Ex Parte Orlik et al

Patent Trials and Appeals Board

Jul 2, 2019

14443949 - (D) (P.T.A.B. Jul. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/443,949 05/19/2015
22879 7590 07/05/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Fernanda Orlik
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.
84238486 5516
EXAMINER
VAJDA, PETER L
ART UNIT PAPER NUMBER
1737
NOTIFICATION DATE DELIVERY MODE
07/05/2019 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FERNANDA ORLIK, IGOR SHOTRI, and ALBERT TEISHEV 1
Appeal2018-004547
Application 14/443,949
Technology Center 1700
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This case is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to electrostatic printing and inks.
E.g., Spec. 1; Claim 1. Claim 1 is reproduced below from page 23 ( Claims
Appendix) of the Appeal Brief:
1 The Appellant is the Applicant, Hewlett-Packard Indigo B.V., and "HP
Indigo B.V.," a wholly owned affiliate of HP Inc., is identified as the real
party in interest. See App. Br. 3.
Appeal2018-004547
Application 14/443,949
1. A method of printing on a plastic substrate, the method
compnsmg
providing an electrostatic ink composition comprising a carrier
liquid and particles, wherein the particles comprise a resin and
a slip agent and the particles are dispersed in the carrier liquid;
forming a latent electrostatic image on a surface;
contacting the surface with the electrostatic ink composition,
such that at least some of the particles and the slip agent are
transferred to the surface to form a developed toner image on
the surface; and
transferring the toner image to the plastic substrate.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1, 2, 10-12, and 16-19 under 35 U.S.C. § I02(b) as
anticipated by Silcoff (US 2011/0189606 Al, published Aug. 4, 2011);
2. Claims 2 and 3 under 35 U.S.C. § I03(a) as unpatentable over
Silcoff, Gal (US 2009/0305160 Al, published Dec. 10, 2009), and the
Product Data Sheet for Ti-Pure R-104 (of record);
3. Claims 4--7 and 15 under 35 U.S.C. § I03(a) as unpatentable over
Silcoff and Fujinaga (US 2009/0047458 Al, published Feb. 19, 2009);
4. Claims 8, 9, 13, and 14 under 35 U.S.C. § I03(a) as unpatentable
over Sileo ff and Nair (US 2009/0162779 Al, published June 25, 2009).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
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Final Action, and in the Examiner's Answer. See generally Final Act. 2---6;
Ans. 2-12.
Rejection 1
The Appellant argues most of the claims subject to Rejection 1 as a
group, but includes a separate paragraph directed to claims 16-19. We
select claim 1 as representative of the grouped claims, and the remaining
grouped claims will stand or fall with claim 1. We separately address
claims 16-19.
Claim 1. The Examiner finds that Silcoff anticipates claim 1. The
statement of the rejection is repeated at pages 2-3 of the Examiner's
Answer. Of particular relevance to the issues that the Appellant raises in
this appeal, the Examiner finds (1) that Silcoff discloses a method involving
the use of a toner or ink composition comprising "toner particles" and
"treated fluoropolymer particles," (2) that the toner particles comprise a
resin, and (3) that the fluoropolymer particles are a slip agent. Id. at 3, 7.
Thus, the Examiner finds that "Silcoff teaches two separate particles in the
toner composition," i.e., a resin and a slip agent. Id. at 7. The Examiner
interprets the phrase "wherein the particles comprise a resin and a slip
agent" of claim 1 as encompassing a plurality of particles wherein some of
the particles are resins and other particles are slip agents. Id. at 7-8.
Alternatively, the Examiner determines that, even if claim 1 were
interpreted as requiring individual particles that comprise both a resin and a
slip agent, Silcoffs method would fall within the scope of the claim because
Silcoff teaches that its mixture of resin particles and slip agent particles is
heated, which "will soften the toner resin particles," and "additional
crushing of the softened mixture will almost certainly result in at least
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Application 14/443,949
partially embedding of the [ slip agent particles] in the softened toner resin
particles." Id. at 8-9.
In view of those and other findings, the Examiner determines that
Silcoff anticipates claim 1.
In the Appeal Brief, the Appellant first argues that "[ t ]he Examiner
does not address the resin in the anticipation rejection." App. Br. 12-14.
As set forth above, the Examiner finds that Silcoff's compositions
include toner particles. Ans. 2; see also Final Act. 2. The Examiner
clarifies in the Answer that "[t]oner particles are well known to be resin
particles." Ans. 7 ( citing Sileo ff ,r 3 5). In the Reply Brief, the Appellant
acknowledges that finding but does not dispute it or otherwise assert error in
it. See Reply Br. 4. On this record, we are not persuaded that the Examiner
fails to address the resin requirement of claim 1.
Next, the Appellant interprets claim 1 as requiring that individual
particles comprise both a resin and a slip agent, and the Appellant argues
that the compositions described by Sileo ff fall beyond the scope of claim 1
because Sileo ff s resin and slip agent are not part of the same individual
particle. App. Br. 14 ("Silcoff does not teach a particle that includes both a
slip agent and a resin."); Reply Br. 5---6.
"[T]he PTO must give claims their broadest reasonable construction
consistent with the specification." In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007).
Claim 1 recites that the electrostatic ink composition comprises "a
carrier liquid and particles, wherein the particles comprise a resin and a slip
agent" ( emphasis added). As the Examiner points out, Ans. 8, the
Specification states:
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Application 14/443,949
In some examples, "particles compnsmg a resin and a slip
agent" may indicate that the resin and slip agent are in different
particles or in the same particles. In some examples, "particles
comprising a resin and a slip agent", indicates that at least
some, in some examples all, of the particles comprise both the
resin and the slip agent.
Spec. 21 ( emphasis added). Thus, the Specification expressly states that
language nearly identical to the claim language at issue encompasses
compositions in which "the resin and slip agent are in different particles."
Id. The language of claim !-"particles comprise a resin and a slip
agent"----differs from that of the Specification only in that the word
"comprise" is used rather than the word "comprising."
Relying on the fact that, during prosecution, the claims at one point
recited "particles comprising a resin and a slip agent" ( emphasis added) and
were amended to recite "particles, wherein the particles comprise a resin and
a slip agent," the Appellant argues that "[t]he amendment changes this
language to say that ... the particles per se comprise both the resin and the
slip agent." Reply Br. 6 (emphasis in original); see also Reply Br. 6
("Appellants maintain that claims 1 and 12 require particles that each
include both a resin and a slip agent." (emphasis added)). Claim 1 does not,
however, include the language used by the Appellant in the Reply Brief;
claim 1 does not recite that the particles "each include both a resin and a slip
agent." Instead, claim 1 recites that "the particles comprise a resin and a slip
agent," and, as set forth above, that language is essentially identical to
language in the Specification that the Specification expressly states
encompasses embodiments in which "the resin and slip agent are in different
particles." Spec. 21.
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On this record, and in view of the foregoing discussion, the Appellant
has not shown reversible error in the Examiner's determination that the
broadest reasonable interpretation of the disputed claim language
encompasses embodiments in which the resin and slip agent are in different
particles. Cf In re Zietz, 893 F.2d 319, 321 (Fed. Cir. 1989) ("[D]uring
patent prosecution when claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
imposed."). Consequently, we are not persuaded of error in the Examiner's
determination that Silcoff's embodiments in which the resin and slip agent
are in different particles anticipate claim 1.
We are also not persuaded of reversible error in the Examiner's
alternative rationale that Silcoff s disclosure of (1) mixing the resin and slip
agent, (2) heating, (3) adding other components, and (4) grinding the
mixture to form a final toner composition, see Silcoff ,r 41, necessarily
would yield particles that individually comprise both a resin and as slip
agent. See Ans. 8-9. The Examiner finds that the same process is described
by the Appellant's Specification. See id. at 9 (citing Spec. 26-29). In the
Reply Brief, the Appellant does not dispute that the process described by the
Specification yields particles that fall within the scope of claim 1, and the
Appellant identifies only one difference between Silcoffs process and the
process described by the Specification-that ammonium halide salts are
disposed on the surface of Silcoff's slip agent particles. See Reply Br. 7-8.
However, the Appellant provides no persuasive evidence that
ammonium halide salts on the surface of Silcoff' s slip agent would cause
Silcoff's method to produce results different from the method described by
the Specification. Although the Appellant argues that Sileo ff teaches that
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the ammonium halide salts prevent the slip agent particles themselves from
agglomerating with each other (i.e., with other slip agent particles), see
Reply Br. 7, that fails to indicate that the ammonium halide salts would
prevent the slip agent particles from embedding in the heated, softened resin
particles when the particles are ground together, as described by Silcoff. See
Silcoff,I 41. And, although the Appellant states that it is "likely" that the
resin particles of Silcoff "would be hydrophobic and therefore they would
not associate with the charged, hydrophilic ammonium ends" of Silcoff s
ammonium halide salts, the Appellant provides no evidence that Silcoff s
resin particles are hydrophobic, much less sufficiently hydrophobic to
prevent Sileo ff' s slip agent from embedding in the heated, softened resin
when ground with the resin. See Reply Br. 7; see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take
the place of evidence.").
On this record, we are not persuaded that Silcoff's process would not
yield particles that are the same as those produced by the process described
by the Appellant's Specification. We discern no persuasive basis to reject
the Examiner's finding that mixing resin and slip agent particles, heating the
mixture, and then grinding the mixture, see Silcoff,I 41, would yield at least
some particles in which the resin and slip agent are combined into a single
particle.
Accordingly, we are not persuaded of reversible error in the
Examiner's rejection under either alternative rationale relied on by the
Examiner. We affirm the Examiner's rejection of claim 1.
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Claims 16--19. Claims 16-18 depend from claim 1, directly or
indirectly, and recite additional method steps. Claim 19 depends from claim
12 and recites that the carrier liquid comprises an isoparaffinic compound.
In the Appeal Brief, the Appellant does not contend that Silcoff does
not teach the additional steps of claims 16-18 or the isoparaffinic carrier
liquid of claim 19. Instead, the Appellant argues only that "the product will
exhibit different characteristics based on the incorporation of the resin in the
particles." App. Br. 14--15. The Appellant's argument fails to address or
show error in the Examiner's specific findings concerning the limitations of
claims 16-19. See, e.g., Ans. 3, 9 ("Silcoffteaches the process steps of
grinding the resin and slip agent in forming the electrostatic ink composition
([0041]) and removing the isoparaffinic carrier liquid during printing ([0002]
and [0033]). Additional additives may also be added ([0041 ])."
In the Reply Brief, the Appellant again fails to challenge the
Examiner's specific findings concerning claims 16-19 and instead argues
that the claimed inks "show[] an improvement over the commercially
available ink." Reply Br. 8. To the extent the Appellant is raising an
unexpected results argument, "any superior property must be unexpected to
be considered as evidence of non-obviousness." See Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (emphasis in original). The
Appellant does not allege that any "improvement" over the prior art would
have been unexpected. Nor does the Appellant allege that the relied-upon
data shows an improvement relative to the closest prior art, i.e., Silcoff. See
In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991) ("[W]hen
unexpected results are used as evidence of nonobviousness, the results must
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be shown to be unexpected compared with the closest prior art." ( emphasis
added)).
On this record, we are not persuaded of reversible error in the
Examiner's rejection of claims 16-19. See In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections .... ").
Re} ections 2-4
The Appellant includes separate sections of the Appeal Brief for
Rejections 2--4 but argues only that the Examiner's additional analysis of the
claims subject to those rejections does not correct the alleged deficiencies
argued with respect to Rejection 1. See App. Br. 17-21. Because we are not
persuaded of reversible error in Rejection 1, we likewise are not persuaded
of error in Rejections 2--4.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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