Ex Parte Kabalnov

Board of Patent Appeals and Interferences

Mar 4, 2011

11690205 (B.P.A.I. Mar. 4, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEXEY S. KABALNOV
____________

Appeal 2010-004727
Application 11/690,205
Technology Center 1700
____________

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

PAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
refusal to allow claims 1, 3 through 10, and 12 through 21, all of the claims

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-004727
Application 11/690,205

pending in the above-identified application.2 We have jurisdiction under 35
U.S.C. § 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “ink compositions and
methods for making the same” (Spec. 1, ll. 15-16). According to page 3,
lines 6-15, of the Specification, “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 is said to provide various
advantageous properties. Details of the appealed subject matter are recited
in representative claims 1 and 21 reproduced from the Claims Appendix to
the Appeal Brief as shown below:

1. An ink composition, comprising:

a solvent system present in an amount ranging from about 10 wt%
to about 25 wt%, wherein the solvent system includes:

a betaine solvent represented by the formula (R3)N+-CH2-COO-,
wherein R is CH3; and

2-pyrrolidone, glycerol, or combinations thereof;

at least one surfactant present in an amount up to about 10 wt%;

at least one polymeric binder present in an amount ranging from
about 2 wt% to about 6 wt%;

water; and

2 See Appeal Brief (“App. Br.”) filed September 11, 2009, page 3, the
Examiner’s Answer (“Ans.”) filed November 10, 2009, page 2, and the
Reply Brief (“Reply Br.”) filed January 11, 2010, page 3,
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a pigment present in an amount ranging from about 0.1 wt% to
about 5 wt%.

21. An ink composition, comprising:

a solvent system present in an amount ranging from about 10 wt%
to about 25 wt%, wherein the solvent system includes a betaine solvent
and 2-pyrrolidone, glycerol, or combinations thereof;

at least one surfactant present in an amount up to about 10 wt%;

at least one polymeric binder present in an amount ranging from
about 2 wt% to about 6 wt%, wherein the at least one polymeric binder is
selected from a polymer other than an emulsified polymer;

water; and

a pigment present in an amount ranging from about 0.1 wt% to
about 5 wt%.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following prior art references at page 3 of the
Answer:
Zhu US 5,889,083 Mar. 30, 1999
Gore US 5,911,816 Jun. 15, 1999
DeBoer US 5,970,873 Oct. 26, 1999
Tsutsumi US 6,031,019 Feb. 29, 2000
Takemoto US 6,488,751 B1 Dec. 3, 2002
Bauer US 2005/0171239 A1 Aug. 4, 2005

Appellant seeks review of the following grounds of rejection set forth
in the Answer:
1. Claim 21 under 35 U.S.C. § 112, first paragraph, as lacking
written descriptive support in the application disclosure as originally filed;
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2. Claims 1, 5 through 8, 10, 12 through 15, 18, and 19 under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of Tsutsumi
and Gore;
3. Claims 3, 4, 17, and 20 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Tsutsumi, Gore, and Bauer;
4. Claims 9 and 16 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Tsutsumi, Gore, and Takemoto; and
5. Claim 21 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Zhu, Tsutsumi, and DeBoer (App. Br. 6-7 and Reply
Br. 4).
FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUES, ANALYSES,
AND CONCLUSION
I. CLAIM 21 UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
The Examiner has found that the negative limitation “wherein the at
least one polymeric binder is selected from a polymer other than an
emulsified polymer” recited in claim 21 violates the written description
requirement of the first paragraph of 35 U.S.C. § 112 (Ans. 3-4 and 9). On
the other hand, Appellant contends that the inventors had possession of such
polymeric binders based on page 6, lines 20-23, of the Specification as
originally filed (App. Br. 4-5 and Reply Br. 7-9).
Thus, the dispositive question is: Does the written description at page
6, lines 20-23, of the Specification, as originally filed, reasonably convey to
one of ordinary skill in the art that the inventors had possession of any and
all polymeric binders, except for an emulsified polymeric binder at the time
the instant application was filed within the meaning of 35 U.S.C. § 112, first
paragraph? On this record, we answer this question in the negative.
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As our reviewing court stated in Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed. Cir. 1991) (emphasis in original):
The purpose of the ‘written description’ requirement [under 35
U.S.C. § 112, first paragraph,] is broader than to merely explain
how to ‘make and use’; the applicant must also convey with
reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention. The
invention is, for purposes of the ‘written description’ inquiry,
whatever is now claimed.
“One shows that one is ‘in possession’ of the invention by describing
the invention, with all its claimed limitations, not that which makes it
obvious.” Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) (emphasis added; original emphasis not reproduced). “Although
the exact terms need not be used in haec verba, . . . , the specification must
contain an equivalent description of the claimed subject matter.” Id.
As asserted by Appellant at page 8 of the Brief, the Specification, at
page 6, lines 20-23, discloses that “polymeric binder [which] is [generally]
water-soluble3 and may be selected from those of the salts of styrene-
(meth)acrylic acid copolymers, polyurethanes, other similar polymeric
binders, or combinations thereof” (emphasis added.) This original
Specification description relied upon by Appellant does not exclude all
emulsified polymeric binders, but includes those generally water-soluble
binders, such as the salts of styrene- (meth)acrylic acid copolymers,
polyurethanes, other similar polymeric binders, or combinations thereof.”
Yet, the negative limitation in question includes all non-emulsified forms of

3 The so-called “minor variation” referred to at page 6 of the Reply Brief in
terms of “generally water-soluble polymeric binders” (emphasis added)
would include those partially water insoluble polymer binders.
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polymer binders, including, for example, those polymeric binders not similar
to those of the salts of styrene-(meth)acrylic acid copolymers and/or
polyurethane, which are not described in the Specification, as originally
filed.
Under these circumstances, it cannot be said that the application
disclosure, as originally filed reasonably conveys to one of ordinary skill in
the art that the inventors had possession of polymeric binders that include all
non-emulsified forms of polymer binders within the meaning of 35 U.S.C. §
112, first paragraph. Se, e.g., Ex parte Grasselli, 231 USPQ 393, 394 (BPAI
1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984) (held that the use of a
negative limitation to exclude only some ingredients from a chemical
composition based on the absence of an explicit original disclosure relating
to the use of such and other ingredients violates the written description
requirement of 35 U.S.C. § 112, first paragraph).
In reaching this determination, we have considered Appellant’s
reliance on Ex parte Parks, 30 USPQ2d 1234, 1236 (BPAI 1993). (See App.
Br. 8.) However, Parks is not controlling in this case since it is not directed
to a situation involving chemical compositions which are not conveyed with
reasonably clarity from the original Specification.
II. CLAIMS 1, 5-8, 10, 12-15, 18, AND 19 UNDER 35 U.S.C. § 103(a)
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
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% 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. 4 with App. Br. 9-13 and Reply Br. 6-10.) 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.
9-13 and Reply Br. 6-10.)
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
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0 to 70 wt % of a humectant4, 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
% of a pigment.5 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
argument at page 12 of the Appeal Brief that their reason for using a betaine

4 The Free Online Dictionary (TheFreeDictionary.com, Humectant,
http://www.thefreedictionary.com/humectant (last visited February 28,
2011)) defines a humectant as a substance that promotes moisture retention
or wetting.
5 Appellant argues claims 1, 10 and 18 as a group and does not address the
limitations of claims 5 through 8, 12 through 15, and 19 at pages 9 through
13 of the Appeal Brief. Therefore, for purpose of this rejection, we limit our
discussion to claim 1 since claims 5 through 8, 10, 12 through 15, 18, and 19
stand or fall with claim 1 pursuant to 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Even were we to separately consider claims 1, 10, and 18, the outcome
would not be altered since they all require the presence of the claimed
ingredients in the claimed ink system or ink vehicle only. Even though they
identify a betaine compound and polyhydric alcohols as solvents, such
identification does not change the fact that the claims only require the
presence of such betaine compound and polyhydric alcohols, together with
other known ink ingredients, in their ink composition or ink vehicle.

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solvent and a particular polyhydric alcohol, i.e., to accommodate an
effective amount of polymeric binders, is not contemplated by either
Tsutsumi or Gore. However, “[a]s long as some motivation[, reason] or
suggestion to combine the references is provided by the prior art taken as a
whole, 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).
III. CLAIMS 3, 4, 17, AND 20 UNDER 35 U.S.C. § 103(a)
Appellant does not dispute the Examiner’s determination that it would
have been obvious to a person of ordinary skill in the art to use the
combination of the claimed amounts of cyan, black, and violet pigments
taught by Bauer in the ink composition suggested by Tsutsumi and Gore.
(Compare Ans. 6-7 with App. Br. 13-14 and Reply Br. 10.) Rather,
Appellant relies on the same arguments advanced in connection with claim 1
discussed supra. Thus, for the same reasons set forth above, we concur with
the Examiner that it would have been obvious to one of ordinary skill in the
art to arrive at the ink composition recited in claims 3, 4, 17 and 20 from the
collective teachings of Tsutsumi, Gore and Bauer.
IV. CLAIMS 9 AND 16 UNDER 35 U.S.C. § 103(a)
Appellant does not dispute the Examiner’s determination that it would
have been obvious to a person of ordinary skill in the art to use diethylene
glycol as taught by Takemoto as the polyhydric alcohol wetting agent of the
ink composition suggested by Tsutsumi and Gore. (Compare Ans. 7 with
App. Br. 14 and Reply Br. 11.) Rather, Appellant relies on the same
arguments advanced in connection with claim 1 discussed supra. Thus, for
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the same reasons set forth above, we concur with the Examiner that it would
have been obvious to one of ordinary skill in the art to arrive at the ink
composition recited in claims 9 and 16 from the collective teachings of
Tsutsumi, Gore and Takemoto.
V. CLAIM 21 UNDER 35 U.S.C. § 103(a)
Appellant does not dispute the Examiner’s finding that Zhu teaches an
ink composition useful for ink jet printing comprising:
• 2 to 7% by weight (col. 9, line 38-40) of glycerin (col. 9, lines
17)
• 0.01% to 5% by weight (col. 10, line 45-50) of a defoamer
such as Surfynol which is also known as a surfactant (please see
DeBoer where Surfynol 485 is called a surfactant in column 7,
Example 1)
• 1 to 40 % by weight (col. 6, line 30-43) of a water soluble
polymeric binder (col. 4, line 55-60)
• Water (col. 3, line 15-23)
• and 0.1 to 10 % by weight (col. 4, line 39-47) of a pigment
(col. 3, line 33-34)
(Ans. para. bridging 7-8). Rather, Appellant contends that one of ordinary
skill in the art would not have been led to employ a betaine solvent in the ink
composition containing glycerol taught by Zhu. (See App. Br. 15-16 and
Reply Br. 6-10.)
Thus, the dispositive question is: Would one of ordinary skill in the
art have been led to employ the claimed betaine solvent in the ink
composition containing glycerol taught by Zhu within the meaning of 35
U.S.C. § 103(a)? On this record, we answer this question in the affirmative.
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Although Zhu does not teach employing a betaine solvent in its ink
composition suitable for ink jet printing as acknowledged by the Examiner at
page 8 of the Answer, it does teach that its ink composition is useful for ink
jet printing and can be used with various ink jet additives, including a
humectant, and can employ its ingredients with either water-soluble or
water-dispersible polymeric binder (col. 4, ll. 55-61 and col. 9, ll. 8-42).
Tsutsumi also teaches using the claimed betaine additive in an ink
composition suitable for ink jet printing and can be used together with a
polyhydric alcohol, inclusive of glycerin (glycerol), a polymeric binder,
water, and a pigment as indicated supra (See also Tsutsumi, Abstract, col. 2,
ll. 15-20, col. 11, ll. 34 and 61-67 and col. 12, ll. 1-2; see also Ans. 8).
According to column 2, lines 15-20, 59-60, and 63-65 and col. 3, ll. 32-40,
of Tsutsumi, its betaine solvent imparts desired ejection properties and anti-
clogging properties to an ink jet printing composition.
Given these teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ the claimed betaine
solvent taught by Tsutsumi in the ink jet composition taught by Zhu,
motivated by a reasonable expectation of successfully imparting desired
ejection and anti-clogging properties.
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 claim 21 under
35 U.S.C. § 112, first paragraph, as lacking written descriptive support in the
application disclosure as originally filed, is AFFIRMED;
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FURTHER ORDERED that the decision of the Examiner to reject
claims 1, 5 through 8, 10, 12 through 15, 18, and 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 3, 4, 17, and 20 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Tsutsumi, Gore, and Bauer is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
claims 9 and 16 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Tsutsumi, Gore, and Takemoto is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject
claim 21 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Zhu, Tsutsumi, and Deboer 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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