Ex Parte RYBERG et al

Patent Trial and Appeal Board

Nov 26, 2018

13873773 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/873,773 04/30/2013
21839 7590 11/28/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
MELKER RYBERG
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.
1033462-000398 9487
EXAMINER
RICHMOND, SCOTT A
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MELKER RYBERG and JAN JACOBSSON
Appeal 2018-001395
Application 13/873,773
Technology Center 2800
Before ROMULO H. DELMENDO, MARK NAGUMO, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant 1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner's final decision to reject claims 1-5, 7-22, and 27-30. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The Applicant ("Appellant") is listed as "CERALOC INNOVATION AB"
(Application Data Sheet filed April 30, 2013). The Appellant identifies the
real party in interest as "V ALINGE INNOVATION AB" (Appeal Brief filed
May 23, 2017 ("Appeal Br.") at 2).
2 Appeal Br. 6-18; Final Office Action entered September 23, 2016 ("Final
Act.") 3-17; Examiner's Answer entered September 27, 2017 ("Ans.") 3-11.
Appeal 2018-001395
Application 13/873,773
I. BACKGROUND
The subject matter on appeal relates to a method for forming a
decorative design on an element of a wood-based material 3 and to a building
panel comprising such an element (Spec. 1, 11. 10-11; Abstract). The
Inventors state that aqueous ink bleeding can be controlled and/or reduced
by applying a specified primer (id. at 4, 11. 15-20).
Representative claims 1, 13, and 15 are reproduced from the Claims
Appendix to the Appeal Brief, with key limitations emphasized, as follows:
1. A method for forming a decorative design on an
element of a wood-based material, the method comprising:
providing an element of a wood-based material having a
surface, said surface being solid and being formed of said wood-
based material;
applying a primer adapted to control bleeding of an
aqueous ink on at least a portion of said surface, wherein the
primer is an ink fixing primer and comprises at least one metallic
salt; and
printing a decorative design with said aqueous ink on at
least a portion of said surface by means of a digital printing
device,
wherein the primer precipitates or agglomerates said
aqueous ink, the primer being an aqueous solution comprising
the at least one metallic salt, and
wherein the at least one metallic salt comprises a
monovalent metallic salt being Na+.
13. A building panel, comprising an element of a wood-
based material forming a surface of said building panel, said
surface being solid and being formed of said wood-based
material, said surface having a decorative design printed thereon,
3 The Inventors state that "wood-based material" does not include paper
essentially comprising highly-refined a-cellulose fibers (Specification filed
April 30, 2014 ("Spec.") at 6, 11. 10-12).
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Application 13/873,773
said decorative design being formed of an aqueous ink and a
primer comprising at least one metallic salt, wherein
the primer is an aqueous solution comprising the at least
one metallic salt, and
the metallic salt comprises a monovalent metallic salt
being Na+ or a polyvalent metallic salt being selected from Ca2+,
Cu2+, Ni2+, Mg2+, Zn2+, Ba2+, Af3+, or Fe3+, or a combination
thereof
15. A method for forming a decorative design on an
element of a wood-based material, the method comprising:
providing an element of a wood-based material having a
surface, said surface being solid and being formed of said wood-
based material;
applying a primer adapted to control bleeding of said ink
on at least a portion of said surface, wherein the primer is a UV
curable primer; and
printing a decorative design with an aqueous ink on at least
the portion of said surface by means of a digital printing device.
(Claims Appendix 1, 3--4.)
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains multiple rejections under pre-AIA
35 U.S.C. § I03(a) as follows:
A. Claims 1-3, 5, 7-11, and 27-29 as unpatentable over Sarkisian
et al. 4 ("Sarkisian") in view of Koenig et al. 5 ("Koenig");
B. Claim 4 as unpatentable over Sarkisian in view of Koenig and
Ganapathiappan et al. 6 ("Ganapathiappan");
C. Claim 12 as unpatentable over Sarkisian in view of Koenig and
4 US 2011/0303113 Al, published December 15, 2011.
5 US 2011/0151148 Al, published June 23, 2011.
6 US 2011/0135815 Al, published June 9, 2011.
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Application 13/873,773
Brooker et al. 7 ("Brooker");
D. Claims 13 and 14 as unpatentable over Brooker in view of
Sarkisian;
E. Claims 15-17, 19, and 20 as unpatentable over Sarkisian in
view of Frey et al. 8 ("Frey");
F. Claim 18 as unpatentable over Sarkisian in view of Frey and
Ganapathiappan;
G. Claim 21 as unpatentable over Sarkisian in view of Frey and
Vogel et al. 9 ("Vogel");
H. Claim 22 as unpatentable over Sarkisian in view of Frey and
Brooker; and
I. Claim 30 as unpatentable over Sarkisian in view of Frey and
Koenig.
(Ans. 3-11; Final Act. 3-17.)
III. DISCUSSION
The Appellant only provides arguments for claim 1 (Rejection A),
claim 13 (Rejection D), and claim 15 (Rejection E) (Appeal Br. 7-18).
Therefore, these claims are addressed separately below, but the remaining
claims stand or fall with one of these claims. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 (Rejection A). The Examiner finds that Sarkisian describes
a method including every limitation recited in claim 1 except it discloses a
polyvalent salt as a fixing agent rather than a monovalent Na+ salt as
7 US 2002/0061389 Al, published May 23, 2002.
8 US 2012/0178844 Al, published July 12, 2012.
9 US 2007/0193174 Al, published August 23, 2007.
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Application 13/873,773
specified in the claim (Final Act. 3--4 ). The Examiner finds, however, that
Koenig discloses a monovalent metallic salt such as Na+ salt as a fixing
agent (id. at 4; Ans. 4--5). The Examiner concludes from these findings that,
because both Sarkisian and Koenig disclose the use of a metal salt as a
fixing agent in a primer, one of ordinary skill in the art would have had a
sufficient reason to modify Sarkisian's primer to include Koenig's
monovalent Na+ salt fixing agent (Ans. 4--5).
The Appellant contends that one of ordinary skill in the art would not
have modified Sarkisian's primer in view of Koenig's teachings because
drying the ink, as disclosed in Koenig, is not the same as agglomerating the
ink, as disclosed in Sarkisian (Appeal Br. 9). The Appellant urges that,
when an agglomerating agent is used as in Sarkisian, a drying agent would
not be needed because ink bleeding would already be controlled by the
agglomerating agent (id.). The Appellant also argues that one of ordinary
skill in the art would not have applied Koenig's teachings focused on a
drying agent for a printable paper sheet in Sarkisian's method, which is
directed to printing on a wood-based material (id. at 10). In addition, the
Appellant argues that one of ordinary skill in the art would not have been
motivated to apply Koenig's drying agent for paper that is to be used at a
later time to Sarkisian's wood-based material because Sarkisian's method
involves applying the pre-treatment composition immediately before an ink
is applied such that "[t]he entire process (i.e., including the pre-treatment
and the ink printing) occurs between 1 and 30 seconds" (id. at 11 ).
The Appellant's arguments fail to identify any reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
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Application 13/873,773
Sarkisian describes a method for printing durable images onto a
recording medium such as wood, wherein the method includes depositing a
pre-treatment composition on the recording medium and then jetting an
aqueous ink composition (Sarkisian ,r,r 1, 5-7, and 31 ). Sarkisian teaches
that the pre-treatment composition contains a polyvalent metal salt as a
fixing agent (id. ,r 5). Specifically, Sarkisian teaches that the pre-treatment
composition will react with the jetted aqueous ink composition and that
contact between these compositions may cause colorants present in the ink
formulation to precipitate out and result in enhancement of image quality
attributes (id. ,r 6). Sarkisian states that "when [the] ink and pre-treatment
composition meet on the media surface, an effective immobilization of ink
colorants is realized and nearly all the colorants are deposited on the surface
of the media rather than penetrating the media and depositing below the
surface" (id.). Sarkisian teaches further that "the pretreatment fluid provides
a control of bleed and coalescence with enough print durability to allow the
print to make wet turns on the press and undergo finishing operations prior
to the application of the over-print varnish composition" (id. ,r 7; emphasis
added).
Koenig teaches that ink is used in inkjet printing on paper, where the
paper is based on wood pulp and/or synthetic fibers, and that the ink may
contain a large quantity of solvent (Koenig ,r,r 2, 4). Koenig teaches that
such a large solvent quantity in the ink may require increased dry times for
the deposited ink droplets and may lead to smearing of the ink droplets (id.
,r 4). To address this problem, Koenig teaches treating the paper substrate
with an aqueous coating composition comprising a monovalent metal salt
drying agent, such as a sodium chloride, and optionally one or more
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Application 13/873,773
multivalent (i.e., polyvalent) metal salts, in order to improve the drying time
of the deposited ink (id. ,r,r 36, 47, 98). Specifically, Koenig teaches that the
monovalent metal drying salt destabilizes the pigment emulsion in the
deposited ink droplets, thereby causing precipitation of the pigment particles
and thus resulting in a faster and improved drying time (id. ,r 89). In
addition, as the Examiner finds (Ans. 4), Koenig teaches:
[The] mixture of monovalent and multivalent metal drying salts
in the metal salt drying agent (wherein the amount of monovalent
salt(s) is equal to or greater than the amount of multivalent
salt(s)) may provide as high or almost as high a print density
(e.g., black print density values of at least about 1.60) as those
paper substrates having intermediate HST values that use
multivalent salts alone as the metal salt drying agent.
(id. ,r 91; emphasis added).
Although Sarkisian states that a pre-treatment composition containing
a polyvalent metal salt results in precipitation of the ink colorants (Sarkisian
,r 6) such that it "provides a control of bleed and coalescence with enough
print durability to allow the print to make wet turns on the press and
undergo finishing operations prior to the application of the over-print
varnish composition" (id. ,r 7; emphasis added), a person having ordinary
skill in the art would have understood from Koenig that using a monovalent
salt----either alone or in combination with a polyvalent metal salt-is another
way to cause the ink pigments to precipitate such that solvent drying time is
improved while maintaining, e.g., good print density and color-to-color
bleed control property (Koenig ,r,r 55, 63, 89, 91). Koenig's teaching that a
monovalent metal salt----either alone or in combination with a polyvalent
metal salt-would improve solvent drying would have suggested to a person
having ordinary skill in the art that any possibility of smearing or undesired
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Application 13/873,773
transfer of ink components that might otherwise occur in Sarkisian's
streamlined process would be reduced even further. Therefore, a person
having ordinary skill in the art would have been prompted to modify
Sarkisian's pre-treatment composition to contain a monovalent metal salt in
lieu of or in addition to a polyvalent metal salt in order to eliminate or
reduce further any possibility of undesirable ink component or solvent
transfer following the inkjet printing process, while retaining good printing
density and color bleed control characteristics.
The Appellant's argument that Koenig's disclosure relates to paper
substrates-as distinguished from Sarkisian's (and the Inventors') wood-
based material-is not persuasive, because Koenig teaches that paper
substrates may be based on wood pulp (i.e., "wood-based"). The Appellant
does not direct us to evidence that all wood pulp-based papers would be
papers "essentially comprising" highly-refined a-cellulose fibers, which are
the only papers excluded from the disclosed scope of "wood-based material"
(Spec. 6, 11. 9--12). But even if we assume that all wood pulp-based papers
are those "essentially comprising" highly-refined a-cellulose fibers,
Koenig's teachings on the monovalent metal salt's beneficial effects would
nonetheless be highly relevant because Koenig teaches that the monovalent
metal salts destabilize the pigment emulsion in the deposited ink droplets,
causing precipitation of pigment particles, thus resulting in a faster and
improved dry time (Koenig ,r 89). The Appellant has not shown why this
mechanism would not have been expected to apply to wood-based materials
as recited in claim 1.
For these reasons, we uphold the Examiner's rejection as maintained
against claim 1.
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Claim 13 (Rejection D). Claim 13, reproduced above, requires a
building panel with a wood surface on which is printed a decorative design
produced from a specified primer and an aqueous ink.
The Examiner finds that Brooker describes a building panel with a
surface formed of a wood-based material on which a decorative design is
printed using a primer composition containing a metal salt and an inkjet
formulation (Final Act. 8). The Examiner finds that Brooker "does not
explicitly disclose [that] the metallic salt comprises a monovalent metallic
salt being Na[+J or a polyvalent metallic salt being selected from Ca2+, Cu2+,
Ni2+, Mg2+, Zn2+, Ba2+, AI3+, or Fe3+, or a combination thereof' (id.).
Relying on Sarkisian, however, the Examiner concludes that a person having
ordinary skill in the art would have applied Sarkisian's primer on Brooker's
building panel in order to produce durable images as taught by Sarkisian (id.
at 9).
The Appellant contends that a person having ordinary skill in the art
would not have combined Brooker and Sarkisian in the manner claimed by
the Inventors because Brooker teaches an organometallic complex of a
hydrophobic fatty acid and a trivalent chromium ion that is preferably
halogenated as an image fixing agent (Appeal Br. 13). The Appellant argues
that because Brooker' s chromium-containing complex has already reacted
with the wood cellulose in the building panel, a person having ordinary skill
in the art would have had no apparent reason to modify Brooker in view of
Sarkisian's teaching concerning a polyvalent metal salt fixing agent (id. at
14--15). In the Appellant's view, Brooker teaches away from using
Sarkisian' s pre-treatment composition (id. at 15).
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We discern no persuasive merit in the Appellant's arguments. Claim
13 requires a primer that comprises the specified metallic salt( s) but does not
exclude other salts, such as Brooker' s chromium-containing fixing agent that
is present in the disclosed aqueous solution (Brooker ,r 79). Brooker teaches
that alkali metal salts having a specified hydrophobic moiety and an anionic
group such as sulfate may also be present as anionic surfactants (id. ,r 87).
The term "alkali metal salts" includes Na+ salts, which is all that claim 13
reqmres.
Moreover, notwithstanding Brooker' s teaching that a chromium-
containing fixing agent is used, Sarkisian teaches that a polyvalent metal
salt such as one based on Ca2+ Cu2+ Ni2+ Mg2+ Zn2+ Ba2+ AI3+ and Fe3+
' ' ' ' ' ' ' ' '
acts as a fixing agent for various substrates including wood to control bleed
and coalescence with enough print durability (Sarkisian ,r,r 5-7, 21, 31 ).
Given the collective teachings found in these references, a person having
ordinary skill in the art would have found it obvious to substitute Brooker's
fixing agent with Sarkisian's fixing agent based on a reasonable expectation
that these fixing agents would be interchangeable in terms of controlling
bleed and providing print durability.
Therefore, we uphold the Examiner's rejection as maintained against
claim 13.
Claim 15 (Rejection E). Claim 15, reproduced above, requires a UV
curable primer.
The Examiner finds that Sarkisian does not describe a UV curable
primer (Final Act. 11 ). Relying on Frey, however, the Examiner concludes
that a person having ordinary skill in the art would have been prompted "to
incorporate the UV curable primer of Frey, with the primer and method of
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Sarkisian, in order to modify the drying time of the ink since the drying time
is a critical factor for the production rate of graphic products, as taught by
Frey" (id.).
The Appellant acknowledges that UV curable primers are generally
known (Appeal Br. 17). But the Appellant argues, inter alia, that "Frey's
passing reference in paragraph [0309] to UV curable inks does not explain
whether a UV curable solution could be used in conjunction with a
polyvalent metallic salt (such as that of Sarkisian)" (id. at 18).
We agree with the Appellant on this issue. Frey merely teaches that
UV curable inks are important in certain applications, in which
photopolymerizable compositions are used (Frey ,r 309). The Examiner,
however, does not make the requisite factual findings to support a
determination that Sarkisian's primer may be successfully converted into a
UV curable primer as required by claim 15.
Therefore, we do not sustain the Examiner's rejection as maintained
against claim 15 (and claims 16-22 and 30 directly or indirectly dependent
thereon).
IV. SUMMARY
Rejections A through I are sustained with respect to claims 1-5, 7-14,
and 27-29 but not as to claims 15-22 and 30. Therefore, the Examiner's
final decision to reject claims 1-5, 7-22, and 27-30 is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
11