Ex Parte Endo et al

Patent Trial and Appeal Board

Oct 29, 2018

13503476 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/503,476 04/23/2012
7055 7590 10/31/2018
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Toshihiro Endo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P48836 9726
EXAMINER
FAISON, VERONICAF
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIHIRO ENDO,
MASAKATSU ARAI, KENJI YAMADA,
KATSUMI KURIYAMA, ATSUSHI TANAKA,
KAZUYA KAWAKAMI, SHIN-ICHIRO SHIMURA,
SHOTARO KON, YOSHIAKI MATSUZAWA,
and KOHJI NOMURA
Appeal2018-000738
Application 13/503,476 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BRIAND. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claims 1 and 2, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter new grounds of rejection under 37 C.F.R.
§ 41.50(b).
1 The real party in interest is said to be RISO KAGAKU CORPORATION.
Supplemental Appeal Brief dated March 28, 2017 ("App. Br."), at 3.
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Application 13/503,476
The claimed subject matter is directed to an oil-based inkjet ink comprising
a pigment, a dispersant, and a water-insoluble organic solvent, wherein a calcium
content in the ink is 8 ppm or less and a magnesium content in the ink is 3 ppm or
less.
According to the Appellants, when an oil-based inkjet ink is used for a long
time, solids will accumulate in the vicinity of the nozzles of the inkjet head,
hindering normal ejection of the ink. Spec. 2, 11. 1-3. The Appellants disclose:
Conventionally, causes of this ink clogging are believed to be
thickening of the ink or agglomeration of the pigment due to
condensation of the ink in the nozzles, generation of a significant
amount of coarse particles during dispersion, agglomeration caused by
temporal change due to poor stability of the dispersed pigment, etc.
Spec. 2, 11. 4--9.
The Appellants are said to
have found through intensive study that the main cause of the
agglomeration of solid in the vicinity of the nozzles is actually a
water-soluble metal salt, although the ink is an oil-based ink, and
components dissolved in a slight amount of water contained in raw
materials of the ink ( a pigment, a resin, a solvent and other additives)
accumulate in the vicinity of a member that contacts the ink, i.e., the
nozzles, as solids along with evaporation of the moisture.
Spec. 2, 1. 20-3, 1. 4.
Among the components forming an ink, a pigment, in particular, is said to
contain a significant amount of calcium and magnesium ( collectively referred to as
"polyvalent metals"). Spec. 4, 1. 21-5, 1. 1. The Appellants disclose that various
methods are used to reduce the polyvalent metal content in the ink. Spec. 5, 11. 11-
12. Preferred examples are said to include washing raw materials of the ink, such
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Application 13/503,476
as the pigment, with ion-exchanged water2 or contacting the prepared ink with a
substance, such as an ion-exchange resin, that can remove the polyvalent metals
from the ink. Spec. 5, 11. 12-15; id. at 6, 11. 6-7.
Independent claim 1 is reproduced below from the Claims Appendix to the
Supplemental Appeal Brief. 3
1. An oil-based inkjet ink comprising at least a pigment, a
dispersant and an organic solvent, wherein a calcium content in the
ink is 8 ppm or less, and a magnesium content in the ink is 3 ppm or
less, and the organic solvent is water-insoluble.
App. Br. 17.
The Examiner maintains the following grounds of rejection on appeal:
(1) claims 1 and 2 under 35 U.S.C. § I03(a) as obvious over JP 064; 4
(2) claims 1 and 2 under 35 U.S.C. § I03(a) as obvious over Endo; 5 and
(3) claims 1 and 2 under 35 U.S.C. § I03(a) as obvious over WO 633. 6
B. DISCUSSION
1. Rejections ( I }----(3)
The Examiner finds that JP 064 discloses an oily ink for ink-jet recording
comprising a solvent composed mainly of an ester solvent and an alcohol solvent, a
pigment dispersing agent, and a pigment. Ans. 3. 7 Likewise, the Examiner finds
that Endo discloses a non-aqueous ink comprising a pigment, a dispersing agent,
2 See Spec. 16 ( comparing the rate of ejection failure in inks containing washed
pigment with the rate of ejection failure in inks containing unwashed pigment).
3 According to the Appellants, the Supplemental Appeal Brief corrects the
reference to "water-soluble" organic solvent in the original Appeal Brief dated
March 9, 2017. App. Br. 1.
4 JP 2005-290064 dated October 20, 2005 ("JP 064").
5 US 2009/0196994 Al, published August 6, 2009 ("Endo").
6 WO 97/15633, published May 1, 1997 ("WO 633").
7 Examiner's Answer dated September 8, 2017.
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and a water-insoluble solvent. Ans. 3--4; see also Endo ,r 2 (disclosing that non-
aqueous inks include oil inks). The Examiner makes similar findings as to WO
633. Ans. 4--5.
The Examiner finds that JP 064, Endo, and WO 633 are silent as to the
calcium content and the magnesium content of the disclosed inks. Ans. 3, 4, 5.
Nonetheless, the Examiner finds that Suzuki8 teaches that "it is preferable to
remove organic and inorganic impurities of pigments for the prevention of
clogging and kogation."9 Ans. 3, 4, 5 ( citing Suzuki, col. 8, 11. 57-65).
Based on the teachings in Suzuki, the Examiner concludes that
[I]t would be obvious to one of ordinary skill in the art to want an
[sic] lower amount of calcium and magnesium within applicant's
claimed range as it is known in the art that these elements cause
clogging and kogation which is undesirable as it will affect the print
quality of the ink composition.
Ans. 3, 4, 5.
Significantly, Suzuki is not included in the statement of any of the rejections
on appeal. For that reason, the obviousness rejections on appeal are not sustained.
See In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) ("Where a reference is
relied on to support a rejection, whether or not in a 'minor capacity,' there would
8 US 6,051,645, issued April 18, 2000 ("Suzuki").
9 The Examiner also relies on Suzuki to establish that the calcium and magnesium
content of the inks disclosed in JP 064, Endo, and WO 633 is within the claimed
range. Ans. 3, 4, 5. To the extent that the Examiner is relying on Suzuki to show
that the inks disclosed in JP 064, Endo, and WO 633 inherently have the claimed
calcium and magnesium content, the Examiner has not provided a sufficient factual
basis to support a finding that calcium and magnesium have been removed from
the pigments in the inks of JP 064, Endo, and/or WO 633, as disclosed in Suzuki.
See App. Br. 10.
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appear to be no excuse for not positively including the reference in the statement of
the rejection.").
2. New grounds of rejection
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over JP 064 10
in view of Suzuki and the Appellants' "Description of the Related Art." 11 Claims 1
and 2 are rejected under 35 U.S.C. § 103(a) as unpatentable over Endo and WO
633, both in view of Suzuki and the Appellants' "Description of the Related Art."
We adopt the Examiner's factual findings with respect to JP 064, Endo, WO
633, and Suzuki. Ans. 3-5. Based on the teachings of Suzuki, we concur with the
Examiner that it would have been obvious to one of ordinary skill in the art to
lower the amount of calcium and magnesium in the oil-based inkjet inks of JP 064,
Endo, and WO 633 to reduce clogging in the nozzles of an ink-jet head. See
Suzuki, col. 8, 11. 57----62.
The Appellants argue that Suzuki, in contrast to JP 064, Endo, and WO 633,
discloses an aqueous ink. App. Br. 12. The Appellants argue that "[i]n aqueous
inks, water is used as the main solvent and would be the main evaporating
component." App. Br. 12. As water is evaporated in aqueous inks, the Appellants
argue that "clogging occurs in the locations where the water evaporates ( such as a
tip of a nozzle), due to scale buildup caused by the water-soluble salt of metal ions
such as calcium ions and magnesium ions." 12 App. Br. 12. The Appellants argue
10 We rely on the translated Abstract of JP 064, which is of record in the instant
Application. The Abstract of JP 064 does not identify the specific pigment(s)
contained in the ink. Therefore, claim 2, which recites that "the pigment is copper
phthalocyanine," (App. Br. 17), is not included in this rejection.
11 Spec. 1, 1. 8-2, 1. 19.
12 The Appellants direct our attention to page 162 of Inkjet Technology and
Product Development Strategies to show that calcium causes scale buildup in
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that "[ n ]othing in the cited art suggests that the concerns of an aqueous solvent-
based ink are the same as those for a non-aqueous solvent-based ink, and the
examiner has provided no reasonable explanation for why these teachings would
be combined." App. Br. 12.
In the Appellants' Specification in the section entitled "Description of the
Related Art," the Appellants disclose that at the time of the Appellants' invention it
was known in the art that "when an oil-based inkjet is used for [a] long time, solids
will accumulate in the vicinity of the nozzles of the inkjet head, and this hinders
normal ejection of the ink and may result in defective images." Spec. 2, 11. 1--4;
see also Ans. 14.
The ink disclosed in Suzuki is said to prevent clogging in the leading end of
a nozzle. Suzuki, col. 2, 11. 9-10. Suzuki discloses:
It is preferable to remove organic and inorganic impurities from
[the disclosed] pigments for the purpose of prevention of clogging,
and kogation on a heater in thermal ink jet method. In particular, it is
desired that the concentration of calcium, iron, silicon, magnesium,
phosphorus, zinc and the like in ink is 5 ppm or less. Such removal
can be conducted by washing with water, ultra filtration method, ion
exchange treatment, adsorption by activated charcoal or zeolite, and
the like.
Suzuki, col. 8, 11. 57-65 ( emphasis added).
Significantly, the Appellants do not direct us to any evidence establishing
that the pigments used in Suzuki's inkjet inks are different from the pigments used
locations where ink evaporates. App. Br. 12. According to the Appellants, a copy
of at least page 162 of the document was provided to the Examiner during
prosecution and is part of the written record. See Appellants' Response dated
August 26, 2016, at 4 (indicating that a copy of page 162 of Inkjet Technology and
Product Development Strategies is attached to the Response). However, we have
been unable to locate the document in the Official Application file, and a copy of
the document is not included in the Evidence Appendix to the Appeal Brief.
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in oil-based inkjet inks. See Suzuki, col. 7, 11. 61---63 (disclosing that "[a]s the
pigment used as a coloring material in ink jet recording inks of the present
invention, any of inorganic pigment and organic pigment can be used"). Thus, one
of ordinary skill in the art would have found Suzuki's teachings useful in solving
the known problem of clogged print head nozzles caused by oil-based inkjet inks.
In an attempt to rebut the prima facie case of obviousness, the Appellants
argue that "the presently claimed invention produces unexpectedly good results, as
evidenced by the specification." App. Br. 14. For support, the Appellants direct
our attention to "the demonstrated rate of ejection failure, as shown in Table 2,"
and more specifically the results of Examples 1 and 6 and Comparative Examples
1 and 3. App. Br. 14.
To the extent that the Specification demonstrates that the claimed invention
provides an improved rate of ejection failure, the Specification does not describe
the results as "unexpected." See In re Freeman, 474 F.2d 1318, 1324 (CCPA
1973) (in order for a showing of "unexpected results" to be probative evidence of
non-obviousness, the applicant must establish that the difference between the
results obtained through the claimed invention and those of the prior art would not
have been expected by one skilled in the art at the time of invention).
Moreover, the Appellants' showing is not commensurate in scope with the
claims, which encompass substantially more oil-based inkjet inks than Examples 1
and 6 in Table 2. See In re Tiffin, 448 F.2d 791, 792 (CCPA 1971) ("objective
evidence of non-obviousness must be commensurate in scope with the claims
which the evidence is offered to support").
On balance, a preponderance of the evidence weighs in favor of a conclusion
of obviousness.
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C. DECISION
The Examiner's decision to reject claims 1 and 2 under 35 U.S.C. § 103(a)
as obvious over JP 064 is reversed.
The Examiner's decision to reject claims 1 and 2 under 35 U.S.C. § 103(a)
as obvious over Endo is reversed.
The Examiner's decision to reject claims 1 and 2 under 35 U.S.C. § 103(a)
as obvious over WO 633 is reversed.
Claim 1 is rejected under 35 U.S.C. § I03(a) as unpatentable over JP 064 in
view of Suzuki and the Appellants' "Description of the Related Art."
Claims 1 and 2 are rejected under 35 U.S.C. § I03(a) as unpatentable over
Endo in view of Suzuki and the Appellants' "Description of the Related Art."
Claims 1 and 2 are rejected under 35 U.S.C. § I03(a) as unpatentable over
WO 633 in view of Suzuki and the Appellants' "Description of the Related Art."
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). That section provides that the Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of the
appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the prosecution will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record ....
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).
REVERSED; 37 C.F.R. § 4I.50(b)
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