HP Indigo B.V.

Patent Trials and Appeals Board

Mar 22, 2021

2020003065 (P.T.A.B. Mar. 22, 2021)

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.
16/064,858 06/21/2018 Olga KAGAN 84960546 5877
22879 7590 03/22/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
RODEE, CHRISTOPHER D
ART UNIT PAPER NUMBER
1796
NOTIFICATION DATE DELIVERY MODE
03/22/2021 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 OLGA KAGAN,
YARON GRINWALD, RADA NUCHIMOV,
SHIRAN ZABAR, EYAL NEGREANU,
and GUY NESHER
____________

Appeal 2020-003065
Application 16/064,858
Technology Center 1700
____________
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13 and 16–18 of Application
16/064,858. Final Act. (July 23, 2019). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Hewlett-Packard Development Co., LP as the real party in interest.
Appeal Br. 3.
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I. BACKGROUND
The ’858 Application describes methods for preparing a conductive
liquid electrophotographic ink composition. Spec. 6. According to the
Specification, a great deal of effort has gone into attempting to create a
“silver-look” electrostatic printing ink. Id. This research has resulted in some
inks produced by grinding metallic pigment particles with a resin. Id. at 6–7.
These inks are said to suffer from a variety of problems, including an
insufficient and inconsistent metallic appearance. Id. at 7.
The Specification describes a method for making an electrostatic
printing ink that comprises dissolving a polymer resin in a carrier fluid,
preferably by heating, adding metallic pigment flakes to the carrier fluid-
resin mixture, cooling the mixture to at least partially coat the pigment
flakes, reheating the suspension of partially-coated pigment flakes and
carrier fluid, and then cooling the mixture again at a controlled rate to create
polymer resin coated metallic pigment flakes suspended in carrier fluid. Id.
at 26–31. According to the Specification, “[t]he reheating of the solution . . .
followed by a second precipitation is thought to improve the final
encapsulation of the conductive metallic pigment particle by the polymer
resin.” Id. at 29.
Claim 1 is representative of the ’858 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. A method for producing a conductive liquid
electrophotographic ink composition, the method comprising:
heating a polymer resin in a carrier fluid to dissolve the
polymer resin;
adding conductive metallic pigment flakes to be coated to the
carrier fluid;
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cooling the carrier fluid to effect precipitation of the polymer
resin from the carrier fluid such that a coating of the resin is at
least partially formed on the conductive metallic pigment flakes
to form a suspension of at least partially coated conductive
metallic pigment flakes in the carrier fluid;
reheating the suspension of at least partially coated conductive
metallic pigment flakes in the carrier fluid; and
cooling the carrier fluid at a controlled rate of less than 7 °C per
hour to effect precipitation of the polymer resin from the carrier
fluid such that a coating of the resin is formed on the
conductive metallic pigment flakes, thereby producing the
conductive liquid electrophotographic ink composition.
Appeal Br. 22.
II. REJECTION
On appeal, the Examiner maintains the following rejection: Claims 1–
13 and 16–18 are rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Mor,2 Mann,3 and Ganapathiappan.4 Final Act. 2.
III. DISCUSSION
A. Rejection of claims 1–13, 17, and 18
Appellant argues for reversal of the rejection of these claims as a
group. See Appeal Br. 13–18. We select claim 1, the only independent claim
on appeal, as representative of this group of claims and limit our discussion
accordingly. 37 C.F.R. § 41.37(c)(1)(iv) (2017).

2 US 2015/0175826 A1, published June 25, 2015.
3 WO 2016/015757 A1, published February 4, 2016.
4 US 2013/0288176 A1, published October 31, 2013.
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Appellant argues that the rejection of claim 1 should be reversed
because a person having ordinary skill in the art would not have had a
sufficient reason to combine the references in the way suggested by the
Examiner. Appeal Br. 15–18.
In rejecting claim 1, the Examiner found that Mor describes the steps
of dissolving a resin in a liquid carrier by heating the mixture, adding
metallic pigment to the heated solution, and cooling to precipitate the resin
onto the metallic pigment particles. Final Act. 2–3. The Examiner also found
that Mor does not describe a process of repeated heating and cooling of the
liquid mixture having dissolved resin and metallic pigment. Id. at 3. The
Examiner, however, found that Mann describes a process of repeating cycles
of heating and cooling of a resin-carrier fluid-pigment mixture to effect
precipitation of the polymer resin onto the pigment particles. Id.
The Examiner further found that a person of ordinary skill in the art
would have combined Mor, Mann, and Ganapathiappan to arrive at the
process recited in claim 1 because (a) Mann teaches that repeated heating
and cooling of the resin-carrier fluid-pigment system results in more
complete resin coverage of the plate-shaped metallic pigment particles and
(b) Ganapathiappan teaches that it is important to have a complete or nearly
complete resin coating on metallic pigment particles. Id. at 4–5.
First, Appellant argues that a person having ordinary skill in the art
would not have been motivated to modify Mor’s process because Mor
teaches an alternative solution to the problem of incomplete resin coverage.
Appeal Br. 15–16. Appellant agrees that Mor describes a process of
precipitating the polymer resin onto the pigment particles by adjusting the
temperature of the carrier liquid-resin solution. Id. at 16 (citing Mor ¶ 27).
Appellant argues that, rather than focusing on this method of causing
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precipitation, Mor describes an alternative method of adjusting the polymer
resin solubility by replacing the carrier fluid with an alternative fluid in
which the polymer resin is not soluble. Id. at 16–17.
According to Appellant, a person having ordinary skill in the art
would have understood that Mor’s method results in metallic flake pigment
particles that are completely coated with resin. Id. at 17. Thus, according to
Appellant, a person of ordinary skill in the art would not have had any
reason to modify Mor’s other methods for precipitating resin onto the
pigment particles. Id. Appellant further asserts that
[t]he fact that Mann teaches that encapsulation of pigment
particles can be improved by reheating and then repeating the
cooling step would only suggest to a person of ordinary skill in
the art that the method of precipitating resin by cooling the
carrier fluid must not be as effective, since extra steps are
needed to achieve full encapsulation.
Reply Br. 7.
This argument is not persuasive.
We begin with two well-established principles of law. First, “all of the
relevant teachings of the cited references must be considered in determining
what they fairly teach to one having ordinary skill in the art.” In re Mercier,
515 F.2d 1161, 1165 (CCPA 1975); see also In re Lemelson, 397 F.2d 1006,
1009 (C.C.P.A. 1968) (“The use of patents as references is not limited to
what the patentees describe as their own inventions or to the problems with
which they are concerned. They are part of the literature of the art, relevant
for all they contain.”). Second, “the prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
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otherwise discourage the [claimed] solution . . . .” In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004).
Here, Appellant does not dispute that Mor describes a method for
making resin-coated metallic flake pigment particles by precipitating the
resin onto the particles by adjusting the temperature of the resin-carrier
fluid-particle mixture. Appeal Br. 16. Appellant does not identify any place
where Mor discourages or criticizes this technique. Rather Appellant’s
argument is that a person having ordinary skill in the art would have inferred
such criticism from Mor’s description of an alternate means for inducing the
resin’s precipitation.
This argument is not persuasive in view of the case law discussed
above. Without more, the mere disclosure of an alternate way to achieve a
given result is not a teaching away from any of the alternatives.
Second, Appellant argues that the person having ordinary skill in the
art at the time of the invention would not have been motivated to combine
Mor, Mann, and Ganapathiappan because Mann and Ganapathiappan
describe grinding the metal flakes and resin together while Mor emphasizes
the need to avoid deforming the metallic flake pigment particles. Appeal Br.
17–18. Appellant argues that this would lead a person having ordinary skill
in the art to conclude that Mann and Ganapathiappan were not concerned
with deforming the metallic flake pigment particles and doubt that the
methods described in those references would be applicable to or safe to use
with Mor’s metallic flake pigments. Reply Br. 8.
This argument is not persuasive.
As the Examiner explains, see Answer 8, both Mann and
Ganapathiappan describe the grinding process as optional when it is
necessary to reduce the size of the coated pigment particles. Answer 8
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(citing Mann 22–23; Ganapathiappan ¶ 36). A person having ordinary skill
in the art, considering Mor’s emphasis on the need to avoid deforming
metallic flake pigments, would choose metallic flake pigment particles of an
appropriately small size so that grinding could be avoided. See id.
In view of the foregoing, we do not reverse the rejection of claim 1 as
unpatentable over the combination of Mor, Mann, and Ganapathiappan.
Accordingly, we also affirm the rejection of claims 2–13, 17, and 18 as
obvious over this combination of references.
B. Rejection of claim 16
For ease of reference, we reproduce claim 16 from the Appeal Brief’s
Claims Appendix.
16. A method according to claim 1, wherein the conductive
metallic pigment flakes are not subjected to a grinding
treatment.
Appellant argues claim 16 separately to emphasize that it specifically
excludes grinding the metallic pigment flakes. See Appeal Br. 18 – 20.
Appellant also argues that claim 16 is patentable based upon its dependence
from the allegedly patentable claim 1. Id.
For the reasons set forth above, neither of these arguments persuades
us to reverse the rejection of claim 16.
IV. CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–13, 16–18 103 Mor, Mann, Ganapathiappan 1–13, 16–18
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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