Ex Parte CHOPRA et al

Patent Trial and Appeal Board

Jun 28, 2018

13925352 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/925,352 06/24/2013 Naveen CHOPRA
74934 7590 06/29/2018
MARYLOU J. LAVOIE, ESQ. LLC
I BANKS ROAD
SIMSBURY, CT 06070
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.
20130525US01 7605
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
06/29/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NA VEEN CHOPRA, JAMES D. MA YO,
GABRIEL IFTIME, and YILIANG WU
Appeal2017-007863
Application 13/925,352
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's July
14, 2016 decision finally rejecting claims 1-20. 1 We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Xerox Corporation (Appeal
Br. 1).
Appeal2017-007863
Application 13/925,352
CLAIMED SUBJECT MATTER
Appellants' invention is directed to silver ink compositions, which are
used for printing conductive lines and interconnects between electric parts in
devices (Spec. ,r 1 ). Independent claim 1 and dependent claim 8 are
representative and are reproduced below from the Claims Appendix of the
Appeal Brief:
1. A conductive ink comprised of a conductive material, a
thermoplastic binder including a polyvinylbutyral terpolymer
and a polyvinylpyrrolidone, and a solvent, wherein a weight
ratio of the polyvinylpyrrolidone to the polyvinylbutyral
terpolymer is from about 1 :3 to about 1 :30.
8. The conductive ink of claim 7, wherein a weight ratio of
the polyvinylpyrrolidone to the polyvinylbutyral terpolymer is
from about 1 :3 to about 1 :25.
DISCUSSION
The only rejection on appeal is the rejection of claims 1-20 under 35
U.S.C. § 103 as unpatentable over Gellrich2 in view ofWang. 3 With the
exception of claim 8, Appellants do not offer separate arguments in support
of the dependent claims. Arguments are directed to limitations recited in
independent claim 1 (see generally Br. 6-15). Accordingly, our discussion
will focus on the rejection of claims 1 and 8. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Gellrich' s disclosure teaches each limitation
of the conductive ink comprising a polyvinylbutyral binder recited in claim 1
except that Gellrich does not teach that the ink includes:
(i) polyvinylpyrrolidone (Ans. 2); and (ii) the requisite weight ratio of
2 Gellrich, US 2008/0246007 Al, published October 9, 2008.
3 Wang et al., US 2013/0228207 Al, published September 5, 2013.
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Application 13/925,352
polyvinylpyrrolidone to polyvinylbutyral binders from about 1 :3 to about
1 :30 (id. at 3).
With regard to (i), the Examiner finds that Wang teaches a conductive
ink with a viscosity of 10-30 Pa· s comprising metal particles, 1-10 %
polyvinylpyrrolidone binder, other optional binders, and butyl carbitol
solvent (id. at 3 ( citing Wang ,r,r 61, 62, 64) ). The Examiner further finds
that Wang's disclosed "binder and []solvent provide favorable stability,
printability, viscosity and sintering properties to the ink" (Ans. 3 ( citing
Wang ,r,r 61, 62)).
Therefore, according to the Examiner, it would have been obvious to
"combine the binder, solvent and viscosity of Wang[] with the ink
composition of Gellrich in order to obtain a conductive ink having favorable
printability, viscosity, stability and sintering properties" (Ans. 3). The
Examiner further determines that the combination Wang's
polyvinylpyrrolidone and Gellrich's polyvinylbutyral as known binders in a
conductive ink is prima facie obvious because it would have provided the
predictable result of "improve[ d] ... printability, stability, viscosity and
sintering properties of the ink" (id. at 4).
With respect to (ii), the Examiner finds that Gellrich teaches that the
amount of polyvinylbuterol is 1-30% (id. at 3 (citing Gellrich ,r 17)). The
Examiner further finds that "[ c ]ombining the amounts of each binder from
Gellrich and Wang gives a ratio of [polyvinylpyrrolidone] to
[polyvinylbutyral] of about 1 :0.1 to 1 :30," which overlaps the ratios recited
in claims 1 and 8 (Ans. 3).
Appellants make the following principal arguments urging reversal of the
obviousness rejection: (1) Wang's teachings regarding an electroconductive
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Application 13/925,352
paste are non-analogous art to the instant claimed subject matter, which is
directed to a conductive ink (Br. 6-8); (2) dictionary definitions provide support
for the distinction between inks and non-analogous pastes (id. at 8); (3) the
ordinary skilled artisan would not have been motivated to combine Wang's
teachings with Gellrich's because "[t]he problems of how to prepare [Wang's]
high temperature sintered thick glass frit-like pastes for solar cell contacts are
not pertinent to the problems of how to prepare [Gellrich's] low temperature
conductive printing inks" (id. at 9; see also id. at 12-13); (4) the applied prior
art does not disclose or suggest the ratios recited in claims 1 or 8 of
polyvinylpyrrolidone to polyvinylbutyral because Wang's art is non-analogous
and Gellrich is silent "that the binder can be a combination of two binders" (id.
at 11; see also id. at 12; Reply Br. 6); and ( 5) the claimed "combination and
criticality of' conductive ink materials provides "the unexpected result" of a
"film which has a sheet resistivity of 11 mO/sq./mil or less ... without
requiring [Gellrich's] complicated multiple treatment steps" (id. at 14).
Appellants' arguments (1) and (2) are not persuasive.
To be properly relied upon in an obviousness analysis, a prior art
reference must qualify as "analogous art," i.e., it must satisfy one of the
following conditions: (i) the reference must be from the same field of
endeavor as the claimed invention; or (ii) the reference must be reasonably
pertinent to the particular problem with which the inventor is involved.
Innovention Toys, LLCv. MGA Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011).
In this instance, the Examiner finds that Wang is within the relevant
field of endeavor because: (1) the applied "prior art is replete with examples
of a conductive ink or paste being described as the same thing or used
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Application 13/925,352
interchangeably" (Ans. 4); (2) Appellants' relied upon definitions of ink and
paste are silent with respect the application of such materials to form an
electrically conductive film (id.); and (3) the Specification, 4 Gellrich, and
Wang are each concerned with forming electrically conductive films (id.).
To the latter point, the Examiner makes further factual findings
relating to the Specification's disclosure that conductive inks are used to
form electrical connections in solar panels (id. at 4--5 ( citing Spec. ,r,r 1-5)).
The Examiner finds that "[s]imilarly, Wang teaches that a conductive paste
is used to form electrical connections (contacts) in solar cells or solar
panels" (Ans. 5 (citing Wang ,r,r 2-5)). Likewise, the Examiner finds that
both the Specification and Wang describe analogous methods of printing
conductive materials onto a substrate. According to the Examiner, "Wang's
preferred methods of printing are screen printing and ink-jet printing" and,
"[ s ]imilarly, the instant application teaches printing the conductive ink on a
substrate to make the conductive film (Ans. 5 ( emphasis added) ( citing
Wang ,r 95; Spec. ,r,r 38--40)).
Appellants' Reply Brief does not challenge these findings
(Reply Br. 3-6).
On this record, a preponderance of evidence supports the Examiner's
position that Wang is within the Appellants' field of endeavor. Where the
Examiner finds, without challenge from Appellants, that Wang teaches ink-
4 To the extent that Appellants assert that inks and pastes are distinguishable,
the alleged distinctions are unsupported by the Specification. We note that
the Specification refers to a "silver ink paste," "the conductive paste," and
further discloses that "[t]he ink, fusing device and process are such that the
conductive paste does not offset" (Spec. ,r,r 4, 19, 44 (emphasis added)).
Moreover, claim 6 as originally filed was drawn to a "conductive ink paste"
(emphasis added) (Spec. filed June 24, 2013).
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Application 13/925,352
jet printing of conductive materials onto a substrate to form electrical
connections, Wang is analogous art:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one . . . . [ A ]ny need or
problem known in the field of endeavor ... can provide a
reason for combining the elements in the manner claimed.
See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,417,420 (2007).
Appellants' argument (3) is unpersuasive because it improperly
attacks the references individually and does not address the Examiner's
articulated rationale for the combination. It is well established that
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In this instance, the Examiner has explained that "[ a ]11 of the
properties of printability, stability, viscosity and sintering are important to
the process of printing and curing an ink" and, thus, the ordinary skilled
artisan "would have been motivated to combine the binder, solvent and
viscosity of Wang[] with the ink composition of Gellrich in order to obtain a
conductive ink having favorable printability, viscosity, stability and sintering
properties" (Ans. 5). Therefore, a preponderance of the evidence supports
the Examiner's position that a sufficient reason existed for the ordinary
skilled artisan to combine the two references.
Appellants' argument (4) is not persuasive because Wang's art is
analogous to the claimed invention for the reasons set forth above and in the
Answer. Furthermore, it is immaterial that Gellrich does not disclose that
the binder can be a combination of two binders. As the Examiner finds,
"Wang teaches adding one or more binders, including
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[polyvinylpyrrolidone ], to a conductive ink/paste" (id. at 5). See In re
Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that "[i]t is well
settled that a prior art reference is relevant for all that it teaches to those of
ordinary skill in the art")).
Appellants' argument ( 5) is unpersuasive of reversible error because
the Examiner finds that "Gellrich teaches a sheet resistivity of less than 10
mO/mil ... , which is similar to [ A Jppellant[ s '] sheet resistivity of less than
11 mQ/mil" (Ans. 6 (citing Gellrich ,r,r 11, 35)). Furthermore, we agree with
the Examiner that it is immaterial that Appellants' alleged benefit results
from a reduction in film manufacturing steps as compared to Gellrich's
method. "Many of appellant's arguments fail from the outset because ...
they are not based on limitations appearing in the claims .... " In re Self,
671 F.2d 1344, 1348 (CCPA 1982). Therefore, Appellants' proffered
evidence of unexpected results is insufficient to rebut the prima facie case of
obviousness set forth by the Examiner.
Accordingly, we sustain the rejection of claims 1 and 8 under§ 103.
CONCLUSION
We AFFIRM the rejection of claims 1-20 under 35 U.S.C. § 103 over
Gellrich in view of Wang.
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
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