POSCO

Patent Trials and Appeals Board

Oct 25, 2021

2020006776 (P.T.A.B. Oct. 25, 2021)

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.
15/751,634 02/09/2018 Jin-Tae KIM CSL0076US 9620
23413 7590 10/25/2021
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
REDDY, SATHAVARAM I
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
10/25/2021 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIN-TAE KIM, JUNG-HWAN LEE,
HA-NA CHOI, and YON-KYUN SONG
Appeal 2020-006776
Application 15/751,634
Technology Center 1700
Before MICHAEL P. COLAIANNI, JENNIFER R. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3–13, and 15–21.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed February 9, 2018
(“Spec.”); the Final Office Action dated June 11, 2019 (“Final Act.”); the
Appeal Brief filed February 11, 2020 (“Appeal Br.”); and the Examiner’s
Answer dated June 23, 2020 (“Ans.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as POSCO. Appeal Br. 3.
3 Claims 1, 14, and 22 are canceled.
Appeal 2020-006776
Application 15/751,634

2
CLAIMED SUBJECT MATTER
The claims are directed to an ink composition for an inkjet printed
steel plate and a method for producing an inkjet printed steel plate. Spec. 1,
ll. 3–5. Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An ink composition for an inkjet printed steel
plate, comprising:
a linear acrylate-based oligomer present in an amount of
11% to 50% by weight, based on an overall weight of an ink
composition;
a reactive acrylate-based monomer present in an amount
of 19% to 75% by weight, based on the overall weight of the
ink composition;
a linear acrylate-based monomer having an inorganic
particle attached thereto, present in an amount of 0.1% to 15%
by weight based on the overall weight of the ink composition;
an ultraviolet curable initiator present in an amount of
0.1% to 15% by weight, based on the overall weight of the ink
composition;
at least one selected from the group consisting of a dye
and a pigment, present in an amount of 0.5% to 10% by weight,
based on the overall weight of the ink composition; and
at least one selected from the group consisting of an
antioxidant, an antifoaming agent, and a dispersant, present in
an amount of 0.1% to 10% by weight, based on the overall
weight of the ink composition.
Appeal 2020-006776
Application 15/751,634

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REJECTIONS
The Examiner maintains the following rejections on appeal (Ans. 3;
Final Act. 3–13):
I. Claims 1, 3, 5–8, 10–13, 20, and 21 are rejected under 35 U.S.C.
§ 103 over Kajimoto4 and Ganapathiappan.5
II. Claim 4 is rejected under 35 U.S.C. § 103 over Kajimoto,
Ganapathiappan, and Nakane.6
III. Claim 9 is rejected under 35 U.S.C. § 103 over Kajimoto,
Ganapathiappan, and Matsumoto.7
IV. Claims 15, 16, 18, and 19 rejected under 35 U.S.C. § 103 over
Kajimoto, Ganapathiappan, and Takemoto.8
V. Claim 17 is rejected under 35 U.S.C. § 103 over Kajimoto,
Ganapathiappan, Takemoto, and Sisler.9
DISCUSSION
After reviewing the evidence in light of the Appellant’s and the
Examiner’s opposing positions, we determine that Appellant has not
identified reversible error in the Examiner’s rejections. Thus, we sustain the

4 Kajimoto et al., JP 2012-162688, published August 30, 2012. We refer to
the machine translation of record of Kajimoto as cited by the Examiner. See
generally Final Act.
5 Ganapathiappan et al., US 2013/0065996 A1, published March 14, 2013.
6 Nakane, US 2011/0234681 A1, published Sept. 29, 2011.
7 Matsumoto et al., US 2011/0227992 A1, published Sept. 22, 2011.
8 Takemoto et al., KR 10-1170872, published July 27, 2012. We refer to the
machine translation of record of Takemoto as cited by the Examiner. See
generally Final Act.
9 Sisler et al., US 2014/0015894 A1, published Jan. 16, 2014.
Appeal 2020-006776
Application 15/751,634

4
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Rejection I – Obviousness over Kajimoto and Ganapathiappan
Appellant argues the claims subject to this rejection as a group. We
choose independent claim 1 as representative. 37 C.F.R § 41.37(c)(1)(iv)
(2020).
The Examiner finds that Kajimoto’s ink composition is similar to
claim 1’s ink composition, but Kajimoto fails to explicitly teach that its ink
composition includes “a linear acrylate-based monomer having an inorganic
particle attached thereto and present in an amount of 0.1% to 15% by weight
based on the total weight of the ink composition.” Final Act. 3–5.
The Examiner finds that Ganapathiappan discloses an inkjet ink
containing coated pigment particles, such as titanias, encapsulated with
polyfunctional monomers, such as pentaerythritol triacrylate. Final Act. 5–6
(citing Ganapathiappan ¶¶ 10, 28). The Examiner finds that Ganapathiappan
teaches that the inkjet ink includes the polymer coated pigment particles in
an amount of 1% to 15% by weight based on the total weight of the ink
formulation. Id. at 6 (citing Ganapathiappan ¶ 51). The Examiner determines
that it would have been obvious to one of ordinary skill in the art to modify
Kajimoto’s inkjet ink to include Ganapathiappan’s polymer-coated pigment
particles to provide “improved jettability of the inkjet ink.” Id. (citing
Ganapathiappan ¶ 24).
Appellant argues that, “in Ganapathiappan, the content of the pigment
particles, (not the content of a linear acrylate-based monomer) is 0.5 to
40wt%, and the pigment particles are not attached to a linear acrylate-based
Appeal 2020-006776
Application 15/751,634

5
monomer, but encapsulated or coated by a cross-linked polymer.” Appeal
Br. 13 (emphasis omitted); Ganapathiappan ¶ 51.
Appellant’s argument does not identify reversible error in the
Examiner’s rejection. Ganapathiappan teaches an inkjet ink that contains
pigment particles encapsulated with polyfunctional monomers.
Ganapathiappan ¶¶ 10, 28. Ganapathiappan teaches titanias as an example of
pigment particles and pentaerythritol triacrylate as an example of a
polyfunctional monomer. Id. ¶¶ 10, 28. The Examiner finds, and Appellant
does not dispute that, the pentaerythritol triacrylate reads on the claimed
linear acrylate-based monomer and titania reads on the claimed inorganic
particle attached to the linear acrylate-based monomer. Final Act. 6; Appeal
Br. 9–18. Ganapathiappan teaches the concentration of the polymer-coated
pigment particles in the ink formulation, which includes a “linear acrylate-
based monomer,” such as pentaerythritol triacrylate, not the pigment
particles alone, may range from 1 to 15 wt%, which overlaps with the range
of 0.1% to 15% by weight recited in claim 1. Ganapathiappan ¶ 51. It is
well-established that a prima facie case of obviousness exists when the
claimed and prior art ranges overlap. In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003).
Appellant argues that “there is no reason for a person having ordinary
skill in the art, but not knowing the addressed prior [art] problems and the
claimed solutions, to be tempted to combine Ganapathiappan into the
primary reference ‘Kajimoto’ to obtain the claimed invention.” Appeal
Br. 14 (emphasis omitted). Appellant further argues that if Ganapathiappan’s
pigment particles encapsulated by a crosslinked polymer are modified to be
combined into other prior art, in order to arrive at the claimed invention,
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Application 15/751,634

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Ganapathiappan would be inoperable for its originally intended purpose. Id.
at 16–17.
Appellant’s argument does not identify reversible error in the
Examiner’s rejection. Ganapathiappan teaches a reason for including its
polymer-coated pigment particles in an inkjet ink, i.e., to provide improved
jettability of the inkjet ink. Ganapathiappan ¶ 24. “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 Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992). Appellant does not provide a sufficient
explanation or direct us to any evidence that modifying Kajimoto’s inkjet
ink to include Ganapathiappan’s polymer-coated pigment particles would
render Ganapathiappan’s ink inoperable for its intended purpose of
providing printed matter.
Because Appellant does not identify reversible error in the Examiner’s
rejection, we sustain the rejection of 1, 3, 5–8, 10–13, 20, and 21 under
35 U.S.C. § 103 over Kajimoto and Ganapathiappan.
Rejections II–V
Appellant does not present separate patentability arguments regarding
any of Rejections II–V aside from the arguments presented above for
claim 1. Thus, we sustain those rejections for the reasons the Examiner
presents and we give above with respect to claim 1.
CONCLUSION
The Examiner’s decision to reject claims 1, 3–13, and 15–21 is
affirmed.
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Application 15/751,634

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5–8,
10–13, 20,
21
103 Kajimoto,
Ganapathiappan
1, 3, 5–8,
10–13, 20,
21

4 103 Kajimoto,
Ganapathiappan,
Nakane
4
9 103 Kajimoto,
Ganapathiappan,
Matsumoto
9
15, 16, 18,
19
103 Kajimoto,
Ganapathiappan,
Takemoto
15, 16, 18,
19

17 103 Kajimoto,
Ganapathiappan,
Takemoto, Sisler
17
Overall
Outcome
1, 3–13, 15–
21

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED