Henkel IP & Holding GmbH et al.

Patent Trials and Appeals Board

Dec 10, 2020

2020001470 (P.T.A.B. Dec. 10, 2020)

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.
14/804,469 07/21/2015 Jie Cao PT031646/US 6783
31217 7590 12/10/2020
Henkel Corporation
One Henkel Way
Rocky Hill, CT 06067
EXAMINER
TADAYYON ESLAMI, TABASSOM
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JIE CAO, JOSE GARCIA-MIRALLES,
ALLISON YUE XIAO, RUDIE OLDENZIJL,
GUNTHER DREEZEN, QILI WU, and JIANPING CHEN
____________

Appeal 2020-001470
Application 14/804,469
Technology Center 1700
____________

Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–13, 16, and 17. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Henkel AG & Co. KGAA and Henkel
IP & Holding GmbH as the real parties in interest. Appeal Br. 3.
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The invention “relates to flexible conductive ink compositions for use
in membrane touch switch or flexible printed-wiring board applications,”
where the flexible conductive ink compositions comprise conductive
particles having a large surface area and conductive particles having a
surface area and conductive particles having a small surface area. Spec.
¶¶ 1, 8. Claim 1 is illustrative of the subject matter claimed and is
reproduced below (formatting added):
1. A flexible conductive ink composition comprising
(A) a resinous binder, in an amount of from 2 to 60 wt.%,
based on the weight of the dry composition, the resins of said
binder being thermoplastic resins selected from the group
consisting of phenoxy resins, polyesters, and thermoplastic
urethane;
(B) silver-plated core conductive particles smaller than
1.0 m2/g, and
(C) conductive particles having a surface area of at least
1.0 m2/g and a particle size of 1 to 100 μm,
wherein silver-plated core conductive particles (B) are
present in an amount from 30 to 92 wt% of the total dry
composition, and conductive particles having a specific surface
area at least 1.0 m2/g (C) are present in an amount from 3 to 60
wt% of the total dry composition, and wherein the flexibility of
the ink composition is higher than the flexibility of the
composition without (C) conductive particles,
and wherein the composition does not comprise a curing
agent for the resin binder.
Independent claim 17 recites a flexible conductive ink composition
similar to the flexible conductive ink composition of claim 1.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action dated November 8, 2018 (see generally
Appeal Br.):
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I. Claims 1, 4–13, 16, and 17 rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. Claims 1, 4–9, 11, 12, and 16 rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Ishida (JP2009230952 A, published October
8, 2009), Kikuchi (US 2002/0062990 A1, published May 30, 2002),2
Gellrich (US 2008/0246007 A1, published October 9, 2008), and Dorfman
(US 2010/0021625 A1, published January 28, 2010).
III. Claims 10–13 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ishida, Kikuchi, Gellrich, Dorfman, and Ogiwara (US
2009/0169724 A1, published July 2, 2009).
IV. Claim 17 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Ishida, Gellrich, and Dorfman.
OPINION
Rejection I (112, first paragraph-Written Description)
After review of the positions Appellant provides in the Appeal and
Reply Briefs and the Examiner provides in the Final Action and the Answer,
we REVERSE the Examiner’s rejection of claims 1, 4–13, 16, and 17 under
35 U.S.C. § 112, first paragraph as lacking written descriptive support for
essentially the reasons Appellant presents. We add the following for
emphasis.
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to “clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.” Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(quoting Vas- Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir.
1991)). In addition, the written description requirement of 35 U.S.C. § 112,

2 Appellant submitted the reference to Ishida together with a corresponding
translation on October 14, 2015. We rely on this translation in our
discussion of Ishida.
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first paragraph, applies to all claims including original claims that are part of
the disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal
Circuit, “[a]lthough many original claims will satisfy the written description
requirement, certain claims may not.” Ariad, 598 F.3d at 1349; see also
LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343–46 (Fed.
Cir. 2005); Regents of the University of California v. Eli Lilly & Co., 119
F.3d 1559, 1568 (Fed. Cir. 1997).
The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
the original disclosure a description of the invention defined by the claims.
See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). “[T]he test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad, 598
F.3d at 1351 (citations omitted). This test “requires an objective inquiry into
the four corners of the specification from the perspective of a person of
ordinary skill in the art.” Id. “Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.” Id.
The Examiner finds that the Specification, as originally filed, does not
provide support for the negative limitation “the composition does not
comprise a curing agent for the resin binder” recited in independent claims
13 and 17. Final Act. 2. The Examiner contends that the Specification only

3 We note that independent claim 1 is missing language identifying the
silver-plated core conductive particles as having a surface area smaller than
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shows a few examples that do not indicate having curing agent and, thus,
does not have support for the entire claimed genus for not having curing
agent. Ans. 3.
Appellant argues that Examples 5, 6, 8, and 9 in the Specification are
exemplary flexible conductive ink compositions comprising a resin binder,
but none comprises a curing agent for the resin binder. Appeal Br. 9; Spec.
¶¶ 47–52, 56–64. Appellant also asserts that the Specification discloses the
use of a drying process akin to a curing step to form the conductive tracks.
Appeal Br. 10; Spec. ¶ 61.
Appellant has identified reversible error in the Examiner’s
determination that claims 1, 4–13, 16, and 17 do not comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.
We first note that claim 16, as originally filed, recites “curing and/or
drying said conductive composition at about 90°C to 180°C for 5 to 60
minutes.” Thus, consistent with Appellant’s arguments, the Specification,
through original claim 16, discloses that curing and drying are alternatives to
form an electrically conductive device from conductive paste. The person
having ordinary skill in the art would have understood that if drying, rather
than curing, is performed, that a curing agent isn’t necessary.
Therefore, we determine that the originally-filed claim 16 satisfies the
written description requirement for the disputed language because a person
of ordinary skill in the art would have understood that drying does not
require a curing agent to remove the water or other liquids. The Examiner
does not present any evidence or reasoning to explain why persons skilled in

1.0 m2/g. See Spec. ¶ 8. Appellant should consider amending this language
to avoid a possible question of indefiniteness.
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the art would not recognize a description of the invention defined by the
claims in the original disclosure, taking into account the originally-filed
claims. In fact, we find no instance where the Examiner addresses the
originally-filed claims as evidence, or lack thereof, of written descriptive
support. See generally Final Act. and Ans. Thus, the Examiner has not
established that the original disclosure, including the originally-filed claims,
is insufficient to reasonably convey to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.
Accordingly, we reverse the Examiner’s rejection of claims under
35 U.S.C. § 112, first paragraph, for the reasons the Appellant presents and
we give above.

Rejection II (Obviousness)(Claim 1)4, 5
After review of the positions the Appellant provides in the Appeal and
Reply Briefs and the Examiner provides in the Final Action and the Answer,
we REVERSE the Examiner’s rejection of claims 1, 4–9, 11, 12, and 16
under 35 U.S.C. § 103(a) for essentially the reasons Appellant presents. We
add the following for emphasis.
Claim 1 recites a flexible conductive ink composition comprising
silver-plated core conductive particles having a surface area smaller than 1.0
m2/g, and conductive particles having a surface area of at least 1.0 m2/g and
a particle size of 1 to 100 μm.

4 We limit our discussion to independent claim 1.
5 A discussion of the references to Gellrich and Dorfman is unnecessary for
disposition of this rejection. The Examiner did not rely upon these
references to address the features of the conductive particles. See Final Act.
3–4.
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The Examiner finds, and Appellant does not dispute, that (1) Ishida
teaches a flexible conductive ink composition comprising silver-plated core
conductive particles and conductive particles having a surface area of at least
1.0 m2/g and particle size of 2–5 μm and (2) Ishida does not disclose the
surface area for the silver-plated core conductive particles as smaller than
1.0 m2/g. Final Act. 3; Appeal Br. 11; Ishida Abstr; see ¶ 8 (disclosing the
surface area as 2–3 m2/g). In fact, Ishida does not disclose any surface area
features for the silver-plated core conductive particles. Ishida ¶ 8. The
Examiner finds that Kikuchi discloses a conductive paste comprising silver
plated conductive powder with a surface area of less than 1 m2/g. Final Act.
3; Kikuchi ¶¶ 23, 57 (disclosing the silver plated conductive powder as
having a surface area of 0.1 to 1.0 m2/g). Kikuchi discloses a conductive ink
composition comprising a combination of substantially spherical
electroconductive powder and flake-like or flaky and fine silver powder to
increase the reliability on electroconductivity. Kikuchi ¶ 93. Kikuchi
teaches using substantially spherical electroconductive powder of having a
specific surface area of 0.1 to 1.0 m2/g for its excellent solderability-
improving effect. Id. ¶¶ 90, 94. The Examiner determines that it would
have been obvious to one of ordinary skill in the art to modify Ishida’s
conductive ink by substituting Ishida’s silver plated core conductive
particles with silver plated particles that have less than 1 m2/g for the reasons
Kikuchi provides. Final Act. 3.
Appellant argues that one skilled in the art would not have substituted
Ishida’s silver-plated conductive particles with Kikuchi’s silver-plated
conductive particles because Kikuchi’s silver-plated copper powder is
morphologically distinct from Ishida’s silver-plated copper powder, and
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neither reference teaches or suggests that one is interchangeable with the
other. Appeal Br. 15. According to Appellant, Ishida’s silver-plated
conductive particles are dendritic and dendritic particles are branched, tree-
like structures. Appeal Br. 15; Ishida Abstr., ¶ 18. Appellant asserts that it
is the complementary interactions between the flake-like powder component
and dendritic powder component of Ishida’s composition that provide “good
conductivity and [an] outstanding bending-proof characteristic.” Appeal Br.
11, 13, 15; Ishida Abstr., ¶¶ 13, 17–18. Appellant contends that Kikuchi,
when considered as a whole, teaches a silver-plated copper powder (or
copper alloy powder) having a specific surface area of 0.1 to 1.0 m2/g that is
substantially spherical. Appeal Br. 13–15; see Kikuchi ¶¶ 57, 93–94. Thus,
Appellant argues that the nature of Kikuchi’s electroconductive powder
having a specific surface area of 0.1 to 1.0 m2/g for its excellent
solderability-improving effect differs significantly from that of Ishida’s
dendritic silver plated conductive powder, and that making the proposed
substitution (i.e., the spherical particles of Kikuchi for the dendritic particles
of Ishida) would have interfered with the functionality of Ishida’s
composition. Appeal Br. 14. Appellant further asserts that there is no
indication in the cited art that silver-plated core conductive particles having
a surface area smaller than 1.0 m2/g would serve any purpose in the
composition of Ishida. Id. at 13. That is, Appellant contends that there is no
teaching that the specific surface area Kikuchi teaches for the substantially
spherical silver-plated conductive particles is applicable to Ishida’s dendritic
conductive particles.
We agree with Appellant that there is reversible error in the
Examiner’s determination of obviousness. The Examiner bears the initial
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burden of presenting a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). The fact finder must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383
U.S. 1, 36 (1966) (“warning against a ‘temptation to read into the prior art
the teachings of the invention in issue’”)).
As Appellant explains, Ishida uses a dendritic conductive powder
comprising long branches that interacts with the flake conductive powder to
achieve the best bending efficiency in the conductive composition and
satisfactory conductivity. Appeal Br. 13–15; Ishida ¶¶ 13, 17–18, 41.
Kikuchi, on the other hand, teaches the use of substantially spherical
particles having a surface area smaller than 1.0 m2/g to provide improved
solderability. Kikuchi ¶ 94. The premise of the Examiner’s rejection is that
one skilled in the art would modify the dendritic conductive particles of
Ishida’s conductive composition to have a surface area smaller than 1.0 m2/g
because Kikuchi teaches this as a suitable surface area for a conductive
particle used in making conductive paste. Final Act. 3.
However, while Kikuchi discloses a surface area smaller than 1.0 m2/g
as suitable for conductive particles that are substantially spherical (Kikuchi
¶ 57), the Examiner does not provide a technical explanation why such a
surface area would be suitable for Ishida’s dendritic particles given that the
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nature of Kikuchi’s electroconductive powder differs significantly from that
of Ishida’s dendritic silver plated conductive powder, as Appellant argues.
Appeal Br. 14. Moreover, Ishida, in describing the flake conductive
particles, discloses that using conductive particles that have a surface area of
less than 2 m2/g in a conductive paste detrimentally impacts the cohesion of
the conductive powder to provide the desired conductivity. Ishida ¶ 19. The
Examiner has not explained adequately why one skilled in the art would
have used dendritic conductive particles having a surface area smaller than
1.0 m2/g in Ishida’s conductive paste given that Ishida teaches the long
branches of the dendritic conductive particles as pivotal in improving the
flexibility of the product made from the conductive paste. Thus, the
Examiner has not provided an adequate technical explanation of why
dendritic conductive particles having a surface area smaller than 1 m2/g
would be suitable for Ishida’s purposes given Ishida’s disclosure that such
particles detrimentally impact the cohesion of the conductive powder to
provide the desired conductivity.
Accordingly, we reverse the Examiner’s prior art rejection of claims
1, 4–13, 16, and 17 under 35 U.S.C. § 103(a) for the reasons Appellant
presents and we provide above.

Rejection III (Obviousness)(Claims 10–13)
The Examiner rejects claims 10–13 under 35 U.S.C. § 103(a) as
unpatentable over Ishida, Kikuchi, Gellrich, Dorfman, and the additional
reference to Ogiwara. Final Act. 4.
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Claims 10–13 ultimately depend from independent claim 1. Further,
the Examiner relied on Ogiwara to address the features of this claim and not
to overcome the noted deficiencies of the earlier rejection.
Accordingly, we reverse the Examiner’s prior art rejection of claims
10–13 under 35 U.S.C. § 103(a) for the reasons given with respect to the
rejection of independent claim 1.

Rejection IV (Obviousness)(Claim 17)
After review of the positions the Appellant provides in the Appeal and
Reply Briefs and the Examiner provides in the Final Action and the Answer,
we AFFIRM the Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a)
for essentially the reasons the Examiner presents. We add the following for
emphasis.
Independent claim 17 recites a flexible conductive ink composition
that differs principally from the subject matter of claim 1 in that claim 17
does not recite silver-plated core conductive particles as having a surface
area smaller than 1.0 m2/g.
The Examiner rejects claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Ishida, Gellrich, and Dorfman. Final Act. 4.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 17. Id. at 5–6. Briefly, the Examiner
finds that Ishida differs from the subject matter of claim 17 in that Ishida
does not teach using a thermoplastic bonder to make the conductive paste.
Id. at 5. The Examiner turns to the teachings of Gellrich and Dorfman for
the missing feature. Id. at 5–6.
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Appellant’s arguments for this rejection focuses on the Examiner’s
reliance on the teachings of Gellrich and Dorfman.
Appellant contends that Gellrich does not teach thermoplastic resins
as desirable for a flexible conductive ink composition. Appeal Br. 20.
According to Appellant, Gellrich is indifferent as to the binder used in the
disclosed composition because Gellrich lists thermosetting and thermoplastic
binders as among the many options for the binder. Appeal Br. 20; Gellrich
¶ 13. Appellant further contends that Dorfman would not have provided a
skilled artisan with any reason to combine Ishida and Gellrich and, thus,
there would be no motivation to use a phenoxy resin in Ishida’s conductive
composition. Appeal Br. 20.
Appellant’s arguments do not identify error in the Examiner’s
determination of obviousness. As the Examiner explains, Gellrich discloses
thermoplastic and thermosetting resins as suitable binders for conductive
pastes. Ans. 3. Moreover, Appellant’s Specification discloses that phenoxy
resins are known as resin binders for conductive paste compositions. Spec.
¶ 4. Thus, Appellant does not explain persuasively why Gellrich’s noted
disclosure is insufficient to guide one skilled in the art to select a
thermoplastic resin as a binder in a conductive paste composition,
particularly in light of Dorfman’s disclosure and Appellant’s
acknowledgement in the Specification. Dorfman ¶¶ 2, 22.
Appellant’s argument that Gellrich is directed to curable binders is
also unavailing. Appeal Br. 20. The portions Appellant relies upon to
support this argument address an embodiment where the binders may
include a curing agent. See Appeal Br. 17–18; Gellrich ¶¶ 13 (disclosing
that the binder “can be cured by means of appropriate measures” (emphasis
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added)), 14 (disclosing that “[w]hen curable components are used the
auxiliaries required for curing are also present” (emphasis added)).
However, similar to Appellant, Gellrich also discloses that binders can be
“fully cured or dried.” Gellrich ¶ 6.
It is well settled that a reference may be relied upon for all that it
discloses and not merely the preferred embodiments as suggested by
Appellant. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (“[A]ll disclosures of the prior art, including unpreferred
embodiments, must be considered.”) (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976)); see also In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA
1982) (explaining that a prior art reference’s disclosure is not limited to its
examples). The disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or non-preferred
embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). Appellant
has not explained adequately why Gellrich’s disclosure regarding curable
binders limits or teaches away from Gellrich’s broader disclosure in
paragraph 6.
Accordingly, we affirm the Examiner’s prior art rejection of claim 17
under 35 U.S.C. § 103(a) for the reasons the Examiner presents and we
provide above.

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DECISION SUMMARY

Because the affirmed rejection does not reach all the claims, our
decision is an affirmance in part.
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–13, 16,
17
112, first
paragraph
Written
Description
1, 4–13, 16,
17
1, 4–9, 11,
12, 16
103(a) Ishida, Kikuchi,
Gellrich, Dorfman
1, 4–9, 11,
12, 16
10–13 103(a) Ishida, Kikuchi,
Gellrich, Dorfman,
Ogiwara
10–13
17 103(a) Ishida, Gellrich,
Dorfman
17
Overall
Outcome
17 1, 4–13, 16

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 IN PART