HP Indigo B.V.

Patent Trials and Appeals BoardNov 26, 2021

2020005793 (P.T.A.B. Nov. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/547,794 07/31/2017 Oshra Raviv 84649313 1209 22879 7590 11/26/2021 HP Inc. 3390 E. Harmony Road Mail Stop 35 Fort Collins, CO 80528-9544 EXAMINER EMPIE, NATHAN H ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 11/26/2021 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): ipa.mail@hp.com jessica.pazdan@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OSHRA RAVIV, CARLOS TEPER, ROY LUBINSKI, GABI HABIBI, DORIT YACOBOVICHY, ELINA PLOSHINK, and REGINA GUSLITZER Appeal 2020-005793 Application 15/547,794 Technology Center 1700 Before MAHSHID D. SAADAT, JOHN A. EVANS, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5–8, 10, 16, and 17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hewlett-Packard Development Company, LP. Appeal Br. 3. Appeal 2020-005793 Application 15/547,794 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to electrostatic printing processes. Spec. 1:3–7. In particular, the Specification describes contacting contact charged toner particles with a selectively charged photoconductive surface. Id. at 1:9–16. Such a process may make use of an intermediate transfer member (ITM) to transfer charged particles to a print substrate, and the ITM may include a release layer. Id. at 1:18–22. The Specification states that some prior methods of applying a release layer has difficulties in controlling the surface roughness of the release layer. Id. at 1:24–25. Claim 1 is the only independent claim on appeal. We reproduce claim 1 below while also reproducing as a graphic the claim’s graphic depiction of formula (I): 1. (Previously Presented) A method of coating a web with a release formulation, the method comprising: providing a coating station comprising a rotatable applicator roller including gravure cells on the surface of the applicator roller to apply a release formulation coating to a web; applying a release formulation coating to the gravure cells on the surface of the applicator roller, the release formulation comprising a silicone hydride cross-linker and at least one silicone oil having formula (I): 2 In this Decision, we refer to the Final Office Action dated March 17, 2020 (“Final Act.”), the Appeal Brief filed May 13, 2020 (“Appeal Br.”), the Examiner’s Answer dated June 18, 2020 (“Ans.”), and the Reply Brief filed August 7, 2020 (“Reply Br.”). Appeal 2020-005793 Application 15/547,794 3 (I) wherein each R is independently selected from C1-6 alkyl or C2-6 alkenyl groups with at least two R groups being the C2-6 alkenyl groups, and t is an integer of at least I; feeding the web through the coating station such that the web engages with the applicator roller; and applying the release formulation coating to the web under a shearing force by rotating the applicator roller such that, at a location at which the web and the applicator roller engage, the surface of the applicator roller moves in the opposite direction to the direction the web is fed through the coating station. Appeal Br. 30 (Claims App.). The graphic portion of claim 1 depicts formula (1) for silicon oil. REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Name Reference Date Andersen US 4,503,769 Mar. 12, 1985 Boardman et al. (“Boardman”) US 4,916,169 Apr. 10, 1990 Caldwell US 5,004,643 Apr. 2, 1991 Enlow et al. (“Enlow”) US 6,254,712 B1 July 3, 2001 Yasuhara JP 2005118615 May 12, 2005 Appeal 2020-005793 Application 15/547,794 4 REJECTIONS The Examiner maintains the following rejections on appeal: A. Claims 1, 2, 10, 16, and 17 under 35 U.S.C. § 102 as anticipated by Caldwell. Final Act. 2. B. Claims 6–8 under 35 U.S.C. § 103 as obvious over Caldwell in view of Yamane. Id. at 4. C. Claims 1–3, 5, 16, and 17 as obvious over Enlow in view of Andersen and Boardman. Id. at 6. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant argues each rejection separately but argues the claims subject to each rejection as a group. See Appeal Br. passim. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion to claims 1 and 6. Claims 7 and 8 stand or fall with claim 6, and all other claims on appeal stand or fall together with claim 1. Appeal 2020-005793 Application 15/547,794 5 Rejection 1. The Examiner rejects claims 1, 2, 10, 16, and 17 under 35 U.S.C. § 103 as anticipated by Caldwell. Final Act. 2 (citing Caldwell). In particular, Final Act. 2. The Examiner finds, for example, that Caldwell teaches a component A that corresponds to claim 1’s silicone hydride cross linker and a component B that corresponds to a silicone oil having claim 1’s recited formula. Because the Examiner finds that Caldwell teaches each recitation of claim 1, the Examiner concludes that Caldwell anticipates claim 1. Id. at 2–3. The Examiner’s findings rely on a particular passage from Caldwell that discusses components A and B. That passage is reproduced below, and we add bracketing to facilitate our further discussion of the passage. A preferred class of liquid curable silicone polymer compositions comprises a curable mixture of the following components: (A) at least one organo-hydrosilane polymer (including copolymers); (B) at least one vinyl substituted polysiloxane (including copolymers); (C) a platinum or platinum containing catalyst; and (D) (optionally) fillers and additives. [i] Typical silicone hydrides (component A) are polymethylhydrosiloxanes which are dimethyl siloxane copolymers. [ii] Typical vinyl terminated siloxanes are vinyldimethyl terminated or vinyl substituted polydimethylsiloxanes. [iii] Typical catalyst systems include solutions or complexes of chloroplatinic acid in alcohols, ethers, divinylsiloxanes, and cyclic vinyl siloxanes. Caldwell 20:23–38 (bracketed notation added). Appellant argues that the entire paragraph beginning with [i] refers to component (A) of Caldwell. Appeal Br. 14–18; Reply Br. 6. Appellant further argues that (A) does not teach claim 1’s silicone oil and that Caldwell Appeal 2020-005793 Application 15/547,794 6 provides no elaboration on (B) to indicate that (B) corresponds to claim 1’s silicone oil. Appeal Br. 15–16. The Examiner disagrees with Appellant’s reading of Caldwell and finds that sentence [i] describes component (A) and sentence [ii] describes component (B). Ans. 3–4. We find that the preponderance of the evidence best supports the Examiner’s interpretation of Caldwell. Sentence [i] explicitly refers to “[t]ypical component hydrirides (component A),” so it is unsurprising that Appellant and the Examiner agree that this sentence describes component A. Sentence [iii] refers to “typical catalyst systems [that] include solutions or complexes of chloroplatinic acid.” This sentence elaborates on the nature of component C (“a platinum or platinum containing catalyst”). Because sentence [i] refers to Component A and sentence [iii] describes Component C, a person of skill in the art would have expected sentence [ii] to refer to Component B. And it does. Sentence [ii] refers to “[t]ypical vinyl terminated siloxanes” which falls within Component B’s category of “at least one vinyl substituted polysiloxanes.” Appellant’s argument hinges on sentence [ii] referring to Component A rather than Component B. The Examiner takes the position that Component B (as sentence [ii] describes) meets claim 1’s silicon oil formula, and Appellant does not persuasively refute this position. Because Appellant does not identify error in the Examiner’s rejection, we sustain the rejection. Rejection 2. The Examiner rejects claims 6–8 as obvious over Caldwell in view of Yamane. Final Act. 4–6. Claim 6 further defines use of claim 1’s gravure roller. The Examiner finds that Yamane teaches the claims’ gravure and application techniques and determines that it would Appeal 2020-005793 Application 15/547,794 7 have been obvious to employ Yamane’s techniques with Caldwell in order to “improve the workability, reduce coating unevenness and reduce bubble formation.” Id. at 5. Appellant argues that this rejection fails for the same reasons Appellant provided with regard to Rejection 1. Appeal Br. 22. This argument is unpersuasive for the reasons we provide above. Appellant also argues that Caldwell and Yamane are not analogous art. Appeal Br. 22–23. In particular, Appellant argues that Yamane applies a water-soluble coating liquid to imaging material whereas Caldwell applies curable silicone polymer to make a fabric that is breathable and waterproof or water repellant. Id. Our reviewing court enumerated two separate tests for determining whether prior art is analogous: [t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations omitted). When applying these tests, we remain cognizant of the adage that “the name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citing Giles Sutherland Rich, Extent of Protection and Interpretation of Claims—American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)); cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (explaining that “neither the particular motivation nor the avowed purpose of the patentee controls” an obviousness determination). Appeal 2020-005793 Application 15/547,794 8 Here, claim 6 recites, in part, “wherein the coating station further comprises a gravure roller comprising gravure cells to accommodate a release formulation, the method comprising position the gravure roller to apply a release formulation to the applicator roller.” Appeal Br. 31–32. Claim 6, thus, addresses the problem of using a gravure to apply a liquid coating via an applicator roller. Caldwell and Yamane are reasonably pertinent to this same problem. Ans. 5–6; see also Caldwell Fig. 6 (illustrating a gravure 12 applying coating to an applicator roller 10); Yamane Abstract, Figure. Moreover, Yamane teaches that its method is not limited to any particular water-soluble or solvent-based coating solution. Yamane ¶ 43. Appellant provides no evidence suggesting that Yamane’s configuration would not work with Caldwell. Caldwell and Yamane are, thus, analogous art under at least the second In re Bigio test. Because Appellant’s argument does not identify error, we sustain the Examiner’s rejection. Rejection 3. The Examiner rejects claims 1–3, 5, 16, and 17 as obvious over Enlow in view of Andersen and Boardman. Final Act. 6. The Examiner finds, for example, that Andersen Figure 2 teaches use of an applicator roller that moves in the opposite direction to the direction the web is fed through the coating station. Id. at 7. We reproduce Andersen Figure 2 below for reference. Appeal 2020-005793 Application 15/547,794 9 Andersen Figure 2 is a representation of what Andersen describes as a “conventional rotogravure printing press[].” Andersen 3:1–2, 28–30. Appellant acknowledges that Andersen Figure 2 depicts that rotogravure printing cylinder (20) moves in the opposite direction of the substrate (23). Appeal Br. 25–26. This would meet claim 1’s requirement that “the surface of the applicator roller moves in the opposite direction to the direction the web is fed through the coating station.” Appeal Br. 30 (Claims App.). Appellant argues, however, that a person of skill in the art would have recognized that the arrows of Andersen Figure 2 are in error because rotation of cylinder (20) opposite direction of the substrate (23) would not allow an image to be transferred correction. Appeal Br. 26–28. The Examiner argues that Appellant’s position is unpersuasive because “arguments of counsel cannot take the place of evidence in the record.” Ans. 6 (citation omitted). We agree with the Examiner. See Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (“[A]rguments of counsel cannot take the place of evidence lacking in the record”). While Appellant’s argument may be intuitively reasonable, the Appeal 2020-005793 Application 15/547,794 10 argument is not supported by the evidence before us. In particular, Andersen teaches that its Figure 2 configuration is “conventional” (Andersen 3:28– 30), and no evidence of record is to the contrary. Appellant’s argument, thus, is unpersuasive of error based on the present record, and we sustain the Examiner’s rejection.3 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 10, 16, 17 103 Caldwell 1, 2, 10, 16, 17 6–8 103 Caldwell, Yamane 6–8 1–3, 5, 16, 17 103 Enlow, Andersen, Boardman 1–3, 5, 16, 17 Overall Outcome 1–3, 5–8, 10, 16, 17 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 3 We emphasize that we sustain this rejection based on procedure. Our decision is not intended to foreclose Appellant from, in the event of further prosecution, pursuing this argument by providing evidence to support Appellant’s position.