Ex Parte Jakubek et alDownload PDFPatent Trial and Appeal BoardMar 22, 201813409074 (P.T.A.B. Mar. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/409,074 02/29/2012 22879 7590 03/26/2018 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Vladimir Jakubek 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82896808 6443 EXAMINER KOLLIAS, ALEXANDER C ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 03/26/2018 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 yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VLADIMIR JAKUBEK and CORY J. RUUD Appeal2017-007154 Application 13/409,074 Technology Center 1700 Before KAREN M. HASTINGS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's October 28, 2016 decision finally rejecting claims 1---6, 8, and 14--24. We have jurisdiction over the appeal. 35 U.S.C. § 6(b ). We affirm. CLAIMED SUBJECT MATTER Appellants' invention is directed to white ink compositions for use in inkjet printers (Spec. i-fi-13, 38). Claims 1 and 14 are representative and are 1 Appellants identify the real party in interest as Hewlett-Packard Development Co., L.P. (Appeal Br. 3). Appeal2017-007154 Application 13/409,074 reproduced below from the Claims Appendix of the Appeal Brief (key claim limitations shown in italics): 1. A white inkjet ink composition, consisting essentially of: an aqueous ink vehicle; white pigment particles; hollow particles comprising a cross-linked polymer shell; and a soluble polyurethane, wherein the white ink composition is in an inkjet ink cartridge and has a viscosity of 50 centipoise or less, wherein an amount of hollow particles in the white ink composition is 0.1 % to 4. 0% by weight. 14. A method of reducing an amount of white pigment particles in a white inkjet ink composition, the method comprising: incorporating, into the white ink composition, hollow cross-linked polymer particles in an amount sufficient to reduce the amount of white pigment particles in the white ink composition to about 1% to about 5% by weight, wherein the hollow cross-linked polymer particles comprise a cross-linked polymer shell, and wherein the amount of hollow cross-linked polymer particles in the white ink composition is 0.1 % to 4. 0% by weight. (Appeal Br. 31, 32-33 (Claims App.)). 2 Appeal2017-007154 Application 13/409,074 REJECTIONS I. Claims 1--4, 6, 8, 20, 21, and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yau, 2 Temple, 3 and Figov, 4 in view of Trafton. 5 II. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over Yau, Temple, Figov, and Trafton, in view ofMihoya. 6 III. Claims 14, 15, and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yau in view of Temple. IV. Claims 1--4, 6, 8, 20, 21, and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yau, Kagata, 7 and Figov, in view of Trafton. V. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over Yau, Kagata, Figov, and Trafton, in view ofMihoya. VI. Claims 14, 15, and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yau in view of Kagata. VII. Claims 16-18 and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yau and Kagata, in view of Figov. VIII. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over Yau, Kagata, and Figov, in view ofMihoya. 2 Yau et al., U.S. Patent Pub. No. 2011/0123714 Al, published May 26, 2011. 3 Temple, U.S. Patent No. 4,089,800, issued May 16, 1978. 4 Figov, U.S. Patent No. 6,095,050, issued Aug. 1, 2000. 5 Trafton et al., U.S. Patent No. 6,505,926 Bl, issued Jan. 14, 2003. 6 Mihoya et al., U.S. Patent No. 5,719,206, issued Feb. 17, 1998. 7 Kagata et al., U.S. Patent Pub. No. 2010/0028625 Al, published Feb. 4, 2010. 3 Appeal2017-007154 Application 13/409,074 Rejections I and II DISCUSSION Appellants' arguments are directed to limitations recited in independent claim 1 (see generally Appeal Br. 17-23; Reply Br. 4--11). Accordingly, our discussion will focus on the rejection of claim 1 over Yau, Temple, and Figov, in view of Trafton (Rejection I). The Examiner finds that Yau' s apparatus, method, and composition for printing continuous inkjet ink, in combination with Temple's void- containing microcapsules and Figov's 1to10 cps ink viscosity, teach each of the limitations of claim 1, except that the ink composition is in an inkjet ink cartridge (Final Act. 2-3; Non-Final Act. 8 3-5). The Examiner relies upon Trafton's teaching that "inkjet printers frequently make use of an ink jet print head, either thermal or piezoelectric, mounted to a print head cartridge" (Non-Final Act. 5). According to the Examiner, "[g]iven that [Trafton's] print head cartridge contains the ink composition, it is clear that the print head cartridge is an inkjet ink cartridge as recited in the present claims" (id.). The Examiner determines that it would have been obvious "to use [Yau's] continuous inkjet composition in [Trafton's] cartridge, as doing so would amount to nothing more than use of known composition for its intended use, in a known environment to accomplish entirely expected results" (id.). Appellants make the following principal arguments urging reversal of Rejection I: (1) Yau's "continuous ink-jetting process ... is a fundamentally different process from [Trafton's] thermal ink-jetting and piezoelectric ink-jetting processes" (Appeal Br. 18; see generally id. at 18- 8 Non-Final Office Action mailed July 28, 2016. 4 Appeal2017-007154 Application 13/409,074 21; Reply Br. 4--8), (2) Yau does not disclose the specific combination of white pigment particles with hollow particles (Appeal Br. 21 ), and (3) the Specification's Table 3 demonstrates "[t]he synergistic effect of the white pigment particles and the hollow particles," thereby providing "evidence that the present claims provide unexpected results" (id. at 22). Appellants' arguments are not persuasive. With regard to argument (1 ), the Examiner found that Yau discloses a continuous inkjet printing process, which includes providing a main fluid supply of a continuous inkjet printer with an aqueous ink composition of the invention; ... pumping the ink composition from the main fluid supply to a print head and ejecting a continuous stream of the ink composition from the print head which continuous stream is broken into spaced droplets. (Ans. 3 (emphasis omitted) (citing Yau, Abstract, i-f 9)). Likewise, the Examiner found that Leach9 provides evidence that continuous inkjet printing may make use of an ink supply, a pump, and a head assembly (see Ans. 2 (citing Leach Fig. 2.31)). As the Examiner found, Leach further provides evidence that Yau's continuous ink-jet print head can incorporate a piezo-crystal head assembly to control the size and spacing of ink droplets (Ans. 2 (citing Leach 54; Fig. 2.31)). Moreover, Yau specifically incorporates by reference the disclosure of Jeanmaire, 10 which is drawn to continuous inkjet printers in which a piezoelectric actuator breaks the ink stream into droplets (Ans. 3--4 (citing Jeanmaire 9:50-58)). Trafton similarly incorporates a piezoelectric inkjet 9 Leach et al. The Printing Ink Manual (Van Nostrand Reinhold (International) Co. Ltd. 4th ed. 1988). 10 Jeanmaire et al., U.S. Patent No. 6,588,888 B2, issued July 8, 2003. 5 Appeal2017-007154 Application 13/409,074 printhead that is mounted or integral to an ink cartridge (see Trafton 1 :28- 33). Thus, we are not persuaded that Yau's continuous ink-jetting process is "a very different process from the piezoelectric printing disclosed by Trafton" (Reply Br. 5). For the reasons set forth above and in the Examiner's Answer, we agree with the Examiner that "nothing within the scope of Yau or the references incorporated by reference therein excludes the piezo-electric actuator disclosed [in] Trafton" (Ans. 6). Therefore, Appellants have not persuaded us that the Examiner erred in concluding that it would have been obvious to one of ordinary skill in the art to use Yau's modified continuous inkjet composition in Trafton's cartridge. Regarding argument (2), Appellants' arguments are not persuasive because Yau specifically discloses that the ink composition may include Temple's hollow organic polymer particles as well as inorganic white pigments such as calcium carbonate, barium sulfate, silica, and titanium dioxide (Yau i-f 14 (emphasis added); see also id. i-f 11 ("A wide variety of organic and inorganic pigments, alone or in combination with additional pigments or dyes, can be in the present invention.") (emphasis added)). "[W]here a skilled artisan merely pursues 'known options' from a 'finite number of identified, predictable solutions,' obviousness under § 103 arises." In re Kubin, 561F.3d1351, 1359 (Fed. Cir. 2009) (quoting KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)). With regards to Appellants' argument (3), Appellants further contend that "even if a prima facie case were established, it would be rebutted by the unexpected results provided by the claims" (Appeal Br. 23). 6 Appeal2017-007154 Application 13/409,074 The burden of showing unexpected results, or criticality of a particular item, rests on the person who asserts them by establishing that there is a difference between the claimed invention and the closest prior art and that this difference would have been unexpected by a person having ordinary skill in the art at the time of the invention. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003). In this instance, we agree with the Examiner that the inventive examples are not commensurate in scope with claim 1 because the claim encompasses any amount of white pigment particles while Appellants' examples have a limited range of concentrations (Ans. 11; see, e.g., Spec. i-f 74, Table 3 (exemplifications are limited to only titanium dioxide at concentrations of 0%, 2.5%, 5%, and 20%)). Furthermore, exemplifications are limited to a specific aqueous ink vehicle, hollow polymeric ROP AQUE particles, and one soluble polyurethane, whereas the claims encompass any aqueous ink vehicle, any type of cross-linked polymer shell as the hollow particle, and any type of soluble polyurethane (see Ans. 11; Spec. i-fi-1 68-7 4, Examples 1-3). We note that Appellants have not established the criticality over the entire claimed range of hollow polymeric particles and the exemplified amounts of these particles with Ti02 yielded additive rather than synergistic L *effects (see Spec. i-f 74, Table 3). Thus, when all of the evidence and arguments set forth by Appellants and the Examiner are considered, the preponderance of the evidence supports the Examiner's conclusion of obviousness. 7 Appeal2017-007154 Application 13/409,074 Accordingly, we affirm Rejection I of independent claim 1 under 35 U.S.C. § 103(a). In the absence of arguments specific to their patentability, dependent claims 2---6, 8, 21, and 24 and independent claim 20 (subject to Rejections I and II) will fall with independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Rejection III Appellants' arguments are directed to limitations recited in independent claim 14 (see generally Appeal Br. 23-25). Accordingly, our discussion will focus on Rejection III to claim 14. The Examiner finds that Yau teaches each of the features of claim 14, with the exception that Yau does not disclose that the hollow polymer particles are crosslinked (Final Act. 3; Non-Final Act. 13). The Examiner finds that Temple teaches "hollow polymer particles formed from a thermosetting ... crosslinked resin such as styrene, methacrylic acid, methyl methacrylate and acrylonitrile" (Non-Final Act. 13 (citing Temple Abstract, 2:58-59, 3:56---68, 4:25--45)). The Examiner determines that [g]iven that both Yau[] and Temple are drawn to compositions containing hollow polymer particles, in light of the particular advantages provided by the use and control of [Temple's] hollow polymer particles ... , it would therefore have been obvious to one of ordinary skill in the art to utilize [Temple's] particles ... in [Yau' s] composition ... with a reasonable expectation of success. (Non-Final Act. 14). Appellants make the following principal arguments urging reversal of Rejection III: (1) the Examiner has not established a prima facie case of obviousness because "Yau and Temple do not teach or suggest the specific 8 Appeal2017-007154 Application 13/409,074 combination of white pigment particles and hollow cross-linked polymer particles as required by claim 14," (Appeal Br. 24), (2) neither Yau nor Temple teaches or suggests "the narrow ranges of these ingredients required by claim 14" (id.), and (3) "even if a prima facie case were established, claim 14 provides unexpected results that rebut such a prima facie case" (id.; see also id. ("the synergistic effect of using these ingredients together is an unexpected result.")). Appellants' arguments are not persuasive. With regard to argument (1 ), Appellants have not identified reversible error in the Examiner's rationale, as set forth above, for combining Temple's void-containing crosslinked polymer particles with Yau's ink comprising hollow polymer particles (see Non-Final Act. 14). Furthermore, we agree with the Examiner that Yau "necessarily discloses a method of reducing an amount of white pigment particles in a white ink as recited in the present claims" because Yau' s ink composition comprises hollow polymer and white pigment particles (Ans. 16). Regarding argument (2), "[a] primafacie case of obviousness typically exists when the ranges of the claimed composition overlap the ranges disclosed in the prior art." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)); see also In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974) (concluding that a claimed invention was rendered prima facie obvious by a prior art reference whose disclosed range (0.020--0.035% carbon) overlapped the claimed range (0.030--0.070% carbon)). In this instance, the claimed reduced range of hollow particles, about 1 % to 5% by weight, and the claimed range of hollow cross-linked particles, 0.1--4.0% by weight, overlaps Yau's explicitly preferred pigment particles 9 Appeal2017-007154 Application 13/409,074 range of "1 to 6 wt %" (Yau i-f 11 ). Thus, for the reasons set forth above and in the Answer, Appellants' arguments have not identified reversible error in the Examiner's conclusion of obviousness in Rejection III (see also Ans. 16-18). Appellants' argument (3) alleging unexpected and synergistic results are similarly unconvincing for the reasons set forth above discussing Rejections I and II and in the Answer (see Ans. 12-13, 17-18). Therefore, Appellants have not shown reversible error in the obviousness rejection set forth by the Examiner. Accordingly, we affirm Rejection III of independent claim 14 under 35 U.S.C. § 103(a). In the absence of arguments specific to their patentability, dependent claims 15 and 22 (subject to Rejection III) fall with claim 14. 37 C.F.R. § 41.37(c)(l)(iv). Rejections IV and V Appellants' arguments urging reversal of Rejections IV and V rely upon the same assertions urging reversal of Rejection I to claim 1 (Appeal Br. 26-27). Appellants' arguments are not persuasive for the reasons set forth above discussing Rejections I and II and in the Examiner's Answer (Ans. 19-21). Accordingly, we affirm Rejections IV and Vofclaims 1---6, 8, 20, 21, and 24 under 35 U.S.C. § 103(a). Rejection VI Appellants' arguments are directed to limitations recited in independent claim 14 (see generally Appeal Br. 27-28). Accordingly, our discussion will focus on Rejection VI to claim 14. 10 Appeal2017-007154 Application 13/409,074 The Examiner finds that Yau teaches each of the features of claim 14, with the exception that Yau does not disclose that the hollow polymer particles are crosslinked (Final Act. 4--5; Non-Final Act. 29--30). The Examiner finds Kagata teaches that hollow resin particles comprising functional vinyl monomers are copolymerized with a vinyl monomer to obtain a highly crosslinked state, thereby imparting desired heat resistance, solvent resistance, and solvent dispensability, and light scattering properties (Non-Final Act. 30-31). The Examiner determines that it would have been obvious to the ordinary skilled artisan to include Kagata's crosslinking monomers in Yau's white ink composition because: (i) Yau and Kagata are drawn to white ink compositions comprised of hollow particles, (ii) Yau does not explicitly prohibit other ingredients, and (iii) Kagata teaches imparting desired properties by including hollow particles with crosslinking monomers in Yau's ink composition with a reasonable expectation of success (id. at 31 ). Appellants make the following principal arguments urging reversal of Rejection VI: (1) the Examiner has not established a prima facie case of obviousness because "Yau and Kagata do not teach or suggest the specific narrow ranges for the amounts of white pigment particles and hollow particles required by claim 14," (Appeal Br. 27), and (2) "Appellants renew the arguments made ... with respect to the unexpected results provided by the present claims" (id.), and (3) "Yau and Kagata do not suggest the synergistic effects discovered by the present inventors" (id). Appellants' arguments are not persuasive for the reasons set forth above discussing Rejection III and in the Examiner's Answer (Ans. 12-13, 21). Thus, Appellants have not identified any deficiencies in the Examiner's 11 Appeal2017-007154 Application 13/409,074 combination ofYau's and Kagata's teachings; nor have Appellants shown reversible error in the obviousness rejection set forth by the Examiner. Accordingly, we affirm Rejection VI of independent claim 14 under 35 U.S.C. § 103(a). In the absence of arguments specific to their patentability, dependent claims 15 and 22 (subject to Rejection VI) fall with claim 14. 37 C.F.R. § 41.37(c)(l)(iv). Rejections VII and VIII Appellants' arguments are directed to limitations recited in independent claim 16 (see generally Appeal Br. 28-29). Accordingly, our discussion will focus on Rejection VII to claim 16. Appellants make the following principal arguments urging reversal of Rejection VII: (1) the Examiner has not established a prima facie case of obviousness because "Yau, Kagata, and Figov do not teach or suggest the specific narrow ranges for the amounts of white pigment particles and hollow particles required by claim 16," (id. at 28), (2) "Appellants renew the arguments made ... with respect to the unexpected results provided by the present claims" (id.), and (3) neither Yau, Kagata, nor Figov suggest the discovered synergistic effects (id). Appellants' argument ( 1) is not persuasive. The Examiner has established a prima facie case of obviousness because Yau discloses an ink composition comprising white hollow polymeric particles in the amount of 1 to 6 wt. %, overlapping the claimed range of 0 .1 to 2 wt. %, while Kagata discloses an ink composition comprising hollow polymer particles and inorganic metal oxide white pigments in the amount of 1.0 to 20 wt.%, overlapping the claimed range of about 1 to about 5 wt.%. (Ans. 22; see Peterson, 315 F.3d at 1329). 12 Appeal2017-007154 Application 13/409,074 Appellants' arguments (2) and (3) are not persuasive for the reasons set forth above discussing Rejections I-III and in the Examiner's Answer (Ans. 13, 22-23). Thus, Appellants have not identified any deficiencies in the Examiner's combination ofYau's, Kagata's, and Figov's teachings; nor have Appellants shown reversible error in the obviousness rejection set forth by the Examiner. Accordingly, we affirm Rejection VII of independent claim 16 under 35 U.S.C. § 103(a). In the absence of arguments specific to their patentability, dependent claims 17-19 and 23 (subject to Rejections VII and VIII) will fall with independent claim 16. 37 C.F.R. § 41.37(c)(l)(iv). CONCLUSION We AFFIRM the rejection of claims 1--4, 6, 8, 20, 21, and 24 under 35 U.S.C. § 103(a) over Yau, Temple, and Figov, in view of Trafton. We AFFIRM the rejection of claim 5 under 35 U.S.C. § 103(a) over Yau, Temple, Figov, and Trafton, in view ofMihoya. We AFFIRM the rejection of claims 14, 15, and 22 under 35 U.S.C. § 103(a) over Yau in view of Temple. We AFFIRM the rejection of claims 1--4, 6, 8, 20, 21, and 24 under 35 U.S.C. § 103(a) over Yau, Kagata, and Figov, in view of Trafton. We AFFIRM the rejection of claim 5 under 35 U.S.C. § 103(a) over Yau, Kagata, Figov, and Trafton, in view ofMihoya. We AFFIRM the rejection of claims 14, 15, and 22 under 35 U.S.C. § 103(a) over Yau in view ofKagata. We AFFIRM the rejection of claims 16-18 and 23 under 35 U.S.C. § 103(a) over Yau and Kagata, in view ofFigov. 13 Appeal2017-007154 Application 13/409,074 We AFFIRM the rejection of claim 19 under 35 U.S.C. § 103(a) over Yau, Kagata, and Figov, in view of Mihoya. 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 14 Copy with citationCopy as parenthetical citation