Ex Parte Iu et al

Patent Trial and Appeal Board

Dec 12, 2016

13702978 (P.T.A.B. Dec. 12, 2016)

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.
13/702,978 12/07/2012 Kai-Kong Iu 83123127 6571
22879
HP Tnr
7590 12/14/2016 EXAMINER
3390 E. Harmony Road
Mail Stop 35
NILAND, PATRICK DENNIS
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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 KAI-KONG IU, SHAO-WEI LI, DENNIS Z. GUO, YUBAI BI,
and MINEDYS MACIAS GUZMAN1
Appeal 2015-005463
Application 13/702,978
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to an inkjet ink comprising a
polyurethane binder. E.g., Spec. 6:21—29; Claim 1. Claim 1 is reproduced
1 According to the Appellants, the Real Party in Interest is Hewlett-Packard
Development Company, LP (“HPDC”), which is a wholly owned affiliate of
Hewlett-Packard Company. App. Br. 3. The general or managing partner of
HPDC is HPQ Holdings, LLC. Id.
Appeal 2015-005463
Application 13/702,978
below from page 25 (Claims Appendix) of the Appeal Brief (some
paragraph breaks and indentations added):
1. A polyurethane-containing inkjet ink, comprising:
a colorant;
a liquid vehicle;
a surfactant; and
a polyurethane binder,
the polyurethane binder comprising polymerized monomers
including a polyether polyol, a diisocyanate, and an acid
polyol,
wherein the polyurethane binder has a Mw from 35K to 5OK
and an acid number from 51 to 60.
ANALYSIS
Claims 1—17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kato et al. (JP 2005-290044, dated Oct. 20, 2005).2 The Appellants
present separate arguments for claims 1, 11, 12, 15, 16, and 17. We limit
our discussion to those claims. Claims 2—10, 13, and 14 will stand or fall
with claim 1, from which they depend.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner’s Answer. See generally Final Act.
2—6; Ans. 2—24.
2 The Appellants and the Examiner cite the machine translation of record.
We do the same.
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Application 13/702,978
Claim 1.
The Examiner finds that Kato teaches an inkjet ink comprising a
colorant, a liquid vehicle, a surfactant, and a polyurethane binder comprising
polymerized monomers including a polyether polyol, a diisocyanate, and an
acid polyol. Ans. 2—3. The Examiner finds that Kato teaches an Mw range
for its polyurethane binder of 3,000-50,000, and that, while Kato provides a
specific example of a polyurethane binder having an Mw of 33,000, Kato
provides no examples in the claimed range of 35,000 to 50,000. Id. The
Examiner finds, however, that an Mw of 33,000 “is not expected to give an
appreciable difference from the same ink having a Mw of 35,000.” Id.
Concerning the claimed acid number, the Examiner finds that Kato teaches
“acid values, i.e., acid numbers, of 40-90,” and that Kato provides specific
examples of polyurethane binders having acid numbers that fall within the
scope of claim 1. Id. The Examiner concludes that the inks of claim 1
would have been obvious to a person of ordinary skill in the art in view of
Kato. Id. at 2—5.
The Appellants argue that Kato’s Mw and acid number ranges are
“very broad,” and that “Kato does not disclose any examples with a
molecular weight inside the range of 35K to 50K as required by claim 1.”
App. Br. 14.
We are not persuaded by those arguments. Kato’s disclosed ranges
fully encompass the claimed ranges. “A prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art.” See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003). The Appellants do not persuasively argue that Kato’s ranges are
so broad as to rebut the prima facie case of obviousness, particularly given
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that Kato provides an example having an Mw of 33,000 and an acid number
of 55. See, e.g., Kato 1 63. The fact that Kato does not disclose an example
having an Mw that falls within the scope of the claimed range of 35K to 50K
is not persuasive of reversible error because, as explained above, Kato
discloses a range that fully encompasses the claimed range, thereby
establishing a prima facie case of obviousness. See Peterson, 315 F.3d at
1329; see also In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference
is not limited to the disclosure of specific working examples.”).
The Appellants also argue that “there is no reason to conclude that the
properties of the examples of Kato would be the same as the properties of
the presently claimed polyurethane inks.” App. Br. 15.
We disagree. Absent persuasive evidence to the contrary, a person of
ordinary skill would have expected the properties of Kato’s inks to be the
same as those of the claimed inks because Kato’s inks are the same as, or
substantially similar to, the claimed inks. Cf. In re Schreiber, 128 F.3d
1473, 1477-79 (Fed. Cir. 1997); In re Best, 562 F.2d 1252, 1255 (CCPA
1977); In re Payne, 606 F.2d 303, 313 (CCPA 1979) (“An obviousness
rejection based on similarity in chemical structure and function entails the
motivation of one skilled in the art to make a claimed compound, in the
expectation that compounds similar in structure will have similar
properties.”). In any event, claim 1 does not require the ink to have any
particular properties. Accordingly, the Appellants’ argument is not
persuasive of reversible error in the rejection.
The Appellants argue that unexpected results rebut the prima facie
case of obviousness. See App. Br. 15.
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That argument is not persuasive for several reasons. First, the
Appellants fail to establish that the relied-upon results are in comparison to
the closest prior art. See, e.g., 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.”). The comparative examples discussed in the
Specification, unlike the inks of Kato, do not include a polyurethane binder.
See Spec, at 13:15—17.
Second, although the Appellants use the word “unexpected,” they
provide no explanation or evidence as to whether a person of ordinary skill
in the art actually would have considered the results to be unexpected. See
App. Br. 15-16; see also In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972)
(“Thus it is not enough to show that results are obtained which differ from
those obtained in the prior art: that difference must be shown to be an
unexpected difference.”).
Third, where the Appellants are relying on unexpected results to rebut
a prima facie case of obviousness, the Appellants must show results that are
commensurate in scope with the claims. See Peterson, 315 F.3d at 1329-31.
The Appellants have not directed us to evidence that would meet this
burden. Claim 1, for example, permits any colorant, any liquid vehicle, any
surfactant, and a wide range of polyurethane binders. The Appellants
provide no explanation as to why the limited number of examples discussed
in the Specification is representative of the full scope of claim 1. See 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
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commensurate in scope with the claims which the evidence is offered to
support.’”) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
For at least those reasons, the Appellants have not shown that
unexpected results overcome the prima facie case of obviousness set forth by
the Examiner. We affirm the rejection of claim 1.
Claim 11.
Claim 11 depends from claim 1 and further recites: “wherein the Mw
is from about 40K to about 45K and the acid number is from about 53 to
about 57.”
The Appellants argue that the narrower Mw range of claim 11 as
compared to claim 1 (i.e., 40K-45K vs. 35K— 50K) “is even further from the
highest exemplified molecular weight in Kato .... Therefore, it is even
clearer that Kato does not teach or suggest the even narrower limitations of
claim 11.” App. Br. 16—17. The Appellants also rely on the unexpected
results argument made with respect to claim 1. Id. at 17.
For essentially reasons stated above, the Appellants’ arguments do not
persuade us of reversible error. Kato is not limited to its working examples,
see Mills, 470 F.2d at 651, and the Mw range disclosed by Kato fully
encompasses the claimed range, establishing a prima facie case of
obviousness, see Peterson, 315 F.3d at 1329. As explained above, the
Appellants’ argument concerning unexpected results does not rebut the
prima facie case set forth by the Examiner.
Claim 12.
Claim 12 depends from claim 1 and further recites:
wherein the ink provides an acceptable down swath variation
performance, the acceptable down swath variation performance
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Application 13/702,978
measured as having a A Reflectance of less than or equal to 10
units after the nozzle has been rested for 0.5 second; and an
acceptable decap performance, the acceptable decap
performance measured as the inkjet pen nozzle firing a normal
ink drop within 10 electric firing pulses after the nozzle is rested
for 3.5 seconds.
The Examiner finds that, “[gjiven the similarities of the instantly
claimed inks and those of Kato, it is expected that the inks of Kato
necessarily have the properties of the instant claim 12.” Ans. 3.
The Appellants argue that the limitations of claim 12 are “functional
limitations which narrow the claim.” App. Br. 18. They appear to assert
that, regardless of whether or not the claimed properties are inherent in
Kato’s inks, Kato must expressly recite them. See id.
We are not persuaded by the Appellants’ arguments. As set forth
above, inks meeting each and every limitation of claim 1 would have been
obvious to a person of ordinary skill in the art in view of Kato. “Where, as
here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.”
Best, 562 F.2d at 1255. The Appellants fail to provide any persuasive
explanation as to why a person of ordinary skill in the art would not expect
inks taught or suggested by Kato to possess the properties recited by claim
12. That is true whether or not the limitations of claim 12 are considered to
be “functional.” See Schreiber, 128 F.3d at 1477—79 (“[Wjhere the Patent
Office has reason to believe that a functional limitation . . . may ... be an
inherent characteristic of the prior art, it [may] require the applicant to prove
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that the subject matter shown to be in the prior art does not possess the
characteristic relied on.”).
The Appellants’ argument that “Kato teaches away from the
properties described by claim 12” is also unpersuasive. See App. Br. 19.
For a reference to “teach away,” it must criticize, discredit, or otherwise
discourage the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). The Appellants identify nothing in Kato that teaches away from
the recited properties. Kato’s teaching of “good adhesion and gloss on the
recording media,” see App. Br. 19, does not criticize or otherwise discourage
the properties of claim 12; nor does it provide any evidence that the inks
rendered obvious by Kato do not inherently possess the properties of claim
12.
We affirm the Examiner’s rejection of claim 12.
Claim 15.
Claim 15 recites:
15. A method of making the polyurethane-containing inkjet ink of
claim 1, comprising:
reacting the acid polyol with the diisocyanate to produce an acidified
diisocyanate;
reacting the acidified diisocyanate with the polyether polyol to
produce the polyurethane binder;
combining the polyurethane binder with the liquid vehicle, colorant,
and surfactant to produce the inkjet ink.
The Examiner finds that “Kato does not disclose the reaction order of
the instant claim 15.” Ans. 5. The Examiner nevertheless concludes that
claim 15 would have been obvious to a person of ordinary skill in the art:
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It would have been obvious to one of ordinary skill in the art at
the time of the instantly claimed invention to use the instantly
claimed reaction order of the instant claim 15 in making the
polyurethanes of Kato because the abilities of NCO to react with
OH and the reactant amounts necessitates that the final product
reacted according to the instant claim 15 would be substantially
the same as that of the reaction order of Kato. No unexpected
results stemming from the different reaction order of the instant
claim 15 are seen which are demonstrated in a manner which is
commensurate in scope with the instant claims and the cited prior
art.
Id.
The Appellants explain that claim 15 requires first reacting an acid
polyol with a diisocyanate, followed by reaction with a polyester polyol,
while Kato teaches first reacting a polyester polyol with a diisocyanate,
followed by reaction with an acid polyol. App. Br. 20. The Appellants
explain that the differing order of steps changes the location at which the
acid polyol may be attached to the polyurethane chains. Id. at 20-21.
Those arguments are not persuasive of reversible error in the
Examiner’s rejection. Generally, the selection of any particular order of
performing process steps is prima facie obvious in the absence of new or
unexpected results. See In re Burhans, 154 F.2d 690, 692 (CCPA 1946); see
also In re Gibson, 39 F.2d 975, 976—77 (CCPA 1930) (selection of any order
of mixing ingredients is prima facie obvious). As the Examiner suggests,
see Ans. 5, 20, a person of ordinary skill in the art would have understood
that, regardless of whether the diisocyanate is reacted first with the polyester
polyol or first with the acid polyol, either sequence of steps ultimately
results in a polyurethane binder. The Appellants do not identity any
teaching in Kato that attributes any particular significance to the disclosed
sequence that might have discouraged a person of ordinary skill in the art
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from using an otherwise obvious sequence. Nor do they argue that a person
of ordinary skill in the art would not have had a reasonable expectation of
success in achieving a functional polyurethane binder if the order were
changed. On the record before us, we are not persuaded that changing the
order of the steps taught by Kato imparts patentability to otherwise obvious
subject matter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418—19
(2007) (“[T]he [obviousness] analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”).
We affirm the Examiner’s rejection of claim 15.
Claims 16 and 17.
Claim 16 depends from claim 1 and further recites: “wherein the acid
polyol is present in the polyurethane binder from 1 wt% to 40 wt%.” Claim
17 depends from claim 1 and further recites: “wherein the acid polyol is
present in the polyurethane binder from 10 wt% to 15 wt%.”
The Examiner finds that “the acid numbers of the polyurethanes of
Kato coupled with the use of dimethylolpropionic acid necessitates that the
instant claims 16 and 17 are met by Kato’s exemplified polyurethanes.”
Ans. 4. In the Appeal Brief, the Appellants argue that, in Kato’s example 1,
the acid polyol is present in the polyurethane binder in an amount of only
0.001 wt%. See App. Br. 22—23. In the “Response to Argument” section of
the Examiner’s Answer, the Examiner explains the error in the Appellants’
argument by identifying what appears to be a typographical error in Kato,
and the Examiner provides a detailed calculation showing that an acid
number of 55, as exemplified by Kato’s example 1, corresponds to an acid
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polyol wt% of 13.14%, which falls within the scope of claims 16 and 17.
See Ans. 21—23. In the Reply Brief, the Appellants do not dispute the
Examiner’s finding that an acid number of 55, as taught by Kato,
corresponds to an acid polyol wt% of 13.14%. Instead, the Appellants argue
that, “[e]ven if the amount of dimethylol propionic acid taught by Kato [and
relied on by the Appellants in the Appeal Brief] was a typographical error, a
person of skill in the art would nevertheless be motivated to follow the
directions given by Kato and not to use a much greater amount of dimethylol
propionic acid than explicitly taught by Kato.” See Reply Br. 12.
We are not persuaded by the Appellants’ argument. Kato repeatedly
teaches acid values of 40-90, and it provides specific examples having an
acid value of 55. See Kato claim 1, || 10, 12, 17, 34, 63, 64, 65. The
Appellants do not dispute the Examiner’s finding that, in Kato’s examples,
an acid value of 55 corresponds to an acid polyol wt% of 13.14%. The fact
that, in one example identified by the Appellants, Kato appears to
mistakenly list the amount of dibutyltin dilaurate catalyst (0.007g) as the
amount of dimethylol propionic acid, is not persuasive of reversible error in
the Examiner’s rationale. Contrary to the Appellants’ assertion, see Reply
Br. 12, a person of ordinary skill in the art would not have blindly followed
what appears to be a clear typographical error. Rather, a person of ordinary
skill in the art would have understood that the acid value of 55 taught by the
example is consistent with Kato’s disclosure as a whole, and a person of
ordinary skill in the art would have understood that an acid value of 55
corresponds to an acid polyol wt% of 13.14%. Accordingly, on the record
before us, we agree with the Examiner that a person of ordinary skill in the
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art would have been motivated to use acid polyol concentrations that fall
within the scope of claims 16 and 17.
We affirm the Examiner’s rejection of claims 16 and 17.
CONCLUSION
We AFFIRM the Examiner’s rejection of claims 1—17.
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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