Ex Parte Cagle et al

Board of Patent Appeals and Interferences

Oct 27, 2009

10742109 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PHILLIP C. CAGLE, JOHN GARDNER, and
SHIRLEY LEE
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Appeal 2009-003615
Application 10/742,109
Technology Center 1700
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Decided: October 27, 2009
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Before CHUNG K. PAK, TERRY J. OWENS, and MARK NAGUMO
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-39, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim an inkjet ink. Claim 1 is illustrative:
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1. A latex particulate-containing ink-jet ink configured to have a
stable mean drop velocity range that does not vary more than 40% when
fired from thermal ink-jet architecture, said mean drop velocity range
determined by comparing an initial drop velocity fired at 0.2 kHz with
comparison drop velocities fired at faster firing frequencies up to and
including 10 kHz, said ink-jet ink including

a) an aqueous liquid vehicle including 0.5 wt% to 10 wt% of an
additive selected from the group consisting of:

i) a C4 to C8 1,2-alkanediol,

ii) a high HLB nonionic surfactant or dispersant having at least
15 ethylene oxide units and an HBL value of at least 15, and

iii) mixtures thereof;

b) latex particulates dispersed in the liquid vehicle, said latex
particulates including neutralized surface acid groups; and

c) colorant solvated or dispersed in the liquid vehicle.

The References
Ober 6,197,122 B1 Mar. 6, 2001
Cheng 6,239,193 B1 May 29, 2001
Hayashi 6,500,248 B1 Dec. 31, 2002
Lau 2003/0149133 A1 Aug. 7, 2003
Valentini (Valentini ‘629) 2003/0184629 A1 Oct. 2, 2003
Oikawa 6,652,055 B2 Nov. 25, 2003
Valentini (Valentini ‘730) 2005/0020730 A1 Jan. 27, 2005
(filed May 11, 2004; provisional application filed May 19, 2003)1
The Rejections
The claims stand rejected as follows: claims 1-39 under
35 U.S.C. § 112, first paragraph, enablement requirement; claims 1-3, 6, 7,

1 There is no dispute as to whether Valentini’730 is prior art.
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9-17, 20-25, and 27-33 under 35 U.S.C. § 102(e) over Lau; claims 1-3, 7, 9,
11, 13-17, 21, 23-25, 28, and 30-33 under 35 U.S.C. § 102(e) over
Valentini ‘730 as evidenced by Valentini ‘629;2 claims 1, 4, 5, 8, 9, 11-15,
18, 19, 21, 23, 24, 26, and 28-33 under 35 U.S.C. § 102(b) over Cheng as
evidenced by Ober;3 claims 1-3, 7, 11-17, 23-25, and 30-33 under
35 U.S.C. § 102(e) over Hayashi; claims 6, 20, and 27 under
35 U.S.C. § 103 over Valentini ‘730 or Hayashi, in view of Lau; claims 34-
39 under 35 U.S.C. § 103 over Lau in view of Oikawa; and claims 34-37
and 39 under 35 U.S.C. § 103 over Cheng in view of Oikawa.
OPINION
We affirm the Examiner’s rejections.
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that there is reason to believe that Lau, Valentini ‘730,
Hayashi or Cheung discloses an inkjet ink composition having a stable mean
drop velocity range that does not vary more than 40% when fired at
frequencies from 0.2 kHz to 10 kHz (independent claims 1, 15, and 24) or
20 kHz (independent claim 34) from thermal inkjet architecture?
Findings of Fact
Lau discloses an inkjet ink comprising a polymer binder as particles
dispersed in an aqueous medium, a colorant, and a penetrant which can be

2 The Examiner relies upon Valentini ‘629, which is incorporated by
reference in Valentini ‘730 (¶ 0054), as evidence that the polyurethane latex
in Valentini ‘730 (¶ 0053) has neutralized surface active groups (Ans. 7).
3 The Examiner relies upon Ober (col. 27, l. 28) as evidence that the
Triton® X-705 in Cheng (col. 7, l. 24; Example 1A) has 70 ethylene oxide
units (Ans. 7-8).
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1,2 hexanediol in an exemplified amount of 1 wt% (abstract; ¶¶ 0012, 0034,
0039, 0053). In an example the polymer dispersion is neutralized with
ammonia (¶ 0066).
Valentini ‘703 discloses a latex inkjet ink comprising a colorant and a
penetrant which can be a 1,2-alkanediol, typically in an amount of about 1 to
about 15 wt%, more typically about 2 to about 10 wt% (abstract; ¶¶0043-44,
0053-54). Valentini ‘629, which is incorporated by reference in
Valentini ‘730 (¶ 0054), discloses a polyurethane dispersion having
neutralized acid groups (¶¶ 0036, 0077).
Hayashi discloses an inkjet ink comprising a water-soluble emulsion,
a 1,2-alkanediol in a preferred amount of about 3 to 10 wt%, and a colorant
(col. 3, ll. 42, 64-67; col. 4, l. 19-20; col. 7, ll. 4-17; col. 8, ll. 36-38).
Cheng discloses an inkjet ink comprising a polymer latex emulsion
stabilized with a nonionic surfactant having a hydrophilic/lipophilic balance
(HLB) of about 16 to about 21 in an amount of about 0.5 to about 10 wt%
based on the polymer resin contained in the polymer latex emulsion, a
penetrant which can be 1,2-hexanediol present in an amount of about 0.1
to 20 wt%, and a colorant (col. 1, ll. 45-66; col. 7, ll. 44-47; col. 9, ll. 14-19;
col. 11, ll. 7-10, 15-18; col. 13, ll. 1-11). Ober (col. 27, l. 29) indicates that
Cheung’s Triton® X-705 nonionic surfactant which has an HLB of 18.7
(col. 7, l. 24) has 70 ethylene oxide units.
Oikawa discloses an inkjet printing apparatus and method wherein
“’[t]he number of nozzles of the printing head may be set to as large as
several hundred or several thousand nozzles and the heater driving
frequency may be set to several tens of kHz so as to meet further demands
for faster printing and higher resolution” (col. 2, ll. 19-23).
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Analysis
The Appellants argue that the inks of Lau, Valentini ‘730, Hayashi
and Cheung “were not configured particularly for use with thermal inkjet
architecture” (Br. 21).
Each of the references indicates that the ink is useful with thermal
inkjet architecture (Lau, ¶ 0062; Valentini ‘730, ¶ 0060; Hayashi, col. 1,
ll. 23-28; Cheung, col. 14, ll. 39-45).
The Appellants argue that none of the references discloses the
Appellants’ recited stable mean drop velocity range (Br. 21). The
Appellants argue that “[i]t is the specific combination of ingredients
claimed, put together as exemplified or in another similar manner, which
leads to the claim limitation of the stable mean drop velocity that has been
discovered by the Appellants” (Br. 22). The Appellants argue that “the
Examiner must provide extrinsic evidence making it clear that the claimed
result (here, a drop velocity range that drops no more than 40% over a 0.2 –
10 kHz range) is necessarily present in the cited disclosure.” See id.
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977):
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, 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. [citation omitted] Whether the
rejection is based on “inherency” under 35 USC 102, on “prima facie
obviousness” under 35 USC 103, jointly or alternatively, the burden
of proof is the same, and its fairness is evidenced by the PTO’s
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inability to manufacture products or to obtain and compare prior art
products.

It appears undisputed that each of Lau, Valentini ‘730, and Hayashi
discloses an ink jet ink composition that includes the Appellants’ required
latex particulates, additive in the required amount, and colorant (required by
independent claims 1 and 24).
The Appellants argue that Cheung’s exemplified amount of surfactant
is only 0.015 to 0.045 wt% of the ink composition, which is a full order of
magnitude less than the 0.5 wt% minimum amount required by the
Appellants’ independent claims, and that Cheung does not appreciate any
benefit of a larger amount (Br. 23-25).
Cheung is not limited to its examples. See In re Fracalossi, 681 F.2d
792, 794 n.1 (CCPA 1982); In re Kohler, 475 F.2d 651, 653 (CCPA 1973);
In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re Bozek, 416 F.2d 1385,
1390 (CCPA 1969). Cheung teaches that the polymer latex emulsion can be
about 20 wt% of the ink and that the nonionic surfactant can be about
10 wt% of the polymer latex emulsion (col. 7, ll. 44-47; col. 11, ll. 7-10).
Hence, the nonionic surfactant can be 2 wt% of the ink, and that amount
falls within the scope of the Appellants’ independent claims.
The Appellants argue that Cheung’s surfactant is associated with the
latex particle (Br. 24).
Because Cheung’s nonionic surfactant is present in the same type of
composition as that of the Appellants, i.e., a latex polymer emulsion, it
appears that the nonionic surfactant is present in the same manner as in the
Appellants’ composition.
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Thus, there is sound basis for believing that the ink in each of Lau,
Valentini ‘730, Hayashi, and Cheung has the properties of the Appellants’
claimed ink including a stable mean drop velocity range that does not vary
more than 40% when fired at frequencies from 0.2 kHz to 10 kHz
(independent claims 1, 15, and 24) or 20 kHz (independent claim 34) from
thermal inkjet architecture. Because the Patent and Trademark Office does
not have the ability to manufacture products or obtain and compare prior art
products, see Best, 562 F.2d at 1255, the burden has shifted to the Appellants
to provide evidence that the inks in Lau, Valentini ‘730, Hayashi, and
Cheung do not have that property. The Appellants have not carried that
burden.
The Appellants argue that Oikawa, while suggesting the possibility of
high frequency printing, does not disclose an ink having a stable drop
velocity over a range that includes low and high frequencies (Br. 28-29).
As discussed above, there is sound reason to believe that the inks of
Lau and Cheung, with which Oikawa is combined, have the properties of the
Appellants’ ink including stable drop velocity over a range from low to high
frequencies. The Appellants have not provided evidence to the contrary.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that there is reason to believe that Lau, Valentini ‘730,
Hayashi or Cheung discloses an inkjet ink composition having a stable mean
drop velocity range that does not vary more than 40% when fired at
frequencies from 0.2 kHz to 10 kHz (independent claims 1, 15, and 24) or 20
kHz (independent claim 34) from thermal inkjet architecture.

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Rejection of claims 1-39 under 35 U.S.C. § 112,
first paragraph, enablement requirement
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the Appellants’ Specification fails to provide enabling
support for the scope of the Appellants’ claims?
Analysis
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984).
The Examiner argues (Ans. 3):
The instant specification does not give sufficient guidance regarding
molecular weights of the latex polymers, amounts of the recited
ingredients, types of latex polymers, colorants and limitations of
ingredients encompassed by the open language of the instant claims.
All of these are expected to materially affect the stable mean drop
velocity in a manner unpredictable to the ordinary skilled artisan. It
would require an infinite amount of experimentation with these
parameters and any other parameters the ordinary skilled artisan
determines affects the claimed configuration.

The Appellants argue (Br. 19; Reply Br. 11):
Even though the Examiner has stated that the “including” language
provides an infinite amount of compositions, Appellants submit that
the addition of known additives, e.g., biocides or chelating agents, are
known in the art. In other words, Appellants submit that key or
necessary elements that provide the claimed performance are
disclosed and that addition of other known ink components would not
require undue experimentation.
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The Appellants’ Specification provides no guidance regarding how to
predict which, if any, inks will meet the composition requirements of the
Appellants’ claims but not have the required stable mean drop velocity. The
Appellants state with respect to the five examples in their Specification that
“these examples should not be considered as limitations of the present
invention, but are merely in place to teach how to make the best known
compositions of the present invention based upon current experimental data”
(Spec. 14:26-29). In the examples the only inks tested for stable mean drop
velocity are seven inks wherein the additive recited in the Appellants’ claims
is octylphenol ethoxylate surfactant (Example 5).4
Moreover, regarding the applied prior art the Appellants state that
“many factors affect drop velocity stability” (Br. 21) and that “in light of the
many factors that may affect drop velocity performance of such inks based
on how the elements are combined, the likelihood that the claimed result is
present in those inks is not great.” Id.
Thus, the Appellants are arguing that determining which inks have the
Appellants’ required stable mean drop velocity would not require undue
experimentation, while also arguing that it is unlikely that the prior art inks
which meet the composition requirements of the Appellants’ claims have
that stable mean drop velocity.
If the Appellants are correct that because many factors which have not
been disclosed by the Appellants’ affect drop velocity stability such that
there is no sound reason to believe that the applied prior art inks which meet

4 Printing result Example 3 appears to be a prophetic example.
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the composition requirements of the Appellants’ claims have the Appellants’
recited stable mean drop velocity, then it appears that due to those many
undisclosed factors undue experimentation would be required to carry out
the scope of the Appellants’ claimed invention.
Conclusion of Law
The Appellants have not shown reversible error in the Examiner’s
determination that the Appellants’ Specification fails to provide enabling
support for the scope of the Appellants’ claims.
DECISION/ORDER
The rejections of claims 1-39 under 35 U.S.C. § 112, first paragraph,
enablement requirement, claims 1-3, 6, 7, 9-17, 20-25, and 27-33 under
35 U.S.C. § 102(e) over Lau, claims 1-3, 7, 9, 11, 13-17, 21, 23-25, 28,
and 30-33 under 35 U.S.C. § 102(e) over Valentini ‘730 as evidenced by
Valentini ‘629, claims 1, 4, 5, 8, 9, 11-15, 18, 19, 21, 23, 24, 26, and 28-33
under 35 U.S.C. § 102(b) over Cheng as evidenced by Ober, claims 1-3, 7,
11-17, 23-25, and 30-33 under 35 U.S.C. § 102(e) over Hayashi, claims 6,
20 and 27 under 35 U.S.C. § 103 over Valentini ‘730 or Hayashi, in view of
Lau, claims 34-39 under 35 U.S.C. § 103 over Lau in view of Oikawa, and
claims 34-37 and 39 under 35 U.S.C. § 103 over Cheng in view of Oikawa
are affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED

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PL Initial:
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