Xerox Corporation

Patent Trials and Appeals Board

Mar 22, 2021

2020003098 (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.
15/078,323 03/23/2016 Naveen Chopra 20150954US01 8692
74934 7590 03/22/2021
MARYLOU J. LAVOIE, ESQ. LLC
1 BANKS ROAD
SIMSBURY, CT 06070
EXAMINER
GRUN, ROBERT J
ART UNIT PAPER NUMBER
1744
MAIL DATE DELIVERY MODE
03/22/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NAVEEN CHOPRA, CAROLYN MOORLAG, MARCEL P.
BRETON, BARKEV KEOSHKERIAN, SALEH A. JIDDAWI, and
GORDON SISLER
____________

Appeal 2020-003098
Application 15/078,323
Technology Center 1700
____________

Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–11 and 18–20.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Xerox Corporation as the real party in
interest. Appeal Brief filed October 2, 2019 (“Appeal Br.”), 1.
2 Final Office Action entered May 13, 2019 (“Final Act.”), 1.
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CLAIMED SUBJECT MATTER
Appellant claims a curable phase change gellant ink composition
(independent claim 1) and a method for preparing a curable phase change
gellant ink composition (independent claim 18). Appeal Br. 1–6. Claim 1
illustrates the subject matter on appeal, and reads as follows:
1. A curable phase change gellant ink composition
comprising:
a phase change ink vehicle comprising at least one
acrylate monomer, oligomer, or prepolymer;
acryloylmorpholine;
at least one gellant, wherein the gellant is miscible with
the phase change ink vehicle;
a photoinitiator; and
an optional colorant.

Appeal Br. 14 (Claims Appendix) (emphasis added).
REJECTION
The Examiner maintains the rejection of claims 1–11 and 18–20 under
35 U.S.C. § 103 as unpatentable over Chopra et al. (US 2013/0328980 Al,
published December 12, 2013) in view of Takabayashi et al. (US
2014/0333704 Al, published November 13, 2014) in the Examiner’s Answer
entered January 23, 2020 (“Ans.”).

FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1–11 and 18–20 under 35 U.S.C. § 103 for reasons set forth in the
Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
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identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Appellant presents arguments directed to independent claim 1, and to
claim 2, which depends from claim 1.3 Appeal Br. 7–12. We, therefore,
address claim 2 separately, and select claim 1 as representative of the
remaining claims on appeal, which stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
Claims 1, 3–11, and 18–20
Claim 1 recites an ink composition comprising (1) a phase change ink
vehicle comprising at least one acrylate monomer, oligomer, or prepolymer;
(2) acryloylmorpholine; (3) at least one gellant that is miscible with the
phase change ink vehicle, and (4) a photoinitiator.
Chopra discloses a photocurable ink composition comprising, in part,
a phase change ink carrier, one or more monomers, an amide gellant, and a
photoinitiator. Chopra ¶¶ 6, 76. Chopra discloses that suitable materials for

3 Although Appellant mentions claim 5 when presenting arguments for claim
2, Appellant’s reference to claim 5 does not constitute a substantive
argument as to the separate patentability of claim 5. Appeal Br. 11, 12. In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art. Because Lovin
did not provide such arguments, the Board did not err in refusing to
separately address claims 2–15, 17–24, and 31–34.”).
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use as the phase change ink carrier include radically curable monomer
compounds, such as acrylate monomers. Chopra ¶ 76. Chopra discloses
that the one or more monomers included in Chopra’s ink composition may
be “curable monomers,” and Chopra discloses that “[t]he term ‘curable
monomer’ is also intended to encompass curable oligomers, which may also
be used in the [ink] composition.” Chopra ¶¶ 55–58. Chopra discloses that
the amide gellant included in the ink composition has “the generic structure
of the ester-terminated polyamide gellant” shown in Chopra’s paragraph 19,
which is the same as the structure of the gellant recited in Appellant’s claim
4. Chopra ¶ 19.
As the Examiner finds (Final Act. 3), although Chopra discloses
including curable monomers and oligomers in Chopra’s ink composition as
discussed above, Chopra does not explicitly disclose including
acryloylmorpholine in the ink composition. Takabayashi, however,
discloses a photocurable ink composition that includes a curable monomer, a
curable oligomer, a gelling agent, and a photopolymerization initiator.
Takabayashi ¶ 11. Takabayashi discloses forming the curable oligomer by
reacting the main chain of an oligomer with a compound containing a
photopolymerizable functional group, such as acryloylmorpholine.
Takabayashi ¶ 25. Takabayashi discloses that including the curable
oligomer in Takabayashi’s ink composition allows formation of a highly
curable image, despite inclusion of a gelling agent in the composition.
Takabayashi ¶ 37.
In view of these disclosures in Takabayashi, the Examiner concludes
that it would have been obvious to one of ordinary skill in the art to include
acryloylmorpholine in Chopra’s curable ink composition to provide the
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composition with photopolymerizable (photocurable) functional groups.
Final Act. 3.
Appellant argues that Takabayashi discloses a vast number of curable
oligomers, and acryloylmorpholine is just one example of many disclosed
compounds that include a photopolymerizable functional group, which may
be introduced into an oligomer. Appeal Br. 9–10. Appellant argues that
“[i]t would not be obvious from the teaching of Takabayashi, to pluck
acryloylmopholine out of the many examples of compounds containing the
photopolymerizable functional group that can be introduced into the curable
oligomer and combine it with Chopra in the manner the Examiner suggests.”
Appeal Br. 10.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
As discussed above, Chopra discloses including a curable oligomer in
Chopra’s photocurable ink composition containing a gelling agent, and
Takabayashi discloses including a curable oligomer containing an
acryloylmorpholine photopolymerizable functional group in Takabayashi’s
photocurable ink composition that also contains gelling agent.
Takabayashi’s disclosure that including such a curable oligomer in
Takabayashi’s ink composition allows formation of a highly curable image,
despite inclusion of a gelling agent in the composition, reasonably would
have led one of ordinary skill in the art to use a curable oligomer containing
an acryloylmorpholine photopolymerizable functional group as disclosed in
Takabayashi as the curable oligomer in Chopra’s photocurable ink
composition, to form a highly curable image using Chopra’s ink
composition, which contains a gelling agent. KSR Int’l Co. v. Teleflex Inc.,
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550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,
282 (1976) (“[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.”)).
Takabayashi’s disclosure of numerous compounds containing
photopolymerizable functional groups suitable for reaction with an oligomer
main chain to produce a photocurable oligomer for inclusion in
Takabayashi’s photocurable ink composition does not render any particular
disclosed photopolymerizable functional group-containing compound any
less obvious. Rather, Takabayashi would have suggested using any of the
disclosed photopolymerizable functional group-containing compounds to
form a photocurable oligomer for inclusion in a photocurable ink
composition, including acryloylmorpholine. Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ’813 patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious. This is especially true because the claimed
composition is used for the identical purpose.”); In re Susi, 440 F.2d 442,
445 (CCPA 1971) (obviousness rejection affirmed where the genus of the
prior art was “huge, but it undeniably include[d] at least some of the
compounds recited in appellant’s generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant’s additives”).
Appellant argues that “Chopra teaches that the ink vehicle is optional,
and if the ink vehicle is used, Chopra teaches a large number of materials
which can be selected for the optional ink vehicle.” Appeal Br. 9. Appellant
argues that “nothing in the teaching of Chopra” would have suggested
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inclusion of an ink vehicle as recited in claim 1 in an ink composition having
the recited combination of ingredients. Appeal Br. 8.
As discussed above, however, Chopra discloses a photocurable ink
composition including a phase change ink carrier, a curable oligomer, an
amide gellant, and a photoinitiator, and Takabayashi would have suggested
using a curable oligomer containing an acryloylmorpholine
photopolymerizable functional group as the curable oligomer in Chopra’s
photocurable ink composition. As also discussed above, Chopra discloses
that radically curable monomer compounds, such as acrylate monomers, are
suitable materials for use as the phase change ink carrier included in
Chopra’s ink composition. Chopra’s indication that the phase change ink
carrier is an optional component of Chopra’s ink composition does not
negate, or even detract from, Chopra’s explicit disclosure of the suitability of
including such a carrier in Chopra’s ink composition.
And Chopra’s disclosure of numerous suitable radically curable
compounds for use as the phase change ink carrier in Chopra’s ink
composition does not render any particular disclosed compound any less
obvious. Rather, Chopra would have suggested using any of the disclosed
radically curable compounds as the phase change ink carrier in Chopra’s ink
composition, including an acrylate monomer.
Contrary to Appellant’s arguments, the combined disclosures of
Chopra and Takabayashi, therefore, would have suggested an ink
composition having the combination of components recited in claim 1.
Appellant argues that “gellants are not necessarily miscible with
photopolymerizable base components (required for gel strength),” and
“Chopra is silent” as to the gellant being miscible with the phase change ink
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vehicle, as required by claim 1. Appeal Br. 8 (citing Spec. ¶ 9).
As discussed above, however, Chopra discloses an amide gellant
having the same structure as the gellant recited in Appellant’s claim 4. A
reasonable basis therefore exists for finding that Chopra’s amide gellant
would be miscible with Chopra’s acrylate monomer phase change ink
vehicle, as recited in claim 1, and the burden shifts to Appellant to show
otherwise. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted)
(“Where . . . the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on
‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.”); In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (explaining that
a chemical composition and its properties are inseparable.).
On the record before us, Appellant does not meet this burden, because
Appellant does not provide any objective evidence establishing that
Chopra’s amide gellant is not miscible with Chopra’s acrylate monomer
phase change ink vehicle. The fact that Appellant recognized a property of a
gellant as disclosed in Chopra (miscibility with a phase change ink vehicle
as also disclosed in Chopra) does not impart patentability to the ink
composition of claim 1, even though the discovered property is not disclosed
in Chopra. In re Dillon, 919 F.2d 688, 692–93 (Fed. Cir. 1990) (reaffirming
the principle that where the prior art gives reason or motivation to make the
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same composition recited in a claim, the burden and opportunity shifts to the
applicant to rebut the prima facie case, and the mere fact that the prior art
does not explicitly disclose the same property discovered for the
composition recited in a claim does not defeat that prima facie case.); see
also Endo Pharm. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381 (Fed.
Cir. 2018) (“An inherent characteristic of a formulation can be part of the
prior art in an obviousness analysis even if the inherent characteristic was
unrecognized or unappreciated by a skilled artisan.”).
We, accordingly, sustain the Examiner’s rejection of claims 1, 3–11,
and 18–20 under 35 U.S.C. § 103.
Claim 2
Claim 2 depends from claim 1 and recites that “the phase change ink
vehicle comprises at least one triacrylate, at least one monoacrylate, and at
least one diacrylate; and wherein the ratio of triacrylate to monacrylate and
diacrylate is from about 0.05 to about 0.5.”
Appellant argues that Chopra does not teach an ink vehicle
comprising at least one triacrylate, at least one monoacrylate, and at least
one diacrylate. Appeal Br. 10. Appellant argues that “Chopra provides a
vast number of possible compounds that many be included in the optional
ink vehicle of Chopra,” and “[t]here is no teaching or motivation in the lists
of materials provided that would give any hint to one of skill in the art to
arrive at an ink vehicle comprising the specific combination of at least one
triacrylate, at least one monoacrylate, and at least one diacrylate.” Id.
Appellant argues that “[t]here is further no teaching or motivation in Chopra
that would lead one of skill in the art to arrive at this specific combination
wherein the ratio of triacrylate to monoacrylate and diacrylate is from about
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0.05 to about 0.5.” Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
As discussed above, Chopra discloses that suitable materials for the
phase change ink carrier of Chopra’s ink composition include radically-
curable monomer compounds, such as acrylate monomers. Chopra ¶ 76.
Chopra further discloses that suitable acrylate monomers include various
monoacrylates. Id. Chopra also discloses that multifunctional acrylate
monomers “can be included in the phase change ink carrier as reactive
diluents and as materials that can increase the crosslink density of the cured
image, thereby enhancing the toughness of the cured images.” Id. Chopra
discloses that suitable multifunctional acrylate monomers include various
diacrylates and triacrylates “as well as mixtures and combinations thereof.”
Id. (emphasis added).
One of ordinary skill in the art reasonably would have been led from
these disclosures to include an acrylate monomer in combination with one or
both of a diacrylate and triacrylate in Chopra’s ink composition (modified by
Takabayashi as discussed above), to increase the crosslink density of a cured
image formed with the composition, so as to enhance the image’s toughness.
Chopra’s disclosure that including multifunctional acrylate monomers
(diacrylates and triacrylates) in combination with monoacrylates in the phase
change ink carrier affects the crosslink density, and resulting toughness, of a
cured image formed with an ink composition containing the ink carrier,
indicates that the number of functional groups present in the acrylate
monomers in the ink carrier is a result-effective variable. In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the
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prior art that a property [or a result] is affected by the variable is sufficient to
find the variable result-effective.”).
Consequently, through nothing more than routine experimentation,
one of ordinary skill in the art would have optimized the relative amounts of
monoacrylates, diacrylates, and triacrylates included in a phase change ink
carrier as disclosed in Chopra to achieve a desired crosslink density, and
resulting toughness, for a cured image formed with an ink composition
containing the ink carrier, and in so doing, would have arrived at a ratio of
triacrylate to monoacrylate and diacrylate as recited in claim 2. In re
Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value
of a result effective variable in a known process is ordinarily within the skill
of the art.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
We, accordingly, sustain the Examiner’s rejection of claim 2 under 35
U.S.C. § 103.

CONCLUSION

Claim(s)
Rejected

35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–11, 18–20 103 Chopra,
Takabayashi
1–11, 18–
20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

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AFFIRMED