Ex Parte Zhou et al

Patent Trial and Appeal Board

May 26, 2016

11698518 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111698,518 01125/2007
22879 7590 05/31/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Zhang-Lin Zhou
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.
82220468 5727
EXAMINER
FINK, BRIEANN R
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
05/3112016 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
Exparte ZHANG-LIN ZHOU and SIVAPACKIA GANAPATHIAPPAN
Appeal2014-006180
Application 11/698,518 1
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 3, 5-15, 17, and 19. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to a method of making latex
particulates, a method of making ink-jet ink compositions, a method of
preparing a coating composition, and a latex ink-jet ink composition
1 This application was subject to a previous appeal 2011-004332 in which
the Board affirmed the Examiner.
Appeal2014-006180
Application 11/698,518
comprising the latex particulates including anti-oxidant moieties
incorporated therein (Spec. 4:24-25; Claims 1, 10, 12, 14). The particulates
are said to improve ink light fastness compared to standard latex
particulates, or can provide other benefits in other applications (Spec. 4:25-
27).
Claim 1 is illustrative:
1. A method of preparing anti-oxidant-modified latex particulates
in a fluid suspension, comprising:
generating an aqueous emulsion with a hydrophilic continuous phase
and a hydrophobic discontinuous phase, wherein the hydrophobic
discontinuous phase includes multiple types of monomers for
polymerization, at least one of the monomers being modified by an anti-
oxidant moiety that is unprotected and includes the following structure:
and
2
Appeal2014-006180
Application 11/698,518
polymerizing the monomers in the hydrophobic discontinuous
phase using a biocatalytic polymerization process.
Appellants appeal the following rejection:
Claims 1, 3, 5-15, 17, and 19 are rejected under 35 U.S.C. § 103(a) as
obvious over Zhou (US 2005/0027065 Al pub. Feb. 3, 2005) in view of
Vincent (US 2004/0116596 Al pub. Jun. 17, 2004), Ciba (US 1,283,103
pub. Jul. 26, 1972) or JP '683 (JP 01097683 A as translated in the machine
translation of JP2613770 B22 of record), Kaplan (WO 2004/050795 A2 pub.
Jun. 17, 2004) and Kalra (Bhanu Kalra and R. A. Gross, "HRP-mediated
polymerizations of acrylamide and sodium acrylate", Green Chemistry,
2002, 4, 174-178).
Appellants' arguments focus on the subject matter common to claims
1, 10, 12, and 14 (App. Br. 13-16, 12, 19). We select claim 1 as
representative. Appellants argue separately the subject matter of claim 11
(App. Br. 17). Accordingly, claims 3, 5-10, 12-15, 17, and 19 will stand or
fall with our analysis of the rejection of claim 1.
FINDINGS OF FACT AND ANALYSES
The Examiner's findings and conclusions regarding Zhou, Vincent,
Ciba, JP '683, Kaplan and Kalra are located on pages 2-7 of the Answer.
Appellants do not specifically challenge the Examiner's combination of
Kalra's and Kaplan's teachings with Zhou with regard to claim 1 (App. Br.
2 JP 2613770B2 is listed as part of the patent family of JP 01097683. See,
CAPLUS document of record.
3
Appeal2014-006180
Application 11/698,518
13-16). Accordingly, we focus on the teachings of Zhou, Vincent, Ciba and
JP '683 as argued by Appellants.
Appellants argue that Zhou and Vincent fail to teach the particular
monomer structures recited in claim 1 or the relationship of the present
monomers to improving light-fastness (App. Br. 15). Appellants contend
that Vincent's disclosures regarding NH, SH and OH functionalities do not
equate to a teaching that any compound having these functionalities acts as a
stabilizing agent (App. Br. 15). Appellants contend that in light of the
Examiner's over-generalization of Vincent's teachings, there would have
been no motivation to combine the particulates of Vincent and Zhou with the
compounds of Ciba and JP '683 (Reply Br. 6). Appellants contend that
Ciba's anti-oxidant monomer is not a homolog of a claimed monomer
because the methylene (CH2) group adjacent R2 in the formula shown below
and reproduced from page 3 of the Answer is not part of a monomer recited
in claim 1 :
CH2 =-" C(CH3)-COO(CH0i0COCH~-Ri
n~w'.bl~11l ;· . '
............ '{
-·<(1'\j..-Otl
'i..~ ~"'
{lm"~t )-:i:ikjI
(Reply Br. 7; Ans. 3).
Appellants further argue that Ciba does not teach a homolog of a monomer
recited in claim 1 because Ciba's phenol ring includes two lower-alkyl
groups which are not required by the monomers recited in claim 1 (Reply
Br. 7). Appellants concede that upon proper selections the developer
formula recited in JP '683 includes monomers falling within the monomers
4
Appeal2014-006180
Application 11/698,518
recited in claim 1 (Reply Br. 7-8). Appellants contend, however, that the
generic disclosure of JP '683 that includes many compounds would not have
rendered obvious the selection of the number "n" of -OH groups or the
placement of the OH group on the benzene ring, the specific lower alkyl
group from R2 and the methyl group for RI (Reply Br. 8).
Contrary to Appellants' arguments, the Examiner finds that Zhou
teaches using a -NH, -OH or -SH functionalities on a monomer, but is
silent as to the desirable effects of using such monomers (Ans. 2-3). The
Examiner finds that Vincent teaches that monomers having -NH, -OH, -SH,
or -CH functionalities provide a stabilizing effect on the resulting latex
particles so as to improve image durability such as light-fastness (Ans. 10).
Indeed, Vincent discloses that especially phenols, thiophenols and hindered
amines are each isocyanate blocking agents and potent stabilizing agents
(Vincent i-f 42). Vincent teaches that the para substituted phenols provide
better stabilization and color-fastness because the para position provides a
greater electron withdrawing capability (Vincent, i-f 42). In other words,
Vincent teaches the -NH, -SH, -OH or -CH monomers provide a stabilizing
effect and enhance light-fastness of a resulting ink-jet ink composition.
Such a teaching would have suggested the following: 1) Zhou's monomers
themselves possess such a desirable property as they contain the same or
similar functional groups and 2) the ordinarily skilled artisan would have
used Vincent's monomers to provide better light-fastness to the ink-jet ink.
Ciba was cited by the Examiner to teach that it is known to use anti-
oxidants for in polymers that are homo logs of the monomers recited in claim
1 (Ans. 3-4). The Examiner finds that JP '683 teaches a formula that when
the various parameters and variables are selected to have desired values
5
Appeal2014-006180
Application 11/698,518
yields a developer compound that imparts improved storage stability and
moisture resistance to the resulting printed image (Ans. 4). The Examiner
concludes that it would have been obvious to use Ciba's or JP '683's anti-
oxidant as the monomer in Zhou because such monomers are disclosed as
providing better water durability and improved color fastness (Ans. 3-4).
Although Appellants dispute whether Ciba's anti-oxidant is a
homo log of the monomer recited in claim 1, there is no dispute that JP '683
teaches a monomer falling within the list of monomers recited in claim 1
(Reply Br. 7-8). We are unpersuaded by Appellants' argument that JP
'683 's generic formula fails to direct one of ordinary skill to a monomer
recited in claim 1. As noted by Appellants, the ordinarily skilled artisan
needs only to select values for the various parameters within the ranges
disclosed by JP '683, which include the values recited in the claim to arrive
at one of the monomers (i.e., the fourth monomer on the right-hand side in
Appellants' claim 1 ). Even if JP '683 's formula yields a large number of
possible monomers, that mere fact that there are a large number of effective
monomers with anti-oxidant moieties does not render the use of any one less
obvious. Merck & Co., Inc. v. Biocraft Laboratories, Inc., 87 4 F .2d 804,
807 (Fed. Cir. 1989).
Though the Examiner relies on the formula indicated on page 3 of this
decision and disclosed by Ciba on page 6, we note that Ciba discloses on
page 4 a general monomer structure CH2=C(R1)-COX-A-R. Ciba discloses
that X can be oxygen (0), Ri can be methyl (CH3), and Risa phenol moiety
with the-OH group in the para position, one lower alkyl group (e.g., CH3)
in the meta position and a second lower alkyl group (e.g., CH3) in any ring
position (Ciba 4-5). Ciba discloses that A can be ---(CmH2mX)aCO-CnH2n-
6
Appeal2014-006180
Application 11/698,518
where n is 0 to 6, m is 1 to 6 and o is 1 to 3. Therefore, if m is 1, n is 0, o is
1, and Xis oxygen then A in the formula is CH20CO. The resulting
monomer structure then yields CH2=CCH3-CQO-CH20CO-phenol moiety
with a meta-position methyl group and a second methyl group. In other
words, the only difference between Ciba's anti-oxidant monomer and the
monomer of claim 1 is two additional methyl groups on the phenol ring
structure. The Examiner finds that Ciba's monomer with the two additional
methyl groups on the phenol ring would have been expected to have similar
anti-oxidant properties of a monomer where the methyl groups were instead
hydrogen (Final Act. 4; Ans. 4). Although Appellants contend that Ciba's
anti-oxidant monomer is not a homolog, Appellants do not dispute
specifically the Examiner's finding that Ciba's anti-oxidant having two
methyl groups on the phenol ring has similar antioxidant properties to the
monomers recited in claim 1.
Accordingly, in light of the combined teachings of Zhou, Vincent,
Ciba, JP '683, Kalra and Kaplan the preponderance of the evidence favors
the Examiner's conclusion that it would have been obvious to combine JP
'683 's or Ciba's anti-oxidant stabilizer as anti-oxidant stabilizer in Zhou ink-
jet ink composition in order to enhance the water resistance and light-
fastness of the composition.
Claim 11
Appellants rely on the same unpersuasive arguments made regarding
claim 1. We refer to our response to those arguments above.
7
Appeal2014-006180
Application 11/698,518
Appellants argue that the Examiner has not shown that Kaplan and
Kalra teach using the hydrophilic continuous phase of such a process to
prepare ink-jet ink (App. Br. 17).
Appellants' argument fails to address and show reversible error with
the Examiner's specific rejection of claim 11 which is based upon the Zhou
teaching to form a colloid suspension of latex particles which is then
admixed with a liquid vehicle and a colorant to form an ink-jettable ink
composition (Final Act. 8; Ans. 8).
On this record, we affirm the Examiner's§ 103 rejection of claim 1, 3,
5-15, 17, and 19 over Zhou in view of Vincent, Ciba, JP '683, Kalra and
Kaplan.
DECISION
The Examiner's decision 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)(l).
ORDER
AFFIRMED
8