Ex Parte Reynolds et al

Patent Trial and Appeal Board

Jun 13, 2013

10363279 (P.T.A.B. Jun. 13, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/363,279 03/26/2004 Milton Charles Reynolds AD-6956 US PCT 3042
7590 06/13/2013
Kevin S Dobson
E I du Pont de Nemours & Company
Legal Patents
Wilmington, DE 19898
EXAMINER
SCHATZ, CHRISTOPHER T
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
06/13/2013 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 MILTON CHARLES REYNOLDS, ANTHONY JOHN
LUKE ANDERSON, and GERARD MICHAEL MCCLUSKEY
____________

Appeal 2012-006447
Application 10/363,279
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006447
Application 10/363,279

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Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 43-45, 47, 54, 55, 60, 64, 65, 77-80, 84, 86, and
88-101. A hearing for this appeal was held on 4 June 2013. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method of producing an image carrying laminated
material which comprises forming a color image by ink jet printing using a
piezoelectric drop-on-demand digital printing process on a first surface of a
sheet of polyvinylbutyral interlayer using organic solvent based pigmented
ink, interposing the interlayer between two sheets of material, and joining
the two sheets of material to form a laminate (independent claim 43; see also
independent claims 55, 84, 86, 89, and 90).
A copy of representative claim 43, taken from the Claims Appendix of
the Appeal Brief, is set forth below:
43. A method of producing an image carrying laminated
material comprising the steps of (a) forming a color image by
ink jet printing using a piezoelectric drop-on-demand digital
printing process on a first surface of a sheet of polyvinylbutyral
interlayer using organic solvent based pigmented ink,
(b) interposing an interlayer comprising the sheet of interlayer
between two sheets of material, and (c) joining the two sheets
of material to form the laminate by activating the interlayer by
heating of the interlayer, wherein said image is in the form of
an artistic work, written indicia or a pattern.

Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 43, 44, 54, 60, 64, 80, 84, 86, 88, 90, 91, 93, 99, and 100 as
unpatentable over Snelgrove (US 4,303,718, issued 1 Dec. 1981) in view of
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Vegla (DE 297 06 880 U1, published 28 May 1997; as translated) and
Adkins (US 6,113,679, issued 5 Sep. 2000);
claims 45, 47, 55, 65, 89, and 101 as unpatentable over Snelgrove,
Vegla, Adkins, and further in view of Hattori (JP 406073871 A, published
15 Mar. 1994; as translated) and Itou (JP 410195784 A, published 28 July
1998; as translated); and
claim 98 as unpatentable over Snelgrove, Vegla, Adkins, and further
in view of Politrust (DE 19743804 A1, published 8 April 1999).
Under 35 U.S.C. § 103(a), the Examiner alternatively rejects:
claims 43, 44, 54, 60, 64, 77-80, 84, 86, 88, 90, 91, 93-97, 99, and 100
as unpatentable over Vegla in view of Snelgrove and Adkins;
claims 45, 47, 55, 65, 89, and 101 as unpatentable over Vegla,
Snelgrove, Adkins, and further in view of Hattori and Itou; and
claim 98 as unpatentable over Vegla, Snelgrove, Adkins, and further
in view of Politrust.
Finally, under 35 U.S.C. § 103(a), the Examiner rejects claims 43, 84,
90, 92, 99, and 100 as unpatentable over Sanger (US 3,629,044, issued 21
Dec. 1971) in view of Hall (US 4,812,359, issued 14 Mar. 1989) and further
in view of Snelgrove, Adkins, and Vegla.
Appellants do not present separate arguments specifically directed to
the dependent claims including the separately rejected dependent claims.
Therefore, the dependent claims will stand or fall with their parent
independent claims of which claim 43 is representative.
We will sustain each of the above noted rejections based on the
findings of fact, conclusions of law, and rebuttals to arguments which are
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well expressed by the Examiner in the Answer. The remarks below are
added for emphasis.
The issues raised in this appeal relate to the Examiner's findings and
conclusions concerning Snelgrove and Adkins which are common to all of
the rejections before us.
The Examiner finds that Snelgrove discloses a method of producing
an image carrying laminated material comprising forming a color image by
ink jet printing on a first surface of a polyvinylbutyral interlayer (see, e.g.,
Ans. 5 citing Snelgrove col. 1, ll. 5-23). In addition, the Examiner finds that
Adkins discloses forming an image on polymeric films including
polyvinylbutyral-containing films using a piezoelectric drop-on-demand
digital printing process and organic solvent based pigmented ink which is
characterized as having rapid-drying and good-adhering advantages (see,
e.g., Ans. 6 citing Adkins col. 1, ll. 16-25 and 42-50, col. 2, ll. 17-25, col. 3,
ll. 47-60; see also Adkins para. bridging col. 5-6).
In light of these findings, the Examiner concludes that it would have
been obvious to ink jet print a color image on a surface of polyvinylbutyral
interlayer as taught by Snelgrove via a piezoelectric drop-on-demand digital
printing process and organic solvent based pigmented ink as taught by
Adkins in order to obtain the advantages taught by Adkins (see, e.g., Ans. 6).
Appellants disagree with the Examiner's finding regarding Snelgrove.
Appellants argue
[t]he person of ordinary skill in the art would recognize
that Snelgrove only teaches printing on PVB [i.e.,
polyvinylbutyral] interlayers using a gravure printing process
and that the mention of ink-jet printing . . . in the background
section is intended for the purpose of giving examples of
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printing processes where low viscosity is desired, not for the
purpose of discussing a process for printing on PVB interlayers.

(App. Br. para. bridging 12-13).

Appellants' argument is not persuasive for the reasons fully detailed
by the Examiner (see, e.g., Ans. para. bridging 17-18 citing Snelgrove col. 1,
ll. 16-22, col. 1, l. 67-col. 2, l. 4, col. 2, ll. 5-10 and 51). Accordingly, we
fully agree with the Examiner's finding that Snelgrove discloses ink jet
printing a color image on a polyvinylbutyral interlayer surface.
Appellants present a number of arguments and exhibits (App. Br. 15-
21) in support of the proposition that "PVB interlayer is sensitive to
humidity and requires special handling and therefore, is not useful as a print
media in Adkins" (id. at 21).
However, the issue presented in this appeal is not whether
polyvinylbutyral interlayer would be useful as a print media in Adkins.
Rather, the issue is whether it would have been obvious to effectuate
Snelgrove's ink jet printing of polyvinylbutyral interlayer using Adkins'
piezoelectric printing process and ink.
Concerning this obviousness issue, Appellants argue that,
[s]ince the examiner's rejection[] only cites purported teachings
of the references and fails to provide a supporting explanation
why it would have been obvious to combine the identified
teachings culled from the references in order to arrive at the
claimed subject matter as a whole, it is only reasonable to
conclude that the pending rejection is based upon impermissible
hindsight

(App. Br. para. bridging 19-20).
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Appellants' argument appears to misrepresent the prosecution history
of this application. As indicated above and detailed in the Answer (see, e.g.,
Ans. para. bridging 21-22), the Examiner has explained that it would have
been prima facie obvious to effectuate Snelgrove's ink jet printing of
polyvinylbutyral interlayer using Adkins' piezoelectric printing process and
ink in order to obtain the drying and adhering advantages taught by Adkins.
As support for their nonobviousness position, Appellants rely on the
Cesar and Bell patents of record (see Exhibits A and J in the Evidence
Appendix of the Appeal Brief). Appellants cite to Cesar at 1:12-22 which
discloses that polyvinylbutyral interlayers are very sensitive "so that using
them with any combination of paint or ink directly applied is almost
impossible" (1:21-22) (App. Br. 15). Appellants cite to Bell at 3:59-4:7
which discloses that "direct printing onto the plasticized PVB surface is not
a viable option" (3:61-62) and that "accurate transfer of multiple colors onto
plasticized PVB substrates has previously been found to be virtually
impossible" (4:1-3) (App. Br. 21-22).
The cited disclosures of these patents do not identify any specific
printing technique that is considered by Cesar and Bell to be ineffective or
unacceptable for printing an image onto polyvinylbutyral interlayer.
Therefore, Cesar's and Bell's characterizations of direct printing onto
polyvinylbutyral interlayer as almost or virtually impossible are literally
applicable to all printing techniques including the gravure technique which
Appellants concede is taught by Snelgrove. Viewed from this perspective,
Cesar's and Bell's above characterizations are incompatible with, and indeed
discredited by, Snelgrove's teaching of that which Cesar and Bell consider to
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be virtually impossible, namely, printing onto polyvinylbutyral interlayer
(e.g., via a gravure printing technique). Furthermore, the very general
statements made by Cesar and Bell in the disclosures cited by Appellants are
entirely inadequate to overcome the presumption of validity and enablement
that applies to the Snelgrove patent and its disclosure of gravure printing an
image onto polyvinylbutyral interlayer. Likewise, these general statements
are inadequate to overcome the corresponding presumption regarding
Snelgrove's disclosure of ink jet printing onto polyvinylbutyral interlayer.
For these reasons, we agree with the Examiner that Cesar and Bell do
not vitiate Snelgrove's teachings of using gravure and ink jet techniques for
printing a color image onto a polyvinylbutyral interlayer surface (see, e.g.,
Ans. para. bridging 22-23).
To summarize, the record of this appeal reflects that the Examiner's
proposed combination of Snelgrove and Adkins is merely the combination
of familiar elements (i.e., Snelgrove's ink jet printing of a polyvinylbutyral
interlayer surface and Adkins' piezoelectric printing process and ink) which
yields no more than the predictable results of using these elements according
to their established functions. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 415-16 (2007) ("The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.") and id. at 550 U.S. 417 (In assessing the obviousness of
a claim to a combination of prior art elements, the question to be asked is
"whether the improvement is more than the predictable use of prior art
elements according to their established functions.").
For the reasons given above and in the Answer, we sustain each of the
§ 103 rejections advanced in this appeal.
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The decision of the Examiner is affirmed.
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

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