Ex Parte Almog

Board of Patent Appeals and Interferences

May 15, 2007

10039481 (B.P.A.I. May. 15, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YAACOV ALMOG
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Appeal 2006-2968
Application 10/039,481
Technology Center 1700
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Decided: May 15, 2007
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Before BRADLEY R. GARRIS, PETER F. KRATZ, and CATHERINE Q.
TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
We AFFIRM.
This is a decision on an appeal under 35 U.S.C. § 134. We have
jurisdiction under 35 U.S.C. § 6.
The Appellant invented a method for preparing a liquid toner for
electrostatic development of electrostatic images. The method involves
coating pigmented polymer particles with an ionomer whereupon the
Appeal 2006-2968
Application 10/039,481

particles obtain a certain chargeability adequate for the previously
mentioned electrostatic development. The appealed subject matter is
adequately illustrated by independent claims 30, 32, and 33, which read as
follows1:
30. A method for preparing a liquid toner for electrostatic
development of electrostatic images, which method comprises:

dispersing pigmented polymer particles in an insulating non-polar
carrier liquid;

mixing at least one ionomer, which is not soluble at room
temperature, with the liquid containing the pigmented polymer particles;

coating the pigmented polymer particles with the at least one ionomer;

and adding at least one charge director to the liquid containing the
coated pigmented polymer particles;

wherein the pigmented polymer [sic, pigmented polymer particles]
comprises [sic, comprise] a material suitable for use as a toner material in an
electrostatic image development application, but which in the presence of
charge director alone is unchargeable or not chargeable to an extent suitable
for electrostatic development of electrostatic images; and

wherein the at least one ionomer is used in an amount effective to
impart enhanced chargeability to the toner particles to an extent that the
particles can be used to develop an electrostatic image.

32. A method for producing a liquid toner for an electrostatic imaging
method, which imaging method requires that said toner comprise toner

1 We observe that the claim reproductions in the Brief Appendix are
inaccurate. Therefore, we have copied the illustrative claims for this
decision from the actual claims pending in the application file rather than
from the Appendix reproductions.
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particles having a given particle conductivity, said method for producing a
liquid toner comprising:

dispersing pigmented polymer particles in an insulating non-polar
carrier liquid to form a dispersion;

mixing at least one ionomer which is not soluble at room temperature
with the dispersion to form a mixture;

coating the polymer particles with the at least one ionomer; and

adding a charge director to said mixture,

wherein said coating provides to said particles a chargeability
sufficient to give said toner particles said given particle conductivity.

33. A method for preparing a liquid toner for a particular process of
electrostatic development of electrostatic images, said particular process
requiring a given level of toner charge, the toner comprising chargeable
toner particles dispersed in a carrier liquid and at least one charge director,
the method comprising:

providing at least one charge director;

providing a toner precursor material comprising toner precursor
particles dispersed in an insulating non-polar carrier liquid, the particles
comprising a core material including a pigmented polymer suitable for use
as a toner material in the particular process for electrostatic development of
electrostatic images, but which is unchargeable by the at least one charge
director or which is weakly chargeable by the at least one charge director to
an extent that it is not useable in electrostatic development of latent images
in the particular process;

coating the toner precursor particles with at least one ionomer
component in an amount effective to impart enhanced chargeability to the
pigmented polymer to an extent that the coated particles can be used to
develop a latent electrostatic image in the particular process for electrostatic
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development of electrostatic images, thereby forming said chargeable toner
particles, and

adding said at least one charge director, in an amount suitable for
charging the chargeable toner particles to said given level.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Metcalfe US 3,078,231 Feb. 19, 1963
Whitbread US 3,325,409 June 13, 1967
Wagner US 3,438,904 Apr. 15, 1969

Schaffert, "Electrophotography," John Wiley & Sons, New York, 69-73
(1975).

Uytterhoeven EPA 0 176 630 Apr. 9, 1986

Diamond, Handbook of Imaging Materials, New York, Marcel Dekker, Inc.,
233 (1991).

Claims 32-46 are rejected under the first paragraph of 35 U.S.C. § 112
for failing to comply with the written description requirement.
Claims 32-44, and 46 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uytterhoeven in view of Whitbread in view of Diamond,
Metcalfe, and Wagner.
Claims 30-44, and 46 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uytterhoeven in view of Schaffert in view of Diamond,
Metcalfe, and Wagner.
For a complete understanding of the opposing viewpoints expressed
by the Appellant and by the Examiner concerning the above-noted
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rejections, we refer to the Brief, filed April 29, 20042, and the Rely Brief,
(i.e., response to Examiner's Answer, filed August 30, 2004) and to the
Answer, filed June 25, 2004.
OPINION
We will sustain each of these rejections for the reasons expressed in
the Answer and below.

The § 112 Rejection
The first paragraph of § 112 has been construed to mandate that the
Specification satisfy two closely related requirements. First, it must describe
the manner and process of making and using the invention so as to enable a
person of skill in the art to make and use the full scope of the invention
without undue experimentation. Second, it must describe the invention
sufficiently to convey to a person of skill in the art that the patentee had
possession of the claimed subject matter at the time of the application, that
is, that the patentee invented what is claimed. LizardTech, Inc. v. Earth
Resource Mapping, Inc., 424 F.3d 1336, 1345-46, 76 USPQ2d 1724, 1731
(Fed. Cir. 2006).
We agree with the Examiner that claims 32-46 fail to comply with the
written description requirement of § 112. As correctly explained by the
Examiner, these claims encompass methods which have not been described

2 We do not refer to the revised Brief, filed August 30, 2004, because it
corresponds to the April 20, 2004 Brief except for the "Grouping of the
Claims" section. As a matter of clarification in this latter regard, our
disposition of this appeal has included a full consideration of each argument
advanced for each claim grouping as presented in both of these Briefs.
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in the Appellant's Specification and Drawing disclosure sufficiently to
convey to a person of skill in the art that the Appellant had possession of the
invention defined by the rejected claims at the time the application was filed.
For example, independent claims 32 and 46, as well as the claims
which depend therefrom, encompass a method wherein the ionomer coating
provides to the pigmented polymer particles a chargeability which is less
than (or the same as) the chargeability of an uncoated particle. The
Appellant's disclosure does not describe such a method and would not have
conveyed to an artisan that Appellant had possession of such a method. As
more fully explained in the Answer, this is because Appellant's disclosure
describes a method wherein the ionomer coating enhances or increases the
chargeability of, or reverses the polarity of, particles which, in the absence
of ionomer coating, have no or weak chargeability such that they would be
of little or no utility in electrostatic imaging (Specification 6-7).
Similarly, independent claim 33, as well as the claims which depend
therefrom, encompass a method wherein the ionomer coating enhances
particle chargeability to an extent that the coated particles can be used in a
particular process for electrostatic development of electrostatic images but
not in other electrostatic development processes. Again, Appellant's
disclosure would not have conveyed to an artisan that Appellant had
possession of a method wherein the coated particles were provided with
enhanced chargeability adequate for one particular process but not another.
As detailed above and in the Answer, the Specification and Drawing for this
application describe only increasing or enhancing particle chargeability or
reversing particle polarity with respect to electrostatic development
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processes in general, as opposed to achieving such desiderata for one
particular process but not another.
In support of written description compliance, the Appellant refers to
various disclosures in the Specification and Drawing which describe
achieving the earlier discussed desiderata. Clearly, however, these
disclosures do not expressly describe the specific methods discussed above
which are encompassed by the rejected claims. Moreover, while the
Appellant contends that an artisan would understand the application
disclosure to include such specific methods, no evidence of any kind has
been submitted in support of this contention.
Under these circumstances, it is our determination that the Examiner
has established a prima facie case of non-compliance with the written
description requirement of § 112 which the Appellant has failed to rebut
with persuasive argument or evidence to the contrary. We hereby sustain,
therefore, the Examiner's § 112, first paragraph, rejection of claims 32-46.

The § 103 Rejections
With respect to each of these rejections, the Examiner states that
Uytterhoeven does not disclose a pigmented polymer and does not disclose a
charge director in the process of making liquid toner (Answer 6, 9). The
Examiner relies on the additionally applied references to support his
conclusion that it would have been obvious for an artisan to use in the toner
producing method of Uytterhoeven pigmented polymer particles (e.g., rather
than carbon black particles) as well as a charge director. In the Examiner's
view, an artisan would have so combined the applied reference teachings in
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order to obtain the stable (i.e., enhanced) particle charge associated with
Uytterhoeven's anionic polymer (i.e., ionomer) coating (Uytterhoeven 1-2)
and the benefits associated with the pigmented polymer particles and charge
director of the other applied references.
The Appellant argues that an artisan would have had no motivation to
use the pigmented polymer particles of the prior art (i.e., Whitbread or
Schaffert) as the coloring substance on which Uytterhoeven applies anionic
polymer (i.e., ionomer). Reply Br. 9-11. We do not agree.
A teaching, suggestion, or motivation to combine the relevant prior art
teachings does not have to be found explicitly in the prior art, as the
teaching, suggestion, or motivation may be implicit from the prior art as a
whole. In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 cited with
approval in KSR Int'l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385
(2007).
An artisan would have been motivated to combine the reference
teachings in the proposed manner for the reason discussed above. This
determination is reinforced by the fact that Uytterhoeven expressly discloses
coating color substance particles of, not only carbon black but also, organic
pigment dyes (i.e., pigmented polymer particles). Uytterhoeven 11-12.
The Appellant's remaining arguments concerning various claim
features have been successfully rebutted by the Examiner on pages 17-19 of
the Answer, and we adopt these rebuttals as our own.
In light of the foregoing, we also sustain the § 103 rejection of claims
32-44 and 46 over Uytterhoeven, Whitbread, Diamond, Metcalfe, and
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Wagner as well as the § 103 rejection of claims 30-44, and 46 over
Uytterhoeven, Schaffert, Diamond, Metcalfe, and Wagner.

Conclusion
The decision of the Examiner 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)(iv)(effective Sept.
13, 2004).
AFFIRMED

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CATHERINE Q. TIMM, concurring
I agree with my colleagues that the decision of the Examiner to reject
claims 32-46 under 35 U.S.C § 112, ¶ 1 should be sustained. However, my
reasoning differs.
The Examiner has the initial burden of presenting evidence or reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims. In re Wertheim, 541 F.2d
257, 263, 191 USPQ 90, 97 (CCPA 1976). The Examiner here points out
the Specification only discloses using pigmented polymer particles with
weak or no chargeability or using particles which have reverse polarity
(Answer 3-4; Specification 4:35-5:1, 5:11-16, 5:30-34, 5:37-6:3; 6:32-7:30)
whereas claims 32 and 46 do not limit the level of chargeability of the
pigmented polymer particles (Answer 3-4). The Examiner’s claim
interpretation is reasonable in light of the fact that the step of dispersing the
pigmented polymer particles does not include any language limiting their
chargeability. Appellant contends that “only an increase in the charge is
defined, since claims 32 and 46 define the coating as providing a sufficient
chargeability, indicating that it did not have same without the coating.” (Br.
6). We cannot say that the language cited by Appellant is sufficient to show
that the Examiner’s interpretation of the claims is unreasonable. The fact
that the coating provides to the particles a chargeability sufficient to give the
toner particles the given particle conductivity does not foreclose the
possibility that the pigment particles have themselves a sufficient
chargeability to allow imaging.
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By pointing to the fact that a claim reads on embodiments outside the
scope of the description, the Examiner has satisfied the initial burden in
support of the written description rejection. Appellant thus has the burden of
showing why persons skilled in the art would recognize in the disclosure a
description of the invention defined by the claims. Wertheim, 541 F.2d at
257, 263, 191 USPQ 90 at 97. Appellant merely points to portions of the
Specification disclosing pigmented polymer particles having some
conductivity and states that it would be clear to a person of ordinary skill in
the art that the invention is concerned with taking toner particles that are
somewhat chargeable and increasing their chargeability (Br. 6). But this
misses the point. The Examiner’s rejection is based on the fact that the
claims encompass dispersing particles with higher than weak chargeability
and then applying the coating such that the coating provides a chargeability
that is sufficient for imaging yet the same or lower than that of the initially
dispersed particles. Nor has Appellants provided any evidence to support
what those of ordinary skill in the art would have thought the Specification
discloses. Appellant has not met the burden in rebuttal.
While a description of the invention which is narrower than the
subject matter encompassed by the claims will not always result in a failure
to fulfill the written description requirement of 35 U.S.C. § 112, first
paragraph, see In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284
(CCPA 1973), “the case law does ‘not compel the conclusion that a
description of a species always constitutes a description of a genus of which
it is a part’” either. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473,
1479, 45 USPQ2d 1498, 1503 (Fed. Cir. 1998)(quoting Regents of the Univ.
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of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405
(Fed. Cir. 1997)). “It is a truism that a claim need not be limited to a
preferred embodiment. However, in a given case, the scope of the right to
exclude may be limited by a narrow disclosure.” Id. Each case turns on its
own facts. In re Smythe, 480 F.2d at 1382, 178 USPQ at 284.
With regard to claim 33, the Examiner satisfies the initial burden by
pointing out that claim 33 introduces a new concept not present in the
Specification, namely the concept that the pigment polymer particles can
have chargeability suitable for some imaging processes, but be unsuitable for
others. While the Specification does discuss using pigment particles with
weak chargeability, it defines such particles as those that “although the
skilled person would be aware that a weak charge could be imparted to the
particles it would be apparent that this property would be of little or no
utility so far as practical applications in electrostatic imaging were
concerned.” This suggests that the weak chargeability is unsuitable for any
imaging application, not just for a given application. The introduction of a
new concept indicates that there is no support for the claim language. See
In re Anderson, 471 F.2d 1237, 1244, 176 USPQ 331, 336 (CCPA
1973)(“The question, as we view it, it not whether ‘carrying’ was a word
used in the specification as filed but whether there is support in the
specification for employment of the term in a claim; is the concept of
carrying present in the original disclosure?”). This analysis satisfies the
Examiner’s burden thus shifting the burden to Appellant.
Appellant argues that claim 33 defines the pigment particles as being
unusable in a given process since they do not charge enough and states that
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this is “exactly what a person of the art would have understood as the utility
of the methodology or chargeability increase taught by the disclosure and
shown in the figures.” (Br. 7). But Appellant does not identify where the
Specification discusses the concept of suitability for a given process, but not
suitable for others. Nor does Appellant provide objective evidence of what
those of ordinary skill in the art would have understood when reading the
Specification. Therefore, we cannot say that Appellant has met the burden
in rebuttal.
With regard to the § 103 rejections, I agree with the determination and
reasoning of my colleagues in full.

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