Ex Parte Richert et al

Patent Trial and Appeal Board

Nov 6, 2017

14578657 (P.T.A.B. Nov. 6, 2017)

United States Patent and Trademark Office
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.
14/578,657 12/22/2014 Michelle RICHERT 445099US99CONT 7819
22850 7590 11/08/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
ANGEBRANNDT, MARTIN J
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
11/08/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELLE RICHERT, THOMAS BOLLE,
and RONALD FLEURY
(Applicant: BASF SE)
Appeal 2016-007293
Application 14/578,6571
Technology Center 1700
Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
SHELDON M. McGEE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter “Appellant”) appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1—9 and
12—15.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is listed as “BASF SE” (Appeal Brief filed
December 30, 2015, hereinafter “Appeal Br.,” 2).
2 Appeal Br. 1, 3—22; Reply Brief filed July 19, 2016, hereinafter “Reply
Br.,” 1—6; Final Office Action entered June 30, 2015, hereinafter “Final
Act.,” 2—10; Examiner’s Answer entered May 19, 2016, hereinafter “Ans.,”
2-17.
Appeal 2016-007293
Application 14/578,657
I. BACKGROUND
The subject matter on appeal relates to a method for forming a surface
relief microstructure (e.g., a hologram) on a paper substrate (Specification
filed December 22, 2014, hereinafter “Spec.,” 1,11. 10-15). Representative
claim 1 is reproduced from page 23 of the Appeal Brief (Claims Appendix),
with key limitations emphasized, as follows:
1. A method for forming a surface relief
microstructure on a paper substrate, the method comprising:
A) applying a curable composition to at least a portion
of a frontside of a paper substrate;
B) contacting at least a portion of the curable
composition with a surface relief microstructure;
C) curing the curable composition with a UV lamp,
which is arranged on a backside of the paper substrate, to form a
cured composition; and
D) optionally depositing a layer of a transparent high
refractive index material, a metallic layer, or both, on at least a
portion of the cured composition,
wherein:
the UV lamp has an emission peak in a UV-A range and
additionally in a near VIS range;
the curable composition comprises a photoinitiator
which absorbs in the UV-A range and also in the near VIS
range; and
the photoinitiator is selected from the group consisting
of a monoacylphosphine oxide compound, a bisacylphosphine
oxide compound, and a mixture thereof
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains rejections under pre-AIA 35
U.S.C. § 103(a), which are listed as follows:
A. claims 1, 3, 4, 7, and 12—15 as unpatentable over Kaule et al.3
3 US 5,820,971, issued October 13, 1998.
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Application 14/578,657
(hereinafter “Kaule”) in view of Chretien et al.4 (hereinafter
“Chretien”), Asano,5 and Crawford et al.6 (hereinafter
“Crawford”);
B. claims 1,3,4, 7, and 12—15 as unpatentable over Kaule
in view of Chretien, Asano, Crawford, and
“Photoinitiators for UV Curing—Key Products Selection
Guide 2003,” Ciba Specialty Chemicals (publication date
unknown) (hereinafter “Ciba Guide”);
C. claims 1, 3, 4, 7, and 12—15 as unpatentable over Kaule
in view of Chretien, Asano, Crawford, Ciba Guide, and
Takeuchi et al.7 (hereinafter “Takeuchi”);
D. claims 1, 3—7, and 12—15 as unpatentable over Kaule in
view of Chretien, Asano, Crawford, Ciba Guide,8 and
Boswell et al.9 (hereinafter “Boswell”);
E. claims 1—4, 7, and 12—15 as unpatentable over Kaule in
view of Chretien, Asano, Crawford, Ciba Guide, and
Suhadolnik et al.10 (hereinafter “Suhadolnik”);
F. claims 1, 3, 4, 7—9, and 12—15 as unpatentable over
Kaule in view of Chretien, Asano, Crawford, Ciba Guide,
4 EP 2 065 208 Al, published June 3, 2009.
5 JP 8-36352 A, published February 6, 1996.
6 US 3,980,478, issued September 14, 1976.
7 US 4,856,857, issued August 15, 1989.
8 It appears that, in the Answer (Ans. 7), Ciba Guide (Photoinitiators For UV
Curing), was inadvertently omitted from the statement of the rejection (see
Final Act. 7).
9 US 2007/0070503 Al, published March 29, 2007.
10 US 7,173,071 B2, issued February 6, 2007.
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Application 14/578,657
and Strazdins et al.11 (hereinafter “Strazdins”); and
G. claims 1, 3, 4, 7, and 12—15 as unpatentable over Kaule
in view of Chretien, Asano, Crawford, Ciba Guide, and
Kukaleva et al.12 (hereinafter “Kukaleva”).13
(Ans. 2—18; Final Act. 2—10.)
III. DISCUSSION
The Appellant does not argue the rejections individually (Appeal Br.
5—22). Rather, the Appellant’s arguments appear to be limited to Rejection
B (as entered against claims 1 and 15) and Rejection F (as entered against
claim 8) (id.). Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv), our
rulings as to these rejections as entered against claims 1, 8, and 15 control
the outcome for all other rejections and claims.
Rejection B (Claim 1). In Rejection A, the Examiner finds that
Kaule describes every limitation recited in claim 1 except for a UV lamp
having emission peaks in the UV-A and “near VIS” ranges and a
“photoinitiator selected from the group consisting of a monoacylphosphine
oxide compound, a bisacylphosphine oxide compound, and a mixture
thereof’ (Ans. 2—3). The Examiner finds that, instead, Kaule teaches curing
an adhesive by exposing it (through paper) to blue light, which the Examiner
finds to be in the “near visible/blue” range (id.; Advisory Action entered
11 US 3,409,500, issued November 5, 1968.
12 WO 2009/090126 Al, published July 23, 2009.
13 In the Final Office Action (Final Act. 11), claims 1—9 and 12—15 were also
rejected under the judicially-created doctrine of obviousness-type double
patenting over claims 1—14 of United States Patent 8,993,219 B2, issued
March 31, 2015. According to the Examiner, that rejection was withdrawn
in view of a Terminal Disclaimer filed December 30, 2015 (Ans. 2).
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Application 14/578,657
October 13, 2015 at 2). To resolve these differences, the Examiner relies on
Chretien (Ans. 3, 10—11). Specifically, the Examiner finds that Chretien
teaches a UV Fusion Mercury curing lamp, which emits and permeates light
having various wavelengths, including “UVA” (i.e., UV-A), “UVB” (i.e.,
UV-B), “UVC” (i.e., UV-C), and “UVV” (i.e., visible) ranges to effect
curing of an ink composition {id. at 3, 10—11). In addition, the Examiner
finds that Chretien teaches acylphosphine oxides (e.g., 2,4,6-
trimethylbenzoyl-diphenyl phosphine oxide), benzophenones, and mixtures
thereof (e.g., DAROCUR® 4265) as suitable curing photoinitiators {id. at 3).
Based primarily on these findings (as well as other findings regarding
Crawford and Asano), the Examiner concludes that a person having ordinary
skill in the art would have found it obvious to modify Kaule’s process by
using Chretien’s lamp source, which emits, inter alia, UV-A and UVV and
an acylphosphine oxide-containing photoinitiator, as disclosed in Chretien,
to effect cure (id. at 4, 10-11).
The Appellant contends that “no motivation would have existed to
modify the teachings of Kaule” in the manner claimed (Appeal Br. 6).
Specifically, the Appellant argues that Kaule teaches away from the claimed
invention because “it teaches that paper is virtually impermeable to UV
radiation and encourages the use of visible radiation in combination with a
blue light-curing reaction adhesive” {id. at 7—8). According to the
Appellant, Kaule teaches that because paper is virtually impermeable to UV
radiation, curing can only take place with the aid of electron radiation, which
is a very elaborate and expensive method that damages the paper {id. at 8).
Relying on inventor Michelle Richerf s Declaration under 37 C.F.R. § 1.132
filed June 5, 2015 (hereinafter “Richert Declaration” or “Richert Deck”;
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5—6), the Appellant argues that a person having ordinary skill in the art of
security printing would not have had a reasonable expectation of success in
using a UV lamp having emission peaks in both the UV-A and “near VIS”
ranges together with the specified photoinitiator because the process would
not have been expected to provide acceptable printing speeds (Appeal Br.
18). According to the Appellant, the inventors “serendipitously discovered
that using a UV lamp having emission peaks in both the UV-A and near VIS
ranges used in combination” with the specified photoinitiator “allows
effective and rapid curing . . . through a paper substrate” (id. at 8). In
addition, the Appellant argues that the Richert Declaration demonstrates
that, contrary to the Examiner’s position in the Advisory Action, blue light
falls within a fairly narrow band of visible spectrum wavelengths ranging
from 450-495 nm, not “near VIS radiation of [cjlaim 1 encompass[ing] a
band of lower wavelengths ranging from 400 nm to 450 nm, which
corresponds to violet light” (id. at 9) (citing “Visible spectrum,” Wikipedia,
https://en.wikipedia.org/wiki/Visible_spectrum (last visited on December
23, 2015)). Furthermore, the Appellant contends that, in contrast to Kaule,
“Chretien focuses on the use of strictly UV radiation (as opposed to near VIS
radiation) to cause partial curing of the underside of a radiation curable ink
with a UV lamp located on the opposite side of a printed substrate”—not
complete curing (id. at 10). The Appellant argues that although Ciba Guide
shows that some of Chretien’s photoinitiators absorbs in both the UV-A and
“near VIS” ranges, it “does not provide any motivation to employ a lamp
having emission peaks in both the UV-A and near VIS ranges” (id. at 12).
The Appellant’s arguments fail to identify a reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
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We start with claim construction. Neither claim 1, nor the remainder
of the Specification, defines what specific wavelengths are encompassed by
the recitation “near VIS range.” The Appellant argues that “near VIS range”
refers to wavelengths for violet light—i.e., 400-450 nm, which appears to
fall within the visible range (Appeal Br. 9, 11). That argument, however, is
not supported by any objective evidence. The Examiner, on the other hand,
correctly applies the broadest reasonable interpretation (not inconsistent with
the Specification) rule by construing “near VIS range” to encompass a
broader range of wavelengths (e.g., UVV14) (e.g., Advisory Act. 2 (“The
[EJxaminer holds that [Chretien] provides a reasonable expectation of
complete curing via exposure through the paper with radiation including the
UV-A and UVV[ ] range with sufficient exposure duration and intensity.”)).
We adopt the Examiner’s broader construction. In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[A]s applicants may
amend claims to narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee.”); In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989) (“[DJuring patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed.”).
Turning to the merits, the Examiner’s findings concerning Kaule’s
scope and content are not disputed (Appeal Br. 7—8). The Appellant urges,
14 See, e.g.,
http://www.doctoruv.com/documents/pages/Wliat%20is%20the%20differen
ce%20between%20UV%20ABC.pdf at 4, explaining that UVV spans 395—
455 nm. In re Baxter TravenolLabs., 952 F.2d 388, 390 (Fed. Cir. 1991)
([EJxtrinsic evidence may be considered when it is used to explain, but not
expand, the meaning of a reference.”).
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however, that Kaule teaches away from the claimed invention by disclosing
that paper is virtually impermeable to UV light and, therefore, encourages
the use of visible radiation in combination with a blue light-curing adhesive
(id. at 7—8).
We discern no merit in the Appellant’s teaching away argument.
Although Kaule teaches that curing may be performed using “a very
elaborate and expensive” electron radiation method that “furthermore
damages the paper” (col. 1,11. 37—40), other references such as the later-
published Chretien demonstrate that a UV Fusion Mercury curing lamp
emitting, inter alia UV-A and UVV, has been used successfully to cure a
composition disposed on the other side of paper without damaging the
substrate (e.g., Chretien H 62—63). Thus, we agree with the Examiner’s
finding that the current inventors were not the first to “discover the
permeability to paper to short wavelength visible radiation (near-Vis) or
UV-A” (Ans. 11). Considering the prior art disclosures as a whole, we do
not consider Kaule’s disclosure to constitute a teaching away. In re
Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (“Nothing in the prior art
teaches that the proposed modification would have resulted in an
‘inoperable’ process.”).
Having established that Kaule does not teach away from UV curing,
we find—as did the Examiner—that Chretien teaches using the UV Fusion
Mercury curing lamp in combination with a photoinitiator including the
same monoacylphosphine oxide compound recited in claim 1 to effect
curing (Chretien 142). Although Chretien teaches partial curing (id. 151)
and Kaule discloses fully curing in an embodiment (Kaule col. 7,11. 34-41),
neither claim 1 nor Kaule places any particular limitation on the degree of
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curing. In any event, a person having ordinary skill in the art would have
understood from Chretien that the degree of curing may be controlled by
varying certain factors such as light intensity (id. || 51—52).
Under these circumstances, we detect no reversible error in the
Examiner’s conclusion that a person having ordinary skill in the art would
have been prompted to substitute Kaule’s blue light curing system with
Chretien’s UV Fusion Mercury curing lamp and acylphosphine oxide
photoinitiator curing agent, thus arriving at a method encompassed by claim
1, based on a reasonable expectation that these alternative systems would
provide successful curing for Kaule’s purposes. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.”).
The Richert Declaration, which includes testimony from an interested
party rather than a disinterested third-party expert, is insufficient to rebut the
Examiner’s rejection. First, inventor Richert testifies that it was “believed
that it would not be possible to achieve curing of the lacquer, in a regular
printing process at a speed acceptable to the printing industry” (Richert
Deck | 5). As the Examiner aptly notes (Ans. 11), the inventor’s statement
is merely an opinion that is not supported by any objective evidence.
Indeed, the inventor does not state whether the applied prior art teachings—
in particular Chretien—were considered in reaching this belief. In any
event, claim 1 does not specify any printing speed and, therefore, the
testimony is entitled to little or no probative value. In re Hiniker Co., 150
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F.3d 1362, 1369 (Fed. Cir. 1998) (The “name of the game is the claim” and
unclaimed features cannot impart patentability to claims).
Second, inventor Richert avers that “when the invention was
presented by the inventors to the security printing industry, persons skilled
in this field did not believe that the process would function properly.”
(Richert Deck 16). Again, the Examiner is correct in questioning the
conclusory nature of the inventor’s statement (Ans. 11) (“It is not clear what
the circumstances of this disbelief were or how much about the process was
revealed or if the disclosure was related to specific processing speeds.”).
Moreover, inventor Richert does not say that the applied prior art references
were disclosed to those who were presented with the invention.
Accordingly, inventor Richert’s testimony in this regard also lacks probative
value.
For these reasons and those given by the Examiner, we sustain the
Examiner’s rejection of claim 1.
Rejection B (Claim 15). Claim 15 depends from claim 1 and
includes an additional limitation that the curing step “fully cures the curable
composition” (Appeal Br. 26). Although Chretien teaches partial curing (id.
1 51), a person having ordinary skill in the art would have understood from
Chretien that the degree of curing may be controlled by varying certain
factors such as light intensity (id. || 51—52). Given that Kaule contemplates
full curing, a person having ordinary skill in the art would have varied the
factors disclosed in Chretien to achieve a desired or optimum degree of
curing, including full cure. In re Alien, 220 F.2d 454, 456 (CCPA 1955)
(“[Wjhere the general conditions of a claim are disclosed in the prior art, it is
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not inventive to discover the optimum or workable ranges by routine
experimentation.”).
For these reasons, we uphold the Examiner’s rejection of claim 15.
Rejection F (Claim 8). Claim 8 depends from claim 1 and further
recites: “treating a paper or board with a cationic polymer on the frontside
before applying the curable composition to at least a portion of the frontside
of the paper substrate” (Appeal Br. 24). The Examiner concludes that a
person having ordinary skill in the art would have used sized paper as shown
in Strazdins in order to improve paper strength, thereby allowing an increase
in the rate of paper production (Ans. 9).
The Appellant argues that Strazdins does not teach that
polyvinylamine is a sizing agent but, rather, as a catalyst to accelerate the
rate at which anhydride develops during paper making (Appeal Br. 21).
According to the Appellant, “[tjhere is neither disclosure nor suggestion in
Strazdins of applying a polyvinylamine to one side of an already-produced
paper, let alone on the front side of a paper before applying a curable
composition to at least a portion of the front side” (id.).
The Appellant’s argument is not sufficient to identify reversible error.
In this regard, we are in complete agreement with the Examiner’s response
in the Answer (Ans. 18), which we adopt as our own (see also Strazdins, col.
1,1. 61—col. 2,1. 2; col. 2,1. 57-col. 3,1. 40).
For these reasons, we uphold the rejection of claim 8.
IV. SUMMARY
In sum, Rejections A—G are sustained. Therefore, the Examiner’s
final decision to reject claims 1—9 and 12—15 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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