SUN CHEMICAL CORPORATION

Patent Trials and Appeals Board

Feb 22, 2022

2021000390 (P.T.A.B. Feb. 22, 2022)

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. 15/743,009 01/09/2018 Alexander LAHR 66847-10152 C-1036 US 4747 96610 7590 02/22/2022 Ostrolenk Faber LLP 845 THIRD AVENUE 8TH FLOOR New York, NY 10022 EXAMINER KOLLIAS, ALEXANDER C ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 02/22/2022 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): pat@ostrolenk.com PTOL-90A (Rev. 04/07) HIUNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDER LAHR and BRUCE MARSHALL Appeal 2021-000390 Application 15/743,009 Technology Center 1700 Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s February 10, 2020 decision to finally reject claims 1, 2, 4, 6, 8, 10, 13, 15, 17, 18, 20, 21, 23, 24, 26 and 29-32 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sun Chemical Corporation (Appeal Br. 2). Appeal 2021-000390 Application 15/743,009 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to water-based inks for thermoforming applications (Abstract). The claimed thermoformable water- based acrylic inks are said to be suitable for printing on polyolefinic substrates that are subsequently thermoformed (Appeal Br. 2). Claim 1, reproduced below, is the sole independent claim on appeal and is illustrative of the claimed subject matter: 1. A thermoformable water-based printing ink or coating composition comprising: a) 1 wt% to 60 wt% one or more acrylic emulsions; b) 5 wt% to 15 wt% one or more styrene acrylic emulsions; c) 0.1 wt% to 10 wt% adhesion promoter; and d) water. Appeal Br. 12 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date McGibbon et al. US 5,286,774 February 15, 1994 Sharma et al. US 5,585,192 December 17, 1996 Yang US 5,594,044 January 14, 1997 Zhu US 5,889,083 March 30, 1999 Momose US 2002/0040660 A1 April 11, 2002 Halfyard et al. US 2007/0148414 A1 June 28, 2007 Irii et al. US 2002/0025863 A1 February 28. 2008 Boyd et al. US 2011/0177251 A1 July 21, 2011 Aoki et al. US 2011/0234728 A1 September 29, 2011 Product Bulletin, Product Information for Tyzor® TPT Appeal 2021-000390 Application 15/743,009 3 REJECTIONS 1. Claims 1, 2, 4, 6, 15, 17, 21, and 24 are rejected under 35 U.S.C. § 103 as unpatentable over Aoki and McGibbon. 2. Claims 10 and 13 are rejected under 35 U.S.C. § 103 as unpatentable over Aoki in view of McGibbon, and further in view of Momose and Irii. 3. Claims 18, 20, and 29-32 are rejected under 35 U.S.C. § 103 as unpatentable over Aoki in view of McGibbon, and further in view of Zhu. 4. Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable over Aoki in view of McGibbon, and further in view of Halfyard. 5. Claims 1, 2, 6, 8, 15, 17, 21, and 24 are rejected under 35 U.S.C. § 103 as unpatentable over Aoki in view of Sharma. 6. Claims 10 and 13 are rejected under 35 U.S.C. § 103 as unpatentable over Aoki in view of Sharma, and further in view of Momose and Irii. 7. Claims 18, 20, and 29-32 are rejected under 35 U.S.C. § 103 as unpatentable over Aoki in view of Sharma, and further in view of Zhu. 8. Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable over Aoki in view of Sharma, and further in view of Halfyard. 9. Claims 1, 2, 4, 24, and 26 are rejected under 35 U.S.C. § 103 as unpatentable over Boyd in view of Yang. 10. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Boyd in view of Yang, and further in view of Product Bulletin. Appeal 2021-000390 Application 15/743,009 4 OPINION Having reviewed the respective positions set forth by Appellant and the Examiner in the Appeal Brief, the Reply Brief, the Final Office Action (including the October 28, 2019 Office Action which is referenced therein), and the Examiner’s Answer, we determine that Appellant has not demonstrated reversible error in the rejections, essentially for the reasons set forth by the Examiner. We add the following for emphasis. Rejections 1-8. We are able to resolve each of Rejections 1-8 based on arguments made by Appellant common to each rejection. Accordingly, we focus on Rejection 1, and specifically the rejection of claim 1 over Aoki and McGibbon. The Examiner finds that Aoki teaches each element of claim 1, except that Aoki does not disclose that its ink composition comprises an adhesion promoter as recited in claim 1 (Final Act. 6). The Examiner finds that Aoki discloses an ink composition comprising water, emulsified thermoplastic resin particles such as copolymers of acrylic acid, and a water-soluble resin for dispersing the pigment such as styrene-methacrylic acid copolymer, i.e. a polymer emulsion (Final Act. 5, citing Aoki ¶¶ 18, 57, and 69-70, Abstract). Appellant makes several arguments seeking reversal of the rejection. We address each in turn. First, Appellant argues that because Aoki describes a process which takes place in the 40-60°C range, a person of ordinary skill in the art “would not have been able to believe or predict that Aoki teaches a composition capable of withstanding the high temperature of a thermoforming process” (Appeal Br. 3). This argument is not persuasive of reversible error. Appeal 2021-000390 Application 15/743,009 5 The question of whether a preamble constitutes a limitation to a claim is a matter to be determined by the facts of each case in view of the claimed invention as a whole. See In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). The preamble of a claim does not limit the scope of the claim when it merely states intended use of the invention. In re Pearson, 494 F.2d 1399, 1403 (CCPA 1974). However, terms in a preamble are construed as limitations when they give life and meaning to the invention claimed. See Gerber Garment Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683, 688 (Fed. Cir. 1990); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896 (Fed. Cir. 1984). In this instance, as explained by the Examiner (Ans. 3-4), the claim is directed to a composition defined by the presence of specific components, not a thermoforming process. Thus, the ability of the composition to be able to be used in a thermoforming process is, in essence, a statement of intended use. Moreover, the Examiner finds that Appellant’s Specification “does not define ‘thermoformable inks’ as encompassing any thermoforming temperatures.” Thus, in the absence of evidence to the contrary, the Examiner finds that Aoki’s compositions, which comprise an acrylic resin, a styrene-acrylic resin, and water as claimed, are capable of being thermoformed (Ans. 5). Appellant does not dispute this finding (see, Reply Br. 2-5) and, therefore, does not demonstrate reversible error in it. Accordingly, we determine that Aoki’s failure to specifically teach that its composition may be used for thermoforming applications does not constitute reversible error in the rejection. Appeal 2021-000390 Application 15/743,009 6 Second, Appellant argues that Aoki does not disclose both (a) an acrylic emulsion, and (b) a styrene acrylic emulsion (e.g., Appeal Br. 4). In particular, Appellant argues that Aoki discloses that the component relied on by the Examiner as corresponding to the claimed styrene-acrylic acid copolymer is water-soluble, and therefore could not form the claimed styrene-acrylic emulsion (Appeal Br. 4). However, the Examiner finds that because a styrene-acrylic copolymer will have a hydrophobic phase (the styrene-based portion) and a hydrophilic phase (the acrylic-based portion), it will form an emulsion in an aqueous environment, where the hydrophilic phase is in solution and the hydrophobic phase will be dispersed, but not dissolved (Ans. 6). Appellant does not dispute this finding (see Reply Br. 2) and, therefore, does not persuasively show reversible error in it. Third, Appellant contends that Aoki does not disclose the use of both an acrylic emulsion and a styrene-acrylic emulsion (Appeal Br. 4-7). The Examiner determines that a “styrene-acrylic emulsion” is also an “acrylic emulsion” (Ans. 9). Appellant, by contrast, argues that these two components are different from each other, and a component which corresponds to one cannot correspond to the other (Appeal Br. 5). It is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). In this instance, Appellant argues that the Specification indicates that the terms “styrene-acrylic emulsion” and “acrylic emulsion” do not overlap Appeal 2021-000390 Application 15/743,009 7 (Appeal Br. 5-6, citing Spec. ¶¶ 15, 28, 30). In particular, Appellant argues that the claims and the Specification recite “styrene-acrylic emulsion” and “acrylic emulsion” separately and the claims require both to be present (Appeal Br. 5). However, as found by the Examiner (Ans. 9) and not disputed by Appellant (see Reply Br. 2-4), the Specification discloses “suitable acrylic emulsions” include JONCRYL 1695 (Spec. ¶ 28). The Examiner also finds, without dispute, that JONCRYL 1695 is an acrylic styrene copolymer. Therefore, as found by the Examiner, Appellant’s Specification indicates that a styrene-acrylic copolymer can form a “suitable acrylic emulsion.” Accordingly, we determine that the broadest reasonable interpretation of the term “acrylic emulsions” includes styrene acrylic emulsions. This does not mean, as argued by Appellant (Appeal Br. 6), that there is no difference between “acrylic emulsions” and “styrene acrylic emulsions.” Instead, it means that all styrene acrylic emulsions are also acrylic emulsions, but not all acrylic emulsions are styrene acrylic emulsions. Given the foregoing construction of the claim terms “acrylic emulsion” and “styrene acrylic emulsion,” Appellant has not demonstrated reversible error in the Examiner’s finding that Aoki teaches a composition containing both a styrene acrylic emulsion and an acrylic emulsion. Rejections 9 and 10. The Examiner’s findings are set forth at pages 21-25 of the Office Action dated October 28, 2019. Appellant argues that Boyd is directed to inks that prevent heavy metal migration and contain a water-borne primary resin and an optional modifying resin with a higher Tg than the primary resin (Appeal Br. 8-9). Appellant argues that Boyd does Appeal 2021-000390 Application 15/743,009 8 not teach or suggest that its inks can be used in thermoforming. This is not persuasive of reversible error, however, for the same reasons as outlined above in connection with Rejections 1-8. Appellant further argues that Boyd only teaches the use of styrene acrylic resins and not acrylic resins (Appeal Br. 9-10). This argument is not persuasive for the same reasons outlined above in connection with Rejections 1-8 (namely that the claim term “acrylic emulsion” includes styrene acrylic emulsions). Appellant also argues that Boyd does not teach the claimed amount of the styrene acrylic resin, and that Boyd’s examples teach much higher amounts, so that it teaches away from the claimed amount of 5 wt% to 15 wt% (Appeal Br. 10). However, Boyd teaches that its primary water-borne resin is present in an amount of 5%-70%, and that the modifying resin can be present in amounts up to 20% (Boyd ¶¶ 13-15). These amounts overlap with the claimed amounts. A prima facie case of obviousness exists in situations where the claimed ranges overlap the ranges disclosed by the prior art. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Thus, in the absence of additional information, the Examiner’s determination that the claimed amounts would have been obvious is adequately supported by the evidence of record. Finally, Appellant argues that because Boyd teaches water-based inks, and Yang teaches organic solvent-based inks, a person of skill in the would not have combined their teachings as required for the rejection (Appeal Br. 10). However, as explained by the Examiner (Appeal Br. 29-30), both Boyd and Yang are directed to ink compositions used on glass substrates, and both Appeal 2021-000390 Application 15/743,009 9 references also teach ink compositions containing organic solvents and resins. Therefore, the proposed combination of the references is proper. Accordingly, Rejections 9 and 10 are affirmed. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 6, 15, 17, 21, 24 103 Aoki, McGibbon 1, 2, 4, 6, 15, 17, 21, 24 10, 13 103 Aoki, McGibbon, Momose, Irii 10, 13 18, 20, 29-32 103 Aoki, McGibbon, Zhu 18, 20, 29-32 23 103 Aoki, McGibbon, Halfyard 23 1, 2, 6, 8, 15, 17, 21, 24 103 Aoki, Sharma 1, 2, 6, 8, 15, 17, 21, 24 10, 13 103 Aoki, Sharma, Momose, Irii 10, 13 18, 20, 29-32 103 Aoki, Sharma, Zhu 18, 20, 29-32 23 103 Aoki, Sharma, Halfyard 23 1, 2, 4, 24, 26 103 Boyd, Yang 1, 2, 4, 24, 26 8 103 Boyd, Yang, Product Bulletin 8 Overall Outcome 1, 2, 4, 6, 8, 10, 13, 15, 17, 18, 20, 21, 23, 24, 26, 29-32 Appeal 2021-000390 Application 15/743,009 10 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) (2019). AFFIRMED