Ex Parte Nishiguchi

Patent Trial and Appeal BoardDec 18, 2012

10769865 (P.T.A.B. Dec. 18, 2012)

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. 10/769,865 02/03/2004 Kenji Nishiguchi 03500.017879. 9231 5514 7590 12/19/2012 FITZPATRICK CELLA HARPER & SCINTO 1290 Avenue of the Americas NEW YORK, NY 10104-3800 EXAMINER MARTIN, LAURA E ART UNIT PAPER NUMBER 2853 MAIL DATE DELIVERY MODE 12/19/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KENJI NISHIGUCHI ____________________ Appeal 2010-010332 Application 10/769,865 Technology Center 2800 ____________________ Before MARC S. HOFF, GREGORY J. GONSALVES, and ANDREW J. DILLON, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-3, 5, 8-11, 13, and 16-20. Claims 4, 6, 7, 12, 14, and 15 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention is an ink set for use in ink jet recording comprising an ink jet ink and a reactive liquid to be employed with the ink. The ink contains an anionic graft polymer in which 50 mass% or more Appeal 2010-010332 Application 10/769,865 2 monomer units constituting a main chain of the graft polymer are monomer units having a hydrophilic functional group and 50 mass% or more monomer units constituting side chains of the graft polymer are monomer units having a hydrophobic functional group (Spec. 6-7). The reactive liquid contains a cation and causes aggregation of the pigment in the ink (Spec. 14). Independent claim 1 is reproduced below: 1. An ink set comprising independently an ink jet ink and a reactive liquid employed together with the ink, said ink containing a pigment in a dispersed state, and said liquid containing a cation and causing aggregation of said pigment in said ink in contact with said ink on a recording medium, wherein said ink further contains an anionic graft polymer, and 50 mass% or more of monomer units constituting a main chain of the graft polymer are monomer units having a hydrophilic functional group and 50 mass% or more of monomer units constituting side chains of the graft polymer are monomer units having a hydrophobic functional group, wherein the hydrophilic functional group is a carboxyl group, and wherein the monomer unit having a hydrophobic functional group has a styrene structure. REFERENCES Ma US 6,117,921 Sep. 12, 2000 Koitabashi EP 1 167 046 A1 Jan. 2, 2002 REJECTION Claims 1-3, 5, 8-11, 13, and 16-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Koitabashi in view of Ma. ISSUES Appellant contends that Ma teaches away from the present invention because of the plurality of example ink compositions disclosed in Ma, the Appeal 2010-010332 Application 10/769,865 3 example relied upon by the Examiner has an optical density lower than the other examples; thus, contends Appellant, “the results disclosed in Ma et al. suggest against its usage” (App. Br. 13). Appellant further argues that one of skill in the art would not combine the polymer of Example 37 of Ma with the reactive liquid of Koitabashi because both substances are cations, and a cationic polymer cannot be neutralized by a reactive liquid which also contains a cation (App. Br. 14). Appellant’s assertions present us with the following issues: 1. Does Ma teach away from the invention under appeal? 2. Does Ma teach the use of an anionic graft polymer? PRINCIPLE OF LAW To teach away, prior art must “criticize, discredit, or otherwise discourage the solution claimed.” Mere disclosure of alternative embodiments is not a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). ANALYSIS We are not persuaded by Appellant’s argument that Ma teaches away from the claimed invention (App. Br. 10-11). The Examiner admits that Koitabashi does not describe an anionic graft polymer but finds such a polymer to be taught by Ma (Ans. 5). Appellant argues that Ma teaches away from such a graft polymer, because the example in Ma containing an anionic graft polymer with a hydrophilic main chain and a hydrophobic side chain produces an ink having a relatively low optical density (App. Br. 13). Appeal 2010-010332 Application 10/769,865 4 We have reviewed Ma and we do not find any disclosure in Ma that criticizes, discredits, or otherwise discourages choosing an anionic graft polymer with a hydrophilic main chain and a hydrophobic main chain. See Fulton, 391 F.3d at 1201. What we do find in Ma are a number of examples of ink preparations, one of which (the Examiner’s cited Example 39) corresponds to the claim limitations. Further, Ma teaches that “[t]he hydrophobic portion can be conveniently built in the backbone, with the hydrophilic portion concentrated in the sidechains, or the reverse” (col. 4, ll. 36-38 (emphasis added)). Nowhere does Ma state that either construction is disfavored. Appellant’s further argument that there is no motivation in Koitabashi to use a graft polymer (Reply Br. 9-10) is not persuasive of error. We agree with the Examiner that Koitabashi’s teaching of a “polymer” without further specificity “does not mean that [use of a graft polymer] is not possible; any polymer satisfying the taught [sic] limitations would satisfy the invention, including a graft polymer” (Ans. 8). Appellant’s argument that one of ordinary skill in the art would not combine a cationic polymer with a cationic reactive liquid (App. Br. 13) again relies on Ma’s Example 37, which mentions a cationic polymer (col. 32, l. 63). We are not persuaded that the Examiner erred, however, because Ma teaches in its section on “GRAFT COPOLYMER” (col. 4, l. 30) that one may form an anionic graft copolymer dispersant (col. 5, l. 56 – col. 6, l. 5) or a cationic graft copolymer dispersant (col. 6, ll. 6-19). Taking into consideration Koitabashi’s teaching that its treating liquid “contains at least one of a multivalent metal cation and a salt thereof” (¶ [0017]), we agree Appeal 2010-010332 Application 10/769,865 5 with the Examiner’s conclusion that the combination would have been obvious (Ans. 6). We conclude that the Examiner did not err in rejecting claims 1-3, 5, 8-11, 13, and 16-20 as being unpatentable over Koitabashi in view of Ma. We will sustain the § 103 rejection. CONCLUSIONS 1. Ma does not teach away from the invention under appeal. 2. Ma teaches the use of an anionic graft polymer. DECISION The Examiner’s decision rejecting claims 1-3, 5, 8-11, 13, and 16-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED babc