Ex Parte Rehman et al

Board of Patent Appeals and Interferences

Jun 1, 2010

11065207 (B.P.A.I. Jun. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ZIA UR REHMAN
and MATTHEW THORNBERRY
____________________

Appeal 2009-014123
Application 11/065,207
Technology Center 1700
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Decided: June 1, 2010
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Before MICHAEL P. COLAIANNI, CATHERINE Q. TIMM, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 14-41. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Appellants’ invention relates to ink-jet ink compositions having
reduced vapor loss rates and reduced clogging when utilized in off-axis print
systems (Spec. 1:9-11). Claim 14 is illustrative:
14. A system for printing an ink-jet ink, comprising:
a) an ink supply cartridge containing an ink-jet ink, said
ink-jet ink including;
i) an aqueous liquid vehicle including at least three
co-solvents selected from the group consisting of tetraethylene
glycol, glycerol, diglycerol, 1,5-pentanediol, 2-pyrrolidone,
ethylhydroxy-propanediol, said at least three co-solvents being
present in combination in the ink-jet ink at from l0 wt% to 25
wt%, and wherein at least one of the three co-solvents included
is glycerol, diglycerol, or tetraethylene glycol;
ii) a dye;
b) an off-axis printer including ink delivery system tubes
and a printhead, said ink delivery tubes configured for
transferring the ink-jet ink from the ink supply cartridge to the
printhead.
The Examiner relies upon the following evidence:
First Named Inventor Document No. Issue or Pub. Date
Johnson
Seccombe
Idogawa
US 5,536,306
US 5,650,811
US 5,965,634
Jul. 16, 1996
Jul. 22, 1997
Oct. 12, 1999
Yamashita US 2004/0254263 A1 Dec. 16, 2004
The Examiner maintains, and Appellants seek review of, the
following rejections:
1. The rejection of claims 14-16, 18, 20-22, 24, 27-30, 32, 34-36, 38, and
41 under 35 U.S.C. § 103(a) as unpatentable over Johnson in view of
Seccombe;
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2. The rejection of claims 23 and 37 under 35 U.S.C. § 103(a) as
unpatentable over Johnson in view of Seccombe and Yamashita;
3. The rejection of claims 17, 19, 25, 26, 31, 33, 39, and 40 under
35 U.S.C. § 103(a) as unpatentable over Johnson in view of Seccombe
and Idogawa.
Regarding the first rejection, Appellants initially direct their
arguments to the requirement of three co-solvents found in independent
claims 14 and 28 (Br. 13-19). We select independent claim 14 as the
representative claim for deciding the issue arising from these arguments.
Appellants’ separate arguments directed to claims 15 and 29, as a group, are
also incorporated below. Although Appellants discuss other claims under
separate headings, no sufficiently distinct argument is made with respect to
those other claims that gives rise to a separate dispositive issue.
II. DISPOSITIVE ISSUE
The main dispositive issue arising from the contentions of the
Appellants and the Examiner is: does the evidence support the Appellants’
view that the Examiner erred in concluding that the three co-solvent aqueous
liquid vehicle recited in claim 14 would have been obvious to one of
ordinary skill in the art based on the teachings of Johnson? We answer this
question in the negative.
III. DISCUSSION
We adopt the Examiner’s findings in the Answer as our own and add
the additional findings of fact appearing below for emphasis.
Appellants contend that Johnson teaches such a large number of
possible three-solvent combinations that Johnson would not direct one of
ordinary skill in the art to select one of the claimed combinations out of any
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of the other combinations disclosed. Appellants point out that none of
Johnson’s examples or preferences reflects one of the claimed combinations
of co-solvents and that Johnson does not teach a limited or well-delineated
set of combinations from which one of ordinary skill in the art would have
selected one of the claimed combinations. (Br. 14-15; Reply Br. 5). We
disagree.
Johnson teaches an ink having a vehicle comprising three co-solvents,
particularly: at least one diol, at least one glycol ether, and 2-pyrrolidone
(Johnson, col. 2, ll. 44-47). Johnson then specifically includes
ethylhydroxy-propanediol (EHPD) and 1,5-pentanediol among a small list of
suitable diols (Johnson, col. 4, ll. 11-18), and particularly references EHPD
and 1,5-pentanediol as the only two preferred diols (Johnson, col. 4, ll. 19-
20). Johnson also lists tetraethylene glycol among a small list of example
glycol ethers (Johnson, col. 4, ll. 21-30).
It cannot be disputed that the disclosure of Johnson includes at least
one combination that would fall with the scope of claim 14. Merck & Co v.
Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll disclosures of the
prior art, including unpreferred embodiments, must be considered.”); In re
Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (Disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments.); Ex Parte A, 17 USPQ2d 1716,
1718 (BPAI 1990) (“As a general principle it has long been held, even
where the issue was one of obviousness and not clear anticipation or
description, that the comprehensiveness of a reference disclosure does not
derogate from its teaching effect.”).
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Based on Johnson’s disclosure, it is just as reasonable for one
of ordinary skill in the art to select an ink composition that includes
2-pyrrolidone, EHPD or 1,5-pentanediol, and tetraethylene glycol, as well
as any other of the disclosed ink compositions. To do so would be no more
than the predictable use of three co-solvents according to their established
functions as components of an ink vehicle. KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.”).
Since Johnson includes an initial requirement of a diol, a glycol ether,
and 2-pyrrolidone, the Examiner was not randomly picking and choosing
solvents and combining them in a haphazard manner. Rather, to arrive at
the invention, one of ordinary skill in the art need only select one of the
disclosed diol and glycol ether compounds in addition to the use of 2-
pyrrolidone. Moreover, we find that one of ordinary skill in the art is
particularly directed to an ink composition that includes either EHPD or
1,5-pentanediol as the diol, limiting the number of preferred combinations to
a relatively small well-delineated number that varies only by the choice of
glycol ether. Additionally, the choice of tetraethylene glycol for the glycol
ether would have been reasonable, as it is one of the examples expressly
disclosed in Johnson.
Appellants point out that claims 15 and 29 further require that the
co-solvents reduce vapor loss and clogging in delivery tubes (Br. 19).
Appellants contend that Johnson gives no guidance on how to arrive at the
claimed combination of co-solvents because Johnson is not directed to
reducing vapor loss in inks (Br. 19).
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We find it of no moment that Johnson does not teach that the co-
solvent combination solves Appellants’ problem since “any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” KSR, 550 US at 420. In this case, the claimed combination of co-
solvents would have been used by one of ordinary skill in the art to address a
color-to-color and black-to-color bleeding (Johnson, col. 2, ll. 5-9). With
respect to claims 15 and 29, we agree with the Examiner that, without any
reason or evidence to the contrary, it is reasonable to conclude that the
combinations suggested by Johnson that have the same or substantially the
same co-solvents taught by Appellants would inherently have the reduced
vapor loss and reduced clogging properties disclosed in Appellants’
Specification (Ans. 5, 7, 8). When a claimed product appears to be
substantially identical to a product disclosed by the prior art, the burden is
on the Applicants to prove that the product of the prior art does not
necessarily or inherently possess characteristics or properties attributed to
the claimed product. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Appellants also argue that the examples in Appellants’ Specification
show that not every combination of co-solvents will have the reduced vapor
loss and clogging properties in an off-axis printer (Br. 18). We disagree that
Appellants’ Specification is persuasive evidence of nonobviousness.
Appellants’ examples provide insufficient evidence to show that the claimed
co-solvent combination has any improvement in these properties over any
other co-solvent combination taught by Johnson. In particular, Appellants’
Specification includes only one comparative example having unacceptable
clogging (Spec. 11: 5-12:5; formulation 5, Table 5), which includes no
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glycol ether component. Thus, the comparative example does not provide
any evidence as to the properties of the ink compositions disclosed in
Johnson, which all require a glycol ether component.
Thus, the evidence supports the Examiner’s conclusion that the
subject matter of claim 14 which includes the argued ink composition would
have been obvious to one of ordinary skill in the art based on the teachings
of Johnson.
IV. CONCLUSION
On the record before us1 and for the reasons discussed above, we
sustain the rejections maintained by the Examiner.
V. DECISION
The decision of the Examiner is affirmed.
VI. TIME PERIOD FOR RESPONSE
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

cam

1Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2008).
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