Ex Parte Ganapathiappan et al

Patent Trial and Appeal Board

Mar 23, 2016

12741550 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121741,550 05/05/2010
22879 7590 03/25/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Sivapackia Ganapathiappan
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.
82239170 8091
EXAMINER
VAJDA, PETER L
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIVAPACKIA GANAPATHIAPPAN, MANOJ K.
BHATTACHARYYA, and HOUT. NG
Appeal2014-007422
Application 12/741,550
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 11, 12, 14, 15, 17-20, and 22-25. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to the Appellants, the real party in interest is Hewlett-Packard
Development Company, LP which is a wholly-owned affiliate of Hewlett-
Packard Company. Its general or managing partner is HPQ Holdings, LLC.
Appeal Br. 3.
Appeal2014-007422
Application 12/741,550
STATEivIENT OF CASE
Claims 1---6, 8, and 10 have been allowed. Appeal Br. 5. Claims 7, 9,
13, 16 and 21 have been cancelled. Id. Claims 11, 12, 14, 15, 17-20, and
22-25 are on appeal. Id.
Appellants describe the present invention as directed to a toner
composition and system for electrophographic printing. Id. at 10. Claim 11,
reproduced below, is illustrative of the claimed subject matter:
11. A toner composition, comprising a plurality of pigment
particles each substantially encapsulated in a non-crosslinked
polymer coating having a Tg of from about 20 °C to about 160
°C, wherein said coating includes acidic monomer, and wherein
said coating imparts both a substantially uniform chargeability to
the entire surface of each particle and a substantially spherical
shape.
Appeal Br. 21 (Claim Appendix).
REFERENCES
The Examiner relied upon the prior art below when rejecting the
claims on appeal:
Matsumoto et al.
(hereinafter, "Matsumoto")
Ishizuka et al.
(hereinafter, "Ishizuka")
us 4,777,104 Oct. 11, 1988
US 2007 /0065742 Al Mar. 22, 2007
Handbook of Imaging Materials (Arthur S. Diamond ed. 1991)
(hereinafter, "the Handbook")
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Appeal2014-007422
Application 12/741,550
REJECTIONS
The Examiner made the following rejections:
Rejection 1. The Examiner rejected claims 11, 12, 14, 15, 17, and 18
under 35 U.S.C. § 103 as unpatentable over the combination of Matsumoto
and Ishizuka.
Rejection 2. The Examiner rejected claims 19, 20, and 22-25 under
35 U.S.C. § 103 as unpatentable over the combination of Matsumoto,
Ishizuka, and the Handbook.
ANALYSIS
We address Appellants' arguments with respect to each of the
Examiner's rejections below.
Rejection 1. The Appellants do not separately argue claims 12, 14,
15, 17, or 18. We therefore limit our discussion to claim 11. Claims 12, 14,
15, 17, and 18 stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv)
(2013).
The Examiner rejects claim 11 as obvious over Matsumoto and
Ishizuka. Appellants admit Matsumoto discloses acidic monomers as recited
in claim 11. Reply Br. 6. Appellants do not persuasively dispute the
teachings of Matsumoto or the other references or the Examiner's rationales
for combining references. As such, we adopt the findings of fact set forth at
pages 3--4 of the Examiner's Final Rejection. Cf Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citation omitted) (We
review the appealed rejections for error based upon the issues identified by
Appellants and in light of the arguments and evidence produced thereon.).
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Application 12/741,550
Appellants present three arguments as to why the Examiner's
obviousness conclusion is incorrect. As explained below, each argument is
unpersuasive.
First, Appellants argue that neither Matsumoto nor Ishizuka teach
claim 11 's recited "wherein said coating imparts [] a substantially uniform
chargeability to the entire surface of each particle." Appeal Br. 14.
Appellants admit this limitation is functional (id.), and we agree. While a
patent applicant may recite features structurally or functionally, "choosing to
define an element functionally, i.e., by what it does, carries with it a risk."
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). In particular, where
there is reason to believe that prior art structure is capable of performing the
claimed function, the burden shifts to the applicant to show that the claimed
function patentably distinguishes the claimed structure from the prior art
structure. See id.; In re Hallman, 655 F.2d 212, 215 (CCPA 1981)
(affirming rejections where applicant failed to show that prior art structures
were not inherently capable of functioning as claimed invention). Moreover,
"discovery of a previously unappreciated property of a prior art composition
... does not render the old composition patentably new to the discoverer."
Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999).
Here, the Examiner correctly explained that Matsumoto teaches a
process resulting in spherical toner particles where "resin composition is
uniform among the respective particles." Matsumoto Abstract, 10:22-32;
Ans. 9. We also agree with the Examiner that, from the description of the
process, it is clear that colorant particles are completely covered by the
polymer binder. Final Act. 4--5 (citing Matsumoto 7:55-10:61). The
resulting toner has "good chargeability." Matsumoto 2:43--47; Ans. 9.
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Appeal2014-007422
Application 12/741,550
The Specification teaches that particles having structural
characteristics taught by Matsumoto will have uniform particle
chargeability. In particular, the Specification explains that irregular shapes
result in particles that do not charge uniformly. Spec. 5: 18. Spherical
particles-like those taught by Matsumoto---have "a smoother and/or more
rounded surface allow[ing] static charge to collect more densely on the
particle and in a more uniform distribution over the over the entire surface of
the coating." Spec. 7: 12-15. Use of acidic monomers-as taught by
Matsumoto---can "further improve the charging and discharging properties
of the resulting polymer coating .... " Spec. 7:34--8:3. Based on these facts
and as further explained by the Examiner, we thus agree with the Examiner
that Matsumoto's structure necessarily results in uniform or (at least
substantially uniform2) chargeability to the entire surface of each particle.
Ans. 10.
Matsumoto, for the reasons explained above, also demonstrates
particles capable of uniform chargeability. Ans. 12-13. Appellants fail to
show that the claimed structure differs from the prior art structure. Cf In re
Schreiber, 128 F.3d at 1478. Thus, Appellants' argument that the cited
references do not teach the functional "uniform chargeability" limitation is
unpersuasive.
Second, Appellants argue that incorporation of an acidic monomer is
"unexpected over the art" and that "achieving substantially uniform
2 Claim 11 only requires "substantially uniform chargeability." Moreover,
the Specification defines "uniform" in the context of a characteristic of a
surface as indicating "the characteristic is distributed over the surface
without substantial discontinuities or differences in magnitude or density."
Spec. 2:21.
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Appeal2014-007422
Application 12/741,550
chargeability" is "unexpected over the art." Appeal Br. 14, 1 7. The
Specification, however, provides no data proving uniform chargeability of a
particular particle and does not explain how one could determine whether or
not a particle has uniform chargeability. Appellants also provide no
declaration or other evidence that would persuasively establish unexpected
results. Thus, Appellants' unexpected results argument fails because
Appellants submit no objective evidence to support the argument. Cf In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980) ("objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support").
Third, Appellants appear to argue in reply that Matsumoto does not
provide adequate direction in selecting acidic monomers from among the
different types of monomers disclosed. Reply Br. 6. We need not consider
this argument because it is raised for the first time on reply. 37 C.F.R.
§ 41.41(2).
For the reasons above, we sustain the Examiner's first rejection.
Rejection 2. The Examiner rejected claims 19, 20, and 22-25 as
obvious over Matsumoto, Ishizuka, and the Handbook. Claim 19 recites
"uniform chargeability" similarly to claim 11: "wherein said polymer
coating has a substantially uniform chargeability over its entire surface .... "
Appeal Br. 22-23 (Claim Appendix). Appellants respond to the Examiner's
second rejection by raising the same arguments Appellants raise with respect
to claim 11. Appeal Br. 16-17; Reply Br. 6-7. Accordingly, we sustain the
Examiner's second rejection for the reasons explained above.
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Application 12/741,550
DECISION
For the above reasons, we affirm the Examiner's rejections. In
particular, we affirm (1) the Examiner's rejection of claims 11, 12, 14, 15,
17, and 18 under 35 U.S.C. § 103 as unpatentable over the combination of
Matsumoto and Ishizuka and (2) the Examiner's rejection of claims 19, 20,
and 22-25 under 35 U.S.C. § 103 as unpatentable over the combination of
Matsumoto, Ishizuka, and the Handbook.
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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