Ex Parte AhnDownload PDFPatent Trial and Appeal BoardSep 30, 201311992373 (P.T.A.B. Sep. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/992,373 03/20/2008 Dongchan Ahn DC10283PCT1 7582 27305 7590 10/01/2013 HOWARD & HOWARD ATTORNEYS PLLC 450 West Fourth Street Royal Oak, MI 48067 EXAMINER ROLLAND, ALEX A ART UNIT PAPER NUMBER 1712 MAIL DATE DELIVERY MODE 10/01/2013 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 DONGCHAN AHN __________ Appeal 2012-006767 Application 11/992,373 Technology Center 1700 ____________ Before CHUNG K. PAK, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 1-21. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellant’s invention is directed to a method of developing a pattern on a surface by placing and developing an ink system containing (i) a free radical polymerizable monomer, oligomer or polymer, (ii) an organoborane amine complex, (iii) an amine reactive compound, and (iv) oxygen (Spec. para. [0006]). Claims 1 and 15 are illustrative: Appeal 2012-006767 Application 11/992,373 2 1. A method of forming a pattern comprising: forming a pattern on a surface with an ink; and developing the pattern by exposing the pattern to a developing medium; wherein the ink and the developing medium comprise at least one component selected from (i) a free radical polymerizable monomer, oligomer or polymer, (ii) an organoborane amine complex, (iii) an amine reactive compound, and (iv) oxygen, wherein the components (i)-(iv) are distributed between the ink and the developing medium, such that components (ii) and (iii) are not combined in the presence of component (iv). 15. A method according to claim 1, wherein the ink comprises: (ii) an organoborane amine complex or (iii) an amine reactive compound; and the developing medium comprises: (iii) an amine reactive compound or (ii) an organoborane amine complex; and wherein (i) a free radical polymerizable monomer, oligomer or polymer and (iv) oxygen, are present in the ink or in the developing medium, or in both the ink and the developing medium; and the pattern is developed on the surface by combining a respective ink with its respective developing medium. Appellant appeals the following rejections: 1. Claims 15 and 18-20 are rejected under 35 U.S.C. § 112, second paragraph, for failing to point out and distinctly claim the subject matter which Appellants regard as the invention. 2. Claims 1-5, 8, 10, 11, 13, 14, 16, 17, and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zharov (US 6,248,846 B1, patented Jun. 19, 2001) in view of Welch (US 2,985,633, patented May 23, 1961) and Tokie (US 6,513,897 B2, patented Feb. 4, 2003). 3. Claims 6 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zharov in view of Welch, Tokie and Chen (IS 5,902,919, patented May 11, 1999). Appeal 2012-006767 Application 11/992,373 3 4. Claims 7 and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zharov in view of Welch, Tokie and Kropa (US 2,409,633, patented Oct. 22, 1946). REJECTION (1): Indefiniteness ISSUE Did the Examiner reversibly err in concluding that dependent claims 15 and 18-20 are indefinite because these claims require that the organoborane complex and amine reactive compound are combined in the presence of oxygen which the Examiner concludes contradicts independent claim 1? We decide this issue in the affirmative. FINDINGS OF FACT & ANALYSIS The Examiner’s findings and conclusions regarding claims 15 and 18- 20 are located on pages 4 and 8-9. The Examiner holds that claims 15 and 18-20 are indefinite because claim 1 from which claims 15 and 18-20 depend requires that the organoborane amine complex and the amine reactive compound are not combined in the presence of oxygen whereas claims 15 and 18-20 require the organoborane amine complex and amine reactive compound be combined in the presence of oxygen (Ans. 4). Appellant argues that claim 1 requires that the organoborane amine complex and the amine reactive compound are not combined in the presence of oxygen while distributed between the ink and the developing medium (App. Br. 10). Appellant argues that one of ordinary skill in the art would appreciate that the organoborane amine complex and the amine reactive compound are not combined in the presence of oxygen while distributed Appeal 2012-006767 Application 11/992,373 4 between the ink and the developing medium (i.e., prior to developing the pattern) (App. Br. 12). Claim 1 requires forming a pattern of ink and developing the pattern by exposing the pattern to developing medium. Claim 1 further .requires the components (i) to (iv) are distributed between the ink and developing medium such that components (ii) (i.e., the organoborane amine complex) and (iii) (i.e., the amine reactive compound) “are not combined in the presence of component (iv) (i.e., oxygen). We construe the claim to mean that components (ii) and (iii) may be present in either the ink or developing composition but are not present together in the ink or developing medium if oxygen is part of either the ink or developing composition. Put another way, the “not combined” limitation is a limitation on the composition of the ink and on the composition of the developing medium: it is not a limitation on the process step of combining the ink with the developing medium. Our construction comports with the Specification disclosures (Spec. para. [0068] to [0069]). Therefore, dependent claims 15 and 18-20 are construed in light of this proper claim construction of independent claim 1. Claim 15 recites that the ink or developing agent may contain either the organoborane amine complex or an amine reactive compound and the free radical polymerizable monomer and oxygen are present the ink, developing medium or both the ink and developing medium with the ink pattern being developed by combining the ink and developing medium. Based on the proper claim 1 construction discussed supra, one of ordinary skill in the art would have understood that the organoborane amine complex and the amine reactive compound are not present together in either the ink or developing agent Appeal 2012-006767 Application 11/992,373 5 composition if oxygen is present in either the ink or developing agent composition. Claim 18, and claims 19 and 20 which depend from claim 18, recite “separate phases” containing the organoborane amine complex and the amine reactive compound. The Specification describes at paragraph 68 that separate phases isolate the organoborane amine complex and the amine reactive compound when the components are packaged as a single package system. The ink is developed by either applying a de-emulsifier or shearing the composition to permit the organoborane amine complex and the amine reactive compound to react in the presence of oxygen. In other words, one of ordinary skill in the art would understand that claim 18 recites that oxygen is separated from the organoborane amine complex and the amine reactive compound. On this record, we reverse the Examiner’s 35 U.S.C. § 112, second paragraph rejection. REJECTIONS (2) to (4) ISSUE Did the Examiner reversibly err in failing to establish that it would have been obvious to pattern Zharov’s composition using Tokie’s1 ink jet process so satisfy the subject matter of claim 1 that requires the step of “forming a pattern”? We decide this issue in the affirmative. 1 We focus on the combination of Tokie and Zharov because the Examiner relies on Tokie to teach the disputed pattern feature. Welch is relied on for a teaching of the benefits of using oxygen, which is not disputed. Appeal 2012-006767 Application 11/992,373 6 FINDINGS OF FACT & ANALYSIS The Examiner’s findings and conclusions regarding Zharov and Tokie are located on pages 5-6 of the Answer. The Examiner finds that Zharov discloses an adhesive composition comprising the claimed free radical polymerizable monomer, organoborane amine complex, an acid for initiating polymerization and oxygen (Ans. 3). The Examiner finds that Zharov fails to teach, inter alia, forming a pattern as required by claim 1. Id. The Examiner finds that Tokie teaches a method of applying adhesive material in a pattern onto a substrate using a plurality of inkjet heads (Ans. 5). The Examiner concludes that it would have been obvious to deposit the composition in the desired pattern because Tokie states that adhesives are conventionally applied in the pattern desired by the user (Ans. 5-6). Appellant argues that there is no reason to combine Tokie’s inkjet patterning process for adhesives with Zharov as the Examiner has not established that Zharov’s adhesive composition is ink jettable (App. Br. 19, Reply Br. 7). The Examiner responds that because Zharov teaches an adhesive composition that is suitable for the purposes of Tokie, it is expected that the adhesive composition of Zharov is ink jettable and would predictably benefit from being ink jetted (Ans. 11). The Examiner’s finding that Zharov’s adhesive is”suitable for the purposes of Tokie,” i.e., that it is ink jettable, is conclusory. No credible evidence has been provided by the Examiner that Zharov’s adhesive composition is a jettable type. The Examiner has not provided any findings regarding, for example, the viscosity or other parameters of Zharov’s adhesive composition that would relate to whether the adhesive composition Appeal 2012-006767 Application 11/992,373 7 is ink jettable. Indeed, Tokie lists several types of adhesive compositions that are ink jettable (col. 9, ll. 17-29), but the Examiner has not specifically related Zharov’s composition to those disclosed by Tokie. Because no evidence has been proffered by the Examiner to substantiate that one of ordinary skill in the art would have used Tokie’s ink jet patterning process with Zharov’s adhesive composition, we find that there is no apparent reason to combine the two references so as to form a pattern of adhesive. The Examiner has not dispensed with the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On this record, we are constrained to reverse the Examiner’s § 103 rejections. DECISION The Examiner’s decision is reversed. ORDER REVERSED cam Copy with citationCopy as parenthetical citation