Ex Parte Wang et al

Board of Patent Appeals and Interferences

Apr 10, 2009

10665960 (B.P.A.I. Apr. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte XIAORU WANG, DAVID ERDTMANN,
YONGCAI WANG, KAREN J. KLINGMAN,
and DAVID E. DECKER
____________

Appeal 2009-2037
Application 10/665,960
Technology Center 1700
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Decided:1 April 10, 2009
____________

Before EDWARD C. KIMLIN, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 3-7, and 9-12.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-2037
Application 10/665,960

We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. Composite pigment polymer particles having a pigment phase
and a polymer phase, said polymer phase of said particles being formed in
the presence of said pigment in situ using an emulsion polymerization
process wherein a first portion of an addition polymerization initiator
consisting essentially of an initiator dissolved in a solvent is added to an
aqueous pigment mixture before then adding a monomer mixture for
forming the polymer phase to the pigment mixture to form a
pigment/monomer mixture in a continuous process, the dispersion of
composite pigment polymer particles being stable as defined by said
particles not flocculating for up to 20 minutes when a dispersion containing
said particles is added to acetone at a 1% by weight concentration; wherein
the pigment mixture consists essentially of a pigment, a dispersant or
surfactant and water, and wherein essentially no monomer is present in the
aqueous pigment mixture.

The Examiner cites the following prior art (Ans. 2):
Lin 5,281,261 Jan. 25, 1994
Appellants’ claimed invention is directed to composite pigment
polymer particles wherein the polymer is bonded to the surface of the
pigment particles. A polymerization initiator is added to an aqueous
pigment mixture before adding a monomer which polymerizes on the
surface of the pigment. The pigment mixture consists essentially of a
pigment, a dispersant or surfactant, and water and contains essentially no
monomer.
Appealed claims 1, 3-7, and 9 stand rejected under 35 U.S.C. § 112,
first paragraph, written description requirement. Claims 1, 3-7, and 9-12
stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite.
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Appeal 2009-2037
Application 10/665,960

Claims 10 and 12 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Lin.
We have thoroughly reviewed each of Appellants’ arguments for
patentability, as well as the Declaration evidence relied upon in support
thereof. However, we find that the Examiner’s rejections are well founded
and in accord with current patent jurisprudence. Accordingly, we will
sustain the Examiner’s rejections for the reasons set forth in the Answer, and
we add the following primarily for emphasis.
We agree with the Examiner that the claim 1 recitation “wherein
essentially no monomer is present in the aqueous pigment mixture” does not
have written descriptive support in the original Specification and, also, is
indefinite within the meaning of § 112, second paragraph. While it is true,
as argued by Appellants, that many patented claims recite the term
“essentially”, whether it is proper must be considered on a case-by-case
basis. In the present case, a significant aspect of the claimed invention is
that there is no monomer in the pigment mixture wherein the initiator is
absorbed on the pigment surface to promote polymerization when the
monomer is subsequently added. Since the original Specification and claims
disclose that no monomer is present in the pigment mixture comprising
initiator, we agree with the Examiner that Appellants’ later amendment
inserting “essentially no monomer is present” in the claims constitutes the
introduction of a new concept that is not conveyed to one of ordinary skill in
the art by the original Specification. This newly added limitation is
particularly significant since Lin, the applied prior art, includes a portion of
monomer in the pigment mixture as a dispersant, and the skilled artisan is
not apprised of what level of monomer concentration is embraced by the
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Appeal 2009-2037
Application 10/665,960

claim language “essentially no monomer”, such that its concentration is
patentably distinct from the low levels taught by the prior art. Manifestly,
Appellants’ amendment changing “no monomer” to “essentially no
monomer” contemplates the inclusion of some monomer in the pigment
mixture. A reasonable interpretation of the metes and bounds of the range of
monomer concentration corresponding to the recited “essentially no
monomer” has not been provided by Appellants.
We also concur with the Examiner that the claim 10 recitation
“sequential addition of initiator to the pigment mixture essentially prior to
adding monomer mixture” is indefinite inasmuch as it is not clear what time
frame corresponds to “essentially prior to adding monomer mixture”. We
agree with the Examiner that the addition of initiator to the pigment mixture
is either prior to, subsequent to, or simultaneous with the addition of the
monomer mixture. Appellants have not provided the requisite clarification.
We now turn to the § 102 rejection of claims 10 and 12 over Lin. The
claims define composite pigment polymer particles in a product-by-process
format and, therefore, certain principles of patent jurisprudence apply. For
instance, when a prior art discloses a product which reasonably appears to be
either identical with or only slightly different than a product claimed in a
product-by-process claim, a rejection based alternatively on either § 102 or
§ 103 is eminently fair and acceptable. As a practical matter, the USPTO is
not equipped to manufacture products by the myriad of processes put before
it and then obtain prior art products and make physical comparisons
therewith. In re Brown, 459 F.2d 531, 535 (CCPA 1972). If the product in
a product-by-process claim is the same as or obvious from a product of the
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Appeal 2009-2037
Application 10/665,960

prior art, the claim is unpatentable even though the prior product was made
by a different process. In re Thorpe, 777 F.2d 695, 697 (Fed Cir. 1985).
In the present case, we agree with the Examiner that the composite
pigment polymer particles disclosed by Lin reasonably appear to be
substantially the same as the composite pigment polymer particles within the
scope of claims 10 and 12. Like the claimed invention, Lin expressly
describes absorbing a polymerization initiator on the surface of pigment
particles for chemically grafting a polymerized monomer on the surface of
the pigment. Indeed, as pointed out by the Examiner, both Appellants and
Lin polymerize a monomer of a sodium styrene sulfonic acid salt (see Lin,
col. 9, ll. 15-25). Also, EXAMPLE VI of Lin exemplifies the sequential
addition of monomer to the pigment dispersion comprising initiator. Hence,
we agree with the Examiner that it is incumbent upon Appellants to
demonstrate that there is a patentable distinction between composite pigment
polymer particles within the scope of claims 10 and 12 and the composite
pigment polymer particles exemplified and fairly described by Lin.
The Reczek Declaration falls far short of establishing a patentable
distinction between the claimed composite pigment polymer particles and
those described by Lin. For instance, the Declaration is hardly
commensurate in scope with the degree of protection sought by claims 10
and 12. In re Grasselli, 713 F.2d 731, 743 (CCPA 1983). The Declaration
fails to set forth any meaningful comparative data representative of the
claimed invention but simply states that “[t]his preparation is different from
the one used to prepare the inventive composite particle composition in that
part of the monomer was contained in the colorant mixture along with the
initiator prior to adding a second monomer mixture” (Decl. 2, para. 4).
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Appeal 2009-2037
Application 10/665,960

Appealed claims 10 and 12 are of considerable breadth with respect to the
particular polymer, initiator and pigment, and Appellants have proffered no
showing that composite pigment polymer particles within the broad scope of
the claims are substantially different than the composite pigment polymer
particles of Lin.
Also, Appellants have not refuted the Examiner’s criticism that the
Declaration does not provide a meaningful comparison with the closest prior
art, namely, Lin. In re Johnson, 747 F.2d 1456, 1461 (Fed. Cir. 1984).
Specifically, the Examiner has set forth that “the declaration did not prepare
composite colorant particles comprising monomer in the aqueous pigment
mixture [but] the declaration adds monomer (and initiator) to an already
prepared pigment dispersion” (Ans. 17, first para.).
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.

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Appeal 2009-2037
Application 10/665,960

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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PAUL A. LEIPOLD
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201

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