Xerox Corporation

Patent Trials and Appeals BoardMar 22, 2021

2020003098 (P.T.A.B. Mar. 22, 2021)

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. 15/078,323 03/23/2016 Naveen Chopra 20150954US01 8692 74934 7590 03/22/2021 MARYLOU J. LAVOIE, ESQ. LLC 1 BANKS ROAD SIMSBURY, CT 06070 EXAMINER GRUN, ROBERT J ART UNIT PAPER NUMBER 1744 MAIL DATE DELIVERY MODE 03/22/2021 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 NAVEEN CHOPRA, CAROLYN MOORLAG, MARCEL P. BRETON, BARKEV KEOSHKERIAN, SALEH A. JIDDAWI, and GORDON SISLER ____________ Appeal 2020-003098 Application 15/078,323 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, DONNA M. PRAISS, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–11 and 18–20.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Xerox Corporation as the real party in interest. Appeal Brief filed October 2, 2019 (“Appeal Br.”), 1. 2 Final Office Action entered May 13, 2019 (“Final Act.”), 1. Appeal 2020-003098 Application 15/078,323 2 CLAIMED SUBJECT MATTER Appellant claims a curable phase change gellant ink composition (independent claim 1) and a method for preparing a curable phase change gellant ink composition (independent claim 18). Appeal Br. 1–6. Claim 1 illustrates the subject matter on appeal, and reads as follows: 1. A curable phase change gellant ink composition comprising: a phase change ink vehicle comprising at least one acrylate monomer, oligomer, or prepolymer; acryloylmorpholine; at least one gellant, wherein the gellant is miscible with the phase change ink vehicle; a photoinitiator; and an optional colorant. Appeal Br. 14 (Claims Appendix) (emphasis added). REJECTION The Examiner maintains the rejection of claims 1–11 and 18–20 under 35 U.S.C. § 103 as unpatentable over Chopra et al. (US 2013/0328980 Al, published December 12, 2013) in view of Takabayashi et al. (US 2014/0333704 Al, published November 13, 2014) in the Examiner’s Answer entered January 23, 2020 (“Ans.”). FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions, we affirm the Examiner’s rejection of claims 1–11 and 18–20 under 35 U.S.C. § 103 for reasons set forth in the Final Action, the Answer, and below. We review appealed rejections for reversible error based on the arguments and evidence the Appellant provides for each issue the Appellant Appeal 2020-003098 Application 15/078,323 3 identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). Appellant presents arguments directed to independent claim 1, and to claim 2, which depends from claim 1.3 Appeal Br. 7–12. We, therefore, address claim 2 separately, and select claim 1 as representative of the remaining claims on appeal, which stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Claims 1, 3–11, and 18–20 Claim 1 recites an ink composition comprising (1) a phase change ink vehicle comprising at least one acrylate monomer, oligomer, or prepolymer; (2) acryloylmorpholine; (3) at least one gellant that is miscible with the phase change ink vehicle, and (4) a photoinitiator. Chopra discloses a photocurable ink composition comprising, in part, a phase change ink carrier, one or more monomers, an amide gellant, and a photoinitiator. Chopra ¶¶ 6, 76. Chopra discloses that suitable materials for 3 Although Appellant mentions claim 5 when presenting arguments for claim 2, Appellant’s reference to claim 5 does not constitute a substantive argument as to the separate patentability of claim 5. Appeal Br. 11, 12. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. Because Lovin did not provide such arguments, the Board did not err in refusing to separately address claims 2–15, 17–24, and 31–34.”). Appeal 2020-003098 Application 15/078,323 4 use as the phase change ink carrier include radically curable monomer compounds, such as acrylate monomers. Chopra ¶ 76. Chopra discloses that the one or more monomers included in Chopra’s ink composition may be “curable monomers,” and Chopra discloses that “[t]he term ‘curable monomer’ is also intended to encompass curable oligomers, which may also be used in the [ink] composition.” Chopra ¶¶ 55–58. Chopra discloses that the amide gellant included in the ink composition has “the generic structure of the ester-terminated polyamide gellant” shown in Chopra’s paragraph 19, which is the same as the structure of the gellant recited in Appellant’s claim 4. Chopra ¶ 19. As the Examiner finds (Final Act. 3), although Chopra discloses including curable monomers and oligomers in Chopra’s ink composition as discussed above, Chopra does not explicitly disclose including acryloylmorpholine in the ink composition. Takabayashi, however, discloses a photocurable ink composition that includes a curable monomer, a curable oligomer, a gelling agent, and a photopolymerization initiator. Takabayashi ¶ 11. Takabayashi discloses forming the curable oligomer by reacting the main chain of an oligomer with a compound containing a photopolymerizable functional group, such as acryloylmorpholine. Takabayashi ¶ 25. Takabayashi discloses that including the curable oligomer in Takabayashi’s ink composition allows formation of a highly curable image, despite inclusion of a gelling agent in the composition. Takabayashi ¶ 37. In view of these disclosures in Takabayashi, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to include acryloylmorpholine in Chopra’s curable ink composition to provide the Appeal 2020-003098 Application 15/078,323 5 composition with photopolymerizable (photocurable) functional groups. Final Act. 3. Appellant argues that Takabayashi discloses a vast number of curable oligomers, and acryloylmorpholine is just one example of many disclosed compounds that include a photopolymerizable functional group, which may be introduced into an oligomer. Appeal Br. 9–10. Appellant argues that “[i]t would not be obvious from the teaching of Takabayashi, to pluck acryloylmopholine out of the many examples of compounds containing the photopolymerizable functional group that can be introduced into the curable oligomer and combine it with Chopra in the manner the Examiner suggests.” Appeal Br. 10. Appellant’s arguments do not identify reversible error in the Examiner’s rejection, for reasons that follow. As discussed above, Chopra discloses including a curable oligomer in Chopra’s photocurable ink composition containing a gelling agent, and Takabayashi discloses including a curable oligomer containing an acryloylmorpholine photopolymerizable functional group in Takabayashi’s photocurable ink composition that also contains gelling agent. Takabayashi’s disclosure that including such a curable oligomer in Takabayashi’s ink composition allows formation of a highly curable image, despite inclusion of a gelling agent in the composition, reasonably would have led one of ordinary skill in the art to use a curable oligomer containing an acryloylmorpholine photopolymerizable functional group as disclosed in Takabayashi as the curable oligomer in Chopra’s photocurable ink composition, to form a highly curable image using Chopra’s ink composition, which contains a gelling agent. KSR Int’l Co. v. Teleflex Inc., Appeal 2020-003098 Application 15/078,323 6 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976) (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”)). Takabayashi’s disclosure of numerous compounds containing photopolymerizable functional groups suitable for reaction with an oligomer main chain to produce a photocurable oligomer for inclusion in Takabayashi’s photocurable ink composition does not render any particular disclosed photopolymerizable functional group-containing compound any less obvious. Rather, Takabayashi would have suggested using any of the disclosed photopolymerizable functional group-containing compounds to form a photocurable oligomer for inclusion in a photocurable ink composition, including acryloylmorpholine. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ’813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose.”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the genus of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant’s generic claims and [was] of a class of chemicals to be used for the same purpose as appellant’s additives”). Appellant argues that “Chopra teaches that the ink vehicle is optional, and if the ink vehicle is used, Chopra teaches a large number of materials which can be selected for the optional ink vehicle.” Appeal Br. 9. Appellant argues that “nothing in the teaching of Chopra” would have suggested Appeal 2020-003098 Application 15/078,323 7 inclusion of an ink vehicle as recited in claim 1 in an ink composition having the recited combination of ingredients. Appeal Br. 8. As discussed above, however, Chopra discloses a photocurable ink composition including a phase change ink carrier, a curable oligomer, an amide gellant, and a photoinitiator, and Takabayashi would have suggested using a curable oligomer containing an acryloylmorpholine photopolymerizable functional group as the curable oligomer in Chopra’s photocurable ink composition. As also discussed above, Chopra discloses that radically curable monomer compounds, such as acrylate monomers, are suitable materials for use as the phase change ink carrier included in Chopra’s ink composition. Chopra’s indication that the phase change ink carrier is an optional component of Chopra’s ink composition does not negate, or even detract from, Chopra’s explicit disclosure of the suitability of including such a carrier in Chopra’s ink composition. And Chopra’s disclosure of numerous suitable radically curable compounds for use as the phase change ink carrier in Chopra’s ink composition does not render any particular disclosed compound any less obvious. Rather, Chopra would have suggested using any of the disclosed radically curable compounds as the phase change ink carrier in Chopra’s ink composition, including an acrylate monomer. Contrary to Appellant’s arguments, the combined disclosures of Chopra and Takabayashi, therefore, would have suggested an ink composition having the combination of components recited in claim 1. Appellant argues that “gellants are not necessarily miscible with photopolymerizable base components (required for gel strength),” and “Chopra is silent” as to the gellant being miscible with the phase change ink Appeal 2020-003098 Application 15/078,323 8 vehicle, as required by claim 1. Appeal Br. 8 (citing Spec. ¶ 9). As discussed above, however, Chopra discloses an amide gellant having the same structure as the gellant recited in Appellant’s claim 4. A reasonable basis therefore exists for finding that Chopra’s amide gellant would be miscible with Chopra’s acrylate monomer phase change ink vehicle, as recited in claim 1, and the burden shifts to Appellant to show otherwise. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted) (“Where . . . the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.”); In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (explaining that a chemical composition and its properties are inseparable.). On the record before us, Appellant does not meet this burden, because Appellant does not provide any objective evidence establishing that Chopra’s amide gellant is not miscible with Chopra’s acrylate monomer phase change ink vehicle. The fact that Appellant recognized a property of a gellant as disclosed in Chopra (miscibility with a phase change ink vehicle as also disclosed in Chopra) does not impart patentability to the ink composition of claim 1, even though the discovered property is not disclosed in Chopra. In re Dillon, 919 F.2d 688, 692–93 (Fed. Cir. 1990) (reaffirming the principle that where the prior art gives reason or motivation to make the Appeal 2020-003098 Application 15/078,323 9 same composition recited in a claim, the burden and opportunity shifts to the applicant to rebut the prima facie case, and the mere fact that the prior art does not explicitly disclose the same property discovered for the composition recited in a claim does not defeat that prima facie case.); see also Endo Pharm. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381 (Fed. Cir. 2018) (“An inherent characteristic of a formulation can be part of the prior art in an obviousness analysis even if the inherent characteristic was unrecognized or unappreciated by a skilled artisan.”). We, accordingly, sustain the Examiner’s rejection of claims 1, 3–11, and 18–20 under 35 U.S.C. § 103. Claim 2 Claim 2 depends from claim 1 and recites that “the phase change ink vehicle comprises at least one triacrylate, at least one monoacrylate, and at least one diacrylate; and wherein the ratio of triacrylate to monacrylate and diacrylate is from about 0.05 to about 0.5.” Appellant argues that Chopra does not teach an ink vehicle comprising at least one triacrylate, at least one monoacrylate, and at least one diacrylate. Appeal Br. 10. Appellant argues that “Chopra provides a vast number of possible compounds that many be included in the optional ink vehicle of Chopra,” and “[t]here is no teaching or motivation in the lists of materials provided that would give any hint to one of skill in the art to arrive at an ink vehicle comprising the specific combination of at least one triacrylate, at least one monoacrylate, and at least one diacrylate.” Id. Appellant argues that “[t]here is further no teaching or motivation in Chopra that would lead one of skill in the art to arrive at this specific combination wherein the ratio of triacrylate to monoacrylate and diacrylate is from about Appeal 2020-003098 Application 15/078,323 10 0.05 to about 0.5.” Id. Appellant’s arguments do not identify reversible error in the Examiner’s rejection, for reasons that follow. As discussed above, Chopra discloses that suitable materials for the phase change ink carrier of Chopra’s ink composition include radically- curable monomer compounds, such as acrylate monomers. Chopra ¶ 76. Chopra further discloses that suitable acrylate monomers include various monoacrylates. Id. Chopra also discloses that multifunctional acrylate monomers “can be included in the phase change ink carrier as reactive diluents and as materials that can increase the crosslink density of the cured image, thereby enhancing the toughness of the cured images.” Id. Chopra discloses that suitable multifunctional acrylate monomers include various diacrylates and triacrylates “as well as mixtures and combinations thereof.” Id. (emphasis added). One of ordinary skill in the art reasonably would have been led from these disclosures to include an acrylate monomer in combination with one or both of a diacrylate and triacrylate in Chopra’s ink composition (modified by Takabayashi as discussed above), to increase the crosslink density of a cured image formed with the composition, so as to enhance the image’s toughness. Chopra’s disclosure that including multifunctional acrylate monomers (diacrylates and triacrylates) in combination with monoacrylates in the phase change ink carrier affects the crosslink density, and resulting toughness, of a cured image formed with an ink composition containing the ink carrier, indicates that the number of functional groups present in the acrylate monomers in the ink carrier is a result-effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the Appeal 2020-003098 Application 15/078,323 11 prior art that a property [or a result] is affected by the variable is sufficient to find the variable result-effective.”). Consequently, through nothing more than routine experimentation, one of ordinary skill in the art would have optimized the relative amounts of monoacrylates, diacrylates, and triacrylates included in a phase change ink carrier as disclosed in Chopra to achieve a desired crosslink density, and resulting toughness, for a cured image formed with an ink composition containing the ink carrier, and in so doing, would have arrived at a ratio of triacrylate to monoacrylate and diacrylate as recited in claim 2. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). We, accordingly, sustain the Examiner’s rejection of claim 2 under 35 U.S.C. § 103. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–11, 18–20 103 Chopra, Takabayashi 1–11, 18– 20 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). Appeal 2020-003098 Application 15/078,323 12 AFFIRMED