Ex Parte WittemannDownload PDFBoard of Patent Appeals and InterferencesMay 27, 200911271952 (B.P.A.I. May. 27, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte GUNTER WITTEMANN ____________ Appeal 2009-002604 Application 11/271,952 Technology Center 2800 ____________ Decided:1 May 27, 2009 ____________ Before EDWARD C. KIMLIN, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-11, 54, and 55. Claims 12-53 have been withdrawn from consideration. We have 1 The two-month time period for filing an appeal or commencing a civil action, as recited 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 2009-002604 Application 11/271,952 jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1. A method for hydrophilizing screen printing stencil carriers, comprising the steps of: providing a screen printing stencil carrier; treating the screen printing stencil carrier with a hydrophilizing agent containing ultra-fine oxide particles and a wetting agent; and applying stencil material to the treated screen printing stencil carrier. In addition to the Admitted Prior Art (APA) found in Appellant’s Specification, the Examiner relies upon the following references as evidence of obviousness (Ans. 3): Hale 2002/0029714 A1 Mar. 14, 2002 Lack 6,447,373 B1 Sep. 10, 2002 Hiraoka 1 522 418 A2 Apr. 13, 2005 Chen 2006/0093761 A1 May 04, 2006 Appellant’s claimed invention is directed to a method for hydrophilizing screen printing stencil carriers. Stencil carriers for patterned stencil material are usually made of hydrophobic, plastic fabrics. This causes difficulty when the carrier is wetted with aqueous stencil material, resulting in defects that negatively affect the quality of the printing. Appellant explains that this problem was avoided in the prior art by treating the stencil carrier with a degreasing agent before application of the stencil material. The degreasing agent of the APA, which comprises a non-ionic surfactant and water, does not, we are told, produce a sufficiently long- lasting hydrophilizing effect (see Spec. 3, second para.). The presently 2 Appeal 2009-002604 Application 11/271,952 claimed hydrophilizing agent comprises ultra-fine oxide particles and a wetting agent. The appealed claims stand rejected under 35 U.S.C. § 103(a) as follows: (a) claims 1-4 and 7 over the APA in view of Hiraoka, (b) claims 5, 54, and 55 over the APA in view of Hiraoka and Lack, (c) claim 6 over the APA in view of Hiraoka and Chen, and (d) claims 8-11 over the APA in view of Hiraoka and Hale. We have thoroughly reviewed each of Appellant’s arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejections for the reasons set forth in the Answer, which we incorporate herein, and we add the following primarily for emphasis. Appellant does not dispute the Examiner’s factual determination that the APA in Appellant’s Specification discloses a method for hydrophilizing screen printing stencil carriers with a hydrophilizing agent. As recognized by the Examiner, the APA does not teach using a composition comprising ultra-fine oxide particles and a wetting agent as the hydrophilizing agent. However, as set forth by the Examiner, Hiraoka evidences that it was known in the art to employ a composition comprising ultra-fine oxide particles and a wetting agent as a hydrophilizing agent for a substrate in the printing arts. Accordingly, based on the state of the art represented by the APA and Hiraoka, we find no error in the Examiner’s rationale that one of ordinary 3 Appeal 2009-002604 Application 11/271,952 skill in the art would have had a reasonable expectation of success in using the hydrophilizing agent of Hiraoka for treating screen printing stencil carriers of the APA. While we appreciate the differences between the screen printing of the APA and the planographic printing of Hiraoka, we agree with the Examiner that such a difference does not undermine the prima facie obviousness of employing a known hydrophilizing agent in the known process of treating a screen printing stencil with a hydrophilizing agent before applying the stencil material. Although Appellant emphasizes the fundamental distinction between screen printing and planographic printing, Appellant has advanced no reason why one of ordinary skill in the art would have been dissuaded from using the known hydrophilizing agent of Hiraoka in the method of hydrophilizing screen printing stencil carriers of the APA. Absolute predictability for success is not necessary for a conclusion of obviousness under § 103, and Appellant has presented no argument why one of ordinary skill in the art would not have had the requisite reasonable expectation of success in using the hydrophilizing agent of Hiraoka in the claimed method. We do not subscribe to Appellant’s argument that Hiraoka is non- analogous art. Rather, we fully concur with the Examiner that Hiraoka addresses the same problem confronting the methods of the APA and presently claimed, namely, rendering a substrate hydrophilic. We agree with the Examiner that it is of no moment that Hiraoka hydrophilizes the substrate after preparing the printing plate. It is fundamental that all the features of the reference need not be incorporated into another reference to support a conclusion of obviousness under § 103. In our view, one of 4 Appeal 2009-002604 Application 11/271,952 ordinary skill in the art would have reasonably looked to a variety of arts which involve hydrophilizing compositions for treating a substrate. Turning to the rejection of claims 5, 54, and 55, we agree with the Examiner that Lack evidences the obviousness of adding salt and electrolytes to particle dispersions for the purpose of controlling particle bridging or coagulation and, therefore, it would have been obvious for one of ordinary skill in the art to include such ions or salts in the hydrophilizing composition of Hiraoka to control the coagulation of the metal oxide particles. While Appellant argues that Lack is directed to a slurry for use in chemical-mechanical polishing of a metal substrate and is entirely unrelated to screen printing, we agree with the Examiner that Lack is reasonably pertinent to the problem of particle coagulation confronted by Hiraoka and Appellant. Manifestly, preventing coagulation of a particle dispersion is relevant to the effectiveness of the dispersion regardless of its field of use. As stated by the Examiner, Lack is cited for “showing basic scientific principles of particle dispersions, and for showing the basic principle of controlling particle coagulation by adding electrolytes” (Ans. sentence bridging 12-13). Regarding the rejection of claim 6, Appellant has not refuted the Examiner’s factual finding that “Chen teaches the functionalization of oxide particles with silanol compounds in order to bind the particles to the substrate (paragraph 6)” (Ans. 6, second para.). Consequently, we find no error in the Examiner’s legal conclusion that it would have been obvious for one of ordinary skill in the art “to functionalize the particles of Hiraoka in order to bind the particles to the substrate” (id.). Again, we are not persuaded by Appellant’s argument that Chen is not directed to screen 5 Appeal 2009-002604 Application 11/271,952 printing but, rather, ink jet printing. We agree with the Examiner that “[s]ince Appellant is concerned with particles and their interaction with a surface, the teachings of Chen are deemed to be more than reasonably pertinent to Appellant’s concern” (Ans. 13, last para.). Finally, concerning the rejection of claims 8-11 which define the wetting agent as a surfactant, we are in full agreement with the Examiner that Hale establishes the obviousness of using “nonionic surfactants as wetting agents (paragraph 67 and paragraph 68) to improve the wetting characteristics of the solution and also to stabilize the particles and colloids present in the solution (paragraph 67)” (Ans. 7, first sentence). While Hale is directed to ink jet printing rather than screen printing, we agree with the Examiner that Hale demonstrates the obviousness of using surfactants to improve the wetting characteristics of Hiraoka’s hydrophilizing solution and to stabilize the oxide particles therein. Also, we agree with the Examiner that Hale is reasonably pertinent to Appellant’s problem of facilitating interaction between dispersed oxide particles and a surface. As a final point, we note that Appellant bases no argument upon objective evidence of non-obviousness, such as unexpected results. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims 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) (2008). AFFIRMED 6 Appeal 2009-002604 Application 11/271,952 ssl BERENATO, WHITE & STAVISH, LLC 6550 ROCK SPRING DRIVE SUITE 240 BETHESDA, MD 20817 7 Copy with citationCopy as parenthetical citation