Case: 20-1056 Document: 31 Page: 1 Filed: 08/11/2020
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`NOTE: This disposition is nonprecedential.
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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: ROBERT D. KROSS,
`Appellant
`______________________
`
`2020-1056
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. 13/275,400.
`______________________
`
`Decided: August 11, 2020
`______________________
`
`EDWIN DAVID SCHINDLER, Huntington, NY, for appel-
`lant.
`
` MARY L. KELLY, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, for appellee
`Andrei Iancu. Also represented by THOMAS W. KRAUSE,
`AMY J. NELSON, FARHEENA YASMEEN RASHEED.
` ______________________
`
`Before PROST, Chief Judge, NEWMAN and O’MALLEY,
`Circuit Judges.
`O’MALLEY, Circuit Judge.
`Appellant Robert D. Kross (“Kross”) appeals the Patent
`Trial and Appeal Board’s (“Board’s”) determination that
`claims 31–50 of Kross’s patent application, No. 13/275,400
`
`
`
`
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: ROBERT D. KROSS,
`Appellant
`______________________
`
`2020-1056
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. 13/275,400.
`______________________
`
`Decided: August 11, 2020
`______________________
`
`EDWIN DAVID SCHINDLER, Huntington, NY, for appel-
`lant.
`
` MARY L. KELLY, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, for appellee
`Andrei Iancu. Also represented by THOMAS W. KRAUSE,
`AMY J. NELSON, FARHEENA YASMEEN RASHEED.
` ______________________
`
`Before PROST, Chief Judge, NEWMAN and O’MALLEY,
`Circuit Judges.
`O’MALLEY, Circuit Judge.
`Appellant Robert D. Kross (“Kross”) appeals the Patent
`Trial and Appeal Board’s (“Board’s”) determination that
`claims 31–50 of Kross’s patent application, No. 13/275,400
`
`
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`Case: 20-1056 Document: 31 Page: 2 Filed: 08/11/2020
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`2
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`IN RE: KROSS
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`(“the ’400 Application”), would have been obvious under 35
`U.S.C. § 103(a). For the reasons explained below, we af-
`firm the Board’s decision.
`BACKGROUND
`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. A stated
`objective of the purported invention is to provide a reusa-
`ble, 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.” J.A. 19. Kross contends that
`the purported invention overcomes the problems of “crack-
`ing, splitting and just plain ‘falling apart,’” which are in-
`herent in printing plates made of gelatin. Appellant’s
`Br. 8.
`It is undisputed that claim 31, reproduced below, is
`representative.
`A printing method using a non-gelatin, viscoelastic
`gel printing plate, comprising the steps of:
`applying a layer of paint to a non-gelatin, viscoe-
`lastic gel printing plate comprising a viscoelastic
`gel composition having a viscoelastic polymer se-
`lected from the group consisting of a hydrogenated
`poly-isoprene/butadiene polymer, poly(styrene-bu-
`tadiene-styrene), poly(styrene-butadiene)n,
`poly(styrene-iso-prene-styrene), poly-(styrene-iso-
`prene)n, poly(styrene-ethylene-propylene),
`poly(styrene-ethylene-propylene-styrene)n,
`poly(styrene-ethylene-butylene-styrene)n, poly(sty-
`rene-ethylene-butylene), poly(styrene-ethylene-
`propylene)n, poly(styrene-ethylene-butylene)n, pol-
`ystyrene, polybutylene, poly(ethylene-propylene),
`poly(ethylene-butylene), polypropylene, polyeth-
`ylene, polyurethane, polyethylene and silicone, and
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`Case: 20-1056 Document: 31 Page: 3 Filed: 08/11/2020
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`IN RE: KROSS
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`3
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`a combination thereof, and a plasticizing oil, said
`viscoelastic gel composition excludes gelatin and
`has a smooth surface formed as a sheet and shaped
`for use as said non-gelatin, viscoelastic gel printing
`plate;
`laying over said non-gelatin, viscoelastic gel print-
`ing plate a surface onto which said layer of paint
`for creating a print is to be transferred; and,
`transferring at least a portion of said layer of paint
`from said non-gelatin, viscoelastic gel printing
`plate to said surface via pressure for producing said
`print,
`said method for producing said print using said
`non-gelatin printing plate being capable of being
`performed either with a pressure tool, without said
`pressure tool and solely with the pressure being ap-
`plied by a hand of a person, or with both said pres-
`sure tool and the pressure being applied by the
`hand of a person.
`J.A. 34–35. Claim 39, the other independent claim on ap-
`peal, further recites limitations requiring the production of
`a second print. J.A. 4, 36–37. The examiner rejected
`claims 31–50 as obvious over at least one of five combina-
`tions of prior art references. Kross appealed to the Board,
`which affirmed the examiner’s rejections.
`In its decision affirming the examiner’s rejections, the
`Board noted that this was the third time it was reviewing
`“similar claims” based on the ’400 Application. J.A. 2. It
`rejected Kross’s argument that the purported 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. J.A. 6. The Board
`concluded that a person of skill in the art “would have ex-
`pected . . . that the properties of the viscoelastic gel compo-
`sitions” described in the prior art “would likely address the
`
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`Case: 20-1056 Document: 31 Page: 4 Filed: 08/11/2020
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`IN RE: KROSS
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`[same] problems.” J.A. 6–7. The Board found that the ex-
`aminer’s rejections were consistent with prior findings of
`fact and conclusions of obviousness addressing Kross’s
`now-cancelled, similar claims for the ’400 Application.
`J.A. 6.1 For example, the Board had previously 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 viscoe-
`lastic materials claimed by Kross. J.A. 271. Accordingly,
`the Board credited the examiner’s findings, noting that a
`person of skill in the art would have a “reasonable expecta-
`tion of successfully solving a known problem using known
`properties of a known material.” J.A. 7 (citing In re Vaeck,
`947 F.2d 488, 493 (Fed. Cir. 1991). The Board also rejected
`Kross’s arguments directed to objective indicia of non-obvi-
`ousness. J.A. 7–9.
`On appeal, Kross challenges the Board’s conclusions
`with respect to one prior art reference combination: Singu-
`lar Impressions,2 Taylor,3 and Chen.4 Singular Impres-
`sions discloses monotype printing using a glass or metal
`printing plate, but not a gel printing plate. J.A. 587. It
`teaches that “[i]n its purest and simplest form, a monotype
`
`
`1 The Board noted that Kross’s previously rejected
`claims differed from his current claims only in their inclu-
`sion of a washing step and requirements of reusing the
`plates and application of pressure by hand. J.A. 4.
`2 Printout of Singular Impressions, the mono-
`type process, http://americanart.si.edu/exhibitions/onli
`ne/monotypes/video.html. as captured by the WaybackMa-
`chine on April 14, 2009.
`3 Printout of http://marytaylorart.com/FAQ/FAQ
`GelatinPrint.htm as captured by WaybackMachine on Oc-
`tober 19, 2009.
`4 U.S. Patent No. 7,159,259.
`
`
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`Case: 20-1056 Document: 31 Page: 5 Filed: 08/11/2020
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`IN RE: KROSS
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`is made by drawing with printer’s ink or oil paint on a
`smooth surface such as glass or a metal plate.” Id. It also
`teaches that the image can be transferred to paper using
`hand pressure. Id. By contrast, Taylor discloses how to
`prepare gelatin printing plates for use in monotype print-
`ing. J.A. 588. Chen, on the other hand, discloses non-gel-
`atin, gel polymers, primarily for use in medical devices.
`J.A. 599. The parties agree that Chen does not disclose the
`use of these materials in the context of printing. The par-
`ties also agree that a fourth prior art reference, Germain,5
`discloses the problems with using gelatin printing plates.
`J.A. 177–182; J.A. 306–312.
`Kross timely filed a notice of appeal. We have jurisdic-
`tion pursuant to 28 U.S.C. § 1295(a)(4).
`DISCUSSION
`“We review Board decisions in accordance with the Ad-
`ministrative Procedure Act, 5 U.S.C. § 706(2).” HTC Corp.
`v. Cellular Comm’ns Equip., LLC, 877 F.3d 1361, 1367
`(Fed. Cir. 2017). Under the APA, “we review the Board’s
`legal conclusions de novo and its factual findings for sub-
`stantial evidence.” Id. “Substantial evidence . . . means
`such relevant evidence as a reasonable mind might accept
`as adequate to support a conclusion.” Consol. Edison Co.
`v. NLRB, 305 U.S. 197, 229 (1938). Obviousness is a ques-
`tion of law based on underlying factual findings. Merck
`Sharp & Dohme Corp. v. Hospira, Inc., 874 F.3d 724, 728
`(Fed. Cir. 2017). In an obviousness analysis, factual find-
`ings include, inter alia, the scope and content of the prior
`art, level of ordinary skill in the art, the differences be-
`tween the claimed invention and the prior art, and motiva-
`tion to combine. Randall Mfg. v. Rea, 733 F.3d 1355, 1362
`
`
`5 Finda Germain, Gelatin Printmaking-Monotype
`Prints,
`https://youtube.com/DyOJG-TEWf8, YouTube
`video and comments dated May 11, 2008.
`
`
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`Case: 20-1056 Document: 31 Page: 6 Filed: 08/11/2020
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`6
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`IN RE: KROSS
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`(Fed. Cir. 2013) (citing KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 406 (2007)).
`On appeal, Kross challenges the Board’s obviousness
`determination for a host of reasons. Kross’s main argu-
`ment is that, contrary to the Board’s finding, there was no
`motivation to combine the prior art references. Appellant’s
`Br. 19–24. Kross further argues that the Board’s obvious-
`ness determination is erroneous because it employs an im-
`permissible “obvious to try” reasoning. Id. at 24–29. Kross
`also appears to argue that the Board failed to give proper
`weight to his evidence of objective indicia of non-obvious-
`ness—specifically, that the purported invention solves a
`long felt but unmet need. Id. at 19–21; Appellant’s Reply
`Br. 9–11. We are not convinced.
`As the Board explained, a person of ordinary skill in
`the art would have been motivated to address the known
`cracking and splitting problems with gelatin printing
`plates using the materials identified in Chen. J.A. 5–6 (cit-
`ing J.A. 271).6 The Board cited the examiner’s findings
`that a person of skill in the art would have recognized the
`problems associated with Taylor’s gelatin printing plates
`and then turned to Chen in looking for an alternative pol-
`ymer to use in its gel printing plates. J.A. 6 (citing
`J.A. 491–98); J.A. 556. Chen, with its focus on viscoelastic
`gels that are crack- and tear-resistant, provides that alter-
`native. See J.A. 590. It discloses “a viscoelastic gel meeting
`the claimed limitations . . . which has high dimensional sta-
`bility, crack and tear resistance and long service life and
`capable of repeated handling.” J.A. 271.7 Substantial
`
`
`6 Kross does not dispute that both Taylor and Ger-
`main identified the drawbacks of working with gelatin
`printing plates. Appellant’s Br. 28.
`7 Although this discussion refers to Kross’s now-can-
`celled claims, we agree with the Board that these findings
`
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`Case: 20-1056 Document: 31 Page: 7 Filed: 08/11/2020
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`IN RE: KROSS
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`evidence thus supports the Board’s finding of a motivation
`to combine Chen’s viscoelastic materials with Taylor’s gel
`printing plates to address the known problems with gelatin
`printing plates.
`Contrary to Kross’s arguments, the fact that Chen does
`not teach the use of viscoelastic compositions in any type of
`printing does not undermine the Board’s finding of a moti-
`vation to combine. See Appellant’s Br. 13–14; Appellant’s
`Reply Br. 1–2. We agree with the Board that Chen’s silence
`“as to a particular application is of little or no moment
`given the teachings of the properties and the resulting gen-
`eral 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.” J.A. 271.
`We likewise reject Kross’s argument that the Board im-
`permissibly employed an “obvious to try” rationale. Kross’s
`arguments in this regard focus on the Board’s statement
`that the “reasonable expectation of successfully solving a
`known problem using known properties of a known mate-
`rial i[s] generally prima facie obvious.” J.A. 6–7. We do
`not read into this statement the error that Kross complains
`of. This is not a case, as Kross contends, where “the prior
`art gave no indication of critical parameters and no direc-
`tion as to which of many possibilities is likely to be success-
`ful.” Appellant’s Br. 24–25 (quoting In re Copaxone Consol.
`Cases, 906 F.3d 1013, 1025 (Fed. Cir. 2018)). As Kross him-
`self contends, Taylor and Germain identified the parame-
`ters that would have been of concern to a skilled artisan
`(cracking, splitting). Chen teaches that non-gelatin, gel
`polymers would be beneficial in fixing these critical param-
`eters (high dimensional stability, crack and tear re-
`sistance). That is a far cry from impermissibly requiring
`
`apply to the identical limitations in the claims at issue in
`this appeal.
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`Case: 20-1056 Document: 31 Page: 8 Filed: 08/11/2020
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`IN RE: KROSS
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`that a skilled artisan, without any guidance from the prior
`art, “vary all parameters” until one succeeds. Kubin, 561
`F.3d at 1359.
`Accordingly, we affirm the Board’s conclusion of obvi-
`ousness.
`
`CONCLUSION
`We have considered Kross’s remaining arguments and
`find them unpersuasive. For the foregoing reasons, we af-
`firm the decision of the Board.
`AFFIRMED
`COSTS
`
`No costs.
`
`
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