Ex Parte Kross

Patent Trial and Appeal Board

Jan 19, 2017

13275400 (P.T.A.B. Jan. 19, 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.
13/275,400 10/18/2011 Robert D. Kross 3641
60333 7590 01/20/2017
FDWTN D NrmNDT FR
EXAMINER
4 HIGH OAKS COURT ZIMMERMAN, JOSHUA D
P.O. BOX 4259
HUNTINGTON, NY 11743-0777 ART UNIT PAPER NUMBER
2854
MAIL DATE DELIVERY MODE
01/20/2017 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 ROBERT D. KROSS 1
Appeal 2016-0086982
Application 13/275,400
Technology Center 2800
Before MARKNAGUMO, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Robert D. Kross (“Kross”) timely requests rehearing3 under
37 C.F.R. § 41.52 (“Rule 52”) of our Decision, issued 22 December 2016,
which we affirmed the rejections of all pending claims 9-12 as obvious
under 35 U.S.C. § 103(a)4 over the combined teachings of Singular
1 The real party in interest is identified as Poly-Gel LLC. (Appeal Brief,
filed 1 April 2016 (“Br”), 1.)
2 This appeal is related to Appeal 2016-008692 in divisional
application 14/565,190 (filed 9 December 2014), which was decided
concurrently. A Request for Rehearing was filed simultaneously in that
case, raising substantially similar issues, and is decided concurrently.
3 Request for Rehearing filed 9 January 2017 (“Request”).
4 Because the application was filed before 16 March 2013, we refer to the
pre-America-Invents-Act version of Title 35 U.S.C.
Appeal 2016-008698
Application 13/275,400
Impressions, and Chen ’259, and Marculewicz (full cites in the original
Opinion).5
Rule 52 states in most relevant part, “[t]he request for rehearing must
state with particularity the points believed to have been misapprehended or
over-looked buy the Board.” 37 C.F.R. § 41.52(a)(1) (2016).
We have considered the Request, and we clarify our Opinion in minor
respects, but we deny the requested relief.
The arguments of record are sufficiently succinct that we may review
them to put Kross’s arguments in its Request into context without unduly
burdening the reader.
On appeal Kross argued that Simple Impressions teaches a printing
plate for monotype printing, but does not teach or suggest using any type of
“gel” printing plate. (Br. 11,11. 3—8.) Moreover, Kross urged, Singular
Impressions “does not disclose a printing plate for producing a monotype
printing plate that is necessarily limited to solely the pressure of one’s hand”
{id. at 11. 11—13). Kross also urged that Chen ’259 “has no relevance to any
type of printing apparatus or method.” {Id. at 12,11. 18—19.) Instead, Kross
argued, Chen ’259 teaches “gelatinous elastomer compositions and articles
with a disclosed use as ‘fishing bait’ and, as such, should not be considered
pertinent for application in an obviousness rejection of Appellant’s claims.”
{Id. at 11. 19-22.) Nor, Kross continued, should Chen ’259 be “considered in
combination with either Singular Impressions or other prior art disclosing
‘gelatin printing plates,’ which has now been explicitly excluded” from the
5 A rejection in view of an additional reference, Zirker, was not argued
separately.
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Appeal 2016-008698
Application 13/275,400
claimed invention. (Id. at 12,1. 22, to 13,1. 2.) Kross argued further that
Marculewicz, which indicates in its title that gelatin printing plates have
been used for printmaking without a printing press, like Simple Impressions,
does not suggest any gelatinous or jelly-like substance other than gelatin for
use in printing methods. (Id. at 13,11. 8—9.) In Kross’s view, the only
source of teachings for the combination of a non-gelatin printing plate with
monotype printing apparatuses or techniques is the ’400 Specification.
(Id. at 11. 17—20.) Kross reiterated these arguments in the Reply,
emphasizing that Germain (not applied in this case by the Examiner, but
which Kross appears to regard as cumulative, or perhaps a more complete
reference than Marculewicz) merely sought to “cope with cracking and
splitting, rather than searching for a replacement for gelatin.” (Reply 5,
11. 9-11.)
On Request for Reconsideration, Kross argues that we
mischaracterized and misapplied the law of obviousness in citing Hotchkiss
(prima facie obvious to use known materials disclosed as having suitable
properties) because we overlooked or misapprehended the new functions and
properties afforded by the use of non-gelatin viscoelastic polymers in place
of the gelatin sheet printing material taught by Germain. (Request 3,11. 4—
10.) Rather than seeking a new material, Kross urges, Germain was content
to cope with the cracking of the gelatin plate and the difficulties attendant to
clean-up. (Id. at 11. 15—18.) Kross further criticizes our determination that
the level of skill in the art was sufficiently high that the routineer would
have recognized the suitability of the viscoelastic gels taught by Chen ’259
as substitutes for the gelatin taught by Germain. (Id. at 6—7.) Kross
emphasizes the absence of any teaching or suggestion in the prior art,
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Appeal 2016-008698
Application 13/275,400
particularly Chen ’259, that the viscoelastic gels were “known to have been
used in any type of printing technology, let alon[e] the monotype printing of
the nature to which Appellant’s claimed invention is directed.” (Id. at 6,
1. 23, to 7,1. 1.) Kross then reiterates the argument that only hindsight
motivates the appealed rejection (id. at 7—8).
We are not persuaded of harmful error in the appealed rejection or in
our affirmance of that rejection.
The recognition by Germain of mechanical problems with gelatin in
printing (splitting, cracking) would have prompted a person having ordinary
skill in the art to consider materials having similar properties, but less prone
to splitting. As the Examiner found, and as Kross does not dispute,
Chen ’259 discloses “a viscoelastic gel meeting the claimed limitations
(abstract) which has high dimensional stability, crack and tear resistance and
long service life and capable of repeated handling.” (FR 3,11. 15—17, citing
Chen ’259, col. 2,11. 13—20.) Thus, a preponderance of the evidence
supports the Examiner’s underlying findings concerning why a person of
skill in the art would have considered Chen ’259 in order to address cracking
of non-gelatin plates because of its advantages (Ans. 5,17, citing
Chen ’259, col. 2,11. 8—20), and a preponderance of the evidence supports
the Examiner’s obviousness conclusion. The silence of Chen ’259 as to a
particular application is of little or no moment given the teachings of the
properties and the resulting general uses of the viscoelastic gel-like
materials, which would have suggested those materials as, more likely than
not, a successful solution to the problems of gelatin cracking and splitting
and clean-up issues encountered by Germain (and presumably
Marculewicz).
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Appeal 2016-008698
Application 13/275,400
We are well aware that seemingly simple and “obvious” inventions
have been overlooked by entire industries (cases of long-felt but unfilled
need often fall into this category); and that some “simple” inventions have
unforeseen and thus unexpected advantages6. The present case is
distinguished from these classes of cases by the absence of argument
supported by credible evidence of record of the presence of long-felt need,
unexpected results, or other so-called “secondary” indicia of non­
obviousness. In these regards, there are no working examples in the
Specification, and Kross has not directed our attention to experimental
evidence of record comparing the claimed invention with the prior art.
The Supreme Court, in its most recent decision on obviousness,
explained,
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that
it would improve similar devices in the same way, using the
6 Kross appears to place the Teflon®-coated electrodes at issue in Leesona
Corp. Leesona Corp. v. United States, 530 F.2d 896 (Ct. Claims 1976), in
this category. (Request 4—5.) But the facts of that case render it inapposite
to the present case. In Leesona, the court found that the differences between
the claimed electrode and the prior art resided “both in the use of a
fluorocarbon as the binder material and in mixing particles of the
fluorocarbon with particles of the catalyst instead of coating the catalytic
particles with a solution of the plastic binder material as is the case with [the
other prior art references].” 530 F.2d at 902; emphasis added. Thus, the
invention in Leesona did not involve a simple substitution of one material
for another. Moreover, as indicated in the passage cited by Kross indicates,
it was not known why the claimed combination worked, and “even now,
only theories have been developed to explain its superior performance.” Id.
at 903.
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Application 13/275,400
technique is obvious unless its actual application is beyond
his or her skill. ... a court must ask whether the
improvement is more than the predictable use of prior art
elements according to their established functions likely to be
obvious when it does no more than yield predictable results.
KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). We, following the
Examiner, have done no more—and no less—than apply these principles to
the evidence advanced by the Examiner and by Kross.
Kross has not shown error in the findings of fact or in the application
of the law of obviousness to this case.
C. Order
It is ORDERED that the Request for Reconsideration is granted.
It is FURTHER ORDERED that the Request for Relief is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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