Ex parte Odell

Board of Patent Appeals and Interferences

Jul 31, 2000

08315005 (B.P.A.I. Jul. 31, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PETER G. ODELL
____________
Appeal No. 1996-3982
Application No. 08/315,005
____________
ON BRIEF
____________
Before JOHN D. SMITH, WARREN and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally
rejecting claims 1, 2, 6 through 10, 12 through 15 and 18 through 26 and
refusing to allow claim 11 as amended subsequent to the final rejection, which are
all the claims in the application.
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Application No. 08/315,005
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THE INVENTION
The invention is directed to a process for the preparation of a liquid developer,
wherein the developer comprises a liquid hydrocarbon vehicle, thermoplastic resin
particles, pigment, a charge additive or adjuvant and a charge director. The process
consists essentially of subjecting the liquid vehicle to a supercritical solvent
extraction whereby the hydrocarbon is extracted by the supercritical solvent
resulting in a liquid vehicle having a higher solids content. One supercritical solvent
used is carbon dioxide.
THE CLAIMS

Claims 1 and 2 are illustrative of appellants’ invention and are reproduced
below.
1. A process for the preparation of a liquid developer consisting essentially
of a hydrocarbon liquid vehicle, thermoplastic resin particles, pigment, a charge
additive or adjuvant, and a charge director, which process consists essentially of a
supercritical solvent extraction of said liquid vehicle and wherein said liquid
developer possesses a high solids content.

2. A process for the preparation of a liquid developer consisting essentially
of a liquid vehicle, thermoplastic resin particles, pigment, a charge adjuvant and a
charge director, which process consists essentially of the supercritical carbon
dioxide solvent extraction of said liquid vehicle of said developer and wherein said
liquid developer possesses a high solids content of from about 50 to about 90
weight percent, and wherein the solids are comprised of thermoplastic resin
particles, pigment, and charge adjuvant.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references.
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Zosel 3,969,196 Jul. 13, 1976
Felder et al. (Felder) 5,206,108 Apr. 27, 1993
Lane et al. (Lane) 5,254,427 Oct. 19, 1993
THE REJECTIONS

Claims 1, 2, 6 through 15 and 18 through 26 stand rejected under
35 U.S.C. § 112, paragraph two, as being indefinite for failing to point out and
distinctly claim the subject matter which applicant regards as the invention.
Claims 23 and 24 stand rejected under 35 U.S.C. § 112, first paragraph, as the
specification as originally filed does not provide support for the invention as is now
claimed.
Claims 1, 2, 6, 7, 9 through 15 and 18 through 26 stand rejected under
35 U.S.C. § 103 as being unpatentable over Felder in view of Zosel.
Claims 1, 2, 6 through 15, and 18 through 26 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Lane in view of Zosel.
OPINION
We have carefully considered all of the arguments advanced by appellant and
the examiner and agree with the appellants that the aforementioned rejections under
35 U.S.C. § 103 and 35 U.S.C. § 112, paragraph two, are not well founded.
Accordingly, we will not sustain these rejections. We agree with the examiner that the
rejection under 35 U.S.C. § 112, paragraph one, is well founded. Accordingly, we
will sustain this rejection.
Appeal No. 1996-3982
Application No. 08/315,005
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The Rejection under Section 112 -- Indefiniteness
“The legal standard for definiteness under the second paragraph of 35 U.S.C.
§ 112 is whether a claim reasonably apprises those of ordinary skill in the art of its
scope.” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed.
Cir. 1994). The inquiry is to determine whether the claim sets out and circumscribes
a particular area with a reasonable degree of precision and particularity. The
definiteness of the language employed in a claim must be analyzed not in a vacuum, but
in light of the teachings of the particular application. In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
It is the examiner’s position that the claims fail to recite a step of providing a first
liquid developer or composition comprising a liquid vehicle to be extracted.
Furthermore, the examiner argues that it is not clear what liquid developer has said
high solids content. See Answer, page 5. Hence, the claims are indefinite.
However, the specification, discloses a process for the preparation of a
concentrated liquid developer,
wherein the supercritical carbon dioxide solvent extraction comprises
supplying a developer suspension to the extraction vessel, which sus-
pension can be in the form of liquid, paste, or granular solid, and which
suspension contains a hydrocarbon dispersant to be removed in part or
in entirety; supplying to the extraction vessel a supercritical solvent for
the hydrocarbon dispersant; removing the supercritical solvent into
which the hydrocarbon dispersant has dissolved from the extraction
vessel; lowering the pressure of the solution to vaporize the solvent;
and recovering the concentrated liquid developer.
See specification, page 7, lines 19-28; see also the examples.
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On this record, we conclude that the specification provides a reasonable standard
for understanding the metes and bounds of the phrases, “process for the
preparation of a liquid developer consisting essentially of a hydrocarbon liquid
vehicle,” and “process for the preparation of a liquid developer consisting
essentially of a liquid vehicle . . . which process consists essentially of the
supercritical carbon dioxide solvent extraction of said liquid vehicle of said
developer and wherein said liquid developer possesses a high solids content . . . ,”
when the claim is read in light of the specification. Seattle Box Co. v. Industrial
Crating & Packing, Inc, 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir.
1984).
Similarly, with respect to claim 21, which is directed to “liquid developer
possesses a high solids content of from about 30 to about 100 weight percent,”
weight is given to the requirement that the developer must be liquid. Hence sufficient
liquid must be retained to maintain the developer in a liquid state.
Accordingly, we reverse the rejection of the examiner.
The Rejection under Section 112 -- Written Description Requirement
We turn next to the rejection of claims 23 and 24 under 35 U.S.C. § 112,
first paragraph, as lacking written descriptive support in the original disclosure for
the claims presently recited. As the court stated in In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983):
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally
filed reasonably conveys to the artisan that the inventor had possession
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at that time of the later claimed subject matter, rather than the
presence or absence of literal support in the specification for the
claim language. [Citations omitted.]
“One shows that one is ‘in possession’ of the invention by describing the invention, with
all its claimed limitations, not that which make it obvious.” [Citations omitted.]
Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961,
1966 (Fed. Cir. 1997).
In the present case, we believe appellants’ disclosure fails to reasonably
convey to one of ordinary skill in the art that appellants had possession of a process
for the preparation of a liquid developer, “wherein there is extracted from about 60
to about 78 weight percent of said liquid vehicle.” We determine that the disclosure
as originally filed does not convey to the artisan that the inventor has possession of
the aforementioned limitation.
Indeed, appellants’ principal argument is directed to the proposition that the
application contains support for the claimed range on page 1 which provides for a
solid content, “with a 50 or greater solids content.” See specification, page 1. We
determine that “50 or greater” does not provide support for the specific limitation
of “about 60 to about 78." In addition, appellants specifically rely on working
examples II and III wherein 39.1 milliliters and 18.8 grams of liquids were
respectively collected. See Brief, page 10. However, appellants have not
established that the proportions of liquid extract obtained by Examples II and III
respectively provide support for the limitation, “extracted from about 60 to about
78 weight percent of said liquid vehicle,” or are even relevant to those limitations.
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Accordingly, from our perspective, the original disclosure would not have
reasonably conveyed to one of ordinary skill in the art that appellants had
“possession” of a process for the preparation of a liquid developer, “wherein there
is extracted from about 60 to about 78 weight percent of said liquid vehicle.”
Accordingly, we affirm the examiner’s decision rejecting all of the appealed claims
under 35 U.S.C. § 112, first paragraph.
The Rejections under Section 103
Under 35 U.S.C. § 103, the obviousness of an invention cannot be established by
combining the teachings of the prior art references absent some teaching, suggestion
or incentive supporting the combination. ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984). This does not mean that the cited prior art references must specifically
suggest making the combination. B.F. Goodrich Co. V. Aircraft Braking Systems
Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re
Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988). Rather,
the test for obviousness is what the combined teachings of the prior art references
would have fairly suggested to those of ordinary skill in the art. In re Young, 927
F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In evaluating such prior art
references, it is proper to take into account not only their specific teachings but
also the inferences which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
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The examiner relies upon a combination of two different combinations of
references to reject the claimed subject matter and establish a prima facie case of
obviousness. With respect to each combination of references, the examiner has
stated that neither the reference to Felder nor Lane exemplifies concentrating the
suspension by supercritical solvent extraction. See Answer, pages 9 and 11. Indeed,
we determine that neither reference discloses nor teaches supercritical solvent
extraction.
Accordingly, Zosel is relied upon as disclosing the separation of materials
through the use of supercritical extraction. See Abstract. We find that the
separation process is taught as “extremely simple in operation” especially on a
commercial scale. See column 1, lines 42-46. We find that “[t]ransfer of organic
compounds is achieved equally satisfactorily in purely inorganic gases such as CO .” 2
See column 4, lines 65-67. Moreover, we find that Zosel discloses that, “if a gas
such as ethylene or carbon dioxide is passed under the conditions of this invention
through the aluminum alcoholate reaction mixture prior to hydrolysis, the organic
impurities which are chiefly olefins are taken up in the supercritical phase
substantially quantitatively while the aluminum alcoholate is obtained in the residue.”
See column 22, lines 51-57. We further find that in example 13, carbon dioxide is
used to separate dodecene from paraffin oil.
However, notwithstanding the above findings, in our view the Zosel reference fails
to disclose or teach that a supercritical extraction of a composition comprising a
liquid hydrocarbon vehicle, thermoplastic resin particles, pigment, a charge additive
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or adjuvant and a charge director would result in the extraction of only the
hydrocarbon vehicle. Indeed, the entire thrust of the Zosel reference is that
“transferability into the supercritical gas depends upon the specific constitution of
the compound.” See column 1, lines 63-65. Accordingly, the person having ordinary
skill in the art must independently determine in each system of compounds and
polymers, such as those present in a liquid developer, which component(s) may be
extracted with a supercritical gas. Therefore, Zosel fails to suggest the proposed
supercritical extraction required by the claimed subject matter.
Based upon the above analysis, the examiner's stated rejection falls short of
establishing a prima facie case of obviousness. The mere fact that the prior art
could be modified as proposed by the examiner is not sufficient to establish a prima
facie case. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed.
Cir. 1992). The suggestion for the proposed modification must be in the prior art,
and not in the applicant's disclosure. In re Dow Chemical Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
In the case before us, the examiner has simply failed to provide acceptable
reasons, based on the applied prior art or on the basis of knowledge generally
available to one of ordinary skill in the art, for the proposed modification. This is so
since the examiner has not convincingly explained why the combined references would
have fairly suggested the claimed subject matter to one of ordinary skill in the art.
Consequently, we will not sustain the rejections under 35 U.S.C. § 103 over these
references.
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DECISION
The rejection of claims 1, 2, 6 through 15 and 18 through 26 under
35 U.S.C. § 112, paragraph two, as being indefinite for failing to point out and
distinctly claim the subject matter applicant’s regards as the invention is reversed.
The rejection of claims 23 and 24 under 35 U.S.C. § 112, first paragraph, as
the specification as originally filed does not support the invention as now claimed is
affirmed.
The rejection of claims 1, 2, 6, 7, 9 through 15 and 18 through 26 under
35 U.S.C. § 103 as being unpatentable over Felder in view of Zosel is reversed.
The rejection of claims 1, 2, 6 through 15, and 18 through 26 under
35 U.S.C. § 103 as being unpatentable over Lane in view of Zosel is reversed.
The decision of the examiner is affirmed-in-part.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
Appeal No. 1996-3982
Application No. 08/315,005
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RONALD ZIBELLI
XEROX CORPORATION
XEROX SQUARE 020
ROCHESTER, NY 14644