Ex Parte Chopra et al

Patent Trial and Appeal Board

Jun 29, 2016

13456619 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/456,619 04/26/2012 NA VEEN CHOPRA
76113 7590 07/01/2016
PILLSBURY WINTHROP SHAW PITTMAN, LLP (Xerox)
XEROX CORPORATION
P .0 . BOX 10500
MCLEAN, VA 22102
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.
20110356-396152 8381
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NA VEEN CHOPRA,
JEFFREY H. BANNING, JENNIFER L. BELELIE, GABRIEL IFTIME,
KENTARO MORIMITSU, and PETER G. ODELL
Appeal2014-007825
Application 13/456,619
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
BRIAND. RANGE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 16-20 of Application
13/456,619 under 35 U.S.C. § 103(a) as obvious and also provisionally
rejected these claims for obviousness-type double patenting. Final Act.
(October 11, 2013). Appellants 1 seek reversal of the§ 103 rejection
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 Xerox Corporation is identified as the real party in interest. Appeal Br. 2.
Appeal2014-007825
Application 13/456,619
For the reasons set forth below, we REVERSE, but we enter NEW
GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b).
BACKGROUND
The '619 Application describes phase change ink compositions.
Spec. ,-i 2. Such ink compositions are solid at room temperature and molten
at the elevated temperature at which the ink is applied to a substrate. Id.
Based change ink compositions can be used in inkjet printing. Id.
Claims 16 and 18 are representative of the '619 Application's claims
and are reproduced below:
16. A phase change ink comprising:
an amorphous component; and
a crystalline component being a diurethane having a formula of
0 0
A-OJlN-(GH2)n-NJLO-R' H H
wherein each [sic, each of] R and R' is independently selected
from benzyl, 2-phenylethyl, 2- phenoxyethyl, , [sic]
C6Hs(CH2)4-, cyclohexyl, 2-methylcyclohexyl,
3-phenylpropanyl, 3-methylcyclohexyl, 4-methylcyclohexyl,
cyclohexylmethy 1, 2-methylcyclohexylmethyl,
3-methylcyclohexylmethyl, 4-methylcyclohexylmethyl, and
4-ethylcyclohexanyl.
18. The phase change ink of claim 16, wherein the linear
diisocyanate is selected from the group consisting of
1,6-hexamethylenediisocyanate, 2,4, toluenediisocyanate, [sic,
2,4-toluenediisocyanate,] and 1,4-phenylene diisocyanate.
Appeal Br. 15 (Claims App.).
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Application 13/456,619
REJECTION
On appeal, the Examiner maintains each of the rejections and
provisional rejections set forth in the Final Action. See Answer 2.
Appellants do not seek review of the provisional obviousness-type double
patenting rejections set forth in the Final Action. 2 Thus, there is only one
rejection presented for our review.
1. Claims 16-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Allen3 and Bui.4 Final
Act. 5.
DISCUSSION
Appellants seek review of the rejection of two independent claims-
claims 16 and 20. Appellants present substantive argument for reversal of
the rejection of claim 16. Appeal Br. 6-11. The pending claims 17-19 and
independent claim 20 are asserted to be patentable for the same reasons
advanced by Appellants in arguing for the reversal of the rejection of claim
16. Id. at 11-12. Thus, we confine our discussion to claim 16.
The Examiner found that Allen describes a phase change ink
composition comprising diesters of tartrate (the amorphous component) and
a crystalline wax. Final Act. 5 (citing Allen ,-i 7, claims 1-25). The
Examiner also found that Allen does not specifically disclose a crystalline
diurethane as recited in claim 16. Id. The Examiner further found that Bui
2 The provisional double patenting rejections, therefore, are summarily
affirmed.
3 US 2008/0302272 Al, published December 11, 2008.
4 US 6,528,613 Bl, issued March 4, 2003.
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Application 13/456,619
describes a phase change in composition comprising a diurethane obtained
from the reaction of hexamethylene-1,6-diisocyanate with benzyl alcohol.
Id. at 5-6. The Examiner further found that a person having ordinary skill in
the art at the time of the invention would have used Bui' s crystalline
diurethane compound in Allen's phase change ink composition because
Bui's crystalline compounds are described as having a low viscosity when
melted. Id. at 6 (citing Bui col. 3, 11. 5-62).
We do not sustain this rejection for the reasons set forth in the Appeal
Brief. See Appeal Br. 6-11. We add the following for emphasis.
Bui describes the use of an isocyanate-derived wax as a component in
a phase change ink. Bui's Specification defines the term "isocyanate-
derived wax" as "any crystalline or semicrystalline waxy material derived
from the reaction of a fatty isocyanate with a suitable nucleophile, or the
reaction of a fatty nucleophile with a suitable isocyanate, or the reaction of a
fatty nucleophile with a fatty isocyanate." Bui col. 4, 11. 4-9. Bui's
Specification then describes large numbers of exemplary nucleophiles-
including both alcohols and amines-and large numbers of mono- and
diisocyanates. See id. at col. 5, line 18-col. 8, line 9.
Neither Bui nor the Examiner provided any reason to select the
alcohol and diisocyanate that form the basis for the Examiner's rejection
from the long lists in Bui. Thus, we cannot affirm the Examiner's rejection.
See In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) ("A disclosure of millions
of compounds does not render obvious a claim to three compounds,
particularly when that disclosure indicates a preference leading away from
the claimed compounds."); 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
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Application 13/456,619
with some rational underpinning to support the legal conclusion of
obviousness.").
NEW GROUNDS OF REJECTION
For the reasons set forth below, we enter the following new rejections.
New Ground of Rejection 1. Claims 16-19 are rejected under 35
U.S.C. § 112, ,-i 1 for failing to comply with the written description
requirement. Claim 16 is directed to a diurethane compound in which the
urethane groups are connected by a linear alkane comprising n methylene
groups. Claim 16, however, does not specify any range of values for n.
Thus, claim 16 encompasses a diurethane compound in which the urethane
groups are connected by a linear alkane comprised of anything from one to
an infinite number of methylene groups.
The '619 Application's Specification does not contain such a broad
disclosure. Rather, it appears that Appellants only had possession of
embodiments in which n = 4-8. See Spec. ,-i 35. Thus, the Specification
does not support the full scope of claim 16.
New Ground of Rejection 2. Claim 18 is rejected under 35 U.S.C.
§ 112, ,-i 2 as indefinite. Claim 18 recites the phrase "the linear
diisocyanate." This term lacks proper antecedent basis.
Furthermore, claim 18 recites that "the linear diisocyanate is selected
from the group consisting of 1,6-hexamethylenediisocyanate,
2,4[-]toluenediisocyanate, and 1,4-phenylene diisocyanate." Only one of the
three members of the Markush group is a linear diisocyanate.
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Application 13/456,619
CONCLUSION
As discussed above, we reverse the rejection of claims 16-20 as
unpatentable over the combination of Allen and Bui. We, however, enter
new grounds of rejection with respect to claims 16-19. We newly reject
claims 16-19 for failing to comply with the written description requirement
of 35 U.S.C. § 112, ,-i 1. We also newly reject claim 18 pursuant to 35
U.S.C. § 112, ,-i 2 as indefinite.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
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Application 13/456,619
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
REVERSED; NEW GROUNDS OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)
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