Ex Parte Botros et al

Patent Trial and Appeal Board

Dec 17, 2012

12251662 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/251,662 10/15/2008 Raouf Botros 92835AAJA 6009
1333 7590 12/17/2012
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
HUHN, RICHARD A
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
12/17/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAOUF BOTROS, TOM N. HUANG,
RUSSELL H. TOBIAS, and ERIC A. FOSSUM
____________

Appeal 2011-012279
Application 12/251,662
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and
GRACE K. OBERMANN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejections under 35 U.S.C. § 103(a) of claims 1, 2, and 4-8 as unpatentable
over Botros (US 5,425,805 patented June 20, 1995) in view of Bailey (US
4,197,135 patented April 8, 1980), Ochiai (US 2001/0003731 A1 published
June 14, 2001), and Dickson (US 3,262,791 patented July 26, 1966) and of
claims 11-13, 15-19, 26, and 27 as unpatentable over these references and

Appeal 2011-012279
Application 12/251,662

2
further in view of Aulick (US 5,223,028 patented June 29, 1993). We have
jurisdiction under 35 U.S.C. § 6.

We REVERSE.

Appellants claim a dye-based inkjet ink composition comprising a
liquid vehicle, a dye, and a water-soluble branched polyethyleneimine
comprising amino groups which have been alkylated wherein at least 1% of
the primary amino groups are alkylated with an alkyl group having at least 4
carbon atoms and wherein 1-10 mole percent of the substitutable hydrogens
of the amino groups are alkylated with an alkyl group having at least 4
carbon atoms (claim 1).

Representative claim 1, the sole independent claim on appeal, reads as
follows:
1. A dye-based inkjet ink composition for printing on a substrate,
comprising a liquid vehicle, an anionic dye soluble in the liquid vehicle, and
a water soluble branched polyethyleneimine comprising amino
groups which have been alkylated, wherein the branched polyethyleneimine
prior to alkylation comprises a combination of primary, secondary, and
tertiary amino groups, and wherein at least 1% of the primary amino groups
of the branched polyethyleneimine polymer are alkylated with at least one
alkyl group having at least 4 carbon atoms, and wherein 1-10 mole percent
of the substitutable hydrogens of the amino groups of the branched
polyethyleneimine are alkylated with an alkyl group having at least 4 carbon
atoms.

The Examiner concedes that the ink composition of Botros does not
include the branched polyethyleneimine having alkylated amino groups

Appeal 2011-012279
Application 12/251,662

3
defined by independent claim 1 including the claimed feature wherein 1-10
mole percent of the substitutable hydrogens of the amino groups are
alkylated (Ans. 5). The Examiner concludes, inter alia, that it would have
been obvious to alkylate the polyethyleneimines of Botros "in an appropriate
amount as suggested by Dickson, including alkylating at least 1% . . . of the
primary amino groups and 1-10 mol % of the substitutable hydrogens of the
polyethyleneimine, so as to produce desired end results" (id. at 7).

As correctly explained by Appellants, Dickson discloses substituted
polyethyleneimines which have a broad spectrum of uses, for example, as
penetrating agents and dyeing assistants in the textile industry but not as
ingredients in an inkjet ink composition (App. Br. para. bridging 5-6).
Appellants argue that "no teaching or guidance is provided [by Dickson] so
as to direct any specific degree of alkylation for polyethyleneimine polymers
employed in an inkjet ink composition for any reason" (id. at 7; underlining
deleted).

The Examiner responds to this argument by acknowledging that the
Specification discloses benefits resulting from the degree of alkylation
required by claim 1 (Ans. para. bridging 13-14). The Examiner further
acknowledges that "the examples of alkylated polyethyleneimines in
Dickson may employ a larger degree of alkylation than is presently claimed"
(id. at para. bridging 14-15) but urges that "such a degree of alkylation in the
examples does not detract from either the broader teaching in Dickson that
the degree of alkylation is dependent upon the particular application of the

Appeal 2011-012279
Application 12/251,662

4
polymer, or from the motivation to optimize the degree of alkylation based
upon the particular application of the polymer" (id.).

The Examiner's position is not well taken. We recognize that Dickson
discloses "[o]ptimum alkylation will depend on the particular application"
(col. 24, ll. 35-36). However, the Examiner has failed to articulate reasoning
with rational underpinning in support of the conclusion that Dickson's broad
disclosure would have made it obvious for an artisan to alkylate 1-10 mole
percent of the substitutable hydrogens on the amino groups of the
polyethyleneimine in Botros' inkjet ink composition as required by claim 1.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness") quoted with
approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).

The Examiner's failure is aggravated by Appellants' correct
observation that the substituted polyethyleneimines of Dickson are not
disclosed as useful in inkjet ink compositions. Based on the record before
us, we agree with Appellants' argument that Dickson provides no teaching or
suggestion of any specific degree of amino group alkylation in
polyethyleneimines for use in an inkjet ink composition. For this reason, we
believe the Examiner has unwittingly applied impermissible hindsight in
concluding that Dickson would have suggested alkylating 1-10 mole percent

Appeal 2011-012279
Application 12/251,662

5
of the substitutable hydrogens on the amino groups of Botros'
polyethyleneimines.

Therefore, the Examiner's § 103 rejections are not sustained.

The decision of the Examiner is reversed.

REVERSED

sld