Ex Parte Brust et al

Patent Trial and Appeal BoardApr 24, 2013

12029972 (P.T.A.B. Apr. 24, 2013)

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. 12/029,972 02/12/2008 Thomas B. Brust 93607AJA 9810 1333 7590 04/24/2013 EASTMAN KODAK COMPANY PATENT LEGAL STAFF 343 STATE STREET ROCHESTER, NY 14650-2201 EXAMINER HEINCER, LIAM J ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 04/24/2013 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 THOMAS B BRUST, YONGCAI WANG and PAUL D. YACOBUCCI ____________________ Appeal 2012-002690 Application 12/029,972 Technology Center 1700 ____________________ Before FRED E. McKELVEY, RICHARD E. SCHAFER and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL Statement of the case The Eastman Kodak Company (“applicant”), the real party in interest 1 (Brief, page 1), seeks review under 35 U.S.C. § 134(a) of a final rejection 2 dated 31 January 2011. 3 The application on appeal was filed in the USPTO on 12 February 4 2008. 5 The application on appeal claims priority of Provisional Application, 6 60/892,171 filed 28 February 2007. 7 Appeal 2012-002690 Application 12/029,972 2 The application has been published as U.S. Patent Application 1 Publication 2008/0207811 A1. 2 In support of prior art rejections, the Examiner cites the following 3 evidence. 4 Nakamura et al. “Nakamura” U.S. Patent 6,114,411 05 Sept. 2000 Koenemann et al. “Koenemann” U.S. Patent Application Publication 2005/0004284 A1 06 Jan. 2005 Issler U.S. Patent 6,857,733 B2 22 Feb. 2005 Jackson et al. “Jackson” U.S. Patent Application Publication 2005/0284329 A1 29 Dec. 2005 Wang et al. “Wang” U.S. Patent Application Publication 2006/0012654 A1 19 Jan. 2006 Regan et al.1 “Regan” U.S. Patent Application Publication 2007/0279467 A1 06 Dec. 2007 Takahashi et al.2 “Takahashi” U.S. Patent Application Publication 2009/0226675 A1 10 Sept. 2009 Masanori et al. “Kato”3 Published Japanese Patent Application 2005-290044 20 Oct. 2005 1 Regan is not listed in the “Evidence Relied Upon” portion of the Answer. However, both applicant (Brief, page 4) and the Examiner (Answer, page 8) address Regan. We have considered and address Regan. 2 Takahashi is listed in the “Evidence Relied Upon” portion of the Answer. We have found no discussion of Takahashi in the Brief or the Answer and therefore believe listing of Takahashi was an oversight, with the Examiner instead probably meaning to list Regan. It does not appear that Takahashi is prior art vis-à-vis applicant. We have not found it necessary to consider Takahashi. 3 The named inventors are Kato Masanori and Itotani Kazuo. Both applicant and the Examiner refer to the reference as “Kato” and so shall we. Appeal 2012-002690 Application 12/029,972 3 Applicant does not contest the prior art status of the references 1 discussed by the Examiner in the Answer. 2 We have jurisdiction under 35 U.S.C. § 134(a). 3 Claims on appeal 4 Claims 1-12 and 14-20 are on appeal. Brief, page 1; Answer, page 3. 5 Rejections 6 In the Answer, the Examiner has maintained the following rejections: 7 Rejection 1: Claims 1-3, 7-8, 11-12 and 17-18 stand rejected under 8 § 103 over Kato. Answer, page 4. 9 Rejection 2: Claims 4-6 and 14 stand rejected under § 103 over Kato 10 and Nakamura. Answer, page 5. 11 Rejection 3: Claims 9-10 stand rejected under § 103 over Kato and 12 Koenemann. Answer, page 6. 13 Rejection 4: Claims 15-16 stand rejected under § 103 over Kato and 14 Jackson. Answer, page 7. 15 Rejection 5: Claims 19-20 stand rejected under § 103 over Kato and 16 Issler. Answer, page 7. 17 Invention 18 The invention is readily understood from Claim 1 on appeal. 19 Claim 1, which we reproduce from the Claim Appendix of the Brief 20 (page 11), reads [matter in brackets and some indentation added: 21 Appeal 2012-002690 Application 12/029,972 4 An ink composition comprising: 1 (a) water, 2 (b) pigment particles 3 [i] dispersed with a dispersant or 4 [ii] self dispersing without the need for a dispersant, 5 (c) at least one humectant, and 6 (d) at least one polyurethane additive 7 [1] which is distinct from the dispersant, 8 [2] having an average molecular weight of at least 9 about 10,000 and 10 [3] a sufficient number of acid groups to provide an 11 acid number greater than about 60 12 the polyurethane 13 [i] being present at a level of at least 10 percent by 14 weight relative to the pigment particles and 15 [ii] comprising a polyether segment having a 16 molecular weight greater than 250 and less than 17 2900, 18 wherein the acid groups on the polyurethane are 19 at least partially neutralized only with a monovalent 20 inorganic base, and further comprising 21 [e] at least one water soluble acrylic polymer comprising 22 [i] carboxylic acid groups present at a weight 23 concentration of greater than 0.6%, 24 Appeal 2012-002690 Application 12/029,972 5 [ii] wherein the acid groups on the acrylic polymer 1 are at least partially neutralized only with a 2 monovalent inorganic base, and 3 wherein 4 [1] the ratio of total amount of polyurethane and 5 acrylic polymer to pigment is between 0.5 and 1.5 and 6 [2] the ratio of polyurethane to acrylic polymer is 7 between 0.5 and 2. 8 Acid groups are introduced into the polyurethane through a diol 9 having carboxylic acid groups, e.g., 2,2’-bis(hydroxymethyl)propionic acid. 10 See Specification, page 13, Formula (I) where the R3 group contains acid 11 groups. 12 Analysis 13 Kato 14 Kato is a Japanese patent application published in Japanese. An 15 English language translation of Kato appears in the record. The translation 16 states: “This document has been translated by computer. So the 17 translation may not reflect the original precisely.” Applicant and the 18 Examiner relied on the “computer” translation and so shall we. 19 The Examiner found that Kato describes the invention of Claim 1 as 20 follows (Answer, pages 4-5): 21 Kato . . . teaches an ink composition (Title) comprising 22 water (¶ 0009); a pigment (¶ 0013-0014) that is dispersed with a 23 surface-active agent (¶ 0053); a water soluble organic 24 Appeal 2012-002690 Application 12/029,972 6 solvent/humectant (¶ 0052); a polyurethane additive (¶ 0009) 1 having a molecular weight of 2,000-100,000 (¶ 0036) with 2 33,000 being . . . [described] in . . . [an] example (¶ 0063) and 3 comprising a polyoxytetramethylene glycol segment (¶ 0024-4 0025) where the polyoxytetramethylene glyhcol has a molecular 5 weight of 2,000 (¶ 0063), where the polyurethane is used in an 6 amount of 20 to 100 parts by weight per 100 parts of pigment 7 (¶ 0038); and a water soluble acrylic polymer in an amount of 8 0.5 to 100 parts per 100 parts of polyurethane (¶ 0059). Kato 9 . . . teaches adding lithium, potassium, or sodium hydroxide to 10 the composition to neutralize the carboxylic acid groups 11 (¶ 0035-0036), with potassium hydroxide being . . . [described] 12 in . . . examples (¶ 0067). 13 Kato . . . teaches the polyurethane as having an acid 14 number of 40 to 90 (¶ 0034). 15 * * * 16 The ratio of polyurethane and acrylic to pigment would be 17 0.2 to 2, and the ratio of polyurethane to acrylic polymer would 18 be 0.05 to 1 in Kato . . . (¶ 0038 and 0059). 19 Discussion—Claim 1 20 In presenting the appeal as to Rejection 1, applicant does not 21 argue the separate patentability of Claims 2-3, 7-8, 11-12 and 17 apart 22 from Claim 1. These claims stand or fall with Claim 1. 37 C.F.R. 23 Appeal 2012-002690 Application 12/029,972 7 § 41.37(c)(1)(vii). Claim 18 is discussed in the Brief (page 7) and is 1 addressed separately in this opinion. 2 Kato 3 According to applicant, the Examiner has “misconstrued the actual 4 teachings of Kato”. Brief, page 3 (emphasis omitted). Claim 1 requires that 5 the polyurethane additive be “distinct from the dispersant”. Applicant points 6 out that Kato employs its polyurethane additive as a dispersant. Brief, 7 page 3; Kato ¶¶ 0067-0068. The Examiner found that Kato also describes 8 the use of a surface active agent in combination with the polyurethane. 9 Answer, page 8; Kato ¶¶ 0053-0054. The Examiner further found that 10 surface active agents are known to function as dispersants. Answer, 11 page 8, Regan ¶ 0049 and Wang ¶ 0012. The Examiner therefore 12 determined that Kato describes compositions having a surface active 13 dispersant which is different from Kato’s polyurethane additive. As noted 14 by the Examiner, Claim 1 does not limit the polyurethane additive to 15 materials which are not dispersants. Moreover, applicant describes the use 16 of surface active agents as dispersants. Specification, page 9. Applicant 17 maintains, however, that the Kato, Regan and Wang teachings still miss 18 the mark. Why? Each is said to mix the surface active agents with other 19 components in an order different form applicant. The Examiner found that 20 the Claim 1 composition and the Kato compositions have the same 21 ingredients. Claim 1 is not presented in “product-by-process” format. The 22 Examiner also noted that even if Claim 1 could remotely be construed as a 23 product-by-process claim, applicant has not established that the order in 24 Appeal 2012-002690 Application 12/029,972 8 which ingredients are mixed makes any patentable difference. Answer, 1 pages 8-9. Applicant has not convinced us that the Examiner’s findings 2 and analysis is flawed in any significant respect. 3 Unexpected results 4 Applicant maintains that the claimed invention produces an 5 unexpected advantage. Brief, pages 6-7 and Reply Brief, page 4. In 6 support of an unexpected advantage argument, applicant relies on 7 Examples I-112, I-113, I-114, I-122 and I-123 which appear in the 8 Specification (pages 49-50 and 52-53).4 In each Example, a combination 9 of (1) polyurethane based on isophorone diisocyanate having a particular 10 acid number and (2) an acrylic is said to have been tested. 11 The property measured and reported is “jetting performance” 12 (incubated inkjetting velocity at 112% Vth 10kHz) before and after storage 13 at 60 ºC for 6 weeks. Specification, page 53:5-18. 14 The following Table sets out our understanding of the relationship of 15 (1) the molecular weight of the polyurethane, (2) the acid number of the 16 polyurethane, (3) the inkjetting velocity prior to storage, (4) the inkjetting 17 velocity after storage and (5) the % change in jetting velocity after storage. 18 PU means polyurethane. Velocities and % change reproduced from 19 Table 2 (Specification, pages 55-56). 20 4 There are many other examples set out in the Specification. We have considered only those called to our attention by applicant. Appeal 2012-002690 Application 12/029,972 9 Example PU tested (PU-36) PU Molecular Weight PU Acid Number Velocity prior to storage Velocity after storage % change Invention I-112 (PU-36) 14800 135 85% Neutralized 12.66 12.35 -2 Invention I-113 (PU-37) 17100 120 85% Neutralized 12.40 12.93 +4 Invention I-114 (PU-33) 26600 85 85% Neutralized 17.75 19.11 +8 Comparative I-122 (PU-60) 11550 53 100% Neutralized 9.29 12.61 +36 Invention I-123 (PU-61) 20700 63 100% Neutralized 14.71 14.56 -1 Initially, applicant relied on Comparative Example I-122 and Invention 1 Example I-123. Brief, pages 6-7. In the Reply Brief, applicant further relies 2 on Invention Examples I-112, I-113 and I-114 (page 4). Argument made in 3 a reply brief for the first time on appeal is normally not entitled to 4 consideration—consistent with normal examination procedure, the 5 Examiner has no practical opportunity to present responding analysis of 6 new arguments in a reply. 7 The Examiner explained why applicant’s I-122 and I-123 evidence 8 was not being credited. 9 Appeal 2012-002690 Application 12/029,972 10 First, while there are differences in properties of I-122 and I-123, 1 applicant has not established that any difference is unexpected. Answer, 2 page 10. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (it is not enough 3 to show results are obtained which differ from those obtained in the prior 4 art—any difference must be shown to be an unexpected difference). 5 Presumably, applicant believes the “property” set out in Claim 18 is 6 “unexpected”. Claim 18 reads: 7 The ink composition of [C]laim 1, wherein said ink 8 composition can be jetted from a thermal inkjet device after the 9 ink has been stored at a temperature of 60 degrees Celsius for 10 at least two[5] weeks with a decrease in velocity of no more than 11 10%. 12 The data relied upon does not support applicant’s position and does not 13 establish any criticality from a patentability point of view of the acid number. 14 In the case of Comparative I-122 (acid number 53), the velocity increased. 15 While the velocity increased for I-113 and I-114, it decreased for I-112 and 16 I-123—all of which had acid numbers greater than 60. No explanation has 17 5 Claim 18 refers to 2-week storage. The Specification (page 7) states that the “ink compositions . . . advantageously can be jetted from a thermal inkjet device where the decrease in velocity is no more than 10% after the ink has been stored at a temperature of 60 degrees Celsius for at least two weeks.” (italics added). On the other hand, testing in the Specification (page 53) is said to have occurred 6 weeks after storage. For the purpose of deciding the appeal, we will assume the 2 weeks vis-à-vis 6 weeks makes no significant difference. Appeal 2012-002690 Application 12/029,972 11 been provided as to how one skilled in the art would be able to determine 1 that increase or decrease in velocity is a function of the acid number. 2 Second, the Examiner found that the I-122 vis-à-vis I-123 comparison 3 is based on only two acid numbers. Answer, page 11. The Examiner also 4 found that there were variations in molecular weight of the polyurethane. 5 Id. The Examiner then found “[a]s more than one viable is altered, the 6 Office cannot determine to what extent each variable affects the properties 7 of the composition.” Id. Applicant’s response in a reply brief to the 8 Examiner’s finding was to refer to Invention Examples I-112, I-113 and 9 I-114 wherein polyurethanes having different molecular weights were said 10 to have been tested. As noted earlier, the Examiner had no practical 11 opportunity to respond to applicant’s belatedly presented argument. 12 Hence, the response is not entitled to be considered. However, even if it 13 had been presented in a timely manner, the data as a whole fails to 14 establish applicant’s point. There is no direct evidence in this case that 15 Comparison I-122 is in fact a reproduction of any composition within the 16 scope of Kato. Hence, we are unable to find that Comparison I-122 is a 17 reproduction of any prior art Kato embodiment. We believe applicant has 18 simply assumed that it is. Assuming arguendo that Comparison I-122 is 19 representative of Kato, then: How is the result set out in Claim 18 20 unexpected? Comparison I-122 results in an increase in velocity, not a 21 decrease. 22 Third, the Examiner notes that elements (b) and (c) of Claim 1 are 23 broadly claimed. Answer, page 11. Applicant has not cogently responded 24 Appeal 2012-002690 Application 12/029,972 12 to the Examiner’s finding that the data is not commensurate in scope with 1 the breadth of these two elements. The Examiner noted that “[t]he . . . 2 specification is silent as to which feature controls . . . [the claimed] 3 property.” Id. at 12. 4 We agree with the Examiner that applicant has failed to put on a 5 convincing case for an unexpected result. While data is presented in the 6 Specification, its significance comes from attorney argument. However, 7 attorney argument is not evidence. In re Walters, 168 F.2d 79, 80 (CCPA 8 1948) (statements of counsel in a brief cannot take the place of evidence). 9 In the Reply Brief, applicant states that with respect to Comparison 10 I-122, “an undesirable inkjetting velocity of less than 10 m/sec is observed.” 11 Page 4. The velocity reported in the Specification is 9.29 (page 55). 12 However, none of the claims on appeal specify a minimum non-storage 13 inkjetting velocity. 14 Decision—Rejection 1 15 Rejection 1 is affirmed. 16 Remaining rejections 17 In presenting its arguments on appeal with respect to Rejections 2-5, 18 apart from its Claim 1 argument, applicant does not additionally address 19 specific limitations of claims or disclosure of the relied upon prior art. Brief, 20 pages 8-9. 21 Rejections 2-5 are affirmed. 22 Appeal 2012-002690 Application 12/029,972 13 Other arguments 1 We have considered applicant’s remaining arguments and find none 2 that warrant reversal of the Examiner’s rejections. Cf. In re Antor Media 3 Corp., 689 F.3d 1282, 1294 (Fed. Cir. 2012). 4 Decision 5 Upon consideration of the appeal, and for the reasons given herein, it 6 is 7 ORDERED that the decision of the Examiner rejecting the 8 claims on appeal under § 103 over the prior art is affirmed. 9 FURTHER ORDERED that no time period for taking any 10 subsequent action in connection with this appeal may be extended under 11 37 C.F.R. § 1.136(a)(1)(iv). 12 AFFIRMED 13 14 bar 15