Ex Parte Keoshkerian et alDownload PDFPatent Trial and Appeal BoardApr 27, 201814035156 (P.T.A.B. Apr. 27, 2018) Copy Citation 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). 2 Appeal2017-004894 Application 14/035,156 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- 3 Appeal2017-004894 Application 14/035,156 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 4 Appeal2017-004894 Application 14/035,156 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. 5 Appeal2017-004894 Application 14/035,156 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 6 Appeal2017-004894 Application 14/035,156 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 7 Copy with citationCopy as parenthetical citation