POSCO

Patent Trials and Appeals BoardOct 25, 2021

2020006776 (P.T.A.B. Oct. 25, 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. 15/751,634 02/09/2018 Jin-Tae KIM CSL0076US 9620 23413 7590 10/25/2021 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER REDDY, SATHAVARAM I ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 10/25/2021 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JIN-TAE KIM, JUNG-HWAN LEE, HA-NA CHOI, and YON-KYUN SONG Appeal 2020-006776 Application 15/751,634 Technology Center 1700 Before MICHAEL P. COLAIANNI, JENNIFER R. GUPTA, and DEBRA L. DENNETT, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 3–13, and 15–21.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed February 9, 2018 (“Spec.”); the Final Office Action dated June 11, 2019 (“Final Act.”); the Appeal Brief filed February 11, 2020 (“Appeal Br.”); and the Examiner’s Answer dated June 23, 2020 (“Ans.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as POSCO. Appeal Br. 3. 3 Claims 1, 14, and 22 are canceled. Appeal 2020-006776 Application 15/751,634 2 CLAIMED SUBJECT MATTER The claims are directed to an ink composition for an inkjet printed steel plate and a method for producing an inkjet printed steel plate. Spec. 1, ll. 3–5. Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An ink composition for an inkjet printed steel plate, comprising: a linear acrylate-based oligomer present in an amount of 11% to 50% by weight, based on an overall weight of an ink composition; a reactive acrylate-based monomer present in an amount of 19% to 75% by weight, based on the overall weight of the ink composition; a linear acrylate-based monomer having an inorganic particle attached thereto, present in an amount of 0.1% to 15% by weight based on the overall weight of the ink composition; an ultraviolet curable initiator present in an amount of 0.1% to 15% by weight, based on the overall weight of the ink composition; at least one selected from the group consisting of a dye and a pigment, present in an amount of 0.5% to 10% by weight, based on the overall weight of the ink composition; and at least one selected from the group consisting of an antioxidant, an antifoaming agent, and a dispersant, present in an amount of 0.1% to 10% by weight, based on the overall weight of the ink composition. Appeal 2020-006776 Application 15/751,634 3 REJECTIONS The Examiner maintains the following rejections on appeal (Ans. 3; Final Act. 3–13): I. Claims 1, 3, 5–8, 10–13, 20, and 21 are rejected under 35 U.S.C. § 103 over Kajimoto4 and Ganapathiappan.5 II. Claim 4 is rejected under 35 U.S.C. § 103 over Kajimoto, Ganapathiappan, and Nakane.6 III. Claim 9 is rejected under 35 U.S.C. § 103 over Kajimoto, Ganapathiappan, and Matsumoto.7 IV. Claims 15, 16, 18, and 19 rejected under 35 U.S.C. § 103 over Kajimoto, Ganapathiappan, and Takemoto.8 V. Claim 17 is rejected under 35 U.S.C. § 103 over Kajimoto, Ganapathiappan, Takemoto, and Sisler.9 DISCUSSION After reviewing the evidence in light of the Appellant’s and the Examiner’s opposing positions, we determine that Appellant has not identified reversible error in the Examiner’s rejections. Thus, we sustain the 4 Kajimoto et al., JP 2012-162688, published August 30, 2012. We refer to the machine translation of record of Kajimoto as cited by the Examiner. See generally Final Act. 5 Ganapathiappan et al., US 2013/0065996 A1, published March 14, 2013. 6 Nakane, US 2011/0234681 A1, published Sept. 29, 2011. 7 Matsumoto et al., US 2011/0227992 A1, published Sept. 22, 2011. 8 Takemoto et al., KR 10-1170872, published July 27, 2012. We refer to the machine translation of record of Takemoto as cited by the Examiner. See generally Final Act. 9 Sisler et al., US 2014/0015894 A1, published Jan. 16, 2014. Appeal 2020-006776 Application 15/751,634 4 Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Rejection I – Obviousness over Kajimoto and Ganapathiappan Appellant argues the claims subject to this rejection as a group. We choose independent claim 1 as representative. 37 C.F.R § 41.37(c)(1)(iv) (2020). The Examiner finds that Kajimoto’s ink composition is similar to claim 1’s ink composition, but Kajimoto fails to explicitly teach that its ink composition includes “a linear acrylate-based monomer having an inorganic particle attached thereto and present in an amount of 0.1% to 15% by weight based on the total weight of the ink composition.” Final Act. 3–5. The Examiner finds that Ganapathiappan discloses an inkjet ink containing coated pigment particles, such as titanias, encapsulated with polyfunctional monomers, such as pentaerythritol triacrylate. Final Act. 5–6 (citing Ganapathiappan ¶¶ 10, 28). The Examiner finds that Ganapathiappan teaches that the inkjet ink includes the polymer coated pigment particles in an amount of 1% to 15% by weight based on the total weight of the ink formulation. Id. at 6 (citing Ganapathiappan ¶ 51). The Examiner determines that it would have been obvious to one of ordinary skill in the art to modify Kajimoto’s inkjet ink to include Ganapathiappan’s polymer-coated pigment particles to provide “improved jettability of the inkjet ink.” Id. (citing Ganapathiappan ¶ 24). Appellant argues that, “in Ganapathiappan, the content of the pigment particles, (not the content of a linear acrylate-based monomer) is 0.5 to 40wt%, and the pigment particles are not attached to a linear acrylate-based Appeal 2020-006776 Application 15/751,634 5 monomer, but encapsulated or coated by a cross-linked polymer.” Appeal Br. 13 (emphasis omitted); Ganapathiappan ¶ 51. Appellant’s argument does not identify reversible error in the Examiner’s rejection. Ganapathiappan teaches an inkjet ink that contains pigment particles encapsulated with polyfunctional monomers. Ganapathiappan ¶¶ 10, 28. Ganapathiappan teaches titanias as an example of pigment particles and pentaerythritol triacrylate as an example of a polyfunctional monomer. Id. ¶¶ 10, 28. The Examiner finds, and Appellant does not dispute that, the pentaerythritol triacrylate reads on the claimed linear acrylate-based monomer and titania reads on the claimed inorganic particle attached to the linear acrylate-based monomer. Final Act. 6; Appeal Br. 9–18. Ganapathiappan teaches the concentration of the polymer-coated pigment particles in the ink formulation, which includes a “linear acrylate- based monomer,” such as pentaerythritol triacrylate, not the pigment particles alone, may range from 1 to 15 wt%, which overlaps with the range of 0.1% to 15% by weight recited in claim 1. Ganapathiappan ¶ 51. It is well-established that a prima facie case of obviousness exists when the claimed and prior art ranges overlap. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Appellant argues that “there is no reason for a person having ordinary skill in the art, but not knowing the addressed prior [art] problems and the claimed solutions, to be tempted to combine Ganapathiappan into the primary reference ‘Kajimoto’ to obtain the claimed invention.” Appeal Br. 14 (emphasis omitted). Appellant further argues that if Ganapathiappan’s pigment particles encapsulated by a crosslinked polymer are modified to be combined into other prior art, in order to arrive at the claimed invention, Appeal 2020-006776 Application 15/751,634 6 Ganapathiappan would be inoperable for its originally intended purpose. Id. at 16–17. Appellant’s argument does not identify reversible error in the Examiner’s rejection. Ganapathiappan teaches a reason for including its polymer-coated pigment particles in an inkjet ink, i.e., to provide improved jettability of the inkjet ink. Ganapathiappan ¶ 24. “As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). Appellant does not provide a sufficient explanation or direct us to any evidence that modifying Kajimoto’s inkjet ink to include Ganapathiappan’s polymer-coated pigment particles would render Ganapathiappan’s ink inoperable for its intended purpose of providing printed matter. Because Appellant does not identify reversible error in the Examiner’s rejection, we sustain the rejection of 1, 3, 5–8, 10–13, 20, and 21 under 35 U.S.C. § 103 over Kajimoto and Ganapathiappan. Rejections II–V Appellant does not present separate patentability arguments regarding any of Rejections II–V aside from the arguments presented above for claim 1. Thus, we sustain those rejections for the reasons the Examiner presents and we give above with respect to claim 1. CONCLUSION The Examiner’s decision to reject claims 1, 3–13, and 15–21 is affirmed. Appeal 2020-006776 Application 15/751,634 7 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5–8, 10–13, 20, 21 103 Kajimoto, Ganapathiappan 1, 3, 5–8, 10–13, 20, 21 4 103 Kajimoto, Ganapathiappan, Nakane 4 9 103 Kajimoto, Ganapathiappan, Matsumoto 9 15, 16, 18, 19 103 Kajimoto, Ganapathiappan, Takemoto 15, 16, 18, 19 17 103 Kajimoto, Ganapathiappan, Takemoto, Sisler 17 Overall Outcome 1, 3–13, 15– 21 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