Ex Parte Kido et al

Patent Trial and Appeal Board

Feb 16, 2017

13392330 (P.T.A.B. Feb. 16, 2017)

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.
13/392,330 05/09/2012 Masahiro Kido P22835US00 3912
38834 7590 02/21/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
CAI, WENWEN
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
02/21/2017 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):
patentmail @ whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAHIRO KIDO,
SHINICHI OKADA, ATSUO KOBAYASHI,
and SOETRISNO MISAWA
Appeal 2017-003771
Application 13/392,330
Technology Center 1700
Before GEORGE C. BEST, DEBRA L. DENNETT, and
MICHAEL G. McMANUS, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 23—29, 31, and 32 of
Application 13/392,330 under 35 U.S.C. § 103(a) as obvious. Final Act. 4—6
(February 22, 2016).1 The Examiner also rejected claims 23—29, 31, and 32
as indefinite under 35 U.S.C. § 112,12. Id. at 3. The Examiner further
1 On August 28, 2012, the Patent and Trademark Office granted Appellants'
request to make this application special through participation in the Patent
Prosecution Highway Program. Decision on Request (August 28, 2012).
We, therefore, consider this appeal on an accelerated basis.
Appeal 2017-003771
Application 13/392,330
rejected claim 32 under 35 U.S.C. § 112,11 as failing to comply with the
written description requirement. Id. at 2—3. Appellants2 seek reversal of
these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. §6.
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’330 Application describes methods for producing a water-based
pigment dispersion liquid. Spec. 1. These methods can also be used to
produce a water-based ink for inkjet printing. Id.
Claim 23—the only independent claim before us—is representative of
the ’330 Application’s claims and is reproduced below from the Claims
Appendix to the Appeal Brief:
23. A method for producing a water-based pigment
dispersion liquid, the method comprising:
kneading a mixture comprising a quinacridone
pigment (a), a styrene-acrylic acid copolymer (c), a basic
compound (d), and a polyoxyalkylene glycol or its derivative
(e) to prepare a pigment dispersion that is solid at room
temperature, and
mixing an aqueous medium with the pigment dispersion,
wherein the polyoxyalkylene glycol or its derivative (e)
is a polyoxyalkylene adduct of glycerin, wherein the solid
content concentration in the pigment dispersion in the kneading
step is 55 to 80% by mass.
Appeal Br. 22.
2 DIC Corp. is identified as the real party in interest. Appeal Br. 2.
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Appeal 2017-003771
Application 13/392,330
REJECTION
On appeal, the Examiner maintains3 the following rejection:
1. Claims 23—29, 31, and 32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Okada,4 Arai,5 and Friour.6
Final Act. 4—6.
DISCUSSION
Appellants present specific arguments for the reversal of two claims—
independent claim 23 and dependent claim 32. Appeal Br. 6—20.
Accordingly, we shall first address Appellants’ arguments with respect to
independent claim 23, and then we shall address Appellants’ separate
arguments with respect to dependent claim 32. The remaining dependent
claims—claims 24—29 and 31—will stand or fall with independent claim 23.
37 C.F.R. § 41.37(c)(l)(iv) (2014).
Claim 23. In rejecting claim 23, the Examiner found that Okada
describes or suggests each step in the process recited in claim 23 except for
the use of a polyoxyalkylene glycol or a polyoxyalkylene glycol derivative.
Final Act. 4. The Examiner further found that Okada describes the use of a
humectant that preferably is a polyhydric alcohol having a high boiling
point, low volatility, and is liquid at normal temperatures. Id. (citing Okada
151).
3 The Examiner has indicated that Appellants have overcome the rejections
pursuant to 35 U.S.C. § 112. Advisory Action (May 27, 2016).
4 US 2006/0235106 Al, published October 19, 2006.
5 US 2009/0202724 Al, published August 13, 2009.
6 US 2005/0159506 Al, published July 21, 2005.
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Appeal 2017-003771
Application 13/392,330
The Examiner also found that Friour teaches that the water-soluble
solvents can be used as humectants and that Arai describes polyoxyalkylene
glycols as water-soluble solvents. Id. (citing Friour 1 66). The Examiner
further found that Arai describes polyoxyalkylene glycols as useful in inkjet
ink compositions because they provide liquid stability and inkjet ejection
properties. Id. (citing Arai 110).
Appellants argue that the rejection of claim 23 should be reversed for
two reasons: (1) the cited references do not establish a prima facie case of
obviousness, Appeal Br. 11—17, and (2) if the Examiner established a prima
facie case of obviousness, the ’330 Application’s Specification contains
evidence of unexpected results sufficient to rebut the Examiner’s prima facie
case, id. at 17—19.
First, Appellants argue that the combination of Okada, Arai, and
Friour does not render claim 23 prima facie obvious. Id. at 11—17.
As the Examiner found, Okada describes a method for producing an
aqueous pigment dispersion in which a mixture including a quinacridone
pigment, a styrene resin (preferably a styrene-acrylic acid copolymer), an
alkali metal hydroxide, and a humectant is kneaded to produce a solid-
colored kneaded material. Final Act. 4. The kneaded material is then
disbursed into an aqueous medium. Id.
The Examiner further found that Okada does not describe or suggest
the use of a polyoxyalkylene adduct of glycerin as the humectant. Id. The
Examiner also found that Arai describes a water-soluble solvent comprising
a polyoxyalkylene adduct of glycerin. Id. at 4—5; see also Arai H 50-55.
Arai further describes the solvent as providing an ink composition with
excellent liquid stability and ejection properties when used in inkjet printing.
Id. (citing Arai Abstract; 110).
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Appeal 2017-003771
Application 13/392,330
The Examiner concluded that “it would have been obvious to one of
ordinary skill in the art at the time the invention was made to utilize the
polyoxyalkylene adduct of glycerin like claimed as [a] humectant to provide
an ink composition [with] an excellent liquid stability and ejection
property.” Id. at 5. In support of this conclusion, the Examiner points to
Friour which, in relevant part, reads:
Organic solvents or co-solvents are generally water-soluble
solvents. . . . One or more [organic] solvents can be used. The
solvents are used as humectants or to control the viscosity of
the ink. These solvents can be: lactams,. . . ; diols,.... These
solvents are generally used as humectants. Other solvents, such
as alcohols, ketones or ethers can be used to help the ink
penetrate into the ink-receiving layer.
Friour | 66. The Examiner also points to the description of the humectants
useful in Okada’s process. Final Act. 7; see also Advisory Action 2 (citing
Okada 151 (“The humectant... is preferably polyhydric alcohols having
high boiling point, low volatility and high surface tension . . . .”)).
Appellants argue that the Examiner’s conclusion is not supported by
the record and that a person of ordinary skill in the art would not have had a
reason to combine the prior art in a manner that renders the claimed
invention prima facie obvious. Appeal Br. 13—17.
We agree with Appellants. To properly establish a prima facie case of
obviousness, the Examiner would have to explain why a person having
ordinary skill in the art at the time of the invention would have known that
the polyoxyalkylene adduct of glycerin could act as a humectant for use in
Okada’s process for making an inkjet ink without the benefit of hindsight.
The Examiner’s attempt to support this conclusion relies upon portions of
each of the three prior art references. In our view, however, when read in
context and without the benefit of hindsight, the prior art does not support
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Appeal 2017-003771
Application 13/392,330
the necessary factual finding that Arai’s polyoxyalkylene glycerol adduct
can act as a humectant. The Examiner has not provided any evidence or
reasoning in support of an argument that Arai’s polyoxyalkylene glycerol
adduct has the properties described in | 51 of Okada. Moreover, the
examiner has not provided any reasoning in support of an argument that a
person having ordinary skill in the art at the time of the invention would
have believed that the polyoxyalkylene adduct had properties similar to
those of the humectants described in Friour’s | 66 or Arai’s | 64. In the
absence of such reasoning, we cannot sustain the Examiner’s rejection. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections 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.”).
In view of the foregoing, we reverse the Examiner’s rejection of
claims 23—29 and 31.
Claim 32. Claim 32 depends from claim 23. Because we have
reversed the rejection of claim 23, we also reverse the rejection of claim 32.
CONCEUSION
For the reasons set forth above, we reverse the rejection of claims 23—
29, 31, and 32 of the ’330 Application.
REVERSED
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