Ex Parte Van Geert et al

Board of Patent Appeals and Interferences

Jun 23, 2009

10731937 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte PETER MAURITS MARIA VAN GEERT
and PATRICK JEAN-FRANCOIS ETESSE
______________

Appeal 2008-006058
Application 10/731,937
Technology Center 1700
_______________

Decided:1 June 25, 2009
_______________

Before CHARLES F. WARREN, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1 and 4 in the Office Action mailed

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the Decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-006058
Application 10/731,937
January 8, 2007. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2007).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a process for making a
holographic structure, and is representative of the claims on appeal:
1. A process for making a holographic structure comprising:
producing a pattern on an organic solvent based embossable layer to
form an embossed layer exhibiting a holographic effect;
applying an aluminum layer onto said embossed layer, said aluminum
layer having pin-holes; and
applying a primer and a printing ink layer onto said aluminum layer
such that said printing layer and said aluminum layer are solely separated by
said primer,
wherein said embossable layer comprises a polyethylene terephthalate
film and an acrylic lacquer applied on said film from an organic solvent
selected from the group consisting of toluene, butyl acetate and ketones,
wherein said primer comprises acrylic compounds and is water
solvent based and
wherein said printing ink layer is organic solvent based, and said sink
layer comprises a colored ink and a white ink, said colored ink comprising
ethanol as said organic solvent and said white ink comprising ethylacetate as
said organic solvent, and
wherein said water solvent based primer prevents solvent from said
organic solvent based ink from migrating through said aluminum layer to
dissolve said acrylic lacquer on said polyethylene terephthalate film.
The Examiner relies upon the evidence in these references (Ans. 3): 2
Culbertson US 4,571,363 Feb. 18, 1986
Yamaguchi US 5,200,253 Apr. 6, 1993

2 We consider these documents: Appeal Brief filed October 5, 2007;
Examiner’s Answer mailed November 13, 2007; and Reply Brief filed
December 12, 2007.
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Application 10/731,937
Catena US 5,658,968 Aug. 19, 1997
Shearer WO 93/08084 Apr. 29, 1993
Derwent Abstract 1985-076981, JP Kokai No. 60-028459, Feb. 13, 1985
(hereinafter Derwent Abstract3)
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced by the Examiner on appeal: claims 1 and 4 over admitted
prior art at pages 1-2 of the Specification in view of Shearer, Derwent
Abstract, Yamaguchi, Catena, and Culbertson. App. Br. 3; Ans. 3.
Appellants argue the claims as a group. App. Br., e.g., 3. Thus, we
decide this appeal based on claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Issue
The dispositive issue in this appeal is whether Appellants have shown
that the evidence in the combined admitted prior art at pages 1-2 of the
Specification and teachings of Shearer, Derwent Abstract, Yamaguchi,
Catena, and Culbertson does not support the Examiner’s conclusion of prima
facie obviousness with respect to the claimed method of making a
holographic structure encompassed by claim 1.
Claim Interpretation
The plain language of representative independent claim 1
encompasses a process of making any holographic structure comprising at
least, in pertinent part, the steps, in order, of applying an aluminum layer

3 The Derwent Abstract of the Japanese Patent Document is a different
reference than the patent document. Thus, we have not considered the
translation of the Japanese Patent Document prepared by the USPTO (PTO
2007-6922) made of record and attached to the Answer without comment
therein.
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Application 10/731,937
with pin-holes on an acrylic lacquer layer that was applied from an organic
solvent on a polyethylene terephthalate film substrate; applying a water
solvent based acrylic compound containing primer on the aluminum layer;
and applying a layer of a colored ink comprising ethanol and a white ink
comprising ethanol. See, e.g., In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited therein; In re Morris, 127
F.3d 1048, 1054-55 (Fed. Cir. 1997).
Findings of Fact
We find Appellants disclose it is known that in a process of making a
holographic structure including a thin metallic layer,
a typical film structure . . . [comprising an] organic solvent
based lacquer [is] printed or applied, prior to embossement,
onto a fist side of a polyester (PET) film . . . Once this lacquer
is applied . . . it is embossed so as to produce the holographic
pattern. Once embossed, a metallic layer, typically aluminum,
is vaporized or applied in another manner onto the embossed
lacquer to form the “holographic core.” . . . Once this is done,
printing can occur.
Spec. 2:4-14; see also 1:15-22.
We find Shearer would have disclosed to one of ordinary skill in this
art a process of making a flexible sheet packaging material with holographic
patterns comprising, among other things, the steps of forming an acrylic
lacquer layer from a solvent-based emulsion on a substrate and embossing
the lacquer layer; preferably applying aluminum by vapor deposition or
sputtering to the embossed acrylic lacquer layer; and applying printing on
the aluminum layer. Shearer 1:16 to 2:1; see also, e.g., 3:11-15. The acrylic
lacquer layer can be applied from solvents such as toluene or
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methylethylketone if, after drying, the lacquer layer contains no more than
10 mg/m2 thereof. Shearer 4:35 to 5:2.
We find Yamaguchi would have disclosed to one of ordinary skill in
this art a method of making a hologram forming sheet in which a metal
layer, such as aluminum, is provided on a hologram forming layer by,
among other things, vacuum evaporation or sputtering. Yamaguchi, e.g.,
col. 5, ll. 52-59. In the embodiment of Yamaguchi’s Example 8, as
illustrated in Figure 24, a primer layer 115, which can be formed from
lacquers, is provided on aluminum layer 114, and ink layers 119 can be
provided on primer layer 115. Yamaguchi col. 17, l. 15 to col. 18, l. 17; see
also, e.g., col. 18, ll. 34-52 and Fig. 25, and col. 21, ll. 8-19 and Fig. 29.
Yamaguchi discloses primer layer 115 provides better adhesion between
aluminum layer 114 and protective layer 116 which can be formed on primer
layer 115. Yamaguchi col. 18, ll. 4-7. “The protective layer 116 is usually
made of a cellulosic material but if printing or other processing is to be done
on the surface of the protective layer 116, it may be formed of a poly(vinyl
chloride-co-vinyl acetate) material.” Yamaguchi col. 18,
ll. 11-15.
We find Catena would have evinced to one of ordinary skill in this art
that flexible packaging printing solvent-based printing inks for, among other
things, polymer substrates including polyethylene terephthalate and
polyester, and aluminum foils, are widely used in the graphic arts industry
but are generally and ordinarily not receptive to water solvent-based primers
which printers and packagers prefer. Catena col. 1, ll. 12-29 and 42-49.
Catena would have further evinced to this person that blocking is a problem
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when printing on non-absorbent substrates such as flexible packaging, and
prior art inks containing resins, including nitrocellulose, have less desirable
adhesive strength and block resistance. Catena col. 1, ll. 30-41 and 49-55.
We find Catena would have disclosed to one of ordinary skill in this
art an improved flexible package solvent-based printing ink which, among
other things, is block resistant and has increased water-based primer
compatibility. Catena col. 1, l. 65 to col. 2, l. 4; see also col. 2, ll. 57-61.
Catena discloses that pigments for the inks impart colors, including white
(titanium dioxide), and the solvents for the inks include, among other things,
ethanol and ethyl acetate. Catena col. 3, ll. 14-51. Catena further discloses
that the solvent-based printing inks can contain nitrocellulose. Catena col. 1,
l. 65 to col. 2, l. 1.
We find Culbertson would have disclosed to one of ordinary skill in
this art a water-solvent based primer coat comprising acrylic compounds for
polyester films, wherein the films are useful for, among other things,
packaging but are not readily receptive to coatings. Culbertson, e.g., col. 1,
ll. 5-23; see also col. 2, ll. 28-37, col. 3, ll. 12-22, and col. 5, ll. 26-29. The
primer coating provides adhesion to organic solvent based coatings,
including organic solvent based printing inks on packaging materials.
Culbertson col. 6, ll. 45-52.
A discussion of the Derwent Abstract is unnecessary to our decision.
Opinion
We considered the totality of the record in light of Appellants’
arguments with respect to claim 1 and the ground of rejection advanced on
Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“‘On
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appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
facie case with evidence of secondary indicia of nonobviousness.”)(quoting
In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); In re Oetiker, 977 F.2d
1443, 1445 . . . (Fed. Cir. 1992) (“After evidence or argument is submitted
by the applicant in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration to
persuasiveness of argument.”) (citing, inter alia, In re Spada, 911 F.2d 705,
707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellants have not shown that the evidence in
the combined admitted prior art at pages 1-2 of the Specification and
teachings of Shearer, Yamaguchi, Catena, and Culbertson does not support
the Examiner’s conclusion of prima facie obviousness with respect to the
claimed method of making a holographic structure encompassed by claim 1.
Appellants dispute that the combined admitted prior art in the
Specification and teachings of the references relied on would result in a
process of making a holographic structure encompassed by claim 1 with the
contention, among other things, that Catena teaches away from using a water
solvent-based primer with solvent-based printing in teaching that solvent-
based flexible packaging inks are generally not receptive to water-borne
primers or adhesives which are preferred by printers. App. Br. 5-6, citing
Catena col. 1, ll. 27-30; see above p. 5; see also generally App. Br.; Reply
Br. 2. Thus, Appellants argue Catena does not fairly suggest combining a
solvent-based ink with a water solvent-based primer. App. Br. 5-6.
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We disagree with Appellants’ position. Catena evinces that generally
and ordinarily flexible packaging printing solvent-based printing inks are not
receptive to water solvent-based primers and discloses flexible packaging
printing solvent-based printing inks that are receptive to water solvent-based
primers. See above pp. 5-6. Thus, we agree with the Examiner that there is
no evidence or disclosure in Catena which would have led one of ordinary
skill in this art away from using the flexible packaging printing inks
disclosed by the reference. Ans. 10. See, e.g., In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (a prior art disclosure does not teach away if the
“disclosure does not criticize, discredit, or otherwise discourage the solution
claimed.”).
Appellants principally submit the problem of pin holes in the
aluminum layer they discovered was not recognized in the prior art, and in
the absence of recognition of this problem, one of ordinary skill in the art
would not have been led to the combined admitted prior art in the
Specification and teachings of the applied references relied on by the
Examiner to solve the problem. App. Br., e.g., 3-4; Reply Br. 1-2.
Appellants point out the solution to the problem is the water solvent-based
primer that separates the solvent-based ink layer from the pin-hole
containing aluminum layer which prevents migration of the solvents from
the ink layer through the aluminum layer which would result in the
dissolution of the embossed acrylic lacquer. App. Br., e.g., 4. Appellants
argue that in the absence of a recognition of the problem, the solution would
not have been taught by the applied prior art. App. Br., e.g., 4.
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In this respect, Appellants point out that Shearer does not recognize
the pin-hole problem in the aluminum layer and teaches printing directly on
that layer, thus giving “rise to the very problem discovered and solved by”
Appellants. App. Br. 6-7; Reply Br. 2. Appellants’ further point out that
Yamaguchi teaches the use of a primer of lacquer to improve adhesion for
printing. App. Br. 6-7 and 8. Appellants argue the combination of Shearer
and Catena is based on hindsight as Catena is directed to solving the
“blocking” problem and not to printing problems with holographic material.
App. Br. 7. Appellants further argue the combination of Yamaguchi and
Catena is improper because Yamaguchi’s protective layer contains a
cellulosic material and Catena teaches there are problems printing on
cellulosic material. App. Br. 8, citing Yamaguchi col. 18, l. 8. Appellants
also point out that Culbertson does not address problems with hologram
formation.
We initially note that Appellants’ contention with respect to the
combination of Yamaguchi and Catena does not address the evidence in
these references. Indeed, Yamaguchi discloses printing directly on primer
lacquer layer 115 and Catena’s flexible packaging solvent based printing
ink, for use on water solvent-based primers, contains nitrocellulose resin.
See above pp. 5-6.
We agree with the Examiner that the motivation to combine the
admitted prior art in the Specification and the teachings of Shearer,
Yamaguchi, Catena, and Culbertson leading to processes of making a
holographic structure encompassed by claim 1 need not be the same as that
of Appellants. Ans. 8-9. Thus, it is sufficient if the applied prior art
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provides motivation to combine the teachings of the admitted prior art and
the applied references even though it is not the same problem which
Appellants disclose to be the basis for having made the claimed process. See
KSR Int’l Co. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)) (“[A]nalysis [of whether the subject
matter of a claim is obvious] need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.”); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996),
citing In re Dillon, 919 F.2d 688, 693, (Fed. Cir. 1990)(en banc) (motivation
in the prior art to combine the references does not have to be identical to that
of applicant to establish obviousness); In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992) (“As long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor.”); In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976) (The reference
provides “ample motivation to add water in order to increase product yields,
and we do not view the rejection as deficient merely because appellants
allege a different advantage resulting from the addition of water.
Obviousness under 35 U.S.C. § 103 does not require absolute predictability,
and it is sufficient here that [the reference] clearly suggests doing what
appellants have done.” (citations omitted)).
Here, we agree with the Examiner that one of ordinary skill in this art
would have been armed with the knowledge in the art with respect to process
of forming holographic structures on flexible packaging material as evinced
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by the admitted prior art in the Specification, Shearer and Yamaguchi,
including that printing on the aluminum layer deposited on the embossed
lacquer layer can be accomplished without a primer as taught by Shearer and
with a lacquer primer as taught by Yamaguchi. Thus, this person would
have been motivated to use Culbertson’s water solvent-based acrylic
compound primer for flexible packaging material on the aluminum layer to
provide adhesion for Catena’s flexible packaging solvent-based inks. Ans.,
e.g., 6-7. See above pp. 4-6. Indeed, this person would have had a
reasonable expectation of success in view of Culbertson’s teachings that the
primer provides adhesion for solvent-based inks on packaging material and
Catena’s teachings of flexible packaging solvent based printing inks that are
compatible with water solvent-based primers. Ans., e.g., 6-7. See above pp.
5-6.
Accordingly, we are of the opinion that one of ordinary skill in this art
routinely following the combination of admitted prior art at pages 1-2 of the
Specification and teachings of Shearer, Yamaguchi, Culbertson, and Catena
would have reasonably arrived at the claimed process of making a
holographic structure encompassed by claim 1, including all of the
limitations thereof, without recourse to Appellants’ Specification.
See, e.g., KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”); In re
Keller, 642 F.2d 413, 425 (CCPA 1981)((“[T]he test [for obviousness] is
what the combined teachings of the references would have suggested to
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those of ordinary skill in the art.”); In re Sovish, 769 F.2d 738, 743 (Fed.
Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art);
Kronig, 539 F.2d at 1304; see also, e.g., Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1364 (Fed. Cir. 2007) ("the expectation of success need only
be reasonable, not absolute"); In re O’Farrell, 853 F.2d 894, 903-04 (Fed.
Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined admitted prior art in the Specification, Shearer, Derwent Abstract,
Yamaguchi, Catena, and Culbertson with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1 and 4 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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)(1)(iv).
AFFIRMED
tc

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