Ex Parte Botros et al

Patent Trial and Appeal BoardDec 17, 2012

12251662 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/251,662 10/15/2008 Raouf Botros 92835AAJA 6009 1333 7590 12/17/2012 EASTMAN KODAK COMPANY PATENT LEGAL STAFF 343 STATE STREET ROCHESTER, NY 14650-2201 EXAMINER HUHN, RICHARD A ART UNIT PAPER NUMBER 1764 MAIL DATE DELIVERY MODE 12/17/2012 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 RAOUF BOTROS, TOM N. HUANG, RUSSELL H. TOBIAS, and ERIC A. FOSSUM ____________ Appeal 2011-012279 Application 12/251,662 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, JAMES C. HOUSEL, and GRACE K. OBERMANN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's rejections under 35 U.S.C. Â§ 103(a) of claims 1, 2, and 4-8 as unpatentable over Botros (US 5,425,805 patented June 20, 1995) in view of Bailey (US 4,197,135 patented April 8, 1980), Ochiai (US 2001/0003731 A1 published June 14, 2001), and Dickson (US 3,262,791 patented July 26, 1966) and of claims 11-13, 15-19, 26, and 27 as unpatentable over these references and Appeal 2011-012279 Application 12/251,662 2 further in view of Aulick (US 5,223,028 patented June 29, 1993). We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. Appellants claim a dye-based inkjet ink composition comprising a liquid vehicle, a dye, and a water-soluble branched polyethyleneimine comprising amino groups which have been alkylated wherein at least 1% of the primary amino groups are alkylated with an alkyl group having at least 4 carbon atoms and wherein 1-10 mole percent of the substitutable hydrogens of the amino groups are alkylated with an alkyl group having at least 4 carbon atoms (claim 1). Representative claim 1, the sole independent claim on appeal, reads as follows: 1. A dye-based inkjet ink composition for printing on a substrate, comprising a liquid vehicle, an anionic dye soluble in the liquid vehicle, and a water soluble branched polyethyleneimine comprising amino groups which have been alkylated, wherein the branched polyethyleneimine prior to alkylation comprises a combination of primary, secondary, and tertiary amino groups, and wherein at least 1% of the primary amino groups of the branched polyethyleneimine polymer are alkylated with at least one alkyl group having at least 4 carbon atoms, and wherein 1-10 mole percent of the substitutable hydrogens of the amino groups of the branched polyethyleneimine are alkylated with an alkyl group having at least 4 carbon atoms. The Examiner concedes that the ink composition of Botros does not include the branched polyethyleneimine having alkylated amino groups Appeal 2011-012279 Application 12/251,662 3 defined by independent claim 1 including the claimed feature wherein 1-10 mole percent of the substitutable hydrogens of the amino groups are alkylated (Ans. 5). The Examiner concludes, inter alia, that it would have been obvious to alkylate the polyethyleneimines of Botros "in an appropriate amount as suggested by Dickson, including alkylating at least 1% . . . of the primary amino groups and 1-10 mol % of the substitutable hydrogens of the polyethyleneimine, so as to produce desired end results" (id. at 7). As correctly explained by Appellants, Dickson discloses substituted polyethyleneimines which have a broad spectrum of uses, for example, as penetrating agents and dyeing assistants in the textile industry but not as ingredients in an inkjet ink composition (App. Br. para. bridging 5-6). Appellants argue that "no teaching or guidance is provided [by Dickson] so as to direct any specific degree of alkylation for polyethyleneimine polymers employed in an inkjet ink composition for any reason" (id. at 7; underlining deleted). The Examiner responds to this argument by acknowledging that the Specification discloses benefits resulting from the degree of alkylation required by claim 1 (Ans. para. bridging 13-14). The Examiner further acknowledges that "the examples of alkylated polyethyleneimines in Dickson may employ a larger degree of alkylation than is presently claimed" (id. at para. bridging 14-15) but urges that "such a degree of alkylation in the examples does not detract from either the broader teaching in Dickson that the degree of alkylation is dependent upon the particular application of the Appeal 2011-012279 Application 12/251,662 4 polymer, or from the motivation to optimize the degree of alkylation based upon the particular application of the polymer" (id.). The Examiner's position is not well taken. We recognize that Dickson discloses "[o]ptimum alkylation will depend on the particular application" (col. 24, ll. 35-36). However, the Examiner has failed to articulate reasoning with rational underpinning in support of the conclusion that Dickson's broad disclosure would have made it obvious for an artisan to alkylate 1-10 mole percent of the substitutable hydrogens on the amino groups of the polyethyleneimine in Botros' inkjet ink composition as required by claim 1. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") quoted with approval in KSR Intâ€™l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). The Examiner's failure is aggravated by Appellants' correct observation that the substituted polyethyleneimines of Dickson are not disclosed as useful in inkjet ink compositions. Based on the record before us, we agree with Appellants' argument that Dickson provides no teaching or suggestion of any specific degree of amino group alkylation in polyethyleneimines for use in an inkjet ink composition. For this reason, we believe the Examiner has unwittingly applied impermissible hindsight in concluding that Dickson would have suggested alkylating 1-10 mole percent Appeal 2011-012279 Application 12/251,662 5 of the substitutable hydrogens on the amino groups of Botros' polyethyleneimines. Therefore, the Examiner's Â§ 103 rejections are not sustained. The decision of the Examiner is reversed. REVERSED sld