Ex Parte EVERHARDUS et alDownload PDFPatent Trial and Appeal BoardMay 23, 201814465917 (P.T.A.B. May. 23, 2018) Copy Citation 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. Appeal2017-008153 Application 14/465,917 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 2 Appeal2017-008153 Application 14/465,917 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 3 Appeal2017-008153 Application 14/465,917 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. 4 Appeal2017-008153 Application 14/465,917 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. 5 Appeal2017-008153 Application 14/465,917 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. 6 Appeal2017-008153 Application 14/465,917 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. 7 Appeal2017-008153 Application 14/465,917 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 8 Appeal2017-008153 Application 14/465,917 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 9 Appeal2017-008153 Application 14/465,917 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 10 Appeal2017-008153 Application 14/465,917 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. 11 Appeal2017-008153 Application 14/465,917 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 12 Appeal2017-008153 Application 14/465,917 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. 13 Appeal2017-008153 Application 14/465,917 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 14 Appeal2017-008153 Application 14/465,917 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 15 Copy with citationCopy as parenthetical citation