2020000087 (P.T.A.B. Oct. 29, 2020)

Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals BoardOct 29, 2020

2020000087 (P.T.A.B. Oct. 29, 2020)

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. 15/569,540 10/26/2017 Bor-Jiunn Niu 84677837 5368 22879 7590 10/29/2020 HP Inc. 3390 E. Harmony Road Mail Stop 35 Fort Collins, CO 80528-9544 EXAMINER REDDY, SATHAVARAM I ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 10/29/2020 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 jessica.pazdan@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BOR-JIUNN NIU and TAO CHEN Appeal 2020-000087 Application 15/569,540 Technology Center 1700 Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and MERRELL C. CASHION, JR., Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4 and 6–16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hewlett- Packard Development Company, LP (Appeal Br. 3). Appeal 2020-000087 Application 15/569,540 2 CLAIMED SUBJECT MATTER The claims are directed to a primer composition and a media substrate coated with the primer composition. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A primer composition, comprising: a polyvinyl alcohol present in an amount of at least 8 wt% of all dry components of the primer composition; and a cationic salt present in an amount from 25 wt⁰/₀ to 45 wt⁰/₀ of all dry components of the primer composition. REFERENCES The references relied upon by the Examiner are: Name Reference Date Niu ‘175 WO 2014/120175 A1 Aug. 7, 2014 Niu ‘877 US 2015/0352877 A1 Dec. 10, 2015 Niu ‘222 US 2018/0087222 A1 Mar. 29, 2018 REJECTIONS The claims stand rejected as follows: 1) claims 1–4 and 6–16 under 35 U.S.C. § 103 over Niu ‘175; 2) claims 1–4, 6, and 8–16 provisionally on the ground of nonstatutory obviousness-type double patenting over claims 1–15 of Niu ‘222; and 3) claims 1–4, 6–9, 11–13, 15, and 16 provisionally on the ground of nonstatutory obviousness-type double patenting over claims 1–15 of Niu ‘877.2 OPINION Rejection under 35 U.S.C. § 103 Niu ‘175 discloses a primer composition comprising a binder which can be polyvinyl alcohol in an amount above 10 wt% of all dry components 2 Niu ‘877 issued as US Patent No. 9,421,809 B2 on Aug. 23, 2016. Appeal 2020-000087 Application 15/569,540 3 of the primer composition (¶¶ 25–27), and a fixer which can be a cationic salt in an amount of 5–50 wt% of all dry components of the primer composition (¶¶ 22–24). The Appellant argues (Appeal Br. 23): In order to make a composition that reads on these claims [1, 11, and 15] based on the teachings of Niu, a person of ordinary skill in the art would need to select polyvinyl alcohol from the long list of binders in Niu, and select a cationic salt from the fixers disclosed by Niu, and also use these ingredients in amounts that are within the narrower ranges required by claims 1, 11, and 15. The fact that Niu ‘175 discloses many binders and fixers would not have made any of them less obvious, particularly where, as here, the binder and fixer recited in the Appellant’s claim are used for the identical purpose taught by Niu ‘175. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 841 (CCPA 1964). The Appellant argues that “[b]ased on the disclosure of Niu [‘175], a person of ordinary skill in the art would expect that using a greater amount of was [sic, wax] would increase the durability of the printed image” (Appeal Br. 23). Niu ‘175 discloses that “it has been discovered that the use of wax particles in pre-treatment coatings can provide excellent durability” (¶ 7). Niu ‘175 does not disclose that more wax provides more durability. Niu ‘175 discloses (¶ 12): The wax contains wax particles that extend beyond the underlying matrix as described herein. It has been discovered that such a structure allows the wax particles to protect the underlying matrix when the pre-treatment coating contacts other substrates, objects, etc. The resulting effect is excellent Appeal 2020-000087 Application 15/569,540 4 durability of the pre-treatment 25 coating and printed images that may be printed thereon. The Appellant argues that one of ordinary skill in the art would not have expected the Appellant’s examples 5–8 to show better smearfastness than comparative examples 9 and 10 “because Niu [‘175] does not disclose anything about the particular amounts of polyvinyl alcohol and cationic salt or how the amounts of these ingredients affect smearfastness” (Appeal Br. 23). Pointing out that lack of disclosure by Niu ‘175 does not provide evidence of unexpected results. Such evidence requires a side-by-side comparison, commensurate in scope with the claims, of the claimed invention with the closest prior art, and evidence that the results would have been unexpected by one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The Appellant has not provided that evidence. Thus, the Appellant has not indicated reversible error in the Examiner’s rejection under 35 U.S.C. § 103 over Niu ‘175. Provisional obviousness-type double patenting rejections The Examiner rejects claims 1–4, 6, and 8–16 over claims 1–15 of Niu ‘222 based on the Examiner’s view that “[c]ombining features of dependent claims with independent claims is the same as combining embodiments for an invention to obtain a specific embodiment and this is Appeal 2020-000087 Application 15/569,540 5 known from one of ordinary skill in the art” (Ans. 19). The Examiner concludes that “[i]t would have been obvious to combine claims 1, 16 and 17 of the copending application [Niu ‘222, which has only claims 1–15] in order to obtain claims 1, 4 and 8 of the present application” (Final Rej. 3– 4). The Examiner rejects claims 1–4, 6–9, 11–13, 15, and 16 over claims 1–15 of Niu ‘877 based on the Examiner’s view that “[i]t would have been obvious to combine [Niu ‘877’s] claims 1, 4 and 5 along with the obviousness rationale in order to obtain claims 1, 4 and 8 of the present application” (Final Rej. 8). The Examiner’s obviousness-type double patenting rejections based on combining claims are improper. As stated in In re Aldrich, 398 F.2d 855, 859 (CCPA 1968): [D]ouble patenting rejection cannot be based on section 103, In re Ornitz, 347 F.2d 586, 52 CCPA 1467 (1965), or on the disclosures of the patents whose claims are relied on to demonstrate double patenting or on the "disclosures” of their claims. Obviousness-type double patenting rejections, such as evidently was being attempted here, are based on the premise that an applicant is claiming no more than an obvious variation which would be obvious to anyone of ordinary skill in the art — of an invention on which a patent has already been granted, absent a terminal disclaimer, of course. To that end, patent claims are looked to only to see what has been patented, the subject matter which has been protected, not for something one may find to be disclosed by reading them. Accordingly, we reverse the provisional obviousness-type double patenting rejections. Appeal 2020-000087 Application 15/569,540 6 CONCLUSION The Examiner’s decision to reject the claims is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–16 103 Niu ‘175 1–4, 6–16 1–4, 6, 8– 16 Nonstatutory Obviousness- type double patenting Niu ‘222 1–4, 6, 8– 16 1–4, 6–9, 11–13, 15, 16 Nonstatutory Obviousness- type double patenting Niu ‘877 1–4, 6–9, 11–13, 15, 16 Overall Outcome 1–4, 6–16 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED