Ex Parte Ota et al

Patent Trial and Appeal Board

Aug 7, 2014

11718151 (P.T.A.B. Aug. 7, 2014)

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.
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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.
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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
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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
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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
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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.
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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).
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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.”
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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.
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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.
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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.
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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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