Ex Parte Iu et al

Board of Patent Appeals and Interferences

Jun 30, 2010

11252698 (B.P.A.I. Jun. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAI-KONG IU, RODNEY D. STRAMEL,
and DENNIS Z. GUO
____________

Appeal No. 2009-009046
Application 11/252,698
Technology Center 1700
____________

Decided: June 30, 2010
____________

Before CHUNG K. PAK, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3 through 15, and 25 through 27, all of the pending
claims in the above-identified application. See page 2 of the Appeal Brief
(“App Br.”) filed July 24, 2008. We have jurisdiction under 35 U.S.C. §§ 6
and 134.
STATEMENT OF THE CASE
The subject matter on appeal is directed to ink jet pigment ink
formulations containing a pigment and a hydrotrope (Spec. 2-3).
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According to page 3, lines 10-13, and page 4, lines 16-19, of the
Specification:
Although not intending to be bound by theory, the hydrotropes
added to the ink formulation may eventually adsorb onto the
free surface of the pigment particle to give extra dispersing
power to the pigment particle.
…
The pigment can be a black or color self-dispersed
pigment. As used herein, the term “self-dispersed pigment” is
meant to be understood broadly as any pigment that can be
dispersed in a liquid vehicle without the aid of dispersion.

The hydrotropes are defined as including an unlimited number of
compounds as is apparent from page 6 of the Specification. Details of the
appealed subject matter are recited in representative claims 1and 71
reproduced from the Claims Appendix to the Appeal Brief as shown below:

1. An ink-jet pigmented ink formulation, comprising:

1 As is apparent from pages 4 through 7 of the Appeal Brief, Appellants rely
on the arguments directed to claim 1 for the patentability of claims 1, 9
through 12, 26, and 27 rejected under § 102(b) and claims 13 through 15
rejected under § 103(a). Appellants also argue at pages 8 and 9 of the
Appeal Brief claims 3 through 8 and 25 rejected under § 103(a) together as a
group. Therefore, for purposes of this appeal, we select claims 1 and 7 as
representative of the claims on appeal and decide the propriety of the
Examiner’s §§ 102(b) and 103(a) rejections set forth in the Answer based on
these claims alone. See 37 C.F.R. § 41.37(c)(1)(vii)(“When multiple claims
subject to the same ground of rejection are argued as a group by appellant,
the Board may select a single claim from the group of claims that are argued
together to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.”).

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a pigment, wherein the pigment is a self-dispersed pigment, and

a hydrotrope, wherein the amount of hydrotrope is about 0.01 to 15
weight % of the ink-jet pigmented ink formulation.

7. The ink-jet pigmented ink formulation of claim 1, wherein the self-
dispersed pigment is selected from an oxidized carbon black, a surface
modified carbon black, and a combination of oxidized and surface modified
carbon black.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 2 of the Answer
(“Ans.”) dated September 30, 2008:
Adams 5,707,432 Jan. 13, 1998
Gore 6,024,786 Feb. 15, 2000

Appellants request review of the following grounds of rejections set
forth in the Answer:
1. Claims 1, 9 through 12, 26, and 27 under 35 U.S.C. § 102(b) as
anticipated by the disclosure of Gore;
2. Claims 13 through 15 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of Gore; and
3. Claims 3 through 8 and 25 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Gore and Adams (App. Br. 3)
ISSUES AND CONCLUSIONS
With respect to the rejections based on Gore alone, the dispositive
question is: Have Appellants identified reversible error in the Examiner’s
finding that Gore teaches the claimed self-dispersed pigment? On this
record, we answer this question in the negative.
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With respect to the rejection based on Gore and Adams, the
dispositive question is: Have Appellants identified reversible error in the
Examiner’s determination that one of ordinary skill in the art would have
been led to utilize the claimed surface modified carbon black pigments
taught by Adams as the pigments or some of the pigments employed in the
ink-jet pigmented formulation of the type taught by Gore within the meaning
of 35 U.S.C. § 103(a)? On this record, we answer this question in the
negative.
ANALYSIS, FINDINGS OF FACT, AND PRINCIPLES OF LAW
I. Claims 1, 9 through 12, 26, and 27 under 35 U.S.C. § 102(b)
Appellants do not dispute the Examiner’s finding that Gore describes
an ink-jet pigmented formulation containing 0.1 to 8 wt% of a pigment and 9
wt% of a hydrotrope (sodium xylene sulfonate). (Compare Ans. 3 with App.
Br. 4-7 and Reply Brief (“Reply Br.”) filed December 1, 2008, 2-4.)
Appellants only contend that the Examiner erred in finding that Gore teaches
using the claimed self-dispersed pigment, i.e., any pigment which is self-
dispersing in an ink-jet liquid ink formulation containing a hydrotrope
without any need for a dispersing aid. (See App. Br. 4-7 and Reply Br. 2-4).
Contrary to Appellants’ contention, however, Gore teaches (col. 1, ll.
57-67 and col. 3, ll. 6-12 and 50-52) that:
In accordance with the present invention, the inventor has
discovered that if the particle size of the pigment is reduced
below 500 nm, then the ink-jet ink compositions achieve
extraordinary stability. By “extraordinary stability” is meant
that no sediments are formed after a period of three weeks and
that no sediments are formed after warming the ink
compositions to 70 oC for 10 min, followed by cooling to 0 oC
for ten min. No dispersant is necessary, and the pigment
particles having such a defined size may be incorporated into
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microemulsions, using a suitable oil [or solvents] and an
amphiphile [(the claimed hydrotrope)]. [Emphasis added.]

In other words, Gore’s pigment is taught to be self-dispersed in its ink-jet
ink formulation without any dispersant (dispersing aid) and with or without
any microemulsion formed as a result of the presence of the claimed
hydrotrope. Gore’ subsequent theory regarding the effect of a
microemulsion on dispersion of pigments does not indicate that Gore’s
pigment is not self-dispersing (col. 2, ll. 58-67). Nor does claim 1 preclude
the use of a hydrotrope for the purpose of enhancing the dispersion of
pigment particles (Spec. 3, ll. 10-13 and 4, ll. 16-19).
It follows that Appellants have not identified any reversible error in
the Examiner’s finding that Gore teaches the claimed self-dispersed
pigment.
II. Claims 13 through 15 under 35 U.S.C. § 103(a)
Appellants do not dispute the Examiner’s determination regarding
obviousness of employing either an anionic, cationic, or nonionic hydrotrope
together with either an anionic, cationic or nonionic pigment as required by
claims 13 through 15. Rather, Appellants rely on the same arguments
advanced in connection with the rejection of claim 1 under 35 U.S.C. §
102(b) for the patentability of the subject matter recited in claims 13 through
15 (App. Br. 7).
Thus, based on the same findings of fact set forth above and the
Answer, we determine that Appellants have not identified any reversible
error in the Examiner’s determination that it would have been obvious to one
of ordinary skill in the art to employ either an anionic, cationic, or nonionic
hydrotrope together with either an anionic, cationic or nonionic pigment in
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Gore’s ink-jet ink formulation as required by claims 13 through 15 within
the meaning of 35 U.S.C. § 103(a).
III. Claims 3 through 8 and 25 under 35 U.S.C. § 103(a)
Appellants contend that Gore does not teach using a self-dispersing
pigment in its ink-jet ink formulation (App. Br. 8). Appellants also contend
that one of ordinary skill in the art would not have been led to employ the
surface modified carbon black pigment taught by Adams as the pigment of
the ink-jet ink formulation taught by Gore (App Br. 8-9 and the Reply Br. 4-
6).
However, as indicated supra, Gore teaches employing a self-
dispersing pigment in its ink-jet ink formulation. Gore further discloses that
its pigment can be dispersed “without any special treatments, modifications,
or use of special dispersants” (col. 2, ll. 64-67). This disclosure of Gore
does not discourage one of ordinary skill in the art from employing the
claimed oxidized or surface modified carbon black pigment. Cf. Para-
Ordnance Manufacturing, Inc. v. SGS Importers International, Inc., 73 F.3d
1085, 1090 (Fed. Cir. 1995) (To “teach away” from using or doing
something, a reference must at least state that it “should not” or “cannot” be
so used.); In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (“The
statement in Zehender that ‘[i]n general, the thickness of the protective layer
should not be less than about [100 Angstroms]’ falls far short of the kind of
teaching that would discourage one of ordinary skill in the art from
fabricating a protective layer of 100 Angstroms or less.”) (emphasis added).
Indeed, Appellants acknowledge at page 6 of the Appeal Brief that:
Gore is not stating that the pigments do not require special
treatment etc., but rather the invention in Gore provides a
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means for dispersing pigments without the need of any special
treatments etc.

Although Gore does not mention that the pigment employed in its ink-jet ink
formulation is the claimed surface modified carbon black pigment, the
Examiner finds, and Appellants do not dispute, that:
Adams teaches the use of carbon black pigments, the surface of
which has been modified with 4-aminobenzoic acid (column 5,
lines 12-18). Ink formulations containing pigments with low
levels of attached organic groups as taught by Adams were
found to have flow characteristics that were increased
considerably over that of untreated carbon products [in ink
formulations] (column 4, lines 21-40). [(Compare Ans. 5 with
App. Br. 8-9 and Reply Br.)]
Moreover, Adams teaches that the surface modified carbon black pigments
can provide “improved jetness, blue undertone, and gloss” and “can be used
in ink jet inks where the ink formulation may be based on solvents, aqueous,
or an aqueous emulsion” (col. 4, ll. 33-36 and col. 8, ll. 18-20) (emphasis
added).
Given the advantage of using the surface modified carbon black
pigments taught by Adams in the ink-jet ink formulation of the type taught
by Gore, we concur with the Examiner that one of ordinary skill in the art
would have been led to utilize the surface modified carbon black pigments
taught by Adams as the pigments or some of the pigments employed in the
ink-jet formulation of the type taught by Gore, with a reasonable expectation
of successfully improving, for example, gloss properties of Gore’s ink-jet
ink formulation. See In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992)
("As long as some [reason,] motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
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require that the reference be combined for the reasons contemplated by the
inventor.").
It follows that Appellants have not identified reversible error in the
Examiner’s determination that one of ordinary skill in the art would have
been led to utilize the claimed surface modified carbon black pigments
taught by Adams as the pigments or some of the pigments employed in the
ink-jet pigmented formulation of the type taught by Gore within the meaning
of 35 U.S.C. § 103(a).
ORDER
For the reasons set forth above and in the Answer, the decision of the
Examiner 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).

AFFIRMED

PL Initial:
sld

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