HP INDIGO B.V.

Patent Trials and Appeals Board

Nov 3, 2021

2020004973 (P.T.A.B. Nov. 3, 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.
15/568,809 10/24/2017 Getahun Biadglin 84677788 5928
22879 7590 11/03/2021
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
11/03/2021 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 GETAHUN BIADGLIN, GUY NESHER, ILANIT MOR,
HAIM COHEN, TONY AZZAM, SAMER FARRAN,
YAEL KOWAL-BLAU, and ALBERT TEISHEV
____________
Appeal 2020-004973
Application 15/568,809
Technology Center 1700
____________
Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 7–11, and 16 of Application

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/568,809 filed Oct. 24, 2017; the Final Office Action dated Oct. 30, 2019
(“Final Act.”); the Appeal Brief filed Jan. 8, 2020 (“Appeal Br.”); the
Examiner’s Answer dated Apr. 30, 2020 (“Ans.”); and the Reply Brief filed
June 18, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Hewlett-Packard Development Company, LP as the real party in
interest. Appeal Br. 3.
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15/568,809, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
The subject matter of the invention relates to electrophotographic
varnish used over electrophotographic ink. Spec. ¶ 11. According to the
Specification, such varnishes may increase the durability of an image, e.g.,
by increasing the scratch resistance. Id.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, represents the claimed subject matter:
1. A liquid electrophotographic varnish composition,
comprising:
resin particles each comprising a polymeric resin
mixture, comprising:
a first polymeric resin comprising an ethylene-
based polymer; and
a second polymeric resin comprising a dimer acid
based polyamide resin;
and
a non-polar carrier fluid, wherein the liquid
electrophotographic varnish composition is substantially
colorless.
Appeal Br. 23 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
as obvious under 35 U.S.C. § 103:
Name Reference Date
Azar et al.
(“Azar”)
US 3,893,932 July 8, 1975
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Application 15/568,809

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Landa et al.
(“Landa”)
US 5,192,638 Mar. 9, 1993
Akioka et al.
(“Akioka”)
US 2008/0299480 A1 Dec. 4, 2008
REJECTIONS
The Examiner maintains the rejection of claims under 35 U.S.C. § 103
as follows: (1) claims 1, 3, 4, 7–11, and 16 over Landa in view of Azar; and
(2) claim 2 over Landa in view of Azar and further in view of Akioka. Final
Act. 3–8.
DISCUSSION
The dispositive issue on appeal is: Did the Examiner reversibly err in
determining that one of ordinary skill in the art would have had a reasonable
expectation of success in combining the disclosures of Landa and Azar to
reach the claimed invention?
We answer in the affirmative, and therefore do not sustain the
rejection. We limit our discussion to claim 1, the sole independent claim, as
it applies equally to all dependent claims. See Appeal Br. 23–26 (Claims
App.).
Regarding claim 1, the Examiner finds that Landa discloses resin
particles each comprising a first polymeric resin comprising an ethylene-
based polymer (ELVAX II 5650T) and a second polymeric resin of a
polyamide (UNIREZ polyamide resin). Final Act. 3–4. The Examiner finds
that the claimed non-polar carrier fluid reads on ISOPAR, disclosed in
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Landa. Id. at 4.3 The Examiner relies on Landa Example 3 as disclosing
toner particles containing no black or colored pigment, thus being
substantially colorless. Id. According to the Examiner, Landa does not
explicitly disclose that the second polymeric resin is a dimer acid based
polyamide resin. Id. However, the Examiner finds that Azar discloses a
pressure fixable toner comprising encapsulated toner particles comprising a
core material and a shell material, wherein the core material is a polyamide
of a reaction product of dimerized linoleic acid with diamines or
polyamines. Id. at 5.
The Examiner determines that it would have been obvious to modify
Landa’s liquid composition to include Azar’s polyamide because the core
having a polyamide of a reaction product of dimerized linoleic acid with
diamines or polyamines would provide sufficient cohesive strength to form a
good bond between the capsule and an image substrate and improved
penetration into a support medium. Id. at 5–6; Ans. 7–8. The Examiner
finds that both Landa and Azar teach toner particles provide improved
strength to the image, and thus solve a common problem. Ans. 7–8.
Appellant argues, inter alia, that one of ordinary skill in the art would
not have had a reasonable expectation of success in combining the
references. Appeal Br. 15. According to Appellant, Landa teaches toner
particles having fibers or tendrils used in a gap-transfer method of printing
to avoid the squash effect. Id. In contrast, Appellant argues, Azar teaches

3 : We note that in the Final Action, the Examiner improperly describes
ISOPAR as reading on the claimed fluid. Cited prior-art references do not
“read on” claim limitations, rather, a particular claim limitation “reads on”
the corresponding feature(s) found in the cited prior art.

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pressure fixable toner particles that have a soft core encapsulated in a
polymeric shell, the soft core being an adhesive that flows under applied
pressure to bond to the substrate. Id. Appellant argues that Azar’s method
applies pressure in direct contact with the toner to squash the toner particles
intentionally on the substrate. Id. at 16. Appellant contends that the
particular polyamide of Azar that the Examiner identifies is disclosed in the
reference as an example of a soft solid material. Id.
Appellant contends that one of ordinary skill in the art would not have
been motivated to add the polyamide of Azar, which is a soft material for
forming the core of squashable capsules, to Landa’s toner particles, which
are taught to have a high compressive strength in order to avoid being
squashed. Id. The combination, Appellant argues, would defeat Landa’s
goal of preventing the squash effect and have no reasonable expectation of
success. Id.
In response to the Examiner’s finding that both Landa and Azar teach
toner particles provide “improved strength to the image,” Appellant argues
that the references teach different kinds of strength, in different ways, for
different purposes. Reply Br. 5. Landa teaches a toner having good
compressive strength for the specific purpose of avoiding the squash effect,
according to Appellant, but Azar teaches a toner intentionally made with a
soft core and crushable shell to be crushed when pressure is applied. Id. at
5–6. Appellant argues that one of ordinary skill in the art would not have
expected Azar’s toner particles to have high compressive strength and avoid
the squash effect as desired by Landa. Id. at 6.
Appellant’s argument is persuasive of reversible error.
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“The PTO bears the burden of establishing a prima facie case of
obviousness.” In re Stepan Co., 868 F.3d 1342, 1348 (Fed. Cir. 2017)
(citing In re Deuel, 51 F.3d 1552, 1557 (Fed. Cir. 1995)). That burden
includes a showing “that one of ordinary skill would have had a motivation
to combine the references with a reasonable expectation of success.”
Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. de C.V., 865 F.3d
1348, 1355 (Fed. Cir. 2017); see also Amgen v. F. Hoffman-La Roche Ltd.,
580 F.3d 1340, 1362 (Fed. Cir. 2009) (assessing whether a claim to a
combination of prior art elements would have been obvious requires that the
skilled artisan would have perceived a reasonable expectation of success in
making the invention). That is, a reasonable expectation of success is a
necessary part of a prima facie case of obviousness. In re Vaeck, 947 F.2d
488, 493 (Fed. Cir. 1991). Both the suggestion to combine references and
the reasonable expectation of success must be founded in the prior art, not in
the applicant’s disclosure. Id.
A reasonable expectation of success is missing here.
Landa teaches that the squash effect (squashing, smudging, smearing
of the image during transfer) in prior art electrostatic images is avoided in its
disclosed invention, which employs the gap-transfer method (leaving a gap
between the developed image on the photoconductor and the carrier sheet to
which the image is to be transferred). Landa, col. 1, l. 62–col. 2, l. 6. Thus,
Landa teaches no direct contact between the developed image and the carrier
sheet.
Azar, on the other hand, teaches encapsulated pressure-fixable
plasticized toners. Azar, col. 7, ll. 8–9. Azar employs adhesive, soft solid
polymeric core materials containing a colorant and a plasticizer encapsulated
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in a polymeric shell material. Id., col. 6, ll. 64–67. “Adhesive soft solid” in
Azar is defined as “any material showing no perceptible flow under slight
stress in a short observation period, but showing significant flow under
large applied stresses and which is capable of forming a strong adhesive
bond.” Id., col. 7, ll. 4–9. Azar’s shell materials are preferably brittle and
somewhat friable to permit facile and complete rupturing of the encapsulated
toners to release thereby the adhesive core materials. Id., col. 8, ll. 22–26.
Azar discloses that crushability of encapsulated toners and impaction are
directly related. Id., col. 9, ll. 30–33. The core materials are selected to
provide a strong adhesive bond between the image substrate and the shell
material under the conditions employed to rupture the capsules. Id., col. 9,
ll. 43–46. Thus, Azar requires contact with pressure between the toner
image and transfer material. Id., col. 9, ll. 63–67.
As Appellant explains, one of ordinary skill in the art at the time of
filing would not have had a reasonable expectation of success in combining
Landa’s teaching of avoiding any direct contact between image and carrier
sheet (to avoid the squash effect) with Azar’s requirement of pressure
between the image the transfer material in order to rupture the encapsulated
toner. Azar’s requirement for pressure directly contradicts Landa’s desire
for no squashing. Under such circumstances, the skilled artisan would not
have sought to use Azar’s dimer acid based polyamide resin in Landa’s
process with a reasonable expectation of success.
We do not sustain the rejection of claim 1 as obvious over Landa in
view of Azar. We also do not sustain the rejection of dependent claims 2–4,
7–11, or 16 for the reasons discussed in relation to claim 1.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 7–
11, 16 103
Landa, Azar 1, 3, 4, 7–11, 16
2 103 Landa, Azar, Akioka 2
Overall
Outcome
1–4, 7–11, 16
REVERSED