Ex Parte Jakubek et al

Patent Trial and Appeal Board

Mar 22, 2018

13409074 (P.T.A.B. Mar. 22, 2018)

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.)).
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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.
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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.
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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.
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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).
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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.
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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
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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
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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.
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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
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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).
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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.
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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
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