Ex Parte Morimitsu et al

Patent Trial and Appeal Board

Jun 29, 2016

13457221 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/457,221 04/26/2012 Kentaro Morimitsu
76113 7590 07/01/2016
PILLSBURY WINTHROP SHAW PITTMAN, LLP (Xerox)
XEROX CORPORATION
P .0 . BOX 10500
MCLEAN, VA 22102
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20110665-397243 2206
EXAMINER
QIAN, YUN
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENTARO MORIMITSU,
JENNIFER L. BELELIE, NA VEEN CHOPRA,
GABRIEL IFTIME, and PETER G. ODELL
Appeal2014-007827
Application 13/457,221
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
BRIAND. RANGE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-15 of Application 13/457,221
under 35 U.S.C. § 103(a) as obvious. Final Act. (October 10, 2013). The
Examiner also provisionally rejected claims 1-15 for obviousness-type
double patenting. Id. at 3. Appellants 1 seek reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b ).
For the reasons set forth below, we REVERSE.
1 Xerox Corporation is identified as the real party in interest. Appeal Br. 1.
Appeal2014-007827
Application 13/457,221
BACKGROUND
The '221 Application describes phase change ink compositions.
Spec. i-f 2. Phase change inks are solid at room temperature, and are applied
to a substrate at an elevated temperature at which the ink is molten. Id.
Such ink compositions are said to be useful in inkjet printing applications.
Id.
Claim 1 is representative of the '221 Application's claims and is
reproduced below:
1. A phase change ink comprising:
an amorphous compound; and
a crystalline compound being an amide having a formula of:
Formula II
wherein each R3 and R4 is independently selected from
the group consisting of
(i) an arylalkyl group, wherein the arylalkyl group
is optionally substituted, wherein the alkyl portion of the
arylalkyl group is optionally linear or branched, cyclic or
acyclic, substituted or unsubstituted, saturated or
unsaturated, and
further wherein heteroatoms is optionally
present in either the aryl portion or the alkyl
portion of the arylalkyl group having from 4 to 40
carbon atoms,
(ii) an aromatic group, wherein the aromatic group
is optionally substituted, wherein the substituent is
optionally a linear, branched, cyclic or acyclic alkyl
group and
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Appeal2014-007827
Application 13/457,221
further wherein heteroatoms is optionally
present in the aromatic group having from 3 to 40
carbon atoms, and mixtures thereof; and
wherein the phase change ink crystallizes in less than 15
seconds.
Appeal Br. 16 (Claims App.) (some paragraphing and indentation added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Allen2 and Kawai, 3 as evidenced by
Banning.4 Final Act. 4.
2. Claims 1-15 are provisionally rejected for its obviousness-type
double patenting (OTDP) as unpatentable over claims 1, 2, 12, 13,
16, and 17 of copending Application No. 13/095,681. Final Act. 3.
DISCUSSION'S
Rejection 1. The Examiner rejected claims 1-15 of the '221
Application as unpatentable over the combination of Allen and Kawai, as
evidenced by Banning. Final Act. 4.
Appellants present substantive arguments for the reversal of this
rejection with respect to independent claim 1 dependent claims 2-14 are
2 US 2008/0302272 Al, published December 11, 2008.
3 JP 2001-225554, published August 21, 2001. We cite the machine
translation entered into the record of the '221 Application on October 10,
2013.
4 US 2009/0223409 Al, published September 10, 2009.
3
Appeal2014-007827
Application 13/457,221
alleged to be patentable for the reasons advanced in support of the
patentability of claim 1. Appeal Br. 11. Appellants do not present separate
arguments for the patentability of any of the pending claims 2-14. Id.
Independent claim 15 is alleged to be patentable for the reasons advanced in
support of the patentability of claim 1. Id. at 11-12 ("[T]he discussion
presented above in support of claim 1 also applies to claim 15."). We,
therefore, limit our discussion to claim 1.
The Examiner found that Allen describes a phase change ink
composition comprising an amorphous compound. Final Act. 4--5. The
Examiner further found that Allen does not describe or suggest a crystalline
compound with the structure set forth in formula II. Id. at 5. The Examiner
also found that Kawai describes a thermal printing material containing
benzamide that has the structure set forth in formula II. Id. at 5---6 (pointing
out that Kawai' s benzamide is described in Table 1 of Appellants'
Specification). The Examiner also found that a person having ordinary skill
in the art would have been motivated to use Kawai's crystalline benzamide
compound in Allen because "the benzamide shows improved sensitivity,
image storage stability and reduced background fog." Id. at 6. Based upon
these findings of fact, the Examiner concluded that claim 1 is unpatentable
over the combination of Allen and Kawai, as evidenced by Banning.
We cannot sustain the Examiner's rejection of claim 1. As Appellants
point out, see Appeal Br. 9-10, Kawai describes the use of N-
(phenylmethyl)benzamide and related benzamide compounds in print
medium used in thermal printers and not in phase change ink's used in inkjet
printing. Thus, the alleged advantages provided by use of these benzamides
all relate to the properties they confer when used in a thermal print medium.
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Appeal2014-007827
Application 13/457,221
The Examiner has not explained how or why any the alleged advantages
would be relevant to phase change ink compositions used in inkjet printing.
We, therefore, reverse the rejection because the Examiner has not
provided a sufficient reason for a person of ordinary skill in the art to
combined Allen and Kawai at the time of the invention.
Rejection 2. The Examiner provisionally rejected claims 1-15 for
OTDP over claims 1, 2, 12, 13, 16, and 17 of copending Application No.
13/095,681. Final Act. 3.
Appellants argue that this rejection is moot because they filed a
terminal disclaimer which has been entered. See Appeal Br. 14.
In view of Appellants' argument5, we decline to review the merits of
the provisional OTDP rejection. See Ex parte Jerg, No. 2011-000044, slip
op. at 6 (BPAI April 17, 2012) (Informative Decision) (available at
http://l.usa.gov/29hxQLc) (holding that the Board has discretion as to
whether or not to reach provisional double patenting rejections).
CONCLUSION
For the reasons set forth above, we reverse the§ 103 rejection of
claims 1-15 and we decline to review the provisional obviousness-type
double patenting rejection of those claims.
REVERSED
5 The Patent Office's application database shows a terminal disclaimer filed
and approved in this application on December 6, 2013.
5