Ex Parte Agur et al

Board of Patent Appeals and Interferences

Jan 21, 2010

10859967 (B.P.A.I. Jan. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ENNO E. AGUR, JOSEPH A. BARTEL, PATRICIA A. BURNS,
DANIELLE C. BOILS, and SHEAU V. KAO
____________

Appeal 2009-004020
Application 10/859,967
Technology Center 1700
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Decided: 21 January 2010
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004020
Application 10/859,967

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3, and 5.1 (App. Br. 3). We have jurisdiction pursuant
to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants describe a wax emulsion including polyethylene wax used
in toners having a reduction of coarse particles. (Spec. [0001]). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A wax emulsion comprised of polyethylene wax and one or
more surfactants in an aqueous medium, wherein the
polyethylene wax has a degree of crystallinity of from about
50% to about 75% by weight of the polyethylene wax;
wherein the polyethylene wax is a linear polyethylene
wax.

THE REJECTION
The Examiner rejected claims 1, 3, and 5 under 35 U.S.C. § 103(a) as
being unpatentable over Matsumura 918 (US 6,416,918 B2, issued July 9,
2002) in view of Matsumura 715 (US 5,106,715, issued April 21,1992).
The Examiner found that Matsumura 918 discloses a toner
composition incorporating linear polyethylene wax, including POLYWAX®
725 exemplified by Appellants, but that Matsumura 918 does not disclose
the crystallinity of the wax recited in the claims. (Examiner’s Answer
entered July 22, 2008, hereinafter “Ans.,” 3). The Examiner found that

1 Claims 6-19 have been withdrawn from consideration, and claims 2 and 4
have been canceled. (Appeal Brief filed May 12, 2008, hereinafter “App.
Br.,” 3).
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Matsumura 715 discloses toner compositions including low molecular
weight polyolefins (waxes) having a crystallinity within the scope of the
recited crystallinity range, which are used to reduce the fixing temperature
and provide increased resistance to caking of the toner compositions. (Ans.
3-4). The Examiner determined that it would have been obvious to use the
polyolefin waxes of Matsumura 715 in the toner of Matsumura 918 in order
to: 1) provide excellent caking resistance while providing an acceptable
fixing temperature; or 2) to function as a releasing agent. (Ans. 4-5).
Appellants contend that there would be no reason to use the polyolefin
waxes of Matsumura 715 in the compositions of Matsumura 918. (App. Br.
10). Appellants argue that Matsumura 715 does not disclose that the
polyolefin waxes are linear as required in the claims and that Matsumura
715 only overlaps the recited crystallinity at the minimum crystallinity of
75%. (App. Br. 10-12). Appellants argue that the Specification provides
unexpected results with respect to the coarse particle size. (App. Br. 12-13).

ISSUE
Have Appellants shown that the Examiner reversibly erred in
determining that a wax emulsion including a linear polyethylene wax having
a degree of crystallinity of from about 50% to about 75% by weight of the
polyethylene wax would have been obvious over Matsumura 918 in view of
Matsumura 715 and if not, do Appellants’ unexpected results outweigh the
Examiner’s evidence obviousness?

Appeal 2009-004020
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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification discloses preferred linear waxes include
POLYWAX® 725. (Spec. [0023]).
2. Appellants’ Specification discloses examples of toner mixtures
including waxes, where a wax having a degree of crystallinity of
72% has a volume average particle size diameter of 5.98 nm and a
volume particle size distribution (GSDv) of 1.37, and a wax having
a degree of crystallinity of 85%, a volume average particle size
diameter of 6.44 nm and a volume particle size distribution
(GSDv) of 1.35. (Spec. [0058], [0060], [0066]).
3. Matsumura 918 discloses a toner composition including a resin
particle dispersion of a binder resin and a releasing agent
dispersion. (Col. 3, ll. 32-54).
4. Matsumura 918 discloses that the releasing agent includes
polyethylene wax, and specifically discloses POLYWAX® 725.
(Col. 12, ll. 40-49, col. 16, ll. 35-50).
5. Matsumura 918 discloses a resin dispersion having a glass
transition point of 52.0 ºC. (Col. 19, ll. 7-14).
6. Matsumura 715 discloses toner compositions including polyolefin
polymers having a crystallinity of 75 to 90%. (Col. 1, ll. 5-11; col.
2, ll. 29-35).
7. Matsumura discloses a comparison example (C) where the glass
transition point of the thermoplastic resin is 55 ºC, the minimum
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fixing temperature is 150ºC, and a caking test indicated no
problems. (Col. 5, ll. 4-34, Table 1).
8. Matsumura 715 does not disclose the caking test results of a
thermoplastic resin with a glass transition temperature of 55 ºC in
the absence of polyolefin or results of thermoplastic resins having
glass transition temperatures at 50 ºC. (Col. 5, ll. 4-34, Table 1).

PRINCIPLES OF LAW
In KSR, the Supreme Court explained, “[w]hen a work is available in
one field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103 likely bars its
patentability.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] 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)).
“[W]hen 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 Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).

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ANALYSIS AND CONCLUSION
We confine our discussion to appealed claim 1, which contains claim
limitations representative of the arguments made by Appellants pursuant to
37 C.F.R. § 41.37(c)(1)(vii).2
We are unpersuaded by Appellants’ argument that because
Matsumura 715 discloses that the polyolefin waxes only affect the fixing
temperature and caking properties when used with thermoplastic resins
having a glass transition temperature between 20-50 ºC and Matsumura 918
discloses thermoplastic resins having glass transition temperatures greater
than 50 ºC, one of ordinary skill in the art would not have used linear
polyethylene waxes with a crystallinity within the recited range in the toners
of Matsumura 918. (App. Br. 9-10). As stated by the Examiner, Matsumura
715 indicates that thermoplastic resins having a glass transition temperature
of 55 ºC exhibit no problems with respect to caking resistance. (Ans. 6; FF
7). Appellants’ contention that the exemplified resin in Matsumura 918
would not have caking problems in the first place due to glass transition
temperatures of above 50 ºC (Reply Brief, filed August 14, 2008, hereinafter
“Rep. Br.,” 3-4) is insufficient to rebut the Examiner’s position.
Specifically, Matsumura 715 does not disclose the caking test results of a
thermoplastic resin with a glass transition temperature of 55 ºC in the
absence of polyolefin or results of thermoplastic resins having glass
transition temperatures at 50 ºC. (FF 8). Thus, there is no persuasive
evidence on the record that resins having glass transition temperatures close

2 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
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to 50 ºC, for example, 52 ºC as disclosed in Matsumura 918 (FF 5), would
not exhibit caking or that one of ordinary skill in the art would not have
expected a benefit in caking resistance from employing the polyolefins of
Matsumura 715 in the toners of Matsumura 918.
Appellants argue that the polyolefin polymers of Matsumura 715
would not function as releasing agents, because Matsumura 715 does not
disclose the use of POLYWAX® products. (Rep. Br. 5). However, the
absence of a specific polyolefin example in Matsumura 715 is not sufficient
to rebut the Examiner’s position that both Matsumura 918 and Matsumura
715 generally disclose similar polyolefins. (Ans. 6-7). Therefore, we agree
with the Examiner, that one of ordinary skill in the art would have
recognized that the polyolefins of Matsumura 715 would have releasing
agent properties.
Regarding Appellants’ arguments that because Matsumura 918 and
Matsumura 715 are directed to different toner systems, one of ordinary skill
in the art would not have had a reason for combining the two disclosures,
Appellants have not addressed the Examiner’s position that caking and
release properties are common to both systems, and therefore would be
beneficial to emulsion systems. (Ans. 7; App. Br. 10). Accordingly,
Appellants’ arguments are insufficient to establish error on the part of the
Examiner.
Appellants’ arguments that Matsumura 715 does not disclose linear
polyolefins or the crystallinity recited in the claims are not persuasive.
(App. Br. 10-12). Appellants have not addressed the Examiner’s rationale
that linear polyolefins are conventional in the toner systems disclosed in
Matsumura 715, or that Matsumura 918 discloses linear polyolefins. (Ans.
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7). In addition, we agree with the Examiner, that the overlap in ranges
between the recited crystallinity of “about 50% to about 75%” and the
crystallinity disclosed in Matsumura 715 of 75% to 90% renders the claims
obvious. (Ans. 8). See In re Wertheim, 541 F.2d 257 (CCPA 1976).
We also agree with the Examiner that in alleging unexpected results,
Appellants have failed to compare the closest prior art. (Ans. 8).
Specifically, the comparison examples in Appellants’ Specification do not
disclose degrees of crystallinity below 85%. (FF 2). As a result, Appellants
have not compared the closest prior art of Matsumura 715, which includes
crystallinities of 75%. (App. Br. 12-13). A prior art reference is not limited
to the preferred embodiments disclosed therein. See Merck & Co., Inc v.
Biocraft Laboratories, Inc 874 F.2d 804, (Fed. Cir. 1989). Therefore,
Appellants’ argument that the results compare the preferred ranges disclosed
in Matsumura 715 is not persuasive. Thus, Appellants’ arguments of
unexpected results are insufficient to overcome the Examiner’s evidence of
obviousness.

ORDER
We affirm the Examiner’s decision rejecting claims 1, 3, and 5 under
35 U.S.C. § 103(a) as being unpatentable over Matsumura 918 in view of
Matsumura 715.
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

Appeal 2009-004020
Application 10/859,967

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