Ex Parte Vanbesien et alDownload PDFPatent Trial and Appeal BoardJul 20, 201613118483 (P.T.A.B. Jul. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/118,483 05/30/2011 Daryl W. Vanbesien 76113 7590 07/22/2016 PILLSBURY WINTHROP SHAW PITTMAN, LLP (Xerox) XEROX CORPORATION P .0 . BOX 10500 MCLEAN, VA 22102 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. 20110085-US-NP 9641 EXAMINER CHEA, THORL ART UNIT PAPER NUMBER 1721 NOTIFICATION DATE DELIVERY MODE 07/22/2016 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): docket_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DARYL W. VANBESIEN, MAGID KAMEL, CUONG VONG, SUXIA YANG, KIMBERLY D. NOSELLA, RICHARD P.N. VEREGIN, and TIE HWEE NG 1 Appeal2014-006500 Application 13/118,483 Technology Center 1700 Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and JENNIFER R. GUPTA, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. BACKGROUND The subject matter on appeal relates to black toner comprising thermal carbon black. E.g., Spec. i-f 1; Claim 1. Claim 1 is reproduced below from page 20 (Claims Appendix) of the Appeal Brief: 1 According to the Appellants, the Real Party in Interest is Xerox Corporation. App. Br. 2. Appeal2014-006500 Application 13/118,483 1. A black toner particle compnsmg an amorphous resin, an optional crystalline resin, an optional wax, an optional shell, a thermal carbon black comprising a volume mean diameter of from 200 to 600 nm, and optionally a colorant, wherein said toner particle comprises a dielectric loss of less than 7 5 x 10-3. REJECTIONS ON APPEAL 1. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kadokura et al. (US 6,096,465, issued Aug. 1, 2000), Ohmura et al. (US 2009/0286176 Al, published Nov. 19, 2009), Nakamura et al. (US 2006/0099330 Al, published May 11, 2006), Harrison et al. (US 2006/0099364 Al, published May 11, 2006), and Moriyama et al (US 2003/0054276 Al, published Mar. 20, 2003). 2. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Kadokura, Ohmura, Nakamura, Harrison, and Moriyama, further in view of Morris et al. (US 2005/0175921 Al, published Aug. 11, 2005). ANALYSIS The Appellants argue the claims as a group. We select claim 1 as representative of the rejected claims, and the remaining claims will stand or fall with claim 1. After review of the cited evidence in the appeal record and the opposing positions of the Appellants and the Examiner, we determine that the Appellants have not identified reversible error in the Examiner's rejections. Accordingly, we affirm the rejections for reasons set forth below and by the Examiner in the Advisory Action dated May 15, 2013, and in the Answer. See generally Advisory Act. 2; Ans. 2-12. 2 Appeal2014-006500 Application 13/118,483 The Examiner finds, inter alia, that Kadokura discloses "a toner composed of binder resin and ... carbon black particles having particle size of 50 nm micron [sic] or less." Ans. 2. The Examiner appears to have intended to state that Kadokura' s carbon black particles "hav[ e] a particle size of less than 500 nm." See, e.g., Advisory Act. 2; Kadokura at 2:62---64, 5:34--38. The Examiner also finds that Kadokura's carbon black appears to be a thermal carbon black, notwithstanding the fact that Kadokura does not expressly label it as such. Advisory Act. 2. The Examiner finds that Ohmura discloses "a toner particle including a black toner comprising an amorphous resin, a crystalline resin, a wax and shell and a colorant including a carbon black." Ans. 2. The Examiner relies on Nakamura and Harrison for the disclosure of thermal carbon blacks having particle sizes that overlap those of claim 1, and as evidence that the particle size of Kadokura's carbon black indicates that it is a thermal carbon black. Id. at 3; Advisory Act. 2. The Examiner also finds that Harrison discloses the use of a thermal carbon black with an amorphous resin, and that Harrison discloses that the use of a thermal carbon black as opposed to other carbon blacks produces a superior resin color. Ans. 6. Additionally, the Examiner cites two references that disclose the use of "a thermal black as colorant for a black toner." Id. at 11-12 (citing U.S. Patents No. 5,314,773 ("Kubo") and No. 4,749,638 ("Tsushima")). The Examiner finds that "Moriyama ... disclose[s] dielectric loss tan of a toner from 0.001 to 0.006 in viewpoint of a dispersibility of the composite in the toner, i.e., chargeability of toner." Id. at 3. The Examiner concludes: [I]t would have been obvious ... to provide a toner taught in Kadokura ... with binder taught in Ohmura, a thermal carbon black known in either Nakamura ... or Harrison ... in 3 Appeal2014-006500 Application 13/118,483 combination with a [sic] providing a toner with dielectric loss tan of a toner from 0.001 to 0.006 in viewpoint of a dispersibility of the composite in the toner, i.e., chargeability of toner taught in Moriyama ... and thereby provide an invention as claimed .... In this case, the thermal carbon black is available in the art, and the use thereof to blacken a toner would have been found obvious to the worker of ordinary skill in the art in the absence of showing an unexpected results of the claimed toner over that containing a convention carbon black. Id. at 4. The Appellants present several arguments in opposition to the Examiner's rejection, which we address in tum below: 1. The Appellants principally argue that Nakamura and Harrison are nonanalogous art and, therefore, cannot motivate the use of a thermal carbon black in Kadokura. App. Br. 2-8. That argument fails to show reversible error in the Examiner's rejection. Even if we were to agree with the Appellants that Nakamura and Harrison are nonanalogous art, the Appellants do not persuasively rebut the Examiner's determination that use of a thermal carbon black in a toner would have been obvious to a person of ordinary skill in the art. We agree with the Appellants that a preponderance of the evidence does not support the Examiner's finding that Kadokura itself discloses a thermal black. See Advisory Act. 2; App. Br. 11; Kadokura at 2:30-35 (discussing coagulation of carbon black), 2:62---64. However, the Appellants do not assert that they invented thermal carbon black or that thermal carbon black (or its average particle diameter) was not known in the art at the time of the invention. On the contrary, the Specification suggests that it was known and commercially available. E.g., Spec. i-f 8. Moreover, in the Answer, the Examiner identifies prior art references that disclose the use of 4 Appeal2014-006500 Application 13/118,483 "a thermal black as colorant for a black toner." Ans. 11-12 (citing Kubo and Tsushima). In the Reply Brief, the Appellants do not address or contest the Examiner's citation to Kubo and Tsushima. A preponderance of the evidence supports the Examiner's determination that use of a thermal black in a toner would have been obvious, even ignoring Nakamura and Harrison. Turning to the issue of analogous art, "[t]wo criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992). The problem addressed by the Appellants is the development of toners comprising carbon black and an amorphous resin that have reduced dielectric loss. E.g., Spec. i-f 3; App. Br. 4. Although we agree with the Appellants that Nakamura is nonanalogous art, and that it cannot provide the motivation to use thermal carbon black in Kadokura's toner, see App. Br. 5- 7, Nakamura nevertheless provides evidence that thermal carbon blacks were known, and that they were known to have particle sizes in the range of 100 to 500 nm. E.g., Nakamura i-f 38. Harrison teaches the use of carbon blacks as a colorant in a composition that includes an amorphous binder resin. Ans. 6; Harrison i-fi-122, 28, 42--47. Harrison teaches that thermal carbon blacks have particle sizes in the range of 200 to 500 nm, e.g., Harrison i-f 42, and that carbon blacks produced according to other processes such as a furnace process have smaller diameters "in the range 10 to 100 nm," id. Harrison 5 Appeal2014-006500 Application 13/118,483 teaches that thermal carbon blacks produce "superior resin color" as compared to carbon blacks having smaller particle diameters. Id. i-f 22. We recognize that Harrison is not specifically concerned with toner and therefore does not appear to be from the same field of endeavor as the Appellants' disclosure, but we agree with the Examiner that Harrison is reasonably pertinent to the present invention. Specifically, in researching the use of carbon blacks as colorants in combination with amorphous binder resins to make a toner, an inventor reasonably would have been expected to come across Harrison, given Harrison's disclosure of the use of carbon blacks as a colorant in a composition that includes an amorphous binder resin. See Harrison i-fi-122, 28, 42--47. In other words, Harrison "logically would have commended itself to an inventor's attention in considering his problem." Clay, 966 F.2d at 659. Accordingly, we agree with the Examiner that Harrison is properly combined with the other cited art. Contrary to the Appellants arguments, precedent concerning the "reasonably pertinent" prong of the analogous art test does not require prior art to "address[] the same problem as stated by the applicants" in order to be analogous art. E.g., Reply Br. 12 ("If the reference is not from the same field of endeavor, then the reference can only be combined when it is addressing the same problem as stated by Appellants."). Precedent requires that the prior art be "reasonably pertinent" to the problem, not that the prior art necessarily address the same problem. See Clay, 966 F.2d at 659; cf KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (stating that it is error to look "only to the problem the patentee was trying to solve"); Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010) ("The Supreme Court's decision in KSR International Co. v. Teleflex, Inc. directs 6 Appeal2014-006500 Application 13/118,483 us to construe the scope of analogous art broadly .... " (internal citation omitted)). In view of the Examiner's findings, the use of thermal carbon black (such as that disclosed by Harrison, Kubo, or Tsushima) in place of Kadokura's carbon black would have been nothing more than the simple substitution of one known carbon black for another with predictable results. Such substitutions typically do not result in nonobvious subject matter. See KSR, 550 U.S. at 416-21 ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."); see also id. at 416 ("[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."). The Appellants' arguments do not persuade us otherwise in this case. 2. The Appellants argue that Kadokura, Moriyama, and Ohmura do not teach a toner comprising a thermal carbon black. App. Br. 10-11. However, as set forth above, a preponderance of the evidence supports the Examiner's finding that Kadokura in combination with Harrison, Kubo, or Tsushima teaches or suggests the use of a toner comprising a thermal carbon black. 3. The Appellants argue that Moriyama teaches away from the use of thermal carbon black because it uses a composite oxide of two or more metals, rather than a carbon black, as a colorant. App. Br. 11. We disagree. For a reference to "teach away," it must criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Appellants have not identified anything in Moriyama 7 Appeal2014-006500 Application 13/118,483 that criticizes, discredits, or discourages the use of a thermal carbon black. Nor have the Appellants argued that a person of ordinary skill in the art would not consider Moriyama's teachings about the chargeability of toner, Moriyama i-f 34, to be relevant to toners that include carbon black. See Ans. 10-11. "The prior art's mere disclosure of more than one alternative does not constitute a teaching away .... " Fulton, 391 F.3d at 1201. 4. The Appellants argue that Moriyama "overwhelmingly fail[ s] to teach or to suggest the reduction of dielectric loss with the use of thermal carbon black." App. Br. 12. The Examiner, however, does not rely on Moriyama for the teaching of a thermal carbon black, and the Appellants do not meaningfully dispute the Examiner's finding that Moriyama teaches the desirability of a dielectric loss that falls within the scope of claim 1. See Ans. 3, 10-11; Moriyama i-f 34 (discussing "the chargeability of the toner"). Nor do the Appellants meaningfully dispute the Examiner's finding that the claimed dielectric loss appears to be an inherent result of the use of thermal carbon black. E.g., Advisory Act. 2 ("The applicants ... fail[] to show that carbon black with similar size particle taught in Kadokura ... does not provide a dielectric within the claimed invention."); see also Spec. i-f 2 (suggesting that reduced dielectric loss results from use of thermal carbon black); App. Br. 13 (same). 5. The Appellants argue that the Examiner's obviousness rationale was motivated by impermissible hindsight. App. Br. 14--18. For instance, they argue that "both thermal carbon black and the volume average particles [sic] size could only have been gleaned from the instance specification." Id. at 15 (emphasis in original). They also argue that "thermal black particles were considered too large for inclusion in toner 8 Appeal2014-006500 Application 13/118,483 particles." Id. For reasons set forth above, we are not persuaded by those arguments. The Appellants do not allege that they invented thermal carbon black or that the particle size of thermal carbon black was not known in the art, and references identified by the Examiner disclose both particle size and the use of thermal carbon black in toners. The Appellants do not persuade us that use of a thermal carbon black in Kadokura's toner would have been anything more than the simple substitution of one known carbon black for another. 6. To the extent that the Appellants argue that unexpected results support a conclusion ofnonobviousness, e.g., App. Br. 16-17, we are not persuaded. "[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991 ). The Appellants do not meaningfully describe any data or results that allegedly support their position. Nor do the Appellants identify the closest prior art or attempt to compare the alleged unexpected results to results obtained from the closest prior art. Nor do the Appellants show that any results are, in fact, unexpected. See In re Klosak, 455 F.2d 1077, 1080 ( CCP A 1972) ("[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference."). Moreover, where the Appellants are relying on unexpected results to rebut a prima facie case of obviousness, the Appellants must show results that are commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1329--31 (Fed. Cir. 2003). The Appellants have not attempted to do that, notwithstanding the fact that claim 1 is broad and permits, for 9 Appeal2014-006500 Application 13/118,483 example, the use of any amorphous resin, various optional ingredients, and a range of thermal carbon black particle diameters. On this record, we are not persuaded that unexpected results rebut a prima facie case of obviousness. 7. To the extent the Appellants argue that Kadokura does not teach an "amorphous" resin, e.g., App. Br. 10; Reply Br. 4, the Appellants do not challenge the Examiner's finding that Ohmura teaches a toner comprising an amorphous resin, nor do they persuasively argue that it would not have been obvious to substitute Ohmura's resin for Kadokura's resin. * * * We have carefully considered all of the arguments before us, and we are not persuaded that the Examiner committed reversible error in rejecting claim 1. CONCLUSION We AFFIRM the Examiner's rejection of claims 1-20. 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 10 Copy with citationCopy as parenthetical citation