Ex Parte Becker et al

Patent Trial and Appeal Board

Sep 1, 2016

12305817 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/305,817 05/24/2011
123223 7590 09/06/2016
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Armin Becker
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
074019-0011-US-286716 7923
EXAMINER
ROBINSON, CHANCEITY N
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
09/06/2016 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARMIN BECKER, UWE STEBANI, JENS
SCHADEBRODT, and UWE KRAUSS 1
Appeal2015-002489
Application 12/305,817
Technology Center 1700
Before CHUNG K. PAK, WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 7-
9 and 13. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Flint Group German GmbH as the real party in interest.
2 In our opinion below, we refer to the Final Action mailed April 14, 2014
("Final Act."), the Appeal Brief filed September 15, 2014 ("App. Br."), the
Examiner's Answer mailed October 6, 2014 ("Ans."), and the Reply Brief
("Reply") filed December 8, 2014.
Appeal2015-002489
Application 12/305,817
BACKGROUND
The claims are directed to a laminate comprising a
photopolymerizable relief-forming layer and an elastomeric substrate layer.
Claim 7, reproduced below, is illustrative of the claimed subject matter:
7. A laminate comprising
a) a photopolymerizable relief-forming layer comprising
an elastomeric binder, ethylenically unsaturated monomers, a
photoinitiator, and optionally further additives;
b) an elastomeric substrate layer which is optionally
photopolymerizable compnsmg an elastomeric binder,
optionally ethylenically unsaturated monomers, a photoinitiator,
and optionally further additives;
wherein said photopolymerizable relief-forming layer a)
has a hardness of 30 to 70° Shore A and said elastomeric
substrate layer b) has a hardness of from 75° Shore A to 70°
Shore D in the photopolymerized state, and wherein said
elastomeric substrate layer b) has a hardness of at least 5° Shore
A greater than that of said photopolymerizable relief-forming
layer a), and wherein the photopolymerizable relief-forming
layer a) is present on the elastomeric substrate layer b ).
App. Br. 12 (Claims App'x).
2
Appeal2015-002489
Application 12/305,817
Hermesdorf
Johnson et al.
("Johnson")
Becker et al.
("Becker")
Smith
REFERENCES
US 2006/0073417 Al Apr. 6, 2006
US 7 ,972,666 B2 July 5, 2011
US 8,288,080 B2 Oct.16,2012
EP 1193079 A2 Apr. 3, 2002
REDCO Rubber Information, Polyisoprene Rubber,
http ://redco 1. com/rubber-information/polyisoprene-rubber
("REDC0")3
Elastomers and Thermoplastics Engineering Design Guide, Styrene
Butadiene (SBR ), http://www.mnrubber.com/Design_ Guide/3---6 .html
("Elastomers")
REJECTIONS4
The Examiner maintains the following rejections:
1. Claims 7-9 and 13 on the ground of non-statutory obviousness-
type double patenting as being unpatentable over claim 11 of U.S. Patent
No. 8,288,080.
2. Claims 7-9 and 13 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to distinctly clam the subject matter which the
inventor(s) regards as the invention.
3 This web address is no longer active, however the same information can be
found at http://www.redco I .com/rubber-materials/pol yisoprene-rubber. In
addition, Appellants have not objected to the Examiner's use of the web site
as an informative reference.
4 The Examiner's rejection of claim 13 under 35 U.S.C. § 112(d) (Final Act.
3) is withdrawn in the Answer (8).
3
Appeal2015-002489
Application 12/305,817
3. Claims 7, 8, and 13 under 35 U.S.C. § 103(a) over Hermesdorf
as evidenced by REDCO and Elastomers in view of Smith and further in
view of Johnson.
OPINION
Non-statutory obviousness-type double patenting rejection
Claims 7-9 and 13 are rejected on the ground of non-statutory
obviousness-type double patenting over claim 11 of U.S. Patent No.
8,288,080. Appellants do not argue against the rejection, and instead request
that the rejection be held in abeyance. App. Br. 10.
Accordingly, we summarily affirm the rejection. See, e.g., Manual of
Patent Examining Procedure (MPEP) § 1205.02 (9th ed. Mar. 2014) ("If a
ground of rejection stated by the examiner is not addressed in the appellant's
brief, appellant has waived any challenge to that ground of rejection and the
Board may summarily sustain it, unless the examiner subsequently withdrew
the rejection in the examiner's answer.").
Rejection of claims as indefinite
The Examiner rejects claims 7-9 and 13 as indefinite for failing to
particularly point out and distinctly claim the subject matter which the
applicants regard as the invention because claim limitation b) recites "an
elastomeric substrate layer which is optionally photopolymerizable" and
"elastomer substrate layer b) has a hardness of from 75° Shore A to 70°
Shore D in the photopolymerized state." Final Ac. 3, Ans. 8-9 (emphasis
4
Appeal2015-002489
Application 12/305,817
added). The Examiner contends that, as a photopolymerized state is optional
in the elastomeric substrate layer, there is no antecedent basis for "the." Id.
Appellants respond that the Examiner must use the broadest
reasonable interpretation of the claims. App. Br. 4. Appellants further state
that recitation of a property that exists where a condition is met is not
indefinite merely because the condition is not required. Id.
A decision on whether a claim is indefinite under 35 U.S.C. § 112,
second paragraph requires a determination of whether one of ordinary skill
in the art would understand what is claimed when the claim is read in light
of the specification. Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d1343,
1350 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565, 1568 (Fed. Cir. 1986).
Applying such test to the claim language in question, we determine
that the claims are not indefinite, as one of ordinary skill in the art at the
time of the invention would understand that the elastomeric substrate layer
of the claims must have a hardness of the recited range when it has been
photopolymerized. Stated differently, the claim language in question
merely defines a property of the elastomeric substrate in terms of a hardness
at the photopolymerized state.
We reverse the Examiner's rejection of claims 7-9 and 13 as
indefinite.
Rejection of claims 7, 8, and 13 as obvious
The Examiner rejects claims 7, 8, and 13 as obvious over Hermesdorf
as evidenced by REDCO and Elastomers in view of Smith and further in
view of Johnson. Final Act. 4. Hermesdorf is said to disclose a laminate
5
Appeal2015-002489
Application 12/305,817
(film) comprising the photopolymerizable relief-forming layer and the
elastomeric photopolymerizable substrate layer of the claims. Id.
Specifically, the Examiner finds that Hermesdorf teaches ( 1) a
photopolymerizable relief-forming layer (inkjet receptive coating)
comprising an elastomeric binder ( elastomeric styrene-butadiene rubber) and
ethylenically unsaturated monomers5; (2) an elastomeric photopolymerizable
substrate layer (photopolymer substrate) comprising an elastomeric binder
(polyisoprene) and a photoinitiator (photopolymerization initiator); wherein
(3) the photopolymerizable relief-forming layer is present on the elastomeric
substrate layer. 6 Id.
5 The Examiner subsequently acknowledges that Hermesdorf does not teach
ethylenically unsaturated monomers in the photopolymerizable relief-
forming layer. Final Act. 6. Instead, Hermesdorf teaches ethylenically
unsaturated monomers in the elastomeric substrate layer. Ans. 14 (see also
Hermesdorf i-f 49).
6 The Examiner acknowledges that Hermesdorf does not explicitly disclose
the photopolymerizable relief-forming layer (inkjet receptive coating)
comprises a photoinitiator, as claimed, and turns to Smith for the disclosure
that a small amount of photo initiator in an inkjet receptive coating to
improve the light fastness of the ink. Ans. 7 (citing Smith, Abstract, i-f 1 ).
The Examiner also acknowledges that Hermesdorf does not disclose the
photopolymerizable relief-forming layer (inkjet receptive coating) comprises
ethylenically unsaturated monomers, as required by the claims, and turns to
Johnson for teaching that inkjet receptive coatings include hydroxyl ethyl
methacrylate (HEMA) (an ethylenically unsaturated monomer) and provide
good color density, exhibit low density loss, and are water-resistant. Id.
(citing Johnson Abstract, col. 1, ln. 49---col. 2, ln. 22). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to (1) add a photoinitiator to the inkjet receptive coating ofHermesdorfto
improve the light fastness of the ink, and (2) add a photoinitiator to the inkjet
receptive coating ofHermesdorf to aid in good color density, low density
loss, and water-resistance. Ans. 7. Appellants do not dispute these findings.
6
Appeal2015-002489
Application 12/305,817
The Examiner acknowledges that Hermesdorf does not explicitly
disclose that the photopolymerizable relief-forming layer has the claimed
hardness. Ans. 5. The Examiner finds that Hermesdorf discloses a
photopolymerizable relief-forming layer (receptive inkjet coating)
comprising an elastomeric binder such as elastomeric styrene-butadiene
rubber (SBR). Id. at 6 (citing Hermesdorfi-f 56). SBR has a hardness of 50
to 70° Shore A. Id. (citing Elastomers as evidence of SBR's hardness). The
hardness of SBR falls within the range of hardness required by the claims for
a photopolymerizable relief-forming layer comprising an elastomeric binder,
i.e., 30 to 70° Shore A. App. Br. 12 (Claims App'x).
The Examiner acknowledges that Hermesdorf does not explicitly
disclose that the elastomeric substrate layer has the claimed hardness or that
the elastomeric substrate layer has a hardness of at least 5° Shore A greater
than the photopolymerizable relief-forming layer. Ans. 5---6. The Examiner
finds. however. that Hermesdorf recmmizes that the nhotonolvmer substrate
/ / '-' _._ _._ el
(elastomeric substrate layer) comprises an elastomer such as a rubber chosen
for its specific hardness, e.g., polyisoprene. Id. at 6 (citing Hermesdorfi-f
49). Polyisoprene rubber has a hardness of 30 to 95° Shore A. Id. (citing
REDCO for evidence of polyisoprene' s hardness). The hardness of
polyisoprene falls within the range of hardness required by the claims for an
elastomeric substrate layer, i.e., 75° Shore A to 70° Shore D. App. Br. 12
(Claims App'x).
The Examiner concludes that Hermesdorf teaches that hardness of the
elastomer of both the substrate layer and relief-forming layer is a result
effective variable, thus it would have been obvious to one of ordinary skill in
7
Appeal2015-002489
Application 12/305,817
the art at the time of the invention to optimize the hardness of the layers, as
well as the difference in hardness between the layers, as claimed. Ans. 5.
Appellants contend that the references do not adequately disclose or
suggest the required hardness for each layer in the laminate or the difference
between the layers. App. Br. 6. Appellants argue that the inkjet receptive
coating (photopolymerizable relief-forming layer) and photopolymer
substrate composition ( elastomeric substrate layer) in Hermesdorf each
comprise more than a single component, and the Examiner improperly
assumes that the hardness of each of the multi-component layers of
Hermesdorf would be the same as that of each of the components. 7 Id. at 8-
9.
Appellants object that the Examiner selects a single component in
each layer from Hermesdorf and assumes the hardness of a layer comprising
that component in H ermesdorf is the same as the hardness of the single
component. Id. at 8 (The hardness of polyisoprene "is not applicable to the
compositions of Hermesdorf, which contain additional components.").
However, the question is whether the prior art cited by the Examiner
suggests to one of ordinary skill in the art at the time of the invention that
7 Appellants complain that Hermesdorf discloses a photopolymer substrate
composition ( elastomeric substrate layer) comprising polyisoprene,
butanedioldiacrylate, and benzildimethylketal, and "[i]t is not appropriate to
assume the hardness of the entire composition based only on the asserted
hardness of one of the three components," i.e., polyisoprene. Id. at 8 (citing
Hermesdorfi-f 49). Appellants further argue that the inkjet receptive coating
of Hermesdorf comprises (a) a hydrophilic polymeric material, (b) a non-
nitrogen comprising hydrophilic polymeric material, or ( c) a hydrophilic
polymeric material, and may include an organic or inorganic filler and/or
porous particulate material. Id. at 9 (citing Hermesdorfi-f 56).
8
Appeal2015-002489
Application 12/305,817
the hardness of the layers in the claims is obvious based on the teachings in
the prior art.
According to the Specification, both the photopolymerizable relief-
forming layer and the elastomeric substrate layer contain at least one
elastomeric binder. Spec. 9, 11. 5-6. Polyisoprene and styrene-butadiene
rubber (SBR) are identified as elastomeric binders for use in the invention.
Id. at 9, ln. 11. The Examiner finds that Hermesdorf teaches the same
binders as the Specification for the photopolymerizable relief-forming layer
and the elastomeric substrate layer. Ans. 11.
The elastomeric substrate layer of the claims requires only an
elastomeric binder and a photoinitiator. Id. at 12. Hermesdorf teaches that
an elastomer ( elastomeric binder) in the photopolymer substrate ( elastomeric
substrate layer) may be chosen for its specific hardness. Hermesdorfi-f 49.
The Specification does not state that a photoinitiator will affect the hardness
of the elastomeric substrate layer. Spec. 10, 11. 30-37. We find, therefore,
that Hermesdorf in view of REDCO would have suggested the required
hardness for the claimed elastomeric substrate layer as Hermesdorf implies
that the hardness is an important characteristic of the elastomeric substrate
layer.
The photopolymerizable relief-forming layer of the claims requires an
elastomeric binder, ethylenically unsaturated monomers, and a
photoinitiator. App. Br. 12 (Claims App'x). The Specification discloses
that the hardness of both of the layers can be established in various ways,
e.g., by the type and amount of elastomeric binders, by the type and amount
of the plasticizers used, and by the type and amount of the ethylenically
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Appeal2015-002489
Application 12/305,817
unsaturated monomers. Spec. 10, 11. 30-37.8 The Examiner finds that the
hardness of the elastomeric binder (SBR) in this layer is taught by
Hermesdorf in view of Elastomers (Ans. 11 ), but the Examiner does not
refer to any prior art to show the hardness of ( 1) the required ethylenically
unsaturated monomers, or (2) the combination of SBR with ethylenically
unsaturated monomers. Nor does the Examiner refer to any teaching in
Hermesdorf or any other prior art to demonstrate that the hardness of the
photopolymerizable relief-forming layer is a result effective variable. Thus,
on this record, the Examiner has not demonstrated that each element of the
claims is disclosed or suggested in the applied prior art.
Accordingly, we do not sustain the Examiner's rejection of claims 7,
8, and 13 as obvious.
DECISION
For the above reasons, the Examiner's rejection of claims 7-9 and 13
on the ground of non-statutory obviousness-type double patenting over claim
11 of U.S. Patent No. 8,288,080 is AFFIRMED. The Examiner's rejection
of claims 7-9 and 13 under 35 U.S.C. § 112, second paragraph is
8 Although it appears that the degree of polymerization is also expected to
affect the hardness of the photopolymerized polymer, neither the
Specification nor the Examiner considers it as a factor in determining a
hardness of the elastomeric substrate or the photopolymerizable relief-
forming layer. If a degree of polymerization is known to affect the hardness
of the photopolymerized polymer, both the Examiner and Appellants should
determine whether the elastomeric substrate and the photopolymerizable
relief-forming layer taught by Hermesdorf or any other prior art are
encompassed by the recited elastomeric substrate and photopolymerizable
relief-forming layer, which are capable of having a specific hardness under
any degree of polymerization.
10
Appeal2015-002489
Application 12/305,817
REVERSED. The Examiner's rejection of claims 7, 8, and 13 under 35
U.S.C. § 103(a) is REVERSED. 9
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
9 We note for the record that claim 9 of the application is not rejected as
obvious.
11