Ex Parte Ota et alDownload PDFPatent Trial and Appeal BoardAug 7, 201411718151 (P.T.A.B. Aug. 7, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MASAYA OTA, TOMOHIKO TOKUNAGA, and KAZUO MITSUHASHI1 ____________ Appeal 2013-001150 Application 11/718,151 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, DONNA M. PRAISS, and JEFFREY W. ABRAHAM, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1, 2, and 6-21. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We affirm. BACKGROUND Appellants’ claimed invention “relates to an emulsion polymerized agglomerated toner to be used for copying machines and printers of an 1According to the Appeal Brief, the Real Party In Interest is Mitsubishi Chemical Corporation. App. Br. 1. Appeal 2013-001150 Application 11/718,151 2 electrophotographic system” (Spec. 1:6-8) that “does not emit an odor offensive to people” (Abstract). Claim 1 is the only independent claim on appeal and is reproduced below from the Claims Appendix: 1. An emulsion polymerized agglomerated toner comprising a crosslinked styrene resin binder obtained by seed polymerization using a wax, wherein the wax is at least one member selected from the group consisting of an olefin wax, an ester wax having a long chain alkyl group, a ketone having a long chain alkyl group, and a long chain aliphatic alcohol, wherein an odor index as calculated from the contents of aliphatic aldehydes in the toner measured by gas chromatography and the odor threshold values of the aliphatic aldehydes, is at most 300. The Examiner maintains, and Appellants appeal, the rejection of: 1. Claims 1, 2, 7-16, and 19-20 as unpatentable under 35 U.S.C. § 102(b), or in the alternative under 35 U.S.C. § 103(a), over Hagiwara (US 5,447,813, issued Sept. 5, 1995). App. Br. 2-9. 2. Claims 6 and 17-18 as unpatentable under 35 U.S.C. § 103(a) over Hagiwara in view of Funato (US 5,204,413, issued Apr. 20, 1993). App. Br. 9-10. 3. Claim 21 as unpatentable under 35 U.S.C. § 103(a) over Hagiwara in view of Yamazaki (US 2004/0137347 A1, published July 15, 2004). App. Br. 10-11. 4. Claims 1, 2, 7-16, and 19-20 as unpatentable under 35 U.S.C. § 103(a), over Hagiwara in view of Takezawa (US 6,447,971 B2, issued Sept. 10, 2002). App. Br. 11-12. Appeal 2013-001150 Application 11/718,151 3 5. Claims 6 and 17-18 as unpatentable under 35 U.S.C. § 103(a) over Hagiwara in view of Takezawa, and further in view of Funato. App. Br. 12. 6. Claim 21 as unpatentable under 35 U.S.C. § 103(a) over Hagiwara in view of Takezawa, and further in view of Yamazaki. App. Br. 13. OPINION The Examiner finds that the claims at issue on appeal are product-by- process claims, and concludes that claim 1 is anticipated by Hagiwara because “Hagiwara teaches a toner comprised of the same materials with the same properties.” Final Action, dated March 5, 2012, at 7. Specifically, the Examiner finds that Hagiwara teaches “a toner comprising a styrene based binder resin, wherein the amount of residual styrene monomer and benzaldehyde are reduced to suppress odors.” Id. at 4 (citations omitted). The Examiner further finds that Hagiwara discloses the styrene based polymer can have a crosslinked structure. Id. Additionally, the Examiner finds that the Examples in Hagiwara have a “‘good’ odor, which is understood to be no perceivable odor.” Id. The Examiner thus concludes that “the inventive toners of Hagiwara have no perceptible amount of residual aldehydes and emit no odors and therefore would be understood to inherently satisfy the odor index recited by the [Appellants] in pending claims 1 and 8-9.” Id. at 4-5. Additionally, the Examiner finds that Appellants teach “that the amount of peroxide initiator employed in the binder resin polymerization is Appeal 2013-001150 Application 11/718,151 4 responsible for odor emission . . . and teach[] a suitable range of such initiators.” Id. at 5. Accordingly, the Examiner concludes that since both Hagiwara and the [Appellants] teach the use of styrene and butyl acrylate as monomers in these examples and since both examples employ the same amount of peroxide initiators[,] the toner of Hagiwara would be expected to inherently possess the same contents of aliphatic aldehydes in the toner and therefore the same odor index. Id. at 5-6 (citations omitted). In the Appeal Brief, Appellants argue that Hagiwara does not anticipate the claimed invention because it “neither discloses nor suggests a crosslinked styrene resin binder obtained by seed polymerization using a wax, as recited in Claim 1.” App. Br. 5. According to Appellants, “because primary particles of a polymer are produced by seed polymerization using a wax as the seed, the wax is incorporated in the primary particles of a polymer.” Id. at 7. This results in the wax not being “exposed to the atmosphere and hence is unlikely to hydrolyze to an alcohol or react with unreacted hydrogen peroxide or atmospheric oxygen to form aliphatic aldehydes.” Id. Appellants also distinguish Hagiwara on the basis it discloses the use of poly-functional peroxides, “which [are] obviously different from the hydrogen peroxide use[d] in [Appellants’] examples.” Id. at 5. Appellants argue that “it would not be possible to reduce the contents of aliphatic aldehydes [in Hagiwara] as in the present invention,” because Hagiwara uses poly-functional peroxides (instead of hydrogen peroxide) without a quenching agent (such as ascorbic acid), such that “the poly-functional peroxides remain in the polymer particles and can react with alcohols derived from a wax to form aliphatic aldehydes.” Id. at 8. In support of Appeal 2013-001150 Application 11/718,151 5 their arguments, Appellants describe, and rely on, several reactions regarding the formation of aliphatic aldehydes from hydrogen peroxide and an ester wax. Id. at 6-7. Appellants contend that a person of ordinary skill in the art would know and understand the components and applicable reaction mechanisms supporting Appellants’ arguments. Id. at 9. Appellants also contend that Hagiwara “does not disclose that their toner is agglomerated” as recited in the preamble of claim 1. Id. at 5. In response, the Examiner maintains that claim 1 “represents a product-by-process claim” and that “both Hagiwara and the [Appellants] teach toner particles with a crosslinked styrene binder resin, an ester wax and low to no perceivable odor that can be formed from emulsion polymerization procedures. Therefore, Hagiwara teaches a product (toner) with the same properties and composition recited by the [Appellants].” Ans. 16. The Examiner further finds that “[i]n order to achieve a toner with no perceptible odor, Hagiwara teaches the use of peroxide initiators” and that Appellants “likewise teach[] that the odor threshold values recited in instant claim 1 can be achieved by limiting the amount of peroxide initiators used to form the toner particles.” Id. at 12-13 (citations omitted). According to the Examiner, Hagiwara and Appellants “teach the use of the same monofunctional peroxide initiators and further teach the same total amounts of peroxide initiators in their embodiments.” Id. at 13. Specifically, di-t- butyl peroxide is disclosed in Appellants’ Specification (Spec. 35:27) and in Hagiwara (e.g., Hagiwara, col. 18, ll. 38-59 (binder resin B); see also id. at col. 17, ll. 7-17). As a result, the Examiner concludes that “the toners of Appeal 2013-001150 Application 11/718,151 6 Hagiwara will inherently possess an odor index as calculated from the contents of aliphatic aldehydes of less than 300.” Ans. 13. Moreover, the Examiner finds that the Appellants have provided no evidence to support many of the statements and reaction mechanisms that Appellants recite and rely upon in the Appeal Brief. For example, the Examiner finds that Appellants have not “shown how or why hydrogen peroxide will produce lower amounts of undesirable aliphatic aldehyde byproducts than polyfunctional peroxides.” Id. at 14. The Examiner further finds that “the toners of Hagiwara do not produce odors and therefore would not be expected to suffer from excessive accumulation of aliphatic aldehydes by the reaction of excess peroxide with aliphatic alcohols produced form [sic] the hydrolysis of ester waxes.” Id. at 15. Based on this, the Examiner finds that “the toner of Hagiwara does not contain any appreciable amounts of aliphatic aldehydes and certainly not more than would produce an odor index of above 300.” Id. at 15-16. In the Reply Brief, Appellants argue that Hagiwara’s binder resin is prepared by polymerization in the absence of a wax, and then the binder is later mixed with a polypropylene wax, whereas “in the present invention, it is necessary that the styrene resin binder be obtained by seed polymerization using a wax.” Reply Br. 2. Appellants reiterate that as a result of using a wax as the seed in the claimed invention, “the wax is incorporated in the primary particles of the polymer,” and, “[t]herefore, in the steps after the preparation of the primary particles, the wax is not exposed to the atmosphere and hence is unlikely to hydrolyze to an alcohol or react with unreacted hydrogen peroxide or atmospheric oxygen to form aliphatic aldehydes.” Id. Appeal 2013-001150 Application 11/718,151 7 We find that the preponderance of evidence supports the Examiner’s rejection over Hagiwara. Claim 1 is a product-by-process claim, and therefore “determination of patentability is based on the product itself,” not on “its method of production.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). “If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Id. Although the initial burden of demonstrating that the claimed product is the same as a product in the prior art lies with the Examiner, once a prima facie case is established, the burden “to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product” shifts to the Appellants. Id. at 698 (citing In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980)). Based on the record before us, we find that the Examiner has established a prima facie case of anticipation. As the Examiner notes, Hagiwara discloses toners having reduced odors (Hagiwara, col. 4, ll. 21-29) comprised of a crosslinked styrene resin binder (id. at col. 11, l. 48 – col. 12, l. 25) and an ester wax (id. at col. 13, ll. 42-48). The binder resins used in the Hagiwara toners can be made via emulsion polymerization (id. at col. 12, ll. 37-40), and Hagiwara describes preparing the toners by blending the binder resin with other ingredients, “followed by pulverization and classification” (id. at col. 14, ll. 29-41). Hagiwara also teaches the use of peroxide initiators to help reduce residual monomer content (id. at col. 6, ll. 22-25, col. 9, l. 17 – col. 10, l. 9) which can help reduce odors (id. at col. 4, ll. 9-15). Appeal 2013-001150 Application 11/718,151 8 The toners in Examples 1-2 of Hagiwara are described as having “good” odor properties, as opposed to a “slight odor.” Id. at col. 21, Table 2, col. 22, ll. 3-6. These toners are made using styrene, butyl acrylate, and peroxide initiators, including the use of di-t-butyl peroxide as a polymerization initiator. E.g., id. at col. 16, l. 60 – col. 17, l. 26. These are all materials disclosed as ingredients of toners in Appellants’ Specification. E.g., Spec. 35:27, 60:17-18. Moreover, Appellants do not contest that their Specification teaches that “the odor threshold values recited in instant claim 1 can be achieved by limiting the amount of peroxide initiators used.” Ans. 12-13. Nor do Appellants contest that the amount of peroxide initiator used in preparing Example 1 in Hagiwara is within the acceptable range disclosed in Appellants’ Specification. Id. at 13. In view of the fact that Hagiwara discloses the use of the same ingredients as Appellants, including the same amount of peroxide initiator, and reports that the resultant toners have “good” odor properties, the Examiner reasonably finds that the Hagiwara toners would inherently possess the same contents of aliphatic aldehydes as the claimed toners, and therefore have the required odor properties of claim 1. Accordingly, we agree with the Examiner that “Hagiwara teaches a product (toner) with the same properties and composition recited by the [Appellants]” (id. at 16), and find that the Examiner established a prima facie case of unpatentability under 35 U.S.C. § 102(b) over Hagiwara. Appellants fail to provide persuasive evidence to overcome the Examiner’s rejection and “prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” Appeal 2013-001150 Application 11/718,151 9 Thorpe, 777 F.2d at 698; see also In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977). Appellants’ argument that Hagiwara does not anticipate the claimed invention because it “neither discloses nor suggests a crosslinked styrene resin binder obtained by seed polymerization using a wax, as recited in Claim 1” (App. Br. 5) is not persuasive because it attempts to distinguish the claimed invention over the prior art based on the process by which the product is made (seed polymerization using a wax), instead of the properties of the product itself. See Thorpe, 777 F.2d at 695. Additionally, we are not persuaded by Appellants’ argument that the claimed toners have a lower level of aliphatic aldehydes than the Hagiwara toners. Appellants’ arguments are based largely on Hagiwara’s use of poly- functional peroxides, as opposed to hydrogen peroxide, and a description of reactions that can lead to the formation of aliphatic aldehydes. Appellants, however, do not dispute the Examiner’s finding that Hagiwara discloses the use of monofunctional peroxides, including the same monofunctional peroxides disclosed in Appellants’ own Specification. See generally Reply Br. Furthermore, we agree with the Examiner’s assessment that Appellants presented no persuasive evidence to support the statements made in the Appeal Brief regarding the reaction mechanisms contributing to the formation of aliphatic aldehydes.2 Ans. 14-15. For example, Appellants have failed to provide persuasive evidence to demonstrate that hydrogen peroxide will produce lower amounts of aliphatic 2 Additionally, in the Reply Brief, Appellants acknowledge that in Hagiwara “preparation of binder resins is not accompanied by formation of aliphatic aldehydes.” Reply Br. 2. Appeal 2013-001150 Application 11/718,151 10 aldehydes than the polyfunctional peroxides used in Hagiwara. App. Br. 6. Nor have Appellants provided persuasive evidence supporting the argument that using wax as a seed will result in the wax being incorporated into the “primary particles” of a polymer which makes it “unlikely” to form aliphatic aldehydes. Id. at 7. Rather, Appellants offer only attorney arguments suggesting what takes place during certain reactions, and argue that a person of ordinary skill in the art would recognize this. Attorney argument, however, cannot take the place of evidence. E.g., In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). We also find Appellants’ argument that Hagiwara “does not disclose that their toner is agglomerated” to be unpersuasive. App. Br. 5. The Examiner finds that “Hagiwara teaches a product (toner) with the same properties and composition recited by the [Appellants],” (Ans. 16), and Hagiwara’s teaching of blending, pulverizing, and classification (Hagiwara, col. 14, ll. 29-41) supports a finding that Hagiwara’s toner would be agglomerated. Appellants offer no persuasive evidence demonstrating that the toners in Hagiwara are not agglomerated, and do not address agglomeration in the Reply Brief. As a result, the Appellants have not established evidence on this record sufficient to “prove the prior art products do not necessarily or inherently possess the characteristics of his claimed product.” Thorpe, 777 F.2d at 698. Accordingly, we do not find error in the Examiner’s rejection of claim 1 as anticipated by Hagiwara. Appeal 2013-001150 Application 11/718,151 11 Because Appellants do not separately argue dependent claims 2, 6, and 8-21, these claims stand or fall with our analysis of claim 1.3 We therefore sustain the Examiner’s rejections of claims 2, 6, and 8-21. Appellants argue that claim 7 is separately patentable “since the process recited therein different is [sic] from the melting/kneading/pulverizing/ classifying process disclosed by Hagiwara et al. The differences in processes would be expected to produce different toners.” App. Br. 9. We do not find this argument to be persuasive as claim 7 is a product-by-process claim, and Appellants have offered no persuasive evidence to prove that “[t]he differences in processes would . . . produce different toners.” Id. Because Appellants failed to “prove that the prior art products do not necessarily or inherently possess the characteristics of [the] claimed product” (Thorpe, 777 F.2d at 698), we sustain the Examiner’s rejection of claim 7. CONCLUSION For the reasons set forth above, we affirm the rejections of claims 1, 2, and 6-21 under 35 U.S.C. §§ 102 and 103. 3 The Examiner provides an alternative ground for rejecting claim 1 under 35 U.S.C. §103(a) over Hagiwara in view of Takezawa “in the event that the [Appellants are] able to show that the [seed polymerization] process limitation . . . produces a materially different product than the toner of Hagiwara.” Final Act. 9. Although we do not find that Appellants have made such a showing, we sustain the Examiner’s final rejection of claim 1 under 35 U.S.C. § 103(a) over Hagiwara in view of Takezawa for the reasons well stated by the Examiner in the Answer. Ans. 16-17 and 19-20. Appellants’ arguments against the rejection are unpersuasive for the reasons detailed in the Answer. Appeal 2013-001150 Application 11/718,151 12 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). 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