Ex Parte Wu et al

Patent Trial and Appeal Board

Dec 6, 2018

13957213 (P.T.A.B. Dec. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/957,213 08/01/2013 YiliangWu
74934 7590 12/06/2018
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.
20120586-US-NP 7857
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
12/06/2018 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 YILIANG WU,
CAMERON DERRY, and KE ZHOU 1
Appeal2018-001251
Application 13/957 ,213
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3, and 6-16. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
1 Xerox Corporation is the Applicant/ Appellant and is also identified as the
real party in interest. App. Br. 1.
Appeal 2018-001251
Application 13/957,213
Claim 1 is directed to a stretchable ink composition comprising a
polyester emulsion or latex and a polyurethane elastomer emulsion or latex,
each with a specific glass transition temperature property. According to the
Specification, "[t]he combination of the polyester having a high Tg and
polyurethane with a low Tg enables a printed image with excellent
stretchability and very good document offset." Spec. ,r 70. The
Specification also describes the stretchable ink as useful for printing on
flexible substrates such as flexible medical devices. Id. ,r,r 6, 9, and 10.
That is, the stretchable ink is also flexible once applied to the respective
substrate. Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A stretchable ink composition comprising:
a polyester emulsion or latex, wherein the glass transition
temperature of the polyester is from 3 0 °C to about 180 °C;
a polyurethane elastomer emulsion or latex, wherein the
glass transition temperature of the polyurethane elastomer is
from about -70 °C to about 10 °C;
water;
a co-solvent;
an optional surfactant; and
an optional colorant.
Appellant requests review of the following rejections from the
Examiner's Final Office Action (App. Br. 5):
I. Claims 1 and 7-16 rejected under 35 U.S.C. § I03(a) as
unpatentable over Ylitalo (US 2003/0158283 Al, published August 21,
2003), Nichols (US H2I 13 H, published January 4, 2005), and Quantum
Coatings
(https://web.archive.org/web/20120202082017 /http://www.quantumchemica
2
Appeal 2018-001251
Application 13/957,213
1. com/index. php? option =com_content&view=article&id =46& 1 temid=64
(last accessed August 4, 2014)).
II. Claims 1 and 6-15 rejected under 35 U.S.C. § I03(a) as
unpatentable over Foucher (US 5,958,998, issued September 28, 1999) and
Quantum Coatings.
III. Claims 1, 3, 7-9, and 12-15 rejected under 35 U.S.C. § I03(a)
as unpatentable over Chen (US 2011/0217647 Al, published September 8,
2011), Velebir (US 2003/0000919 Al, published January 2, 2003), and
Quantum Coatings.
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we reverse the Examiner's prior art rejections of claims 1, 3, and
6-16 under 35 U.S.C. § I03(a) for the reasons presented by Appellant. We
add the following for emphasis.
Rejection based on Ylitalo (Rejection 1)2
The Examiner finds Ylitalo discloses an ink composition that differs
from the claimed invention in that Ylitalo does not disclose the polyester
component to be a polyester emulsion as claimed. Final Act. 8. The
Examiner turns to Nichols as disclosing an ink composition of a similar
nature that includes a polyester component in the form of a self-emulsifying
sulfonated polyesters with a glass transition temperature between about 20
~C and about 65 °C which are added to the ink composition to stabilize
pigments such as carbon black. Final Act. 8; Nichols Abst., col. 3 11. 64---67,
col. 10 11. 58---67, col. 11 11. 39-4 7, col. 12 11. 52---67; col. 13 11. 1-17. 3
2 We limit our discussion to independent claim 1.
3 Nichols further discloses making a polyurethane resin emulsion from
urethanization reaction products of polyester pol yo ls, an isocyanate, and
3
Appeal 2018-001251
Application 13/957,213
The Examiner turns next to Quantum Coatings as teaching the use of
polyurethane elastomer emulsions, such as the emulsion commercially
available under the tradename PRECIDIUM Aqua 90A, topcoats possessing
exceptional weather resistance and colorfastness. Id. at 9. The Examiner
determines that it would have been obvious for one skilled in the art to
modify the teachings of Ylitalo and Nichols to use Quantum Coating's
polyurethane elastomer emulsion as the polyurethane component in the ink
composition of the combined teachings of Ylitalo and Nichols for improved
outdoor weatherability purposes. Id.
Appellant argues that neither Ylitalo nor Nichols disclose
polyurethane elastomers as component of their respective ink composition
and that nothing in Quantum Coatings that teaches or suggests an
elastomeric ink composition. App. Br. 11. That is, Appellant argues that
there is no motivation to use Quantum Coatings' s polyurethane elastomer
for coatings in the ink of the combined teachings of Ylitalo and Nichols.
We agree with Appellant that there is reversible error in the
Examiner's determination of obviousness. As Appellant argues, the
Examiner does not provide "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness" of why one
skilled in the art would have used Quantum Coatings's polyurethane
compounds containing at least one isocyanate-reactive group and having at
least one anionic and/or potential ionic group. Nichols col. 2, 11. 57----62, col.
3, 11. 65-66. However, neither the Examiner nor Appellant addressed
whether this urethanization process would lead to a polyurethane elastomer
emulsion.
4
Appeal 2018-001251
Application 13/957,213
elastomer emulsions for coatings in the ink compositions of Ylitalo and
Nichols. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
Accordingly, we reverse the Examiner's prior art rejection of claims 1
and 7-16 for the reasons presented by Appellant and given above.
Rejections based on Foucher and Chen (Rejections II and III) 4
We refer to the Examiner's Final Action for statements of both
rejections. Final Act. 3-7 and 12-16.
We also agree with Appellant that there is reversible error in the
Examiner's determination of obviousness for the rejections based on
Foucher and Chen.
We again concur with Appellant that the Examiner does not provide
the requisite "articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" of why one skilled in the art
would have used Quantum Coatings' s polyurethane elastomer emulsions for
coatings in the ink compositions of either Foucher or Chen.
Accordingly, we reverse the Examiner's prior art rejections based on
Foucher and Chen for the reasons presented by Appellant and given above.
ORDER
The Examiner's prior art rejections of claims 1, 3, and 6-16 under
35 U.S.C. § 103(a) are reversed.
REVERSED
4 We limit our discussion to independent claim 1.
5