Ex Parte Yoshida et alDownload PDFPatent Trial and Appeal BoardNov 3, 201713728420 (P.T.A.B. Nov. 3, 2017) Copy Citation 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. 13/728,420 12/27/2012 Tomohide Yoshida 406677US68 3097 22850 7590 11/07/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER DOTE, JANIS L ART UNIT PAPER NUMBER 1721 NOTIFICATION DATE DELIVERY MODE 11/07/2017 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): patentdocket @ oblon. com oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOMOHIDE YOSHIDA and EDI SHIRAI Appeal 2016-004791 Application 13/728,420 Technology Center 1700 Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-004791 Application 13/728,420 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 19, 21—28, and 30-44. An oral hearing was held on October 18, 2017.1 We have jurisdiction under 35 U.S.C. § 6. Claim 19 illustrates the invention: 19. A method of manufacturing an electrophotographic toner, comprising: (1) mixing at least a polyester resin, an organic solvent, and a neutralizer, and optionally a surfactant, to obtain a mixture; (2) mixing said mixture with at least water and a surfactant, to obtain a resin dispersion; (3) removing at least a portion of said organic solvent from said resin dispersion to obtain a first aqueous dispersion of a polyester resin; (4) adding a surfactant to said first aqueous dispersion obtained in (3), to obtain a second aqueous dispersion of a polyester resin; (5) aggregating said second aqueous dispersion of a polyester resin, to obtain aggregate particles; and (6) fusing said aggregate particles, wherein said surfactant which is added in (2) and (4) is added in an amount of from 70 to 100 weight% based on the total amount of surfactant added in (1), (2), and (4). 1 A written transcript of the oral hearing will be entered into the record when the transcript is made available. 2 Appeal 2016-004791 Application 13/728,420 Appellant2 (App. Br. 5) requests review of the Examiner’s rejection of claims 19, 21—28, and 30-44 under 35U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. OPINION REJECTION UNDER § 112, FIRST PARAGRAPH - Written Description Upon consideration of the evidence on this record and each of Appellant’s contentions, we AFFIRM the rejection under 35 U.S.C. § 112, first paragraph, for the reasons presented by the Examiner. We add the following for emphasis. Our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983): The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language. See also AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). This inquiry ... is a question of fact. . . . [T]he level of detail required [in the Specification as originally filed] to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Id. 2 Appellant is the Applicant, Kao Corporation. Kao Corporation is also identified as the real party in interest. App. Br. 2. 3 Appeal 2016-004791 Application 13/728,420 Whether the written description requirement is complied with is a question of fact, judged from the perspective of one of ordinary skill in the art as of the relevant filing date. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Claims 19 and 35 were amended during prosecution on January 16, 2014 to require the combined amounts of surfactant added in steps 2 and 4 in the method of manufacturing the electrophotographic toner to be a percentage based on the total combined amounts of surfactant added in steps 1, 2, and 4.3 The Examiner finds the language of the claims reciting the use of the total combined amounts of surfactant added in steps 1, 2, and 4 as the basis to determine the amounts of surfactant added in specific steps 2 and/or 4 is not supported by the Specification, as originally filed. Final Act. 8—9; Ans. 2-4. The portion of the Specification discloses that the total amount of surfactant added in step 4 is preferably 50 to 100 weight%, based on the total amount of the surfactant added in steps 1 to 4. Ans. 6; Spec. 20. Based on this disclosure, the Examiner concludes that the Specification, as originally filed, does not provide adequate descriptive support for the disputed claimed language, i.e., that “there is no description of any step 2 surfactant amounts,” nor “the step (4) surfactant amount 3 Appellant focuses the arguments on independent claims 19 and 35. App. Br. 10. We note that the Examiner also specifically rejected claims 41 and 43, respectively dependent from claims 19 and 35, for requiring the same basis for determining the recited amount of surfactant of step 4. Final Act. 8—9. However, Appellant did not present separate arguments addressing these claims. See generally App. Br. Accordingly, we limit our discussion to claims 19 and 35. Claims 21—28, 30-34 and 36-44 stand or fall together with claims 19 and 35. 4 Appeal 2016-004791 Application 13/728,420 percentages based on the total amount of surfactant added in only steps (1), (2), and (4).” Final Act. 8—10; see also, Ans. 5—8. Appellant argues the Specification, as originally filed, recited the use of the combined amounts of surfactant added in steps 1—4 as the basis from which the amounts of surfactant added in steps 2 and/or 4 were determined. App. Br. 9-10; Spec. 2. Appellant additionally argues that Step 3 is irrelevant to the amount of surfactant added because it involves removal of material. App. Br. 10. Appellant further argues that the Examples in Table 2 of the original disclosure further support the disputed claim language. App. Br. 12; Spec. 36—39 (Table 2). We are unpersuaded by these arguments and agree with the Examiner’s determination as to the lack of written descriptive support for the amount of surfactant added in steps 2 and 4 is based on the total amount of surfactant added in steps 1, 2, and 4, rather than steps 1—4. As noted by the Examiner, the language of claims 19 and 35 does not exclude the addition of surfactant prior to or during the removal of the material. Ans. 11—12. Further, the description of step 3 in the Specification does not expressly exclude addition of surfactant at this point. Spec. 19-20. In addition, Appellant admitted in the arguments presented at Oral Hearing that surfactant could be added in Step 3. If so, the total amount of surfactant added in the claimed method would not be limited to steps 1, 2, and 4 as Appellant seems to believe. App. Br. 10. The correct basis for the total amount of surfactant added in the process must include the amounts that are added in steps 1—4, as originally disclosed. Spec. 2, 20. The examples summarized in Table 2 of the Specification do not support the Appellant’s position. Although these examples describe the 5 Appeal 2016-004791 Application 13/728,420 addition of surfactants only in steps 1, 2, and/or 4, the range for the total amounts for the surfactant added in steps 2 and 4 only that can reasonably be derived from these examples based on steps 1, 2, and 4 is 80—100%, not 70- 100%. Given these facts, we find that the original disclosure is insufficient to support the amount of surfactant added in steps 2 and 4 based on the total amount of surfactant in steps 1, 2, and 4, rather than steps 1^4. Therefore, the Specification, as originally filed, does not show that Appellant was in possession of the scope of the subject matter described in claims 19, 21—28, and 30-44. Appellant presents alternative arguments that center on the certified translation of the foreign priority reference to support an Amendment to the Specification submitted on August 4, 2014 (hereinafter referred to as Amendment). App. Br. 13—16; Amendment 2. The Amendment principally modifies the paragraph bridging pages 16—17 of the originally filed Specification to state that the amount of surfactant added in steps 2 and/or 4 is a percentage of the total amount of surfactant added to steps 1^4. The Examiner objected to the amendment under 35 U.S.C. § 132(a) as introducing new matter into the disclosure because the originally filed Specification does not provide antecedent basis for the surfactant amount added in steps 2 and/or 4 based on the total amount of surfactant added in steps 1—4 recited in the amended paragraph. Final Act. 2-4.4 The Examiner required Appellant to cancel the new matter. Id. at 4. 4 Upon further prosecution, the Examiner should reconsider this position as Appellant seems to be merely clarifying the language based on the disclosure on pages 2 and 3 of the originally filed Specification. App. Br. 9. 6 Appeal 2016-004791 Application 13/728,420 We decline to reach these arguments because they are directed to the Examiner’s objection to the addition of new matter and a requirement to delete new matter, which is a petitionable matter subject to supervisory review by petition under 37 CFR § 1.181. Only when the claims and specification contain new matter that is subject to a rejection and objection, is a new matter objection appealable. See Manual of Patent Examining Procedure § 2163.06, Part II. Review of New Matter Objections and/or Rejections (8th ed., rev. 9, Aug. 2012). However, in this case, the issue raised by the noted objection (the amount of surfactant added in steps 2 and/or 4 as a percentage of the total amount of surfactant added to steps 1—4 (Amendment 2)) and the issue addressed by the written description rejection under 35U.S.C. § 112, first paragraph (the amount of surfactant added in steps 2 and 4 as a percentage of the total amount of surfactant added to steps 1, 2, and 4) are not the same. Accordingly, we affirm the Examiner’s rejection of claims 19, 21—28, and 30-44 under 35 U.S.C. § 112, first paragraph for the reasons presented by the Examiner and given above. ORDER The Examiner’s rejection of claims 19, 21—28, and 30-44 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement 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 7 Copy with citationCopy as parenthetical citation