Krishna Balantrapu et al.

Patent Trials and Appeals Board

Jan 2, 2020

14141488 - (D) (P.T.A.B. Jan. 2, 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.
14/141,488 12/27/2013 Krishna BALANTRAPU 75676-US-NP 3149
53884 7590 01/02/2020
ROHM AND HAAS ELECTRONIC MATERIALS LLC
c/o DUPONT SPECIALTY PRODUCTS USA, LLC
P. O. Box 2915
974 Centre Road, Chestnut Run Plaza 721-2342
Wilmington, DE 19805
EXAMINER
DANIELS, MATTHEW J
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KRISHNA BALANTRAPU, ROBERT K. BARR,
and BRIAN D. AMOS

Appeal 2019-001989
Application 14/141,488
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

.
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as The Dow
Chemical Company through its wholly owned subsidiary, the assignee of the
application Rohm and Haas Electronic Materials, LLC. Appeal Br. 2.
Appeal 2019-001989
Application 14/141,488

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STATEMENT OF THE CASE
Appellant’s invention is generally directed to a method for forming
images on substrates by inkjet printing with actinic radiation curable resist
compositions using a transfer film. (Spec. 1.)
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A method comprising:
a. selectively inkjetting a 100% solids hot melt resist composition
comprising one or more waxes, one or more acrylate functional monomers
free of acid groups and one or more radical photoinitiators adjacent a first
surface of an actinic radiation transparent flexible film to form a continuous
pattern on the first surface of the actinic radiation transparent flexible film;
b. applying the actinic radiation transparent flexible film with the
100% solids hot melt resist composition having the continuous pattern to a
surface having irregularities of a three dimensional substrate, the first
surface of the actinic radiation transparent flexible film with the 100% solids
hot melt resist composition having the continuous pattern is adjacent the
surface having irregularities of the three dimensional substrate, wherein the
100% solids hot melt resist composition contacts the surface having the
irregularities and the actinic radiation transparent flexible film follows
contours of the surface having irregularities of the three dimensional
substrate;
c. applying actinic radiation to a second surface of the actinic
radiation transparent flexible film opposite the first surface with the 100%
solids hot melt resist composition having the continuous pattern to cure the
100% solids hot melt resist composition, wherein the second surface of the
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Application 14/141,488

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actinic radiation transparent flexible film is free of the 100% solids hot melt
resist composition; and
d. separating the actinic radiation transparent flexible film from the
cured 100% solids hot melt resist composition having the continuous pattern
with the cured 100% solids hot melt resist composition having the
continuous pattern adhering to the surface having irregularities of the three
dimensional substrate.

App. Br. 13, Claims App.

The following rejections are presented for our review: 2
I. Claims 1–10 and 12 rejected under 35 U.S.C. § 103(a) as
unpatentable over Celeste (US 3,526,504, issued Sept. 1, 1970) in view of
Cheetham (US 2010/0129754 A1, published May 27, 2010).
II. Claim 11 rejected under 35 U.S.C. § 103(a) as unpatentable over
Celeste, Cheetham, and Friel (US 4,127,436, issued Nov. 28, 1978).
III. Claims 1–10 and 12 rejected under 35 U.S.C. § 103(a) as
unpatentable over Celeste, Cheetham in view of Batchelor (US 4,451,329,
issued May 29, 1984).

2 The complete statements of the rejections on appeal appear in the
Final Office Action (Final Act. 2–11) are reproduced appeal in the
Examiner’s Answer. (Ans. 3–18.)
.
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Application 14/141,488

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IV. Claim 11 rejected under 35 U.S.C. § 103(a) as unpatentable over
Celeste, Cheetham, Batchelor, and Friel.
V. Claims 1–10 and 12 rejected under 35 U.S.C. § 103(a) as
unpatentable over Cheetham in view of Celeste.
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner’s rejections under 35 U.S.C.
§ 103(a). We refer to the rejections on appeal as presented in the
Examiner’s Final Office Action (Final Act. 2–11) for our discussion.
The Examiner finds Celeste teaches a process for laminating a
photosensitive layer on a carrier onto the surface of an article, followed by a
patterning process and development. (Final Act. 3; Celeste 2 ll.18–35.) The
Examiner finds Celeste is silent about selectively inkjetting a continuous
pattern of a resist comprising 100% solids hot melt resist and the resist
composition comprising a wax, an acrylate functional monomer free of acid
groups. (Final Act. 3.) The Examiner finds Cheetham is evidence that
selective inkjetting of this composition is conventional. The Examiner finds
Cheetham’s inkjet resist composition contains a wax, a radical
photoinitiator, and an acrylate functional monomer free of acid groups. The
Examiner finds Cheetham’s resist also includes pigments and may be 100%
solids at room temperature. (Final Act. 3.) The Examiner concludes:
It would have been prima facie obvious to one of
ordinary skill in the art at the time of the invention to
incorporate the Cheetham inkjetting and ink jettable resist
composition into Celeste because (a) Cheetham provides an
improvement specifically directed at resolving problems in the
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Application 14/141,488

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traditional lamination and development of dry film photoresist
([0004]-[0009]), which is what Celeste teaches, therefore the
Cheetham process (including the composition and inkjet
application) are an improvement upon the Celeste process by
eliminating the exposure and development steps, or (b) Celeste
teaches a process for forming a patterned film on a surface by
exposure through a film and development (removal of uncured
portions), and one of ordinary skill in the art would have
recognized that the Cheetham inkjetting and photoresist
composition to be a substitutable alternative process for
laminating and adhering a photoresist pattern of the desired
configuration directly to the surface of the article.

(Final Act. 3–4.)
The dispositive issue on appeal is:
Did the Examiner err in determining that it would have been obvious
to perform Celeste’s process wherein the carrier/support is printed upon by
utilizing the inkjet resist composition containing a wax, a radical
photoinitiator, and an acrylate functional monomer free of acid groups, as
described by Cheetham, to arrive at the method of independent claim 1?
We answer this question in the affirmative.
Appellant argues that one of ordinary skill in the art would not have
had any reason or motivation to modify Celeste’s process by selectively
applying Cheetham’s inkjet formulation to Celeste’s polyethylene
terephthalate (PET) support film and then apply it to an article. (App. Br. 5–
6.) Appellant argues that the combination of Celeste and Cheetham, as
proposed by the Examiner, fails to teach or suggest all the elements of
independent claim 1 because the combination would have suggested forming
an image on the PET substrate using Cheetham’s hot melt compositions in
place of Celeste’s image-bearing transparency. (App. Br. 5–7.)
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The Examiner has not established that the systems of Celeste and
Cheetham are compatible. Celeste is directed to methods of laminating to a
solid surface a dry, flexible photosensitive layer of a uniformly photo-
crosslinkable organic polymer composition to a flexible polymer film
support where imaging is done with an image bearing transparency. (Celeste
col. 1, l. 66 to col. 2, l. 17.) Cheetham applies the inkjet hot melt
compositions directly to a substrate. (Cheetham ¶¶ 26, 33.) Cheetham’s hot
melt inkjet compositions and methods eliminate Celeste’s lamination
apparatus, support films and image-bearing transparencies of the lamination
methods and reduce the number of process steps of the lamination process.
(Cheetham ¶¶ 6, 7.) Moreover, the Examiner has not directed us to evidence
that indicates that Cheetham’s hot melt resin composition is suitable for
Celeste’s image transfer process. Based on the evidence presented in the
present record, we agree with Appellant that a person of ordinary skill in the
art would not have sought Cheetham’s teachings to modify Celeste’s
process. (Appeal Br. 5–6.)
Accordingly, we do not sustain the rejection of claims 1–10 and 12
(Rejection I) for the reasons presented by Appellant and those given above.
Appealed Rejections II–V rely on the combination of Celeste and
Cheetham to reject claims 1–12, some in combination with additional prior
art references. The Examiner cited the additional references to address
limitations not included in the dispositive issue. Accordingly, because all
rejections are based on the combined teachings of Celeste and Cheetham, we
also do not sustain these rejections for the reasons presented by Appellant
and given above.

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Application 14/141,488

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12 103(a) Celeste, Cheetham, 1–10, 12
11 103(a) Celeste, Cheetham,
Friel
11
1–10, 12 103(a) Celeste, Cheetham,
Batchelor
1–10, 12
11 103(a) Celeste, Cheetham,
Batchelor, Friel
11
1–10 103(a) Cheetham, Celeste 1–10, 12

Overall
Outcome
1–12

REVERSED