SUN CHEMICAL CORPORATION

Patent Trials and Appeals Board

Mar 9, 2022

2021003590 (P.T.A.B. Mar. 9, 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. 15/316,739 12/06/2016 Clive Edward LAWRENCE 66847-9712 C-1004 US 3639 96610 7590 03/09/2022 Ostrolenk Faber LLP 845 THIRD AVENUE 8TH FLOOR New York, NY 10022 EXAMINER ZIMMERMAN, JOSHUA D ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 03/09/2022 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) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CLIVE EDWARD LAWRENCE Appeal 2021-003590 Application 15/316,739 Technology Center 2800 Before ADRIENE LEPIANE HANLON, JENNIFER R. GUPTA, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 16, 17, 19, 21, 25, 26, 28, 29, and 33-42. We have jurisdiction. 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 Sun Chemical Corporation. Appeal Br. 2. Appeal 2021-003590 Application 15/316,739 2 CLAIMED SUBJECT MATTER The subject matter on appeal is directed to “energy curable printing ink or coating composition[s]” that are “substantially free of N-vinyl compounds.” Claim 1 (Claims App.).2 Sole independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An energy curable printing ink or coating composition comprising: a) between 0.5 to 10 wt% of methyl phenyl glycoxylate photoinitiator; b) between 10 to 60 wt% of at least one monofunctional acrylate or methacrylate monomer; and c) between 5 to 25 wt% of at least one difunctional acrylate or methacrylate monomer, wherein the printing ink or coating composition is substantially free of N-vinyl compounds. Claims App. 2. REJECTIONS On appeal, the Examiner maintains the following rejections under 35 U.S.C. § 103: I. Claims 1, 2, 16, 17, 19, 21, 25, 26, 28, 29, 35-37, and 39-42 over Nagvekar3; and II. Claims 33, 34, and 38 over Nagvekar in view of Hood.4 2 In this Decision, we refer to the Claims Appendix dated October 22, 2020 filed in response to the Notice of Non-Compliant Appeal Brief dated October 19, 2020. 3 US 7,893,127 B2, issued February 22, 2011. 4 US 2013/0078879 A1, published March 28, 2013. Appeal 2021-003590 Application 15/316,739 3 OPINION We address the claims separately to the extent they are so argued by Appellant, and review the rejections for reversible error based on the arguments and evidence Appellant presents. 37 C.F.R. § 41.37(c)(1)(iv) (2019); cf. 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) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). Upon consideration of Appellant’s arguments (Appeal Br. 2-9) in light of the evidence in the appeal record, we determine that Appellant has identified no such error. We therefore affirm the obviousness rejections of the appealed claims for the reasons well-expressed by the Examiner. Final Act. 2-7; Ans. 3-7. We add the following only for emphasis. Claims 1, 2, 16, 17, 19, 21, 25, 26, and 35-37 Appellant argues that Nagvekar discloses the claimed methyl phenyl glycoxylate photoinitiator, i.e., “methylbenzoylformate,” in Table 17, but “does not mention this photoinitiator again,” and “does not indicate that there are any advantages” in using this photoinitiator in ink compositions. Appeal Br. 3. Appellant’s attempt to minimize Nagvekar’s single disclosure of methylbenzoylformate as a photoinitiator is unavailing, however, because “a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.” In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). Here, it matters not how many times Nagvekar discloses this compound because, as the Examiner finds, the skilled artisan would have understood such disclosure as evidence that this specific photoinitiator could have been used Appeal 2021-003590 Application 15/316,739 4 in Nagvekar’s ink compositions with a reasonable expectation of success. Final Act. 2-3; Ans. 2-3. We also discern no merit in Appellant’s arguments pertaining to the claim limitation requiring the compositions to be “substantially free of N- vinyl compounds.” Appeal Br. 3-5. To the extent Appellant is arguing that “substantially free” necessarily equals zero, that premise is unsupported on this record. When the term “substantially” is used as a word of degree--as it is here--we must look to the Specification to determine a standard for measuring that degree. See Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (“When a word of degree is used the district court must determine whether the patent’s specification provides some standard for measuring that degree.”). Here, Appellant does not point us to a definition of what amount constitutes “substantially free,” and the use of the term “substantially” at the very least implies that some amount of an N-vinyl compound could be present in the claimed composition. During prosecution, claims are given their broadest reasonable interpretation, and “when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). This line of argument furthermore fails to squarely address the Examiner’s finding that Nagvekar does not require N-vinyl compounds, thus meeting the claim limitation requiring the composition to be “substantially free of N-vinyl compounds.” Final Act. 2. Rather, Appellant focuses on the presence of 1.5% of N-vinyl caprolactam5 in Nagvekar’s Examples 8A and 5 By not defining what constitutes “substantially free,” Appellant provides no basis to establish that 1.5% of N-vinyl caprolactam falls outside the scope of claim 1. Appeal 2021-003590 Application 15/316,739 5 8B, to the exclusion of the general teachings of this reference. Appeal Br. 3-5. Appellant additionally makes several allegations of impermissible hindsight and we find each to be unpersuasive. Appeal Br. 5-6. Specifically, Appellant asserts that Nagvekar’s Examples 8A and 8B fail to include the claimed “difunctional acrylate or methacrylate monomer.” Id. That argument lacks merit because Appellant fails to address the Examiner’s finding that the claimed “difunctional acrylate or methacrylate monomer” is disclosed in column 5 of Nagvekar. Final Act. 2 (citing Nagvekar 5:37-56). Appellant also contends that the rejection was formulated by improperly gleaning information from Appellant’s disclosure, “combing through” the breadth of Nagvekar’s disclosure and reconstituting the claims. Appeal Br. 6. That assertion is unpersuasive, however, because “disclos[ing] a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art.” Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). Nagvekar 2:10-11, 21:36-22:31. Appellant’s arguments regarding purported unexpectedly superior results are likewise unpersuasive for several reasons. First, the data referenced by Appellant is directed to two examples and two comparative examples. Appeal Br. 4-5. Such data is extremely limited in scope vis-à-vis the breadth of the claims. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“It is well established that the objective evidence of nonobviousness must be commensurate in scope with the claims.”). Moreover, there are compositional differences beyond the presence or absence of N-vinyl caprolactam in Examples 1A and 1G and Examples 3A Appeal 2021-003590 Application 15/316,739 6 and 3C--in particular the amounts of “cyclic trimethylolpropane [formal] acrylate” sourced as “Sartomer SR531.” Spec. ¶¶ 79, 95; see In re Dunn, 349 F.2d 433, 439 (CCPA 1965) (“While we do not intend to slight the alleged improvements, we do not feel it an unreasonable burden on appellants to require comparative examples relied on for non-obviousness to be truly comparative. The cause and effect sought to be proven is lost here in the welter of unfixed variables.”). Here, Appellant does not explain, nor do we discern, how the purported superior properties are due exclusively to the presence or absence of N-vinyl caprolactam. Appeal Br. 4-5. Appellant also fails to establish that the observed results would not have been expected by the skilled artisan. “[B]y definition, any superior property must be unexpected to be considered as evidence of non- obviousness. Thus, in order to properly evaluate whether a superior property was unexpected, the [fact-finder] should have considered what properties were expected.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (citations omitted). On balance, the weight of the evidence supports the Examiner’s conclusion of obviousness. Thus, for the reasons discussed above, as well as those the Examiner provides, we sustain the rejection of these claims as obvious. Appeal 2021-003590 Application 15/316,739 7 Claims 28 and 29 Claims 28 and 29 depend from claim 1 and recite sub-genera of N- vinyl compounds (claim 286) and species of N-vinyl compounds (claim 29) that the coating composition is “substantially free” from.7 Appellant’s argument with respect to these claims is similar to that provided with respect to claim 1--that Nagvekar’s Examples 8A and 8B contain 1.5% of N-vinyl caprolactam, and that “these examples are Nagvekar’s only disclosure of including MPG in an ink composition.” Appeal Br. 8. That argument is not persuasive for essentially the reason it was unpersuasive for the rejection of claim 1 set forth supra. Namely, Appellant has not defined with precision what constitutes “substantially free.” Nor has Appellant addressed the Examiner’s finding that Nagvekar does not require N-vinyl compounds, thus evincing this limitation. Final Act. 4. We, therefore, sustain the rejection of claims 28 and 29. Claim 39 This claim depends from claim 1 and requires an additional non- methyl phenyl glycoxylate photoinitiator, and requires the methyl phenyl 6 Claim 28 appears to also be indefinite under 35 U.S.C. 112(b) because it recites “substantially free of N-vinyl compounds selected from . . . N-vinyl compounds.” We leave it to the discretion of the Examiner to reject claim 28 accordingly in the event of further prosecution. 7 It is not at all clear how these claims further limit claim 1 as required by 35 U.S.C. § 112(d). That is, if the composition of claim 1 is “substantially free” of N-vinyl compounds, it is not clear how claims 28 and 29 further limit claim 1 by identifying a specific class or species of N-vinyl compound the composition is substantially free from. We leave it to the discretion of the Examiner to further reject these claims accordingly. Appeal 2021-003590 Application 15/316,739 8 glycoxylate photoinitiator to be greater than 50 wt% based on all photoinitator present in the composition. Appellant argues that this limitation is not taught or suggested by Nagvekar because Examples 8A and 8B do not contain “greater than 50 wt%” of methyl phenyl glycoxylate based on all photoinitiator present. Appeal Br. 8-9. This argument lacks merit, however, because it does not address the full scope of the Examiner’s rejection. Final Act. 5. Specifically, the Examiner determines that the skilled artisan would have optimized the amount of methyl phenyl glycoxylate to arrive at the claimed amount. Id. Because that rationale is not challenged with any specificity on this record, Appellant does not identify reversible error in the rejection of this claim. Claims 40-42 These claims depend ultimately from claim 1 and require the presence of cyclic trimethyl propane formal acrylate (“CTFA”). The Examiner finds that Nagvekar discloses this limitation at column 5, line 27. Final Act. 5. Appellant asserts that Negvekar does not disclose compositions that include [methyl phenyl glycoxylate] and CTFA, and does not suggest compositions that include CTFA. Appeal Br. 9. Appellant’s bare assertion falls short, however, because Appellant fails to squarely address--much less show error in--the Examiner’s reliance on column 5, line 27 of Nagvekar. We, therefore, sustain the rejection of these claims. Claims 33, 34, and 38 Appellant’s sole argument for these claims is that the Hood reference fails to remedy certain alleged deficiencies of Nagvekar. Appeal Br. 9. Appeal 2021-003590 Application 15/316,739 9 Having found no deficiencies in the Examiner’s reliance on Nagvekar, we are unpersuaded of error in the rejection of these claims. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 16, 17, 19, 21, 25, 26, 28, 29, 35-37, 39-42 103 Nagvekar 1, 2, 16, 17, 19, 21, 25, 26, 28, 29, 35-37, 39-42 33, 34, 38 103 Nagvekar, Hood 33, 34, 38 Overall Outcome 1, 2, 16, 17, 19, 21, 25, 26, 28, 29, 33-42 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