Ex Parte Balmer et al

Patent Trial and Appeal Board

Jun 24, 2016

12509694 (P.T.A.B. Jun. 24, 2016)

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.
12/509,694 07/27/2009 Rodney P. Balmer 238299/FG-2/361328 1558
83332 7590 06/24/2016
Jonathan P. O'Brien, Ph.D.
Honigman Miller Schwartz and Cohn LLP
350 East Michigan Avenue
Suite 300
KALAMAZOO, MI 49007
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
MAIL DATE DELIVERY MODE
06/24/2016 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 RODNEY P. BALMER, MICHAEL P. HAZELL, and
THOMAS R. MAWBY1
____________

Appeal 2013-008951
Application 12/509,694
Technology Center 1700
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

1 Flint Group is identified as the real party in interest. App. Br. 1.
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
final rejections of claims 1, 3–7, and 10 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Szum (U.S. Patent No. 6,240,230), and of claims 1, 3–7, and 10 under
35 U.S.C. § 103(a) as obvious over Szum in combination with Ackerman
(U.S. Patent No. 3,673,140). We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.

The present application claims to be a divisional application of
application No. 10/961,596, in which the Board previously rendered a
decision on appeal reversing the Examiner’s rejection of the claims.
(Decision in Appeal No. 2011-3425, mailed September 20, 2011, hereinafter
“Prior Decision”.)
Appellants claim an energy curable ink composition containing an
acrylate-functional derivative of soybean oil, another acrylate-functional
material, and a pigment, which is a lithographic ink compatible with printing
on a cold-set lithographic press (independent claim 1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. An energy curable ink composition comprising from about
7% by weight to about 12% by weight of an acrylate-functional
derivative of soybean oil, one or more further
acrylate-functional materials, and a pigment; wherein the ink
composition is a lithographic ink compatible with printing on a
cold-set lithographic press.

Claim 1 is the only pending independent claim on appeal.
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Anticipation - Szum
The Examiner finds that Szum discloses a composition comprising
each of the components recited in the claims. (Final Action 2.) In
particular, the Examiner finds that the recited range of about 7 percent by
weight to about 12 percent by weight acrylated derivative of soybean oil is
anticipated by Szum, because Szum discloses compositions including an
acrylated derivative of soya bean oil in Example 2 that is present in 20% by
weight, and because Szum discloses that fatty oil derivatives may be
employed in amounts of 5 to 50 percent by weight. (Final Action 3-4.)
Appellants argue that the amount of acrylate-functional oil
exemplified in Szum is 20 percent by weight, which is not “about” 12
percent by weight, the largest amount present in the claims. (App. Br. 6-7.)
Appellants argue that the broad range disclosed in Szum of 5 to 50 percent
by weight does not disclose the range of 7 to 12 percent by weight in the
claims with sufficient specificity. (Reply Br. 6–7.)
We agree with Appellants that the amount of acrylate-functional
derivative of soybean oil recited in claim 1 is not anticipated by Szum.
Specifically, to the extent that the Examiner relies on the amount of 20%
acrylated soybean oil disclosed in Example 2 in Szum as being encompassed
by “about 12%” representing the upper endpoint of the range recited in
claim 1 (see Ans. 4), we agree with Appellants that “about 12%” does not
include 20%. The Specification states:
“About” when applied to values indicates that the
calculation or the measurement allows some slight imprecision
in the value (with some approach to exactness in the value;
approximately or reasonably close to the value; nearly). If, for
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some reason, the imprecision provided by “about” is not
otherwise understood in the art with this ordinary meaning, then
“about” as used herein indicates a possible variation of up to
5% in the value.”
(Para. 8.)

As pointed out by Appellants, the difference in the magnitude is
significant, amounting to more than the lower limit of the claimed range.
(App. Br. 6–7.) Thus, when interpreting the claims in light of the
Specification, we do not subscribe to the view that the difference between
12% and 20% is of the kind to allow “some slight imprecision in the value”
of the 12% upper endpoint of the range recited in the claim. Accordingly,
we agree with Appellants that the amount of 20% by weight as disclosed in
Szum, does not fall within the range of about 7% by weight to about 12% by
weight of an acrylate-functional derivative of soybean oil as recited in
claim 1.
However, as the Examiner points out, the rejection does not rely
solely on this position, but also the broader teaching in Szum that the
acrylated soybean oil may be present from 5-50% by weight. (Ans. 4–5.)
Szum discloses that the fatty oil derivative is “preferably” present in
amounts of “about 5 wt. % and about 50 wt %” and discloses more
preferable amounts of “about 10 wt. % and about 40 wt. %,” and “about 15
wt. % and about 30 wt. %.” (Szum, col. 11, ll. 64–67.) As discussed above,
Example 2 of Szum includes 20% by weight of the fatty oil derivative.
(Szum, col. 17, ll. 33–46.) Thus, although the claimed range of about 7% by
weight to about 12% by weight is fully encompassed by the broadest range
disclosed in Szum, the broadest range is considerably larger than the range
recited in claim 1. In addition, the claimed range overlaps only slightly with
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a preferable range disclosed in Szum, but is outside a further preferred range
and the specific example in Szum relied on by the Examiner. Atofina v.
Great Lakes Chemical Corp., 441 F.3d 991, 999–1000 (Fed. Cir. 2006)
(holding that even though a prior art temperature range encompassed the
claimed range and overlapped with a preferred range, the prior art range was
not disclosed with sufficient specificity to anticipate the range recited in the
claims).
Therefore, we agree with Appellants that in view of the Szum
reference as a whole, the range in Szum is not disclosed with “sufficient
specificity” to anticipate the range recited in claim 1. (Reply Br. 6–7.)
Accordingly, we reverse the Examiner’s decision to reject claim 1 under 35
U.S.C. § 102 as anticipated by Szum.
Because claims 3–7 and 10 are all dependent from claim 1, we reverse
the Examiner’s decision to reject these claims as well.

Obviousness - Szum alone or Szum in view of Ackerman
The Examiner contends claims 1, 3–7, and 10 would have been
obvious over Szum alone or Szum in view of Ackerman. (Final Action 4–
5.) In so doing, the Examiner finds the evidence of secondary
considerations is insufficient to overcome the evidence of obviousness,
because while a sufficient nexus was found by the Board to be shown in the
Prior Decision, the claims at issue in the parent application were method
claims, and the claims at issue here are composition claims that merely
include an intended use. (Ans. 8.) Specifically, the Examiner stated:
The sufficient evidence of a nexus was found by the
Board to exist between the ARROWLITH ink and the method
recited in the parent application, and the ink was manufactured
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for the cold-set process. Similarly, all other evidence
necessarily are connected to a specific process that requires
specific step, namely, printing with a coldset press a specific
substrate, etc.
The instant application is directed to a composition (not
even in “ink”, but an [“]ink composition”) that while is required
to be lithographic ink compatible with printing on a cold-set
lithographic press, is still just a composition defined by its
intended use, two specific components and the above
mentioned compatibility property.

Id.
Appellants contest the Examiner’s prima facie case of obviousness.
(App. Br. 8–10.) In addition, Appellants contend that there is a sufficient
nexus between the evidence of secondary considerations and the claims at
issue in the instant case, and that the evidence of nonobviousness as a whole
outweighs the evidence of obviousness in the instant case. (App. Br. 11–
17.)
The ultimate determination of whether a claimed invention would
have been obvious or non-obvious is a legal conclusion, which is made
based on considering and weighing all of the facts and evidence of record.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Any initial
obviousness determination is reconsidered anew in view of the proffered
evidence of nonobviousness. See In re Eli Lilly & Co., 902 F.2d 943, 945
(Fed. Cir. 1990); In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); Ex
Parte Quist, 95 USPQ.2d 1140, 1145 (BPAI 2010).
Evidence of commercial success, or other secondary
considerations, is only significant if there is a nexus between
the claimed invention and the commercial success. As we
explained in J.T. Eaton & Co. v. Atlantic Paste & Glue Co.,
106 F.3d 1563 [41 USPQ2d 1641] (Fed. Cir. 1997), “[w]hen a
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patentee can demonstrate commercial success, usually shown
by significant sales in a relevant market, and that the successful
product is the invention disclosed and claimed in the patent, it
is presumed that the commercial success is due to the patented
invention.” Id. at 1571; see also Brown & Williamson Tobacco
Corp. [v. Philip Morris Inc., 229 F.3d 1120], 1130 [(Fed. Cir.
2000)] (stating the presumption that commercial success is due
to the patented invention applies “if the marketed product
embodies the claimed features, and is coextensive with them.”).

Ormco Corp. v. Align Technology Inc., 463 F.3d 1299, 1311-12 (Fed. Cir.
2006).
We are persuaded by Appellants’ arguments that the evidence as a
whole, taking into account the evidence of secondary considerations,
outweighs the Examiner’s evidence of obviousness as further explained
below. Accordingly, we reverse the Examiner’s decision to reject claims 1,
3–7, and 10 under 35 U.S.C. § 103 over Szum alone or Szum in view of
Ackerman.
We disagree with the Examiner that there is an insufficient nexus
between the evidence of secondary considerations and the claims. In this
regard, Mr. Mawby, a co-inventor of the instant application, declared that
each of the ARROWLITHTM UV Printing Inks (produced and sold by Flint
Ink), “is an energy curable ink composition that includes from about 7% by
weight to about 12% by weight of an acrylate-functional derivative of
soybean oil and one or more other acrylate functional materials.”
(Declaration of Thomas R. Mawby, executed November 2, 2009, hereinafter
“the Mawby Declaration,” ¶¶ 1, 3, 6.) The Examiner has not given, nor do
we find, a reason to doubt the veracity of Mr. Mawby’s testimony.
Although the Mawby Declaration does not mention a pigment specifically,
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we agree with Appellants, that an ink composition inherently contains a
pigment. (App. Br. 12; Spec. ¶ 20.) Thus, the evidence related to the
ARROWLITHTM UV Printing Inks bears sufficient nexus to the ink
composition recited in the claims. See In re Kao, 639 F.3d 1057, 1069 (Fed.
Cir. 2011) (quoting In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (“[A]n
applicant ‘need not sell every conceivable embodiment of the claims in order
to rely upon evidence of commercial success, so long as what was sold was
within the scope of the claims.’”)). Id. (citing Applied Materials, Inc. v.
Advanced Semiconductor Materials Am. Inc., 98 F.3d 1563, 1570 (Fed. Cir.
1996) (“[A] patentee need not show that all possible embodiments within the
claims were successfully commercialized in order to rely on the success in
the marketplace of the embodiment that was commercialized.”)).

Industry Praise
The evidence of industry praise provided by Appellants is significant.
Specifically, Flint Ink was awarded the Printing Industries of
America/Graphic Arts Technical Foundation (PIA/GATF) 2005 InterTech
Technology Award for ARROWLITHTM UV Printing Inks, an award that
honors excellence in innovative technology for the graphic communications
industry. (The Mawby Declaration, para. 5.)
In addition, nomination letters in support of Flint Ink for the award
tout the ARROWLITHTM UV Printing Inks as being a “major breakthrough”
in cold-set printing methods, which have allowed printing companies to
expand their customer base and sales, and have provided new applications
for a “shrinking” cold-set press industry. Specifically, in a letter from
Alliance Press, Inc. to nominate Flint Ink for the PIA/GATF 2005 InterTech
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Technology Award dated May 30, 2005, Matt C. Edwards praised the
ARROWLITHTM UV Printing Inks in conjunction with the cold-set web
offset industry in the area of UV printing, stating that “we were able to offer
a new world of printing options to our customers. We can print on
coated . . . and uncoated stock” and that the “ability to print U.V. in full web
applications is a major breakthrough in the coldset industry [that will] have a
significant impact on our sales growth for years to come.” (The Mawby
Declaration, para. 6, and attachment thereto.) Further, in a letter from Eagle
Web Press to nominate Flint Ink for the PIA/GATF 2005 InterTech
Technology Award dated May 19, 2005, Michael R. Gehring wrote that the
Flint UV inks “have made it possible for our company to open new doors
and expand our market place. We have gained new business not possible in
the past.” Mr. Gehring also wrote that the Flint Ink “has come at a time
when the business of cold web printing is shrinking” and that the “new
process has served to strengthen our position as a cold web printer and
encourage a more positive outlook for the future of our business.” (The
Mawby Declaration, para. 6, and attachment thereto.)
Therefore, Appellants have presented significant evidence of industry
praise.

Commercial Success
Appellants’ evidence of commercial success is based on sales of the
ARROWLITHTM UV Printing Inks. As discussed supra, we agree with
Appellants that there is a sufficient nexus between the ARROWLITHTM UV
Printing Inks and the composition recited in claim 1. Cable Elec. Prods.,
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Inc. v. Genmark, Inc., 770 F.2d 1015, 1026 (Fed. Cir. 1985) (there must be a
nexus between the commercial success and merits of the claimed invention).
Mr. Applebaum declared that the ARROWLITHTM UV Printing Inks
sales income increased from $743 in 2004, to $6,337,909 in 2008, and that
the percentage increases from year to year in the period between 2005 and
2008 were 246%, 50%, and 24% respectively, whereas the sales increases in
the “Total Insert Market” during the same period of time were 3.6%, 1.14 %
(projected), and 1.14 % (projected). (Declaration of Alan Applebaum,
executed October 27, 2009, hereinafter “the Applebaum Declaration,” para.
3.) Thus, Appellants’ sales show a steady increase from $743 in 2004 to a
significant $6.3 million in 2008. The percentage increase in
ARROWLITHTM UV Printing Ink sales far outpaces the percentage increase
in the Total Insert Market for the period from 2005-2008. Thus, the
ARROWLITHTM UV Printing Ink sales represent an increase in market
share relative to the Total Insert Market. See In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996) (If evidence of commercial success is relied upon, the
Appellant must offer proof “that the sales were a direct result of the unique
characteristics of the claimed invention—as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter”
and also demonstrate commercial success in the relevant market.)
Therefore, Appellants have presented significant evidence of
commercial success.
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Weighing evidence of Secondary Considerations against Evidence of
Obviousness
Considering all the evidence of record, we determine that Appellants’
evidence of non-obviousness, including the secondary considerations of
industry praise and commercial success, outweighs the Examiner’s evidence
of obviousness. Specifically, as previously discussed, the evidence of
industry praise and commercial success is significant. In this regard, the
Examiner’s position that the evidence only relates to specific applications in
the cold-set printing area is not well taken. (Ans. 8-9.) As discussed above,
the evidence bears sufficient nexus to the claims, and demonstrates
significant industry praise and commercial success with respect to the
claimed ink compositions. The Examiner’s evidence of obviousness, on the
other hand, specifically the Examiner’s evidence pertaining to the amount of
acrylate-functional derivative of soybean oil recited in claim 1, and
capability of the compositions as disclosed in Szum or Szum in view of
Ackerman to serve as lithographic inks compatible with printing on cold-set
lithographic presses, is not particularly strong. Appellants’ evidence of
industry praise and commercial success of the ARROWLITHTM UV Printing
Inks having amounts of acrylate-functional derivative of soybean oil within
the range recited in the claim, in our view, outweighs the Examiner’s
explanation of obviousness. Therefore, we reverse the Examiner’s rejection
of claim 1.
Regarding dependent claims 3–7 and 10, because each of these claims
depends on claim 1, we reverse the Examiner’s rejection of claims 3-7 and
10 as well.
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CONCLUSION
The Examiner erred in finding that claims 1, 3–7 and 10 are
anticipated by Szum.
Appellants’ evidence of secondary considerations is sufficient to
outweigh the Examiner’s evidence of obviousness.

ORDER
We reverse the Examiner’s decisions rejecting claims 1, 3–7 and 10
under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).

REVERSED