Ex Parte EVERHARDUS et al

Patent Trial and Appeal Board

May 23, 2018

14465917 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/465,917 08/22/2014 Roelof H. EVERHARDUS
127226 7590 05/25/2018
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
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.
0142-0826PUS1 8199
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
05/25/2018 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROELOF H. EVERHARDUS, GERARDUS C. P. VERCOULEN,
JOHANNES F. J. VAN GAGELDONK, JOHAN P. J. LENDERS, and
ANTONIUS P. M. M. VAN ROY
Appeal2017-008153
Application 14/465,917
Technology Center 1700
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-21. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the applicant, OCE-TECHNOLOGIES B.V., which, according
to the Appeal Brief, is the real party in interest. Appeal Brief filed
November 16, 2016 ("App. Br."), 1.
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STATEMENT OF THE CASE
Claim 1, the sole independent claim, illustrates the subject matter on
appeal and is reproduced below with contested language italicized:
1. Ink composition, suitable for being ejected from an inkjet
marking device at an operating temperature of between l5°C
and 50°C, the ink composition comprising:
1--40 weight% of a water-dispersible resin;
0.5-15 weight% of a water-dispersible colorant;
20-80 weight% water;
0-7 5 weight% of a cosolvent;
0.01-3 weight% of a mixture of surfactants
comprising at least one surfactant of a first type being an
ethoxylated acetylene glycol and at least one surfactant of a
second type being a silicone surfactant;
wherein all amounts are relative to the total ink
composition, and
wherein the ink composition has a dynamic surface
tension of below 35 mN/m measured at 10 Hz and a static
surface tension measured at 0.1 Hz of above 21 mN/m both
determined at the operating temperature with the bubble
pressure method,
wherein the amount of the mixture of surfactants is
sufficient to obtain said dynamic and static surface tensions.
App. Br. Claims Appendix 1 (emphasis and formatting added).
The Examiner sets forth the following rejections in the Final
Office Action entered June 16, 2016 ("Final Act."), and maintains the
rejections in the Examiner's Answer entered March 10, 2017
("Ans."):
I. Claims 1-7, 9-15, 18, and 21under35 U.S.C. § 103(a) as
unpatentable over Nishiki et al. (US 2011/0236649 Al, published September
29, 2011);
II. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Nishiki
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in view of Sloan (US 2012/0046378 Al, published February 23, 2012);
III. Claims 1-17 under 35 U.S.C. § 103(a) as unpatentable over Ma
et al. (US 2007/0120928 Al, published May 31, 2007) in view ofNishiki;
and
IV. Claims 8 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Ma in view ofNishiki and King et al. (US 2008/0006175 Al, published
January 10, 2008).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejections of
claims 1-21under35 U.S.C. § 103(a) for the reasons set forth in the Final
Action, the Answer, and below.
Rejection I
Appellant argues claims 1-7, 9-15, 18, and 21 as a group. App. Br.
9-13. We accordingly select claim 1 as representative, and decide the
appeal as to claims 1-7, 9-15, 18, and 21 based on claim 1 alone. 37 C.F.R.
§ 41.37(c)(l)(iv).
Nishiki discloses an ink composition for ink jet recording that
includes a resin emulsion (water-dispersible resin), pigment (water-
dispersible colorant), water, polyhydric alcohol monoalkyl ether ( cosolvent),
and one or more surfactants. i-fi-12, 10, 16, 17, 63. Nishiki discloses that
preferred surfactants include acetylene glycol surfactants such as Surfynol
104, 465, and 485, and polyether-modified siloxane surfactants such as
BYK-348 (silicone surfactant). i-fi-162, 63. Appellant does not dispute the
Examiner's finding that Surfynol 465 and 485 are ethoxylated acetylene
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glycol surfactants. Compare Final Act. 2, with App. Br. 9--13. Nishiki
exemplifies ink compositions that include a combination of Surfynol 104
and BYK 348 surfactants. Nishiki i-f 99 (Table 2).
Nishiki discloses that the surface tension of the ink composition
described in the reference "is preferably adjusted to 20 to 40 mN/m," which
the Examiner determines overlaps the ranges recited in claim 1. Nishiki
i-f 63. Final Act. 2. The Examiner further determines that "[c]hanging the
amount of each surfactant added will result in a change in the surface
tension," as evidenced by Ma's disclosure that a difference in dynamic
surface tension between two ink compositions formulated to be printed
adjacent to each other, referred to as the dynamic surface tension gradient,
"is substantially achieved by the type, and concentration of the hydrocarbon
surfactant employed" in each of the ink compositions. Ans. 6; see also Ma
,-r,-r 18, 19.
The Examiner concludes that, in view ofNishiki's disclosure that the
surface tension can be "adjusted," it would have been obvious to one of
ordinary skill in the art to optimize (or adjust) the surface tension ofNiski's
ink composition through routine experimentation to a desired level, such as
the level recited in claim 1, by altering the type and amount of each
surfactant included in the composition, as evidenced by Ma. Final Act. 2;
Ans. 4, 6.
Appellant argues that "the Examiner has failed to show that surface
tension was recognized as a result-effective variable before determining that
optimum ranges of said variable might be characterized as routine
experimentation." App. Br. 11.
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However, as the Examiner correctly finds (Ans. 6), Ma's disclosure
that the difference in dynamic surface tension between two ink compositions
is determined by the type and concentration of hydrocarbon surfactant each
composition would have indicated to one of ordinary skill in the art that the
type and amount of hydrocarbon surfactant (variables) in each ink
composition determine (affect) the dynamic surface tension (property) of the
composition, establishing that the type and amount of hydrocarbon
surfactant in an ink composition are result-effective variables. In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the
prior art that a property is affected by the variable is sufficient to find the
variable result-effective.")
One of ordinary skill in the art reasonably would have been led to
optimize the dynamic surface tension of an ink composition as disclosed in
Nishiki by varying the type and amount of hydrocarbon surfactant included
in the composition, as evidenced by Ma-particularly in view ofNishik's
disclosure of "adjusting" the dynamic surface tension-and in so doing,
would have arrived at an optimal dynamic surface tension, such as that
recited in claim 1, through nothing more than routine experimentation. 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.").
As discussed below, because Appellant does not demonstrate the criticality
of the dynamic surface tension recited in claim 1, Appellant's arguments are
unpersuasive of reversible error. In re Woodruff, 919 F.2d 1575, 1578 (Fed.
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Cir. 1990) (indicating that in cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims, the applicant must show that the particular range is critical, generally
by showing that the claimed range achieves unexpected results relative to the
prior art range.).
Appellant argues that the Declaration of Johannes F. J. Van
Gageldonk submitted to the Patent and Trademark Office on May 4, 2016
("second Van Gageldonk Declaration") establishes that the dynamic surface
tension recited in claim 1 "is not inherent to Nishiki." App. Br. 9-11.
Appellant contends that Nishiki's experimental examples "(i) do not include
the combination of an ethoxylated acetylene glycol and a silicone surfactant
and/or (ii) do not achieve the claimed dynamic surface tension," as
demonstrated by the Declaration of Johannes F. J. Van Gageldonk submitted
to the Patent and Trademark Office on January 8, 2016 ("first Van
Gageldonk Declaration"). App. Br. 9. Appellant further argues that even if
the ink compositions of two ofNishiki's experimental examples are slightly
modified "to bring them into conformity with the presently claimed ink
compositions," such compositions still do not exhibit the claimed surface
tension. App. Br. 10. Appellant refers to Ex 6, Ex 6 alt, CEx 2, and CEx 2
alt of Table B of the second Van Gageldonk Declaration in support of these
arguments. App. Br. 9-11.
Appellant asserts that Nishiki therefore does not disclose all the
limitations of claim 1, and argues that the Examiner does not provide a
rationale that supports the conclusion that it would have been obvious to one
of ordinary skill in the art to arrive at the ink composition of claim 1. App.
Br. 11-12.
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However, as discussed above, the Examiner's position is not based on
inherency, but rather is based on optimization of result-effective variables
(type and amount of hydrocarbon surfactant) to arrive at a dynamic surface
tension as recited in claim 1.
The experimental data provided in Table B of the second Van
Gageldonk Declaration were generated by reproducing (with some
modifications) the ink compositions of Example 6 and Comparative
Example 2 ofNishiki, which include an acetylene glycol surfactant
(Surfynol 1042), rather than an ethoxylated acetylene glycol surfactant as
recited in claim 1. As Appellant points out, the second Van Gageldonk
Declaration indicates that these ink compositions did not exhibit a dynamic
surface tension of below 35 mN/m as recited in claim 1.
However, in view ofNishiki's explicit disclosure that ethoxylated
acethylene glycol surfactants such Surfynol 465 and 485, and polyether-
modified siloxane surfactants such as BYK-348, are preferred surfactants for
the ink composition described in the reference, one of ordinary skill in the
art would have been led to utilize such preferred surfactants in an ink
composition as described in Nishiki (and recited in claim 1). The ordinarily
skilled artisan would have arrived at suitable amounts of each surfactant to
include in the composition to achieve a desired dynamic surface tension
("adjust" the dynamic surface tension), such as that recited in claim 1,
through nothing more than routine experimentation, as evidenced by Ma.
Applied Materials, 692 F.3d at 1297; Boesch, 617 F.2d at 276; Aller, 220
F.2d at 456.
Although the ink compositions of Ex 6 alt and CEx 2 alt, which
2 Second Van Gageldonk Declaration 1.
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include an ethoxylated acethylene glycol surfactant (Surfynol 440) and a
polyether-modified siloxane surfactant (BYK-348), did not exhibit a
dynamic surface tension of below 35 mN/m as recited in claim 1, one of
ordinary skill in the art nonetheless would have arrived at an ink
composition including such surfactants having a dynamic surface tension of
below 35 mN/m through nothing more than routine optimization of the
amount of surfactants in the composition, as evidenced by Ma.
Nishiki may not exemplify ink compositions that include both an
ethoxylated acetylene glycol surfactant and a silicone surfactant, and exhibit
a dynamic surface tension below 35 mN/m, as the first Van Gageldonk
Declaration indicates. However, Nishiki's broader disclosure of a
preference for such surfactants coupled with the recognition in the art that
the type and amount of hydrocarbon surfactant in an ink composition affects
the dynamic surface tension, would have led one of ordinary skill in the art
to an ink composition including Nishiki' s preferred surfactants, and the
ordinarily skilled artisan would have arrived at a suitable dynamic surface
tension, such as below 35 mN/m as recited in claim 1, through nothing more
than routine experimentation.
Appellant argues that the multiple comparative examples in the
second Van Gageldonk Declaration based on Nishiki and Ma and the
multiple inventive examples demonstrate that the claimed invention is
unexpectedly superior "[ w ]hen comparing improved spreading behavior (dot
gain)." App. Br. 9; second Van Gageldonk Declaration Tables Band C.
Appellant argues that "combining a siloxane surfactant (e.g., BYK) and an
ethoxylated acetylene glycol surfactant (Dynol) shows a synergistic effect
that, combined with the claimed surface tension behavior of the ink
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compositions, provides improved dot-gain on a wide range of media." App.
Br. 10.
The burden of analyzing and explaining evidence to support an
assertion of non-obviousness rests with the Appellant. In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972). To meet this burden, an appellant can
demonstrate that the claimed invention imparts results that would have been
unexpected by one of ordinary skill in the art at the time of the invention
relative to the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388,
392 (Fed. Cir. 1991) ("[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.").
Contrary to Appellant's arguments, the second Van Gageldonk
Declaration does not include any data comparing the spreading behavior (dot
gain) of Appellant's inventive ink compositions to that of ink compositions
disclosed in Nishiki or Ma. Appellant and the Declarant therefore do not
identify any showing directed to a comparison of spreading behavior (dot
gain) between the claimed ink compositions and those of the closest prior
art. It follows that Appellant does not meet his burden of demonstrating that
the ink composition of claim 1 provides unexpected results.
Considering the totality of the evidence relied upon in this appeal, a
preponderance of the evidence weighs in favor of the Examiner's conclusion
of obviousness. We accordingly sustain the Examiner's rejection of claims
1-7, 9-15, 18, and 21under35 U.S.C. § 103(a).
Rejection II
To address this rejection, Appellant relies on the arguments presented
for Rejection I (discussed above), and argues that the additional reference
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applied in this rejection-Sloan-fails to cure the deficiencies ofNishiki.
App. Br. 13. Because we are unpersuaded of reversible error in Rejection I
for the reasons discussed above, Appellant's position as to this rejection is
also without merit. We accordingly sustain the Examiner's rejection of
claim 20 under 35 U.S.C. § 103(a).
Rejection III
Appellant argues claims 1-17 as a group. App. Br. 14--19. We
accordingly select claim 1 as representative, and decide the appeal as to
claims 1-7, 9-15, 18, and 21 based on claim 1 alone. 37 C.F.R.
§ 41.37(c)(l)(iv).
Ma discloses an aqueous ink composition (referred to as an ink) for
inkjet printing that comprises a polymeric binder (water-dispersible resin),
colorant, water, water-soluble organic solvent (cosolvent), and a surfactant
package that includes a fluorocarbon surfactant and a hydrocarbon
surfactant. i-fi-f l, 7, 23, 55-57, 62 (Table 1). Ma discloses that the
hydrocarbon surfactant provides the ink composition with relatively low
dynamic surface tension, and discloses that suitable hydrocarbon surfactants
include Surfynol 440, an ethoxylated acetylene glycol. i-fi-139, 45; Spec. 33
(Table 1 ). Ma discloses that additional components-such as surfactants-
can be added to the ink composition to optimize its properties for specific
applications. i1 60.
Ma discloses that the dynamic surface tension of the ink
composition---defined as the lowering of the surface tension of a liquid as a
function of time-generally decreases from about 50 to about 20 dynes/cm,
from about 40 to about 25 dynes/cm, or from about 35 to 30 dynes/cm, over
a period of about 10 to about 100 miliseconds. i-fi-1 39, 41. Ma discloses that
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a difference in dynamic surface tension between two ink compositions
formulated for printing adjacent to each other, referred to as the dynamic
surface tension gradient, "is substantially achieved by the type, and
concentration of the hydrocarbon surfactant employed" in each of the ink
compositions. i-fi-f 18, 19.
The Examiner finds that Ma does not disclose a silicone surfactant,
and relies on Nishiki's disclosure of an ink composition for inkjet recording
that includes a resin emulsion (water-dispersible resin), pigment (water-
dispersible colorant), water, polyhydric alcohol monoalkyl ether ( cosolvent),
and one or more surfactants that preferably include acethylene glycol
surfactants such as Surfynol 465 and 485 ( ethoxylated acetylene glycol
surfactants) and polyether-modified siloxane surfactants such as BYK-348
(silicone surfactant). Final Act. 2, 5.
The Examiner determines that in view of Ma's disclosure of including
additional components such as surfactants in the aqueous ink composition
described in the reference, one of ordinary skill in the art would have added
a silicon surfactant, such as BYK 348 as disclosed in Nishiki, to Ma's ink
composition, and "optimize[ d] the composition, through routine
experimentation, to obtain the surface tension values desired in Ma." Ans.
9, 10.
Similar to the argument presented for Rejection I, Appellant argues
that "the Examiner has failed to show that surface tension was recognized as
a result-effective variable before determining that optimum ranges of said
variable might be characterized as routine experimentation." App. Br. 17.
However, this argument is unpersuasive of reversible error for the reasons
discussed above in connection with Rejection I.
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Also similar to arguments that Appellant presents for Rejection I,
Appellant argues that the second Van Gageldonk Declaration establishes that
the dynamic surface tension recited in claim 1 is not inherent to Nishiki or to
Ma, and Appellant relies on Example 6 and Comparative Example 2 in
Table B of the second Van Gageldonk Declaration in support of this
argument. App. Br. 14--15. Appellant contends that Nishiki's and Ma's
experimental examples "(i) do not include the combination of an ethoxylated
acetylene glycol and a silicone surfactant and/or (ii) do not achieve the
claimed dynamic surface tension," as demonstrated by the first Van
Gageldonk Declaration. App. Br. 14. Appellant also asserts that the closest
example of Ma modified based on Nishiki "to bring the composition within
the claimed range," described in the second Van Gageldonk Declaration as
"PK-S5 (2)," establishes that the surface tension recited in claim 1 "will not
necessarily flow from the prior art, as required for a proper showing of
inherency." App. Br. 17. Appellant asserts that an unrecognized property
that may be inherent to a single reference cannot be properly applied to a
combination of references. App. Br. 16; Reply Br. 3.
Appellant asserts that Ma in view of Nishiki therefore do not disclose
all the limitations of claim 1, and contend that the Examiner does not
provide a rationale that supports the conclusion that it would have been
obvious to one of ordinary skill in the art to arrive at the ink composition of
claim I. App. Br. 17-18.
However, as with Rejection I, the Examiner's position is not based on
an inherent disclosure in Ma and/or Nishiki of a dynamic surface tension as
recited in claim 1, but rather is based on optimizing result-effective variables
(the type and amount of hydrocarbon surfactant) to arrive at the recited
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dynamic surface tension. Although composition PK-S5 (2) in Table B of the
Van Gageldonk Declaration, which Appellant characterizes as the closest
prior art, has a dynamic surface tension of 36 mN/m, rather than below 35
mN/m as recited in claim 1, as discussed more fully below, one of ordinary
skill in the art would have arrived at an ink composition including the
components recited in claim 1 and having a dynamic surface tension below
3 5 mN/m through routine optimization of the type and amount of
hydrocarbon surfactant in the composition.
As discussed above, Ma discloses including additional components in
the aqueous ink composition described in the reference-such as
surfactants-to optimize the composition's properties for specific
applications. As also discussed above, Ma discloses that the type and
amount of hydrocarbon surfactant in the composition affect the dynamic
surface tension (result-effective variables). In view of these disclosures, and
in view of Nishiki' s disclosure of an ink composition comprising
components similar to those included in Ma's ink composition, one of
ordinary skill in the art seeking to alter the properties of Ma's ink
composition-that includes a hydrocarbon surfactant such as Surfynol
440---for a particular application, would have added a silicon surfactant such
as BYK 348 disclosed in Nishiki to the composition, and would have
optimized the concentration of the hydrocarbon surfactant in the
composition through nothing more than routine experimentation, to obtain a
desired surface tension, such as below 35 mN/m as recited in claim 1.
Applied Materials, 692 F.3d at 1297; Boesch, 617 F.2d at 276; Aller, 220
F.2d at 456.
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Consequently, although Nishiki and Ma may not exemplify ink
compositions that include an ethoxylated acetylene glycol surfactant and a
silicone surfactant and exhibit a dynamic surface tension below 35 mN/m as
the first Van Gageldonk Declaration indicates, the combined disclosures of
Ma and Nishiki nonetheless would have led one of ordinary skill in the art to
such compositions.
Appellant again argues that the multiple comparative examples based
on Nishiki and Ma, and the multiple inventive examples, in the second Van
Gageldonk Declaration demonstrate that the claimed invention is
unexpectedly superior "[ w ]hen comparing improved spreading behavior (dot
gain)." App. Br. 14. Appellant argues that "combining a siloxane surfactant
(e.g., BYK) and an ethoxylated acetylene glycol surfactant (Dynol) shows a
synergistic effect that, combined with the claimed surface tension behavior
of the ink compositions, provides improved dot-gain on a wide range of
media." App. Br. 15. However, for the reasons discussed above in
connection with Rejection I, Appellant does not meet the burden of
demonstrating that the ink composition of claim 1 provides unexpected
results.
Considering the totality of the evidence relied upon in this appeal, a
preponderance of the evidence weighs in favor of the Examiner's conclusion
of obviousness. We accordingly sustain the Examiner's rejection of claims
1-17 under 35 U.S.C. § 103(a).
Rejection IV
To address this rejection, Appellant relies on the arguments presented
for Rejection III (discussed above), and argues that the additional reference
applied in this rejection-King-fails to cure the deficiencies of the
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combination of Ma and Nishiki. App. Br. 19. Because we are unpersuaded
of reversible error in Rejection III for the reasons discussed above,
Appellant's position as to this rejection is also without merit. We
accordingly sustain the Examiner's rejection of claims 18 and 19 under
35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejections of claims 1-21 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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