Ex Parte Kabalnov

Board of Patent Appeals and Interferences

Apr 30, 2009

09859864 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEXEY S. KABALNOV
____________

Appeal 2008-4139
Application 09/859,864
Technology Center 1700
____________

Decided:1 April 30, 2009
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, 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 11 through 15, 19, 20, and 34. Claims 1
through 10 and 21 through 33, the other claims pending in this application,

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-4139
Application 09/859,864

stand withdrawn from consideration by the Examiner. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a gelled printed image on a
substrate.
Further details of the appealed subject matter are recited in claims 11
and 20, which are reproduced below:
11. A gelled printed image on a substrate comprising:

a) a fixing fluid containing a fixing agent, printed in contact with,

b) an aqueous ink-jet ink comprising:

i) a low molecular weight humectant,

ii) a polyvinyl(alcohol-acetate) species, and

iii) a dye or pigment,

wherein said fixing fluid and said aqueous ink-jet ink are separately
printed in layers with respect to one another, and wherein said fixing
agent and said polyvinyl(alcoho1-acetate) interact to form a gel of the
ink-jet ink on said substrate.

20. An image as in claim 11 wherein the polyvinyl(alcohol-acetate)
species is a graft copolymer of polyvinyl(alcohol-acetate) and a
second polymer.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
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Shields US 5,476,540 Dec. 19, 1995
Yamamoto US 5,888,253 Mar. 30, 1999
Smith US 6,270,214 B1 Aug. 7, 2001

Appellant appeals the following rejections of the Examiner:
1) Claims 11-15, and 34 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Shields and Smith; and
2) Claims 19, 20, and 34 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Shields, Smith, and Yamamoto.

With respect to rejection (1), Appellant separately argues the rejection
of independent claim 11. (App. Br. 23-25 and Reply Br. 6-9). Appellant
does not advance any specific argument regarding the rejection of the
remaining claims, which ultimately depend from independent claim 11. Id.
Accordingly, we address Appellant’s arguments regarding the rejection with
respect to claim 11 only. See 37 C.F.R. § 41.37(c)(1)(vii)(2007).
With respect to rejection (2), Appellant separately argues a feature
recited in claim 20, which depends from independent claim 11. (App. Br.
23-25 and Reply Br. 6-9). Appellant does not advance any specific
argument regarding the rejection of the remaining claims, which depend
from independent claim 11. Id. Accordingly, we address Appellant's
arguments regarding the rejection with respect to claim 20. For reasons
evident below, we also address the rejection of the remaining claims 19 and
34 not argued by Appellant. See 37 C.F.R. § 41.37(c)(1)(vii)(2007).

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ISSUES
With respect to rejection (1), the Examiner states that "[i]t would have
been obvious to one of ordinary skill in the art to include humectants like
polyethylene glycol to the ink of Shields because Smith provides using
humectants in fixing fluids that improve image fixation . . ." (Ans. 5).
Appellant argues that "Smith does not teach gelation or the advantage to be
derived from adding humectants to a gelled ink composition." (App. Br. 24-
25).
In addition, Appellant argues that

[T]he present invention provides a substrate having a gelled printed
image wherein the fixing fluid and the aqueous ink-jet ink are
separately printed in layers with respect to one another, not an image
printed with respect to a portion of a pretreated region. In other
words, the claim set effectively limits the printing of the fixing fluid
and the aqueous ink-jet ink over one another. Therefore, the printed
image is confined to such an arrangement. Compositions that do not
print a fixing fluid with respect to the aqueous ink-jet ink, or vice
versa, would not read on the present claim set. As such, this element
is not merely a process limitation but serves to limit the compositions
covered by the claim.

(App. Br. 24). In addition, Appellant argues that

[S]uch embodiments having regions of gel-initiating species would
necessarily contain regions absent of gel-initiating species. Even
though such an embodiment would still control color bleed between
the gelled and ungelled multi-colored regions, the embodiments in
Shields must infer ungelled images are present.
(App. Br. 24). Appellant also argues that "Independent Claim 11 recites that
the fixing fluid and the ink are printed in layers with respect to each other
and that they form a gel, the image itself must be a gelled printed image (not
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just image borders for purpose of bleed control). Such a claim reads in stark
contrast to Shields which clearly teaches gellation between regions of ink."
(Reply Br. 7-8).
Thus, the first issue is: Has Appellant shown reversible error in the
Examiner's determination that Shields in combination with Smith would
have suggested a gelled printed image on a substrate comprising, inter alia,
an aqueous ink-jet ink having a humectant and wherein the fixing fluid and
aqueous ink-jet ink are separately printed in layers with respect to one
another as required by claim 11 within the meaning of 35 U.S.C. § 103? We
decide this issue in the negative.
With respect to rejection (2) involving claim 20, the Examiner states
that "[i]t would have been obvious to one having ordinary skill in the art to
have modified Shields to include surfactants and polyvinyl alcohol-acetate
species of graft copolymer including a second polymer because Yamamoto
teaches using the aforesaid ingredients in an ink composition are required for
assisting in dispersing the dye in the ink as cited above." (Ans. 6). With
regard to the requirement of claim 20 that the graft copolymer of
polyvinyl(alcohol-acetate) interact with the fixing fluid to form a gel, the
Examiner states that "the absence of this inherent property (gel-forming)
from Yamamoto is of no consequence because Shields teaches the same
PVA and its inherent gel property." (Ans. 8).
Appellant argues that "Yamamoto clearly discloses the graft
copolymers as a resin dispersant which is 'a compound for dispersing a
disperse dye' in an aqueous ink. . . . As such, there is no teaching that such a
graft copolymer would be suitable as a gelling agent." (App. Br. 25-26).
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Thus, the second issue is: Has Appellant shown reversible error in the
Examiner's determination that Shields in combination with Smith and
Yamamoto would have suggested a gelled printed image on a substrate
having a gel formed by interacting a graft copolymer of polyvinyl(alcohol-
acetate) and a second polymer with a fixing agent as required by claim 20,
which depends from independent claim 11, within the meaning of 35 U.S.C.
§ 103? We decide this issue in the affirmative.

FINDINGS OF FACT (FF)
1. The Specification defines "image" as "any marking on a substrate."
(Spec. 5). The Specification does not define or limit the term "layers"
as stacking each individual thickness of the fixing fluid and aqueous
ink-jet ink directly on top of one another. (See Specification in its
entirety).
2. Appellant does not dispute the Examiner's finding that Shields teaches
gellation of a gel-forming ink for an ink-jet printing apparatus on a
print medium, where the gel is formed by contacting a gel-initiating
species with a gel-forming species and coloring agent (i.e., a gel-
forming ink). (Compare Ans. 4-5 and 7 with App. Br. 21-27 and
Reply Br. 4-10; see also Shields, col. 1, ll. 1-5 and col. 2, ll. 36-44).
Appellant does not dispute that this gel-forming ink is composed of all
of the ingredients required by claim 11, except for the low molecular
weight humectant. Id. Shields also teaches, in a preferred
embodiment, pretreating a region of a print medium with a gel-
initiating species prior to printing with a gel-forming ink, which is
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composed of a gel-forming species and at least one colorant. (Shields,
col. 1, ll. 1-5 and col. 3, ll. 22-25).
3. Appellant does not dispute the Examiner's finding that Smith teaches a
low molecular weight humectant as required by claim 11. (Compare
Ans. 4-5 with App. Br. 21-27 and Reply Br. 4-10). In this regard,
Smith teaches an ink composition for an ink jet printing apparatus
having, inter alia, polyethylene glycol to "serve as a humectant,
penetrant, and/or dye solubilizing component." (Smith, col. 20, ll. 27-
56 and col. 1, ll. 5-25).
4. The Examiner has not articulated any reasoning as to whether a graft
copolymer of polyvinyl(alcohol-acetate) would react with the fixing
agent to form a gel. (See Answer in its entirety). In this regard, the
Examiner does not direct us to any teaching in Yamamoto that a graft
copolymer of polyvinyl(alcohol-acetate) would form a gel as required
by claim 20. (See Answer in its entirety)
5. With respect to the features recited in claims 19 and 34, Appellant
does not dispute the Examiner's factual findings regarding Shields,
Smith, or Yamamoto. (Compare Ans. 4-5 with App. Br. 21-27 and
4-10). Nor does Appellant dispute the Examiner's reason to combine
these references. Id.

PRINCIPLES OF LAW
“During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989).
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When a claim employs the transitional term “comprising,” it is
interpreted as not precluding the presence of additional elements which are
not recited. In re Baxter, 656 F.2d 679, 686 (CCPA 1981) (“As long as one
of the [claimed] monomers in the reaction is propylene, any other monomer
may be present, because the term ‘comprises’ permits the inclusion of other
[unrecited] steps, elements, or materials.”).
“[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.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
A factual finding not shown by Appellant to be erroneous may be
accepted as fact. In re Kunzmann, 326 F.2d 424, 426 n. 3 (CCPA 1964). In
addition, “[w]here the appellant has failed to challenge a fact judicially
noticed and it is clear that he has been amply apprised of such finding so as
to have the opportunity to make such challenge, the board's finding will be
considered conclusive by this court.” In re Ahlert, 424 F.2d 1088, 1091
(CCPA 1970).
“[W]here the prior art gives reason or motivation to make the claimed
[invention] . . . the burden (and opportunity) then falls on an applicant to
rebut that prima facie case. Such rebuttal or argument can consist of . . .
[any] argument or presentation of evidence that is pertinent.” In re Dillon,
919 F.2d 688, 692-93 (Fed. Cir. 1990) (en banc) (emphasis omitted). This
may include evidence that shows that the combination was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
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unobvious step over the prior art.” Leapfrog Enterprises, Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).

ANALYSES AND CONCLUSIONS
ISSUE (1): Has Appellant shown reversible error in the Examiner's
determination that Shields in combination with Smith would have suggested
a gelled printed image on a substrate comprising, inter alia, an aqueous ink-
jet ink having a humectant and wherein the fixing fluid and aqueous ink-jet
ink are separately printed in layers with respect to one another as required
by claim 11 within the meaning of 35 U.S.C. § 103?

Appellant does not dispute the Examiner's finding that Shields teaches
gellation of a gel-forming ink for an ink-jet printing apparatus on a print
medium, where the gel is formed by contacting a gel-initiating species
(corresponding to the recited fixing fluid) with a gel-forming species and
coloring agent (i.e., a gel-forming ink) (corresponding to the recited aqueous
ink-jet ink). (FF 2). Nor does Appellant dispute the Examiner's finding that
this gel-forming ink is composed of all of the ingredients required by claim
11, except for the low molecular weight humectant. (FF 2).
In addition, Appellant does not dispute the Examiner's finding that
Smith teaches a low molecular weight humectant as required by claim 11.
(FF 3). In this regard, Smith teaches an ink composition for an ink-jet
printing apparatus having, inter alia, polyethylene glycol to "serve as a
humectant, penetrant, and/or dye solubilizing component." (FF 3).
Therefore, we determine that it would have been prima facie obvious
for one of ordinary skill in the art to employ Smith's polyethylene glycol in
Shield's gel-forming ink. In this regard, the use of Smith's polyethylene
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glycol is nothing more than the predictable use of a prior art element (i.e.,
humectant) according to its established function (e.g., moisture retention).
“[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.” KSR,
550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)).
Appellant argues that
[i]ndependent Claim 11 recites that the fixing fluid and the ink are
printed in layers with respect to each other and that they form a gel,
the image itself must be a gelled printed image (not just image borders
for purpose of bleed control). Such a claim reads in stark contrast to
Shields which clearly teaches gellation between regions of ink.
(Reply Br. 7-8).
We do not agree. The Specification defines "image" as "any marking
on a substrate." (FF 1). As stated above, it is undisputed that Shields
teaches gellation of a gel-forming ink on a print medium, where the gel is
formed by contacting a gel-initiating species (corresponding to the recited
fixing fluid) with a gel-forming ink (corresponding to the recited aqueous
ink-jet ink). This meets the recited "image" as the gel-forming ink and gel-
initiating species are brought into contact to form a gel (i.e., marking) on a
print medium (i.e., substrate).
In addition, we note that claim 11, by virtue of using “comprising,”
permits the inclusion of unrecited features, including portions of a print
medium that have no gel. Baxter, 656 F.2d at 686. Accordingly,
Appellant’s argument that Shields’ image includes non-gelled portions is
without persuasive merit.
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Appellant also argues that:

[T]he present invention provides a substrate having a gelled printed
image wherein the fixing fluid and the aqueous ink-jet ink are
separately printed in layers with respect to one another, not an image
printed with respect to a portion of a pretreated region. In other
words, the claim set effectively limits the printing of the fixing fluid
and the aqueous ink-jet ink over one another. Therefore, the printed
image is confined to such an arrangement. Compositions that do not
print a fixing fluid with respect to the aqueous ink-jet ink, or vice
versa, would not read on the present claim set. As such, this element
is not merely a process limitation but serves to limit the compositions
covered by the claim.
(App. Br. 24). We disagree.
Appellant’s Specification does not define or limit the term "layers" as
stacking each individual thickness of fixing fluid and aqueous ink-jet ink
directly on top of one another. (FF 1). Therefore, we give the broadest
reasonable meaning to this term in its ordinary usage as it would be
understood by one of ordinary skill in the art. In doing so, we determine that
the term "layers" refers to more than one thickness of material laid on or
spread on a surface or lying over or under another thickness of material.
See, e.g., Merriam-Webster's Collegiate Dictionary (Merriam-Webster,
Incorporated, 2005) (layer defines as "one thickness, course, or fold laid or
lying over or under another").
Therefore, giving the broadest reasonable meaning to the term
"layers," Shields' gel-forming ink (one thickness) and adjacent gel-initiating
species (another thickness), which each overlie another surface (the
substrate), meet the claim term "layers." Zletz, 893 F.2d at 321. Appellant
has presented no persuasive argument or evidence which establishes that a
narrower claim construction is warranted.
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Even if we were to adopt Appellant’s narrower interpretation of the
term "layers," the outcome of our decision would not be altered.
Specifically, we determine that Shields teaches, in a preferred embodiment,
pretreating a region of a print medium with a gel-initiating species prior to
printing with a gel-forming ink, which is composed of a gel-forming species
and at least one colorant. (FF 2). In this regard, in reference to our above
discussion, we note that claim 11, by virtue of using the term “comprising,”
permits the inclusion of unrecited features, including portions of a print
medium that have no gel. See Baxter, 656 F.2d at 686.
Therefore, because a prima facie case of obviousness has been
established, we determine that the burden properly has been shifted to
Appellant to present persuasive arguments or evidence refuting the
Examiner's prima facie case. However, on this record, Appellant has
presented no persuasive argument or evidence rebutting the Examiner's
prima facie case of obviousness.
Thus, it follows that Appellant has not shown reversible error in the
Examiner's determination that Shields in combination with Smith would
have suggested a gelled printed image on a substrate comprising, inter alia,
an aqueous ink-jet ink having a humectant and wherein the fixing fluid and
aqueous ink-jet ink are separately printed in layers with respect to one
another as required by claim 11 within the meaning of 35 U.S.C. § 103.
Accordingly, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claims 11-15, and 34
under 35 U.S.C. § 103(a).

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ISSUE (2): Has Appellant shown reversible error in the Examiner's
determination that Shields in combination with Smith and Yamamoto would
have suggested a gelled printed image on a substrate having a gel formed
by interacting a graft copolymer of polyvinyl(alcohol-acetate) and a second
polymer with a fixing agent as required by claim 20, which depends from
independent claim 11, within the meaning of 35 U.S.C. § 103?

Claim 20
The Examiner alleges that
[i]t would have been obvious to one having ordinary skill in the art to
have modified Shields to include surfactants and polyvinyl alcohol-
acetate species of graft copolymer including a second polymer
because Yamamoto teaches using the aforesaid ingredients in an ink
composition are required for assisting in dispersing the dye in the ink
as cited above.
(Ans. 6). In addition, the Examiner alleges that "the absence of this inherent
property (gel-forming) from Yamamoto is of no consequence because
Shields teaches the same PVA and its inherent gel property." (Ans. 8). We
disagree.
We begin by noting that independent claim 11 requires that a
polyvinyl(alcohol-acetate) interact with a fixing agent to form a gel. Claim
20, which depends from independent claim 11, requires that "the
polyvinyl(alcohol-acetate) species is a graft copolymer of polyvinyl(alcohol-
acetate) and a second polymer." Thus, dependent claim 20, when read with
independent claim 11, requires that the gel be formed by interacting a graft
copolymer of polyvinyl(alcohol-acetate) and a second polymer with a fixing
agent.
Appellant argues that "Yamamoto clearly discloses the graft
copolymers as a resin dispersant which is 'a compound for dispersing a
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disperse dye' in an aqueous ink. . . . As such, there is no teaching that such a
graft copolymer would be suitable as a gelling agent." (App. Br. 25-26).
On this record, the Examiner has not articulated any reasoning as to
whether a graft copolymer of polyvinyl(alcohol-acetate) would react with
the fixing agent to form a gel. (FF 4). In this regard, the Examiner does not
direct us to any teaching in Yamamoto that a graft copolymer of
polyvinyl(alcohol-acetate) would form a gel as required by claim 20. (FF 4).
Moreover, the Examiner’s reliance on Shields as teaching the inherent
gel property of PVA is misplaced with respect to claim 20. The Examiner
finds that Shields fails to teach the graft copolymer of polyvinyl(alcohol-
acetate) recited in claim 20 (Ans. 6). Accordingly, we do not understand
how Shields, which admittedly does not teach the graft copolymer of
polyvinyl(alcohol-acetate) recited in claim 20, can establish that such graft
copolymer of polyvinyl(alcohol-acetate) and a second polymer would
inherently possess the gel property.
Thus, it follows that Appellant has shown reversible error in the
Examiner's determination that Shields in combination with Smith and
Yamamoto would have suggested a gelled printed image on a substrate
having a gel formed by interacting a graft copolymer of polyvinyl(alcohol-
acetate) and a second polymer with a fixing agent as required by claim 20,
which depends from independent claim 11, within the meaning of 35 U.S.C.
§ 103.
Accordingly, we reverse the Examiner's decision rejecting claim 20
under 35 U.S.C. § 103(a).

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Claims 19 and 34
With respect to the features recited in claims 19 and 34, Appellant
does not dispute the Examiner's factual findings regarding Shields, Smith, or
Yamamoto. (FF 5). Nor does Appellant dispute the Examiner's reason to
combine these references. (FF 5).
Therefore, we determine that it would have been obvious to one of
ordinary skill in the art to employ a surfactant in the ink-jet ink and the
substrate as required by claims 19 and 34, respectively, within the meaning
of § 103(a).
Thus, based on the same Factual Findings and conclusions set forth
above in reference to Issue (1), we concur with the Examiner that Shields in
combination with Smith and Yamamoto would have rendered the subject
matter recited in claims 19 and 34 obvious to one of ordinary skill in the art
within the meaning of 35 U.S.C. § 103(a).
Accordingly, based on the factual findings set forth in the Answer and
above, we affirm the Examiner's decision rejecting claims 19 and 34 under
35 U.S.C. § 103(a).

ORDER
In summary:

1. The § 103(a) rejection of claims 11-15, and 34 over the combined
disclosures of Shields and Smith is affirmed;
2. The § 103(a) rejection of claim 20 over the combined disclosures
of Shields, Smith, and Yamamoto is reversed; and
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3. The § 103(a) rejection of claims 19 and 34 over the combined
disclosures of Shields, Smith, and Yamamoto is affirmed.
Accordingly, the decision of the Examiner is affirmed-in-part.

TIME PERIOD
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)(v)(2008).

AFFIRMED-IN-PART

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