Ex Parte Tian et al

Patent Trial and Appeal Board

Sep 27, 2017

12799700 (P.T.A.B. Sep. 27, 2017)

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.
12/799,700 04/30/2010 Dong Tian 0813-00-US-01-AFP 8444
138961 7590
Armstrong Flooring, Inc.
2500 Columbia Avenue
P.O. Box 3025
Lancaster, PA 17604
09/29/2017 EXAMINER
ROSWELL, JESSICA MARIE
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
afp_patents @ armstrongflooring.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONG TIAN, JEFFREY S. ROSS,
SUSAN MONROE, and LARRY W. LEININGER
Appeal 2016-008487
Application 12/799,700
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY R. SNAY,
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 66—77. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Specification filed April 30, 2010
(“Spec.”), the Final Office Action mailed October 6, 2014 (“Final Act.”), the
Appeal Brief filed March 13, 2015 (“Appeal Br.”), the Examiner’s Answer
mailed August 27, 2015 (“Ans.”), and the Reply Brief filed October 9, 2015
(“Reply Br.”).
2 Appellants identify the real party in interest as Armstrong World
Industries, Inc. Appeal Br. 2.
Appeal 2016-008487
Application 12/799,700
The claims are directed to ultraviolet V spectra curable coatings for
flooring and other applications. Spec. 12. Claim 66, reproduced below
from the Claims Appendix of the Appeal Brief, is illustrative of the claims
on appeal.
66. A floor covering comprising:
a wear layer formed from a UVV curable composition,
wherein the UVV curable composition comprises:
(a) a resin, wherein the resin is selected from the
group consisting of an acrylated urethane resin, an
acrylated polyester resin, and combinations thereof, or in
the presence of a polyol cross-linker, the resin is selected
from the group consisting of vinyl ether resins, epoxide
resins, and combinations thereof, and
(b) a photoinitiator, wherein the photoinitiator is
selected from the group consisting of free radical
initiators, cationic initiators and mixtures thereof,
wherein the free radical initiator is selected from the
group consisting of phenyl bis(2,4,6-trimethyl benzoyl)
phosphine oxide, 2,4,6-trimethylbenzoyldiphenyl
phosphine oxide, isopropylthioxanthone, l-chloro-4-
propoxy-thioxanthone, 2,4-diethylthioxanthone, 2-
chlorothioxanthone, camphorquinone, and 2-ethyl
anthranquinone, wherein the cationic initiator is an
iodonium salt or a sulfonium salt, and
wherein the photoinitiator is activated and the composition is
cured by UVV light emitting diode (LED) radiation
having the strongest wavelength in the UVV range of 400
to 450 nm.
Appeal Br. 9 (Claims Appendix).
DISCUSSION
The Examiner maintains the rejection of claims 66—69 and 72—77
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Baudin et al.
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Appeal 2016-008487
Application 12/799,700
(US 2003/0213931 Al, published November 20, 2003) (“Baudin”) in view
of Savoie et al. (US 2005/0173046 Al, published August 11, 2005)
(“Savoie”). Final Act. 2—5; Ans. 2-4. In addition, the Examiner maintains
the rejection of claims 70 and 71 under pre-AIA 35 U.S.C. § 103(a) over
Baudin, Savoie, and Yamazaki et al. (US 6,075,065, issued June 13, 2000).
Final Act. 5—6; Ans. 5.
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. 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) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
each of Appellants’ contentions, we are not persuaded that Appellants
identify reversible error. Thus, we sustain the Examiner’s rejections for the
reasons expressed in the Final Office Action, the Answer, and below.
Appellants’ arguments focus on representative claim 66. Appellants
do not present separate substantive arguments for the patentability of
separately rejected claims 70 and 71. Appeal Br. 7. Thus, we select
claim 66 as representative of the rejected claims, and the remaining claims
on appeal will stand or fall with claim 66. See 37 C.F.R. § 41.37 (c)(l)(iv).
The Examiner finds that Baudin teaches an UV-curable clearcoat
composition prepared by mixing a bifunctional urethane acrylate (Actilan®
200; acrylated urethane resin) and a photoinitiator (a free radical initiator),
such as photoinitiator (B) of formula (I). Final Act. 3; Baudin || 15, 475,
651—657. In addition, the Examiner finds that Baudin teaches the
composition may further comprise a second photoinitiator, such as the free
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Appeal 2016-008487
Application 12/799,700
radical initiator (2,4,6-trimethylbenzoyl)plienylpliospliine oxide or bis(2,4,6-
trimethylbenzoyl)phenylphosphine oxide). Final Act. 3; Baudin 1474.
Thus, the Examiner finds that Baudin reasonably teaches preparing a UV-
curable clearcoat composition with two free radical photoinitiators such as a
photoinitiator of formula (I) and (2,4,6-triemthylbenzoyl)phenylphosphine.
Final Act. 3.
Appellants argue that claim 66 requires a UVV curable composition
that includes (a) a resin and (b) a photoinitiator “consisting of phenyl
bis(2,4,6-trimethylbenzoyl) phosphine oxide, 2,4,6-
trimethylbenzoyldiphenyl phosphine oxide, isopropylthioxanthone, 1-chloro-
4-propoxy-thioxanthone, 2,4-diethylthioxanthone, 2-chlorothioxanthone,
camphorquinone, and 2-ethyl anthranquinone, wherein the cationic initiator
is an iodonium salt or a sulfonium salt.” Appeal Br. 4—5. Appellants
contend that because of the “consisting of’ language, “claim 66 positively
excludes the [] primary photoinitiator compounds required by the UV
curable composition of Baudin,” and thus, the UV curable composition of
Baudin fails to render claim 66 obvious. Id. at 5.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejections. Claim 66 recites a floor covering “comprising” a
wear layer formed from a UVV curable composition, where the UVV
curable composition “comprises:” (a) a resin selected from a group
“consisting of’ a list of specific resins, and (b) a photoinitiator selected from
the group “consisting of’ a list of specific photoinitiators. We agree with
Appellants that the use of the term “consisting of’ in claim 66 requires the
UVV curable composition to include a photoinitiator selected from the
closed list of photoinitiators. However, as well-stated by the Examiner,
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Appeal 2016-008487
Application 12/799,700
because claim 66 also uses the open-ended transitional phrase “comprising”
(i.e., “the UVV curable composition comprises”), the claim can include
other unrecited elements in its UVV curable composition, for example an
additional photoinitiator, such as Baudin’s photoinitiator of formula (I).
This claim construction is supported by Appellants’ Specification, and by
In re Crish, 393 F.3d 1253 (Fed. Cir. 2004), which the Examiner cites in the
Answer and explains is factually similar to the issues present in this appeal.
Spec. 132 (disclosing a non-limiting list of suitable free radical
photoinitiators); Ans. 7—10; see also Crish, 393 F.3d at 1257 (holding that a
claim introduced by the transitional word, “comprising,” is open-ended,
notwithstanding the use of “consists of’ in the body of the claim).
Appellants argue that Savoie and Yamazaki do not cure the
deficiencies of Baudin. Appeal Br. 7. These arguments are not persuasive
of reversible error in the Examiner’s rejections because, for the reasons
discussed above, we are not persuaded of any deficiency in the disclosures
of Baudin.
Accordingly, we sustain the rejections of claims 66—71.
DECISION
For the above reasons, the Examiner’s decision to reject claims 66—71
is affirmed.
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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