Presstek, LLC

Patent Trials and Appeals Board

Feb 7, 2020

15221996 - (D) (P.T.A.B. Feb. 7, 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.
15/221,996 07/28/2016 Sonia RONDON PTK-251C1/1075115251 3088
23517 7590 02/07/2020
MORGAN, LEWIS & BOCKIUS LLP (BO)
1111 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20004
EXAMINER
ROBINSON, CHANCEITY N
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
02/07/2020 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):
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 SONIA RONDON and KEVIN RAY

Appeal 2019-002225
Application 15/221,996
Technology Center 1700
Before GEORGE C. BEST, JULIA HEANEY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2019-002225
Application 15/221,996

2
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 27–40.3 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a three-layer printing member
having a central polymeric layer including nonconductive carbon black
particles. Spec. ¶ 7.
Claim 27, reproduced below, is the sole independent claim:
27. A lithographic printing member comprising:
(a) a first layer presenting a hydrophilic or oleophobic
lithographic affinity;
(b) a second layer for ablating in response to an
imaging pulse, the second layer consisting essentially of a
polymeric matrix and, dispersed therein, nonconductive carbon
black particles at a loading level sufficient to confer at least
partial ablatability with formation of water-compatible imaging
debris; and

1 In this Decision, we refer to the Specification dated July 28, 2016
(“Spec.”), the Appeal Brief dated Oct. 17, 2018 (“Appeal Br.”), the
Examiner’s Answer dated December 12, 2018 (“Ans.”), and the Reply Brief
dated January 15, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Presstek,
LLC. Appeal Br. 2.
3 The Examiner withdrew all rejections under 35 U.S.C. § 112 in the
Answer. Ans. 5–6.
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Application 15/221,996

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(c) a third layer presenting an oleophilic lithographic
affinity, the second layer being disposed between the first and
third layers.
Appeal Br. 11 (Claims Appendix).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Goto US 2003/0228540 A1 Dec. 11, 2003
Lewis US 6,055,906 May 2, 2000
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 27–40 as a matter of res judicata over the Board’s decision
in Appeal 2014-007839 (“the ’839 Decision”) in parent application
12/697,536 (“the parent ’536 application”). Ans. 3.
2. Claims 27–34 and 36–40 under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Goto. Ans. 3.
3. Claim 35 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Goto in view of Lewis. Ans. 5.
OPINION
Res Judicata
The Examiner finds that claims 27–40 correspond directly to claims
1–14 of the parent ’536 application, and are substantially the same as those
claims. Ans. 3. Specifically, the Examiner compares the following
Appeal 2019-002225
Application 15/221,996

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limitations from claim 27 on appeal4 and claim 1 of the parent ’536
application, with underlining indicating the difference in claim language:
Claim 27:
(b) a second layer for ablating in response to an imaging
pulse, the second layer consisting essentially of a polymeric matrix
and, dispersed therein, nonconductive carbon black particles at a
loading level sufficient to confer at least partial ablatability with
formation of water-compatible imaging debris;
Claim 1:
(b) a second layer for ablating in response to an imaging
pulse, the second layer consisting essentially of a polymeric matrix
and, dispersed therein, nonconductive carbon black particles at a
loading level sufficient to provide at least partial ablatability and
water compatibility following ablation;
Ans. 7–8.
In prosecution of the parent ’536 application, the Examiner found that
the claim language “to provide at least partial ablatability and water
compatibility following ablation” recites an intended use of the
nonconductive carbon black (Ans. 7–8), and rejected claims 1–14 as
unpatentable over Goto, because Goto taught the same nonconductive
carbon black as the claimed invention. Ans. 8 (citing In re Spada, 911 F.2d
705, 709 (Fed. Cir. 1990)). The Board affirmed the Examiner’s rejection in
the ’839 Decision. Based on the ’839 Decision and the Examiner’s finding
that claims 27–40 are unchanged from claims 1–14, the Examiner
determines that patentability of claims 27–40 is a matter of res judicata.

4 The Examiner’s reference to claim 28 (Ans. 7) appears to be a
typographical error. We understand the intended reference to be claim 27.
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Appellant does not dispute that the invention of claims 27–40 is
substantially the same as the invention of claims 1–14 of the parent ’536
application. Appellant argues that res judicata is inapplicable because the
’839 Decision turned on the absence of evidence and did not foreclose all
avenues of further prosecution. Appeal Br. 5. Appellant argues that two
declarations under 37 C.F.R. § 1.132 submitted in this case, the First Ray
Declaration filed August 11, 2016 and the Second Ray Declaration filed
February 14, 2018, provide the evidence that the ’839 Decision stated was
missing. Appeal Br. 5; Reply Br. 9.
We agree with Appellant that res judicata does not apply here, where
Appellant has properly submitted new evidence in the present continuation
application. Although the claims are substantially the same as those of the
parent application and the Examiner’s § 103 rejection is based on the same
prior art, the evidence presented in the First and Second Ray Declarations
creates a new record that presents a different issue of patentability from the
’839 Decision. Under these circumstances, res judicata is inapplicable. In
re Herr, 377 F.2d 610, 611–612 (CCPA 1967).
Obviousness
The Examiner finds that Goto teaches a printing plate precursor
comprising three layers that correspond to the layers of the printing member
recited in appealed claim 27: (1) a hydrophilic silicon rubber layer (Ans. 4
(citing Goto ¶¶ 21–22, 86)); (2) a heat sensitive layer including a binder
polymer and carbon black in amounts from 0.5 to 40 wt % (Ans. 3–4 (citing
Goto ¶¶ 24, 28, 35, 72–76)); and (3) a substrate comprising polyester or
metal having oleophilic lithographic affinity (Ans. 4 (citing Goto ¶¶ 112–
113)). The Examiner acknowledges that Goto does not explicitly disclose
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that its carbon black particles are nonconductive, but determines it would
have been obvious to a person of ordinary skill in the art to select
nonconductive carbon black, after standard testing and without the exercise
of inventive skill. Ans. 4.
Appellant argues that the appealed claims are patentable over Goto
because the binder polymer in Goto’s heat sensitive layer includes additional
components to enhance adhesion, which materially affect a basic and novel
characteristic of Appellant’s claimed invention. Appeal Br. 5–6. Appellant
argues, therefore, that the transition phrase “consisting essentially of”
excludes Goto’s binder polymer. Appellant argues that according to the
Specification, the “basic and novel characteristics” of the invention are those
that overcome the problem of “damage to the fine features of an imaged
plate, leading to unacceptable print-work” (Reply Br. 3–4 (citing Spec. ¶¶ 5,
7, 9)), and that the twenty examples described in the First Ray Declaration
demonstrate the additional components in Goto’s binder polymer, i.e., an
active-hydrogen compound and a metal chelate compound, resulted in a
damaged, unusable plate when they were added to the polymer in Example
10 of Appellant’s Specification. Appeal Br. 6–9. Appellant argues that the
experimental data in the First Ray Declaration spans the range of
concentrations of metal chelate and active-hydrogen compounds taught in
Goto, and that across the range of concentrations and in all of the examples,
the result was an unusable plate. Id. Appellant further argues that the
Second Ray Declaration confirms that the examples of the First Ray
Declaration are fully representative of all of the active-hydrogen and metal
chelate compounds listed in Goto. Appeal Br. 6–7.
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Additionally, Appellant argues that Goto teaches away from using a
binder polymer that omits metal chelate and active-hydrogen compounds,
because it states that at less than 5 pbw of metal chelate, “image formation
becomes difficult,” and at less than 5 pbw of active-hydrogen compound,
“printing plate sensitivity is lowered.” Appeal Br. 8 (citing Goto ¶¶ 58, 71).
The Examiner’s response discusses one example from among the
twenty examples in the First Ray Declaration and states that the result, “poor
silicone adhesion in unimaged plate areas after only 25 impression[s],” is
unclear. Ans. 12–13. The Examiner further responds by noting that the
polymer compound in Goto’s second layer adds an active hydrogen group-
containing compound to promote crosslinking, just as Appellant’s
Specification also contains a cross-linker to promote crosslinking. Ans. 13–
14 (citing Goto ¶ 63, Spec. ¶ 65). The Examiner reasons that because Goto
and the polymer compound of the appealed claims both use cross-linkers
“[t]he compounds of both the reference and the instant claims perform the
same function. Crosslinking would indeed materially affect the inventive
layer as well as the reference layer.” Ans. 14. The Examiner, therefore,
determines that the “consisting essentially of” transition phrase does not
exclude the additional components of Goto’s binder polymer. Id. Similarly,
the Examiner determines that Goto does not “require exactly what
appellant’s claims exclude” because “Appellant’s cross-linker would be
expected to crosslink its layers and as such would not be considered to
behave differently than the cross-linker of Goto.” Ans. 14–15.
The Examiner’s response is not persuasive because it does not
adequately consider Appellant’s evidence that the additional components in
Goto’s cross-linked polymer, i.e., the metal chelate and active-hydrogen
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compounds, materially affect a basic and novel characteristic of the claimed
invention. The Examiner’s conclusion that “the rebuttal evidence of
nonobviousness fails to outweigh the evidence of obviousness” (Ans. 13),
upon reviewing one example out of the twenty in the First Ray Declaration,
is not supported. Further, the Examiner incorrectly characterizes the metal-
chelate and active-hydrogen compounds in Goto’s heat sensitive layer as
cross-linkers, but in fact, Goto describes them as additional components (see
Goto ¶¶ 36–85) and Goto does not support equating the additional
components with the polymeric matrix of the appealed claims. Therefore,
the Examiner’s conclusion that Goto’s compounds and the appealed claims
must perform the same function because they are both crosslinked polymers
(Ans. 14) is unsupported. On review of the entire record, we agree with
Appellant that the evidence in the First and Second Ray Declarations
outweighs the Examiner’s findings as to the compounds used in Goto’s heat
sensitive layer, and therefore, the rejection fails to provide the requisite
factual basis for obviousness. See In re Warner, 379 F.2d 1011, 1016–17
(CCPA 1967) (the Examiner has the initial duty of supplying the requisite
factual basis for obviousness).
Because we find reversible error, we need not reach Appellant’s
additional arguments for reversal. Further, we need not address the
dependent claims subject to the additional obviousness rejection, which do
not overcome the deficiency discussed above.
CONCLUSION
The Examiner’s rejections are reversed.
Appeal 2019-002225
Application 15/221,996

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
27–34 and
36–40
103(a) Goto 27–34 and
36–40
35 103(a) Goto, Lewis 35
Overall
Result
27–40
REVERSED