Case: 20-1056     Document: 31   Page: 1     Filed: 08/11/2020




        NOTE: This disposition is nonprecedential.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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 2                                               IN RE: KROSS




 (“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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 IN RE: KROSS                                                 3



     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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 4                                               IN RE: KROSS




 [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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 IN RE: KROSS                                               5



 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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 6                                                IN RE: KROSS




 (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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 IN RE: KROSS                                                 7



 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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 8                                              IN RE: KROSS




 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.
