Ex Parte Combes et al

Board of Patent Appeals and Interferences

Jul 27, 2009

10762155 (B.P.A.I. Jul. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JAMES R. COMBES,
KAREN A. MOFFAT, and MARIA N.V. MCDOUGALL
______________

Appeal 2008-003622
Application 10/762,155
Technology Center 1700
_______________

Decided: 1 July 27, 2009
_______________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 3, 6 through 14, 16, 17, and

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-003622
Application 10/762,155
20 through 29 in the Office Action mailed August 23, 2006. 35 U.S.C.
§§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2006).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a process for depositing
marking material onto a substrate, and is representative of the claims on
appeal:
1. A process for depositing marking material onto a substrate which
comprises (a) providing a propellant to a head structure, said head structure
having at least one channel therein, said channel having an exit orifice with a
width no larger than about 250 microns through which the propellant can
flow, said propellant flowing through the channel to form thereby a
propellant stream having kinetic energy, said channel directing the
propellant stream toward the substrate, and (b) controllably introducing a
particulate marking material into the propellant steam in the channel,
wherein the kinetic energy of the propellant particle stream causes the
particulate marking material to impact the substrate, and wherein the
particulate marking material comprises toner particles which comprise a
polyester resin, an optional colorant, and polypyrrole said toner particles
having an average particle diameter of no more than about 10 microns and a
particle size distribution of GSD equal to no more than about 1.25, wherein
said toner particles are prepared by an emulsion aggregation process, said
toner particles having an average bulk conductivity of at least about 10-11
Siemens per centimeter.
The Examiner relies upon the evidence in these references (Ans. 3):
Sacripante US 5,348,832 Sep. 20, 1994
Patel US 5,403,693 Apr. 04, 1995
Peeters US 6,328,409 B1 Dec. 11, 2001
Watanuki2 JP 3-100561 A Apr. 25, 1991

Mark Alger, degree of polymerization, high polymer, Polymer Science
Dictionary 124, 244 (2d ed., Chapman & Hall 1997) (hereafter Alger).

2 We refer to the translation of Watanuki prepared for the USPTO by
Diplomatic language Services, Inc. (PTO 2001-3573 August 2001).
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Application 10/762,155
Appellants request review of the following grounds of rejection under
35 U.S.C. § 103(a) advanced on appeal by the Examiner (Br. 8):
claims 1 through 3, 6 through 9, 16, 17, and 22 through 29 over Peeters in
view of Watanuki (Ans. 4);
claims 10 through 14 over Peeters in view of Watanuki as applied to claim 1
further in view of Patel (Ans. 6); and
claims 20 and 21 over Peeters in view of Watanuki as applied to claim 1
further in view of Sacripante (Ans. 7).
Appellants argue the claims in the first ground of rejection as a group
and further argue claim 17 separately. Br. 9 and 18. Appellants argue the
claims in the second and third grounds of rejection as a group. Br. 19 and
21. Thus, we decide this appeal based on claims 1, 10, 17, and 20.
37 C.F.R. § 41.37(c)(1)(vii) (2006).
Issues
The issues in this appeal are whether Appellants have shown that the
evidence in the combined teachings of Peeters and Watanuki alone and as
further combined with Patel and with Sacripante does not support the
Examiner’s conclusions of prima facie obviousness with respect to the
claimed process for depositing marking material onto a substrate by
independent claim 1 and dependent claims 10, 17, and 20, respectively.
Claim Interpretation
The plain language of representative independent claim 1
encompasses, in pertinent part, any process which provides a propellant
containing a particulate marking material comprising toner particles to a
head structure that directs a propellant stream toward any substrate. The
claimed processes include the so called “ballistic aerosol marking”
processes. Spec., e.g., 56:6-22 and Fig. 6; see also, e.g., 21-22. The
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particulate marking material comprising toner particles comprises, among
other things, any polyester resin and a polypyrrole, wherein the toner
particles are prepared by any emulsion aggregation process. Dependent
claim 10 specifies a particular emulsion aggregation process. Thus, the
appealed claims are drafted in product-by-process format, and accordingly,
encompass any particulate marking material comprising toner particles
prepared by any process which results in the characteristics imparted by any
emulsion aggregation process in independent claim 1, and by the specified
steps of an emulsion aggregation process in dependent claim 10. See, e.g.,
In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985), and cases cited therein
(“even though product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product itself”).
Dependent claim 17 specifies the polypyrrole has about 6 to about 100
repeating monomer units. Dependent claim 20 specifies the polypyrrole is
doped with one or more specified anions.
Appellants contend the claim term “emulsion aggregation process” of
claim 1 is specifically defined at page 74, lines 17 to 27 of the Specification.
Br. 17-18. This generic disclosure is not specific to a process for forming
the toner particles specified in claim 1, and thus, there is no basis in the
language of claim 1 or in the Specification on which to read this disclosure
into claim 1 as a limitation as the Examiner points out. Ans. 10. See, e.g., In
re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).

Findings of Fact
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We find Peeters would have disclosed to one of ordinary skill in this
art a ballistic aerosol marking apparatus and processes which direct a
propellant stream containing any marking material, such as toner particles,
toward any substrate. Peeters, e.g., abstract, col. 2, ll. 19-37, col. 3,
ll. 28-55, and col. 13, l. 14 to col. 15, l. 24. The toner particles can contain
charge control additives, be in a suspension which can include a charge
director, and used in processes which take advantage of charged particles.
Peters, e.g., col. 3, ll. 30-33, col. 15, ll. 36-53, and col. 25, ll. 16-30.
We find Watanuki would have disclosed to one of ordinary skill in
this art toner particles for electrophotographic compositions in which a
conductive polymer, which can be polypyrrole, is adhered to the surface of a
core material, which can include polyester resin. Watanuki, e.g., 2 and 4-8,
and Working Examples 1 and 4. The polypyrrole can be doped with, among
other things, alkylbenzenesulfonic acid and benzenesulfonic acid anions.
Watanuki 5-6. The amount of the materials making up the toner particles is
determined based on the desired resistivity of the toner particle. Watanuki
6-8 and 10-11, and Working Examples 1 and 4. The conductive polymer
can be an extremely thin layer that covers the core. Watanuki 10. The toner
particles can be obtained by, among other things, polymerizing a monomer
composition in an emulsified suspension. Watanuki 7:15-18.
We find Patel would have disclosed to one of ordinary skill in this art
emulsion aggregation processes for preparing toner compositions, which
toners can be used in electrophotographic processes, wherein the toner
comprises polyester resin. Patel, e.g., col. 1, ll. 6-59, col. 9, ll. 13-45, and
col. 13, ll. 34-44.
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We find Sacripante would have disclosed to one of ordinary skill in
this art emulsion aggregation processes for preparing toner compositions,
which toners can be used in electrophotographic processes, wherein the
toner comprises sulfonated polyester resin. Sacripante, e.g., col. 1, ll. 5-61,
col. 7, l. 6 to col. 8, l. 2, and col. 10, ll. 30-47.
A discussion of the definitions of the terms degree of polymerization
and high polymer in Alger is not necessary to our decision.
Opinion
We considered the totality of the record in light of Appellants’
arguments with respect to claims 1, 10, 17, and 20 and the grounds of
rejection advanced on Appeal. See, e.g., In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can
overcome a rejection by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350,
1355 (Fed. Cir. 1998)); In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(“After evidence or argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a preponderance
of evidence with due consideration to persuasiveness of argument.”) (citing,
inter alia, In re Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellants have not established that the
evidence in the combined teachings of Peeters and Watanuki alone and as
further combined with Patel and with Sacripante does not support the
Examiner’s conclusions of prima facie obviousness of the claimed process
encompassed by claims 1, 10, 17, and 20, respectively.
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We cannot subscribe to Appellants’ arguments that Watanuki does not
disclose a process for preparing the electrophotographic toner particles by an
emulsion aggregation process falling within claim 1. Br. 17-18. We
interpreted claim 1 to encompass any manner of emulsion aggregation
process, and Appellants do not adduce argument or evidence establishing
that Watanuki’s process of polymerizing a monomer in an emulsified
suspension is not an emulsion aggregation process. Br. 17-18; see above pp.
4 and 5. In similar respect, Appellants do not dispute that Patel’s emulsion
aggregation process falls within claim 10 and can be used to prepare
Watanuki’s electrophotographic toner particles as the Examiner contends.
Br. 19-21; Ans. 10. Appellants also do not dispute the teachings of
Sacripante, or that Watanuki discloses polypyrrole doped with an anion
falling within claim 20. Br. 20-21.
We also cannot subscribe to Appellants’ arguments that Watanuki
would not have suggested toner particles having a polypyrrole cover layer of
repeating monomer units within the range specified in claim 17 to one of
ordinary skill in this art. Br. 18-19. Indeed, Appellants do not adduce
argument or evidence establishing that this person in routinely following the
teachings of Watanuki would not have arrived at the thus claimed toner
particles, and we fail to find in the reference a requirement for a “high
polymer” as argued by Appellants. Br. 18-19; see above p. 5. Watanuki
teaches that the amounts of the materials for the toner particles are selected
based on the desired resistivity of the particles, and in this respect, the
number of repeating monomer units in the polypyrrole cover would depend
on the size of the particle. See above p. 5. Thus, we are of the opinion that
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this person would have reasonably arrived at a workable or optimum range
for the number of repeating monomer units in the polypyrrole cover of
Watanuki’s toner particles by routine experimentation. See, e.g., In re
Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value
of a result effective variable in a known process is ordinarily within the skill
of the art.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
We are further of the view that the workable or optimum range would
reasonably fall within, overlap with, or be close to the repeating monomer
unit range in claim 17. See, e.g., In re Geisler, 116 F.3d 1465, 1469-70
(Fed. Cir. 1997), and cases cited therein (claimed invention with range of 50
to 100 Angstroms rendered prima facie obvious by reference teaching a
range that overlapped at end point with the claimed range); In re Woodruff,
919 F.2d 1575, 1577-78 (CCPA 1990) (where the difference between the
claimed invention and the prior art is a range, applicant must show that the
claimed range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range); Titanium Metals
Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) (“proportions
[of metal content in alloys] so close that prima facie one skilled in the art
would have expected them to have the same properties).
We further disagree with Appellants’ position that one of ordinary
skill in this art would not have been led to combine the teachings of Peeters
and Watanuki alone and further with Patel and with Sacripante, and thence
to the claimed processes encompassed by claims 1, 10, 17, and 20. Br. 10,
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12-14, 20-21, and 22. Appellants do not dispute that Peeters discloses
ballistic aerosol marking processes which use toner particles that satisfy the
process parameters with respect to directing the propellant stream containing
a toner particle toward a substrate specified in claim 1. Br. 10; see above p.
5. We determined above that Watanuki along with Patel and Sacripante
would have described toner particles which satisfy the toner particle
requirements specified in claims 1, 10, 17, and 20.
On this record, we are unconvinced by Appellants’ arguments that one
of ordinary skill in this art, following Peeters’ disclosure that toner particles
that can possess or are associated with an electrostatic charge are useful in
the disclosed ballistic aerosol marking processes, would not have been
motivated to use the electrophotographic toner particles having a polypyrrole
conductive covering taught by Watanuki and the other references in Peeters’
process with a reasonable expectation of success, as the Examiner contends.
Br. 10, 12-14, 20-21, and 22; Ans. 5-6, 7, 8-9, and 10; see above p. 5. As
the Examiner points out, Peeters describes the kind of toner particles taught
by Watanuki and the other references, and Appellants do not dispute that the
thus taught toner particles would function in Peeters’ processes. Ans. 5-6, 7,
8-9, and 10; Br., e.g., 10 and 12-14. Indeed, it is the properties of the toner
particles taught by Watanuki and the other references which would have led
one of ordinary skill in this art to select the same for Peeters’ processes, and
this person would not have expected a different result based on the
analogous use thereof as marking material in electrophotographic and
xerographic processes disclosed by Watanuki as Appellants contend. Br.,
e.g., 12-14, and 21. See, e.g., KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
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417 (2007) (a patent claiming a combination of elements known in the prior
art is obvious if the improvement is no more than the predictable use of the
prior art elements according to their established functions); In re Sovish, 769
F.2d 738,
742-43 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary
skill in the art); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is . . . what the combined teachings of the references would
have suggested to those of ordinary skill in the art.”).
Thus, the evidence in the combined teachings of Peeters and Watanuki
alone and as further combined with Patel and with Sacripante clearly
establishes that one of ordinary skill in this art would have had ample
direction to combine the teachings of the references with a reasonable
expectation of successfully using Watanuki’s toner particles in Peeters’
processes, and not “that it would be obvious to try the combination in the
cited references” as Appellants argue. Br. 14. See KSR, 550 U.S. at 421
(“When there is a design need or market pressure to solve a problem and
there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might show that it
was obvious under § 103.”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364
(Fed. Cir. 2007) ("the expectation of success need only be reasonable, not
absolute"); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For
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obviousness under § 103, all that is required is a reasonable expectation of
success.” (citations omitted)).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Peeters and Watanuki alone and as further combined
with Patel and with Sacripante, with Appellants countervailing evidence of
and argument for nonobviousness and conclude, by a preponderance of the
evidence and weight of argument, that the claimed invention encompassed
by appealed claims 1 through 3, 6 through 14, 16, 17, and 20 through 29
would have been obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary 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)(1)(v).
AFFIRMED

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