12164653 (P.T.A.B. Aug. 28, 2014)

Ex Parte Kosydar et al

Patent Trial and Appeal BoardAug 28, 2014

12164653 (P.T.A.B. Aug. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/164,653 06/30/2008 Karen M. Kosydar 93268AEK 1679 1333 7590 08/28/2014 EASTMAN KODAK COMPANY PATENT LEGAL STAFF 343 STATE STREET ROCHESTER, NY 14650-2201 EXAMINER SHAH, MANISH S ART UNIT PAPER NUMBER 2853 MAIL DATE DELIVERY MODE 08/28/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KAREN M. KOSYDAR and RICHARD P. SZAJEWSKI ____________ Appeal 2012-009404 Application 12/164,653 Technology Center 2800 ____________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and MICHAEL P. COLAIANNI, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below (with text in bold for emphasis): 1. An inkjet printer containing an aqueous inkjet ink, comprising: a) at least 50% by weight water; b) from 0.1 % to 3% by weight, in toto, of dispersed colored pigment exhibiting a median volume weighted 50th percentile particle size of less than 0.11 microns, wherein said Appeal 2012-009404 Application 12/164,653 2 dispersed pigment is a surfactant dispersed, self-dispersed, or encapsulating-dispersant dispersed pigment; c) from 0.1 % to 4% by weight of a compound I represented by the following Structure (I): wherein R4 is chosen from the group consisting of -H, -CH3, -C2H5, -C3H7, and –CH2O(CH2CHR5O)x4H; 1) provided when R4 is -H, -CH3, -C2H5, -C3H7, each of R1, R2 and R3 are independently hydrogen or methyl, b is 0 or 1; x1, x2 and x3 are each equal to at least 1, and the sum of x1, x2 and x3 is 3 to 21, and 2) provided when R4 is –CH2O(CH2CHR5O)x4H, each of R1, R2 and R3 is independently hydrogen or methyl; b is 0 or 1 and the sum x1, x2, x3, and x4 is from 3 to 28; d) from 0.05% to 3% by weight of a polyurethane latex binder; e) optionally, a water soluble polyacrylate polymer in an amount less than 3% by weight; f) provided that the sum of the polyurethane latex binder and any water soluble polyacrylate polymer is not more than 3% by weight; and g) further provided that the weight ratio of dispersed pigment to the sum of all water soluble polyacrylate polymer and polyurethane latex binder is from 3:1 to 1:2. Appeal 2012-009404 Application 12/164,653 3 The prior art relied upon by the Examiner in rejecting the claims on appeal is: Bishop et al. US 5,679,138 Oct. 21, 1997 Kappele et al. US 6,538,049 B1 Mar. 25, 2003 Yau et al. US 2006/0100306 A1 May 11, 2006 THE REJECTION Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kappele in view of Yau and Bishop. Appellants argue, inter alia, that claim 1 requires that the claimed dispersed pigment is a surfactant dispersed, self-dispersed, or encapsulating- dispersant dispersed pigment (this limitation is also in each of the remaining independent claims 12 and 14), whereas Kappele’s pigment is polymer dispersed. App. Br. 7. In reply, the Examiner argues: Kappele et al. clearly discloses in column: 11, line: 40-45, that "a surfactant may be added to enhance the pigment dispersion and modify the surface tension of the ink." This means that the surfactant acts as a dispersion, which also means that the dispersed pigment is surfactant dispersed. Ans. 10. In response, Appellants state: While it is not clear what the Examiner means by "the surfactant acts as a dispersion," addition of a surfactant to a polymer dispersed pigment dispersion to "enhance" an already formed polymer dispersed pigment dispersion and modify the surface tension of the ink is in any event clearly inconsistent with the ordinary meaning of the term "surfactant dispersed pigment" as employed in the present invention, which term is used to apply to pigment dispersions where the surfactant is employed as the actual pigment dispersing agent (see, Appeal 2012-009404 Application 12/164,653 4 e.g., page 5, lines 6-8 of specification), not an "enhancer" to modify the surface tension of an ink containing pigment dispersed with another type of dispersing agent as employed in Kappele et al. As Kappele et al clearly discloses that the key aspect of the ink composition thereof is that the pigment and polymeric dispersant form a stable dispersion (col. 11, lines 36-38), it is clear that such pigment dispersions of Kappele et al are polymer dispersed, not surfactant dispersed, even if a surfactant may [be] added to "enhance" the dispersion and modify the surface tension of the ink to control its penetration into the paper. Reply Br. 3. Hence, it is Appellants’ position that the Examiner is misconstruing the meaning of their claim by equating the addition of a surfactant to enhance an already polymer dispersed pigment (as in Kappele) with a “surfactant dispersed pigment” within the meaning of their claim. Page 5, ll. 3-8 of Appellants’ Specification discloses: Suitably, the dispersed pigment useful in the invention is chosen from the group consisting of a surfactant dispersed, self-dispersed or encapsulating-dispersant dispersed pigment. In one embodiment, the dispersed pigment is a surfactant dispersed pigment. When the dispersed pigment is a surfactant dispersed pigment, the dispersing surfactant is preferably a metal salt of oleytmethyltaurate. While any suitable metal salt can be employed, sodium or potassium cations are most preferred. Also, the Specification Examples set forth on pages 23-24 describe the preparation of the pigment dispersion. These examples indicate that an aqueous solution of the surfactant is included in a mixture having the pigment that is milled to form the pigment dispersion. Appeal 2012-009404 Application 12/164,653 5 In light of the Specification as described above, a surfactant dispersed pigment according to the Specification involves use of a surfactant to facilitate break up of pigments during the milling step, to form a surfactant dispersed pigment dispersion. In other words, a surfactant dispersed pigment according to Appellants’ Specification is one whereby a pigment is mixed with an aqueous surfactant and the mixture is milled to form the pigment dispersion.1 We accordingly give this meaning to the claim phrase “surfactant dispersed pigment”. On the other hand, the meaning given to this term by the Examiner is not consistent with the Specification as discussed herein. During examination, claim terms must be given their broadest reasonable construction consistent with the Specification. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). We therefore reverse the rejection (the other applied references do not cure the above-discussed deficiencies of Kappele). The decision of the Examiner is reversed. REVERSED bar 1 This is different from adding a surfactant, for enhancement purposes, to an already formed pigment dispersion that is polymer dispersed, as in Kappele. Kappele, col. 11, ll. 34-45.