Ex Parte Malhotra

Board of Patent Appeals and Interferences

Jan 29, 2004

09404570 (B.P.A.I. Jan. 29, 2004)

1 This appeal is related to Appeal No. 2002-0699 involving
Application 09/401,740.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHADI L. MALHOTRA
____________
Appeal No. 2002-0728
Application No. 09/404,5701
____________
ON BRIEF
____________
Before PAK, OWENS, and DELMENDO, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 1 through 21, 23 and 24. Claim
22, the only remaining claim pending in the present application,
has been allowed.
Appeal No. 2002-0728
Application No. 09/404,570
2 According to the appellant (Brief, Page 7):
The rejected claims do not stand or fall together.
Appellant will discuss distinctions between all of the appealed
claims....
However, the appellant only argues the examiner’s individual
rejections and the limitations of claims 4 and 10 separately.
Therefore, for purposes of this appeal, we select claims 1, 4, 6,
7, 10, 14, 23 from all of the appealed claims and determine the
propriety of the examiner’s rejections based on these claims
consistent with 37 CFR § 1.192(c)(7) (2001).
2
APPEALED SUBJECT MATTER
Claims 1, 6, 7, 10, 14 and 23 are representative of the
subject matter on appeal and read as follows:2
1. A hot melt ink composition comprising (a) an aldehyde
copolymer ink vehicle, (b) a nonpolymeric aldehyde viscosity
modifier, (c) a colorant, (d) an optional conductivity enhancing
agent, (e) an optional antioxidant, and (f) an optional UV
absorber.
6. An ink composition according to claim 1 wherein the ink
exhibits a conductivity of no less than about 6 log(picomho/cm).
7. An ink composition according to claim 1 wherein images
generated with the ink exhibit a haze value of no more than about
25.
10. An ink composition according to claim 1 wherein the
nonpolymeric aldehyde viscosity modifier is 3-hydroxy benzaldehyde,
4-hydroxy benzaldehyde, 4-benzyloxy benzaldehyde, 2-carboxy
benzaldehyde, 4-nitro benzaldehyde, 2,3-dihydroxy benzaldehyde,
2,5-dihydroxy benzaldehyde, 3-hydroxy-4-methoxy benzaldehyde, 4-
hydroxy-3-methoxy benzaldehyde, 4-hydroxy-3-ethoxy benzaldehyde,
4-hydroxy-3-methyl benzaldehyde, 2-hydroxy-5-nitrobenzaldehyde, 3-
hydroxy-4-nitrobenzaldehyde, 4-hydroxy-3-nitrobenzaldehyde, 3,4-
dibenzyloxy benzaldehyde, 3,5-dibenzyloxy benzaldehyde, 4-acetoxy-
3,5-dimethoxy benzaldehyde, 2-amino-3,5-dibromo benzaldehyde, 2-
Appeal No. 2002-0728
Application No. 09/404,570
3
benzyloxy-4,5-dimethoxy benzaldehyde, 5-bromo-2-hydroxy-3-methoxy
benzaldehyde, 4-hydroxy-3,5-dimethoxy benzaldehyde, 2,3,5-
trichlorobenzaldehyde, 2,3,6-trichlorobenzaldehyde, 2,4,5-
trimethoxy benzaldehyde, 2,4,6-trimethoxy benzaldehyde, 3,5-
dichloro-2-hydroxy-benzaldehyde, 3,5-dibromo-2-hydroxy-
benzaldehyde, 3,5-diiodo-2-hydroxy-benzaldehyde, 3,4-dihydroxy-5-
methoxy benzaldehyde, 3,5-dimethyl-4-hydroxy benzaldehyde, 2,6-
dimethoxybenzaldehyde, 2-nitro cinnamaldehyde, 4-(diethylamino)
cinnamaldehyde, 4-acetoxy-3-methoxy cinnamaldehyde, 4-hydroxy-3-
methoxy cinnamaldehyde, 2-hydroxy-1-naphthaldehyde, 2-methoxy-1-
naphthaldehyde, 9-anthraldehyde, 5-bromo-2-furaldehyde, 5-nitro-2-
thiophene carboxaldehyde, 9-ethyl-3-carbazole carboxaldehyde,
4-stillbene carboxaldehyde, 2-hydroxy-5-methyl-1,3-benzene
dicarboxaldehyde, terephthal dicarboxaldehyde, 2-
(diphenylphosphino) benzaldehyde, 1-(phenylsulfonyl)-2-
pyrrolecarboxaldehyde, 1-pyrene carboxaldehyde,
phenanthrene carboxaldehyde, 2-fluorenecarboxaldehyde, or mixtures
thereof.
14. An ink composition according to claim 1 containing a
conductivity enhancing agent which is a complex of a dianiline and
a phosphorus-containing acid.
23. An ink composition according to claim 1 wherein the aldehyde
copolymer ink vehicle is poly ((phenyl glycidyl ether)-co-
formaldehyde), poly ((o-cresyl glycidyl ether)-co-formaldehyde), or
mixtures thereof.
REFERENCES
The examiner relies on the following prior art references:
Watt 4,105,806 Aug. 8, 1978
Schwarz et al. (Schwarz) 5,122,187 Jun. 16, 1992
Takazawa et al. (Takazawa) 5,279,655 Jan. 18, 1994
Tobias et al. (Tobias) 5,286,288 Feb. 15, 1994
Shacklette 5,378,403 Jan. 3, 1995
Malhotra et al. (Malhotra) 5,931,995 Aug. 3, 1999
Siddiqui 5,939,468 Aug. 17, 1999
Nishizaki et al. (Nishizaki) 6,022,910 Feb. 8, 2000
Han WO 93/22775 Nov. 11, 1993
(Published International Patent Application)
Appeal No. 2002-0728
Application No. 09/404,570
4
REJECTIONS
The appealed claims stand rejected as follows:
(1) Claims 1 through 5, 8 through 13 and 17 through 21 under 35
U.S.C. § 103, as unpatentable over Malhotra in view of either
Schwarz or Siddiqui, Watt, and Takazawa;
(2) Claims 6 and 16 under 35 U.S.C. § 103 as unpatentable over
Malhotra in view of either Schwarz or Siddiqui, Watt, and
Takazawa and further in view of Tobias;
(3) Claim 7 under 35 U.S.C. § 103 as unpatentable over Malhotra in
view of either Schwarz or Siddiqui, Watt, and Takazawa, and
further in view of Nishizaki;
(4) Claims 14 and 15 under 35 U.S.C. § 103 as unpatentable over
Malhotra in view of either Schwarz or Siddiqui, Watt, and
Takazawa, and further in view of Shacklette and Han; and
(5) Claims 23 and 24 under 35 U.S.C. § 103 as unpatentable over
the combined disclosures of Malhotra and Watt.
OPINION
We have carefully reviewed the claims, specification and
applied prior art references, including all of the arguments and
evidence advanced by both the examiner and the appellant in support
of their respective positions. As a result of this review, we have
made the determinations which follow.
Appeal No. 2002-0728
Application No. 09/404,570
5
We turn first to the examiner’s rejection of claims 1 through
5, 8 through 13 and 17 through 21 under 35 U.S.C. § 103 as
unpatentable over Malhotra in view of either Schwarz or Siddiqui,
Watt and Takazawa. We find that Schwarz discloses a hot melt ink
composition comprising, inter alia, a colorant, a binder and a
propellant. See column 4, lines 17-18 and the abstract. The
exemplified binder is a formaldehyde-toluene-sulfonamide which is
embraced by the claimed aldehyde copolymer ink vehicle. See, e.g.,
Examples III-VI, columns 16 and 17. The propellant includes, inter
alia, aldehydes having viscosities sufficient to enhance refill,
jettability, and substrate penetration characteristics of the ink
composition. See column 14, lines 25-29 and 45. These aldehydes
are embraced by the claimed nonpolymeric aldehyde viscosity
modifier. Thus, we determine that Schwarz alone would have led one
of ordinary skill in the art to select the claimed ingredients to
form a hot melt ink composition, with a reasonable expectation of
successfully improving its ink jet printing properties. See Merck
& Co. v. Biocraft Laboratories Inc., 874 F.2d 804, 807, 10 USPQ2d
1843, 1846 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re
Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962).
The appellant argues that Schwarz does not teach or suggest
the functional limitation relating to “the time required to change
Appeal No. 2002-0728
Application No. 09/404,570
6
the ink from a solid state to a liquid state” recited in claim 4.
See the Brief, page 16. Schwarz, however, teaches that its hot
melt ink composition has a melting temperature which almost
entirely overlaps the preferred melting temperature of the claimed
ink composition. See, e.g., column 6, lines 32-33. We also take
official notice that one of ordinary skill in the art knows that
the melting rate (time) of the hot-melt ink composition described
in Schwarz is also dependent on the heating temperature employed.
However, claim 4 does not specify a heating temperature. Thus, it
is reasonable to conclude that the functional limitation recited in
claim 4 does not distinguish the claimed ink composition from the
ink composition suggested by Schwarz. Compare In re Schreiber, 128
F.3d 1473, 1477, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); In re
Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA 1973); In re
Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967); In re
Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963)
The appellant argues that none of the applied prior art
references would have suggested the ink composition recited in
claim 10. See the Brief, pages 12-13. We concur with the
appellant that the examiner has not presented sufficient evidence
to show that one of ordinary skill in the art would have been led
to employ the aldehyde copolymer taught in Schwarz, Siddiqui and/or
Appeal No. 2002-0728
Application No. 09/404,570
7
Watt in the ink composition of Malhotra. Specifically, the
examiner has not established that one of ordinary skill in the art
would have reasonably expected that the aldehyde copolymer useful
for the ink composition of Schwarz, Siddiqui and/or Watt is useful
for the purposes of Malhotra’s ink composition. See the Answer in
its entirety. In this regard, we note the applied prior art
references are directed to employing materially different
ingredients for different purposes.
Accordingly, we affirm the examiner’s decision rejecting
claims 1 through 5, 8, 9, 11 through 13 and 17 through 21 under 35
U.S.C. § 103, but reverse the examiner’s decision rejecting claim
10 under 35 U.S.C. § 103.
We turn next to the examiner’s rejection of claims 6 and 16
under 35 U.S.C. § 103 as unpatentable over Malhotra in view of
either Schwarz or Siddiqui, Watt and Takazawa and further in view
of Tobias. The content of Schwarz is discussed above. Schwarz
does not mention that its hot melt ink composition has the claimed
conductivity property.

Appeal No. 2002-0728
Application No. 09/404,570
8
To remedy this deficiency, the examiner relies on the
disclosure of Tobias. The examiner finds (Answer, page 7), and the
appellant does not dispute (Brief, pages 26-28), that:
Tobias et al., which is d rawn to hot melt inks,
discloses the use of 0.1-5% conductivity agents in order
to control the conductivity of the ink from 500-1500
microsiemens/cm or approximately 8.7-9.2 log(picomho/cm)
which ensures that the ink has sufficient conductivity in
order to be successfully ink jet printed (col.3, line 19,
lines 29-30 and 35-37).
The appellant also acknowledges (Brief, page 26) that:
Tobias et al. discloses a hot melt ink composition
for use in continuous ink jet printing comprising an
electrolyte, an electrolyte solvating and dissociating
compound, and an image-forming agent, said ink being
solid at about 25
C, said ink liquefying at a
temperature between 75
C and 175
C, and said ink in the
liquid stage having a conductivity of greater than about
100 microsiemens/cm.
Thus, we determine that one of ordinary skill in the art would have
been led to ensure that the hot melt ink composition of Schwarz has
sufficient conductivity, such as that claimed, so that it can be
“successfully ink jet printed” during the continuous ink jet
printing process.
Accordingly, we affirm the examiner’s decision rejecting
claims 6 and 16 under 35 U.S.C. § 103.
We turn next to the examiner’s rejection of claim 7 under 35
U.S.C. § 103 as unpatentable over Malhotra in view of either
Appeal No. 2002-0728
Application No. 09/404,570
9
Schwarz or Siddiqui, Watt and Takazawa, and further in view of
Nishizaki. The examiner relies on Nishizaki to show that one of
ordinary skill in the art would have been led to obtain the claimed
haze value of no more than about 25 in the ink composition of
Malhotra. See the Answer, page 8. However, as argued by the
appellant (Brief, page 28), Nishizaki does not teach employing such
haze value to a hot melt composition containing at least one
polyamide and at least one terpene resin. There is nothing
referred to by the examiner, which shows that such haze value is
useful for the ink composition of the type disclosed by Malhotra
and/or Schwarz. Nor is there any teaching in the applied prior art
references that shows how such haze value can be obtained in the
ink composition of Malhotra and/or Schwarz.
Accordingly, we reverse the examiner’s decision rejecting
claim 7 under 35 U.S.C. § 103.
We turn next to the examiner’s rejection of claims 14 and 15
under 35 U.S.C. § 103 as unpatentable over the Malhotra in view of
either Schwarz or Siddiqui, Watt and Takazawa, and further in view
of Shacklette and Han. The content of Schwarz is discussed above.
The examiner recognizes that Schwarz does not describe or suggest
employing the claimed complex of a dianiline and a phosphorus-
Appeal No. 2002-0728
Application No. 09/404,570
10
containing acid as a conductivity enhancing agent in its hot melt
ink composition. See the Answer, page 9.
To remedy this deficiency, the examiner relies on the
disclosures of Shacklette and Han. The examiner finds (Answer,
page 9), and the appellant does not dispute (Brief, pages 32-33),
that:
Shacklette discloses the use of polyaniline
complexes with phosphonic or phosphinic acid in order to
impart conductivity and enhanced thermal stability to
polymers including formaldehyde-sulfonamide (col.3, lines
45 and 66-68, col. 9, lines 39-41, col. 10, lines 1 and 3
col. 12, lines 30-38, col. 13, line 9, and col. 18, lines
40-42). Although there is no explicit disclosure that
the complex is suitable for use in inks, it is well known
in the art as found in state-of-the-art references such
as [Han] (page 17, lines 25-26) that these polyaniline-
phosphorous-containing acid complexes are indeed suitable
for use in inks.
Thus, we determine that one of ordinary skill in the art would have
been led to employ the claimed complex of dianiline and a
phosphorus-containing acid taught by Shacklette and/or Han in the
hot melt composition of the type described in Schwarz, motivated by
a reasonable expectation of successfully imparting desired
conductivity and enhanced thermal stability.
The appellant does not argue that there is no motivation to
employ the complex taught by Shacklette and/or Han in the hot melt
ink composition of Schwarz. See the Brief, pages 32-33. Rather,
Appeal No. 2002-0728
Application No. 09/404,570
11
the appellant only argues that Shacklette and Han do not remedy the
deficiencies of the applied prior art references, including
Schwarz, regarding the limitations of claim 1. Id. Thus, for the
reasons indicated supra, we affirm the examiner’s decision
rejecting claims 14 and 15 under 35 U.S.C. § 103.
We turn next to the examiner’s rejection of claims 23 and 24
under 35 U.S.C. § 103 as unpatentable over the combined disclosures
of Malhotra and Watt. For the reasons set forth above and the
reasons set forth at pages 34-36 of the Brief, we reverse this
rejection. As argued by the appellant (Id.), there is no
suggestion or motivation to combine the binders taught by Watt in
the ink composition of Malhotra as both Watt and Malhotra are
directed to employing materially different ink ingredients for
different purposes.
Pursuant to 37 CFR § 1.196(b)(2001), we enter a new ground of
rejection against claim 24. Specifically, claim 24 is rejected
under 35 U.S.C. § 103 as unpatentable over the disclosure of
Schwarz for the reasons indicated supra. Claim 24 is dependent on
claim 1 and recites that the aldehyde copolymer ink vehicle recited
in claim 1 is, inter alia, poly(p-toluenesulfonamide-co-
formaldehyde) which is suggested in Schwarz as indicated above.
Appeal No. 2002-0728
Application No. 09/404,570
12
CONCLUSION
In view of the foregoing, we affirm the examiner’s decision
rejecting claims 1 through 6, 8, 9 and 11 through 21 under 35
U.S.C. § 103, but reverse the examiner’s decision rejecting claims
7, 10, 23 and 24 under 35 U.S.C. § 103. Pursuant to 37 CFR
§ 1.196(b)(2001), we enter a new ground of rejection against claim
24 and denominate our affirmance of the rejections of claims 1
through 6, 8, 9 and 11 through 21 as involving new grounds of
rejection. As is apparent from this decision, our reasons for
affirming the rejections of claims 1-6, 8, 9 and 11 through 21 are
materially different from those provided by the examiner.
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, “A new ground
of rejection shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(b) also provides that the appellant(s), WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection
to avoid termination of proceedings (§ 1.197(c)) as to the rejected
claims:
(1) Submit an appropriate amendment of the claims so
rejected or a showing of facts relating to the claims so
rejected, or both, and have the matter reconsidered by
Appeal No. 2002-0728
Application No. 09/404,570
13
the examiner, in which event the application will be
remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
CKP/lp
Appeal No. 2002-0728
Application No. 09/404,570
14
JOHN E. BECK
XEROX CORPORATION
XEROX SQUARE 20A
ROCHESTER, NY 14644