Ex Parte Almog

Board of Patent Appeals and Interferences

Aug 30, 2010

10039481 (B.P.A.I. Aug. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YAACOV ALMOG
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Appeal 2010-002842
Application 10/039,481
Technology Center 1700
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Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 47, 51-58, 63, and 65-74. We have jurisdiction
under 35 U.S.C. § 6.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-002842
Application 10/039,481

Appellant claims an electrostatic imaging process which uses liquid
toners (claim 47) and liquid toners for such a process (claim 63), wherein the
liquid toner comprises a charge director and toner particles comprising a
pigmented polymer which is unchargeable or weakly chargeable by the
charge director and wherein the particles are coated with an ionomer which
increases the chargeability of the particles to greater than 7 pmho/cm.
Further details regarding the Appellant's claimed subject matter are set
forth in representative claims 47, 70, and 71:

47. An electrostatic imaging process comprising:

(A) forming a charged latent electrostatic image on a photo
conductive surface; and

(B) applying to the photoconductive surface toner particles from a
liquid toner, thereby forming an image, wherein the liquid toner comprises:

(a) an insulating non-polar carrier liquid;

(b) at least one charge director; and

(c) toner particles dispersed in the carrier liquid and the at least
one charge director, the particles comprising:

(i) a core material comprising a pigmented polymer
suitable for use as a toner material in an electrostatic image
development application, which is unchargeable by the at least
one charge director or which is weakly chargeable by the at
least one charge director;

(ii) a coating of at least one ionomer component in an
amount effective to impart an enhanced chargeability to the
toner particles to an extent that the particles can be used to
develop a latent electrostatic image in the electrostatic image
development application; and
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Appeal 2010-002842
Application 10/039,481

(iii) wherein the coating of the at least one ionomer
increases the chargeability of the toner particles to greater than
7 pmho/cm.

70. The electrostatic imaging process of Claim 47 wherein the
coating of the at least one ionomer increases the chargeability of the toner
particles by at least 15 pmho/cm.

71 . The electrostatic imaging process of Claim 47 wherein the
coating of the at least one ionomer increases the chargeability of the toner
particles by 15 to 161 pmho/cm.

The Examiner rejects all appealed claims under the first paragraph of
35 U.S.C. § 112 for failing to comply with the written description
requirement (Answer 3-5).
We will sustain this rejection for the reasons well stated by the
Examiner in the Answer (id. at 3-11). We add the following comments for
emphasis.
The test for compliance with the written description requirement is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date. Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010). Because a patent is not a reward for
the search but compensation for its successful conclusion, requiring a written
description of the invention limits patent protection to those who actually
perform the difficult work of "invention"-that is, conceive of the complete
and final invention with all of its claimed limitations-and disclose the fruits
of that effort to the public. Id., 598 F.3d at 1353.
For the reasons detailed in the Answer, Appellant's Specification
disclosure would not reasonably convey to those skilled in the art that
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Appeal 2010-002842
Application 10/039,481

Appellant had possession of the representative claim 47 limitation of
increasing the chargeability of weakly chargeable and especially
unchargeable particles to a range "greater than 7 pmho/cm." As correctly
pointed out by the Examiner, this range includes an undisclosed lower limit
of slightly greater than 7 (e.g., 7.01) and an undisclosed upper limit which
has no boundary (Ans. 4). Likewise, the Specification would not convey
possession of the representative claim 70 range of "at least 15 pmho/cm"
since this range includes an unbounded upper limit which has not been
disclosed for either unchargeable or weakly chargeable particles and a lower
limit which has not been disclosed for unchargeable particles. Finally, the
Examiner correctly determines that the Specification would not convey
possession of the numerical range defined by representative claim 71 or the
similar numerical ranges defined by claims 72-74 because the ranges are
undisclosed with respect to the unchargeable-particles embodiment
encompassed by these claims.
Concerning the lower limit of the claim 47 range, Appellant argues
that "no requirement exists for the specification to disclose a specific value
of just greater than 7 pmho/cm" (App. Br. 9). Appellant is incorrect. The
written description requirement of § 112 requires the Specification
disclosure to convey that Appellant had possession of this lower limit value.
For the reasons given by the Examiner, Appellant's Specification fails to
convey such possession. Indeed, no Specification disclosure has been
identified by Appellant which would convey to those skilled in the art that
the lower limit value would be even capable of performing the electrostatic
imaging function required by the appealed claims.
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Appeal 2010-002842
Application 10/039,481

As for the unbounded upper limit of the claim 47 range, Appellant
concedes that an actual upper boundary for particle conductivity might exist
(id. at 10). Nevertheless, Appellant argues that "[n]o requirement exists for
Appellant to identify all possible combinations of ionomer, particle, charge
director, etc. compositions and determine which has the highest theoretical
upper boundary for particle conductivity merely to state a bounded upper
range in the claims" (id. at 11). Appellant again is incorrect for reasons
analogous to those set forth above and in the Answer.
Appellant further argues that "the broad disclosure of the specification
clearly encompasses any amount of chargeability enhancement of the
claimed toner particles, whether unchargeable or weakly chargeable" (Reply
Br. para. bridging 4-5). According to Appellant, "[s]ince the specification
broadly discloses any increase, it follows that Appellant may properly
narrow the range to encompass the subset including an increase to greater
than 7 pmho/cm, consistent with the examples" (id. at 6). Contrary to
Appellant's belief, a broad disclosure does not necessarily provide written
description support for more narrow subject matter. See In re Smith, 458
F.2d 1389, 1395 (CCPA 1972) (narrow claims were properly determined to
lack descriptive support even assuming broader claims would have been
descriptively supported). This is because the written description
requirement limits patent protection to those who actually conceive of the
complete and final invention with all its claimed limitations and disclose the
fruits of that effort to the public. Ariad, 598 F.3d at 1353.
Finally, for the reasons given by the Examiner and based on the legal
rationale set forth above, we perceive no convincing merit in Appellant's
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Appeal 2010-002842
Application 10/039,481

arguments concerning the range limitations of representative claims 70 and
71 (as well as claims 72-74).
In light of the foregoing, we sustain the Examiner's rejection of all
appealed claims as failing to comply with the written description
requirement in the first paragraph of § 112.
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) (2008).

AFFIRMED

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