Ex Parte Srinivasan et al

Patent Trial and Appeal Board

Aug 14, 2018

14142373 (P.T.A.B. Aug. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/142,373 12/27/2013 Kasturi Rangan Srinivasan
21972 7590 08/16/2018
LEXMARK INTERNATIONAL, INC.
INTELLECTUAL PROPERTY LAW DEPARTMENT
740 WEST NEW CIRCLE ROAD
BLDG. 004-1
LEXINGTON, KY 40550-0999
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.
P517-US1 5674
EXAMINER
CHEA, THORL
ART UNIT PAPER NUMBER
1737
NOTIFICATION DATE DELIVERY MODE
08/16/2018 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):
iplaw@lexmark.com
nrkahle@lexmark.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KASTURI RANGAN SRINIVASAN,
JAMES ALAN HARTMAN, RICK OWEN JONES,
COURTNEY HARRISON SOALE,
DEVON JEAN VACCARO STRAIN, and
LIGIA AURA BEJAT
Appeal2017-008218
Application 14/142,373
Technology Center 1700
Before JEFFREY T. SMITH, JENNIFER R. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 In our Opinion, we refer to the Specification filed December 27, 2013
("Spec."); the Final Office Action mailed December 31, 2015 ("Final Act.");
the Appeal Br. filed October 28, 2016 ("Br."); and the Examiner's Answer
mailed December 28, 2016 ("Ans."). Appellant did not file a reply brief.
2 Appellant is the applicant, Lexmark International, Inc. Br. 2.
Appeal2017-008218
Application 14/142,373
The claims are directed to toner compositions including silica blends.
Claim 1, reproduced below from the Claims Appendix of the Appeal Brief,
is illustrative of the claimed subject matter:
1. A toner composition, comprising:
toner particles;
medium sized silica particles combined with said toner
particles having a primary particle size in the range of 30nm to
60nm and present in the range of0.1 to 2.0 % wt of the toner
composition; and
large sized colloidal silica particles combined with said
toner particles having a primary particle size in the range of
90nm [to] 120nm and having a conductivity less than 20µS/cm
and present in the range of O .1 to 2 % by weight of the toner
composition.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Gruber et al.
("Gruber")
Vanbesien et al.
("V anbesien")
us 4,837,101
US 2006/0286476 Al
Bejat et al. ("Bejat") US 2010/0040968 Al
REJECTIONS
June 6, 1989
Dec. 21, 2006
Feb. 18,2010
The Examiner maintains and Appellant seeks review of the rejection
of claims 1-13 3 under 35 U.S.C. § I03(a) over the combination of Bejat,
Vanbesien, and Gruber. Final Act. 2--4; Br. 4--8.
3 Appellant argues "claims 1-8 should be adjudicated patentable in view of
the pending rejection," but this is apparently a typographical error, given that
Appellant's arguments apply to claims 9-13 as well. See Br. 4.
2
Appeal2017-008218
Application 14/142,373
OPINION
Appellant argues the claims as a group. Br. 4. Appellant erroneously
indicates that claim 1 is the only independent claim, and does not argue
separately for patentability of independent claim 13. Id. at 2. However,
Appellant's arguments regarding claim 1 apply with equal force to claim 13.
We select independent claim 1 as representative of the group. 37 C.F.R.
§ 4I.37(c)(l(iv).
The Examiner finds that Bejat teaches almost all limitations of
claim 1, including silica particles in a size range of 60 nm to 150 nm, which
encompasses the size range of the large sized colloidal silica particles in the
range of 90nm to 120nm. Final Act. 3. The Examiner relies on Vanbesien
and Gruber to teach colloidal silica particles of the claimed size range. Id. at
3--4. The Examiner finds that the claimed conductivity of 20 µSiem of the
colloidal particles is inherent in the colloidal particles taught in either
Vanbesien or Gruber. Id. at 4.
Appellant provides a declaration in rebuttal to the Examiner's finding
of inherency. See Oct. 14, 2015 Declaration of Kasturi Srinivasan
(hereinafter "Srinivasan Deel."). The declaration reports the results of an
experiment measuring conductivity of four different types of colloidal
silicas, all sized approximately 100 nm. Srinivasan Deel. 1-2. The
declarant reports the four samples range in conductivity from 4.05 to
526 µSiem. Id. at 2. Appellant maintains that the test results show that a
conductivity of 20 µSiem or less is not an inherent characteristic of colloidal
silica sized 90 nm to 120 nm. Br. 8.
We agree with Appellant that the Examiner's rejection of claim 1 is
not well founded. An inherent characteristic must be inevitable, not merely
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Appeal2017-008218
Application 14/142,373
a possibility or probability. See In re Oelrich, 666 F .2d 578, 581 (CCP A
1981) ("Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient."). Here, the Examiner identifies large
colloidal silica particles disclosed in the prior art as possessing the claimed
conductivity characteristic because the prior art discloses colloid silica in
similar size to that claimed. Ans. 5. The Srinivasan Declaration adequately
counters the Examiner's finding. See Srinivasan Deel. 2. Thus, the
Examiner fails to establish that the limitation is necessarily present or the
natural result of the combination of elements explicitly disclosed by the prior
art. See Oelrich, 666 F.2d at 581.
The Examiner finds the Srinivasan Declaration lacking because it
does not report conductivity test results of Bejat or Vanbesien's colloidal
silica particles. Ans. 7. Rebutting a finding of inherency does not require
such testing. The test results in the Declaration shows silica with a particle
size of 100 nm has conductivity varying from 4.05 to 525 ~tS/cm to establish
that the conductivity of large colloid silica sized 90 nm to 120 nm is not
inherently 20 ~tS/cm or less as required by claim 1. In this case, the
evidence presented is sufficient to establish that silica with pmiicle size of
100 nm does not necessarily have the conductivity required by the claimed
invention. Thus, the Examiner's reliance on particle size alone is
insufficient to establish that the silica of Bejat or Vanbesien inherently has
the conductivity required by the claimed invention. The Examiner has not
identified other properties, in addition to particle size, in Bejat or
Vanbesien's colloidal silica particles that establishes the silica necessarily
has the claimed conductivity.
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Appeal2017-008218
Application 14/142,373
We do not sustain the Examiner's rejection of claim 1 over the
combination of Bejat, Vanbesien, and Gruber. For the reasons above, we
also do not sustain the rejection of claims 2-13.
DECISION
The rejection of claims 1-13 is reversed.
REVERSED
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