Ex Parte Soria et al

Patent Trial and Appeal Board

Feb 6, 2018

14003665 (P.T.A.B. Feb. 6, 2018)

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.
14/003,665 09/06/2013 Meir Soria 83471541 9279
22879
HP Tnr
7590 02/08/2018 EXAMINER
3390 E. Harmony Road
Mail Stop 35
NELSON, MICHAEL B
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
02/08/2018 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEIR SORIA, YEVGENIA RUDOY, RAIA SILVNIAK, and
OSHRA RAVIV
Appeal 2017-004879
Application 14/003,6651
Technology Center 1700
Before ROMULO H. DELMENDO, JENNIFER R. GUPTA, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections adverse to the patentability of claims 1, 4-9, and 16-202 under
35 U.S.C. § 103(a) and 35 U.S.C. § 112, first paragraph.
We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellants identify the real party in interest as Hewlett-Packard
Development Company, LP. App. Br. 3.
2 Claims 10-12, 14, and 15 are withdrawn from consideration pursuant to
37 C.F.R. § 1.142(b), as being drawn to a non-elected invention.
Appeal 2017-004879
Application 14/003,665
SUBJECT MATTER
The subject matter on appeal relates to an intermediate transfer
member used in digital printing. Sole independent claim 1 is illustrative,
and is copied below with key limitations at issue in this appeal italicized:
1. An intermediate transfer member, comprising:
a base;
a rubber layer disposed on the base;
a primer disposed on the rubber layer and comprising a
photoinitiator, a catalyst, and an aminofimctional silane selected
from the group consisting of aminopropyltrimethoxysilane,
aminopropyltriethoxysilane, N-(2-aminoethyl)-3aminopropyl
trimethoxysilane, N-(2-aminoethyl)-3aminopropyl
triethoxysilane, oligomers thereof, and mixtures thereof; and
a release layer disposed on the primer, wherein the release
layer comprises a curable silicone material that is reactive with
the catalyst to form a silicone polymer, wherein the release layer
does not comprise the catalyst, and wherein the aminofunctional
silane provides for a full cure of the release layer within
30 minutes.
App. Br. 26 (emphasis added).
REJECTIONS
Claims 1, 4-9, and 16-20 are rejected under 35 U.S.C. § 112, 1st
paragraph for lacking written description, and under 35 U.S.C. § 103(a) as
unpatentable over Soria,3 Nagase,4 and Homan,5 as evidenced by Sado.6
3 Meir Soria et al., US 2008/0138546 Al, published June 12, 2008.
4 Kimikazu Nagase et al., US 5,521,037, issued May 28, 1996.
5 Gary R. Homan et al., US 4,525,566, issued June 25, 1985.
6 Ryoichi Sado et al., US 4,145,317, issued March 20, 1979.
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OPINION
We begin with claim construction.
“In the patent claim context, the term ‘comprising’ is well understood
to mean ‘including but not limited to’.” CIAS, Inc. v. Alliance Gaming
Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007).
Sole independent claim 1 requires, inter alia, that the primer
comprises catalyst,” and that the release layer “comprises a curable
silicone material that is reactive with the catalyst to form a silicone
polymer,” but “does not comprise the catalyst.” (emphasis added). The only
catalyst that is positively recited in claim 1 is the catalyst present in the
primer.
By using the transition phrase “comprising” with respect to the release
layer, the release layer may contain additional, un-recited elements.
Therefore, we construe the release layer of claim 1 as open to containing a
catalyst; however any such catalyst present in the release layer may not be
identical to “the catalyst” present in the primer for which the curable silicone
material is reactive.
The Obviousness Rejection
We address the claims separately to the extent they are so argued by
Appellants. 37 C.F.R. § 41.37(c)(l)(iv).
Claims 1, 4 6, and 9
Appellants argue claims 1, 4-6, and 9 as a group. App. Br. 16-20.
We select claim 1 as representative and decide the propriety of the
obviousness rejection of claims 1, 4-6, and 9 based on claim 1 alone.
37 C.F.R. § 41.37(c)(l)(iv). Dependent claims 4-6 and 9 will stand or fall
with claim 1.
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Application 14/003,665
The Examiner finds that Soria teaches or suggests all of the recited
limitations of the intermediate transfer member of claim 1, including a base,
a rubber layer disposed on the base, a primer comprising a photoinitiator, an
aminofunctional silane compound and a catalyst, and a release layer made of
a curable silicone material that forms a silicone polymer. Final Act. 4-5.
The Examiner finds that Soria fails to explicitly teach the species of
aminofunctional silane compounds recited in the primer layer, and relies on
the disclosure of Nagase for this teaching. Id. at 5. The Examiner also finds
that Soria does not explicitly disclose the limitation that “the
aminofunctional silane provides for a full cure of the release layer within
30 minutes,” and relies on the teachings of Homan for this disclosure. Id.
Alternatively, the Examiner finds that such limitation would be inherent in
the method of Soria as modified by Nagase. Id. at 6.
Appellants first argue that the Examiner’s rejection is in error because
Homan teaches that a sufficient amount of titanate catalyst is needed in the
release layer to achieve a cure time of under one minute, whereas the claim
expressly states that the release layer does not comprise “the catalyst.” App.
Br. 17. This argument is unpersuasive because the claimed release layer
may contain a catalyst that is not identical to “the catalyst” that is present in
the primer. As correctly explained by the Examiner, Soria discloses that
titanate or tin catalysts may be present in the primer; “[tjhus when a tin
catalyst is used in the primer layer and a titanate catalyst is used in the
release layer ... the release layer would not include ‘the catalyst’ (i.e., the
same catalyst) used in the primer layer.” Final Act. 7-8; Soria ^ 15.
Appellants also urge that the skilled artisan would not have been
motivated to use two different catalysts in the primer and the release layer
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Application 14/003,665
because each of Soria and Homan teaches that the catalyst is used for the
purpose of curing the silicone release layer. App. Br. 17-18. This argument
fails to persuade us of reversible error. The Examiner finds that the
references “explicitly prefer different types of catalyses]” in the different
layers, and that there would be benefits associated with each catalyst within
each layer. Ans. 11-12. Specifically, the Examiner explains that the primer
layer catalyst would have been selected by the skilled artisan for its surface
properties (i.e., as an interface with the release layer), whereas the release
layer catalyst would have been selected for its “bulk catalyzing effects.” Id.
Further, the Examiner notes that “the preference for different catalysts in the
different layers could be based on the interaction of the respective catalysts
with the different compounds in the primer and release layer.” Id. This
rationale is not contested by Appellants in the Reply Brief. Thus, Appellants
have failed to identify any reversible error in the Examiner’s determination
that the skilled artisan would have been motivated to include different
catalysts in the release layer and primer.
Moreover, we observe that the Examiner alternatively relies on an
inherency rationale to arrive at the recited functional limitation that “the
aminofunctional silane provides for a full cure of the release layer within
30 minutes.” Final Act. 6-7. Appellants do not address, much less reveal
error in, the Examiner’s findings and conclusions based thereon. Therefore,
Appellants have identified no error in the Examiner’s prima facie case of
obviousness.
We now turn to Appellants’ evidence to determine whether it weighs
in favor of non-obviousness. Appellants point to two examples contained
within the Specification (i.e., Examples 2 and 3) as evidence that the claimed
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subject matter has unexpectedly better cure times than that disclosed in the
prior art. App. Br. 19. We find Appellants’ evidence lacking in several
respects.
First, we share the Examiner’s view (Ans. 13) that sole comparative
Example 1 is not representative of the closest prior art. Soria teaches the
presence of aminosilanes in the primer, albeit not the specific aminosilanes
that are claimed. Soria ^ 13. Comparative Example 1, however, contains no
aminosilanes in the primer.7 “[WJhen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.” In re Baxter TravenolLabs., 952 F.2d
388, 392 (Fed. Cir. 1991).
We acknowledge Appellants’ argument that comparative Example 1 is
the closest prior art because it appears as the first example in Table 1 of
Soria, and because Soria does not mention any specific aminosilanes to
include in the primer. Reply Br. 8-9. We cannot agree with this argument,
however, because, when considering whether unexpected results have been
demonstrated, it is not sufficient to merely consider a comparison of the
claimed invention to any embodiment disclosed in the closest prior art
reference. Rather, a proper unexpected results determination compares the
claimed invention to a prior art embodiment that is the closest to that which
is claimed. See, In re Case, No. 98-1531, 1999 WL 682875, at 6-7 (Fed.
Cir. Aug. 31, 1999).
7 The organosilane of Comparative Example 1 ’s primer is a 1:1 mixture of
Dynasylan® MEMO™ (i.e., 3-methacryloxypropyltrimethoxy-silane
(Soria ^ 13)), and Dynasylan® GLYMO™ (i.e., glycidoxypropyltrimethoxy-
silanesilane). Spec. 12:4-17.
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Here, Soria discloses that an aminofunctional silane may be present in
the primer, but does not specify the four aminofunctional silanes recited in
claim 1. Soria 12-13. In view of such disclosure, we agree with the
Examiner (Ans. 13) that the closest prior art embodiment with which to
compare the inventive subject matter must include an aminofunctional silane
distinct from those recited in claim 1 in order to constitute the closest prior
art.
We likewise agree with the Examiner (Ans. 12-13) that the claims are
not commensurate in scope with the proffered evidence. In particular,
claim 1 recites four specific aminofunctional silanes, as well as oligomers
and mixtures thereof, in any amount, but Appellants’ data address only two
such silanes at one concentration. Spec. 12:4-15:10. “It is well established
that the objective evidence of nonobviousness must be commensurate in
scope with the claims.” In re Lindner, 457 F.2d 506, 508, (CCPA 1972).
Therefore, for the reasons expressed by the Examiner and above, we
sustain the obviousness rejection of claims 1, 4-6, and 9.
Claims 7, 16 18, 19, and 20s
Appellants’ arguments (App. Br. 19-23) that claims 7, 16-18, 19, and
20 are narrower in scope, and are thus more “commensurate in scope” with
the proffered data are likewise unpersuasive. While such claims may be
narrower in scope than the claim from which they depend, the evidence upon
which Appellants rely is, at a minimum, deficient because it does not
8 We consider Appellants’ arguments with respect to these claims separately,
but group our discussion of these claims for the sake of brevity.
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compare the claims with the closest prior art. Baxter Travenol Labs., 952
F.2d at 392. In re Case, 1999 WL 682875, at 6-7.
Therefore, we sustain the obviousness rejection of claims 7 and 16-
20.
Claim 8
Appellants separately argue claim 8 and urge that because “claim 8
states that the silicone material is cured by the catalyst to form the silicone
polymer,” no prima facie case of obviousness exists. App. Br. 21. This
argument fails to persuade us of reversible error because it does not account
for the potential presence of an additional, distinct catalyst (e.g., titanate) in
the release layer. As written, claim 8 — similar to claim 1 from which it
depends — does not exclude the presence of any catalyst in the release layer.
Rather, claim 8, like claim 1, merely excludes from the release layer the
identical catalyst (e.g., tin) that is present in the primer.
We, therefore, sustain the obviousness rejection of claim 8.
The Written Description Rejection
The Examiner finds that there is no written description support for the
limitation that “the release layer does not comprise the catalyst.” Final
Act. 3. Specifically, the Examiner finds that “[tjhere is nothing to suggest
the presence or absence of a catalyst in the release layer.” Id.
We disagree with the Examiner and, therefore, do not sustain this
rejection. A description adequate to satisfy 35 U.S.C. § 112, first paragraph,
“must ‘clearly allow persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed. ’ In other words, the test for sufficiency
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
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subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc) (citation omitted, alteration
in original). “Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.”
Santarus, Inc. v Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir.
2012).
Here, we are persuaded by Appellants’ arguments (App. Br. 23-24)
that the description fulfills this requirement. Appellants’ Specification
recites a method of preparing an intermediate transfer member where the
base member is coated with a rubber layer, which is then coated by a primer
containing a catalyst that is reactive with uncured silicone material present in
a subsequent release layer that is applied to the primer. Spec. 9:7-12; Fig. 2
(steps 202, 204, 206). Once the primer is coated with the uncured silicone
material and exposed to radiation, the silicone material forms a silicone
polymer. Spec. 9:11-14, Fig. 2 (steps 206, 208, 210).
Based on this disclosure, the skilled artisan would recognize, as did
the Examiner (Final Act. 3), that it is the catalyst in the primer layer that
cures the “curable silicone material” in the release layer. As correctly noted
by Appellants, the skilled artisan would recognize that “if the catalyst were
also present in the release layer, then the release layer would be cured by the
catalyst in the release layer.” App. Br. 24.
We, therefore, do not sustain the written description rejection.
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DECISION
We sustain the obviousness rejection of claims 1, 4-9, and 16-20, but
do not sustain the written description rejection of these claims.
The Examiner’s final decision to reject claims 1, 4-9, and 16-20 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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