SUN CHEMICAL CORPORATION

Patent Trials and Appeals BoardMar 10, 2021

2020002459 (P.T.A.B. Mar. 10, 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. 15/569,648 10/26/2017 Michael PICKRELL 66847-10012 C-1024 US 7221 96610 7590 03/10/2021 Ostrolenk Faber LLP 845 THIRD AVENUE 8TH FLOOR New York, NY 10022 EXAMINER REDDY, SATHAVARAM I ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 03/10/2021 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): pat@ostrolenk.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL PICKRELL, NIGEL CAIGER, and DEREK ILLSLEY Appeal 2020-002459 Application 15/569,648 Technology Center 1700 Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a), from the Examiner’s decision finally rejecting claims 1, 2, 4, 7, 8, 11, 15, 17–20, 24, 25, 28, 29, 31, 32, 34, 36, 38–40, 42, 43, and 45–51.3 We REVERSE. 1 The appeal record includes the following documents: Specification filed Oct. 26, 2017 (“Spec.”); Final Office Action dated Feb. 20, 2019 (“Final Act.”); Appeal Brief filed Oct. 3, 2019 (“Appeal Br.”); and Examiner’s Answer dated Dec. 2, 2019 (“Ans.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as the assignee, Sun Chemical Corporation. Appeal Br. 1. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2020-002459 Application 15/569,648 2 CLAIMED SUBJECT MATTER The invention relates to an electrically-insulating energy-curable inkjet fluid. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An ink or coating composition comprising a) at least one multifunctional hybrid monomer having a polymerizable (meth)acrylate group and a polymerizable vinyl ether group; b) between 0.1 to 15.0% by weight of photoinitiator wherein at least 50% by weight of the photoinitiator is a low migration photoinitiator, wherein the ink or coating is energy curable, wherein the ink or coating composition comprises less than 30% by weight of a monofunctional monomer and less than 10% by weight of solvent, and wherein, in the cured state, the ink or coating exhibits less than 10% weight loss when heated at 150° for a period of time in the range of thirty minutes to two hours. Appeal Br. 11 (Claims Appendix). REFERENCES The Examiner relies on the following prior art: Name Reference Date Sloan US 7,662,224 B2 Feb. 16, 2010 Kamen US 2003/0109599 A1 June 12, 2003 Kondo US 2003/0149130 A1 Aug. 7, 2003 Edison US 2009/0000508 A1 Jan. 1, 2009 REJECTIONS 1. Claims 1, 2, 4, 7, 8, 11, 15, 17–20, 24, 25, 34, 36, 38–40, 42, 43, and 45–50 are rejected under 35 U.S.C. § 103 over Edison. Final Act. 3– 11. Appeal 2020-002459 Application 15/569,648 3 2. Claims 28 and 29 are rejected under 35 U.S.C. § 103 over Edison and Sloan. Final Act. 11–12. 3. Claims 31 and 32 are rejected under 35 U.S.C. § 103 over Edison and Kamen. Final Act. 12–14. 4. Claim 51 is rejected under 35 U.S.C. § 103 over Edison and Kondo. Final Act. 14–15. OPINION The Examiner found that Edison’s Example 15-1 describes a substantially solvent-free radiation curable inkjet ink comprising the Appellant’s preferred multifunctional hybrid monomer (VEEA) and a blend of polymerization initiators that includes one of the Appellant’s preferred low migration photoinitiators (Irgacure 819). Final Act. 4. The Appellant does not dispute these findings, but argues that the Examiner relied on impermissible hindsight in finding that the ordinary artisan would have modified Edison’s polymerization initiator blend such that Irgacure 819 was present in an amount of at least 50% by weight. See generally Appeal Br. 6–9. More specifically, the Appellant argues that the Examiner relies on an unsupported finding that Irgacure 819 is equivalent and interchangeable with the blend of photoinitiators used in Edison’s Example 15-1 composition. See id. at 8–9; Final Act. 5. We agree. Edison’s mere identification of photoinitiators as “suitable” for use in its inkjet ink compositions, Edison ¶ 82, does not amount to a teaching that any single photoinitiator or blend of photoinitiators “do[es] substantially the same thing in the same way,” In re Obermeyer, 181 F.2d 210, 212 (CCPA 1950). Moreover, the Specification examples evidence the contrary. See, e.g., Spec. ¶ 92 (“Inventive Example 4 shows the significant benefit of Appeal 2020-002459 Application 15/569,648 4 replacing the PI component of Inventive Example 2 with difunctional and polymeric photoinitiators, in terms of the volatile matter produced at 150°C.”). Further, the Specification discloses that the photoinitiators 2- hydroxy-2-methylpropiophenone and 1-hydroxycyclohexyl phenyl ketone, both of which are included in Edison’s list of suitable photoinitiators, Edison ¶ 82, should not be included, or at least minimized in the inventive compositions because they can contribute to volatilization losses during thermal treatment processes. See Spec. ¶¶ 30, 46. Other than the unsupported assertion that Edison’s photoinitiators are equivalent and interchangeable, the Examiner has not provided a reason why the ordinary artisan would have replaced all or a portion of Edison’s Example 15-1’s photoinitiator blend with Irgacure 819. We are persuaded, therefore, that the Examiner’s findings are insufficient to support a prima facie case of obviousness as to claim 1. Because all grounds of rejection are based on the Examiner’s unsupported findings as to Edison, see generally Final Act. 11–15, we reverse all grounds of rejection. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 2, 4, 7, 8, 11, 15, 17–20, 24, 25, 34, 36, 38–40, 42, 43, 45–50 103 Edison 1, 2, 4, 7, 8, 11, 15, 17–20, 24, 25, 34, 36, 38–40, 42, 43, 45–50 28, 29 103 Edison, Sloan 28, 29 31, 32 103 Edison, Kamen 31, 32 51 103 Edison, Kondo 51 Appeal 2020-002459 Application 15/569,648 5 Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed Overall Outcome: 1, 2, 4, 7, 8, 11, 15, 17–20, 24, 25, 28, 29, 31, 32, 34, 36, 38–40, 42, 43, 45–51 REVERSED