Printing plate patent application rejected as obvious. IN RE KROSS

A patent is a government granted monopoly on an invention for a limited period of time. A patent grants its owner the exclusive right to make, use, sell and import an invention within the country that granted the patent. To be granted a patent in the United States an inventor must file a patent application with the United States Patent and Trademark Office. The patent application must meet many requirements to be granted. The most important requirements are that the invention is new, useful and not obvious. The patent law definition of obviousness is not the same as the dictionary definition.

Whether an invention is obvious under patent law depends on the prior art and the knowledge of an ordinary person skilled in the area of technology to which the invention relates. To be obvious every aspect of an invention must be described in the prior art or would have been obvious to a person having ordinary skill in the art. Prior art is any public published information. Patents and patent applications are the most commonly cited forms of prior art, however research papers and sales brochures can also qualify as prior art. During the patent application process the United States Patent and Trademark Office will review publications world wide for relevant pieces of prior art.

If a patent applicant cannot overcome a patent examiner’s rejection for obviousness, the patent applicant can appeal to the Patent Trial and Appeal Board (PTAB). If the PTAB rejects a patent as obvious the patent applicant can appeal this decision to the Court of Appeals for the Federal Circuit. The Federal Circuit will review the PTAB’s legal conclusions de novo and its factual findings for substantial evidence. Substantial evidence means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.

IN RE: ROBERT D. KROSS, 2020-1056 (C.A.F.C. 2020) is an example of a patent application that could not overcome the substantial evidence of obviousness.

Appellant Robert D. Kross filed Patent Application, No. 13/275,400. The invention claimed in the ‘400 application relates generally to non-gelatin viscoelastic printing plates and the use of such plates in monotype printing. A monotype print is typically made by pressing a piece of paper against an inked surface. Kross’s invention is intended to provide a reusable, durable, and readily-cleanable gel printing plate that artists may be able to use without a need for a press or other type of pressure tool. The patent application claims that invention solves the problems of cracking, splitting and just plain falling apart, which are inherent in printing plates made of gelatin.

The patent examiner assigned to the application rejected claims 31–50 as obvious over at least one of five combinations of prior art references. Kross appealed to the PTAB, which affirmed the examiner’s rejections. The PTAB did not agree with Kross that the invention represents a new use for a known material and meets a long-felt and unmet need of solving the cracking problems that were a hallmark of gelatin plates.

The three most relevant pieces of prior art were Singular Impressions, Taylor, and Chen. Singular Impressions discloses monotype printing using a glass or metal printing plate, but not a gel printing plate. Taylor discloses how to prepare gelatin printing plates for use in monotype printing. Chen, discloses non-gelatin, gel polymers, for use in medical devices but not for use in printing.

The PTAB found that the prior art recognized the splitting and cracking problem with gelatin, and that this would have prompted a person of skill in the art to consider materials having similar properties, but less prone to splitting, such as the viscoelastic materials claimed by Kross. Kross appealed the PTAB’s decision to the Court of Appeals for the Federal Circuit. Kross’s main argument on appeal was that, there was no motivation to combine the prior art references.

The Federal Circuit found that the fact that Chen does not teach the use of viscoelastic compositions in any type of
printing does not undermine the PTAB’s finding of a motivation to combine. Chen teaches that non-gelatin, gel
polymers would be beneficial in fixing the issues of cracking and splitting which were acknowledged on the other pieces of prior art. The Federal Circuit agreed with the PTAB’s findings that, when the known properties of a material solve a known problem, that is generally prima facie obvious.

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