Ex Parte Jakubek et al

Patent Trial and Appeal Board

Apr 22, 2016

13409074 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/409,074 02/29/2012
22879 7590 04/26/2016
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
04/26/2016 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
Appeal2014-007450
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 24, 2013 decision finally rejecting claims 1-8 and 14-20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.
CLAIMED SUBJECT MATTER
Appellants' invention is directed to white ink compositions for use in
inkjet printers (Spec. ,-i,-i 3, 38). Claims 1 and 16 are representative and are
1 Appellants identify the real party in interest as Hewlett-Packard
Development Co., L.P. (Appeal Br. 2).
Appeal2014-007450
Application 13/409,074
reproduced below from the Claims Appendix of the Appeal Brief (key claim
limitations shown in italics):
1. A white ink composition comprising:
an aqueous ink vehicle;
white pigment particles; and
hollow particles comprising a cross-linked polymer
shell,
wherein the white ink composition is in an inkjet ink
cartridge and has a viscosity of 50 centipoise or less, and
wherein an amount of hollow particles in the white ink
composition is 0.1% to 4.0% by weight.
16. A white ink composition comprising:
an aqueous ink vehicle;
white pigment particles; and
hollow particles comprising a cross-linked polymer
shell,
wherein the white ink composition has a viscosity of 50
centipoise or less, and wherein an amount of hollow
particles in the white ink composition is 0.1% to 2% by
weight.
Appeal Br. 57, 59 (Claims Appendix).
REJECTIONS
I. Claims 1-8, and 202 are rejected under 35 U.S.C. § 112, iJ 2 as
indefinite.
2 We assume that the Examiner's omission of claim 20 in the summary
statement of this rejection in the Final Action is an inadvertent error (Final
Act. 2). The Examiner included grounds for rejecting claim 20 in the Final
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IL Claims 1--4, 6-8, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kagata3 in view of Grezzo Page.4
III. Claim 5 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kagata in view of Grezzo Page and Mihoya. 5
IV. Claims 1--4, 6-8, 14, 15, and 20 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Kagata.
V. Claim 5 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kagata in view of Mihoya.
VI. Claims 1--4, 6, 8, and 16-18 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Inoue6 in view of
Kagata.
VII. Claims 5 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inoue in view of Kagata and Mihoya.
VIII. Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inoue in view ofKagata and Goto. 7
DISCUSSION
Rejection under§ 112, iJ 2 as indefinite
Section 112 ,-i 2, requires "that a patent's claims, viewed in light of the
specification ... inform those skilled in the art about the scope of the
invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments,
Action (id. at 3) and included claim 20 in his response to arguments (Ans.
3).
3 Kagata et al., U.S. 2010/0028625 Al, published Feb. 4, 2010.
4 Grezzo Page et al., U.S. Patent No. 5,708,095, issued Jan. 13, 1998.
5 Mihoya et al., U.S. Patent No. 5,719,206, issued Feb. 17, 1998.
6 Inoue et al., U.S. Patent No. 4,942,185, issued July 17, 1990.
7 Goto, U.S. 2008/0233363 Al, published Sept. 25, 2008.
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Application 13/409,074
Inc., 134 S. Ct. 2120, 2129 (2014). The Examiner has rejected claims 1-8
and 20 under 35 U.S.C. § 112, iJ 2 on the grounds that "it is not clear what
the claims are currently drawn to, i.e.[,] an ink composition or a cartridge",
because both claims 1 and 20 are directed to a "white ink composition"
which "is in an inkjet cartridge" (Final Act. 2-3).
Upon consideration of the Examiner's findings, the evidence on this
record and the arguments advanced by Appellants, the preponderance of
evidence weighs in favor of a conclusion that the claims comply with the
requirement to particularly point out and distinctly claim the subject matter.
In particular, Appellants' arguments are persuasive that the skilled artisan
would clearly understand claims 1 and 20 because the Specification
addresses issues associated with the jetting properties of white ink
compositions from cartridges (Appeal Br. 6-7, citing Spec. iii! 38, 41, 57-60,
72). Thus, we find that a person of ordinary skill in the art would understand
that the claims, which recite the limitation "wherein the white ink
composition is in an inkjet ink cartridge," require the presence of an ink jet
cartridge with the white ink composition therein.
Accordingly, we reverse the rejections of claims 1 and 20 under 35
U.S.C. § 112, iJ 2 as well the rejections of the claims which depend from
them.
Rejections under§ 103(a)
Rejections II-V
The Examiner finds that Kagata teaches each of the features of
independent claim 1, except that "[t]he only deficiency of Kagata[] is that
the reference discloses the use of 5[-20] wt.% hollow particles, while the
present claims require less than 5 wt.%." (Final Act. 4, 11). The Examiner
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Application 13/409,074
states that a prima facie case of obviousness exists because although the
claimed amount of hollow particles in the white ink composition is 0.1--4.0%
by weight and the amount taught by Kagata "do not overlap," they "are close
enough so that one skilled in the art would have expected them to have the
same properties" (id. at 5, 11 ). The Examiner further determines that it
would have been obvious to arrive at the claimed invention because the
claimed amount of hollow particles is "an obvious variant of the amounts
disclosed in [the Kagata] reference" (id. at 5, 12).
With respect to Rejection II, the Examiner notes that Kagata does not
disclose the claimed ink viscosity of 50 centipoise ( cP) or less. The
Examiner finds, however, that Grezzo Page teaches that "pigmented inkjet
inks suitable for ink jet printing systems have a viscosity which is no greater
than 20 cP, within the range of 1.0 cP to about 10.0 cP at 20°C" (id. at 5).
The Examiner determines that it would have been obvious to the ordinary
skilled artisan to adjust the ink composition of Kagata to the viscosity taught
by Grezzo Page because both references are "drawn to pigmented inkjet ink
compositions and ... Grezzo[] Page discloses viscosities and surface tension
required for inkjet inks" (id.).
Regarding Rejection IV, the Examiner finds, in the alternative, that
the claimed ink viscosity of 50 centipoise ( cP) or less is inherent in Kagata's
ink "because [Kagata's disclosed] ink composition ... is identical in
composition to the ink composition claimed in the instant application" (id. at
12). Therefore, according to the Examiner, "a prima facie case of ...
obviousness has been established" (id.).
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Application 13/409,074
Appellants' arguments are directed to limitations recited in
independent claim 1 (see generally Appeal Br. 9-31; Reply Br. 5-8).
Accordingly, our discussion will focus on claim 1.
Appellants argue that Kagata' s range of 5-20% for the amount of
hollow particles in the white ink composition teaches away from the claimed
range of 0.1--4.0% by weight (see, e.g., Appeal Br. 10-13, 25-27, 52, 53;
Reply Br. 5-7). Appellants argue that the Examiner ignores Kagata's
teaching that, when the amount of hollow particles is less than 5% by
weight, "the color density, such as the degree of whiteness, tends to be
insufficient" (Appeal Br. 10, citing Kagata iJ 38).
The Examiner, on the other hand, finds that Kagata's teaching does
not teach away from Appellants' claimed range of 0 .1-4. 0 % because the
word "'tends"' means, inter alia, "'to be disposed or inclined,"' and,
therefore, does not indicate that an amount less than 5% by weight cannot be
used (Ans. 6).
It is well understood that "rejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007), quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). The
fact that a reference may be modified to reflect features of the claimed
invention does not make the modification, and hence the claimed invention,
obvious unless the prior art suggested the desirability of such modification.
In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990).
In this instance, the absence of an articulated reason to decrease
Kagata' s disclosed amount of hollow particles below 5% is significant in
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view of Kagata's teaching of the lower limit required for sufficient color
density. Appellants' arguments are persuasive because the Examiner has not
provided adequate reasoning to explain why a person of skill in the art
would have modified the teachings of Kagata to decrease the amount of
hollow particles in the white ink composition below the disclosed 5% by
weight. Even if 4% and 5% were considered to be sufficiently close they
would have been expected to have imparted the same properties to the ink
compositions (a question we need not and do not address), the Examiner has
not adequately explained why, in light of Kagata' s teaching that less than
5% of hollow particles tends to produce insufficient color density, a person
of skill in the art would have produced a composition having 0.1--4% of
hollow particles.
Accordingly, we reverse Rejections II and IV of independent claims 1,
14, and 20 under 35 U.S.C. § 103(a), as well as the rejection of the claims
which depend from them (i.e., claims 2--4, 6-8, and 15). Likewise, we
reverse Rejections III and V under 35 U.S.C. § 103(a).
Rejections VI and VII
The Examiner finds that Inoue discloses a white ink composition
comprised of an aqueous emulsion of hollow resin particles in the amount of
1-20 wt.% (Final Act. 21). Inoue teaches that "[t]he hollow resin particles
are contained in amounts of 0.5-40% by weight, preferably of 1-20% by
weight, as solids, based on the ink compositions" (Inoue, col. 2, 11. 39--41 ).
The Examiner further finds Inoue teaches each of the features of
independent claim 16, except that "the reference does not disclose that the
shell of the polymeric hollow particles is cross-linked as presently claimed"
(Final Act. 21-22). The Examiner finds Kagata teaches that the hollow resin
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Application 13/409,074
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 (id. at 22).
The Examiner determines that it would have been obvious to the
ordinary skilled artisan to include crosslinking monomers in Inoue's white
ink composition because: (i) Inoue and Kagata are drawn to white ink
compositions comprised of hollow particles, (ii) Inoue does not explicitly
prohibit other ingredients, and (iii) Kagata teaches imparting desired
properties by including these monomers in Inoue's hollow particles with a
reasonable expectation of success (id.).
Appellants' arguments for Rejections VI and VII are directed to
limitations recited in independent claim 16 (see generally Appeal Br. 32-46;
Reply Br. 5-8).
Appellants makes the following principal arguments urging reversal
of Rejection VI: ( 1) the skilled artisan would not combine the teachings of
Inoue and Kagata because Inoue is concerned with ink compositions for
marking pens, whereas Kagata is concerned with ink compositions for inkjet
printing (see, e.g., Appeal Br. 33-37, 53-54; Reply Br. 8), (2) Kagata
"teaches away from the lower part of Inoue's range [0.5% to less than 5% by
weight] of hollow particles, which is the one ingredient that the Office
contends would be obvious to a skilled artisan to modify" (Appeal Br. 41;
see also id. at 34-35, 53), and (3) the range of hollow particles recited in
claims 16 and 17, 0.1-2% and 1-2%, respectively, is significantly below
Kagata' s "less than 5%" of Kagata and, therefore, are not obvious variants
(see, e.g., Appeal Br. 44--46, 54).
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Application 13/409,074
With regard to argument ( 1 ), Appellants argue that Inoue is not
reasonably pertinent to the particular problem in which the inventor of an
inkjet ink composition is concerned with (Appeal Br. 36). In particular,
Appellants argue that Inoue is directed to the problem presented by the
formation of titanium dioxide deposits in marking pen ink compositions,
which results in writings of uneven darkness on paper (id. at 33).
"A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem." In re Klein, 647 F.3d
1343, 1348 (Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992)). "If a reference disclosure has the same purpose as the claimed
invention, the reference relates to the same problem, and that fact supports
use of that reference in an obviousness rejection" (id.).
In this instance, each of the cited references discloses the problem of
uneven printed medium coverage by white ink compositions comprised of
hollow resin particles (e.g., Inoue, col. 1, 11. 42-50; Kagata ,-i,-i 5-6, 41).
Accordingly, each reference has a disclosure with the same purpose as the
claimed invention (uneven coverage by white ink compositions), and are
properly applied in rejecting the claims. See Klein, 647 F.3d at 1348.
Kagata teaches that hollow resin particles may be copolymerized with
functional vinyl monomers to obtain a highly crosslinked state, thereby
imparting desired light scattering properties for increased coverage of a
printed medium.
Appellants have not persuaded us that the Examiner erred in
concluding that it would have been obvious to modify Inoue's white ink
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Application 13/409,074
composition to increase opacity on a printed medium with highly
crosslinked hollow resin particles, as taught by Kagata.
Regarding argument (2), Appellants' arguments are not persuasive
because the Examiner does not rely on Kagata for teaching the claimed
limitation of "wherein an amount of hollow particles in the white ink
composition is 0.1 % to 2% by weight" as recited in claim 16. Rather, the
Examiner relies on Inoue for teaching that hollow resin particles are
contained in amounts of 0.5--40% by weight and that the preferred range is
1-20% by weight.
With regards to Appellants' arguments (2) and (3), "[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 ranges of hollow particles recited in claims 16 and
17, 0.1-2% and 1-2%, respectively, overlap the ranges explicitly taught by
Inoue. For the reasons stated in the Examiner's Answer and above,
Appellants' arguments and Declaration8 have not identified reversible error
in the Examiner's prima facie case of obviousness for these rejections.
8 We do not find Appellants' Rule 132 Declaration convincing as evidence
of unexpected results because: (i) the Declaration did not test the closest
prior art's lower bound for the preferred amount of hollow particles, i.e.,
Kagata's 5 wt.% by weight (see Ans. 10; Appeal Br. 18), (ii) the Declaration
provides data testing only the amount of 1, 2, and 4% hollow particles that is
not commensurate with the scope of the claims, which recites an amount of
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Accordingly, we affirm Rejection VI of independent claims 1and16
and dependent claim 17 under 35 U.S.C. § 103(a). In the absence of
arguments specific to their patentability, dependent claims 2--4, 6, and 8 fall
with claim 1 and dependent claim 18 falls with claim 16 under Rejection VI.
Likewise, we affirm Rejection VII under 35 U.S.C. § 103(a).9 In the
absence of arguments specific to their patentability, dependent claims 5 and
19 fall with independent claims 1 and 16, respectively, under Rejection VII.
Rejection VIII
The Examiner finds that Inoue, in view of Kagata, teaches each of the
features of claim 20, with the exception that neither Inoue nor Kagata
disclose that the ink composition comprises a water soluble polyurethane
(Final Act. 26). The Examiner finds that Goto teaches water soluble
polyurethane resins in aqueous white ink compositions (id. at 27).
The Examiner determines that it would have been obvious to the
ordinary skilled artisan to include water soluble polyurethane resins in
Inoue's white ink composition because: (i) Inoue and Goto are drawn to
white ink compositions comprised of aqueous resins and titanium dioxide
hollow particles of 0.1-4% by weight (see claim 1 ), and (iii) the Declaration
provides data testing only the amount of 20 wt. % titanium dioxide that is
not commensurate with the scope of the claims, which recites a titanium
dioxide concentration of about 1 % to about 25% by weight (see claim 14;
Ans. 49).
9 Claim 7 was not subject to the§ 103(a) rejection over Inoue and Kagata
(Final Act. 18). Because we reverse the rejection of claim 7 over Kagata in
view of Grezzo Page, claim 7 is not currently subject to any rejection.
However, the Examiner may wish to consider whether the reasoning used to
reject claim 7 over Kagata in view of Grezzo Page (Final Act. 7), which was
not specifically disputed by Appellants, may be applicable to a possible
rejection of claim 7 over Inoue in view of Kagata.
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Application 13/409,074
pigment, (ii) Kagata does not explicitly prohibit other ingredients, and (iii)
Goto teaches imparting desired properties by including these soluble
polyurethanes to stably maintain the dispersed pigment uniformly in water
(id.).
Appellants argue that the transitional phrase of "consisting essentially
of," as recited in claim 20, effectively excludes the Examiner's reliance on
Inoue to support his prima facie case of obviousness because the water
soluble a-methylstyrene/styrene/acrylic acid copolymer is essential to
Inoue's ink composition (Appeal Br. 49-51, 55). Furthermore, according to
Appellants, Goto does not cure the deficiencies of the combined teachings of
Inoue and Kagata (id. at 50).
"The word 'essentially' [in the phrase 'consisting essentially of]
opens the claims to the inclusion of ingredients which would not materially
affect the basic and novel characteristics of appellant's composition as
defined in the balance of claim, according to the applicable law." In re
Janakirama-Rao, 317 F.2d 951, 954 (CCPA 1963). Appellants have the
burden of showing the basic and novel characteristics of the claimed
composition. In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964).
In this instance, we agree with the Examiner that the burden is on
Appellants to show that the additional ingredients in the prior art, i.e., a-
methylstyrene/styrene/acrylic acid copolymer, would be excluded from the
claims and that such ingredients would materially change the characteristics
of the Appellants' invention (Ans. 55). Appellants have not met their
burden-the record is silent as to any evidence which suggests that Inoue' s
copolymer would materially affect the basic and novel characteristics of the
claimed invention. Appellants, furthermore, have not identified any
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deficiencies in the Examiner's combination of Inoue's and Kagata's
teachings.
Accordingly, we affirm the Examiner's § 103(a) rejection of claim 20
under Rejection VIII.
CONCLUSION
We REVERSE the rejection of claims 1-8, and 20 under 35 U.S.C. § 112,
second paragraph, as indefinite.
We REVERSE the rejection of claims 1--4, 6-8, and 20 under
35 U.S.C. § 103(a) over Kagata in view of Grezzo Page.
We REVERSE the rejection of claim 5 under 35 U.S.C. § 103(a) over
Kagata in view of Grezzo Page and Mihoya.
We REVERSE the rejection of claims 1--4, 6-8, 14, 15, and 20 under
35 U.S.C. § 103(a) over Kagata.
We REVERSE the rejection of claim 5 under 35 U.S.C. § 103(a) over
Kagata in view of iviihoya.
We AFFIRM the rejection of claims 1--4, 6, 8, and 16-18 under
35 U.S.C. § 103(a) over Inoue in view ofKagata.
We AFFIRM the rejection of claims 5 and 19 under 35 U.S.C. § 103(a)
over Inoue in view of Kagata and Mihoya.
We AFFIRM the rejection of claim 20 under 35 U.S.C. § 103(a) over
Inoue in view of Kagata and Goto.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED-IN-PART
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