Ex Parte Ma et al

Board of Patent Appeals and Interferences

Jul 27, 2012

11290788 (B.P.A.I. Jul. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ZEYING MA, PETER C. MORRIS,
ANNE M. KELLY-ROWLEY, STEPHEN W. BAUER,
WILLIAM S. CRESSMAN, and SEAN W. DOBBINS
________________

Appeal 2011-006618
Application 11/290,788
Technology Center 1700
________________

Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006618
Application 11/290,788

2
The Examiner finally rejected claims 1, 3-22, and 24-33 of
Application 11/290,788 as anticipated under 35 U.S.C. § 102(b) and/or as
obvious under 35 U.S.C. § 103(a). Appellants seek reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
Background
The ’788 application describes an ink set for use inkjet printing. The
claimed ink set allegedly has an improved print quality performance. Spec.
¶ [0001].
Commercial print media often are smooth and glossy due to a
nonporous coating on the surface of the media. Id. at ¶ [0003]. The
nonporous coating is a hydrophobic material, such as a hydrophobic
polymer. Id. Therefore, the inks used in commercial printing are typically
oil-based. Id. Inks used in inkjet printers, on the other hand, are typically
water-based and, therefore, are not compatible with existing commercial
print media. Id. To print in commercial volumes and at commercial speeds
using inkjet printing, modified inks have been developed. Id. Images printed
with these inks, however, have less than optimal properties. Id.
The ’788 application describes an ink set that allegedly has improved
properties, especially when used in a commercial inkjet printing operation.
Id. at ¶ [0005]. The inks are aqueous based and have predetermined dynamic
surface tensions. Id. at ¶ [0007]. In particular, a darker colored ink has a
higher dynamic surface tension than a lighter colored ink. Id. at ¶¶ [0007],
[0021]. Ink sets with this property provide images that have a reduced
incidence of visible bleed of one color into another color printed adjacent
Appeal 2011-006618
Application 11/290,788

3
thereto. Id. at ¶ [0015]. The dynamic surface tension of each of the inks in an
ink set is adjusted by changing the amount and identity of a hydrocarbon
surfactant included in the formulation of each ink. Id. at ¶ [0019]. The static
surface tension of the inks is adjusted through the use of a fluorocarbon
surfactant. Id. at ¶ [0020].
Rejections
1. The Examiner rejected claims 1, 19, 22, 27, and 29 under
35 U.S.C. § 102(b) as anticipated by U.S. Published Patent
Application No. 2004/0069183 A1 (“Kamoto,” April 15, 2004).
2. The Examiner rejected claims 1, 3-15, 18-22, 24-31, and 33 under
35 U.S.C. § 103(a) as obvious over European Patent Application
1 243 628 A1 (“Ma,” published Sept. 25, 2002).
3. The Examiner rejected claims 16-17 and 32 under 35 U.S.C.
§ 103(a) as obvious over Ma in view of U.S. Published Patent
Application No. 2001/0035110 A1 (“Kato,” Nov. 1, 2001).
Discussion
Rejection 1. The Examiner rejected claims 1, 19, 22, 27, and 29 as
anticipated by Kamoto. Appellants present arguments for patentability of
these claims in two groups: (1) claims 1, 22, and 27; and (2) claims 19 and
29. Claim 1 of the ’788 application is representative of the first group of
claims, 37 C.F.R. § 41.37(c)(1)(vii), and is reproduced below:
1. An inkjet ink set, comprising:
a. A plurality of inks including at least a first and a
second ink, each ink comprising an aqueous vehicle;
b. a first colorant dispersed in the first ink having a
pre-determined dynamic surface tension; and
Appeal 2011-006618
Application 11/290,788

4
c. a second colorant being different than the first
colorant and dispersed in the second ink, the second ink
being darker than the first ink and having a pre-
determined dynamic surface tension greater than the
dynamic surface tension of the first ink, wherein the first
and second inks have substantially similar static surface
tensions.
App. Br. 18.
The Examiner rejected this claim as anticipated by Kamoto. Final
Office Action 2 (“FOA,” April 29, 2010). In making this rejection, the
Examiner specifically relied upon “[t]he ink set of table 4 example 1 [of
Kamoto] when black is part of the ink set.” FOA 3. As Appellants point out,
however, Kamoto does not describe the use of any sort of black ink as part
of that ink set. Appeal Br. 11-12. In response, the Examiner noted that the
claims are not color specific, and that the first ink could, for example, be
blue and that the second ink could be red. Ans. 10. This selection would,
according to the Examiner, meet the limitations of the claimed invention. Id.
The properties of the ink set the Examiner relies upon are set forth below:
Color Dynamic Surface Tension (mN/m) 1
Static Surface Tension
(mN/M)
Cyan 31.9 27.8
Magenta 34.7 30.8
Yellow 34.4 30.4
Kamoto ¶¶ [0234], [0241].
The Examiner’s assertion is incorrect. As the ’788 application’s
Specification explains, cyan and magenta inks are regarded as having
equivalent darkness. Spec. ¶ [0021]. Thus, a comparison of the properties of
the cyan and magenta inks does not fall within the scope of the claimed

1 1.0 mN/m converts to 1.0 dyne/cm.
Appeal 2011-006618
Application 11/290,788

5
invention. The Examiner suggests that the cyan ink could be formulated to
make a light cyan, so that the magenta ink would in fact be darker. Ans. 10.
Kamoto does not suggest such a possibility. Because the ’788 application
does suggest such formulations, Spec. ¶ [0016], it does not “describe” them
within the meaning of § 102.
For this reason, the Examiner’s asserted combination of the magenta
and cyan inks described by Kamoto do not anticipate the ’788 application’s
claims.
Our analysis does not end here, however. In their briefs, Appellants
address combinations of inks disclosed in Kamoto but not discussed by the
Examiner. App. Br. 12; Reply Br. 5-6. Specifically, Appellants address
combinations using the yellow ink described by Kamoto as the first ink and
either the cyan or magenta inks as the second ink.
We agree with Appellants that the combination of the cyan and yellow
inks does not anticipate the claims of the ’788 application because the darker
of the two inks, the cyan ink, has a lower dynamic surface tension (31.9
mN/m) than does the lighter of the two inks, the yellow ink (34.4 nM/m).
Thus, this pair of inks does not meet the claim limitation requiring that the
second, darker, ink have a greater dynamic surface tension than the first,
lighter, ink.
The combination of Kamoto’s magenta and yellow inks, however, is
more problematic. The darker magenta ink has a dynamic surface tension
(34.7 mN/m) that is literally greater than the yellow ink (34.4 mN/m), while
the static surface tensions (30.8 and 30.4 mN/m, respectively) are
substantially similar. We therefore consider whether this ink set anticipates
Appeal 2011-006618
Application 11/290,788

6
the claims of the ’788 application. For the reasons set forth below, we
conclude that it does not.
As discussed above, the ’788 application’s Specification describes and
provides dynamic surface tension measurements rounded to the nearest
whole unit. See, e.g., Spec. ¶¶ [0071], [0077], [0080]. Similarly, when the
Specification does discuss the measured static surface tensions of the various
ink formulations it describes, it also reports those values to the nearest whole
unit. Id. at ¶ [0042]. Because the ’788 application reports surface tension
measurements to the nearest whole unit, we conclude that the whole unit is
the last significant figure in such measurements for purposes of the claims of
the ’788 application. As Appellants point out, at this degree of precision, the
difference in the dynamic surface tension between the magenta and yellow
inks described in Kamoto is 0. Reply Br. 6-7.
Furthermore, the working examples provided in the ’788 application’s
Specification exemplify the approximate magnitude of the differences in
dynamic surface tension that give the benefits described in the Specification.
Spec. at ¶¶ [0071]-[0072], [0075]-[0078]. None of these examples describe
that differences in the dynamic surface tension of less than 1 dyne/cm when
rounded to the neared whole unit would provide the claimed benefits of the
invention described in the ’788 application.
For these reasons, we conclude that the values of the difference in the
values of the dynamic surface tension between the first and second inks in
the claims of the ’788 application should be rounded to the nearest whole
unit in dynes/cm. This is consistent with the Specification’s treatment of that
digit as the last significant figure in surface tension measurements.
Appeal 2011-006618
Application 11/290,788

7
We therefore conclude that the magenta and yellow inks described in
Kamoto do not anticipate the claims of the ’788 application.

Claims 19 and 29
Appellants separately argue for the patentability of claims 19 and 29.
App. Br. 13. These dependent claims add the requirement that the dynamic
surface tension differential range from “about 1 to about 6 dynes/cm.” See,
e.g., App. Br. 22 (claim 19).
As discussed above, Kamoto describes an inkjet ink set with a
dynamic surface tension differential of 0.3 mN/m (which is equal to 0.3
dynes/cm). The Examiner argues that the inclusion of the word “about” in
the claimed ranges expands the scope of the range to include the 0.3
dynes/cm difference described in Kamoto. Ans. 10. Indeed, the Examiner
argues that Appellants’ use of the word “about” in the claimed range has a
sufficient broadening effect that it expands the claim limitation to include
differences in the dynamic surface tensions of the first and second inks of
less than zero. Id. Such a difference would arise when the lighter colored ink
has a higher dynamic surface tension than the darker ink.
This argument is not persuasive. Although the Examiner is correct in
stating that “[a]bout permits some tolerance,” id., neither the cases cited by
the Examiner nor the ’788 application’s Specification permits the amount of
tolerance sought by the Examiner. As Appellants assert, such an
interpretation would be inconsistent with the plain language of the claim.
Reply Br. 7. The Examiner’s interpretation of the claimed ranges in claims
19 and 29 of the ’788 application is, therefore, erroneous.
Appeal 2011-006618
Application 11/290,788

8
Furthermore, as discussed above, the ’788 application’s Specification
describes dynamic surface tension measurements to the nearest whole unit.
See Spec. at ¶¶ [0071], [0077], [0080]. At the level of precision used in the
’788 application’s claims, a 0.3 dyne/cm difference in the dynamic surface
tension is not significant. Indeed, the ’788 application describes examples of
the claimed invention in which the differences in the dynamic surface
tension are in the range of 8-10 dynes/cm as achieving the desired results. Id.
at ¶¶ [0072], [0073]. The ink set with the smallest described differences in
dynamic surface tension and suitable bleed performance had dynamic
surface tension differentials of 3 dynes/cm. Id. at ¶¶ [0076]-[0078].
For these reasons, we cannot sustain the Examiner’s rejection of
claims 19 and 29.
Rejections 2 and 3. The Examiner rejected the ’788 application’s
claims as obvious over Ma or Ma in view of Kato. Ans. 7-9. Ma describes an
ink set comprising a black ink and at least one color ink, wherein the color
ink has a lower surface tension than the black ink. Ma Abstract, ¶¶ [0011],
[0013].
We cannot sustain these rejections. Ma does not specify whether the
surface tension properties of the inks it is describing are dynamic or static
surface tensions. Based on normal language usage in the field, we conclude
that a person of ordinary skill in the art would understand Ma to be
discussing the static surface tension. This also is consistent with the absence
of any discussion of dynamic surface tension or changes in surface tension
as a function of time in the Ma disclosure.
Because Ma does not describe variation of the dynamic surface
tension between the inks in its ink set, it does not establish a case of prima
Appeal 2011-006618
Application 11/290,788

9
facie obviousness. The Examiner’s rejections based on Ma as the sole
reference cannot be sustained.
The Examiner cited Kato for its teaching of a particular
fluorosurfactant specified in several of the ’788 application’s dependent
claims. Kato does not remedy the deficiencies in Ma’s description.
Therefore the rejection of these dependent claims also cannot be sustained.
Conclusion
For the reasons set forth above, we do not sustain the rejection of
claims 1, 19, 22, 27, and 29 as anticipated by Kamoto. We also do not
sustain the rejection of claims 1, 3-15, 18-22, 24-31, and 33 as obvious over
Ma. Finally, we do not sustain the rejections of claims 16, 17, and 32 as
obvious over Ma in view of Kato.
REVERSED

ssl