,639
which was subject to a prior appeal 2017-002309, decided on January 25,
2017 (our “prior Decision”), in which the Board affirmed the Examiner’s
rejections of all claims then pending. See Appeal Br. 6.
CLAIMED SUBJECT MATTER
The claims are directed to a litho strip for electrochemical roughening.
Spec., Title. Claim 1, reproduced below with formatting altered, is
representative3 of the claimed subject matter:
1. Ctp-printing plate manufactured from a litho strip for
electrochemical roughening, comprising
a rolled aluminium alloy,
wherein a strip surface of the litho strip has a topography
with a maximum peak height Rp and/or Sp of a maximum of 1.4
μm,
wherein the topography of the litho strip surface is
essentially an imprint of a rolling topography of a final cold
rolling step conducted after a controlled degreasing treatment
with simultaneous pickling until a surface erosion of at least 0.25
g/m2 is achieved,
wherein the Ctp-printing plate has a photosensitive
coating with a thickness of less than 2 μm.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Sawada US 2002/0029709 A1 Mar. 14, 2002
Kernig US 2009/0209444 A1 Aug. 20, 2009

3 Appellant argues independent claims 1, 8, and 14 together as a group.
App. Br. 10. Accordingly, we select claim 1 as representative of the group
and address only this claim in our analysis. See 37 C.F.R. § 41.37(c)(1)(iv).
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REJECTION4
Claims 1–14, and 16–19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Applicant’s Admitted Prior Art (AAPA) in view of
Sawada and Kernig. Ans. 3.
STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
OPINION
Examiner’s Findings
The Examiner finds the disclosure by Applicant’s Admitted Prior Art
(AAPA) of printing plates “used . . . in the field of [computer to plate (Ctp)]
technology” wherein “the thickness of the [photosensitive] coating is
decreasing [in the past few years]” (Spec. ¶ 5) teaches the recited CtP-
printing plate manufactured from a litho strip for electrochemical
roughening comprising a rolled aluminum alloy. Final Act. 5. The
Examiner finds Sawada’s support for a lithographic printing plate with a
photosensitive layer thickness of, preferably, 0.1 to 30 μm and, more
preferably, 0.5 to 10 μm teaches the recited thickness of less than 2 μm. Id.
According to the Examiner “it would have been obvious to one having

4 Rejections of claim 14 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement and under 35 U.S.C.
§ 103(a) over Applicant’s Admitted Prior Art (AAPA) in view of Kernig
have been withdrawn. Ans. 3.
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ordinary skill in the art to use a photosensitive layer with a thickness of less
than 2 μm . . . because it has been shown in the art to be a suitable thickness
for a photosensitive layer on a printing plate.” Id. (citing MPEP §2144.075).
The Examiner finds Kernig’s method for conditioning an aluminum alloy
work piece would result in, and thereby teaches or suggests, the claimed
surface erosion and topography. Id. at 6–7.

Ctp Printing Plate
Appellant’s first contention is that the Examiner erred by finding the
prior art teaches or suggests a computer to plate (Ctp) printing plate as
recited in the preamble of claim 1. Appeal Br. 8. Addressing the rejection
over the combination of AAPA, Sawada and Kernig Appellant incorporates
argument made earlier in the Appeal Brief in connection with the now
withdrawn rejection over AAPA and Kernig alone. Id. Thus, Appellant
argues “the Examiner has failed to demonstrate that the alleged AAPA in
view of Kernig disclose[s] specifically a Ctp-printing plate, i.e., a printing
plate specifically configured for Ctp printing, as opposed to a conventional
printing plate used with Ctp technology.” Id. at 5. Appellant argues the
Examiner’s reliance on AAPA disclosed at paragraph 5 of the Specification
is misplaced, the cited paragraph only disclosing the latter, i.e., currently
available printing plate carriers used in the field of Ctp technology, not a
Ctp-printing plate as recited in the preamble of claim 1. Id. at 6. According
to Appellant, conventional printing plates do not include or disclose features

5 MPEP § 2144.07 Art Recognized Suitability for an Intended Purpose (The
selection of a known material based on its suitability for its intended use
supports a prima facie obviousness determination.).
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required of printing plates specifically configured for use with Ctp
technology as claimed. Id. at 6–7. Appellant further argues “the Examiner
does not cite Kernig as disclosing Ctp-printing plates as recited in claims 1
and 8. Therefore, the combination of Kernig and AAPA fails to disclose,
teach, or suggest all the limitations of claims 1 and 8.” Id. at 7. Appellant
argues the addition of Sawada fails to cure the argued deficiencies of AAPA
and Kernig.
The Examiner responds
Sawada et al. show the general knowledge in the art that
photosensitive layers on printing plates typically have a
thickness of from 0.1 to 30 μm (paragraph 86). Thus, one having
ordinary skill in the art would have reasonably expected that
choosing a thickness of the photosensitive layer in this range
(including the recited, overlapping range(s) of less than 2 μm
. . . ) would have resulted in a successful Ctp-printing plate.
Ans. 4. According to the Examiner “Appellant’s arguments here amount to
arguments against the references individually; one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references.” Id. (citing In re Keller, 642 F. 2d 413
(CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986)).
Appellant replies, arguing the preamble recitation of a Ctp-printing
plate is limiting. Therefore, according to Appellant, because the prior art
does not disclose the recited method steps specifically for making a Ctp-
printing plate, the combination fails to teach or suggest the claimed subject
matter. Reply Br. 5–8.
Appellant’s contention is unpersuasive of reversible Examiner error.
“In general, a preamble limits the invention if it recites essential structure or
steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.”
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Catalina Marketing International, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808–809 (Fed. Cir. 2002) (quoting Pitney Bowes Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). In Catalina, the
Federal Circuit identified several “guideposts” to help determine whether a
preamble limits claim scope. Id. at 808. For example, a preamble may
operate as a claim limitation “when reciting additional structure or steps
underscored as important by the specification.” Id. Additionally, a
preamble phrase that provides antecedent basis for a claim limitation
generally limits the scope of the claim. Id.
“Conversely, a preamble is not limiting ‘where a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention.’” Id. (quoting Rowe v.
Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Put another way, “a preamble
generally is not limiting when the claim body describes a structurally
complete invention such that deletion of the preamble phrase does not affect
the structure or steps of the claimed invention.” Id. at 809. Furthermore, a
preamble is not limiting where it merely gives a name to the invention, or
extols its features or benefits. Id.
On this record, we do not consider the preamble of claim 1 to be
limiting. The argued phrase “Ctp-printing plate” does not provide
antecedent basis for a claim limitation. Furthermore, Appellant does not
argue and we do not identify any effect that specifying the structure as a
Ctp-printing plate has on the structure or steps of the claimed invention. In
particular, Appellant fails to identify any features required of Ctp-printing
plates other than those specified by the limitations recited in the body of
claim 1. To the contrary, Appellant argues “convention[al] printing plates
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do not disclose, teach, or suggest many of the limitations of claims 1 and 8
that specifically make the printing plate configured for use with Ctp
technology” and “the Examiner has failed to appreciate the limitations of
claims 1 and 8 directing the claimed subject matter to Ctp-printing plates.”
Reply Br. 7. Thus, the structurally complete invention is recited in the claim
body and the preamble is used only to state a purpose or intended use for the
invention (i.e., for use in Ctp-printing) and/or merely gives a name to the
invention (i.e., a Ctp-printing plate).
The facts here are distinguishable from those in the cases Appellant
relies on to support its position. For example, in Corning Glass Works v.
Sumitomo Elec. USA, Inc., 868 F.2d 1251 (Fed. Cir. 1989), the Federal
Circuit found that “optical waveguide” in the preamble was limiting because
the specification included a specific definition for the phrase “optical
waveguide” that described the physical attributes of the waveguide and “sets
forth in detail the complex equation for the structural dimensions and
refractive index differential necessary” for the claimed optical waveguide to
transmit light. Id. at 1256. In view of this, the Federal Circuit determined
the claim did not cover all types of optical fibers, but instead was “restricted
to those fibers that work as waveguides as defined in the specification.” Id.
at 1257. As a result, the Federal Circuit concluded the preamble did not
merely state a purpose or intended use but, rather, provided further positive
limitations to the claimed invention, namely the particular structural
relationship defined in the specification. Id.
Unlike the situation in Corning, there is no explicit definition of “Ctp-
printing plate” in Appellant’s Specification. Instead, the Specification
discloses “[t]he printing plate carrier according to the invention can
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preferably be used in CtP technology, in other words for a CtP printing
plate.” Spec. ¶ 48. Thus, a Ctp-printing plate is defined by the claimed
structure and processing steps.
For the reasons discussed above, the argued preamble of claim 1 is not
limiting. Accordingly, Appellant’s argument that the prior art fails to teach
a Ctp printing plate is unpersuasive of reversible Examiner error.

Combination of AAPA, Sawada and Kernig
Appellant contends, because neither Sawada nor Kernig are
specifically directed to Ctp-printing plates, there is no recognition of “the
particular issues faced by Ctp-printing plates, which are discussed in
Appellant[’s S]pecification.” Appeal Br. 7. Thus, according to Appellant,
absent recognition of these issues, one skilled in the art would not have
combined the teachings of the prior art. Id. at 9. Appellant further argues,
because Sawada is not directed to Ctp-printing plates, a person of ordinary
skill in the art would not look to that reference to mitigate printing errors
involving that technology. Id. According to Appellant, although Sawada
discloses photosensitive layers with a thickness of 0.1 to 30 μm, rather than
reducing layer thickness, a person of ordinary skill in the art would increase
layer thickness toward the upper end of the disclosed range. Id.
“Accordingly, Sawada, when read in view of the problems found in the Ctp
printing art discussed in the relied upon alleged AAPA, actually would lead
one of ordinary skill in the art away from Appellant[’s] claimed range of less
than 2 μm.” Id.
The Examiner responds, directing attention to page 5 of the Final
Action for the Examiner’s reasoning for combining AAPA and Sawada.
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Ans. 5. In response to Appellant’s argument that Sawada is not concerned
with Ctp-printing plates, the Examiner finds “[t]he teachings of Sawada . . .
are generic to printing plates, which includes Ctp printing plates.” Id.
Responding to Appellant’s assertion that one having ordinary skill in the art
would be led to choose a thickness closer to the maximum thickness
disclosed by Sawada (i.e., a thickness greater than that recited by claim 1),
the Examiner finds insufficient evidence to support the assertion. Id.
According to the Examiner
The fact remains that Sawada . . . teach[es] that photosensitive
layers typically have thicknesses from 0.1 μm to 30 μm,
overlapping the instantly recited range of less than 2 μm; [the]
Examiner maintains that this express teaching by Sawada . . ..
would motivate one having ordinary skill in the art to choose the
thickness of the photosensitive layer of the Ctp plate of AAPA to
fall within this range because of the art-recognized suitability of
the range.
Id.
Appellant replies, arguing “no rationale was provided regarding
application of Sawada to Ctp-printing plates.” Reply Br. 8. According to
Appellant
Sawada does not establish the suitability of the thickness of the
photosensitive layer for any and all printing plates but just for the
printing plates disclosed in Sawada. Thus, the Examiner must
provide some factual basis to apply Sawada’s teachings to Ctp-
printing plates. As pointed out by Appellants, the Examiner did
not.
Id. at 8–9.
Appellant’s contentions are unpersuasive of reversible Examiner
error. As discussed above, the preamble of claim 1 is not limiting and,
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therefore, the claim is not restricted to Ctp-printing plates as argued.
Furthermore, we disagree the combination of AAPA and Sawada is improper
because there is no recognition by the references of the problem solved by
Appellant’s invention. Appeal Br. 17. This is because the Examiner’s
reason why one of ordinary skill in the art would have incorporated
Sawada’s thickness of the photosensitive layer in the photosensitive layers
of AAPA need not address the same problem as that to which the invention is
directed. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (The reason or
motivation to modify the reference may often suggest what the inventor has
done, but for a different purpose or to solve a different problem. It is not
necessary that the prior art suggest the combination to achieve the same
advantage or result discovered by applicant.); Cross Med. Prods., Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One
of ordinary skill in the art need not see the identical problem addressed in a
prior art reference to be motivated to apply its teachings.”); In re Linter, 458
F.2d 1013 (CCPA 1972); In re Dillon, 919 F.2d 688 (Fed. Cir. 1990), cert.
denied, 500 U.S. 904(1991).
Moreover, the Supreme Court has held, “[i]n determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls.” KSR., 550 U.S. at 419.
For a prima facie case of obviousness to be established, the reference need
not recognize the same problem solved by Appellants. See Ex parte Obiaya,
227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985) (“The fact that [Appellants
have] recognized another advantage which would flow naturally from
following the suggestion of the prior art cannot be the basis for patentability
when the differences would otherwise be obvious.”).
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We are also not persuaded by Appellant’s contention that one skilled
in the art would not look to Sawada to solve printing problems in making
Ctp-printing plates. Appeal Br. 9. Appellant provides insufficient evidence
that Sawada is not applicable to Ctp-printing plates or otherwise teaches
away from using the disclosed photosensitive layer thicknesses in
connection with AAPA. Attorney argument and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Attorney argument is not
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Nor can such
argument take the place of evidence lacking in the record. Likewise, we are
not persuaded one skilled in the art would only use the upper range of
Sawada’s layer thicknesses rather than the lower end of the range that
includes the claimed thickness of less than 2 μm. Appellant’s arguments
being unpersuasive for the reasons discussed above, on this record, we
determine the Examiner has articulated reasoning with rational
underpinnings sufficient to justify the legal conclusion of obviousness. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007); see Final Act. 5, Ans. 5.
For the reasons discussed above, we sustain the rejection of claims 1–
14 and 16–19 under 35 U.S.C. § 103(a) over AAPA, Sawada, and Kernig.
CONCLUSION
The Examiner’s rejection of claims 1–14 and 16–19 under 35 U.S.C.
§ 103(a) over AAPA, Sawada, and Kernig is affirmed.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–14, 16–19 103a AAPA, Sawada, Kernig 1–14, 16–19

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED