Ex parte HOU et al.

Board of Patent Appeals and Interferences

Nov 22, 1999

08383667 (B.P.A.I. Nov. 22, 1999)

Application for patent filed February 3, 1995. 1
According to the appellants, the application is a continuation
of Application 08/065,871, filed May 21, 1993, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WEI-HSIN HOU and FREDERIC E. SCHUBERT
__________
Appeal No. 1997-0646
Application 08/383,6671
___________
ON BRIEF
___________
Before WILLIAM F. SMITH, JOHN D. SMITH and OWENS,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION
This is an appeal from the examiner’s refusal to allow
claims 1, 3, 5-13, 15, 22-26 and 28 as amended after final
Appeal No. 1997-0646
Application 08/383,667
2
rejection. These are all of the claims remaining in the
application.
THE INVENTION
Appellants’ claimed invention is directed toward a
dielectric dispersion which contains two types of particles
having different colors and opposite charges and which is
useful in electrophoretic image displays and electrostatic
printing
(specification, page 1, lines 2-6). Claim 1 is illustrative
and reads as follows:
1. A dielectric dispersion, comprising:
(a) a dielectric fluid;
(b) a first plurality of particles of a first color
having a surface charge of a selected polarity dispersed
within said dielectric fluid; and
(c) a second plurality of particles of a second color
which contrasts substantially with said first color, having a
surface charge of opposite polarity to that of said first
plurality of particles; and
(d) means for preventing coagulation of said first and
second plurality of particles, wherein said means includes a
charge control agent for positively charging said first
plurality of particles, a second charge control agent for
negatively charging said second plurality of particles, and a
Appeal No. 1997-0646
Application 08/383,667
The examiner refers to disclosures in Chang2
(U.S. 4,285,801) and Müller et al. (U.S. 4,298,448)
(answer, pages 6 and 10-13). These references are not
included in the statement of the rejection and, therefore, are
not properly before us. See In re Hoch, 428 F.2d 1341, 1342
n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
3
stabilizer for thermodynamically stabilizing said first
plurality of partcles and said second plurality of particles,
wherein said stabilizer is selected from the group consisting
of homopolymers, copolymers, graft polymers, block polymers,
and natural high molecular weight compounds.
THE REFERENCE2
Carter et al. (Carter) 4,093,534 Jun. 6,
1978
THE REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
appellants regard as their invention. Claims 1, 3, 5-13, 15,
22-26 and 28 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Carter.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
Appeal No. 1997-0646
Application 08/383,667
4
appellants that the aforementioned rejections are not well
founded. Accordingly, we reverse these rejections.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have
been interpreted by one of ordinary skill in the art in light
of appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Claims are
analyzed not in a vacuum but, rather, in light of the
application disclosure and the prior art. See In re Kroekel,
504 F.2d 1143, 1146, 183 USPQ 610, 612 (CCPA 1974); In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238-39 (CCPA 1971).
The examiner argues that the term “charge control agent”
appears to overlap the term “stabilizer” in appellants’ claim
Appeal No. 1997-0646
Application 08/383,667
5
1 (answer, pages 6-9). The examiner, however, does not
explain why these terms would have caused appellants’ claim 1,
when interpreted by one of ordinary skill in the art in light
of appellants’ specification and the prior art, to fail to set
out and circumscribe a particular area with a reasonable
degree of precision and particularity. We therefore reverse
the rejection under 35 U.S.C. § 112, second paragraph.
Rejection under 35 U.S.C. § 103
Carter discloses working fluids for electrophoretic image
display devices (col. 1, lines 5-6). The fluids include at
least two species of finely divided opaque particles, wherein
the particles are transportable within a suspension medium
under the influence of an electric field, the species and the
suspension medium are of contrasting colors, and the species
are adapted to acquire opposite charges (col. 1, lines 8-27).
Carter states that charge control agents can be incorporated
into the working fluid (col. 4, lines 12-14), but does not
provide any details regarding the charge control agents. The
finely divided opaque particles are coated with a compound
Appeal No. 1997-0646
Application 08/383,667
6
which increases the attractive force between the particles
themselves or between the particles and an electrode, and
which preferably is capable of forming hydrogen bonds or
strong dipoles (col. 2, lines 54-62). Carter teaches that one
class of such compounds is polyols such as pentaerythritol,
poly(ethylene glycol) and poly(vinyl alcohol), and that the
compound also can be poly(ethylene oxide) (col. 3, lines 1-2).

The examiner argues (answer, page 6) that Carter
discloses that both poly(vinyl alcohol) and poly(ethylene
oxide) can be used to coat the particles, and that appellants’
specification (page 11, lines 15 and 19) states that these
compounds both are preferred charge control agents.
Appellants’ specification (page 11, lines 13-20) states that
the desirable charge control agents for positive charging
include polyvinyl alcohol, and that the desirable charge
control agents for negative charging include polyethylene
oxide. Appellants’ claim 1 requires that both a charge
control agent for positive charging and a charge control agent
for negative charging are used. The examiner has not
Appeal No. 1997-0646
Application 08/383,667
7
explained, however, why Carter would have fairly suggested, to
one of ordinary skill in the art, use of poly(vinyl alcohol)
and poly(ethylene oxide) in combination such that the
dispersion recited in appellants’ claim 1 is obtained. The
examiner, therefore, has not carried her burden of
establishing a prima facie case of obviousness of the
invention recited in claim 1. Accordingly, we reverse the
rejection under 35 U.S.C. § 103 of this claim and claims 3, 5-
13, 15, 22-26 and 28 which depend, directly or indirectly,
therefrom.
DECISION
The rejections of claim 1 under 35 U.S.C. § 112, second
paragraph, and claims 1, 3, 5-13, 15, 22-26 and 28 under 35
U.S.C. § 103 over Carter, are reversed.
REVERSED
Appeal No. 1997-0646
Application 08/383,667
8
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN D. SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
TJO/pgg
Arthur L. Plevy
Buchanan Ingersoll P.C.
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