Ex Parte Kasperchik et al

Patent Trial and Appeal BoardApr 1, 2016

13720693 (P.T.A.B. Apr. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 131720,693 12/19/2012 22879 7590 04/05/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Vladek Kasperchik 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. 83125610 4399 EXAMINER KOLLIAS, ALEXANDER C ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 04/05/2016 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 yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VLADEK KASPERCHIK, PHILLIP C. CAGLE, and DAVID MICHAEL INGLE Appeal2014-007592 Application 13/720,693 Technology Center 1700 Before BRADLEY R. GARRIS, PETER F. KRATZ, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-7 and 16. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Appellants identify Hewlett-Packard Development Company, LP as the real party in interest. App. Br. 3. Appeal2014-007592 Application 13/720,693 STATEivIENT OF THE CASE Claimed Invention Appellants claim an ink set comprising a metallic ink and a latex- based overcoat ink. App. Br. 20 (claim 1 ); Spec. i-f 10, Abstract. The ink set can be used to form a durable printed image with a metallic appearance on a porous media substrate, by first applying a metallic ink layer and then applying a latex-based overcoat layer directly on the metallic ink layer. Spec. ,-r 10. Claims 1 and 16 are illustrative of the subject matter on appeal and are reproduced below from Appellants' Claims Appendix: 1. An ink set for metallic printing, comprising: a metallic ink comprising a first liquid vehicle and metal particles having an average particle size from 3 nm to 180 nm; and a clear or colorless latex-based overcoat ink comprising a second liquid vehicle and latex particles having an average particle size from 10 nm to 500 nm and a glass transition temperature from -20 Â°C to 200 Â°C. 16. The ink set of claim 1, wherein the metallic ink and the latex-based overcoat ink are formulated such that when the metallic ink is printed on a porous media substrate comprising a supporting base and a porous coating layer having a printing surface and then is overcoated with the latex-based overcoat ink, the metallic luster of the metallic ink layer through the latex-based overcoat layer is measured to exhibit, either before or after heat fusion: i) at least 100 gloss units; or ii) a specular reflectivity at least two times greater than an unprinted portion of the porous coating layer. App. Br. 20, 24. 2 Appeal2014-007592 Application 13/720,693 Sano et al. ("Sano") Ganapathiappan et al. (''Ganapathiappan") Yamashita et al. ("Yamashita") Nolte et al. ("Nolte") References US 2003/0008938 Al Jan.9,2003 US 2004/0157957 Al Aug. 12, 2004 US 2005/0206702 Al Sept. 22, 2005 US 2006/0204528 Al Sept. 14, 2006 Rejections 1. Claims 1-7 and 16 are rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. Final Action 3. 2. Claims 1--4, 6, 7, and 16 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Yamashita in view of Ganapathiappan and Sano. Id. at 3- 5. 3. Claim 5 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Yamashita in view of Ganapathiappan and Sano, as applied to claim 1, and further in view of Nolte. Id. at 5. ANALYSIS Written Description The Examiner determines that there is no support in the original Specification for reciting that the latex-based overcoat ink is "clear or colorless," a limitation that was added to claim 1 by amendment subsequent to the filing date of the original application. Final Action 2-3; Ans. 2-3. Appellants contend that the Specification provides a written description for this limitation as follows: 3 Appeal2014-007592 Application 13/720,693 [W]hen discussing the latex-based overcoat ink or layer, the latexes can be colorless, clear, substantially colorless, or substantially clear, even though this is not always mentioned in the various examples herein .... [T]he latex-based overcoat layer will typically appear to an ordinary observer to have essentially no noticeable color. Spec. i-f 15; see also App. Br. 11 (quoting above portions of Specification). In rejecting claims for failure to comply with the written description requirement ofÂ§ 112, first paragraph, the Examiner bears the initial burden of establishing that, prima facie, the disclosure in the Specification, claims, and drawings as filed as a whole would not have reasonably conveyed to those skilled in the art that Appellants were in possession of the subject matter of the appealed claims, including all of the limitations thereof, at the time the Application was filed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane); In re Alton, 76 F.3d 1168, 1172, 1175-76 (Fed. Cir. 1996) (citing In re Wertheim, 541F.2d257, 262-64 (CCPA 1976)). The written description in the original disclosure as a whole does not have to describe the invention later claimed in haec verba, but the original disclosure "must ... convey with reasonable clarity to those skilled in the art that ... [appellant] was in possession of the invention ... now claimed." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991); Wertheim, 541 F.2d at 262 ("The function of the description requirement is to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him; how the specification accomplishes this is not material.") (citations omitted). The Examiner determines that the portions of the Specification relied upon by Appellants describe the latex particles and the layer formed by the 4 Appeal2014-007592 Application 13/720,693 overcoating ink, rather than the overcoating ink itself. Final Action 3; Ans. 3. On this record, we are not persuaded that the Examiner has established that the original Specification lacks written description support for "a clear or colorless latex-based overcoat ink," as recited in claim 1. We find that, in the context of the Specification as a whole, the references to "colorless" or "clear" would have been understood by one of ordinary skill in the art as pertaining not only to the latex particles and overcoat layer, but also to the latex-based overcoat ink. For example, we find that the statement, "the latexes can be colorless, clear ... "would have reasonably been understood as a description of "the latex-based overcoat ink" referenced in the introductory clause of the same sentence. Spec. ,-r 15. Accordingly, we find that the original Specification would have reasonably conveyed to those skilled in the art that Appellants were in possession of the subject matter recited in claim 1. We therefore do not sustain the written description rejection. Obviousness Appellants' arguments are directed to independent claim 1 and dependent claim 16 only. The remaining dependent claims, including separately rejected dependent claim 5, are not separately argued. App. Br. 15-19. As a consequence, the remaining dependent claims stand or fall with independent claim 1, and we confine our discussion to independent claim 1 and dependent claim 16. Claim 1 The Examiner finds that Yamashita discloses an ink set comprising an ink and a liquid overcoat composition, where the ink comprises a liquid 5 Appeal2014-007592 Application 13/720,693 vehicle and metallic pigments, and the liquid overcoat composition comprises a liquid vehicle and a resin emulsion, i.e., latex, having a particle size range within the claimed range. Non-Final Action 9 (citing Yamashita Abstract, i-fi-146-49, 61-64, 92-94, 102, 103, 106, 107).2 The Examiner finds that Yamashita' s disclosed latex particles have a glass transition temperature within the claimed range, citing Ganapathiappan as evidence to show the glass transition temperature of the resin disclosed in Yamashita. Id. (citing Ganapathiappan 2, Table 1). The Examiner finds that Sano discloses an ink set comprising a resin emulsion and metallic pigments, where the pigments have an average particle size range within the claimed range. Id. at 9-10 (citing Sano Abstract, i-fi-f 119, 120). The Examiner concludes that, because both Yamashita and Sano disclose compositions for ink jet printing, it would have been obvious to use the pigment particle size taught by Sano in the composition of Yamashita in order to enhance ink storage stability and prevent nozzle clogging, as taught by Sano. Id. at 10. Appellants contend that Yamashita does not teach a latex-based overcoat ink and does not disclose or suggest the combination of a metallic ink with a liquid containing latex particles. App. Br. 15-16. Appellants further contend that, even if prima facie obviousness has been established, it is "rebutted by the unexpected results provided by the claims." Id. at 16. Upon consideration of the evidence presented in this Appeal and each of Appellants' contentions, we are not persuaded that Appellants identify 2 The Final Action dated February 12, 2014 incorporates by reference paragraph 20 of the Non-Final Action dated October 24, 2013. See Final Action 4. 6 Appeal2014-007592 Application 13/720,693 reversible error, and we determine that a preponderance of evidence supports the Examiner's conclusion that claim 1 is unpatentable over the applied prior art. The basis for this conclusion and the reasons Appellants' arguments fail to reveal error are well expressed by the Examiner in the Answer at pages 3- 6, which we adopt as our own. The following comments are added for emphasis. Appellants argue that Yamashita' s liquid composition only optionally includes a resin emulsion and has a different purpose than the recited latex- based overcoat ink-aggregating and/or thickening the ink, rather than protecting the ink. App. Br. 15; Reply Br. 6. We are not persuaded by Appellants' argument. Although Yamashita discloses that "the liquid composition may contain ... a resin emulsion," Yamashita ,-r 102, the disclosure of optional ingredients is still a disclosure of those ingredients for purposes of establishing prima facie obviousness. See In re Peterson, 315 F.3d 1325, 1328-30 (Fed. Cir. 2003) (prima facie obviousness established based on reference that mentions claimed component "only as an optional ingredient"). Appellants' argument that the claimed latex-based overcoat ink has a different purpose from Yamashita' s disclosed liquid composition is not persuasive of error in the Examiner's conclusion of unpatentability because Appellants' asserted purpose-protecting the metallic ink-is not recited in the claim. Addressing Yamashita, Appellants argue that metallic pigments are disclosed as part of a long list of colorants, that a resin emulsion is disclosed as one of many optional ingredients, that none of Yamashita' s examples includes latex particles, that Yamashita provides no direction to select the combination of a metallic ink and a liquid composition containing latex 7 Appeal2014-007592 Application 13/720,693 particles, and Yamashita does not disclose the advantage of this combination. App. Br. 15-16; see also Reply Br. 6-7 (arguing that Yamashita discloses more than 1,800 possible combinations of colorants and optional ingredients). We assume that a multitude of combinations of colorants and optional ingredients is possible based upon Yamashita' s disclosure. The large number of disclosed combinations is not, however, persuasive of error in the Examiner's conclusion of prima facie obviousness. Yamashita' s colorants and optional ingredients are each disclosed as effective components of an ink set comprising an ink and a liquid overcoat composition for use in ink jet printing-the same purpose as Appellants' claimed composition. Yamashita Abstract, i-fi-146-49, 92, 102, 103. Together with the cited teachings of Ganapathiappan and Sano, Yamashita's disclosure is sufficient to establish prima facie obviousness of the claimed combination. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the [prior art patent] discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art.") Appellants argue that the claimed ink set comprising metallic ink and latex-based overcoat provides unexpected results when printed on media, namely "gloss and specular reflectivity that would not be achieved by any of the other combinations of colorants and optional additives disclosed by Yamashita." App. Br. 16. We are not persuaded by this argument because Appellants provide no evidence in support of their assertion of unexpected results. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (attorney 8 Appeal2014-007592 Application 13/720,693 argument cannot take the place of evidence); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.") The Reply Brief quotes paragraph 16 of the Specification, which asserts that a protective overcoat film retains reflective properties of a metallic ink and increases durability of the metallic ink. Reply Br. 8. Appellants do not, however, direct us to factual evidence in support of these asserted improvements, nor any evidence that the asserted improvements would have been unexpected by one of ordinary skill in the art. Although the Reply Brief points generally to the Specification examples, Reply Br. 9, Appellants do not explain how the examples overcome prima facie obviousness based on Yamashita. For example, Appellants do not explain which examples are commensurate in scope with claim 1, which examples are representative of the closest prior art, or what differences, if any, are shown by the results obtained in such examples. Furthermore, Appellants do not direct us to evidence sufficient to show that the results provided by the claimed combination would not have been expected by one of ordinary skill in the art based upon the teachings of Yamashita and the known properties ofYamashita's disclosed ingredients. Bristol-Myers Squibb Co. v. Teva Pharmaceuticals, Inc., 752 F.3d 967, 977 (Fed. Cir. 2014) ("To be particularly probative, evidence of unexpected results must establish that there is a difference between the results obtained and those of the closest prior art, and that the difference would not have been expected by one of ordinary skill in the art at the time of the invention.") Accordingly, we agree 9 Appeal2014-007592 Application 13/720,693 with the Examiner that Appellants do not meet their burden to show unexpected results. Claim 16 The Examiner finds the limitations of claim 16 are inherent in the ink set taught by the combined disclosures of Yamashita, Ganapathiappan, and Sano. Final Action 4--5. Appellants argue that claim 16 recites a functional limitation not found in the cited art. App. Br. 17. With respect to the Examiner's position regarding inherency, Appellants merely refer back to and summarize the arguments discussed above with respect to claim 1. Id. at 18. Upon consideration of the evidence presented in this Appeal and each of Appellants' contentions, we are not persuaded that Appellants identify reversible error, and we determine that a preponderance of evidence supports the Examiner's conclusion that claim 16 is unpatentable over the applied prior art. The basis for this conclusion and the reasons Appellants' arguments fail to reveal error are well expressed by the Examiner in the Answer at pages 9-12, which we adopt as our own. Suffice it to say, we are not persuaded that the Examiner reversibly errs in determining that the limitations recited in claim 16 are characteristics of the ink set that would flow naturally from the cited teachings of Yamashita, Ganapathiappan, and Sano. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) ("The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious."); In re Best, 562 F.2d 1252, 1255 (CCP A 1977) ("Where ... the claimed and prior art products are identical or substantially identical, or are produced by identical 10 Appeal2014-007592 Application 13/720,693 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. . . . Whether the rejection is based on 'inherency' under 35 U.S.C. Â§ 102, on 'prima facie obviousness' under 35 U.S.C. Â§ 103,jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products.") (citation and footnote omitted) CONCLUSION OF LAW AND DECISION Based on the foregoing, the weight of the evidence supports the Examiner's conclusion of obviousness. Therefore, theÂ§ 103(a) rejections of claims 1-7 and 16 are sustained. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a) (1). AFFIRMED 11