Ex Parte Chopra et al

Patent Trial and Appeal BoardApr 10, 2018

13925506 (P.T.A.B. Apr. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/925,506 06/24/2013 Naveen CHOPRA 74934 7590 04/11/2018 MARYLOU J. LAVOIE, ESQ. LLC I BANKS ROAD SIMSBURY, CT 06070 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 20130475US01 2972 EXAMINER YOUNG, WILLIAM D ART UNIT PAPER NUMBER 1761 MAILDATE DELIVERY MODE 04/11/2018 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 NA VEEN CHOPRA, GABRIEL IFTIME, JAMES D. MA YO, MICHAEL D' AMATO, SANDRA J. GARDNER, CUONG VONG, PING LIU, and YILIAN WU Appeal2017-007031 Application 13/925,506 Technology Center 1700 Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and MERRELL C. CASHION, JR., Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C. Â§ 134(a) from the Primary Examiner's final decision to reject claims 1-21.2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 The Appellant is the Applicant, Xerox Corporation, which, according to the Brief, is the real party in interest (Appeal Brief filed November 2, 2016, hereinafter "Appeal Br.," 1 ). 2 Appeal Br. 6-13; Reply Brief filed March 31, 2017, hereinafter "Reply Br.," 2-7; Final Office Action entered June 6, 2016, hereinafter "Final Act.," 3-9; Examiner's Answer entered February 7, 2017, hereinafter "Ans.," 3-7. Appeal2017-007031 Application 13/925,506 I. BACKGROUND The subject matter on appeal relates to a conductive ink (Specification filed June 24, 2013, hereinafter "Spec.," i-f 7). Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief (Appeal Br. 14), as follows: 1. A conductive ink comprised of a conductive material, a thermoplastic polyvinylbutyral terpolymer binder and a glycol ether solvent. II. REJECTIONS ON APPEAL On appeal, the Examiner maintains two rejections as set forth in the Final Action (Ans. 3--4; Final Act. 3--4), withdraws one rejection as set forth in the Final Action at pages 5-6 (Ans. 5), and adds a new ground of rejection (Ans. 5---6), all under post-AIA 35 U.S.C. Â§ 103. Thus, the rejections before us in this appeal are: A. Claims 1-5, 7, 8, and 10-20 as unpatentable over Ogiwara3 and Liu et al. 4 (hereinafter "Liu"); B. Claims 6 and 9 as unpatentable over Ogiwara, Liu, and Kidnie et al. 5 (hereinafter "Kidnie"); and C. Claims 1, 4--10, 13, 17, and 21 as unpatentable over Liu and Kidnie. III. DISCUSSION Rejections A and B. The Appellant argues Rejections A and B together (i.e., claims 1-20 collectively), but also provides reasonably 3 US 2014/0126113 Al, published May 8, 2014. 4 US 2012/0043512 Al, published February 23, 2012. 5 US 6,855,474 Bl, issued February 15, 2005. 2 Appeal2017-007031 Application 13/925,506 specific arguments against the Examiner's reliance on Kidnie in support of Rejection B (Appeal Br. 6-10). 6 Therefore, we address the relevant issues raised by the Appellant's arguments but otherwise limit our discussion to claim 1, which we select as representative. See 37 C.F.R. Â§ 41.37(c)(l)(iv). The Examiner finds that Ogiwara describes a conductive paste including every component limitation recited in claim 1, except that the reference discloses a polyvinyl butyral polymer generally rather than a polyvinyl butyral terpolymer (Ans. 3). The Examiner finds that although Ogiwara discloses a conductive paste, "[t]he terms 'paste' and 'ink' are used interchangeably in this art" (id.). To resolve the difference between Ogiwara and the claimed subject matter, the Examiner relies on Liu (id. at 4). Specifically, the Examiner finds that Liu teaches a conductive ink in which a polyvinyl butyral terpolymer is used to improve the ink's adhesiveness to substrates and stability (id.). Based on these findings, the Examiner concludes that a person of ordinary skill in the art would have substituted Liu's polyvinyl butyral terpolymer for Ogiwara's polyvinyl butyral as the binder polymer in order to obtain a conductive ink having improved adhesiveness and stability (id.). The Appellant contends that the claimed subject matter addresses "the need for a conductive ink, rather than paste, having the recited properties" and that "Ogiwara ... is directed to an electrically conductive paste composition" (Appeal Br. 7). According to the Appellant, Ogiwara teaches a specific combination and ratio of aliphatic thermoplastic resin and 6 Merely asserting that a reference does not teach or suggest a claim limitation (e.g., Appeal Br. 9, 11. 6-11) is not an argument that requires our separate consideration. Cf In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011). 3 Appeal2017-007031 Application 13/925,506 thermosetting resin to achieve a paste and that "it cannot be said that it would be obvious to violate the express teaching of Ogiwara requiring a specific combination of two resins present in a specific ratio by inserting another untaught material" (id.). The Appellant's arguments fail to identify any reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Ogiwara describes an electrically conductive paste composition comprising: (a) silver powders comprising spherical silver powders having specified mean particle size characteristics; and (b) binder resin comprising (b-1) an aliphatic thermoplastic resin and (b-2) a self-polymerizing thermosetting resin; wherein the silver powder content is no more than 60 wt% based on the composition's total weight, the weight ratio of (b-1 )/(b-2) is 99/1-67 /33, and the weight ratio of (a)/(b) is 94/6-85/15 (Ogiwara i-f 4). Ogiwara further teaches that resin (b-1) is selected from various thermoplastic resin such as polyvinyl butyral (id. i-f 22). Ogiwara teaches also that the composition may further include other additives ( c) such as glycol ether solvents (id. i-f 27). Thus, Ogiwara's compositional makeup differs from the claimed ink composition only in that the reference does not specifically disclose a polyvinyl butyral terpolymer as the polyvinyl butyral binder resin (b-1 ). Liu describes a conductive silver nanoparticle ink composition in which its adhesion to a substrate and stability are improved by using a polyvinyl alcohol derivative having a specified terpolymeric structure (Liu i-fi-1 4--5, 37-39). Liu's terpolymer has a structural formula that is substantially identical to or overlaps in scope with the structural formula 4 Appeal2017-007031 Application 13/925,506 disclosed in the Specification for the polyvinyl butyral terpolymer (id. i-f 5; Spec. i-f 9). Given the collective teachings in the prior art, we are in agreement with the Examiner that a person having ordinary skill in the art would have been prompted to use Liu's terpolymer as Ogiwara's polyvinyl butyral resin (b-1) with a reasonable expectation of achieving improved substrate adhesion and stability and, thus, arrive at a composition falling within claim 1 's scope. Contrary to the Appellant's belief (Appeal Br. 7), using Liu's terpolymer as Ogiwara's polyvinyl butyral binder resin (b-1), which may be present in the composition at a (b-1)/(b-2) ratio as high as 99/1, 7 does not violate Ogiwara's requirements in any way. Rather, we find that the proposed modification is entirely consistent with Ogiwara because Ogiwara does not place any limitations on what types of polyvinyl butyral resin may be used as binder (b-1 ). Regarding the preamble language "conductive ink" in claim 1, we discern no error in the Examiner's finding that the term "ink" fails to distinguish over "paste" (Ans. 6). Indeed, as the Examiner finds, the current Specification itself uses both "paste" and "ink" to refer to the same composition, thereby blurring the distinction, if any, between the two terms (Spec. i-f 4). The Appellant does not explain, with any objective evidence, how "ink" imparts additional compositional or structural limitations to the claimed composition. Moreover, Ogiwara teaches that the composition has 7 Because claim 1 recites the open transitory phrase "comprised of," it does not exclude Ogiwara's thermosetting resin (b-2). In re Baxter, 656 F.2d 679, 686 (CCPA 1981) ("As long as one of the monomers in the reaction is propylene, any other monomer may be present, because the term 'comprises' permits the inclusion of other steps, elements, or materials."). 5 Appeal2017-007031 Application 13/925,506 a viscosity within the range of 50-200 PaÂ· s, which encompasses the viscosities disclosed for the claimed ink (Spec. i-f 32), making the disclosed paste composition suitable for printing (Ogiwara i-f 33). Here, the similarities between the claimed product and the prior art in terms of compositional makeup and rheology support a prima facie finding that Ogiwara's composition would reasonably appear to be suitable for use as an "ink." Cf In re Spada, 911 F.2d 705, 708---09 (Fed. Cir. 1990). The Appellant also argues that the Examiner's reliance on Kidnie is misplaced because Kidnie is not analogous art-i.e., it is not available as prior art (Appeal Br. 9-10). According to the Appellant, Kidnie neither falls within the same field of endeavor as the claimed invention nor is pertinent to the particular problem faced by the inventors (id.). We disagree with the Appellant. "The Supreme Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398, [402] (2007), directs us to construe the scope of analogous art broadly, stating that 'familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle."' Wyers v. Master Lock Co., 616 F .3d 1231, 1238 (Fed. Cir. 2010). Here, the Examiner relies on Kidnie for the teachings that a polyvinyl butyral binder having a glass transition temperature, T g, of 72-78Â°C has excellent film-forming properties and that the binder is soluble in glycol monobutyl ether to support the rejection of claims 6 and 9 (Ans. 4) (citing Kidnie col. 9, 1. 1; col. 8, 11. 60-67, col. 19, 11. 61-67). Although Kidnie's overall disclosure relates broadly to a donor element for color proofing (Abstract), the Examiner finds that Kidnie is reasonably pertinent because 6 Appeal2017-007031 Application 13/925,506 "the relationship between the properties of the binder and its ability to form a film is clearly relevant to the ink composition of the invention" (Ans. 7). We detect no reversible error in the Examiner's position. One problem addressed by the inventors is to provide a polyvinyl butyral terpolymer having a sufficient molecular weight and glass transition temperature to provide a reasonably high viscosity to allow the ink to retain the pattern following printing by allowing the thermoplastic material to be melted or softened and shear thinned at reasonable temperatures (Spec. i-f 20). Compared to the inventors' problem, Kidnie addresses the same or similar problem (Kidnie col. 9, 11. 45---64). In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007) ("The striking similarity between Icon's application and [the] Teague [reference] clearly illustrates the similarity of problems they address and solutions to that problem, further supporting the idea that one skilled in the art would combine Teague with [the] Damark [reference]."). For these reasons, and those given by the Examiner, we uphold Rejections A and B. Rejection C (New Ground of Rejection in the Answer). The Appellant's only argument against this rejection is that Kidnie is non- analogous art and, therefore, unrelated to either Liu or the claimed invention (Reply Br. 6). For the reasons discussed above, we disagree with the Appellant. Accordingly, we also sustain Rejection C. IV. SUMMARY Rejections A through Care sustained. Therefore, the Examiner's final decision to reject claims 1-21 is affirmed. 7 Appeal2017-007031 Application 13/925,506 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 8