Ex Parte Odell et al

Board of Patent Appeals and Interferences

Jun 24, 2010

11034856 (B.P.A.I. Jun. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PETER G. ODELL and ENIKO TOMA
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Appeal 2009-004250
Application 11/034,856
Technology Center 1700
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Decided: June 24, 2010
____________________

Before: CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 2, 4-10, 16, 17, and 21. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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Application 11/034,856

Appellants’ invention relates to ink jet inks that can be cured in two
stages and a process of forming an image with the ink (Spec. ¶ [0001];
Claim 1; Claim 17). The ink vehicle includes two components, each curable
by a different polymerization route and at different wavelengths of light
(Spec. ¶¶ [0013] and [0015]). The ink is cured via one of the polymerization
routes (cationic or radical) in the first stage curing step and by the other
polymerization route in the second stage (Spec. ¶ [0013]). Because the
cationic and radically curable systems cure at different wavelengths of light,
the first component can be substantially or fully cured while on a transfer
surface without curing the second component. This partial curing allows the
ink to remain tacky enough to allow transfer onto to an image receiving
surface before fixing the ink by completely curing the second component
(Spec. ¶¶ [0012] and [0014]). Claim 1 encompasses two ink formulations
and is reproduced below:
1. An ink comprising an ink vehicle, wherein the ink vehicle
comprises at least one curable component, and at least two photoinitiator
systems, wherein the at least one curable component comprises a first
component curable by a first polymerization route and a second component
curable by a second polymerization route, wherein the second
polymerization route is different from the first polymerization route and the
at least two photoinitiator systems include a first photoinitiator system for
the first component and a second photoinitiator system for the second
component, wherein the first component is at least one cationically curable
material or at least one radically curable material,

wherein when the first component is at least one cationically curable
material and the first photoinitiator system responds to wavelengths of from
390 nm to about 500 nm or higher, the second component is at least one
radically curable material and the second photoinitiator system responds to
wavelengths of from about 280 nm to less than 390 nm, and

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wherein when the first component is at least one radically curable
material and the first photoinitiator system responds to wavelengths of from
about 350 nm to about 500 nm or higher, the second component is at least
one cationically curable material and the second photoinitiator system
responds to wavelengths of from about 200 nm to about 320 nm or less.

The Examiner maintains, and Appellants seek review of, the
following rejections:
1) Claims 1, 2, 4-10, 16 and 21 are rejected under 35 U.S.C. §103(a)
relying upon Woudenberg (US 6,896,937, issued May 24, 2005) in view of
Bocko (US 5,535,673, issued Jul. 16, 1996) and Roth (US 6,025,017,issued
Feb. 15, 2000); and
2) Claim 17 is rejected under 35 U.S.C. §103(a) relying upon
Beigelsen (US 6,536,889, issued Mar. 25, 2003) in view of Bocko.1
II. DISPOSITIVE ISSUES
Does the evidence as a whole support a conclusion that it would have
been obvious to one of ordinary skill in the art to formulate an ink vehicle
with two photocurable systems that cure at completely separate wavelengths
of light based on the teachings of Woudenberg, Bocko, and Roth?
Does the evidence as a whole support a conclusion that it would have
been obvious to one of ordinary skill in the art to use the cationic and radical
hybrid ink combination of Bocko in the two-stage curing process of
Biegelsen?
We answer the first question in the negative, but the second in the
affirmative.

1 The rejection is corrected in accordance with the Examiner’s statement that
“Claim 20” in the rejection on page 7 of the Answer should read “Claim 17.”
(Communication of October 24, 2008, ¶ 4.) As Appellants address the
rejection as directed to claim 17 (Br. 18-20), the error is harmless.
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III. DISCUSSION
With regard to the rejection over Woudenberg, Bocko, and Roth, we
agree with Appellants that the claimed combination of long and short
wavelength photoinitiators is not suggested by the references. The claims
require combinations of photoinitiators that respond to mutually exclusive
wavelength ranges. While Woudenberg and Roth describe mixtures of
photoinitiators, the mixture would be selected to respond to at least
overlapping wavelengths of light because a single light source is used to
cure the ink (Woudenberg, col. 8, ll. 50-63; Roth, Example 2). Bocko
describes using several sources of light (99a-c in Fig. 6), but does not state
that these sources emit different wavelengths of light (Bocko, col. 7, ll. 19-
30). The evidence as a whole does not support a conclusion that it would
have been obvious to one of ordinary skill in the art to formulate an ink
vehicle with two photocurable systems that cure at completely separate
wavelengths as required by claim 1 and the claims dependent thereon.
The rejection over Biegelsen and Bocko, however, stands on a
different footing. Biegelsen describes, as found by the Examiner and
acknowledged by Appellants, a process where a curable substance contains
two photoinitiators sensitive to different wavelengths of light (Br. 19; Ans.
7-8; Biegelsen, col. 5, ll. 13-21). The Examiner acknowledges that
Biegelsen does not teach the combination of cationic and radically curable
components, but relies upon Bocko as evidence that such combinations were
known in the art (Ans. 8). The Examiner’s conclusion that it would have
been obvious to use the hybrid free-radical and cationic system of Bocko in
the process of Biegelsen is reasonable given that Biegelsen does not provide
specific details with regard to the curing mechanisms and Bocko teaches a
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hybrid curing system useful in a similar two-stage curing process (Bocko,
col. 5, ll. 25-33).
Appellants contend that Biegelsen merely describes partial curing of a
single curable component rather than the “substantially completely to
completely” curing of claim 17. However, a reading of Biegelsen as a whole
indicates that “partially curing” as used by Biegelsen (col. 6, ll. 67) refers to
irradiating with an amount of light in the first range of wavelengths effective
to react substantially all of the first photoinitiator (Biegelsen, col. 7, ll. 17-
19). Because a further curing of the second photoinitiator at a different
wavelength takes place later, Biegelsen refers to the complete cure of the
first photoinitiator as a partial cure (Biegelsen, col. 2, ll. 54-58; col. 4, ll. 11-
16; col. 6, l. 57 to col. 7, l. 30). Therefore, Biegelsen, in fact, teaches the
“substantially completely to completely curing” of claim 17.
Appellants further contend that Biegelsen and Bocko together merely
suggest either an ink with one curable component with two photoinitiators of
the same type with different wavelength sensitivities (Biegelsen), or an ink
with two curable components with photoinitiators of the same wavelength
sensitivity (Bocko) (Br. 20). Appellants, however, are reading the
references two narrowly and not adequately taking into account the skill of
the ordinary artisan. Biegelsen may not overtly suggest using two different
curable components with the two different photoinitiators taught therein, but
the use of Bocko’s hybrid mixture of a free-radical curable
component/photoinitiator formulation and cationic curable
component/photoinitiator formulation renders the selection of two curable
components for use with respective photoinitiators curable at different
wavelengths obvious to the ordinary artisan. Such a combination would
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have provided the predictable result of a two-stage curing as desired by
Biegelsen and provided a way to further control the speed of curing for each
component in accordance with the teachings of Bocko (Bocko, col. 6, ll. 18-
25).
The evidence as a whole supports a conclusion that it would have
been obvious to one of ordinary skill in the art to use the cationic and radical
hybrid ink combination of Bocko in the two-stage curing process of
Biegelsen.
IV. CONCLUSION
On the record before us, we do not sustain the rejection of claims 1, 2,
4-10, 16 and 21 over Woudenberg in view of Bocko and Roth, but we do
sustain the rejection of claim 17 over Biegelsen in view of Bocko
maintained by the Examiner.2

V. DECISION
The decision of the Examiner is affirmed-in-part.
VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

2 Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).
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