Ex Parte Swei et al

Patent Trial and Appeal Board

Feb 9, 2017

13755078 (P.T.A.B. Feb. 9, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/755,078 01/31/2013 Jason Swei 83140761 9421
22879
HP Tnr
7590 02/13/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
SASTRI, SATYA B
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
02/13/2017 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
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON SWEI, HAIGANG CHEN, and BOR-JIUNN NIU
Appeal 2015-007047
Application 13/755,078
Technology Center 1700
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1, 3—8, 16, and 17. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 is illustrative (emphasis added):
1. A pre-treatment coating, comprising:
a solvent;
a matrix, including:
1 The real party in interest is stated to be Hewlett-Packard Development
Company, LP (App. Br. 3).
Appeal 2015-007047
Application 13/755,078
from 50 wt.% to 80 wt.% of a polyvalent metal
salt, and
from 5 wt.% to 20 wt.% of a latex having a Tg
below 100 °C; and
wax particles at from 5 wt. % to 30 wt. %,
wherein weight percentages of the polyvalent metal salt,
the latex, and the wax particles are based on a total amount of
solids present in the pre-treatment coating after removal of the
solvent, and wherein the pre-treatment coating is formulated
so that at least a portion of the wax particles have a particle size
that is greater than an average thickness of the matrix when
applied to a media substrate.
The following rejections have been maintained by the Examiner2:
a. claims 1, 3, 4, 6—8, 16, and 17 as unpatentable under pre-AIA
35 U.S.C. § 102(e) as being anticipated by Dannhauser et al. (US
2013/0293647 Al, published Nov. 7, 2013) (hereinafter
“Dannhauser”);
b. claims 1,3,4, 6—8, 16, and 17 are unpatentable under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Dannhauser; and
c. claim 5 is unpatentable under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dannhauser in combination with Sarkisian et
al. (US 2011/0303113 Al, published Dec. 15, 2011) (hereinafter
“Sarkisian”).
ANALYSIS
We have reviewed each of Appellants’ arguments for patentability.
However, we determine that a preponderance of the evidence supports the
2 The Examiner withdrew the rejections made under 35 U.S.C. § 112 (pre-
AIA) (Ans. 7).
2
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Application 13/755,078
Examiner’s finding that the claimed subject matter of independent claim 1 is
anticipated within the meaning of § 102 in view of the applied prior art, and
also unpatentable under 35 U.S.C. § 103. Accordingly, we will sustain the
Examiner’s §§ 102 and 103 rejections, as well as the Examiner’s § 103
rejections for essentially those reasons expressed in the Answer, including
the Examiner’s Response to Argument section, and we add the following
primarily for emphasis.
The §102 and §103 Rejections
Appellants’ principal argument is that since Dannhauser does not
disclose the glass transition temperature (Tg) of its latex component, and
since different latexes may have different properties, claim 1 is not
anticipated (App. Br. 21, 22; Reply Br. 6) nor is dependent claim 17 (App.
Br. 23). Appellants also argue (with respect to the alternative rejection of
the claims under § 103) that there is no guidance to carve out from the
disclosure of Dannhauser such a latex with a glass transition temperature as
recited in claim 1 (or dependent claim 17) since no such latex has been
identified by the Examiner (App. Br. 27, 28).
Each argument advanced by Appellants is adequately addressed by
the Examiner (Ans. generally). As pointed out by the Examiner, there is a
reasonable basis to expect that at least some of the latexes described in
Dannhauser would have the recited glass transition temperature (Ans. 8;
explaining that the latexes as claimed in claim 4 and disclosed in the
Specification overlap the latexes described in Dannhauser for the very same
purpose as Appellants’ of a pretreatment composition for inkjet printing).
Likewise the Examiner’s position that at least some of the waxes described
3
Appeal 2015-007047
Application 13/755,078
in Dannhauser would have reasonably been expected to exhibit the melting
point claimed in dependent claim 16 is reasonable (e.g., Ans. 9), contrary to
Appellants’ arguments (App. Br. 22, 23; Reply Br. 7).
Notably, Appellants have not directed our attention to any persuasive
reasoning or credible evidence to establish that the Examiner’s
determination that at least some of the compositions disclosed in
Dannhauser will inherently result in the claimed properties is incorrect (App.
Br. 22—29; Reply Br. generally). It is well settled that when a claimed
product reasonably appears to be substantially the same as a product
disclosed by the prior art, the burden is on the applicant to prove that the
prior art product does not necessarily or inherently possess characteristics
attributed to the claimed product, and that it is of no moment whether the
rejection is based on § 102 or § 103 since the burden is on the applicant is
the same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562
F.2d 1252, 1255 (CCPA 1977) (mere recitation of newly discovered
function or property inherently possessed by prior art does not cause a claim
to distinguish over the prior art; where claimed and prior art products are
identical or are produced by identical processes, the Patent and Trademark
Office can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of the claimed product).3
3 Cf. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (It is well
established where there is reason to conclude that the structure of the prior
art is inherently capable of performing the claimed function, the burden
shifts to the applicant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure.)
4
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Application 13/755,078
Appellants do not sufficiently point out any error in the Examiner’s
obviousness determination of dependent claim 5 (e.g., App. Br. 29, 30; Ans.
11,12).
Appellants’ reliance on the examples in the Specification to evince
unexpected results from the use of a latex having a Tg as recited in
dependent claim 17 (App. Br. 28, 29; Reply Br. 10) are not persuasive of
error. 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
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be
established by factual evidence, and attorney statements are insufficient to
establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470—71
(Fed. Cir. 1997). Further, a showing of unexpected result supported by
factual evidence must be reasonably commensurate in scope with the degree
of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731,
743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
Appellants have not met their burden of showing unexpected results for at
least the reasons set out by the Examiner (Ans. 12).
Moreover, we do not find Appellants’ contention that there are
unexpected results supporting the patentability of claim 17 which recites a
limited Tg for the latex component of the composition to be well-founded.
Critically, Appellants do not direct us to any statement in the Specification
attesting to the unexpected nature of the results from the use of a latex
having this property or to any persuasive evidence that the results obtained
would have been unexpected at the time of the invention. Absent such,
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Application 13/755,078
Appellants cannot meet their burden. See, e.g., In re Geisler, 116 F.3d at
1471 (Fed. Cir. 1997) (“Geisler made no such assertion [that results were
unexpected] in his application. Nor did Geisler submit any such statement
through other evidentiary submissions, such as an affidavit or declaration
under Rule 132. .. . Instead, the only reference to unexpected results was a
statement by Geisler’s counsel. . . that Geisler’s results were
‘surprising.’”)4.
Accordingly, the Examiner’s §§102 and 103 rejections are affirmed
with respect to all of the claims on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
ORDER
AFFIRMED
4 Indeed, Appellants’ Specification focuses on the use of a specific relative
size of the wax particles in a pre-treatment coating (e.g., Spec. 17), and
there is no dispute that Dannhauser discloses the claimed wax particle size
relationship (App. Br., Reply Br. generally, e.g., Ans. 3).
6