Ex Parte Gelarden

Board of Patent Appeals and Interferences

Mar 12, 2003

09201269 (B.P.A.I. Mar. 12, 2003)

1 In an appeal in which claims have been at least twice
rejected, the board has jurisdiction as discussed in Ex parte
Lemoine, 46 USPQ2d 1432 (Bd. Pat. App. & Int. 1995).
1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DENNIS R. GELARDEN
__________
Appeal No. 2002-0701
Application 09/201,269
___________
ON BRIEF
___________
Before KIMLIN, OWENS and KRATZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the third rejection (non-final) of
claims 1-28, which are all of the claims in the application.1
Appeal No. 2002-0701
Application 09/201,269

2 Polydispersity is the ratio of the weight average
molecular weight to the number average molecular weight
(specification, page 15, line 16).
2
THE INVENTION
The appellant claims a printing ink composition and an
overprint composition which include a branched vinyl resin having
a polydispersity of at least about 15,2 and claim a method for
making the ink composition. Claims 1, 19, 23 and 26 are
illustrative:
1. A printing ink composition comprising a solution of a
branched vinyl resin having a polydispersity of at least
about 15.
19. A method of making a printing ink, comprising the steps
of:
(a) preparing a branched vinyl resin by polymerizing a
monomer mixture that includes at least one monomer having at
least about two ethylenically unsaturated polymerizable bonds per
molecule in the presence of a free radical initiator at a
temperature at which said free radical initiator has a half-life
of less than about two minutes, wherein said polymerization
results in less than about 0.5% residual monomer based on the
total weight of the monomers being polymerized, and

(b) combining said branched vinyl resin with at least one
other material to form a printing ink, wherein the branched vinyl
resin is in solution in the printing ink.
23. A method of printing, comprising applying a printing
ink composition to a substrate, wherein said printing ink
composition includes at least a branched vinyl resin having a
polydispersity of at least about 15 and a weight average
molecular weight of at least about 100,000.
Appeal No. 2002-0701
Application 09/201,269

3 In the event of further prosecution, the examiner and the
appellant should address on the record whether there is adequate
antecedent basis for “said overprint varnish” in claim 26.
4 In this rejection the examiner no longer relies upon
U.S. 3,865,772 to Hulyalkar (answer, page 10).
3
26. An overprint composition comprising a branched vinyl
resin having a polydispersity of at least about 15, wherein said
overprint varnish is transparent.[3]
THE REFERENCES
Carlick et al. (Carlick) 4,469,826 Sep. 4, 1984
Cleary et al. (Cleary) 5,616,364 Apr. 1, 1997
Oshima et al. (Oshima) 5,780,548 Jul. 14, 1998
Tutt et al. (Tutt) 5,847,738 Dec. 8, 1998
(filed Jul. 11, 1997)
Puschak et al. (Puschak) 5,849,833 Dec. 15, 1998
(provisional application filed Jul. 21, 1995)
Margotte et al. (Margotte) 5,973,107 Oct. 26, 1999
(filed Jul. 24, 1997)
Campbell et al. (Campbell) 5,986,020 Nov. 16, 1999
(filed Aug. 5, 1997)
Houser et al. (Houser) 6,020,401 Feb. 1, 2000
(effective filing date Jun. 17, 1996)
THE REJECTIONS
The claims stand rejected as follows: claims 1-7, 9-18, 25,
27 and 28 under 35 U.S.C. § 102(e) as anticipated by Campbell;
claim 8 under 35 U.S.C. § 103 as obvious over Campbell in view of
Carlick; claims 19-22 under 35 U.S.C. § 103 as obvious over
Houser or Puschak, in view of Margotte or Oshima;4 claims 23
Appeal No. 2002-0701
Application 09/201,269

5 As stated in the remand mailed March 28, 2002 (paper
no. 20), the examiner’s comments on the merits in the
notification that the reply brief has been entered (office action
mailed February 22, 2002, paper no. 19) were improper. Hence, we
do not consider these comments or the appellant’s reply to them
(filed March 22, 2002, paper no. 21) in reaching our decision.
4
and 24 under 35 U.S.C. § 103 as obvious over Puschak in view of
Campbell; and claim 26 under 35 U.S.C. § 103 as obvious over Tutt
or Cleary, in view of Campbell.
OPINION
We reverse the rejections of claims 1-22, 25, 27 and 28, and
affirm the rejections of claims 23, 24 and 26.5
Rejection of claims 1-7, 9-18, 25, 27 and 28
under 35 U.S.C. § 102(e) over Campbell
Campbell discloses a method for making a hyperbranched
polymer by polymerizing a monomer mixture comprising at least one
monoethylenically unsaturated monomer and at least one
multiethylenically unsaturated monomer (col. 3, lines 6-23).
Some of the exemplified polymers have polydispersities above 15,
i.e., 25.75, 62.3, 68.26, 105.6 and 107.4 (col. 9, lines 11
and 43; col. 12, lines 55-58). Campbell’s polymers “may be
readily employed to form effective coating compositions” (col. 8,
lines 43-44).
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5
The examiner argues that the preambles of the appellants’
claims 1-7, 9-18, 27 and 28 (“A printing ink composition”) and
claim 25 (“A printing varnish”) are merely intended use and are
to be given little or no patentable weight because the claims do
not depend on the preamble for completeness (answer, pages 5-6
and 13-14).
The effect preamble language is to be given is determined by
reviewing the entirety of the appellant’s disclosure to gain an
understanding of what the appellant actually invented and
intended to encompass by the claim. See Corning Glass Works v.
Sumitomo Electric, 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed.
Cir. 1989).
The appellant’s specification states that “[t]he present
invention relates to printing ink compositions and methods using
printing inks, especially lithographic printing inks” (page 1,
lines 5-6), “[t]he invention provides a printing ink composition
that includes a branched vinyl resin” (page 6, lines 10-11),
“[t]he invention also provides a method of making an ink
composition with the branched vinyl resin” (page 7, lines 9-10),
“[t]he inks of the invention include a vinyl polymer that is
branched but usefully soluble” (page 8, lines 8-9), and
“[a]lternatively, the compositions of the invention may be used
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6
as overprint lacquers or varnishes. ... an overprint lacquer or
varnish may be considered to be a printing ink composition of the
invention that has no opaque pigments” (page 20, line 24 -
page 21, line 1 and page 21, lines 4-6). The examiner does not
point out, and we do not find, where the specification indicates
that what the inventor invented and intended to encompass by the
claims is a branched vinyl resin per se, rather than a printing
ink, overprint lacquer or varnish composition.
In Corning Glass the preamble was: “An optical waveguide”.
Corning Glass, 868 F.2d at 1256, 9 USPQ2d at 1965. The court
stated that “contrary to Sumitomo’s argument, the core and
cladding limitations specifically set out in paragraphs (a) and
(b) are not the only limitations of the claim. [citation omitted]
The claim requires, in addition, the particular structural
relationship defined in the specification for the core and
cladding to function as an optical waveguide.” Corning Glass,
868 F.2d at 1257, 9 USPQ2d at 1966. Likewise, in the present
case the claims require not only the branched vinyl resin recited
in the body of the claims, but also that this resin be present in
a printing ink, overprint lacquer or varnish composition as set
forth in the claims’ preambles.
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7
The examiner argues that “[t]he broad disclosure of coating
composition encompasses the use of printing inks or printing
varnishes which are merely specific types of coating. That is,
for instance, an ink is a type of coating composition in that an
ink is used to coat a substrate in order to produce an image”
(answer, pages 14-15).
“Anticipation requires that every limitation of the claim in
issue be disclosed, either expressly or under principles of
inherency, in a single prior art reference.” Corning Glass,
868 F.2d at 1255-56, 9 USPQ2d at 1965. Even if “coating
composition” were a genus encompassing “printing ink composition”
or “printing varnish”, which the examiner has not established,
the examiner has not pointed out where Campbell discloses, either
expressly or under principles of inherency, a printing ink
composition or a printing varnish.
For the above reasons we find that the examiner has not
established a prima facie case of anticipation over Campbell of
the invention claimed in the appellant’s claims 1-7, 9-18, 25, 27
and 28.
Appeal No. 2002-0701
Application 09/201,269

6 Campbell teaches that an increase in weight average
molecular weight and polydispersity typically correlates with
formation of insoluble gels (col. 10, lines 3-4). The examiner
merely argues that Campbell does not disclose the minimum
8
Rejection of claim 8 under 35 U.S.C. § 103
over Campbell in view of Carlick
The portion of Carlick relied upon by the examiner (answer,
pages 6-7) is the following:
The hard or tackifying resins that are suitable
for use in the lithographic ink vehicles are those
resins that are well known in the art of ink making for
their exellent [sic] lithographic properties and good
pigment wetting capabilities. These include alkyd
resins, urethane-modified alkyd resins, rosin-modified
phenolic resins, hydrocarbon resins, rosin esters,
polyketones, and the like.
The examiner argues that it would have been obvious to one of
ordinary skill in the art to add Carlick’s resin to Campbell’s
branched polymer to produce an ink having good wetting ability
(answer, page 7).
The examiner’s argument is not persuasive because the
examiner has not established that Campbell’s teaching that the
branched vinyl resins can be used to form effective coating
compositions (col. 8, lines 43-44) would have fairly suggested,
to one of ordinary skill in the art, using the resins to form a
printing ink composition, particularly a printing ink composition
having a branched vinyl resin in solution,6 as required by the
Appeal No. 2002-0701
Application 09/201,269

molecular weight and polydispersity at which insoluble gel
formation takes place (answer, page 17). The examiner does not
explain how Campbell would have fairly suggested, to one of
ordinary skill in the art, a solution of a branched vinyl polymer
having a polydispersity of at least about 15.
9
appellant’s claim 1 from which claim 8 depends, in combination
with pigment particles which must be present for the examiner’s
argued benefit of Carlick’s tackifying resin to be obtained.
Thus, we conclude that the examiner has not established a
prima facie case of obviousness of the printing ink composition
claimed in the appellant’s claim 8 over Campbell in view of
Carlick.
Rejection of claims 19-22 under 35 U.S.C. § 103 over
Houser or Puschak, in view of Margotte or Oshima
Houser discloses hydrocarbon-soluble resins which are useful
as binders in gravure printing inks and are the solution
polymerization reaction product of 1) an alkyl or cycloalkyl
ester of acrylic or methacrylic acid, 2) styrene or alkylated
styrene, 3) a carboxyl-containing monomer, and where desired,
4) up to about 2.0 wt% of a difunctional ethylenically
unsaturated monomer (col. 2, lines 55-62; col. 3, lines 6-21).
Houser teaches that “it is preferred to utilize a free-radical
polymerization initiator. The type of free-radical
polymerization initiator suitable for use in the reaction is
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Application 09/201,269

10
known in the art to depend upon the desired temperature for the
reaction” (col. 3, lines 49-52). One of Houser’s exemplified
free-radical polymerization initiators, di-tert-butyl peroxide
(col. 3, line 54), is among the appellant’s free-radical
polymerization initiators (specification, page 13, line 10).
Puschak discloses a printing ink composition comprising a
base and 1) a blend of a latex binder and a polyfunctional amine
and/or 2) an amine modified latex binder (col. 2, lines 42-57).
If desired, premature crosslinking or gelling of the latex binder
is induced by including 0.1 wt% to 25 wt% of multiethylenically
unsaturated monomers in the monomer mix used to form the binder
(col. 5, lines 1-5). The polymerization reaction used to form
the latex binder typically is initiated by conventional free
radical initiators (col. 5, lines 21-26).
Margotte discloses a process for producing a polyacrylate
resin having a residual acrylate monomer content of less than
0.1 wt%, based on resin solids, by preparing an initial
polyacrylate resin having a residual monomer content of about 0.5
to 3 wt% using an initiator which preferably has a half-life
between 0.5 minutes and 2 hours at the reaction temperature, and
subsequently polymerizing this resin in the presence of a monomer
Appeal No. 2002-0701
Application 09/201,269

7 Maleic anhydride is Margotte’s only disclosed low vapor
pressure monomer.
11
having a low vapor pressure, preferably maleic anhydride,7 and a
peroxide initiator to reduce the monomer content (col. 2,
lines 10-16 and 28-29; col. 3, lines 38-39 and 52-58). Two
disclosed initiators having a half-life between 0.5 minutes and
2 hours at the reaction temperature are tert-butylperoxyisopropyl
carbonate (col. 3, line 45), which is one of the appellant’s
initiators (specification, page 13, line 22), and di-tert-butyl
peroxide (col. 3, lines 45-46), which is one of the initiators of
the appellant (specification, page 13, line 10) and Houser
(col. 3, line 54).
Oshima discloses a resin composition comprising a
polyphenylene ether resin, a thermoplastic polyester resin, and
two components for compatibilizing these resins, one of which is
an organic peroxide having a half life of one minute at
temperatures ranging from 100º to 270ºC (col. 2, lines 1-19;
col. 7, lines 14-20). The resin composition is for use in making
molded articles having high mechanical strength, especially high
impact resistance (col. 1, lines 53-57).
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12
The examiner argues that Margotte “discloses the equivalence
or interchangeability of t-butyl peroxide initiator, as disclosed
by either Houser et al. or Puschak et al., with t-butyl peroxy
isopropyl carbonate, as presently claimed (col. 3, lines 38-56)”
(answer, page 8). Since Puschak discloses t-butyl hydroperoxide
(col. 5, line 23) rather than Margotte’s di-tert-butyl
hydroperoxide (col. 3, lines 45-46), it appears that the examiner
is arguing that Margotte teaches the equivalence of t-butyl
peroxy isopropyl carbonate and t-butyl peroxides generally. This
broad equivalence has not been established by the examiner.
Moreover, even if such an equivalence existed for Margotte’s
polyacrylates which are used alone for non-high-duty industrial
applications or are reacted with polyisocyanates to make
polyurethane coatings for general industrial and automobile
coatings (col. 3, line 66 - col. 4, line 2; col. 4, lines 27-30),
the examiner has not established that such an equivalence would
exist with respect to the preparation of the printing inks of
Houser and Puschak.
The examiner points out that neither Houser nor Puschak
explicitly discloses the amount of residual monomer resulting
from the polymerization, and argues that it would have been
obvious to one of ordinary skill in the art to use Margotte’s
Appeal No. 2002-0701
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13
temperature, low vapor pressure monomer and peroxide initiator in
Houser’s and Puschak’s polymerizations to produce a polymer
having low residual monomer content and thereby to prevent, as
taught by Margotte (col. 1, lines 37-40), toxic pollutants from
being released into the environment (answer, pages 8-9). The use
of Margotte’s temperature and peroxide initiator, however,
results in a residual monomer content of about 0.5 to 3 wt%
(col. 3, lines 56-58). The lower residual monomer content is
obtained by using a low vapor pressure monomer and peroxide
initiator in a second radically-induced polymerization (col. 3,
lines 59-62). The appellant’s claim 19, in contrast, requires
that the polymerization of the monomer mixture including at least
one monomer having at least about two ethylenically unsaturated
polymerizable bonds per molecule to form a branched vinyl resin
results in less than about 0.5 wt% residual monomer. The
examiner has not explained how Margotte would have fairly
suggested, to one of ordinary skill in the art, obtaining the
lower residual monomer content in this polymerization.
The examiner argues that Oshima discloses the equivalence
and interchangeability of t-butyl peroxide initiators and t-butyl
peroxy isopropyl carbonate initiators (answer, page 9).
Apparently, by “t-butyl peroxide initiators” the examiner is
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14
referring to all initiators that contain a t-butyl group. The
examiner has not established that Oshima discloses equivalence
and interchangeability of all such initiators and t-butyl peroxy
isopropyl carbonate. Moreover, the examiner has not established
that any equivalence and interchangeability of these initiators
for Oshima’s use, i.e., making high impact strength molded
articles, would apply to Houser’s or Puschak’s polymerizations
for making printing inks.
The examiner argues that in view of Oshima’s teaching that
using too much initiator compromises the mechanical and thermal
properties of the composition (col. 7, lines 14-20), one of
ordinary skill in the art would have used Oshima’s initiators in
Houser’s and Puschak’s polymerizations to control the mechanical
and thermal properties of the polymer (answer, pages 9-10). The
examiner, however, has not established that the mere teaching
that too much initiator adversely affects the mechanical and
thermal properties of Oshima’s polymer for making a high
mechanical strength molded article would have led one of ordinary
skill in the art to use Oshima’s initiators in Houser’s and
Puschak’s polymerizations for making printing inks.
Appeal No. 2002-0701
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15
The examiner argues that “[a]lthough there is no disclosure
of the amount of residual monomer, given that Oshima et al.
disclose an initiator having half-life at polymerization
temperature as presently claimed, it would have been obvious to
one of ordinary skill in the art that such an initiator would
intrinsically function so as to produce the amount of residual
monomer as presently claimed” (answer, page 9). As discussed
above, the examiner has not established that the applied
references would have fairly suggested, to one of ordinary skill
in the art, using Oshima’s initiator in Houser’s and Puschak’s
polymerizations. Moreover, the examiner has not established that
even if that substitution were made, the mere fact that Oshima’s
organic peroxides have a half-life of 1 minute at a temperature
between 100 and 270ºC indicates that they necessarily would
result in less than 0.5 wt% residual monomer in Houser’s and
Puschak’s polymerizations. See In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981) (An inherent characteristic must be
inevitable, and not merely a possibility or probability).
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the methods claimed in the appellant’s claims 19-
22 over Houser or Puschak, in view of Margotte or Oshima.
Appeal No. 2002-0701
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16
Rejection of claims 23 and 24 under 35 U.S.C. § 103
over Puschak in view of Campbell
Claim 23
Puschak teaches that “[i]f desired, premature crosslinking
or gelling of the copolymer is induced by adding to the monomer
mix multi-ethylenically unsaturated monomers in the range of 0.1%
to 25%, by weight based on the weight of the copolymer” (col. 5,
lines 1-5). One of Puschak’s multiethylenically unsaturated
monomers is divinyl benzene (col. 5, line 8). The polymer in the
latex binder has a molecular weight of 500 to 5,000,000, more
preferably 3,000 to 500,000 (col. 5, lines 30-33).
Campbell teaches that “[p]olymerization of monomer mixtures
containing diethylenically unsaturated monomers is frequently
associated with formation of insoluble gels” (col. 7, lines 36-
38), and that an increase in weight average molecular weight and
polydispersity correlates with formation of insoluble gels
(col. 10, lines 3-4). The weight average molecular weights at
which there is gellation include values above 100,000 (col. 12,
lines 56-58). The polydispersities corresponding to insoluble
gel formation when the diethylenically unsaturated monomer is
divinyl benzene in a high amount (21.16-22.93 wt%) are above 15,
i.e., 25.75, 68.26 and 105.6 (col. 12, lines 55-67). In the
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17
examples in which the polydispersities are 25.75, 68.26 and
105.6, divinyl benzene is reacted with two monoethylenically
unsaturated monomers, i.e., styrene and butyl acrylate (col. 12,
lines 21-22). Thus, Campbell’s teaching that polymerizing the
diethylenically unsaturated monomer with at least one
monoethylenically unsaturated monomer produces a hyperbranched
polymer (col. 3, lines 6-23) indicates that the polymers in these
examples are hyperbranched.
The polymers of both Campbell (col. 3, lines 6-15; col. 12,
lines 21-22) and Puschak (col. 4, line 33 - col. 4, line 8) are
obtained by reacting divinyl benzene with at least one
monoethylenically unsaturated monomer. Hence, Campbell’s
teaching that polymers having polydispersities of 25.75, 68.26
and 105.6 and insoluble gel formation are obtained when the
diethylenically unsaturated monomer is divinyl benzene in an
amount of 21.16-22.93 wt% would have fairly suggested, to one of
ordinary skill in the art, obtaining Puschak’s desired gelling by
using Puschak’s divinyl benzene in an amount at the upper end of
Puschak’s disclosed 0.1-25 wt% range (col. 5, line 4). As
indicated by Campbell col. 3, lines 6-15), the polymer so
produced would be branched.
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18
The appellant argues that Campbell is nonanalogous art
(brief, page 24). The test of whether a reference is from an
analogous art is first, whether it is within the field of the
inventor's endeavor, and second, if it is not, whether it is
reasonably pertinent to the particular problem with which the
inventor was involved. See In re Wood, 599 F.2d 1032, 1036, 202
USPQ 171, 174 (CCPA 1979). A reference is reasonably pertinent
if, even though it may be in a different field of endeavor, it is
one which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in
considering the inventor’s problem. See In re Clay, 966 F.2d
656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992). Cleary’s
disclosure of a polymer that can be used as either a printing ink
vehicle or a coating (col. 8, lines 48-56) indicates that
1) Campbell’s polymer which is useful for making coatings
(col. 8, lines 43-44) is within the appellant’s field of endeavor
of making printing ink vehicles and, 2) because of the matter
with which Campbell deals, Campbell logically would have
commended itself to the appellant’s attention in considering the
appellant’s problem. Campbell, therefore, is analogous art.
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19
The appellant argues that the appellant claims inks in which
the copolymers are in solution (reply brief, page 18). The
appellant’s claim 23, however, does not require that the printing
ink composition is in solution form.
The appellant argues that the second Gelarden declaration
and the Oberski declaration (both filed December 12, 2000, paper
no. 12) show that the claimed invention produces unexpected
results (brief, page 25). For the following reasons, we are not
persuaded by this argument.
First, the appellant has not established that the
relied-upon evidence provides a comparison of the claimed
invention with the closest prior art. See In re Baxter Travenol
Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991);
In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir.
1984). The appellant has not identified what the appellant
considers to be the closest prior art and compared the claimed
invention to that prior art, or explained why the relied-upon
comparative example is closer than the closest prior art to the
claimed invention.
Second, it is not enough for the appellant to show that the
results for the appellant’s invention and the comparative
examples differ. The difference must be shown to be an
Appeal No. 2002-0701
Application 09/201,269

8 Campbell teaches that the polydispersity increases as the
divinylbenzene content increases from 0 to 22 wt% (table 7), and
Puschak discloses reacting at least one monoethylenically
unsaturated monomer with 0.1 to 25 wt% divinylbenzene (col. 4,
20
unexpected difference. See In re Freeman, 474 F.2d 1318, 1324,
177 USPQ 139, 143 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080,
173 USPQ 14, 16 (CCPA 1972). The declarants do not state that
the comparison shows unexpected results. The appellant’s counsel
asserts that the results are unexpected, but arguments of counsel
cannot take the place of evidence. De Blauwe, 736 F.2d at 705,
222 USPQ at 196; In re Payne, 606 F.2d 303, 315, 203 USPQ 245,
256 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ
227, 230 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405, 181
USPQ 641, 646 (CCPA 1974).
Third, in the comparison relied upon by the appellant, many
variables other than the polydispersity are varied, such as the
type and amount of petroleum distillate fraction, the heating
temperature, the amounts of styrene, stearyl methacrylate,
methacrylic acid and tBICM75, and the time of addition of the
monomers to the petroleum distillate fraction. Hence, the cause-
and-effect relationship which the appellant desires to show
between polydispersity and ink properties is lost in a welter of
unfixed variables.8 See In re Heyna, 360 F.2d 222, 228, 149 USPQ
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line 33 - col. 5, line 8). Hence, it reasonably appears that the
only variable in the appellant’s comparison should be the
divinylbenzene content.
21
692, 697 (CCPA 1966); In re Dunn, 349 F.2d 433, 439, 146 USPQ
479, 483 (CCPA 1965).
Fourth, the evidence presented in the declaration is not
commensurate in scope with the claims. See In re Grasselli, 713
F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983); In re Clemens,
622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980). The
appellant’s claim 23 encompasses printing inks of any composition
containing at least one branched vinyl resin having any
composition, a polydispersity of at least about 15, and a weight
average molecular weight of at least about 100,000. The example
of the appellant’s invention in the declarations, however,
includes only one ink composition containing one polymer made
using one branched vinyl resin. We find in the evidence of
record no reasonable basis for concluding that the great number
of materials encompassed by the appellant’s claim would behave as
a class in the same manner as the particular material tested.
See In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA
1972); In re Susi, 440 F.2d 442, 445-46, 169 USPQ 423, 426 (CCPA
1971).
Appeal No. 2002-0701
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22
Claim 24
The appellant asserts that Puschak’s ink is unsuitable for
use in a one-fluid or two-fluid lithographic printing method
(brief, page 25). This assertion is not convincing because
Puschak teaches that the ink is useful in printing processes
“such as” letter press, flexographic, and rotogravure (col. 10,
lines 48-50). The “such as” indicates that the ink is suitable
in printing processes generally, including lithographic printing,
and the appellant has provided no evidence or reasoning to the
contrary.
For the above reasons we conclude that the methods claimed
in the appellant’s claims 23 and 24 would have been obvious to
one of ordinary skill in the art over the combined teachings of
Puschak and Campbell.
Rejection of claim 26 under 35 U.S.C. § 103
over Tutt or Cleary, in view of Campbell
Tutt discloses a colorless overprint composition and teaches
that crosslinked or branched polymers can be included in the
composition to increase the abrasion resistance of the overcoat
layer (col. 2, lines 21-38; col. 3, lines 21-24 and 62-63). This
teaching would have fairly suggested, to one of ordinary skill in
the art, use of branched polymers which are known to be suitable
Appeal No. 2002-0701
Application 09/201,269

23
in coating compositions, such as Campbell’s branched polymers,
some of which have polydispersities greater than 15 (abstract;
col. 8, lines 43-44; tables 1, 3 and 7).
Cleary discloses aqueous dispersions of polymers which are
made by reacting a monoethylenically unsaturated monomer with a
multiethylenically unsaturated monomer and can be used to make
printing ink binder resins or overprint varnishes as well as
other coating compositions (abstract; col. 3, lines 57-60;
col. 8, lines 48-56). This disclosure would have fairly
suggested, to one of ordinary skill in the art, using
monoethylenically unsaturated monomers and multiethylenically
unsaturated monomers which were known to be suitable in making
polymers for coating compositions, such as those of Campbell
which produce branched polymers, some of which have
polydispersities greater than 15 (abstract; col. 8, lines 43-44;
tables 1, 3 and 7).
The appellant argues that Campbell is nonanalogous art and
that the evidence in the second Gelarden declaration and the
Oberski declaration overcomes any prima facie case of obviousness
of claim 26 over Tutt or Cleary, in view of Campbell (brief,
pages 25-26). These arguments are not convincing for the reasons
given above regarding the rejection of claim 23.
Appeal No. 2002-0701
Application 09/201,269

24
DECISION
The rejections of claims 1-7, 9-18, 25, 27 and 28 under
35 U.S.C. § 102(e) over Campbell, claim 8 under 35 U.S.C. § 103
over Campbell in view of Carlick, and claims 19-22 under
35 U.S.C. § 103 over Houser or Puschak, in view of Margotte or
Oshima, are reversed. The rejections under 35 U.S.C. § 103 of
claims 23 and 24 over Puschak in view of Campbell, and claim 26
over Tutt or Cleary, in view of Campbell, are affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
Appeal No. 2002-0701
Application 09/201,269

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Harness, Dickey & Pierce
P.O. Box 828
Bloomfield Hills, MI 48303
TJO/ki