Ex Parte Cohen et al

Board of Patent Appeals and Interferences

Mar 10, 2010

11231999 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte EYTAN COHEN and MICHAEL KHEYFETS
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Appeal 2009-009409
Application 11/231,999
Technology Center 1700
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Decided: March 10, 2010
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-5 and 13-16 under 35 U.S.C. § 102(e) as
anticipated by, and under 35 U.S.C. § 103(a) as obvious over, Ylitalo (US
2003/0083396 A1, published May 1, 2003). We have jurisdiction under
35 U.S.C. § 6(b).
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We AFFIRM.
Appellants’ invention relates to an infrared curable ink composition
for ink-jet recording (Title; Spec ¶ [0035]; Br. 3). Claim 1 is illustrative:
1. An infrared curable ink composition for ink-jet recording
comprising:
an acrylate-functional monomer material able to undergo
polymerization reaction under infrared radiation;
an infrared activated initiator that causes the polymerization reaction
to initiate after exposure with radiation in an infrared wavelength, wherein a
concentration of the said infrared activated initiator is less than 1% by
weight; and
a coloring agent.
II. DISCUSSION
A. ANTICIPATION UNDER 35 U.S.C. § 102(e)
1. ISSUE ON APPEAL
Appellants contend that Ylitalo does not teach or suggest a
concentration of an infrared activated initiator of less than 1% by weight as
claimed (Br. 6). Specifically, Appellants contend that Ylitalo’s recitation of
“up to about 15 weight percent” does not adequately disclose “less than 1%
by weight” especially when the examples provided in Ylitalo disclose
preferences higher than 1% (Br. 7). Appellants also contend that Ylitalo’s
recitation of a range “from about 1 weight percent” is not equivalent to “less
than 1% weight” (Reply Br. 2). According to Appellants “Ylitalo fails to
‘identically disclose’ the claimed subject matter” (Reply Br. 3).
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The Examiner responds by asserting that Ylitalo, which recites
concentrations of photoinitiator of “up to about 15 weight percent” or
desirably “from about 1 weight percent to about 12 weight percent”
“includes an amount encompassed by the instantly recited amount ‘less than
1% by weight’” (Ans. 4 and 6-7). According to the Examiner, “an amount
‘about 1 weight percent’ includes amounts less than 1 weight percent” (Ans.
7).
A first issue on appeal arising from the contentions of Appellants and
the Examiner is: Have Appellants identified reversible error in the
Examiner’s finding that Ylitalo “describes” within the meaning of 35 U.S.C.
§ 102 a concentration of infrared activated initiator of less than 1% by
weight with sufficient specificity such that the ink composition of claim 1 is
anticipated by Ylitalo?
2. FACTUAL FINDINGS
The facts are not in dispute.
Appellants’ claim 1 recites a concentration of infrared activated
initiator of less than 1% by weight (claim 1).
The Examiner’s rejection relies on paragraph 99 of Ylitalo, which
states
[0099] The amount of photoinitiator(s) or other
initiator(s) used in the ink compositions of the
present invention may vary depending on the other
ink composition components. Typically, for
colorant-containing ink compositions, the amount
of photoinitiator(s) is up to about 15 weight
percent based on the total weight of the ink
composition. Desirably, for colorant-containing
ink compositions, the amount of photoinitiator(s)
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is from about 1 weight percent to about 12 weight
percent, and more preferably from about 4 weight
percent to about 10 weight percent based on the
total weight of the ink composition. Colorless inks
may have lower photoinitiator concentrations.
(Ylitalo, ¶ [0099].) The Examples of Ylitalo use a photoinitator in an
amount greater than 1% by weight (see Ylitalo, ¶¶ [0273], [0277], [0286],
and [0289].)
3. PRINCIPLES OF LAW
“[R]ejections under 35 U.S.C. § 103 are proper where the subject
matter claimed ‘is not identically disclosed or described’ in ‛the prior art.’”
In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (quoting § 103 with emphasis
added). This fact indicates that “rejections under 35 U.S.C. § 102 are proper
only when the claimed subject matter is identically disclosed or described in
‛the prior art.’” Id. Put another way, to anticipate the prior art must identify
something falling within the claimed subject matter with sufficient
specificity to constitute a description thereof within the purview of § 102.
In re Schaumann, 572 F.2d 312, 317 (CCPA 1978).
The disclosure of a range of a property, such as temperature, pressure,
or concentration, is only of a range. It is not a disclosure of every point
within the range, nor is it a specific disclosure of its end points. Atofina v.
Great Lakes Chem., 441 F.3d 991, 1000 (Fed. Cir. 2006). The situation is
somewhat different than that of a disclosure of a genus of compounds. A
genus of chemical compounds contains discrete embodiments. Disclosure of
any one of those discrete embodiments will anticipate a claim encompassing
that species. See In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989)
(“Section 102(e) bars the issuance of a patent if its generic claims are
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anticipated by prior art disclosing individual chemical species.”); In re
Slayter, 276 F.2d 408, 411 (CCPA 1960) (species anticipate a generic
claim). Therefore, when the class of compounds that falls within the genus
is so limited that a person of ordinary skill in the art can “at once envisage
each member of this limited class” every species is “described” within the
reference and every species anticipated. In re Gleave, 560 F.3d 1331, 1338
(Fed. Cir. 2009) (quoting Eli Lilly & Co. v. Zenith Goldline Pharms., Inc.,
471 F.3d 1369, 1376 (Fed. Cir. 2006). On the other hand, there are an
infinite number of temperatures, pressures, or concentrations disclosed
within a range of such a property. Generally, the disclosure of a property
range is not a disclosure of individual species.
In order to establish that a range anticipates, an examiner must do
more than point out that the range overlaps or lies within a prior art range.
See Atofina, 441 F.3d at 999-1000 (Claimed 330 to 450 °C temperature
range not “described” either by broader temperature range of 100 to 500 °C
or overlapping preferred range of 150 to 350 °C disclosed in the prior art;
claimed methylene chloride molar ratio of 0.1 to 5.0 percent not “described”
by overlapping 0.001 to 1.0 percent ratio of the prior art).
Either the entire claimed range must be disclosed with specific
specificity to anticipate the range limitation of the claim or there must be a
further specific disclosure of a discrete embodiment within the claimed
range such as an example. See Atofina, at 1000 (“no reasonable fact finder
could determine that this overlap [of molar ratio] describes the entire
claimed range with sufficient specificity to anticipate this limitation of the
claim. The ranges are different not the same.”) and Titanium Metals Corp.
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of Am. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (holding a claim to a
titanium alloy anticipated by a graph in a Russian article describing an alloy
with concentrations of alloy metals within the claimed ranges); see also
Ex Parte Fujimura, No. 2009-003521, 2009 WL 2970448, *4, slip op. at 9
(BPAI Sep. 15, 2009) (claimed range of 23 to 32 rolling element held
anticipated by reference disclosing a broader range of 20 to 50 rolling
element and an embodiment specifically disclosing 31 rolling elements).
4. ANALYSIS
Neither the description of “up to about 15 weight percent” nor the
description of “from about 1 weight percent to about 12 weight percent”
teach with sufficient specificity a range of less than 1% by weight as recited
in claim 1. The range of “up to about 15 percent” includes a significant
number of species greater than 1% by weight that we cannot find the range
anticipates the claimed range. We agree with the Examiner that the range of
“about 1 weight percent to about 12 weight percent” overlaps the claimed
range, since the phrase “about 1 weight percent” encompasses at least some
degree less than 1 weight percent. However, the overlap is slight and the
substantial portion of the disclosed range falls well outside of the scope of
“less than 1% by weight” as claimed. The Examiner does not provide any
other evidence that Ylitalo discloses a range that “describes” the claimed
range within the meaning of § 102 or that Ylitalo “describes” a discrete
embodiment within the claimed range. Accordingly, we cannot find that the
disclosed range anticipates the claimed range.
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B. OBVIOUSNESS UNDER 35 U.S.C. § 103(a)
1. ISSUE ON APPEAL
With respect to the obviousness rejection, Appellants contend that
“[a]s previously addressed [with respect to the anticipation rejection], Ylitalo
is inadequate in teaching or suggesting the features of claim 1” (Br. 8).
Further, Appellants state that “it would not be obvious to assume that a
photoinitiator that is prescribed to meet a standard of having ‘about 1 weight
percent to about 12 weight percent’ as described in Ylitalo will work in the
manners claimed that fall outside the prescribed range preferred in Ylitalo”
(Reply Br. 3). Appellants also state that “the Examiner has not sufficiently
proved that the teachings of Ylitalo or knowledge of one skilled in the art
provides the necessary motivation or suggestion to produce the claimed
subject matter” (Id.).
The Examiner finds that Ylitalo teaches that the amount of initiator
may vary depending upon the other ink composition components (Ans. 4).
The Examiner reasons that
[i]t would have been obvious to one skilled in the
art at the time of the invention to determine the
optimum weight percent of thermal initiator to
employ depending on the other components of the
ink composition when using a thermal initiator and
infrared radiation, as taught by Ylitalo et al. . . .
One skilled in the art at the time of the invention
would have known how to adjust such conditions
as time and/or intensity of radiation and distance
form the source of radiation to provide curing with
a small amount of the selected initiator. One of
ordinary skill in the art at the time of the invention
would have been motivated by a reasonable
expectation of providing a useful ink composition
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curable by infrared radiation as the thermal energy
source using a thermal activated initiator, as taught
by Ylitalo et al.
(Ans. 5.)
A second issue on appeal arising from the contentions of Appellants
and the Examiner is: Have Appellants identified reversible error in the
Examiner’s obviousness rejection of representative claim 1 based on the
asserted lack of a teaching or suggestion in Ylitalo of a concentration of
infrared activated initiator of less than 1% by weight?
2. FACTUAL FINDINGS
The facts provided above with respect to the anticipation rejection are
also uncontested with respect to the obviousness rejection and equally
relevant to present issue on appeal.
3. PRINCIPLES OF LAW
A “claimed invention is rendered prima facie obvious by the teachings
of a prior art reference that discloses a range that touches the range recited in
the claim.” In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (citing In re
Malagari, 499 F.2d 1297, 1303 (CCPA 1974)); see also In re Aller, 220
F.2d 454, 456 (CCPA 1955) (“[I]t is not inventive to discover the optimum
or workable ranges by routine experimentation.”).
It is true that a routine variable change sometimes causes an
unexpected effect. In such a situation, the claimed subject matter will be
unobvious under the law if Appellants present a showing of criticality of the
range for unexpected beneficial results. See In re Boesch, 617 F.2d 272, 276
(CCPA 1980); see also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990); In re Aller, 220 F.2d at 456 (CCPA 1955).
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4. ANALYSIS
The claimed range is encompassed by the range of “up to about 15
percent” and overlaps with the disclosed range of “about 1 weight percent to
about 12 weight percent.” The Examiner has sufficiently established a
prima facie case that the claimed range would have been obvious to one of
ordinary skill in the art. Reaching the claimed range would have been no
more than discovering optimum or workable ranges by routine
experimentation based on the teachings of Ylitalo. The burden has thus
shifted to Appellants to show criticality of the claimed range and unexpected
beneficial results. Appellants have provided no such evidence.

III. CONCLUSION
On the record before us1 and for the reasons discussed above, we
do not sustain the Examiner’s rejection of claims 1-5 and 13-16 under
35 U.S.C. § 102(e), but we sustain the Examiner’s rejection of claims 1-5
and 13-16 under 35 U.S.C. § 103(a).

IV. DECISION
We affirm the Examiner’s decision.

1Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2008).
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V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).
AFFIRMED

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