Ex Parte Cagle

Patent Trial and Appeal Board

Aug 23, 2016

11249606 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111249,606 10/13/2005
22879 7590 08/25/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Phillip C. Cagle
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82208150 3762
EXAMINER
FAISON, VERONICAF
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
08/25/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILLIP C. CAGLE
Appeal2015-000713
Application 11/249,606
Technology Center 1700
Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
JAMES C. HOUSEL, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 1, 2, 4--12, 14, and 40-43. Claims 15-18 and 20-
39 are also pending but have been withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated October 18, 2013 ("App. Br."). The limitations at issue are
italicized.
1. A marking fluid, comprising:
a dispersion of pigment in a liquid vehicle, the liquid vehicle
compnsmg:
Appeal2015-000713
Application 11/249,606
a water portion;
a non-water portion comprising one or more solvents
having Hansen hydrogen bonding partial solubility parameters of
about 16 MPa0·5 or less; and
a polymeric binder dispersed as particulates in said liquid
vehicle;
wherein the non-water portion is capable of softening vinyl in
the absence of the water portion and without dissolving the vinyl;
wherein the non-water portion is in a sufficient concentration
relative to the water portion that, upon removal of the water portion,
a portion of the non-water portion persists in the marking fluid and
facilitates softening of a vinyl substrate without dissolving the vinyl
substrate; and
wherein the persisting portion of the non-water portion has a
composite Hansen hydrogen bonding partial solubility parameter of
about 16 MPa0·5 or less.
App. Br. 19.
The claims on appeal stand rejected as follows:
(1) claims 1, 2, 5-8, and 40 under 35 U.S.C. § 102(b) as anticipated by
Chen et al.; 1 and
(2) claims 1, 2, 4--12, 14, and 40-43 under 35 U.S.C. § 103(a) as
unpatentable over Chen.
B. DISCUSSION
1. Claim 1
The Examiner finds Chen discloses an ink composition for printing on
various substrates including vinyl. The Examiner finds the aqueous carrier
medium for the ink composition is water or a mixture of water and at least one
water miscible co-solvent, such as acetone, dimethylsulfoxide, dipropylene glycol
1 US 6,764,173 B2, issued July 20, 2004 ("Chen").
2
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Application 11/249,606
methyl ether, and nitrogen-containing cyclic compounds including 2-pyrrolidone,
N-methyl-2-pyrrolidone, and 1,3-dimethyl-2-imidazolidoinone. Ans. 3--4;2 see
also Chen, col. 8, 11. 14--44.
The Appellant argues:
Chen does not teach or suggest "wherein the non-water portion [of the
liquid vehicle3] is in a sufficient concentration relative to the water
portion that, upon removal of the water portion, a portion of the non-
water portion persists in the marking fluid and facilitates softening of
a vinyl substrate without dissolving the vinyl substrate."
App. Br. 10 (emphasis added). 4
We recognize that Chen does not expressly disclose the claim limitation at
issue. Nonetheless, there is no dispute on this record that Chen discloses some of
the same co-solvents identified in the Appellant's Specification as satisfying the
requirements of claim 1 (i.e., having Hansen hydrogen bonding partial solubility
parameters of about 16 MPa0·5 or less and capable of softening, but not dissolving,
vinyl). The Examiner finds those co-solvents include dipropylene glycol methyl
ether (i.e., Dowanol® DPM) having a Hansen hydrogen bonding partial solubility
parameter of 11.2 MPa0·5 and 2-pyrrolidone having a Hansen hydrogen bonding
partial solubility parameter of 11.3 MPa0·5 . Ans. 3--4; see also Spec. 4 (Table 1 A);
Spec. if 14 (graphs illustrated in Figures IA and IB "suggest that a hydrogen
bonding parameter less than about 13 MPa0·5 acts as a good predictor for vinyl
softening").
2 Examiner's Answer dated January 17, 2014.
3 As recited in claim 1, the non-water portion of the liquid vehicle comprises one or
more solvents having Hansen hydrogen bonding partial solubility parameters of
about 16 MPa0·5 or less. App. Br. 19.
4 The Appellant makes a similar argument against the rejection of claims 7, 9, and
14. See App. Br. 14, 15, 17. For the reasons set forth, infra, the argument is not
persuasive of reversible error.
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Appeal2015-000713
Application 11/249,606
As for the amount of co-solvent used, the Appellant discloses:
[A Jn amount of the solvent mixture is chosen such that a liquid
vehicle containing the solvent mixture and water would have a
persisting portion of the solvent mixture after driving off the water
through evaporation. As a guideline, an amount sufficient to produce
a persisting portion of a solvent mixture following evaporation of
water content may be a solvent mixture of about 5 wt% or greater of
the liquid vehicle.
Spec. i-f 14 (emphasis added); see also Spec. i-f 17 (disclosing that "[a] typical liquid
vehicle may contain from about 5 wt% to 30 wt% of co-solvents in accordance
with the embodiments of this disclosure"). The range disclosed in the Appellant's
Specification substantially overlaps the range disclosed in Chen. See Chen, col. 8,
11. 50-52 ("inks contain from about 5 to about 60 weight% of water miscible
organic solvent [i.e., co-solvent] based on the total weight of the aqueous carrier
medium").
Based on the foregoing, it is reasonable to find that dipropylene glycol
methyl ether or 2-pyrrolidone, for example, 5 in an amount from about 5 to about 60
weight percent based on the total weight of the aqueous carrier medium, as
disclosed in Chen, is present in a sufficient concentration to facilitate softening of a
vinyl substrate as recited in claim 1. The Appellant has failed to establish
otherwise. 6
5 See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(disclosure of a multitude of effective combinations does not render any particular
formulation less obvious).
6 See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where the claimed and prior
art products "are identical or substantially identical ... the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. . . . Whether the rejection is
based on 'inherency' under 35 U.S.C. § 102, on 'prima facie obviousness' under
35 U.S.C. §103,jointly or alternatively, the burden of proof is the same, and its
4
Appeal2015-000713
Application 11/249,606
The Appellant also argues Chen does not teach or suggest using a
concentration of co-solvent as claimed because Chen uses halogenated monomers.
According to the Appellant:
The use of this type of monomer will improve adhesion on vinyl (i.e.
plasticized polyvinyl chloride). Consequently, one of skill in the art
practicing the teachings of Chen would have no need for a vinyl
swelling or softening solvent as recited in claim 1.
App. Br. 12.
We disagree. As discussed above, Chen teaches that the aqueous carrier
medium for the ink composition may comprise co-solvents, including some of the
same co-solvents disclosed by the Appellant, in an amount that substantially
overlaps the amount disclosed by the Appellant. Moreover, Chen discloses a
swelling mechanism. See Chen, col. 10, 11. 1-5 ("In a preferred embodiment,
heating is employed both during and after printing. Heating will help fluids to
spread on a non-absorbing substrate as well as to accelerate its evaporation.
Heating can also help ink components to penetrate into the non-absorbing substrate
by swelling mechanism.").
As for the rejection under § 102(b ), the Examiner directs our attention to Ink
1 in Chen. Ans. 7. Ink 1 comprises, inter alia, 5% dipropylene glycol methyl
ether (i.e., Dowanol® DPM) and 3% 2-pyrrolidone. Chen, col. 11, 11. 32--43.
Based on the record before us, we find the co-solvents in Ink 1 have Hansen
hydrogen bonding partial solubility parameters of about 16 MPa0·5 or less and the
total amount of the co-solvents (i.e., 8%) falls within the range disclosed by the
Appellant as "an amount sufficient to produce a persisting portion of a solvent
mixture." Spec. i-f 14; Spec. 4 (Table IA). Thus, a preponderance of the evidence
fairness is evidenced by the PTO' s inability to manufacture products or to obtain
and compare prior art products." (footnote omitted)).
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Appeal2015-000713
Application 11/249,606
supports the Examiner's finding that the co-solvents disclosed in Chen are present
in a sufficient concentration as recited in claim 1. 7 See Ans. 7.
For the reasons set forth above and reasons set forth in the Examiner's
Answer, the§ 102(b) rejection of claims 1, 2, 5-8, and 40 and the§ 103(a)
rejection of claims 1, 2, 5-12, 14, 40, and 41 are sustained.
2. Claim 4
Claim 4 depends from claim 1 and recites "wherein the one or more solvents
having a composite Hansen hydrogen bonding partial solubility parameter of about
16 MPa0·5 or less constitute a majority of the non-water portion of the liquid
vehicle." App. Br. 20 (emphasis added).
The Examiner finds Chen discloses that the co-solvent may be one solvent. 8
See Ans. 5---6; Chen, col. 8, 11. 14--16 (disclosing that the aqueous carrier medium is
water or a mixture of water and at least one water miscible co-solvent). When one
co-solvent having a Hansen hydrogen bonding partial solubility parameter as
recited in claim 4 is selected (e.g., dipropylene glycol methyl ether (i.e., Dowanol®
DPM) or 2-pyrrolidone ), that co-solvent would constitute a majority of the non-
water portion of the liquid vehicle as recited in claim 4.
The Appellants have failed to establish otherwise.
3. Claims 42 and 43
Claim 42 depends from claim 1 or claim 9 and recites "wherein an amount
of the one or more co solvents is in a range of 9 wt% to 30 wt% of the liquid
7 See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("The discovery of a new
property or use of a previously known composition, even when that property and
use are unobvious from the prior art, can not impart patentability to claims to the
known composition.").
8 The co-solvent disclosed in Chen corresponds to the claimed non-water portion of
the liquid vehicle.
6
Appeal2015-000713
Application 11/249,606
vehicle." App. Br. 23 (emphasis added). Claim 43 depends from claim 1 and
recites "wherein an amount of the one or more co-solvents is greater than 8 wt% of
the liquid vehicle." App. Br. 23 (emphasis added).
The Appellant argues that "the Action fails to indicate exactly how or where
Chen teaches this subject matter." App. Br. 17, 18. To the contrary, the Examiner
finds Chen's co-solvent may be present in an amount of about 5 to about 60 weight
percent based on the total weight of the aqueous carrier medium. Ans. 9; see also
Chen, col. 8, 11. 50-52. That amount encompasses the range recited in claim 42
and overlaps the range recited in claim 43. See In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) ("even a slight overlap in range establishes a primafacie
case of obviousness").
C. DECISION
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)(l).
AFFIRMED
7