Ex Parte Chun et al

Patent Trial and Appeal Board

Aug 15, 2017

13643016 (P.T.A.B. Aug. 15, 2017)

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. 13/643,016 10/23/2012 Doris Pik-Yiu Chun 83114393 1543 22879 HP Tnr 7590 08/17/2017 EXAMINER 3390 E. Harmony Road Mail Stop 35 KOLLIAS, ALEXANDER C FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 08/17/2017 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 barbl@hp.com y vonne.bailey @ hp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DORIS PIK-YIU CHUN and HOU T. NG1 Appeal 2015-007445 Application 13/643,016 Technology Center 1700 Before CHUNG K. PAK, GEORGE C. BEST, and AVELYN M. ROSS, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2 rejecting claims 1-9, 16-18, and 21-23. Claims 10- 15, 19, and 20, the other claims pending in the above-identified application, were withdrawn from consideration by the Examiner pursuant to 37 C.F.R. 1 Appellants identify the real party in interest as “Hewlett-Packard Development Company, LP, a limited partnership established under the laws of the State of Texas and” “a wholly-owned affiliate of Hewlett-Packard Company, a Delaware Corporation, headquartered in Palo Alto, CA.” Appeal Brief filed February 23, 2015 (“App. Br.”) 3. 2 Final Action entered November 13, 2014 (“Final Act.”) 2-12; and the Examiner’s Answer entered June 19, 2015 (“Ans.”) 2-17. Appeal 2015-007445 Application 13/643,016 § 1.142(b) as being drawn to a non-elected invention.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The subject matter of the claims on appeal relates to “digital printing compositions.” Spec.4 1,1. 4. These digital printing compositions include a colorant and a polymerizable and/or crosslinkable carrier that serves as a medium for suspending the colorant therein. Spec. 2,11. 18-20. The polymerizable and/or crosslinkable carrier is “crosslinked and/or polymerized (which may be the result of extensive crosslinking) in the presence of a charged species [produced from a corona generator]” and “may be a liquid, a solid, or a phase between a liquid and a solid (such as, e.g., a paste) depending, at least in part, upon the digital printing system[s] to be used.” Spec. 2,11. 7-10 and 3,11. 28-29. This polymerizable or crosslinkable carrier includes “a hydrocarbon having at least one degree of unsaturation.” Spec. 4,11. 20-22. Some specific examples of hydrocarbons that may be used in the digital printing compositions are oils, such as linseed oil, hydrocarbons having one or more conjugated unsaturated bonds, ketones, and fluorocarbons, such as TEFLON® and chlorinated polymers (e.g., polyvinyl chloride). Spec. 5,1. 10-7,1. 2. 3 Non-Final Action entered July 31, 2014 (“Non-Final Act.”) 2; and Reply Brief filed August 6, 2015 (“Reply Br.”) 2. 4 WO 2011/136811 A1 published November 3, 2011, is used as the Specification of the above-identified application (“Spec.”). 2 Appeal 2015-007445 Application 13/643,016 Although “the hydrocarbon alone typically constitutes the medium of the carrier,” “[i]n some cases, it may be desirable to add other non-reacting oil-based components to the carrier.” Spec. 7,11. 12-14. These hydrocarbons are capable of being crosslinked and/or polymerized in the presence of charged species selected from, for example, “any molecular species having an electrical charge, such as, e.g., radicals, radical ions, carbenes, cations, anions, peroxides, acids, and bases.” Spec. 16,11. 21-23. Numerous non-limiting examples of these molecular species are described at pages 16 and 17 of the Specification. In addition to the carrier and pigment, the digital printing compositions may also include “other additives, such as, e.g., binder[s], solvents, surfactants, [dispersants], etc.” Spec. 3,11. 10-18, more specifically, Spec. 3,11. 15-18. These digital printing compositions may be used as “fixer or gloss enhancer, an ink, or a toner.” Spec. 3,11. 8-9. Details of the appealed subject matter are recited in representative claims 1, 2, 3, 4, 7, 16, and 17,5 which are reproduced below from the Claims Appendix of the Appeal Brief (with disputed limitations italicized): 1. A digital printing composition, comprising: a carrier, including: up to 10 wt% solvent; up to 5 wt% binder; and a hydrocarbon remaining balance, said hydrocarbon having at least one unsaturated bond, the hydrocarbon being configured to at least one of polymerize or crosslink in the presence of a charged species produced from a corona generator; and a colorant. 5 Appellants separately argue claims 1, 3, 4, 7, 16, and 17 on appeal. App. Br. 9-30. Thus, we limit our discussion to claims 1, 3, 4, 7, 16, and 17 pursuant to 37 C.F.R. § 41.37(c)(l)(iv) (2013). The remaining claims on appeal stand or fall with their parent claims. Id. 3 Appeal 2015-007445 Application 13/643,016 2. The digital printing composition as defined in claim 1, wherein the colorant is dispersed in the carrier and is selected from the group consisting of a dye, a pigment, and combinations thereof. 3. The digital printing composition as defined in claim 2, wherein the colorant is a pigment, and wherein the digital printing composition further comprises a dispersant that is at least partially soluble in an oil, the dispersant being selected from the group consisting of anionic dispersants, cationic dispersants, amphoteric dispersants, non-ionic dispersants, polymeric dispersants, oligomeric dispersants, crosslinking dispersants, and combinations thereof 4. The digital printing composition as defined in claim 2, wherein the pigment is selected from the group consisting of organic pigments, inorganic pigments, metallic pigments, and opalescent pigments. 7. The digital printing composition as defined in claim 1, wherein the hydrocarbon is selected from the group consisting of an oil including an unsaturated fatty acid, a glyceride, and combinations thereof. 16. The digital printing composition as defined in claim 3, wherein the pigment is selected from the group consisting of organic pigments, inorganic pigments, metallic pigments, and opalescent pigments. 17. The digital printing composition as defined in claim 3, wherein: i) the at least one unsaturated bond of the hydrocarbon is conjugated, and wherein the at least one unsaturated bond is selected from the group consisting of a diene, an enone, and a terminal olefin; ii) the hydrocarbon is selected from the group consisting of an oil including an unsaturated fatty acid, a glyceride, and combinations thereof; or 4 Appeal 2015-007445 Application 13/643,016 iii) the hydrocarbon is halogenated, or includes a ketone, or combinations thereof. App. Br. 31-32, 34-35, Claims Appendix. The Examiner maintains, and Appellants seek review of, the following grounds of rejection: 1. Claims 1-9, 16-18, 21, and 22 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicants regard as their invention; 2. Claims 1, 2, 5, 9, and 21-23 under 35 U.S.C. § 102(b) as anticipated by Sawamura (US 5,472,490 issued Dec. 5, 1995); 3. Claim 4 under 35 U.S.C. § 102(b) as anticipated by Sawamura, as evidenced or explained by Lin (US 5,281,261 issued Jan. 25, 1994); 4. Claims 7 and 18 under 35 U.S.C. § 102(b) as anticipated by Sawamura, as evidenced or explained by Vereshchagin (Journal of The American Oil Chemists’ Society, “The Triglyceride Composition of Linseed Oil,” Vol. 42, 970-974 (Nov. 1965)); 5. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over Sawamura in view of Schuetzle (US 2014/0250770 A1 published Sept. 11, 2014, and filed Leb. 27, 2014) and Sano (US 6,395,079 B1 issued May 28, 2002); 6. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Sawamura in view of Schuetzle, Sano, and Lin; 7. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Sawamura in view of Schuetzle, Sano, Lin, and Vereshchagin; and 5 Appeal 2015-007445 Application 13/643,016 8. Claims 1, 2, 5, 6, 8, 9, and 18 under 35 U.S.C. § 103(a) as unpatentable over Anderson (US 6,372,841 B1 issued Apr. 16, 2002). Final Act. 2-12; Ans. 2-17; App. Br. 8; Reply Br. 3. DISCUSSION Upon consideration of the evidence relied upon by the Examiner and Appellants in light of each of Appellants’ contentions,6 we find no reversible error in the Examiner’s rejections of 1-9, 16-18, and 21-23 under 35 U.S.C. §§ 102(b) and 103(a), but find reversible error in in the Examiner’s rejection of claims 1-9, 16-18, 21, and 22 under 35 U.S.C. § 112, second paragraph.7 Accordingly, we only sustain the Examiner’s §§ 102(b) and 103(a) rejections of the above claims substantially for the reasons set forth in the Final Action and the Answer. We add the following primarily for emphasis and completeness. 6 Any new arguments raised in the Reply Brief, which could have been raised in the Appeal Brief, will not be considered. 37 C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (explaining that under the previous rules, which are similar to the current rules, “the reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not”). 7 To prevail in appeal to this Board, Appellants must adequately explain or identify reversible error in the Examiner’s §§ 112, 102(b), 103(a) rejections. See 37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011). 6 Appeal 2015-007445 Application 13/643,016 Rejection 1 (35 U.S.C. § 112, second paragraph) The Examiner has rejected claims 1-9, 16-18, 21, and 22 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicants regard as their invention. Final Act. 3. According to the Examiner, the phrases “up to 10 wt.% solvent,” “up to 5 wt.% binder,” and “hydrocarbon remaining balance” in claim 1 are indefinite because the claim does not clearly indicate whether the percentages or remaining balance of the recited solvent, binder, and hydrocarbon are relative to the recited carrier or the claimed digital printing composition. Id. However, the Examiner’s analysis is flawed. The Examiner has failed to take into consideration the context in which these phrases are used in claim 1. That is, claim 1, by virtue of reciting the solvent, binder, and hydrocarbon, with the hydrocarbon, the last component, representing a remaining balance, as the ingredients of a carrier, implies that the percentages of the solvent and the binder and the remaining balance of the hydrocarbon are based on the total amount of the carrier. Phillips v. A WH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he context in which a term is used in the asserted claim can be highly instructive.”). Accordingly, we reverse the Examiner’s rejection of claims 1-9, 16- 18, 21, and 22 under 35 U.S.C. § 112, second paragraph.8 8 In the event of further prosecution, the Examiner is advised to determine whether claims 1-9, 16-18, 21, and 22 violate the written description requirement of 35 U.S.C. § 112, first paragraph. Our quick perusal of the content of the Specification does not show written descriptive support for a carrier containing “up to 10 wt% solvent,” “up to 5 wt% binder,” and “a hydrocarbon remaining balance” as recited in claim 1. According to page 3, 7 Appeal 2015-007445 Application 13/643,016 Rejection 2 (35 U.S.C. § 102(b)) As evidence of anticipation of the subject matter recited in claims 1, 2, 5, 9, and 21-23 under 35 U.S.C. § 102(b), the Examiner relies upon the disclosure of Sawamura. Final Act. 3. The Examiner finds, and Appellants do not dispute, that Sawamura discloses an ink composition9 comprising a colorant and a carrier (a vehicle) containing linseed oil10 (corresponding to the recited hydrocarbon) and a resin. Compare Final Act. 3 with App. Br. 14; see also Sawamura, col. 4,11. 21-25 and 53-57. The Examiner also finds, and Appellants do not dispute, that the linseed oil taught by Sawamura, like the recited hydrocarbon, has “at least one unsaturated bond” and is “configured to at least one of polymerize or crosslink in the presence of a charged species produced from a corona generator” as required by claim 1. Compare Final Act. 4 with App. Br. 14-16; see also Spec. 5,1. 19 and 23, 1.21 (identifying linseed oil as one of a myriad of hydrocarbons having at least unsaturated bond and having the capability of being polymerized and/or crosslinked in the presence of any charged species that can be lines 8 through 20, of the Specification, additives, such as binders, solvents, surfactants, and dispersants, like a carrier, are part of a digital printing composition. Nowhere does this passage in the Specification indicate that binders and solvents are part of the carrier as recited in claim 1. 9 According to page 3, lines 1 through 9, of the Specification, the digital printing composition includes an ink composition. 10 While Sawamura identifies “linseed oil” and “hydrocarbon” as “solvent,” Appellants identify “linseed oil” only as “hydrocarbon” in the Specification. Compare Sawamura, col. 4,11. 21-25 and 53-57, with Spec. 5,1. 19 and 23, 1. 21. Although Sawamura and Appellants label or designate “linseed oil” differently, they both require using it as a carrier ingredient in forming an ink composition (a digital printing composition). Compare Sawamura, col. 4,11. 21-25 and 53-57, with Spec. 5,1. 19 and 23,11. 20-22. 8 Appeal 2015-007445 Application 13/643,016 produced from a corona generator). However, Appellants disagree with the Examiner that Sawamura’s ink composition reads on the invention recited in claim 1 because of its inclusion of a resin in the vehicle (a carrier) of the ink composition. App. Br. 14-16. Thus, the dispositive question raised here is: Does the digital printing composition recited in claim 1 embrace Sawamura’s ink composition that contains the recited colorant and hydrocarbon, in addition to a resin? On this record, we answer this question in the affirmative. As noted earlier, claim 1 recites a digital printing composition “comprising” a colorant and a carrier “including” “up to 10 wt.% solvent,” “up to 5 wt.% binder,” and “a hydrocarbon remaining balance,” with the hydrocarbon having “at least one unsaturated bond” and a specific capability. The phrases “up to 10 wt.% solvent” and “up to 5 wt.% binder” in claim 1 require 0 to 10 wt.% solvent and 0 to 5 wt% binder in the recited carrier as explained by the Examiner at page 4 of the Final Action. See In re Mochel, 470 F.2d 638, 640 (CCPA 1972) (explaining that the term “up to” includes 0 as a lower limit). Although the amount of the binder used is either 0 or less than 5 wt.% in the recited carrier, claim 1 does not preclude the presence of additional amounts of the unrecited binder11 and other additives in the claimed digital printing composition. The transitional term “comprising” in claim 1 is open-ended and permits inclusion of additional amounts of the unrecited binder and/or resin in the claimed digital printing composition. See In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long 11 In the event of further prosecution, the Examiner is advised to determine whether one of ordinary skill in the art would have been led to the recited amount of a binder in a carrier of an ink composition. 9 Appeal 2015-007445 Application 13/643,016 as one of the monomers in the reaction is [claimed] propylene, any other monomer may be present, because the term ‘comprises’ permits the inclusion of other steps, elements, or materials.”). This interpretation is consistent with the Specification, which states that in addition to a carrier and a hydrocarbon, the claimed digital printing composition may further contain a dispersant to further enhance ink stability or “other additives, such as, e.g., binder[s], solvents, surfactants, etc.” Spec. 3,11. 10-18. Thus, regardless of how the resin taught by Sawamura is defined12 or how “including” and “a hydrocarbon remaining balance” in the context of the recited carrier are interpreted,13 we find no reversible error in the Examiner’s 12 Although both the Examiner and Appellants refer to dictionaries to define the meaning of “resin” used in Sawamura, the Examiner finds, and Appellants do not dispute, that Sawamura’s one of the exemplified resins, i.e., ethylene vinyl acetate copolymer resin, is a known anionic dispersant, Compare Final Act. 9, with App. Br. 21-22. This finding is consistent with Merriam Webster Dictionary and Oxford Dictionary relied upon by the Examiner at page 12 of the Answer. This finding is also consistent with the Examiner’s explanation at page 11 of the Answer that the US Ink Coldset Technical Dictionary relied upon by Appellants “states that resins are used as binders in ink compositions^] but “[does] not [state] that resins in ink compositions are necessarily[,] or function necessarily as[,] binders.” 13 Notwithstanding Appellants’ arguments to the contrary, we concur with the Examiner that the term “including” used in the context of the recited carrier is open-ended and does not preclude the presence of additional ingredients, such as a resin, in the recited carrier. See In re Bertsch, 132 F.2d 1014, 1019 (CCPA 1942) (“it is true that the word ‘comprising’ is usually in patent law held to be synonymous with the word ‘including’”); cf. Ex parte Davis, 80 USPQ 448, 449 (Bd. App. 1948) (“the word ‘comprising’ alone being synonymous with ‘including’”). The term “a hydrocarbon remaining balance” used in the context of the carrier recited in claim 1 does not limit the recited carrier to only those “consisting of’ 0 to 10 wt.% solvent, 0 to 5wt.% binder, and the recited hydrocarbon. When the phrase “a 10 Appeal 2015-007445 Application 13/643,016 finding that the digital printing composition, as recited in claim 1, includes Sawamura’s ink composition because the amount of the binder or the resin included in Sawamura’s ink composition can also be present in the digital printing composition recited in claim 1. Stated differently, the claimed digital printing composition (i.e., the final mixture), as broadly recited in claim 1, can contain a colorant, linseed oil, and a binder (or resin) in the same amount disclosed in Sawamura, even when the carrier (one of the ingredients of the claimed digital printing composition) is interpreted as having only the recited hydrocarbon, e.g., linseed oil, or the recited hydrocarbon (linseed oil) and less than 5 wt.% binder. Consistent with the open-ended transitional term “comprising” used in the context of the digital printing composition recited in claim 1, the Specification states that additives, such as binders, solvents, and surfactants, can be combined with a carrier and a colorant, to form the claimed digital printing composition (final mixture). Accordingly, we find no reversible error in the Examiner’s decision rejecting claims 1, 2, 5, 9, and 21-23 under 35 U.S.C. § 102(b) as anticipated by the disclosure of Sawamura. hydrocarbon remaining balance” is viewed together with the open-ended terminology “including” that is used to define the recited carrier, we interpret its meaning as a hydrocarbon remaining balance in a carrier that may or may not contain unrecited ingredients, such as the resin taught by Sawamura. See In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (“[Djuring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). This interpretation is consistent with page 7, lines 13 through 14, of the Specification, which states that a carrier can contain, in addition to the recited hydrocarbon, unrecited other non-reacting oil-based components. 11 Appeal 2015-007445 Application 13/643,016 Rejections 3 and 4 (35 U.S.C. § 102(b)) Appellants rely upon the same arguments advanced in connection with claim 1 to impart patentability to the subject matter recited in claims 4, 7, and 18. App. Br. 17-18. Accordingly, based on the same reasons stated above, we find no reversible error in the Examiner’s decision rejecting claim 4 under 35 U.S.C. § 102(b) as anticipated by Sawamura, as evidenced or explained by Lin and claims 7 and 18 under 35 U.S.C. § 102(b) as anticipated by Sawamura, as evidenced or explained by Vereshchagin. Rejection 5 (35 U.S.C. § 103(a)) As evidence of obviousness of the subject matter recited in claim 3 under 35 U.S.C. § 103(a), the Examiner relies upon the disclosure of Sawamura, as evidenced or explained by Schuetzle and San. Final Act. 9. Appellants do not dispute the Examiner’s finding that Sawamura discloses an ink composition comprising a colorant and a carrier containing linseed oil (corresponding to the recited hydrocarbon) and a resin, such as ethylene vinyl acetate (EVA). Compare Final Act. 9 with App. Br. 21-23. Nor do Appellants dispute the Examiner’s finding that EVA taught by Sawamura necessarily has the recited properties, namely being a dispersant and partially soluble in an oil, as evidenced or explained by San and Schuetzle, respectively. Compare Final Act. 9 (“As evidenced by Schuetzle et al[.], EVA is soluble in oil ([0083])[,] . . . [and] as evidenced by San, EVA is anionic dispersant.”) with App. Br. 21-23. Appellants contend that Schuetzle is not available as “prior art” because it was filed and published later than the filing date of the instant 12 Appeal 2015-007445 Application 13/643,016 application. App. Br. 21-23.14 In so contending, however, Appellants fail to recognize that later-issued patents and publications, such as Schuetzle, may be used to show the state of the art or facts existing on the date of the application in question under certain narrow circumstances. For example, a later publication may be used to show that, as of an application’s filing date, undue experimentation would have been required, In re Corneil, 347 F.2d 563, 568 (CCPA 1965), that a parameter absent from the claims was or was not critical, In re Rainer, 305 F.2d 505, 507 n.3 (CCPA 1962), that a statement in the specification was inaccurate, In re Marzocchi, 439 F.2d 220, 223 n.4 (CCPA 1971), that, at the time of the invention, the invention was inoperative or lacked utility, In reLanger, 503 F.2d 1380, 1391 (CCPA 1974), or that characteristics or properties of prior art products were known, In re Wilson, 311 F.2d 266, 268-69 (CCPA 1962). Here, we find no reversible error in the Examiner’s reliance on Schuetzle, a later filed patent application publication, to show the state of the art or facts existing on the date of the instant application. As is apparent from page 9 of the Final Action, the Examiner relies upon Schuetzle to explain or evince the intrinsic or inherent properties of EVA, one of the known ingredients, of the ink composition taught by the prior art, namely Sawamura, which were existing or known at the time of the invention. See Wilson, 311 F.2d at 269 (“As evidence of the characteristics of prior art foam products, however, we know of no reason in law why it [(namely, the DuPont publication, the date of which is later than Appellants’ filing date)] is not acceptable.”); see also In 14 Appellants also rely upon the same arguments advanced in connection with claim 1. App. Br. 22. However, we find these arguments unpersuasive for the reasoning already discussed above. 13 Appeal 2015-007445 Application 13/643,016 re Papesch, 315 F.2d 381, 391 (CCPA 1963) (explaining that even without any later or earlier published publication, “a compound and all of its properties are inseparable”). Appellants also contend that the claimed subject matter imparts “unexpected results over the prior art.” App. Br. 22. In support of this contention, Appellants refer to page 24 of the Specification to show that the claimed “digital printing composition provides good film forming and smear resistance.” Id. It is well established that the burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In reKlosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected result supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). On this record, we agree with the Examiner that Appellants fail to carry the burden of showing that the claimed subject matter as a whole imparts unexpected results. Ans. 9. In particular, Appellants fail to direct us to any meaningful side-by-side comparison in which the inventive composition was identical to a comparative prior art example except for the novel feature (the recited hydrocarbon) of the claimed invention. App. Br. 14 Appeal 2015-007445 Application 13/643,016 22. The Examiner correctly finds that the inventive experiment and comparative experiment provided at pages 23 and 24 of the Specification not only employ different hydrocarbons, but also employ different amounts of different dispersants. Thus, we cannot ascertain from this showing at pages 23 and 24 of the Specification whether the asserted improvement15 in film forming and smear resistant properties is due to the employment of the novel hydrocarbon, as alleged, and/or a different amount of a different dispersant. See In re Dunn, 349 F.2d 433, 439 (CCPA 1965) (“While we do not intend to slight the alleged improvements, we do not feel it an unreasonable burden on appellants to require comparative examples relied on for non-obviousness to be truly comparative. The cause and effect sought to be proven is lost here in the welter of unfixed variables.”). Nor do Appellants direct us to a meaningful showing that is reasonably commensurate in scope with the degree of protection sought by the claims on appeal. App. Br. 22. While the showing relied upon by Appellants is limited to a single inventive digital printing composition containing 5 wt. % of a cyan pigment, 94.5 wt. % of linseed oil, and 0.5 wt. of a dispersant known under the tradename SP 13940, claim 3 is not so limited. Ans. 9-10; see also In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the results were unexpected, Harris needed to 15 We also note that Appellants do not identify any averment relating to unexpected results in the Specification or in any other evidentiary submissions. See Geisler, 116 F.3d at 1471 (explaining that Geisler failed to carry the burden of establishing unexpected results because “Geisler made no such assertion [of unexpected results] in his application” or “submitted] any such statement [of unexpected results] through other evidentiary submissions, such as an affidavit or declaration” (citing In re Orfeo, 440 F.2d 439, 441 (CCPA 1971))). 15 Appeal 2015-007445 Application 13/643,016 show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims.”); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971))). Accordingly, we find no reversible error in the Examiner’s determination that a preponderance of the evidence leans heavily in favor of the obviousness of the subject matter recited in claim 3 within the meaning of 35 U.S.C. § 103(a). Rejections 6 and 7 (35 U.S.C. § 103(a)) Appellants rely upon the same arguments advanced in connection with claims 1 and 3 to impart patentability to the subject matter recited in claims 16 and 17. Accordingly, based on the same reasons stated above, we find no reversible error in the Examiner’s determination that a preponderance of the evidence leans heavily in favor of the obviousness of the subject matter recited in claims 16 and 17 within the meaning of 35 U.S.C. § 103(a). Rejection8 (35 U.S.C. § 103(a)) As evidence of obviousness of the subject matter recited in claims 1, 2, 5, 6, 8, 9, and 18 under 35 U.S.C. § 103(a), the Examiner relies upon the disclosure of Anderson. The Examiner finds, and Appellants do not dispute, that Anderson discloses an ink composition comprising about 5 to 95 wt. % of a non-aqueous solvent, such as a ketone, a polymer comprising styrene, 16 Appeal 2015-007445 Application 13/643,016 and a colorant. Compare Final Act. 11, with App. Br. 25-29; see also Anderson, col 1,11. 13-16, col. 3,11. 38-52, col. 4,1. 37, and col. 9,1. 24- col. 10,1. 5. The Examiner appears to identify the polymer comprising styrene as the hydrocarbon recited in claim 1 or the ketone as the hydrocarbon recited in claims 1 and 8.16 To the extent that the Examiner relies upon the ketone taught by Anderson as the hydrocarbon recited17 in claims 1 and 8, Appellants contend that the polymer comprising styrene taught by Anderson is a binder. App. Br. 26. Appellants also contend that Anderson does not teach or would not have suggested 0 to 5 wt. % binder, as required by claim 1. Id. However, because the amount of the ketone (corresponding to the more narrowly recited hydrocarbon in claim 8) present in the ink composition taught by Anderson can be about 5 wt.% to 95 wt.%, Anderson would have suggested using about 5 wt% of the polymer comprising styrene (identified by Appellants as a binder) its ink composition. In any event, claim 1, by virtue of using the transitional terms “comprising” and/or “including,” permits the 16 Rejected dependent claim 8 further limits independent claim 1 by reciting a ketone as one of the two recited hydrocarbons. 17 According to page 7, line 4, of the Specification, the hydrocarbon recited in claim 1 includes ketones. Consistent with this disclosure in the Specification, claim 8 also recites a ketone as one of the two recited hydrocarbons. The Examiner’s reliance upon Anderson for teaching the ketone recited in dependent claim 8 is also applicable to claim 1 that recites a broader hydrocarbon that includes the ketone recited in claim 8. See Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (explaining that when dependent claims “were found to have been obvious, the broader claims . . . must also have been obvious”). 17 Appeal 2015-007445 Application 13/643,016 presence of more than 5 wt. % of binder or a resin as explained above in the context of claim 1 rejected under 35 U.S.C. § 102(b). To the extent that the Examiner relies upon the polymer comprising styrene taught by Anderson as the hydrocarbon recited in claim 1, Appellants contend that such polymer is not the hydrocarbon recited in claim 1. However, we note that the term “hydrocarbon” recited in claim 1 does not exclude polymers as is apparent from page 7, lines 1-2, of the Specification. The polymer containing styrene taught by Anderson, like the hydrocarbon recited in claim 1, not only has at least one degree of unsaturation, i.e., at least one C=C bond, but also is susceptible to crosslinking via a crosslinking agent which appears to be encompassed by the broadly recited charged species. Compare Anderson, col. 9,1. 66-col. 10,1. 5, with claim 1 and Spec. 4,11. 20-26. 16,1. 4-26. Thus, it is reasonable for the Examiner to shift the burden to Appellants to show that the polymer containing styrene taught by Anderson is not encompassed by the hydrocarbon broadly recited in claim 1. In re Hallman, 655 F.2d 212, 215 (CCPA 1981) (Where there is reason to conclude that the prior art product is “capable of’ performing a claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed product from the prior art product.) However, on this record, Appellants do not carry such burden. Appellants also contend that the subject matter recited in claim 1 imparts unexpected results. However, as indicated supra, Appellants fail to demonstrate that the showing relied upon is reasonably commensurate in scope with the degree of protection sought by claim 1. Harris, 409 F.3d at 18 Appeal 2015-007445 Application 13/643,016 1344; Greenfield, 571 F.2d at 1189. Nor do Appellants demonstrate that the asserted improvement in film forming and smear resistant properties is due to the employment of the novel hydrocarbon as alleged, or a specific amount of an unclaimed dispersant as indicated supra. Dunn, 349 F.2d at 439. Accordingly, we find no reversible error in the Examiner’s determination that a preponderance of the evidence leans heavily in favor of the obviousness of the subject matter recited in claims 1, 2, 5, 6, 8, 9, and 18 within the meaning of 35 U.S.C. § 103(a). ORDER Upon consideration of the record, and for the reasons given, it is ORDERED that the decision of the Examiner to reject claims 1-9, 16-18, 21, and 22 under 35 U.S.C. § 112, second paragraph, is REVERSED; FURTHER ORDERED that the decision of the Examiner to reject claims 1, 2, 4, 5, 7, 9, 18, and 21-23 under 35 U.S.C. § 102 (a) is AFFIRMED; FURTHER ORDERED that the decision of the Examiner to reject claims 1, 2, 3, 5, 6, 8, 9, and 16-18 under 35 U.S.C. § 103(a) is AFFIRMED; and FURTHER ORDERED that no time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 19