Ex Parte Ganapathiappan et al

Patent Trial and Appeal Board

Feb 28, 2017

13383691 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/383,691 01/12/2012 Sivapackia Ganapathiappan 82924703 1074
22879
HP Tnr
7590 03/02/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
SHAH, MANISH S
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIVAPACKIA GANAPATHIAPPAN,
HOWARD S. TOM, and HOU T. NG,
Appeal 2015-007352
Application 13/383,6911
Technology Center 2800
Before PETER F. KRATZ, JEFFERY T. SMITH, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35U.S.C. § 134 from a final rejection of
claims 1—15. We have jurisdiction under 35 U.S.C. § 6.
1 The real party in interest is Hewlett-Packard Development Company, LP
(“HPDC”), which is a wholly owned affiliate of Hewlett-Packard Company.
(App. Br. 3). The general or managing partner of HPDC is HPQ Holdings,
LLC. Id.
Appeal 2015-007352
Application 13/383,691
Appellants’ invention is generally directed to methods and systems for
ink-jet ink printing on non-porous substrates, such as vinyl media. Spec. 6;
App. Br. 7. Claim 1 illustrates the subject matter on appeal and is
reproduced below:
1. An ink-jet ink printing system, comprising:
an ink-jet printer including at least one ink-jet ink comprising
an aqueous liquid vehicle, a pigment present at from about 1
wt% to about 5 wt%, acrylic polymer particles present at from
about 1 wt% to about 5 wt%, and urethane polymer particles
present at from about 0.3 wt% to about 3 wt%, said ink-jet ink
formulated to print on a vinyl medium; and
a heating device adapted to apply heat within 10°C above a
temperature at which the ink-jet printer is adapted to print the
ink-jet ink,
wherein upon applying the heat from the heating device to the
ink-jet ink after printing on the vinyl medium, the acrylic
polymer particles and urethane polymer particles fuse, thereby
forming a printed image with a film encapsulating at least a
portion of the pigment on the vinyl medium.
Appellants (see App. Br., generally) request review of the following
rejections from the Examiner’s Final Office Action
I. Rejection of claims 1—15 under 35 U.S.C. § 112, second
paragraph.
II. Rejection of claims 1—5 and 10-15 over under 35 U.S.C. § 103(a)
over Berge (US 2007/0259989 A1 published Nov. 8, 2007), and
Brust (US 7,828,426 B2 issued Nov. 9, 2010).
III. Rejection of claims 6—9 under 35 U.S.C. § 103(a) over Berge,
Brust and Ganapathiappan (US 2004/0131855 A1 published Jul. 8,
2004).
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Application 13/383,691
OPINION
REJECTION UNDER § 112, second paragraph
Claims 1—15 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention.2
During prosecution, a claim is examined for compliance with
35 U.S.C. § 112, second paragraph by determining whether the claim meets
threshold requirements of clarity and precision. After applying the broadest
reasonable interpretation to the claim, if the metes and bounds of the claimed
invention are not clear, the claim is indefinite and should be rejected. In re
Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (“[Wjhen the USPTO has
initially issued a well-grounded rejection that identifies ways in which
language in a claim is ambiguous, vague, incoherent, opaque, or otherwise
unclear in describing and defining the claimed invention, and thereafter the
applicant fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of § 112(b) [or
pre-AIA § 112, second paragraph].”).
The evaluation of a claim with respect to prior art begins with
understanding the “meaning” of the claim. Our reviewing court has
instructed that “[i]t is the applicants’ burden to precisely define the
2 We note Appellants assert that the Examiner has inserted a different
rejection in the Answer. (Reply Br. 5). Questions regarding actions taken
by the Examiner, such as the insertion of a new ground of rejection, are
petitionable under 37 C.F.R. § 1.181 to the Director. Since Appellants have
failed to timely file a petition, we will address the rejection as presented in
the Examiner’s Answer.
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invention, not the PTO’s. See 35 U.S.C. § 112 12 ... . [T]his section puts
the burden of precise claim drafting squarely on the applicant.” In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
The phrase “the heat applied is within 10°C above a temperature at
which the ink-jet printer is adapted to print the inkjet ink” recited in
independent claim 1 includes “words of degree” that are imprecise unless a
definition or guideline has been set forth in the Specification, or the terms
are otherwise well-known in the art.
Definiteness problems often arise when words of degree are used
in a claim. That some claim language may not be precise,
however, does not automatically render a claim invalid. When a
word of degree is used the district court must determine whether
the patent’s specification provides some standard for measuring
that degree. The trial court must decide, that is, whether one of
ordinary skill in the art would understand [sic: would have
understood] what is claimed when the claim is read in light of the
specification.
Seattle Box Co., Inc. v. Indust. Crating & Packing, Inc., 731 F.2d 818, 826
(Fed. Cir. 1984).
We find that the metes and bounds of the phrase “a temperature at
which the ink-jet printer is adapted to print the inkjet ink” cannot be
ascertained from Appellants’ original disclosure. The Examiner looked to
Appellants’ Specification, page 13, to ascertain the meaning of the disputed
claim language. Appellants have not identified portions of the Specification
that would provide guidance as to the meaning of the disputed language.
Rather, Appellants argue the “inkjet printer” and the “heating device” are the
necessary structures to meet that the temperature at which heat is applied is
within 10°C above the temperature at which the ink-jet printer is adapted to
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print the limitation as recited in claim 1. (Reply Br. 6). Appellants also
state:
The Specification, at page 13, lines 9-11, discloses that “heating
sufficient to cause the printed image to flow can be employed” to form
a print film. The heating that would be sufficient to cause the printed
image to flow would be heating to the Tg or a higher temperature. The
Specification discloses that the Tg is within 10 °C of the temperature at
which the printing occurs. Therefore, heating the printed to a
temperature within 10°C of the ambient temperature would be
sufficient to make the printed image flow.
(Appeal Br. 14).
It appears from page 13 of the Specification, the phrase “adapted to”
utilizes the Tg of the ink composition to cause a printed image to flow.
Thus, the temperature required by the claimed invention would vary
depending upon the ink composition. The claimed invention is not limited
to including specific ink compositions. The Specification only provides
ranges at which the printing may occur, e.g. about 50 °C to about 100 °C.
(Spec. 13,11. 11—13). Consequently, the Specification does not provide
adequate guidance to determine the meaning of the phrase “a temperature at
which the ink-jet printer is adapted to print the inkjet ink.”
For the foregoing reasons the claims on appeal are of indeterminate
scope.
REJECTION UNDER § 103(a)
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have not identified reversible error in the
Examiner’s determination that the applied prior art would have rendered the
subject matter recited in claims 1—15 obvious to one of ordinary skill in the
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art within the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner’s § 103(a) rejections of the above claims for the reasons set forth
in the Final Action and the Answer. We add the following.
Appellants have presented substantive arguments addressing
Rejection II and particularly independent claim 1. (App. Br. 17—23).
Appellants’ arguments for Rejection II are repeated when addressing
Rejection III and particularly Appellants argue Ganapathiappan does not
resolve the deficiencies of Berge and Brust. (App. Br. 24). Therefore, we
will limit our discussion to independent claim 1 as representative of the
subject matter on appeal.
The Examiner found Berge teaches an ink-jet printing system
comprising an ink-jet printer and a heating device suitable for application of
inkjet ink to a vinyl medium. The Examiner cited Bmst for describing inkjet
ink compositions having uniform jetting properties suitable for utilization in
Berge’s system. (Ans. 3—5; Berge Tflf 128—145).
Appellants argue the combination of Berge and Brust do not teach or
suggest “a heating device adapted to apply heat within 10°C above a
temperature at which the ink-jet printer is adapted to print the ink-jet ink,” as
required by independent claim 1. (App. Br. 18). Appellants argue Berge
does not disclose the temperature at which the images are printed and Brust
does not disclose heating the printed image. (App. Br. 18—19). Appellants
further argue the Examiner utilized hindsight as the basis for determining
that the inkjet ink composition of Brust was suitable for utilization in Berge.
(App. Br. 21). Appellants also argue Examples 1 and 2 in the Specification
demonstrate the specific combination of pigment, acrylic polymer particles,
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and urethane polymer particles in the claimed amounts printed on a vinyl
medium provides surprising rub fastness properties. (App. Br. 22—23)
Appellants’ arguments give rise to an issue of claim interpretation.
Namely, to which one of the statutory classes of invention are the claims
directed? The claims are “system” claims, but in order to be patentable the
subject matter of a claim must fit into one and only one of the statutory
claims of invention enunciated in 35 U.S.C. § 101, i.e., a process, machine,
manufacture, or composition of matter. Claims cannot be directed to
combinations of those classes of invention. See IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (claims to a
combination of statutory claims of invention are not permitted and are
indefinite).
For purposes of resolving the prior art issues in this appeal, wee
conditionally determine that the language of claim 1 specifies an ink-jet ink
printing system comprising an “inkjet printer” and a “heating device” as the
described apparatus components capable of applying inkjet ink to a vinyl
medium. Thus, we interpret the system claims as directed to an apparatus,
i.e. a structure which can be termed a machine or manufacture under 35
U.S.C. § 101. Claims directed to an apparatus must be distinguished from
the prior art in terms of structure. See In re Danly, 263 F.2d 844, 848
(CCPA 1959) (“Claims drawn to an apparatus must distinguish from the
prior art in terms of structure rather than function”); In re Gardiner, 171
F.2d 313,315-16 (CCPA 1948) (“It is trite to state that the patentability of
apparatus claims must be shown in the structure claimed and not merely
upon a use, function, or result thereof.”). Choosing to define an element
functionally, i.e., by what it does, carries with it a risk: Where there is
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reason to conclude that the structure of the prior art is inherently capable of
performing the claimed function, the burden shifts to the applicant to show
that the claimed function patentably distinguishes the claimed structure from
the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). Moreover, the
recitation of a material intended to be worked upon by a claimed apparatus
does not differentiate the claimed apparatus structure from the structure of a
prior art apparatus. In re Rishoi, 197 F.2d 342, 345 (CCPA 1952).
We determine the heating device is capable of applying heat as
required by the claimed invention to the inkjet ink for application to a vinyl
medium. The inkjet ink is the material which the system of the apparatus
components performs work in generating printing on a vinyl medium and
thus, does not confer a structural limitation on the claimed system. See, e.g.,
In re Otto, 312 F.2d 937, 939-40 (CCPA 1963); In re Rishoi, 197 F.2d 342,
344-45 (CCPA 1952) (“[Tjhere is no patentable combination between a
device and the material upon which it works.”); In re Young, 75 F.2d 996
(CCPA 1935); In re Smith, 36 F.2d 302, 303 (CCPA 1929) (“It might be
argued that the invention here consists in a combination of extra length
carbons with the old machine, and that such a combination is patentable. It
will be borne in mind that it has been long established that a person may not
patent a combination of device and material upon which the device works,
nor limit other persons from the use of similar material by claiming a device
patent.”). Consequently, Appellants’ arguments regarding the selection of
the materials of the inkjet ink composition are inadequate to establish
reversible error in the appealed rejection. Appellants have not disputed that
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Berge teaches an ink-jet printing system comprising an ink-jet printer and a
heating device.
Appellants argue Examples 1 and 2 in the Specification demonstrate
the specific combination of pigment, acrylic polymer particles, and urethane
polymer particles in the claimed amounts printed on a vinyl medium
provides surprising rub fastness properties. (App. Br. 22—23)
We find evidence presented in Examples 1 and 2 insufficient for
establishing the patentability of the claimed inkjet printing system. The
evidence presented is directed to the inkjet ink compositions and not the
structural components which form the inkjet system.
Appellants must establish that the showing relied upon actually
demonstrates unexpected results, In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972), and is reasonably commensurate in
scope with the degree of protection sought by a claim, In re Grasselli, 713
F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980). On this record, Appellants have not adequately shown why the
evidence relied upon would have been unexpected by one of ordinary skill in
the art or is reasonably commensurate in the scope with the claims.
Accordingly we affirm the Examiner’s rejection of claims 1—15 under
35 U.S.C. § 103(a) for the reasons presented by the Examiner and given
above.
CONCLUSION
The rejection of claims 1—15 under 35 U.S.C. § 112, second paragraph
is affirmed.
The obviousness rejections of claims 1—15 are affirmed.
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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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