Ex Parte Okuda et al

Board of Patent Appeals and Interferences

Mar 24, 2011

11435845 (B.P.A.I. Mar. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SATOSHI OKUDA, NARUMI KOGA, KAZUMA GOTO,
HIDEO OHIRA, JUNICHIRO SUGIMOTO, MASAYA FUJIOKA, and
SHUNICHI HIGASHIYAMA
____________

Appeal 2010-003145
Application 11/435,845
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. §134 from the Examiner's decision
rejecting claims 1-7 under 35 U.S.C. § 103(a) as unpatentable over JP 107

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-003145
Application 11/435,845

2
(Okamura, JP 08-199107, issued Jan. 26, 1995) in view of Lin (US
5,851,274, issued Dec. 22, 1998). We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a water-based ink comprising a reactive dye which
forms chloride ions in the ink, such as C.I. Reactive Red 31, benzotriazole,
carboxybenzotriazole, water, and a water soluble organic solvent (claim 1).
The amount of carboxybenzotriazole may be from about 0.01 to about 0.04
weight % (claim 6).
Representative claims 1 and 6 read as follows:
1. A water-based ink for ink-jet recording, comprising:

a reactive dye which forms chloride ions in the ink;

benzotriazole;

carboxybenzotriazole;

water; and

a water soluble organic solvent.

6. The water-based ink for ink-jet recording according to claim 1,
wherein an amount of carboxybenzotriazole with respect to a total amount of
the water-based ink is about 0.01 to about 0.04 wt. %.

The following facts are undisputed. JP 107 discloses a water-based
ink composition for a ballpoint pen which contains benzotriazole and
carboxybenzotriazole for improving corrosion resistance of the metal ball of
the pen (paras. [0001]-[0003], [0020]). The ink composition of JP 107
contains colorants such as basic, acid, and direct dyes but not Appellants'
claimed reactive dyes. However, Lin discloses a water-based ink
composition comprising colorants such as basic, acid, direct, and reactive
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Application 11/435,845

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dyes including Appellants' claimed Reactive Red 31 (Lin para. bridging col.
12-13).
Based on these undisputed facts, the Examiner concludes that it would
have been obvious for one with ordinary skill in this art to replace one of the
non-reactive dyes of JP 107 with a reactive dye of the type taught by Lin
such as Reactive Red 31 (Ans. para. bridging 3-4).
Appellants' arguments against the rejection before us are directed to
claims 1 and 6 only. Separate arguments have not been made against the
rejection of dependent claims 2-5 and 7 (see App. Br. 18). Accordingly,
these dependent claims will stand or fall with independent claim 1.
Regarding claim 1, Appellants argue that the proposed modification of
the JP 107 ink composition would render it unsatisfactory for its intended
purpose of inhibiting corrosion (App. Br. 11-15). More specifically,
Appellants argue that reactive dyes of the type taught by Lin are known to
contain corrosive chloride ions and accordingly that adding these corrosive
reactive dyes to the ink composition of JP 107 would render it unsatisfactory
for resisting corrosion (id.).
The deficiency of this argument is that it is unsupported by any
evidence that Lin's reactive dyes would overcome the corrosion inhibiting
function of the benzotriazole and carboxybenzotriazole used by JP 107.
This record contains no basis for believing that these corrosion inhibitors of
JP 107 would be incapable of performing their function in the presence of
reactive dyes. Stated differently, Appellants have provided no basis for
believing that benzotriazole and carboxybenzotriazole would not inhibit the
corrosive effect of the chloride ions which are in reactive dyes.
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To the contrary, the Background section of Appellants' Specification
reflects that chloride ions are present in inks containing the direct, acid, and
basic dyes of JP 107 and that the corrosive effect of these chloride ions, even
when present in an amount of several hundreds of ppm, can be suppressed
by adding benzotriazole (Spec. para. bridging 3-4). This aspect of the appeal
record correspondingly reflects that the JP 107 combination of benzotriazole
and carboxybenzotriazole likewise would inhibit the corrosive effect of
chloride ions.
In short, the argument under consideration not only is unsupported but
is actually undermined by Appellants' own Specification.
Appellants also argue that no apparent reason exists for replacing one
of the non-reactive dyes of JP 107 with a reactive dye such as the Reactive
Red 31 taught by Lin and claimed by Appellants (App. Br. 15-18).
We cannot agree.
The record shows that reactive dyes as well as basic, acid, and direct
dyes are known in the prior art. It is rational to conclude that it would have
been prima facie obvious for an artisan to provide an ink composition with
any of these dyes including reactive dyes in order to obtain the predictable
benefit of their colorant function. See KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007) (in assessing the obviousness of a claim to a
combination of prior art elements, the question to be asked is "whether the
improvement is more than the predictable use of prior art elements according
to their established functions").
For the above stated reasons, we determine that the Examiner has
established a prima facie case of obviousness for the subject matter defined
by claim 1.
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Appellants additionally argue that JP 107 contains no teaching or
suggestion of the carboxybenzotriazole amounts defined by claim 6 of about
0.01 to about 0.04 weight % (App. Br. 18-19). According to Appellants, JP
107 actually teaches away from these claim amounts by disclosing in
paragraph [0008] that, "[w]hen the amount is 0.05 wt% or less, a sufficient
corrosion resistance cannot be expected" (id.).
We recognize that JP 107 teaches that a carboxybenzotriazole amount
"in the range of 0.05-5.0 wt% . . . is desirable" (para. [0008]). However, the
lower end of this range is at least close to the claim 6 upper end of "about
0.04 wt. %" (emphasis added). These circumstances support the Examiner's
conclusion that the lower end of the JP 107 range would have suggested the
upper end of Appellants' claimed range because the values are so close that
an artisan would have reasonably expected them to have the same properties
(Ans. 5). The Examiner properly relies on Titanium Metals Corp. of
America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) as support for this
conclusion (id.). Moreover, the Examiner's conclusion is reinforced by the
fact that the amounts disclosed by JP 107 and the amounts claimed by
Appellants are both disclosed as possessing the same property (i.e., effective
corrosion inhibition).
Appellants’ above arguments do not discuss and are seemingly
irrelevant to the Examiner's obviousness rationale. For example, the
paragraph [0008] disclosure of JP 107 relates to the unmodified JP 107 ink
composition and therefore does not necessarily teach away from Appellants'
claimed lower concentration since this lower concentration relates to the JP
107 ink composition as modified by Lin. In this regard, the record contains
no evidence that a lower concentration of the carboxybenzotriazole in JP 107
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Application 11/435,845

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would be considered ineffective in the modified ink composition. On the
other hand, the previously analyzed Background discussion in Appellants'
Specification discloses that benzotriazole would inhibit corrosion by ink
containing chloride ions in an amount of several hundreds of ppm (Spec.
para. bridging 3-4), thereby indicating that corrosion by such inks also
would be inhibited by benzotriazole in combination with lower
concentrations of carboxybenzotriazole.
For these reasons, the arguments under review also are unpersuasive.
Therefore, we also determine that the Examiner has established a
prima facie case of obviousness with respect to the subject matter defined by
claim 6.
For the reasons stated above, we sustain the Examiner's § 103
rejection of all appealed claims over JP 107 in view of Lin.
The decision of the Examiner 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) (2008).

AFFIRMED

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