Ex Parte Asakawa

Board of Patent Appeals and Interferences

Dec 14, 2009

10933924 (B.P.A.I. Dec. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STUART D. ASAKAWA
____________

Appeal 2009-006889
Application 10/933,924
Technology Center 1700
____________

Decided: December 14, 2009
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

Appeal 2009-006889
Application 10/933,924

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-6 and 39-46.
Claim 1 is illustrative:
A specialty ink-jet ink, comprising:
an ink vehicle;
a dye; and
from 1% to 10% by weight of particulates having directionally
dependent light reflective properties dispersed within the ink vehicle such
that when the ink-jet ink is dried on a desired substrate, a multi-colored
reflected light is emittable in the presence of a light source due to diffraction
of light off of the particulates,
said specialty ink-jet ink being ink-jettable.

The Examiner relies upon the following references as evidence of
obviousness:
Moffatt 5,919,293 Jul. 6, 1999
Davis 4,010,293 Mar. 1, 1977
Phillips 5,279,657 Jan. 18, 1994
Jones 2003/0226897 A1 Dec. 11, 2003

Appellant’s claimed invention is directed to an ink composition for an
ink-jet printer comprising an ink vehicle, a dye and particulates, such as
mica, having directionally dependant light reflective properties.
Appealed claims 1-3 and 40-43 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Moffatt in view of Davis. Claims 1-3
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moffat in
view of Jones. Claims 4-6, 39 and 44-46 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Moffatt in view of Davis and Phillips.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner
2
Appeal 2009-006889
Application 10/933,924

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 essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.
There is no dispute that Moffatt, like Appellant, discloses an ink
composition for an ink-jet printer comprising the presently claimed ink
vehicle and dye in the claimed amount, i.e., 0.1-10 wt % colorant (see, col.
4, ll. 36-42). As recognized by the Examiner, Moffatt does not specifically
teach that the pigment may be Appellant’s particulates. However, both
Davis and Jones evidence that it was known in the art to use Appellant’s
particulates in printing ink compositions. Accordingly, 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 use either the mica particulates of Davis or the
pearlescent pigments of Jones in the ink composition of Moffatt. We agree
with the Examiner that since Moffatt teaches that one or more colorants may
be used in the ink composition, and the colorants may be dyes and pigments,
it would have been obvious for one of ordinary skill in the art to use both a
dye and pigment in a total amount not greater than 10 wt %, as presently
claimed.
Appellant submits that since Davis uses an absorptive material that
results in certain wavelengths being absorbed rather than reflected, the
reference “is directed at making an ink that emits fewer colors in order to
increase the intensity of those few” (Br. 15, 2nd para.). However, as pointed
out by the Examiner, this argument is not germane to the claimed subject
matter which recites particulates that emit multi-colored reflected light. The
3
Appeal 2009-006889
Application 10/933,924

admittedly few colors emitted by the particulates of Davis satisfy the claim
requirement for multi-colored reflected light.
Appellant also maintains that “Davis teaches away from the present
invention in recommending a high percentage of iridescent pigment in its
composition” (Br. 17, 1st para.). As set forth by the Examiner, Moffatt
establishes the obviousness of using 10 percent or less of the pigment in the
composition.
Appellant submits that the present claims recite a colorant and the
particulates at 1-10 weight percent whereas “Moffatt only teaches a colorant
at 1% - 10% by weight” (Br. 18, 2nd para.). However, as set forth above, we
agree with the Examiner that Moffatt fairly teaches a combination of dye
and pigment in an amount of 0.1-10 wt %.
As for a separately argued claim 41, we agree with the Examiner that
Davis teaches a plurality of pigments attached to the particulates.1
Appellant does not present a separate substantive argument against the
§ 103 rejection citing Moffatt in view of Davis and Phillips.
As a final point, we note that Appellant basis no argument upon
objective evidence of nonobviousness, 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)(1)(iv).
AFFIRMED

1 Appellant presents a separate argument only for claim 41. Accordingly, the
remaining claims on appeal stand or fall together.
4
Appeal 2009-006889
Application 10/933,924

tc

HEWLETT-PACKARD COMPANY
INTELLETUAL PROPERTY ADMINISTRATION
3404 E. HARMONY ROAD
MAIL STOP 35
FORT COLLINS, CO 80528
5