11484732 (B.P.A.I. Oct. 31, 2011)

Ex Parte Kamoto

Board of Patent Appeals and InterferencesOct 31, 2011

11484732 (B.P.A.I. Oct. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/484,732 07/12/2006 Takanori Kamoto BJS-900-557 9602 23117 7590 10/31/2011 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER RODEE, CHRISTOPHER D ART UNIT PAPER NUMBER 1721 MAIL DATE DELIVERY MODE 10/31/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte TAKANORI KAMOTO ________________ Appeal 2011-001645 Application 11/484,732 Technology Center 1700 ________________ Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and MARK NAGUMO, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-11. Claims 12- 16 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1. A process for preparing a toner for electrostatic image development, the process comprising the steps of: (S1) mixing an aqueous pigment dispersion with an aqueous resin particle dispersion containing two or more kinds of self-dispersible polyester Appeal 2011-001645 Application 11/484,732 2 resin particles as binder resins to prepare a mixture; and (S2) adding a polyvalent metal salt as a flocculant to the mixture while stirring to form aggregates having the pigment bonded to the resin particles, wherein the self-dispersible polyester resins each are prepared by reacting a carboxylic acid compound with an alcohol compound inclusive of a polyhydric alcohol, and the carboxylic acid compound includes one or more kinds of a polycarboxylic acid having three or more carboxyl groups and its acid anhydride, the self-dispersible polyester resin particles are made from two or more kinds of self-dispersible polyesters having different glass transition temperatures, of which the lowest glass transition temperature is not lower than 40°C. The Examiner relies upon the following reference as evidence of obviousness (Ans. 3): Yasunobu (as trans.) JP 2004-326001 Nov. 18, 2004 Appellant’s claimed invention is directed to a process for preparing a toner for electrostatic image development. The method comprises mixing an aqueous pigment dispersion with an aqueous resin particle dispersion. The resin dispersion contains two or more kinds of polyester resin particles which serve as binders for the pigment. A polyvalent metal salt is added to the mixture as a flocculant. The polyester resins are prepared by reacting a carboxylic acid compound with an alcohol compound wherein the carboxylic acid compound includes one or more types of polycarboxylic acid having three or more carboxyl groups. Also, the polyester resin particles have different glass transition temperatures. Appealed claims 1-11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yasunobu. Appeal 2011-001645 Application 11/484,732 3 Appellant does not present separate arguments for any particular claim on appeal. Accordingly, all the appealed claims stand or fall together with claim 1. We have thoroughly reviewed each of Appellant’s arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejection for the reasons set forth in the Answer, and we add the following primarily for emphasis. Appellant has not refuted the Examiner’s factual determination that Yasunobu, like Appellant, discloses a process for preparing a toner for electrostatic image development comprising the steps of mixing an aqueous pigment dispersion with an aqueous resin particle dispersion containing two or more polyester resin particles, and adding a polyvalent metal salt as a flocculant to the mixture. Also, Appellant does not dispute that the polyester resins of Yasunobu are prepared by reacting a carboxylic acid compound with an alcohol compound, with the carboxylic compound including one or more kinds of polycarboxylic acid having three or more carboxyl groups. Nor does Appellant contest the Examiner’s finding that the reference discloses that the glass transition temperature of the two polyester resins are such that the lower glass transition temperature of the two resins is 50°C or higher, thereby rendering it obvious to use two polyester resins having different glass transition temperatures. Appellant generally argues that the prior art process includes steps that are not part of the claimed invention, for example, Yasunobu forms resin particles having a core/shell structure. However, as set forth by the Appeal 2011-001645 Application 11/484,732 4 Examiner, the “comprising” language of the appealed claims does not exclude the formation of such a core/shell structure or any other process step employed by Yasunobu, including phase inversion. As stated by the Examiner, Appellant’s “specification may also disclose that phase invention [sic, inversion] emulsification is not a desired feature of the invention, but the instant claims do not exclude this step in the process” (Ans. 7, first para.). Appellant’s reference to paragraphs [0045] and [0046] of the English translation of Yasunobu is unavailing since it is only disclosed therein that the aqueous dispersions of the two resin particles may be made according to a method disclosed in another patent document. This disclosure in no way undermines the relevant portions of the reference cited by the Examiner, namely the Abstract, and paragraphs [0035], [0037], [0039], [0046], [0095], and [0100]. We note that Appellant has not addressed these reference disclosures. As a final point, we note that Appellant bases no argument upon objective evidence of non-obviousness, such as unexpected results. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims is affirmed. 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)(v). AFFIRMED ssl