Xerox Corporation

Patent Trials and Appeals Board

Aug 14, 2020

15935958 - (D) (P.T.A.B. Aug. 14, 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.
15/935,958 03/26/2018 C. Geoffrey Allen 20131617US02 1090
74934 7590 08/14/2020
MARYLOU J. LAVOIE, ESQ. LLC
1 BANKS ROAD
SIMSBURY, CT 06070
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2853
MAIL DATE DELIVERY MODE
08/14/2020 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 C. GEOFFREY ALLEN, MIHAELA MARIA BIRAU,
CAROLYN MOORLAG, and AURELIAN VALERIU MAGDALINIS
____________

Appeal 2019-006271
Application 15/935,958
Technology Center 2800
____________

Before BEVERLY A. FRANLKIN, N. WHITNEY WILSON, and
JULIA HEANEY, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
January 3, 2019 decision finally rejecting claims 1–20 (“Final Act.”). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Xerox Corporation as the real party in
interest (Appeal Br. 1).
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to an acrylate ink composition which
is said to be useful for digital lithographic printing systems (Appeal Br. 2).
The disclosed acrylate ink compositions are said to exhibit stable rheology
that enables delivery using an anilox roll delivery system, and demonstrate
desirable transferability to a reimageable surface of an imaging member
(id.). The claimed acrylate ink composition comprises (1) a tetrafunctional
polyester acrylate oligomer; and (2) a polyester acrylate oligomer that is
different than the tetrafunctional polyester acrylate oligomer (id.). Details of
the claimed invention are described in claim 1, which is reproduced below
from the Claims Appendix of the Appeal Brief:
1. An acrylate ink composition comprising:
a tetrafunctional polyester acrylate oligomer;
a polyester acrylate oligomer that is different than the
tetrafunctional polyester acrylate oligomer;
a pigment;
an optional dispersant; and
an optional photoinitiator.

REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 103 as unpatentable over
Iftime.2
DISCUSSION
The Examiner finds that Iftime discloses an acrylate ink composition
comprising (1) a tetrafunctional polyester acrylate oligomer (CN294E), and
(2) a pigment (Final Act. 3, citing Iftime, ¶¶ 71, 77). The Examiner further
finds that Iftime does not specifically disclose “a polyester acrylate oligomer

2 Iftime et al., US 2013/0305946 A1, published November 21, 2013.
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that is different than the tetrafunctional polyester acrylate oligomer,” but
teaches that there should be a plurality of curable compounds with the
required Hansen solubility parameters (id., citing Iftime, ¶ 72). Among
those compounds, as found by the Examiner, is CN293, which meets the
claimed requirement of “a polyester acrylate oligomer that is different than
the tetrafunctional polyester acrylate oligomer” (id., citing Iftime, Table 1,
FIG. 2).
The Examiner determines that it would have been obvious for a
person of ordinary skill in the art to have made a composition containing
CN294E (the tetrafunctional polyester acrylate oligomer) and CN293 (a
polyester acrylate oligomer that is different than the tetrafunctional polyester
acrylate oligomer) because Iftime specifically suggests using more than one
curable compound and specifically identifies CN293 as a suitable curable
compound to be used (id.).
Appellant argues that Iftime does not teach or suggest employing
tetrafunctional polyester acrylate oligomer in combination with a different
polyester acrylate oligomer (Appeal Br. 5). Appellant argues that Iftime is
clear in stating that the selection of curable monomers is not critical (id.,
citing Iftime ¶ 92). Moreover, Appellant argues that “Iftime does not
identify only a finite number of identified, predictable combinations of the
materials having the required Hansen solubility parameter” and that “dozens
upon dozens of materials listed in Iftime can be selected based on their
having the required Hansen solubility parameter” (id. at 6).
Appellant’s argument is not persuasive. As explained by the
Examiner, Iftime specifically identifies a tetrafunctional polyester acrylate
oligomer (CN294E) for use in its ink compositions (Iftime, ¶ 77). Iftime
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also explicitly suggests using a plurality of compounds in the ink
compositions (Iftime, ¶ 72). Finally, Iftime specifically identifies a group of
curable compounds which can be used in the ink compositions (FIG. 2, and
Table 1). This group of compounds is not large, and CN293 is shown in
both places. Hence, it would have been obvious for a person of ordinary
skill in the art to prepare an ink composition containing both CN294E and
CN293, meeting the limitations of claim 1.
Accordingly, we affirm the rejection of claim 1.
Appellant separately argues several dependent claims, which we
address below.
Claims 2 and 12. Claims 2 and 12 recite the additional presence of at
least one member of the group consisting of a propoxylated
trimethylolpropane triacrylate monomer and an ethoxylated
trimethylolpropane triacrylate monomer. The Examiner finds that the use of
these compounds is suggested by Iftime’s statement that CD501 (which falls
within the scope of claims 2 and 12) can be used in Iftime’s ink composition
(Final Act. 4, citing Iftime, ¶¶ 88 and 96). Appellant argues that Iftime
“provides no teaching or suggestion to arrive at the specific combination of
an ink comprising a tetrafunctional polyester acrylate oligomer; a polyester
acrylate oligomer . . . and . . . propoxylated trimethylolpropane triacrylate
(Appeal Br. 7).
However, Iftime specifically states that CD501 is a compound which
is suitable for use in its ink compositions (Iftime, ¶ 96). As explained above
in connection with claim 1, it would have been obvious to use CN294E and
CN293 in an ink composition. Because Iftime also specifically identifies
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CD501 as a possible component in its ink composition, it would have been
obvious to include CD501 with CN294E and CN293.
Claims 3 and 13. The Examiner’s findings and Appellant’s
arguments regarding claims 3 and 13 are essentially the same as those for
claims 2 and 12. For the same reasons as outlined above, Appellant has not
identified reversible error in the rejection of these claims.
Claims 4 and 14. Claims 4 and 14 recite that the viscosity of the
claimed competition is between 5xl05 and 3x107 cps at 35 °C. Appellant’s
arguments with respect to these claims are identical to the arguments made
in connection with claim 1 (see, Appeal Br. 8), and are unpersuasive for the
same reasons.
Claims 5 and 15. Claims 5 and 15 recite that the 60 second tack of the
ink composition is between 25 and 50 g-m at 35°C. Appellant’s arguments
with respect to these claims are identical to the arguments made in
connection with claim 1 (see, Appeal Br. 8–9), and are unpersuasive for the
same reasons.
Claims 6–8 and 16–18. These claims recite specific amounts of the
various components of the ink compositions and have specific viscosities
and 60 second tacks. The Examiner finds that the claimed ranges are
described in Iftime, and that the claimed properties would have been
expected given that the compositions are substantially identical (Final Act.
5–7, citing Iftime, ¶¶ 71, 98, 102). Appellant argues that because Iftime
states that the selection of curable compounds is not critical, a person of skill
in the art would not be led to select the particular combination of
components set forth in the claims (Appeal Br. 9). However, as explained
above, Iftime does provide clear reasons to make the necessary selections.
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Accordingly, Appellant has not demonstrated reversible error in the
rejections.
Claims 9, 10, 19, and 20. Appellant does not make any additional
arguments of this group of claims beyond the arguments made in connection
with claim 1 (Appeal Br. 10). For the reasons set forth above, this argument
is not persuasive of reversible error.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–20 103 Iftime 1–20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED