Ex Parte Lee et al

Board of Patent Appeals and Interferences

Jun 29, 2010

10117910 (B.P.A.I. Jun. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTIAN JOHN LEE, OLGIERD WASILEWSKI,
and RICHARD DURAND JR.
____________

Appeal 2009-011849
Application 10/117,910
Technology Center 1700
____________

Decided: June 29, 2010
____________

Before MICHAEL P. COLAIANNI, CATHERINE Q. TIMM,
and BEVERLY A. FRANKLIN, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 8 and 12 through 14. Claims 15
and 16, the other claims pending in this application, stand withdrawn from
consideration by the Examiner. We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.

Appeal 2009-011849
Application 10/117,910

STATEMENT OF THE CASE
The subject matter on appeal is directed to a self-dampening single fluid
water-in-oil printing ink composition. Claim 1 is illustrative:

1. A self-dampening single fluid water-in-oil printing ink
composition, consisting essentially of:
(a) glycerol;
(b) a nonionic surfactant having a hydrophilic/lipophilic balance of about
8 to about 20;
(c) water;
(d) mineral oil is present in an amount of 20 percent to about 90 percent
by weight based on the total weight of the printing composition; and
(e) a colorant,
said composition being self-dampening.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Wasilewski US 5,372,635 Dec. 13, 1994
Krishnan US 5,725,646 Mar. 10, 1998
Best EP 0079764 A1 May 25, 1983

The Examiner maintains the following rejections:

1) Claims 1-8 and 12-14 are rejected under 35 U.S.C. § 102(b) as
anticipated by Wasilewski;
2) Claims 1-8 and 12-14 are rejected under 35 U.S.C. § 103(a) over
Krishnan in view of Best and Wasilewski; and
3) Claims 1-8 and 12-14 are rejected under 35 U.S.C. § 103(a) over
Krishnan in view of Wasilewski.1

1 The additional rejections of all the appealed claims in rejections (2) and (3)
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Rejection (1)
With respect to rejection (1), we select claim 1 as representative because
Appellants focus their arguments on claim 1 only. (App. Br. 5-13 and Reply
Br. 1-7). See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Did the Examiner err in finding that Wasilewski discloses the claimed
self-dampening single fluid water-in-oil printing ink composition within the
meaning of § 102(b)? We decide this issue in the negative.

FINDINGS OF FACT (FF)
We adopt the Examiner’s findings in the Answer and Final Office Action as
our own, except as to those findings that we expressly overturn or set aside in
the Analysis that follows. We add the following factual findings:

1. The Specification discloses that "conventional amounts of typical
additives useful in lithographic inks may also be included in the
compositions of the present invention, including without limitation,
organoclays, polyethylene wax, polytetrafluoroethylene wax, silicas,
polyamides and aluminum chelates, low molecular weight hydrocarbon
resins, and the like." (Spec. ¶ [0025]). The Specification also discloses
that the dampening solution may be water. (Spec. ¶ [0001]).
amount to rejections that are cumulative to rejection (1) since the rejections are
based on similar claim construction and the prior art applied in each of the
Examiner’s rejections disclose substantially the same information. (See Ans. 3-
18). We focus on rejection (1) and vacate the cumulative rejections (2) and (3).
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2. Wasilewski teaches that its ink composition provides "excellent
lithographic printing results" since the "print density does not fall off
with increasing volumes of water or aqueous fountain solution within
normal press operating conditions." (Wasilewski, col. 2, ll. 10-12 and
33-36). In this regard, Wasilewski teaches that its ink composition may
include, inter alia, "about 0.1 -5.0 wt. % . . . based on the weight of the
composition, of a soap of a tall oil fatty acid" (Wasilewski, col. 2, ll. 50-
52).
3. Appellants do not specifically dispute the Examiner's finding that
Wasilewski's "printing ink composition contains an amount of water."
(Compare Ans. 4 with App. Br. 5-13 and Reply Br. 1-7).
4. Appellants do not specifically dispute the Examiner's finding that
Wasilewski teaches an ink composition embodiment having, inter alia, a
soap of a tall oil fatty acid in an amount of 0.1 wt%. (Compare Ans. 4, 7,
and 8 with App. Br. 5-13 and Reply Br. 1-7).
Additional findings of fact may appear in the Analysis that follows.

PRINCIPLES OF LAW
"[T]he phrase 'consisting essentially of' limits the scope of a claim to
the specified ingredients and those that do not materially affect the basic and
novel characteristic(s) of a composition." In re Herz, 537 F.2d 549, 551-52
(CCPA 1976) (emphasis omitted) (quoting In re Janakirama-Rao, 317 F.2d
951 (CCPA 1963)). Appellants have the burden of showing that the
additional ingredients taught by the prior art reference affect the basic
and novel characteristic of the claimed invention. See In re De Lajarte,
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337 F.2d 870, 873-74 (CCPA 1964).
In addition, as our reviewing court stated in In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997):
A patent applicant is free to recite features of an apparatus
either structurally or functionally. See In re Swinehart, 58
C.C.P.A. 1027, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting patent
claims.”). Yet, choosing to define an element functionally, i.e., by
what it does, carries with it a risk. As our predecessor court stated
in Swinehart, 439 F.2d at 213, 169 USPQ at 228:
where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the
prior art does not possess the characteristic relied on.

See also In re Ludtke, 441 F.2d 660, 664 (CCPA 1971) (holding
that "[i]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed by things in
the prior art, does not cause a claim drawn to those things to
distinguish over the prior art.").

ANALYSES AND CONCLUSIONS
Appellants argue that "[t]he ink of the reference is not anticipatory . . .
because the ink is not self-dampening." (App. Br. 6). Specifically, Appellants
argue that "[a] self-dampening ink is . . . one in which no separate dampening
solution is required. . . . Since the [Wasilewski] reference teaches that a
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fountain solution is essential, the skilled person would never consider the self-
dampening property to be an inherent property of the ink." (App. Br. 9-10).
However, we find Appellants' argument (App. Br. 9-10) that "the skilled
person would never consider the self-dampening property to be an inherent
property of the ink" unpersuasive of reversible error because it fails to address
the Examiner's stated case, which is based upon the similarity of Wasilewski’s
ink composition containing water (i.e., the dampening fluid) and the claimed
ink composition. (See FF 1). Appellants do not specifically dispute the
Examiner's finding that Wasilewski's "ink composition contains an amount of
water." (FF 3).
Thus, we agree with the Examiner's finding that because Wasilewski's
ink composition contains the same components including water, it is reasonable
to believe that Wasilewski's ink composition possesses all of the claimed
characteristics, including the capability of being self-dampening. (See Ans. 4;
see also FF 1).
The burden shifted to Appellants to show that Wasilewski's print ink
composition is not capable of being self-dampening. However, Appellants have
not provided any evidence to satisfy this burden. See Schreiber, 128 F.3d at
1478 and Ludtke, 441 F.2d at 664.
In addition, Appellants argue that Wasilewski's ink "is not anticipatory
because of the presence of the tall oil fatty acid soap which is excluded from the
instant claims." (App. Br. 6).
Specifically, Appellants argue that
[t]he reference thus teaches that the tall oil fatty acid soap effects the
basic characteristics of the lithographic ink in that it permits the
composition of the aqueous fountain solution to be altered. It is
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axiomatic that an unrecited ingredient which effects the basic
characteristics of the lithographic ink in a claim using the terminology
"consisting essentially of" is excluded from the scope of that claim.

(App. Br. 7).
Appellants argue that "a Declaration (Appendix C) is of record and
demonstrates that the tall oil fatty acid does effect the basic and novel
characteristics." (App. Br. 8). In this regard, Appellants argue that the
"Declaration . . . flatly states 'the printing ink composition of our Wasilewski
patent requires the use of a soap of a tall oil fatty acid in order to be self-
dampening' (paragraph 6) and then provides a demonstration of that fact in
paragraph 7." (App. Br. 10). In addition, with respect to Standard and Ink B
samples shown at paragraph 7 of the Declaration, Appellants state that "[t]he
Table indicates that the 30% soap solution was used at a concentration of 4.5%
and that makes the tall oil fatty acid soap content 1.35%, a value inside
Wasilewski's range." (App. Br. 12).
Appellants have the burden of showing that the additional ingredients
taught by the prior art references materially affect the basic and novel
characteristics of the claimed ink composition. See De Lajarte, 337 F.2d at
874.
Attempting to establish such a material affect, Appellants contend that
their Declaration indicates that a small amount of tall oil fatty acid soap
materially affects the basic and novel characteristic of the composition which
contains it. (App. Br. 11). In this regard, Appellants state that their Declaration
investigates, inter alia, "the ability of the ink to satisfactorily lithographically
print." (See Declaration, ¶ 7). In other words, Appellants argue that a small
amount of fatty acid soap materially affects a basic and novel characteristic of
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the claimed ink composition, which is the ability of the ink to satisfactorily
lithographically print. (See also Spec. ¶¶ [0010] and [0011]).
However, we note that Appellants' evidence is directed to, inter alia, two
ink compositions (i.e., Standard and Ink B samples) each having a tall oil fatty
acid soap content of 1.35 %.2 (See Declaration, ¶ 8). Neither of these two ink
compositions are relied upon by the Examiner to meet the claimed invention.
In this regard, the Examiner relies upon an ink composition embodiment
having, inter alia, a soap of a tall oil fatty acid in an amount of 0.1 wt%. (FF
4). Appellants have not explained how their Standard and Ink B samples (each
having a tall oil fatty acid soap content of 1.35 %) are relevant to Wasilewski's
ink composition having 0.1 wt% of a tall oil fatty acid soap.
We are unpersuaded by Appellants' argument (App. Br. 7) that
Wasilewski's "tall oil fatty acid soap affects the basic characteristics of . . .
[Wasilewski's] lithographic ink." Appellants have not argued, much less
shown, how a tall oil fatty acid soap in an amount of 0.1 wt%, the teaching
relied upon by the Examiner, materially affects any basic and novel
characteristics of the claimed ink (e.g., the ability of the ink to satisfactorily
lithographically print).
There is nothing in the Specification which indicates that Wasilewski's
tall oil fatty acid soap would deleteriously or materially affect the basic and
novel function of the claimed ink composition. Indeed, the Specification
discloses that "conventional amounts of typical additives useful in lithographic
inks may also be included in the compositions of the present invention,

2 As correctly stated by Appellants at page 12 of the Appeal Brief, this 1.35 %
tall oil fatty acid soap content is calculated by multiplying 30% soap solution
with 4.5% tall oil fatty acid soap concentration.
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including without limitation, organoclays, polyethylene wax,
polytetrafluoroethylene wax, silicas, polyamides and aluminum chelates, low
molecular weight hydrocarbon resins, and the like." (FF 1) (emphasis added).
In other words, the Specification does not exclude additional additives or
ingredients useful in lithographic inks such as Wasilewski's tall oil fatty acid
soap.
Accordingly, we concur with the Examiner that the claim 1, as recited,
does not exclude Wasilewski's tall oil fatty acid soap.
Thus, it follows that the Examiner did not err in finding that Wasilewski
discloses the claimed self-dampening single fluid water-in-oil printing ink
composition within the meaning of § 102(b).

ORDER
In summary, the Examiner's rejection (1) is sustained and the Examiner's
cumulative rejections (2) and (3) are vacated.
Accordingly, the Examiner's decision is affirmed.

TIME PERIOD
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).
AFFIRMED

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