Ex Parte LI et alDownload PDFPatent Trial and Appeal BoardNov 28, 201714173487 (P.T.A.B. Nov. 28, 2017) Copy Citation 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. 14/173,487 02/05/2014 Pei LI 112539.00006 3094 44955 7590 11/30/2017 SQUIRE PB (SFR Office) 275 BATTERY STREET, SUITE 2600 SAN FRANCISCO, CA 94111-3356 EXAMINER REDDY, SATHAVARAM I ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 11/30/2017 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): sfripdocket @ squirepb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PEI LI, KIN MAN HO, CHUN HO YAM, SIU SUN CHAN, and KWAI SANG NG Appeal 2017-002418 Application 14/173,487 Technology Center 1700 Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to35U.S.C. § 134, Appellant1 appeals from the Examiner’s rejections adverse to the patentability of claims 1—6, 8, 10—12, and 14—30. We have jurisdiction under 35 U.S.C. § 6. We affirm. 1 Appellant is the Applicant, INNER MONGOLIA XIANHONG SCIENCE CO. LTD, which, according to the Appeal Brief, is the real party in interest. App. Br. 3. Appeal 2017-002418 Application 14/173,487 SUBJECT MATTER Sole independent claim 1 and dependent claim 29 are illustrative of the subject matter on appeal: 1. An inkjet printing system for printing permanent markings on a substrate comprising: an inkjet printer; an inkjet ink formulation; and a heating element, wherein the inkjet ink formulation comprises one or more additives, and wherein the one or more additives comprise at least one accelerator for promoting components of the inkjet ink formulation fusing with a surface of the substrate. 29. The inkjet printing system according to claim 1, wherein the at least one accelerator is selected from 1,1’- azobis(cyclohexanecarbonitrile), 2,2’-azobisisobutyronitrile (AIBN), tert-amyl peroxybenzoate, 4,4-azobis(4-cyanovaleric acid). . . and potassium persulfate. App. Br. 17, 20 (emphasis added). REJECTIONS Claims 1—4, 6, 8, 10-12, 15, 16, 22—27, and 29 are rejected under 35 U.S.C. § 102(b) as anticipated by Kubota.2 Final Act. 2—6. Claims 5, 14, 17—21, 28, and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kubota alone or combined with other references. Id. at 7-13. 2 US 2003/0069329 Al, published April 10, 2003. 2 Appeal 2017-002418 Application 14/173,487 OPINION The Anticipation Rejection The Examiner finds that Kubota discloses the inkjet printing system of claim 1, including the requirement that the inkjet ink formulation have an additive comprising at least one accelerator, such as potassium persulfate. Final Act. 3. Appellant makes two contentions against the rejection of claim 1. App. Br. 6—7. No other claims are argued with any specificity. Therefore, we decide the propriety of this rejection based on Appellant’s arguments regarding claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have considered Appellant’s arguments and are unpersuaded that Appellant has identified any reversible error in the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring an Appellant to identify the alleged error in the Examiner’s rejection). Appellant’s argument that Kubota’s potassium persulfate is not used for the same purpose as that claimed, i.e., “for promoting components of the inkjet ink formulation fusing with a surface of the substrate” (App. Br. 6) is not well taken because “the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). See also In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[Tjerms [that] merely set forth the intended use for . . . an otherwise old composition ... do not differentiate the claimed composition from those known in the prior art.”). Here, the Examiner finds that potassium persulfate is present in Kubota’s composition, and would be capable of performing the claimed function. Ans. 3. We agree with the 3 Appeal 2017-002418 Application 14/173,487 Examiner’s finding that Kubota’s potassium persulfate inherently would have the claimed accelerator property (Ans. 4) because “[f]rom the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963). Appellant contends further that Kubota’s “water-based pigment dispersion” contains no potassium persulfate. App. Br. 6—7. Specifically, Appellants urge that a polymerization initiator such as potassium persulfate “dissociates into free radicals in the initiation step of the polymerization process” and then “the free radicals react with the monomer molecules in the subsequent propagation step to become a part of the polymer chain.” Id. at 6. Therefore, Appellant contends that “all potassium persulfate molecules dissociate into radicals” thus leaving none to be part of the water-based pigment dispersion. Id. at 7. This argument fails to persuade us of reversible error. The Examiner finds that some amount of unreacted potassium persulfate would necessarily be present in Kubota’s ink formulation, and provides a technical rationale to support this position. Ans. 4—5. In so finding, the Examiner properly shifts the burden to Appellants to demonstrate otherwise. “[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, 708 (Fed. Cir. 1990); see also Ex parte Maizel, 27 USPQ2d 1662, 1667—68 (BPAI 1988) (“When an examiner obtains a product which reasonably appears to fall within the scope of that which is claimed by a patent applicant, it is reasonable to shift the burden to the applicant to provide evidence showing that the product of the prior art does 4 Appeal 2017-002418 Application 14/173,487 not fall within the scope of applicants’ [sic] claims.”). In this case, Appellant has provided no such evidence. Moreover, we observe several statements presented by Appellant in the Reply Brief which contradict its position that no potassium persulfate is present in Kubota’s pigment dispersion, i.e., “there should not be any potassium persulfate left in the water-based pigment dispersion,” and “there would not be any meaningful amount of the thermally unstable potassium persulfate left.” Reply Br. 6 (emphasis added). Such conflicting statements underscore the lack of evidence presented by Appellant on this record to rebut the Examiner’s finding that potassium persulfate is inherently present in Kubota’s pigment dispersion. Therefore, we sustain the anticipation rejection based on the findings of fact and rebuttals to arguments expressed by the Examiner in the Final Action and the Answer, and above. The Obviousness Rejections Appellant contests the obviousness rejections for primarily the same reasons already addressed herein. App. Br. 8—15. As set forth above, those arguments are unpersuasive. Appellant additionally challenges the propriety of the obviousness rejections by contending that the various references do not “provide the legally required reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” App. Br. 8, 10, 12, 14, 15. Such unembellished assertions fail to identity reversible error, however, because “evidence of a motivation to combine need not be found in the prior art references themselves.” Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 5 Appeal 2017-002418 Application 14/173,487 F.3d 1356, 1366 (Fed. Cir. 2006). We emphasize here that Appellant does not challenge with any specificity the Examiner’s rationales to modify Kubota for any of these rejections. Final Act. 7—13. We, therefore, sustain the obviousness rejections. SUMMARY The Examiner’s final decision to reject claims 1—6, 8, 10—12, and 14— 30 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). AFFIRMED 6 Copy with citationCopy as parenthetical citation