Ex Parte Kabalnov

Board of Patent Appeals and Interferences

Apr 13, 2011

11581182 (B.P.A.I. Apr. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEXEY S. KABALNOV
____________

Appeal 2010-009311
Application 11/581,182
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
refusal to allow claims 1 and 3 through 19, all of the claims pending in the
above-identified application.1 We have jurisdiction under 35 U.S.C. § 6.

1 See Appeal Brief (“App. Br.”) filed October 26, 2009, 3, the Examiner’s
Answer (“Ans.”) filed March 22, 2010, 2, and the Reply Brief (“Reply Br.”)
filed May 211, 2010, 3.
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STATEMENT OF THE CASE
The subject matter on appeal, like the subject matter on previous
Appeal No. 2010-004727 (Application 11/690,205)2, is directed to “ink
compositions and methods for making the same” (Spec. 1:9-10). The
Specification of the present application, like the Specification of Application
11/690,205 subject of Appeal No. 2010-004727, states that “[w]ithout being
bound to any theory, it is believed that the combination of a betaine solvent
and another organic solvent selected from glycerol and/or 2-pyrrolidone in
the ink composition permits the ink composition to accommodate an
effective amount of polymeric binders,” which in turn is said to provide
various advantageous properties (Spec. 3:8-16)3. Details of the appealed
subject matter are recited in representative claim 17 reproduced from the
Claims Appendix to the Appeal Brief as shown below:

17. A method of forming an image on a substrate, comprising:

providing an ink composition including:

a solvent system present in an amount ranging from about 10.0
wt% to about 25.0 wt%, wherein the solvent system includes:

a betaine solvent represented by the formula (R3)N+-CH2-COO-
and glycerol, 2-pyrrolidone, or a combination thereof, wherein R is CH3;

2 Appellant states that the presently appealed subject matter in the above-
identified application is related to the subject matter in Application
11/690,205, which was appealed and decided on March 8, 2011. (See
Response to Notice of Non-Compliant Appeal Brief filed December 18,
2009, page 2).
3 Appellant has not identified any factual basis for these alleged advantages
in this record.
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at least one surfactant present in an amount ranging from 0.0 wt%
to about 10.0 wt%;

at least one polymeric binder present in an amount ranging from
about 2.0 to about 6.0 wt%;

water; and

a pigment; and

establishing the ink composition on at least a portion of the
substrate.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following prior art references at page 3 of the
Answer:
Gore US 5,911,816 Jun. 15, 1999
Tsutsumi US 6,031,019 Feb. 29, 2000

Appellant seeks review of the following grounds of rejection set forth
in the Answer:
1. Claims 1 and 3 through 19 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Tsutsumi and Gore; and
3. Claims 1 and 3 through 19 provisionally on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 2, 5, 7, 8, 10-15, 18, and 19 of copending Application 11/690,205
filed March 23, 2007.4
FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUES, ANALYSES,
AND CONCLUSION

4 The Examiner has inadvertently rejected claim 2 which is no longer
pending in the above-identified application. (Compare Ans. 8 with App. Br.
3 and Reply Br. 3).
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I. CLAIMS 1 AND 3-19 UNDER 35 U.S.C. § 103(a) 5
Appellant does not dispute the Examiner’s finding that Tsutsumi
teaches an ink composition comprising:
• 0.5 to 50 % by weight (col. 3, line 54) of a betaine
solvent (col. 2, lines 10-20) and that the betaine solvent is
trimethylglycine (col. 3, line 39).
• At least one surfactant in an amount 0.01 to 10 % (col.
12, lines 10-15)
• At least one polymeric binder in an amount of 1 to 30
% by weight (col. 11, lines 25-35).
• Water (col. 11, lines 55-60)
• A pigment (col. 4, line 22) in an amount from 1 to 30
wt % (col. 4, lines 35-40).

Tsutsumi also teaches a method of making the ink
composition (col. 7, lines 5-25) as well as a method of forming
an image on a substrate where the ink composition is
established on at least a portion of the substrate (col. 8, lines
25-30).

(Compare Ans. 3-5 with App. Br. 6-11 and Reply Br. 5-9.) Rather,
Appellant contends that one of ordinary skill in the art would not have been
led to employ 2-pyrrolidone, glycerol, or combination thereof, in the ink
composition containing a betaine solvent taught by Tsutsumi. (See App. Br.
6-11 and Reply Br. 5-9.)

5 Appellant argues claims 1, 12, 17, and 19 as a group and does not address
the limitations of the other claims on appeal. See App. Br. 6-11. Therefore,
for purpose of this rejection, we select claim 17 and decide the propriety of
the rejection of all of the claims on appeal based on claim 17 alone pursuant
to 37 C.F.R. § 41.37(c)(1)(vii) (2007). Even were we to separately consider
claims 1, 12, and 19, the outcome would not be altered since they all require
the presence of the same amounts of the claimed ingredients in the claimed
ink system or ink vehicle.

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Thus, the dispositive question is: Would the collective teachings of
Tsutsumi and Gore have led one of ordinary skill in the art to employ 2-
pyrrolidone, glycerol, or combination thereof in the ink composition
containing a betaine solvent taught by Tsutsumi within the meaning of 35
U.S.C. § 103(a)? On this record, we answer this question in the affirmative.
Although Tsutsumi does not specifically mention using 2-
pyrrolidone, glycerol, or a combination thereof in its ink composition
containing 0.5 to 50 % by weight of a betaine solvent, 1 to 30 wt % of a
polymeric binder, water, and 1 to 30 wt % of a pigment as recognized by
both the Examiner and Appellant, it does teach employing 0.1 to 50 wt% of
conventional wetting agents, such as polyhydric alcohols, and other optional
conventional additives in its ink composition useful for ink jet printing. (See
Tsutsumi, col. 11, l. 34 and ll. 61-67 and col. 12, ll. 1-2.) We also find that
Gore not only teaches adding various known optional ingredients, including
0 to 70 wt % of a humectant6, such as 2-pyrrolidone and glycerol, in its ink
composition suitable for ink jet printing, but also explains that the
polyhydric alcohols taught by Tsutsumi include 2-pyrrolidone and glycerol
(col. 4, ll. 45-66).
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ polyhydric alcohols,
such as 2-pyrrolidone and glycerol, in Tsutsumi’s ink composition
containing 0.5 to 50 % by weight of a betaine solvent, water, and 1 to 30 wt

6 The Free Online Dictionary (TheFreeDictionary.com, Humectant,
http://www.thefreedictionary.com/humectant (last visited February 28,
2011)) provided in previous Appeal No. 2010-004727 (Application
11/690,205) defines a humectant as a substance that promotes moisture
retention or wetting.
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% of a pigment, which is useful for forming an image on a substrate. From
the collective teachings of Tsutsumi and Gore, one of ordinary skill in the art
would have had a reasonable expectation of successfully imparting desired
wetting or humectant properties to the ink composition taught by Tsutsumi.
In reaching this determination, we have considered Appellant’s
arguments at page 9 of the Appeal Brief regarding the use of a betaine
solvent and a particular polyhydric alcohol to accommodate an effective
amount of polymeric binders not contemplated by either Tsutsumi or Gore
and pages 5-6 of the Reply Brief regarding the identification of betaine and a
particular polyhydric alcohol as a solvent system unlike Tsutsumi or Gore.
However, as long as some motivation, suggestion or reason to use them in
the ink composition taught by Tsutsumi to arrive at the same mixture as
those claimed, “the law does not require that the references be combined for
the reasons contemplated by the inventor.” See In re Beattie, 974 F.2d 1309,
1312 (Fed. Cir. 1992); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
419-420 (2007).
Accordingly, based on the totality of record, including due
consideration of the arguments advanced by the Examiner and Appellant in
the Answer, Appeal Brief and Reply Brief, respectively, we determine that
the preponderance of evidence weighs most heavily in favor of obviousness
within the meaning of 35 U.S.C. § 103(a).
II. CLAIMS 1 AND 3-19 UNDER NONSTATUTORY
OBVIOUSNESS-TYPE DOUBLE PATENTING
Appellant does not dispute the Examiner’s determination that the
claims on appeal and the claims of copending Application 11/690,205 filed
March 23, 2007are not patentably distinct since “they both recite ink jet
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compositions which comprise the same amounts of the same solvent system,
surfactant, polymeric binder, water and pigment.” (Compare Ans. 8-9 with
App. Br. 11 and Reply Br. 9.) Accordingly, we summarily affirm this
ground of rejection.
ORDER
Upon consideration of the record, and for the reasons set forth in the
Answer and above, it is
ORDERED that the decision of the Examiner to reject claims 1 and 3
through 19 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Tsutsumi and Gore is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 1 and 3 through 19 on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over the claims of copending
Application 11/690,205 filed March 23, 2007 is AFFIRMED; and
FURTHER ORDERED that 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)(iv).
AFFIRMED

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