Ex Parte Wittemann

Board of Patent Appeals and Interferences

May 27, 2009

11271952 (B.P.A.I. May. 27, 2009)

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
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Decided:1 May 27, 2009
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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Claims 12-53 have been withdrawn from consideration.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
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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
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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
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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
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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

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