Karen A. Moffat et al.

Patent Trials and Appeals BoardDec 2, 2019

15227827 - (D) (P.T.A.B. Dec. 2, 2019)

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. 15/227,827 08/03/2016 Karen A. MOFFAT 20160054US01-446305 3299 76113 7590 12/02/2019 PILLSBURY WINTHROP SHAW PITTMAN, LLP (Xerox) XEROX CORPORATION P .O . BOX 10500 MCLEAN, VA 22102 EXAMINER CHEA, THORL ART UNIT PAPER NUMBER 1737 NOTIFICATION DATE DELIVERY MODE 12/02/2019 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): docket_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAREN A. MOFFAT, DAVID J.W. LAWTON, MELANIE L. DAVIS, JUAN A. MORALES-TIRADO, and VARUN SAMBH Appeal 2019–001888 Application 15/227,827 Technology Center 1700 Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and SHELDON M. McGEE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–2 and 5–21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Xerox Corporation. Appeal Br. 2. Appeal 2019-01888 Application 15/227,827 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. An emulsion aggregation toner having toner particles comprising one single white colorant consisting of titanium dioxide having a specific gravity of from 3.6 to 4.3, wherein the single white colorant is present in an amount of from about 35 weight percent to 60 weight percent by weight of the toner; a crystalline polyester resin; and an amorphous polyester resin; wherein the toner exhibits a lightness (L*) of from about 75 to about 95 at a pigment mass per unit area of from about 0.2 mg/cm2 to about 1.5 mg/cm2 based on the surface area of a black substrate. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kadokura US 2011/0183247 A1 July 28, 2011 Nosella US 2012/0070776 A1 March 22, 2012 Sugitate US 2012/0189950 A1 July 26, 2012 REJECTIONS 1. Claims 1–2, and 5–21 are rejected under 35 U.S.C. § 112(a), first paragraph, as failing to comply with the written description requirement. Appeal 2019-01888 Application 15/227,827 3 2. Claim 21 is rejected under 35 U.S.C. 112(b), second paragraph, as being indefinite. 3. Claims 1–2, 6, 8–10, 13–14, and 21 are under 35 U.S.C. § 103 as obvious over Sugitate in view of Kadokura or Appellant’s disclosure (Examples 1, 4–10). 4. Claims 5, 7, 11, and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Sugitate in view of Kadokura or Appellant’s disclosure (Examples 1, 4–10), as applied to claims 1–4, 6, 8–10, and 13–14 above, and further in view of Nosella. 5. Claims 15–20 are rejected under 35 U.S.C. § 103 as being unpatentable over the combination of the Sugitate in view of Kadokura or Appellant’s disclosure (Examples 1, 4–10), and further in view of Nosella. OPINION Upon consideration of the evidence and each of the respective positions set forth by each party, we find that the preponderance of evidence supports Appellant’s position in the record. We thus reverse the Examiner’s decision to reject the appealed claims for the reasons provided by Appellants in the record, and add the following for emphasis. Rejection 1 It is the Examiner’s position that there is no written descriptive support for the claimed specific gravity values. Ans. 3–4. However, we agree with Appellant that the Specification discloses working examples of the inventive embodiments as comprising a single white colorant of titanium Appeal 2019-01888 Application 15/227,827 4 dioxide having the specifically claimed gravity ranges. For example, Example 4 discloses the use of one single type of white colorant, namely TiO2 R706, and Examples 1-3 and 5-10 disclose the use of one single type of white colorant, namely TiCO2 R900. Spec., Table 1. Appeal Br. 14. Appellant submitted the vendor’s publication as Exhibit A on September 21, 2017 showing the claimed specific gravity values associated with these commercially available products. Appeal Br. 15. We thus agree with Appellant that the inventor had possession of the claimed invention. We thus reverse Rejection 1. Rejection 2 It is the Examiner’s position that claim 21 is vague as it is uncertain how the word “type” is being used because it is uncertain if it is describing the white colorant or the titanium dioxide. Ans. 4–5. We agree with Appellant that the word “type” is an adjective for the white colorant. Appeal Br. 17. We note that a claim must be read in accordance with the precepts of English grammar. In re Hyatt, 708 F.2d 712, 715 (Fed. Cir. 1983). There is a heavy presumption that a claim term carries its ordinary and customary meaning. Amgen, Inc. v. Hoechst Marion Rousel, Inc., 314 F.3d 1313, 1327. We thus reverse Rejection 2. Appeal 2019-01888 Application 15/227,827 5 Rejections 3–52 We refer to pages 5–8 of the Answer for the Examiner’s stated position in the record for Rejections 3–5. Appellant argues that the claims require only one single white colorant consisting of titanium dioxide. Appeal Br. 18. Appellant argues that Sugitate and Kadokura do not use only one single white colorant consisting of titanium dioxide. Id. It seems as though the Examiner is treating the different types of white colorant of the applied art as if they are one single white colorant because the types are sourced from TiO2. That is, the Examiner states that [b]oth rutile type and anatase type titanium dioxide are both titanium dioxide, and the one single titanium dioxide colorant being claimed encompasses the scope of both rutile type and anatase type titanium dioxide taught in Sugitate. Ans. 13. The fact is, the different types of white colorants disclosed in Sugitate each represent a different white colorant, and thus collectively, more than one single white colorant consisting of titanium dioxide, is used in the invention of Sugitate. In the Answer, the Examiner does discuss certain comparative examples of Sugitate that use only one type of white colorant. Ans. 11. However, we are persuaded by Appellant’s arguments that certain teachings in Sugitate regarding singular use of a white colorant amount to a 2 We note that our determination with regard to Rejection 3 is dispositive for Rejections 4 and 5 because the additionally applied reference of Nosella does not cure the stated deficiencies in the combination of Sugitate in view of Kadokura or in view of Appellant’s disclosure. Appeal 2019-01888 Application 15/227,827 6 teaching away. Appeal Br. 20. Reply Br. 4–5. See also Sugitate ¶ 13 (explaining the drawbacks of using only one of the rutile type or anatase type titanium oxide). We add that there is absent an explanation in the rejections as to how the applied art suggests to use only one single white colorant consisting of titanium dioxide as required by the claims. This is particularly necessary here in view of Sugitate’s disclosure that Comparative Examples 1 and 2––each containing one type of titanium oxide––exhibited “profound image cracking,” and the highest whiteness variation of the tested samples. Sugitate ¶¶ 212–223, 252–265. The Examiner relies upon Kadokura or Appellant’s disclosure in an effort to meet the specific gravity values of the claim as well as the claimed lightness value. Ans. 6. Hence, the aforementioned deficiencies of Sugitate are not cured by any of the other references as applied by the Examiner in the rejections. We thus reverse Rejections 3–5. CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Affirmed 1–2, 5–21 112(a), 1st ¶ Written description 1–2, 5–21 21 112(b), 2nd ¶ indefiniteness 21 1–2, 6, 8–10, 13, 14, 21 103 Sugitate, Kadokura, 1–2, 6, 8–10, 13, 14, 21 Appeal 2019-01888 Application 15/227,827 7 Appellant’s disclosure 5, 7, 11, 12 103 Sugitate, Kadokura, Appellant’s disclosure, Nosella 5, 7, 11, 12 15–20 103 Sugitate, Kadokura, Appellant’s disclosure, Nosella 15–20 Overall Outcome 1–2, 5–21 REVERSED