Ex Parte Sarkisian et alDownload PDFPatent Trial and Appeal BoardFeb 16, 201613157962 (P.T.A.B. Feb. 16, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation