Ex parte Farooq

Board of Patent Appeals and Interferences

Oct 13, 2000

08521545 (B.P.A.I. Oct. 13, 2000)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte OMAR FAROOQ
__________
Appeal No. 1997-3175
Application 08/521,545
___________
ON BRIEF
___________
Before WINTERS, OWENS and WALTZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-5, 12 and 13, which are all of the claims remaining
in the application.
THE INVENTION
Appellant claims a mordant having a recited general
formula. Appellant states that the mordant is useful for ink
jet receptors and the like (specification, page 1, lines 10-
Appeal No. 1997-3175
Application 08/521,545
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12). Claim 1 is illustrative:
1. A mordant of the general formula:
and: R is an alkyl group of 1 to 6 carbon atoms, and R is an1 2
alkyl, aryl, aralkyl, or alkaryl group of up to 10 carbon
atoms inclusive; l and n are integers of 2 or greater; m is an
integer of 5 or greater; and Q represents )(CH ) ) wherein y is2 Y
1-20; and each X is independently an anion.-
Appeal No. 1997-3175
Application 08/521,545
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THE REFERENCES
Delfino et al. (Delfino) 4,695,531 Sep. 22,
1987
Breton et al. (Breton) 5,129,948 Jul. 14,
1992
Farooq et al. (Farooq) 5,354,813 Oct. 11,
1994
THE REJECTION
Claims 1-5, 12 and 13 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combined teachings of
Farooq, Delfino and Breton.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejection is not well
founded. Accordingly, we reverse this rejection. We need to
address only claim 1, which is appellant’s sole independent
claim.
Farooq discloses a mordant having guanyl hydrazone salt
Appeal No. 1997-3175
Application 08/521,545
It appears that in the Class I structure (col. 5, lines 1
23-37), “=O-NH-” should be “=N-NH-”.
4
moieties attached to a polymeric backbone through N-
heterocycles or N,N-dimethylaminoethyl methacrylate moieties,
such that the
N-heterocycles or N,N-dimethylaminoethyl methacrylate moieties
are N-quaternized by the guanyl hydrazone moieties (abstract;
structures in columns 2-5). Farooq does not disclose1
appellant’s polymeric backbone or attachment of the guanyl
hydrazone salt moieties to the backbone through appellant’s
N H X group.+ -2
Breton discloses an ink composition which includes, for
the purpose of reducing the drying time of the ink while
maintaining good print quality, an additive which can be a
polyether diamine based on a predominantly polyethylene oxide
backbone (col. 2, lines 25-35; col. 4, lines 17-64). The
polyether diamine can be Jeffamine ED-2001 (col. 4, line 61),®
which is one of the materials which can be used to form the
backbone of appellant’s mordant (specification, page 8, lines
12-21).
The examiner uses Delfino to link the Farooq and Breton
Appeal No. 1997-3175
Application 08/521,545
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references. Delfino discloses a polymeric mordant having
guanyl hydrazone salt moieties attached to a polymeric
backbone through -COO- or -COO-alkylene- linkages (abstract;
col. 7, lines 22-40). The teaching by Delfino relied upon by
the examiner (answer, pages 4-5) for linking the Farooq and
Breton references is the following (col. 7, lines 41-50):
The mordants useful in the present invention
can comprise units derived from copolymerizable
monomers, such as acrylates, acrylamides, vinyl
acetates, styrenes, vinyl-ethers, vinyl-ketones,
vinyl-alchols [sic], unsaturated chlorides and
nitriles, with the proviso that such copolymer units
be in such a quantity as not to modify the
characteristics of the mordants useful to the
purposes of the present invention; acceptable
quantities are for instance up to 20% by weight,
more preferably up to 10% by weight.
The examiner argues that Delfino would have indicated to one
of ordinary skill in the art that Farooq’s guanyl hydrazone
moieties could be attached to other polymers, provided that
Delfino’s proviso is met (answer, page 5). The examiner
interprets this proviso as requiring that the characteristics
of the mordant are not interfered with, and argues that
Breton’s polymer would meet this proviso because it is usable
in ink jet compositions (answer, page 10).
Delfino’s proviso, however, states that the copolymer
Appeal No. 1997-3175
Application 08/521,545
When X = C F SO .2 4 9 3
6
units must be present in such a quantity as not to modify the
characteristics of the mordants, and states that acceptable
quantities are, for example, up to 20 wt% (col. 7, lines 45-
50). The repeating units in the Breton Jeffamine polymers®
relied upon by the examiner (answer, page 5) are of sufficient
quantity that the backbone has a molecular weight of at
least 600 (col. 4, lines 56-63). The portion of Farooq’s
disclosed mordants which correspond to appellant’s “R” group
have molecular weights of no more than about 413. A mordant2
formed by using one of Farooq’s N-heterocycles or
N,N-dimethylaminoethyl methacrylate moieties to link the
portion of Farooq’s mordants which correspond to appellant’s
“R” group with one of Breton’s polymers, therefore, would not
fall within the exemplified acceptable copolymer unit
quantities disclosed by Delfino, and the examiner has not
explained why one of ordinary skill in the art, nevertheless,
would have considered such a combination to be suitable.
Thus, even if Delfino is interpreted as indicating that any
copolymer which meets the proviso would be suitable as a
Appeal No. 1997-3175
Application 08/521,545
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backbone for the disclosed mordant and even if, as argued by
the examiner (answer, pages 9-10), one of ordinary skill in
the art would have considered Breton’s polymer as a possible
backbone for Farooq’s mordant because Breton’s polymer is used
in an ink composition, the examiner has not established a
prima facie case of obviousness.
Moreover, the examiner has not explained why, even if the
references were combined as proposed by the examiner,
appellant’s claimed invention would be obtained. Farooq’s
guanyl hydrazone salts are attached to the backbone via N-
heterocycles or N,N-dimethylaminoethyl methacrylate, and those
of Delfino are attached via -COO- or a -COO-alkylene group.
The examiner has not explained why the references would have
led one of ordinary skill in the art to appellant’s mordant in
which the guanyl hydrazone salts are attached to the backbone
by a N H X group.+ -2
For the above reasons we conclude that the examiner has
not carried the burden of establishing a prima facie case of
obviousness of appellant’s claimed invention.
DECISION
Appeal No. 1997-3175
Application 08/521,545
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The rejection of claims 1-5, 12 and 13 under 35 U.S.C.
§ 103 over the combined teachings of Farooq, Delfino and
Breton is reversed.
REVERSED
)
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
GREGORY A. EVEARITT
3M OFFICE OF INTELLECTUAL PROP COUNSEL
P. O. BOX 33427
ST PAUL, MN 95133-3427
Appeal No. 1997-3175
Application 08/521,545
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