Ex Parte Keoshkerian et al

Patent Trial and Appeal Board

Apr 27, 2018

14035156 (P.T.A.B. Apr. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/035,156 09/24/2013 Barkev KEOSHKERIAN
76113 7590 05/01/2018
PILLSBURY WINTHROP SHAW PITTMAN, LLP (Xerox)
XEROX CORPORATION
P .0 . BOX 10500
MCLEAN, VA 22102
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.
20130034US01-430527 9688
EXAMINER
FIDLER, SHELBY LEE
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
05/01/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte BARKEV KEOSHKERIAN, MICHELLE N. CHRETIEN,
DARYL W. VANBESIEN, MARCEL P. BRETON,
JENNIFER L BELELIE, and NA VEEN CHOPRA
Appeal2017-004894
Application 14/035,156
Technology Center 2800
Before MICHAEL P. COLAIANNI, JULIA HEANEY, and
DEBRA L. DENNETT, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-004894
Application 14/035,156
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-3, 6-13, and 15-20. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to intermediate transfer members
used in indirect printing and methods of making the intermediate transfer
member (110) (Spec. i-f l; claims 1and10; Figure 1).
Claim 1 is illustrative:
1. An intermediate transfer member comprising:
a substrate having a thickness from about 0.5 to about 100 mm; and
a composition comprising a mixture of two or more inhomogeneous
pre-polymers cured on the substrate,
wherein a first pre-polymer of the two or more inhomogeneous pre-
polymers has a higher surface energy after curing than a second pre-polymer
of the two or more inhomogeneous pre-polymers, and wherein the first pre-
polymer comprises a polydimethylsiloxane-vinyl terminated and the second
pre-polymer comprises a fluoropolydimethy 1siloxane-viny1 terminated.
Appellants appeal the following rejections:
1. Claims 1-3, 7, 8, 10, 11, 13, 15, and 16 are rejected under 35 U.S.C. §
103(a) as unpatentable over Seth (US 2012/0219794 Al, pub. Aug.
30, 2012) in view of Pan (US 2003/0234838 Al, pub. Dec. 25, 2003).
2. Claims 6 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Seth in view of Pan and Yahiro (US 2008-0079769 Al, pub Apr.
3, 2008).
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3. Claims 17-20 are rejected 35 U.S.C. § 103(a) as unpatentable over
Cellura (US 2006/0290761 Al, pub Dec. 28, 2006) in view of Pan and
Seth.
Appellants' arguments focus on the subject matter of claims 1 and 10
only (App. Br. 7-9). Claims not argued separately will stand or fall with our
analysis of the rejection of claim 1 or claim 10.
FINDINGS OF FACT & ANALYSIS
We have fully considered all of Appellants' arguments contained in
the Appeal Brief and Reply Brief. We find that the preponderance of the
evidence favors the Examiner's obviousness conclusion. We agree with the
Examiner analysis and response to arguments provided on pages 2 to 6 of
the Answer. Appellants' arguments focus solely on the Examiner's findings
with regard to Seth (App. Br. 7-8). Therefore, we need not address the
Examiner's findings or conclusions with regard to the combination of Pan's
teachings with Seth as they are not in dispute. We add the following analysis
for emphasis.
Appellants argue that the Seth is directed to pressure sensitive
adhesives and would not logically be of a scope that would apply to release
coatings (App. Br. 7). Appellants contend that the claims 1 and 10 require a
mixture of two or more inhomogeneous pre-polymers cured on the substrate,
which is not taught or suggested by Seth (App. Br. 7). According to
Appellants, Seth teaches cross-linking the vinyl pre-polymers before mixing
non-fluorinated polymers (NFOPS) with fluorinated polymers (FOPS) (App.
Br. 7-8). Appellants contend that the present claims require mixing the non-
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fluorinated and fluorinated pre-polymers together before reacting them and
so the surface energy property cannot be said to flow necessarily from the
references (App. Br. 8).
The Examiner finds that Seth is related to forming a release coating
and thus is not limited to a pressure sensitive adhesive as argued by
Appellants (Ans. 2). Seth discloses in paragraphs 15 to 16 that the invention
includes improving the release characteristics of the layer. Appellants do
not dispute that Seth's disclosure includes forming a release coating (Reply
Br. generally).
Regarding Appellants' argument that the claims require a mixture of
pre-polymers, the Examiner finds that the claims do not require the type of
mixing argued by Appellants (Ans. 2-3). Appellants maintain that the plain
language of claim 1 requires mixing the non-fluorinated and fluorinated pre-
polymers prior to curing (Reply Br. 2). Product claim 1 recites, in relevant
part, "a composition comprising a mixture of two or more inhomogeneous
pre-polymers cured on the substrate, wherein a first pre-polymer ... has a
higher surface energy after curing than a second pre-polymer .... " Method
claim 10 recites, in relevant part," ... preparing a composition comprising a
mixture of two or more inhomogeneous pre-polymers; ... curing the coating
to form the intermediate transfer member, wherein the first pre-polymer
... has a higher surface energy after curing than the second pre-polymer .... "
The Specification does not define the term "pre-polymer." The Merriam-
Webster Dictionary defines "prepolymer" as "a stable usually partially
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polymerized chemical intermediate that can be fully polymerized at a later
time." 1
The product claim is directed to the end product; an intermediate
transfer member having a coating on a substrate wherein the coating is
composed of two cured polymers having different surface energies.
Appellants' arguments regarding the forming of a mixture of pre-polymers
before curing are directed to the process used to form the product. In other
words, Appellants contend that claim 1 is product-by-process claim. As a
product-by-process claim, the method used to make the product is not
determinative because the product claim is based upon the structural
limitations of the product only. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985). The end product of claim 1 includes a coating on a substrate formed
from two polymers having different surface energies wherein one of the
polymers is formed from polydimethylsiloxane-vinyl termination and the
second polymer comprises a fluoropolydimethy 1siloxane-viny1 termination.
The Examiner finds that Seth teaches forming a mixture of pre-
polymers (non-fluorinated organopolysiloxane (NFOPS) and fluorinated
organopolysiloxane (FOPS)) which is coated on a substrate and cured (Final
Act. 5). Appellants do not dispute that Seth teaches using pre-polymers, but
rather Appellants contend that Seth teaches to polymerize each of the
NFOPS and FOPS separately before mixing (Reply Br. 3). Although some
degree of polymerization may occur in the NFOPS and FOPS prior to
blending the two compositions, the plain meaning of pre-polymer noted
above permits some degree of polymerization. The Specification does not
1 https://www.merriam-webster.com/dictionary/prepolymer accessed on
April 19, 2018.
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limit the degree of polymerization to any extent or otherwise distinguish the
meaning of pre-polymer from the term's plain meaning. Moreover, Seth
teaches curing the NFOPS and FOPS mixture after blending like Appellants
discloses in the Specification (Seth, i-f 95; Spec. i-fi-1 46, 47). In other words,
the subsequent curing indicates that some additional reaction is occurring
that modifies the polymers.
Method claim 10 requires the steps of mixing of the pre-polymers,
coating a support and curing the coating containing the pre-polymers
wherein the first pre-polymer comprises a polydimethylsiloxane-vinyl
terminated and the second pre-polymer comprises a fluoropolydimethyl
siloxane-vinyl terminated. As noted above in our discussion of claim 1, the
term "pre-polymer" is given its plain meaning and would not exclude Seth's
blending of the polymers, forming a coating and curing the coating on the
substrate.
Appellants contend that because the methods of making the
intermediate transfer member differ, the Examiner has not established the
inherency of the surface energy property of the two polymers (App. Br. 8).
However, under our claim construction, the claims do not limit the pre-
polymers to any degree of polymerization. Moreover, the Examiner finds
that the resulting polymers in Seth's coating are identical to those recited in
the claim (Ans. 5). Appellants do not dispute this finding, but rather argue
on page 3 of the Reply Brief that the process used by Seth differs from that
recited in the product-by-process claim 1 or method claim 10. As discussed
supra the method used by Seth appears to fall within the scope of
Appellants' claims. Seth teaches curing a blend of the NFOPS and FOPS.
The preponderance of the evidence favors the Examiner's conclusion that
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Seth's product would have possessed the same difference in surface energies
absent evidence to the contrary.
Regarding rejection (2), Appellants rely on the same unpersuasive
arguments made regarding rejection (1) (App. Br. 9). Regarding rejection
(3), Appellants allege unexpected results, but fail to direct us to any
evidence of record to substantiate the allegation (App. Br. 9). On this
record, we find that the preponderance of the evidence favors the
Examiner's obviousness conclusion with regard to the combined teachings
of Seth and Pan.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
ORDER
AFFIRMED
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