Ex Parte Sarkisian et al

Patent Trial and Appeal Board

Feb 16, 2016

13157962 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/157,962 06/10/2011
22879 7590 02/18/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
George Sarkisian
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.
82748029 8309
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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):
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 GEORGE SARKISIAN, ALI EMAMJOMEH, and
BLAIR A. BUTLER
Appeal2014-006719
Application 13/157 ,962
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1-7, 9-12, and 21-28. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We affirm.
Independent claims 1 and 21 are representative:
1. A pre-treatment composition for inkjet printing, comprising:
a liquid vehicle;
a fixing agent;
a non-ionic defoaming surfactant;
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP (App. Br. 3).
Appeal2014-006719
Application 13/157,962
a surface tension reducing surfactant; and
a latex resin having an acid number of less than 20;
wherein a ratio of the surface tension reducing surfactant to non-ionic
defoaming surfactant is from about 1 : 1 to about 10: 1 by weight.
21. A pre-treatment composition for inkjet printing, comprising:
a liquid vehicle;
a fixing agent;
a non-ionic defoaming surfactant;
a surface tension reducing surfactant; and
a latex resin having an acid number of less than 20;
wherein the pre-treatment composition is shear stable when coated
onto a substrate at a rate of 400 feet per minute (fjJm).
Upon consideration of the evidence of record and each of Appellants'
contentions as set forth in the Briefs, we determine that Appellants have not
demonstrated reversible error in the Examiner's rejections (e.g., Final Act. 3-
22; Ans. 2-24). We sustain all of the § 103 rejections for essentially the
reasons expressed by the Examiner in the Final Office Action and the Answer.
We add the following for emphasis.
Appellants do not dispute the Examiner's determination that the relied
upon compositions ofMozel2 or Furukawa3 render obvious the composition
of the independent claims 1 and 21 (see generally App. Br.; Reply Br.).
Rather, Appellants' arguments focus on their contention that "the present
claims provide unexpected results over the prior art" (App. Br. 15), because
their Specification examples show that only 3 of 7 different compositions
2 Mozel et al., US 2011/0032304 Al, published Feb. 10, 2011 (hereinafter
"Mozel").
3 Furukawa et al. US 2006/0203056 Al, published Sept. 14, 2006
(hereinafter "Furukawa").
2
Appeal2014-006719
Application 13/157,962
encompassed by the claims "provided acceptable shear stability" (App. Br.
16).
The burden of showing unexpected results rests on the person who
asserts them by establishing that the difference between the claimed
invention and the closest prior art was an unexpected difference. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of
unexpected results must be commensurate in scope with the claims. See In
re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003).
First, Appellants do not provide evidence that the results are actually
unexpected to one of ordinary skill in the art, noting that the Specification
does not describe the results as "unexpected." "[A ]ny superior property must
be unexpected to be considered as evidence of non-obviousness." Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (2007). It is not enough for the
Appellants to show that the results in the compared examples differ. The
difference must be sho\~1n to be unexpected. See In re Freeman, 4 7 4 F .2d
1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d at 1080.
Second, Appellants have also not explained how the Specification
showing is compared to the applied prior art of Mozel or Furukawa
(generally, App. Br.; Reply Br.; see also Ans. 6).
Furthermore, Appellants have not shown reversible error in the
Examiner's finding that the inventive example(s) set forth in the
Specification relied upon by Appellants are not commensurate in scope with
the breadth of claim 1 or 21 and, therefore, are not persuasive evidence of
nonobviousness (e.g., Ans. 2-6, 18). The inventive examples are all based
on only one basic inventive example and then different defoaming
surfactants are used to illustrate that some result in the shear stability tested
3
Appeal2014-006719
Application 13/157,962
and others do not (Spec. 16-17, Table 1, 2). No testing of different amounts
of the components or different species within all the generically named
components is provided. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed.
Cir. 2005) ("Even assuming that the results were unexpected, Harris needed
to show results covering the scope of the claimed range. Alternatively Harris
needed to narrow the claims."); In re Greenfield, 571F.2d1185, 1189
(CCP A 1978) ("Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for 'it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support."') (quoting In re Tiffin,
448 F.2d 791, 792 (CCPA 1971)). Appellants' conclusory statement that
one "would be able to extend the probative value of Examples 1 and 2 to the
pre-treatment compositions encompassed by claim 1" (Reply Br. 6) falls
short. Attorney's arguments in a brief cannot take the place of evidence
lacking in the record.1'.feitzner v.1'.findick, 549 F.2d 775, 782 (CCPi\. 1977),
cert. denied, 434 U.S. 854 (1977); In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
Appellants point out that dependent claim 11 and independent claim
21 recite that the composition is "shear stable when coated onto a substrate
at a rate of 400 feet per minute (fpm)." The Examiner's position is that
since the claims encompass the compositions of the applied prior, and the
clause is conditional (i.e., "when"), this property is inherent (e.g., Ans. 15,
16; App. Br. 20). Appellants contend that they have shown some
Specification examples within their claims that are shear stable while others
are not, thus the characteristic is not "merely inherent to every composition"
(App. Br. 20, 22). We do not find this argument persuasive on this record.
4
Appeal2014-006719
Application 13/157,962
Notably, Appellants' have premised all their arguments on the basis
that the Specification examples demonstrate unexpected results. When it
comes to a showing of unexpected results, there is a difference between ( 1) a
claim which broadly recites a combination comprising several elements,
such as Claim 1, and (2) a claim which recites those elements, but further
limits the claim to a combination of those elements having defined
properties (such as separately argued claims 11 and 21 ). In case (1 ), the
applicant labors under a burden to show unexpected results commensurate in
scope with the breadth of the claims. The number of different combinations
to be tested and evaluated will depend on the facts. In case (2), the claim is
necessarily limited to those combinations having the claimed property.
Hence, where the showing establishes that the claimed property would not
have been expected to the ordinary artisan, the showing will be
commensurate in scope with the claim, since the claim is de facto limited to
those combinations of elements that achieve the claimed property.
In the instant case, Appellants have not shown that the claimed
property is unexpected as explained above. Furthermore, even assuming the
property evaluated in the Specification examples was determined to be an
unexpected property, the claims do not recite the property as measured in the
Specification.
Appellants' Specification states:
As used herein, "shear stable" is measured as subjecting
a compound or composition to high shear of 3500 rpm in a
Waring commercial blender, Model 15 34BL97, at 60°C for 3
minutes without noticeable flocculation.
As used herein, "high speed" refers to printing at a rate of
at least 50 feet per minute (fpm).
5
Appeal2014-006719
Application 13/157,962
Spec. 2: 13-17.
Appellants have not directed us to any evidence that the shear stability
characteristic measured as described in their Specification blender test
correlates in any way to the claim limitation of "shear stable when coated
onto a substrate at a rate of 400 feet per minute (fjJm)" as recited in claims
11 and 21 (emphasis added). Indeed, Appellants' Specification merely
states that "based on" the results of the blender tests conducted, some
compositions that fall within the claims "would be expected to provide
durable printed images at high speed printing" (Spec. 17: 18-21; emphasis
added).
To the extent Appellants present arguments directed to any other
claims, a preponderance of the evidence supports the Examiner's position.
For the foregoing reasons and for those reasons set forth in the Answer, we
determine that the preponderance of evidence weighs in favor of
obviousness, giving due \~1eight to 1A~ppellants' arguments and evidence.
Accordingly, the Examiner's rejections under 35 U.S.C. § 103 is affirmed.
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).
AFFIRMED
6