Ex Parte OHTA

Patent Trial and Appeal Board

Apr 25, 2016

12575737 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/575,737 10/08/2009
27572 7590 04/27/2016
HARNESS, DICKEY & PIERCE, PLC
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
FIRST NAMED INVENTOR
Hitoshi OHTA
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.
9319S-00358 l 1616
EXAMINER
ZHAO, XIAO SI
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
troydocketing@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HITOSHI OHTA
Appeal2014-009186
Application 12/575,737
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1through9, 11through17, and 19 through
21.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies the Real Party in Interest as Seiko Epson Corporation
(Appeal Brief filed February 14, 2014 ("App. Br.") at 3.)
2 Final Office Action mailed November 8, 2013 ("Final Act.").
Appeal2014-009186
Application 12/575,737
The subject matter on appeal is generally directed to a method for ink
jet printing that utilizes an aqueous ink composition comprising, inter alia,
resin particles containing wax particles and resin fixative particles. (Spec.
i-f 6.) The resin fixative particles comprise at least one component having a
glass transition temperature of 30°C or more. (Spec. ,-r 48.)
Details of the appealed subject matter are recited in representative
claim 1, reproduced below from the Claims Appendix to the Appeal Brief:
1. An ink jet printing method, comprising:
forming an image by discharging droplets of an aqueous
ink composition onto a non-ink-absorbing or low ink-absorbing
recording medium by ink jet printing; and
drying the aqueous ink composition on the recording
medium during and/ or after forming the image,
wherein the aqueous ink composition contains a pigment,
resin particles, a silicone surfactant, an acetylene glycol
surfactant, a 1,2-alkyldiol comprising an alkyl group having 4
to 8 carbon atoms, a polyhydric alcohol, and water, and
the resin particles contain resin fixative particles and wax
particles; wherein the resin fixative particles comprise at least
one component having a glass transition temperature (Tg) of
30°C or more, and wherein the recording medium has a surface
that is a plastic film.
(App. Br. 15, Claims App'x.)
Appellant seeks review of the following grounds of rejection
maintained by the Examiner in the Answer mailed on June 18, 2014
("Ans."):
Claims 1, 2, 5 through 9, 11 through 13, 16, 17, and 19 through 21
under 35 U.S.C. § 103(a) as unpatentable over the disclosure of U.S. Patent
Application Publication 2007/0197685 Al published in the name of Aruga et
al.,on August 23, 2007 (hereinafter referred to as "Aruga") in view of U.S.
2
Appeal2014-009186
Application 12/575,737
Patent Application Publication 2009/0035682 Al published in the name of
Shima et al., on February 5, 2009 (hereinafter referred to as "Shima") and
U.S. Patent Application Publication 2005/0128268 Al published in the name
of Takashima on June 16, 2005 (hereinafter referred to as "Takashima");
Claims 3 and 14 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Aruga in view of Shima, Takashima, and U.S. Patent
Application Publication 2004/0196343 published in the name of Maekawa et
al., on October 7, 2004 (hereinafter referred to as "Maekawa"); and
Claims 4 and 15 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Aruga in view of Shima, Takashima, and U.S. Patent
Application Publication 2004/0113962 Al published in the name of Mori on
June 1 7, 2004 (hereinafter referred to as "Mori").
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the arguments advanced by the Examiner and Appellant, we concur with
Appellant that the Examiner has not carried the burden of establishing a
prima facie case of obviousness regarding the subject matter recited in
claims 1-9, 11-17, and 19-21 within the meaning of35 U.S.C. § 103(a).
Accordingly, we reverse the Examiner's§ 103(a) rejections of these claims
for the reasons set forth in the Appeal Brief. We add the discussion below
primarily for emphasis and completeness.
The Examiner has the burden of establishing a prima facie case of
obviousness regarding the subject matter recited in the claims on appeal. In
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Appeal2014-009186
Application 12/575,737
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[The] [patent] examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability."); see also In re Jung, 637
F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining that while "the applicant
must identify to the Board what the examiner did wrong, ... the examiner
retains the burden to show invalidity"). However, as explained by
Appellant, the Examiner does not articulate an apparent reason or suggestion
that would have prompted one of ordinary skill in the art to replace the resin
particles in Aruga's recording ink used for inkjet printing with the resin
particles and wax particles of Shima' stoner used for laser printing. (App.
Br. 11-12.)
Aruga discloses an aqueous ink for inkjet printing that comprises,
inter alia, an emulsion of resin particles dispersed in water. 3 (Aruga i-fi-1 90,
166-167.) Aruga discloses that the glass transition temperature of the resin
particles is 25QC or below, and further discloses that if the glass transition
temperature of the resin particles is above 25QC, the resin becomes fragile,
compromising the fixative property of the resin. (Aruga i-f 192, claim 2.)
The Examiner acknowledges that Aruga does not disclose "resin fixative
particles and wax particles, wherein the resin fixative particles comprise at
3 Aruga discloses that the aqueous recording ink comprises a pigment,
fixative resin particles, a polyhydric alcohol wetting agent, a silicone
surfactant, an acetylene glycol surfactant, a polyol penetrating agent, and
water. (Aruga i-fi-190, 91, 196, 166-167, 173, 96-97, 140, 149, 110-111.)
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Appeal2014-009186
Application 12/575,737
least one component having a glass transition temperature [(Tg)] of 30°C or
more" as recited in claim 1. (Final Act. 3.)
To account for these missing resin fixative and wax particles, the
Examiner relies upon the disclosure of Shima. (Id.; Ans. 3.) Shima
discloses a non-aqueous toner used for laser printing comprising core
particles that include resin particles having a grass transition temperature of
45QC to 60QC, colorant particles, and wax particles. (Shima i-fi-126, 200, 314,
318, 326, 336.)
However, the Examiner does not adequately explain, or provide any
evidence to show, why one of ordinary skill in the art would have reasonably
expected that the wax particles and resin particles having a glass transition
temperature of 45QC to 60QC that are components of Shima' s non-aqueous
toner used for laser printing would be useful in Aruga' s aqueous ink for ink
jet printing in which the resin particles need to have a glass transition
temperature of 25QC or below in order to have a fixative property. On this
record, therefore, the Examiner does not demonstrate that one of ordinary
skill in the art reasonably would have been led to replace the resin particles
having a glass transition temperature of 25QC or below in Aruga' s aqueous
inkjet recording ink with the wax particles and resin particles having a glass
transition temperature of 45QC to 60QC of Shima's non-aqueous toner for
laser printing, particularly when Aruga teaches that doing so would have a
detrimental effect on the inkjet recording ink. ( Aruga i-f 192.)
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Appeal2014-009186
Application 12/575,737
Accordingly, on this record, we concur with Appellant that the
Examiner's evidence and explanation are not sufficient to establish a prima
facie case of obviousness of the subject matter recited in claims 1-9, 11-17,
and 19-21 within the meaning of 35 U.S.C. § 103(a). We therefore do not
sustain the rejections of these claims.
ORDER
In view of the reasons set forth in the Appeal Brief and above, the
Examiner's§ 103(a) rejections of claims 1-9, 11-17, and 19-21 are
reversed.
REVERSED
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