Ex Parte Lau et al

Board of Patent Appeals and Interferences

Feb 4, 2009

10349897 (B.P.A.I. Feb. 4, 2009)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIE LAU and
CHAO-JEN CHUNG
____________

Appeal 2008-6093
Application 10/349,897
Technology Center 1700
____________

Decided:1 February 4, 2009
____________

Before CHUNG K. PAK, MARK NAGUMO, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-6093
Application 10/349,897

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1, 4, 6, 9, and 12-17, the only pending claims
on appeal. (Appeal Brief filed April 26, 2007, hereinafter “Br.,” 2).2 We
have jurisdiction pursuant to 35 U.S.C. § 6(b) (2002).
We AFFIRM.
THE INVENTION
Appellants describe an ink composition including a colorant, a
polymeric binder, and an aqueous medium. (Spec. 2). The polymeric binder
is prepared in the presence of at least one macromolecular compound having
a hydrophobic cavity, has an average particle diameter of 50 to 150 nm, a
glass transition temperature (Tg) of -60 to 45 ºC, and a density of 0.95 to
1.05 times the density of the aqueous medium. (Spec. 6-8, 10, and 17).
Appellants state that the ink compositions have improved resistance to
settling and good storage stability while providing printed material with
improved water resistance. (Spec. 2 and 7).
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. An ink composition suitable for use as an inkjet ink,
comprising, based on the weight of said ink composition:

a) from 0.5 to 10 weight % of at least one colorant;

b[)] from 0.1 to 25 weight % of a polymeric binder
prepared in the presence of at least one macromolecular
compound having a hydrophobic cavity, said polymeric binder

2 Claims 2, 3, 5, 7, 8, 10, and 11 have been canceled. (Br. 2).
Appeal 2008-6093
Application 10/349,897

comprising as polymerized units, based on the weight of
said polymeric binder:
i) from 5 to 100 weight % of at least one first monomer
selected from the group consisting of hydrophobic monomer
and fluorinated monomer, said hydrophobic monomer being
selected from the group consisting of C12 to C40 alkyl esters of
(meth)acrylic acid and C12-C40 alkenyl esters of (meth)acrylic
acid,

ii) from 0 to 95 weight % of at least one second
monomer,

iii) from 0 to 10 weight % of at least one acid monomer
or salts thereof, wherein said polymeric binder has an average
particle diameter in the range of 50 to 150 nm and a glass
transition temperature in the range of -60 to 45°C; and

c) an aqueous medium,
wherein said polymeric binder has a density in the range of 0.95
to 1.05 times the density of said aqueous medium.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lau US 5,521,266 May 28, 1996
Parker US 5,969,063 Oct. 19, 1999
Miyabayashi US 6,271,285 Aug. 7, 2001
Kubota EP 1 125 760 A1 Aug. 22, 20013
Johnson US 6,693,147 B2 Feb. 17, 2004 (Jan. 16, 2003)4
Fasano US 7,001,949 B2 Feb. 21, 2006 (Sep. 13, 2001)

3 Both Appellants and the Examiner refer to this reference as “EP 1125760.”
For consistency with the record, we shall do the same throughout this
opinion.
4 Division of US 6,541,590, Nov. 22, 2000.
Appeal 2008-6093
Application 10/349,897

There are four grounds of rejection under 35 U.S.C. § 103(a) on
appeal: (1) the Examiner rejected claims 1, 4, 6, 9, 13, 15, and 17 as being
unpatentable over Miyabayashi in view of Lau; (2) the Examiner rejected
claims 1, 4, 6, 9, 13, 15, and 17 as being unpatentable over EP 1125760 in
view of Parker or Lau; (3) the Examiner rejected claims 1, 4, 6, 9, and 12-17
as being unpatentable over Johnson in view of Lau; and (4) the Examiner
rejected claims 1, 4, 6, 9, and 12-17 as being unpatentable over Fasano.
(Examiner’s Answer entered August 8, 2007, hereinafter “Ans.”).
In rejecting the claims on appeal, the Examiner found that
Miyabayashi, EP 1125760, Johnson, and Fasano each teach ink jet
compositions comprising colorant, water, and a polymeric binder, but are
silent as to the density of the polymeric binder. (See Ans. 3-9). The
Examiner determined that because the polymeric binders in each reference
are obtained from the same types and amounts of monomers as the claimed
polymeric binder, the prior art polymeric binder would intrinsically possess
the claimed density. (Ans. 4, 5, 7, and 9).
Appellants rely on the same arguments for all claims subject to each
ground of rejection. In particular, Appellants contend that Miyabayashi, EP
1125760, Johnson, and Fasano fail to teach or suggest polymeric binders
having densities within the claimed range or that the disclosed monomers are
equivalent for the purpose of forming polymeric binders having densities
within the claimed range. (Br. 5-8). Appellants also argue that the list of
monomers disclosed in Johnson would lead to a broad range of densities and
that Appellants’ Specification discloses that polymeric binders having
densities within the claimed range result in ink compositions that have
improved resistance to settling and improved storage stability. (Br. 7).
Appeal 2008-6093
Application 10/349,897

Appellants further argue that the Examiner has failed to provide
sufficient reason or explicit analysis why the presently claimed invention
would have been obvious to one of ordinary skill in the art in light of the
cited prior art. (Reply Brief filed October 12, 2007, 3).

ISSUE
Have Appellants shown that the Examiner erred in determining that
the cited prior art of record discloses polymeric binders having densities
within the claimed range?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Miyabayashi discloses ink compositions with polymeric binders
prepared from unsaturated vinyl monomers. Miyabayashi
discloses dodecyl (meth)acrylate and octadecyl (meth)acrylate
among a list of unsaturated vinyl monomers. (Col. 1, ll. 5-9; col.
5, ll. 27-60).
2. Miyabayashi does not disclose an example of a polymeric binder
prepared from a first monomer including C12 to C40 alkyl esters of
(meth)acrylic acid or C12-C40 alkenyl esters of (meth)acrylic acid.
(See Miyabayashi, generally).
3. Miyabayashi does not disclose that dodecyl (meth)acrylate and
octadecyl (meth)acrylate are preferred unsaturated vinyl
monomers. (See Miyabayashi, generally).
Appeal 2008-6093
Application 10/349,897

4. EP 1125760 discloses ink compositions with polymeric binders
having a particle diameter of 100 to 200 nm, and a Tg of 30º C or
below. (¶¶ [0001], [0082], and [0083]).
5. EP 1125760 discloses polymeric binders prepared from
unsaturated vinyl monomers including octadecyl (meth)acrylate or
fluorinated monomers. (¶¶ [0097], [0110]-[0114]).
6. EP 1125760 discloses that polymeric binders are prepared from 1
to 10% by weight of an acid monomer, and 0.2 to 4% of a
crosslinkable monomer derived structure, the balance being an
unsaturated vinyl monomer. (¶ [0093]).
7. EP 1125760 teaches an example where a polymeric binder is
prepared from 80 g of n-lauryl methacrylate (5 to 100 weight %
first monomer), 60 g of styrene (0 to 95 weight % second
monomer), 10 g of methacrylic acid (0 to 10 weight % acid
monomer), and 5 g of acrylamide, where the polymeric binder has
a particle diameter of 90 nm (50 to 150 nm) (the parenthesized
ranges are the corresponding limitations recited in claim 1). (¶
[0238]).
8. EP 1125760 teaches an example where a polymeric binder is
prepared from 80 g of trifluoroethyl methacrylate (5 to 100 weight
% first monomer), 200 g of styrene and 400 g of butyl acrylate (0
to 95 weight % second monomer), and 40 g of methacrylic acid (0
to 10 weight % acid monomer), where the polymeric binder has a
Tg of -4ºC (-60 to 45°C) and a particle diameter of 120 nm (50 to
150 nm). (¶¶ [0271] and [0272]).
Appeal 2008-6093
Application 10/349,897

9. EP 1125760 teaches an example where a polymeric binder is
prepared from 50 g of heptadecafluorodecyl methacrylate (5 to 100
weight % first monomer), 435 g of styrene and 475 g of butyl
acrylate (0 to 95 weight % second monomer), 30 g of methacrylic
acid (0 to 10 weight % acid monomer), 4 g of ethylene glycol
dimethacrylate, and 20 g of acrylamide, where the polymeric
binder has a particle diameter of 90 nm (50 to 150 nm). (¶¶ [0273]
and [0274]).
10. EP 1125760 teaches an example where a polymeric binder is
prepared from “50 g of 2,2,3,4 [sic, 3], 4,4-hexafluorobutyl
methacrylate” (5 to 100 weight % first monomer), 435 g of styrene
and 475 g of butyl acrylate (0 to 95 weight % second monomer),
30 g of 2-acryloylamino-2-methylpropanesulfonic acid (0 to 10
weight % acid monomer), and 4 g of ethylene glycol
dimethacrylate, where the polymeric binder has a Tg of 7ºC and a
particle diameter of 95 nm (50 to 150 nm). (¶¶ [0275] and [0276]).
11. Johnson discloses ink compositions with polymeric binders that
have a particle diameter of 100 to 400 nm and a Tg of -30 to 10º C.
(Col. 1, ll. 9-13; col. 4, ll. 6-18).
12. Johnson discloses polymeric binders prepared from unsaturated
vinyl monomers including “most preferably” lauryl (meth)acrylate.
(Col. 3, ll. 48-67).
13. Johnson discloses that the polymeric binder is prepared from 4 to
15% by weight of an acid monomer, and 0.05 to 5% of a surfactant
monomer, the balance being an unsaturated vinyl monomer. (Col.
2, ll. 28-53).
Appeal 2008-6093
Application 10/349,897

14. Fasano discloses polymeric binders useful in inks, prepared from a
list of unsaturated vinyl monomers including C1 to C18 alkyl esters
of (meth)acrylic acid such as lauryl methacrylate and stearyl
methacrylate. (Col. 16, ll. 6-13; col. 23, l. 29).
15. Fasano does not indicate a preference for C12-C18 alkyl esters of
(meth)acrylic acid or teach an example where the polymeric binder
is prepared from lauryl methacrylate or stearyl methacrylate.
16. Lau discloses a method of preparing polymers from hydrophobic
monomers including alkyl esters of methacrylic acid in the
presence of a macromolecular organic compound having a
hydrophobic cavity without the addition of solvent or surfactant to
aid in solubilizing the hydrophobic monomer. (Col. 3, ll. 6-40; col.
4, ll. 9-28; col. 7, ll. 25-51).
17. Parker discloses a method of preparing polymers from fluorinated
monomers and non-fluorinated monomers in the presence of a
macromolecular organic compound having a hydrophobic cavity,
which is said to reduce or eliminate the need for a fluorinated
surfactant. (Col. 1, l. 66 – col. 2, l. 65).
18. Appellants’ Specification states that a polymeric binder having
substantially the same density as the density of the aqueous
medium “has improved resistance to settling and improved storage
stability.” (Spec. ¶ bridging pages 6 and 7).
19. Appellants’ Specification discloses a “polymeric binder having
substantially the same density as the density of the aqueous
medium has a density in the range of 0.95 to 1.05 . . . times the
density of the aqueous medium.” (Spec. ¶ bridging pages 6 and 7).
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Application 10/349,897

20. Appellants provide one comparative example where the polymeric
binder is prepared in the absence of a cyclodextrin and using butyl
acrylate, methyl methacrylate, and methacrylic acid as monomers.
(Spec. 16; Table 1.1).
21. Appellants’ Specification does not give the densities of the
polymeric binders prepared in the examples or comparative
example. (Spec. 17, Table 1.2).

PRINCIPLES OF LAW
The burden is on the Appellant to show reversible error in the
appealed rejections. “[W]hen the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709
(Fed. Cir. 1990) (citing In re King, 801 F.2d 1324, 1327, (Fed. Cir. 1986); In
re Ludtke, 441 F.2d 660, 664 (CCPA 1971). “‘[T]he PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. . . . Whether the rejection
is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’
under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same
. . . [footnote omitted].’” In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980)
(quoting In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).
A showing of unexpected results may be sufficient to overcome a
prima facie case of obviousness. In re Dillon, 919 F.2d 688, 692-93 (Fed.
Cir. 1990) (internal citations omitted). Our reviewing court has emphasized
repeatedly that "[i]t is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
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Application 10/349,897

the specification does not suffice." In re De Blauwe, 736 F.2d 699,
705, 222 USPQ 191, 196 (Fed. Cir. 1984), quoted with approval in In re
Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).

ANALYSIS
Appellants rely on the same arguments for all claims subject to each
ground of rejection. Accordingly, pursuant to 37 C.F.R. § 41.37(c)(1)(vii)
(2007), we confine our discussion to those limitations of claim 1 argued by
Appellants in their principal brief on appeal.

Discussion of Obviousness Rejection over EP 1125760 in view of Lau
or Parker
Appellants’ argument that EP 1125760 does not disclose polymeric
binders with enough specificity to teach the claimed density range is
unpersuasive. Appellants have failed to distinguish the examples of EP
1125760 in the portions cited by the Examiner, which include specific
polymeric binders prepared from the same monomers in the same amounts
as claimed. (Ans. 5, FF 7-10). In addition, the Examiner relies on the
particle sizes and Tgs disclosed in EP 1125760, which are within the
claimed ranges, to provide further evidence that the densities of EP
1125760’s compositions would have densities within the claimed range.
(Ans. 14 and 15; FF 4 and 7-10). Appellants have not challenged the
Examiner’s determination (Ans. 6 and 7) that polymerization of the
monomers taught by EP 1125760 in the environment taught by Lau or
Parker would have been obvious. Accordingly, the Examiner provided a
sufficient basis for determining that EP 1125760’s polymeric binders have
densities falling within the claimed range. Appellants have not provided any
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Application 10/349,897

persuasive evidence that would outweigh the evidence relied on by the
Examiner. Therefore, Appellants have failed to demonstrate that the
polymeric binders disclosed by EP 1125760 are not the same as the claimed
polymeric binders.

Discussion of Obviousness Rejection over Johnson in view of Lau
Appellants have also failed to demonstrate that the Examiner erred in
rejecting the present claims over Johnson in view of Lau. In order to
establish a sound basis for believing that the polymeric binders disclosed in
Johnson are the same as the polymeric binders claimed, the Examiner found
that Johnson discloses similar monomers, which are used in similar amounts
to prepare the polymeric binders. Specifically, the Examiner found that
Johnson discloses an ethylenically unsaturated monomer including lauryl
(meth)acrylate, a polymerizable surfactant monomer, and a carboxylic acid
monomer. (Ans. 7). Johnson also discloses lauryl (meth)acrylate as a most
preferred monomer. (FF 12). Further, the Examiner also found that Johnson
discloses particle sizes and Tgs that are within or significantly overlap the
claimed ranges to support the belief that Johnson’s polymeric binders would
inherently possess densities within the claimed range. (Ans. 17; FF 11).
Thus, the Examiner provided a sound basis for believing that Johnson’s
polymeric binders possess densities within the claimed range. Appellants
argue that ink compositions with polymeric binders within the claimed
density range have improved resistance to settling and improved storage
stability. (Br. 7). However, Appellants’ examples in their Specification do
not report the densities of the polymeric binders. (FF 20 and 21). Nor have
Appellants provided any other credible evidence by way of a declaration or
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Application 10/349,897

authoritative cite from the technical literature that these properties
would have been unexpected. Therefore, Appellants have failed to
demonstrate that the polymeric binders disclosed by Johnson are not the
same as the claimed polymeric binders.

Discussion of Obviousness Rejection over Miyabayashi in view of Lau
and Obviousness Rejection over Fasano

Both Miyabayashi and Fasano generally disclose polymeric binders
prepared from unsaturated vinyl monomers. (FF 1 and 14). However, the
Examiner has not directed our attention to any credible evidence that either
Miyabayashi or Fasano reasonably suggest polymeric binders including first
monomers comprising fluorinated monomer, C12 to C40 alkyl esters of
(meth)acrylic acid, or C12-C40 alkenyl esters of (meth)acrylic acid that would
have the properties recited in claim 1. (FF 2, 3, and 15). The Examiner has
failed to provide a sufficient reason to select monomers corresponding to
Appellants’ first monomer from the list of unsaturated vinyl monomers
disclosed in Miyabayashi or Fasano, in order to prepare a polymeric binder
having the recited polymerized units or density. Thus, Appellants have
sufficiently demonstrated that the Examiner has erred in rejecting the claims
both over Miyabayashi in view of Lau and over Fasano by itself.

CONCLUSION
Appellants have failed to demonstrate that the Examiner erred in
determining that EP 1125760 in view of Parker or Lau and Johnson in view
of Lau disclose the claimed polymeric binders having densities within the
claimed range.
Appeal 2008-6093
Application 10/349,897

Appellants have demonstrated that the Examiner erred in determining
that Miyabayashi in view of Lau and Fasano disclose the claimed polymeric
binders having densities within the claimed range.

ORDER
We affirm the Examiner’s decision rejecting claims 1, 4, 6, 9, 13, 15,
and 17 under 35 U.S.C. § 103(a) as being unpatentable over EP 1125760 in
view of Parker or Lau and claims 1, 4, 6, 9, and 12-17 as being unpatentable
over Johnson in view of Lau.
We reverse the Examiner’s decision rejecting claims 1, 4, 6, 9, 13, 15,
and 17 under 35 U.S.C. § 103(a) as being unpatentable over Miyabayashi in
view of Lau and claims 1, 4, 6, 9, and 12-17 as being unpatentable over
Fasano.
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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