Ex Parte Bruchmann et al

Board of Patent Appeals and Interferences

Aug 19, 2008

10399255 (B.P.A.I. Aug. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERND BRUCHMANN, JOELLE BEDAT,
JURGEN KACZUN, and PETER POGANIUCH
____________

Appeal 2008-2964
Application 10/399,255
Technology Center 1700
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Decided: August 19, 2008
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Before EDWARD C. KIMLIN, CHARLES F. WARREN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1-10, 12-14, 16, 17, and 19-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2008-2964
Application 10/399,255

BACKGROUND
The invention relates to a liquid printing ink (claim 1), or printing
lacquer (claim 16), and a process for the preparation thereof (claim 17),
wherein the ink or lacquer contains a hyperbranched polymer as a binder
(see, e.g., Spec. 1: 1-3).
Claim 1 is illustrative:
1. A liquid printing ink for flexographic and/or gravure
printing, comprising

a) one or more binders,
b) a solvent or a mixture of different solvents,
c) one or more colorants,

and optionally further additives, wherein

the one or more binders (a) constitute from 5 to 30% by weight
of the printing ink and at least one of the binders is a
hyperbranched polymer which has a non-uniform molecular
composition and structure and has functional groups, the
solvent or the mixture of different solvents (b) constitutes from
50 to 80% by weight of the printing ink, and any solvent as well
as any mixture of different solvents is selected from the group
consisting of hydrocarbons, alcohols, substituted alcohols,
esters and mixtures thereof, and

the one or more colorants (c) constitute from 5 to 25% by
weight of the printing ink, and the ink comprises no water.

The Examiner relies upon the following prior art references in
the rejections of the appealed claims:

Davis (hereinafter GB ‘797) GB 2,324,797 Apr. 11, 1998
Zhu 6,251,175 B1 Jun. 26, 2001
Latunski 6,806,301 B2 Oct. 19, 2004

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The Examiner rejected claims 1-10, 12-14, 17, and 19-20 under 35
U.S.C. § 103(a) as being unpatentable over Zhu in view of GB ‘797. To
reject claim 16, the Examiner added Latunski to the combination of Zhu and
GB ‘797.
Appellants do not argue any of the claims separately with any
reasonable specificity (App. Br. 2-14). Therefore, we select claims 1 and 16
as representative of the different grounds of rejection set forth above to
decide the issue on appeal regarding all the claims.

ISSUES ON APPEAL
The issues on appeal arising from the contentions of Appellants and
the Examiner are whether the Appellants have shown that the Examiner
reversibly erred in rejecting the claims because:
(a) there is no apparent reason in the prior art to combine the
references as proposed by the Examiner; and
(b) there is no reasonable expectation of success upon making the
Examiner’s proposed combination.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
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The legal question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) secondary considerations, if
any. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR,
127 S. Ct. at 1734.
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 127 S. Ct. at 1740.
KSR also states:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
KSR, 127 S. Ct. at 1740-41.
The Federal Circuit recently recognized that “[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
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obvious where others would not.” Leapfrog Ent., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1161 (Fed. Cir. 2007).

OPINION
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we agree with the Examiner’s findings of facts and
legal conclusions of obviousness as set out in the Answer. We add the
following primarily for emphasis.
There is no dispute that the Examiner correctly found that Zhu
describes a liquid ink comprising all the ingredients listed in claim 1, except
patentee does not describe the use of a “hyperbranched” polymer as one of
the binders.
Zhu describes that the binder may comprise one or more binders,
including polyamide or polyurethane resins (e.g., col. 5, ll. 29-57). Zhu also
teaches that hydroxyaromatic polymer binder resins used in the ink “can be
linear, branched, or a combination of the two” (col. 4, ll. 58-60; emphasis
provided).
Appellants also do not dispute the Examiner’s finding that GB ‘797
describes hyperbranched polymers that are identical to those claimed by
Appellants (Ans. 4). Furthermore, GB ‘797 describes that “hyperbranched
polymers have wide industrial potential for use in high solids coatings and
sealants, as reactive plasticizers…owing to their characteristics such as
lower viscosity when . . . in solution when compared to linear analogues,
higher solubility than their linear analogues and high chemical reactivity
(large number of reactive chain ends).” (GB ‘797, p. 3, ll. 4-12).
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GB ‘797 also describes that these hyperbranched polymers may be
used as “rheology modifiers in coating and sealant compositions, causing a
greater reduction of viscosity than a similar amount of volatile solvent.” (GB
p. 16, l. 32 to p. 17, l. 3).
We therefore agree with the Examiner that a person having ordinary
skill in the art would have found it obvious to use a hyperbranched polymer
structure as one of the polymer binders of Zhu, in order to produce ink with
the desired viscosity therein, and thus arrive at Appellants’ claimed ink
composition (Ans. 3-4).
Appellants contend however that there is no apparent reason in the
prior art to combine GB ‘797 with Zhu as proposed by the Examiner (App.
Br. 4; Reply Br. 2-5). In particular, Appellants contend that since the
viscosity of Zhu has already been achieved by Zhu, “[n]o benefits, no
economic incentives, no improved properties would have been expected by a
skilled artisan upon making the [E]xaminer’s proposed combination” (App.
Br. 7). Appellants further contend the Examiner has oversimplified the task
of making the proposed combination (App. Br. 7), and that there is no
reasonable expectation of success (Reply Br. 4-5). We do not find these
arguments persuasive of error in the Examiner’s rejection for the following
reasons.
Zhu describes that the binder resin is present in an amount sufficient
to provide good adhesion of the images to the substrates (col. 7, ll. 4-7).
However, Zhu further cautions that “[e]xcessive use of the [binder] resins
may increase the viscosity of the ink composition, which may lead to poor
printing operation and/or poor quality of the printed message such as
smearing” (col. 7, ll. 12-15).
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Zhu also teaches that a dendrimer (that is, a polymer with a branched
structure which is highly uniform compared to a hyperbranched polymer
which is nonuniform in both composition and structure; see, e.g., Spec. 3:1-
21; and GB ‘797, p. 1, l. 29 to p. 2, l. 18) may be used as an adhesion
promoter in the ink composition (see, e.g., Zhu, col. 8, ll. 3-9; 24-48).
GB ‘797 teaches the difference between a dendrimer and
hyperbranched polymer lies in the degree of branching (GB ‘797, p. 2. ll. 10-
18).
The Supreme Court noted in KSR that although the teaching,
suggestion, motivation test “captured a helpful insight,” an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 127 S. Ct. at 1741. Furthermore, one of ordinary skill in the art is also
a person of ordinary creativity, not an automaton. KSR, 127 S. Ct. at 1742.
The knowledge that the use of hyperbranched polymers was a
desirable way to modify the viscosity compared to their linear analogues
when using polymers in liquid compositions would have been within the
skill in the art, as evidenced by GB ‘797. The knowledge that
hyperbranched polymer structures have high chemical reactivity was also
within the skill of the art as taught in GB ‘797.
Therefore, it would have been prima facie obvious at the time the
invention was made to have used the prior art hyperbranched polymer of GB
‘797 instead of, or in addition to, its linear analogue in the printing ink
composition of Zhu (e.g., hyperbranched polyamide or polyurethane). This
would predictably decrease the viscosity and/or the amount of binder
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necessary to achieve the appropriate viscosity, a result that Zhu taught to be
desirable. Further, one of ordinary skill in the art would have readily
appreciated that a hyperbranched polymer structure would have been an
appropriate way to provide a binder with good adhesion, noting again that
GB ‘797 teaches the difference between a dendrimer and hyperbranched
polymer lies in the degree of branching, and that hyperbranched polymers
have high reactivity. The use of a hyperbranched polymer appears to be no
more than the predictable use of one known prior art element structure (i.e.,
a hyperbranched polymer structure) for another (e.g., a linear or branched
polymer binder of Zhu) that would predictably create a liquid ink of
satisfactory viscosity and ink adhesion.
Thus, we determine that one of ordinary skill in the art would have
readily appreciated that the use of a hyperbranched polymer as a known
alternative to its linear analogue for improved properties as taught in GB
‘797 would have been suitable for making the liquid ink composition of Zhu
See KSR, 127 S. Ct. at 1739-40 (The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.”). See also Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1364 (Fed. Cir. 2007) (the expectation of success need only be
reasonable, not absolute).
Appellants have not shown that there is more than a predictable result
flowing from use of a hyperbranched polymer as one of the binders in an ink
as taught in Zhu.
The breadth of claim 1 also supports our obviousness determination.
It is axiomatic that claims are given their broadest reasonable interpretation
in light of the specification as they would be interpreted by one of ordinary
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skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Claim 1 notably does not require any minimum amount of
hyperbranched polymer to be present; a hyperbranched polymer is merely
present as one of the “one or more binders” claimed. Claim 1 also notably
does not require any specific polymer to be hyperbranched. Appellants state
that “[t]he choice of hyperbranched polymer… is in principle not limited to
a specific polymer class.” (Spec. 5:7-9).
Thus, a mixture of binders, as expressly taught in Zhu, including a
trace amount of a hyperbranched polymer of GB ‘797 as, e.g., a rheology
modifier, is encompassed by the “one or more binders…” as claimed.
Appellants further contend the Examiner has “arbitrarily labeled” the
amount of hyperbranched polymer and organic solvent as “result effective”
and that the skilled artisan would have no way to know how changing these
would affect the product obtained (App. Br. 8-9; Reply Br. 5-6). We
disagree.
One of ordinary skill in the art is also a person of ordinary creativity,
not an automaton. KSR, 127 S. Ct. at 1742. One of ordinary skill in the art
would have been led to employ workable or optimum amounts of ingredients
through routine experimentation to obtain the desired compositions
suggested by the applied prior art. In re Aller, 220 F.2d 454, 456 (CCPA
1955). Further, we determine that Zhu does teach that the amount of
polymer resin binder is a result effective variable, since, as discussed
previously, Zhu teaches enough binder is needed to provide good adhesion
but that too much polymer binder may undesirably increase the viscosity of
the ink.
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Finally, we also note that Appellants admit in their Specification that
use of a hyperbranched polymer, namely hyperbranched polyester, was
known in the prior art for radiation-curable printing inks (Spec. 3:42-47).
This further supports our determination that one of ordinary skill in the art
would have appreciated that a hyperbranched polymer would have been an
appropriate binder in the jet ink composition of Zhu1.
We have considered Appellants’ other arguments in the Appeal Brief
and Reply Brief filed December 10, 2007, but do not find any of them
persuasive.
As a final point, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the inference of obviousness established by the applied
prior art.
For the foregoing reasons and those stated in the Answer, we agree
with the Examiner’s findings in support of obviousness for claim 1, as well
as for claims 2-10, 12-14, 17, and 19-20 which were not argued separately,
based on the combined teachings of Zhu and GB ‘797.
Since Appellants argue only that claim 16 is patentable for the same
reasons argued with respect to the rejection based on Zhu and GB ‘797 (Br.

1 See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed.
Cir. 1988) ("A statement in a patent [or application] that something is in the
prior art is binding on the applicant and patentee for determinations of
anticipation and obviousness.); and In re Nomiya, 509 F.2d 566, 571 n.5
(CCPA 1975) (It is a "basic proposition that a statement by an applicant,
whether in the application or in other papers submitted during prosecution,
that certain matter is 'prior art' to him, is an admission that that matter is
prior art for all purposes . . . .").
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7-8), we sustain the rejection of this claim for the reasons provided above
with respect to claim 1.
Therefore, we sustain all of the rejections before us on appeal.

DECISION
The Examiner’s § 103 rejection of claims 1-10, 12-14, 17, and 19-20
as unpatentable over the combined teachings of Zhu and GB ‘797 is
affirmed.
The Examiner’s § 103 rejection of claim 16 as unpatentable over the
combined teachings of Zhu, GB ‘797, and Latunski is affirmed.
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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