Ex Parte Ganapathiappan et alDownload PDFPatent Trial and Appeal BoardMar 23, 201612741550 (P.T.A.B. Mar. 23, 2016) Copy Citation 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") 2 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.). 3 Appeal2014-007422 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. 4 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. 5 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. 6 Appeal2014-007422 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 7 Copy with citationCopy as parenthetical citation