12029929 (B.P.A.I. Jan. 4, 2012)

Ex Parte Brust et al

Board of Patent Appeals and InterferencesJan 4, 2012

12029929 (B.P.A.I. Jan. 4, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/029,929 02/12/2008 Thomas B. Brust 93606AJA 9737 1333 7590 01/05/2012 EASTMAN KODAK COMPANY PATENT LEGAL STAFF 343 STATE STREET ROCHESTER, NY 14650-2201 EXAMINER VALDEZ, DEVE E ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 01/05/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte THOMAS B. BRUST, MICHAEL J. CAMODY, ROBERT H. FEHNEL, GARY L. HOUSE, MARK E. IRVING, YONGCAI WANG and PAUL D. YACOBUCCI ____________________ Appeal 2011-006033 Application 12/029,929 Technology Center 1700 ____________________ Before: FRED E. McKELVEY, RICHARD TORCZON and SALLY GARNDER LANE, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006033 Application 12/029,929 2 Statement of the case The Eastman Kodak Company (Kodak), the real party in interest (Brief, 1 page 1), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 2 19 February 2010. 3 The application was filed on 12 February 2008 and claims priority of U.S. 4 Provisional Application 60/892,158, filed 28 February 2007. 5 We have jurisdiction under 35 U.S.C. § 134(a). 6 Claim on appeal 7 Claims 1-20 are on appeal. 8 Claims 1, 18 and 19, which we reproduce from the Claim 9 Appendix of the Appeal Brief, read [matter in brackets added]: 10 1. An ink composition comprising: 11 (a) water, 12 (b) pigment particles, 13 (c) at least one humectant, 14 (d) at least one polyurethane [1] having an average molecular 15 weight of at least about 10,000 and [2] a sufficient number of acid 16 groups to provide an acid number from 60 to about 130, and [3] being 17 present at a weight concentration of greater than 0.7 %, and 18 (e) at least one water soluble acrylic polymer comprising 19 carboxylic acid groups, present at a weight concentration of greater 20 than 0.6 %, 21 Appeal 2011-006033 Application 12/029,929 3 wherein the acid groups on the polyurethane and acrylic 1 polymers are at least partially neutralized only with a monovalent 2 inorganic base. 3 18. An ink set comprising two or more pigmented ink 4 compositions each according to claim 1, wherein at least two of such 5 ink compositions comprise different colored pigmented particles. 6 19. An ink set according to claim 18, further comprising a 7 colorless ink composition comprising: 8 (a) water, 9 (b) at least one humectant, and 10 (c) at least on polyurethane having [1] an average molecular 11 weight of at least about 10,000 and [2] a sufficient number of acid 12 groups to provide an acid number from 60 to about 130, 13 wherein the acids groups on the polyurethane are at least 14 partially neutralized only with a monovalent inorganic base. 15 The rejections 16 Claims 1-20 stand rejected under § 102(a) as anticipated by Szajewski I, 17 U.S. Patent Application Publication 2006/0223908 A1 (5 Oct. 2006). Answer, 18 page 3. 19 Claims 18-20 stand rejected for double patenting based on Claim 15 of 20 Szajewski II U.S. Patent 7,537,650 B2 (26 May 2009), the patent which matured 21 from the application published as Szajewski I. Answer, page 7. 22 Claims 18-20 stand rejected under § 103(a) as being unpatentable over 23 Szajewski II. Answer, page 9. 24 Appeal 2011-006033 Application 12/029,929 4 Discussion 1 Anticipation requires that a prior art reference (Szajeski I in this appeal) 2 describe all the elements of the claim within the four corners of the reference 3 arranged or combined in the same way as in the claim. Net MoneyIN Inc. v. 4 VeriSign Inc., 545 F.3d 1359, 1369-70 (Fed. Cir. 2008); Finisar Corp. v. DirecTV 5 Group, Inc., 523 F.3d 1323, 1334-35 (Fed. Cir. 2008). 6 In the case before us, Szajeski I may describe all the elements of Claim 1 on 7 appeal, but not arranged or combined in the same way as the claimed elements. 8 Szajeski I describes a combination of (1) colored aqueous ink and (2) a 9 substantially colorless aqueous ink. ¶ 0004. 10 The colored aqueous ink can include a pigment having an attached organic 11 group. The organic group may be a polymer (including a polyurethane or an 12 acrylic polymer). ¶¶ 0017 and 0020. 13 The colorless ink can include (1) a humectant, (2) a polyurethane having the 14 characteristics set out in paragraph (d) of Claim 1 and (3) an acrylic polymer 15 having the characteristics of paragraph (e) of Claim 1. 16 The Examiner found that the colorless ink also includes a pigment. Answer, 17 page 10. The finding is based on ¶ 0044 which states that the colorless ink “may 18 have some tinting to improve the color balance of the final image.” Szajeski I goes 19 on to say, however, that “by substantially colorless it is intended that ... [the 20 colorless ink does] not form the image itself. Rather, ... [it] is used in combination 21 to enhance the coloring capability of ... [colored aqueous ink].” There is no 22 explicit description of “tinting” being the result of the presence of a pigment. 23 Szajeski I reveals that a “colorant may be chosen from a wide range of 24 Appeal 2011-006033 Application 12/029,929 5 conventional colored colorants, preferably pigments.” ¶ 0010. Accordingly, 1 “tinting” does not inherently result from the presence of a pigment. Cf. In re 2 Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (inherency cannot be established by 3 the mere fact that a certain thing may result from a given set of circumstances). 4 The Szajeski I colored ink is not described as also including both a 5 polyurethane and an acrylic polymer. The use of a combination of polymers is 6 described only with respect to the colorless ink—which as we already have noted 7 does not necessarily include a pigment. 8 Claim 18 calls for two or more pigmented ink compositions. As we 9 understand the Examiner’s position, Claim 18 is anticipated by a combination of a 10 colored ink and a colorless ink. However, Szajeski does not describe a colored ink 11 meeting the limitations of Claim 1 and the Szajeski colorless ink is not described 12 as having a pigment. 13 We can assume, without deciding, that the colorless ink mentioned in 14 Claim 19 is described by Szajeski I. However, Claim 19 further limits Claim 18. 15 Since the limitations of Claim 18 are not described by Szajeski I, it necessarily 16 follows that the limitations of Claim 19, as a whole, are likewise not described. 17 Claims 1-20 are not anticipated by Szajeski I. 18 Claims 18-20 are rejected based on double patenting over Szajeski II 19 Claim 15. Szajeski II Claim 15 is somewhat confusing, but in context we think we 20 know what it means. Szajewski II Claim 15 depends from Szajeski II Claim 2 21 which depends from Szajewski II Claim 1. 22 Szajeski II Claim 1 calls for (1) a colored ink comprising a cationic polymer 23 and (2) a colorless ink comprising an anionic polymer. 24 Appeal 2011-006033 Application 12/029,929 6 Szajeski II Claim 2 calls for the colored ink to include a pigment. The 1 confusion in Szajeski II Claim 15 is a result of its references (1) to a “first” 2 polymer being a polyurethane and (2) a “second” polymer being an acrylic 3 polymer. 4 Neither of Szajeski II Claims 1 and 2 mention a “first” and “second” 5 polymer. In context, we think the first polymer is the polymer of the colored ink 6 mentioned in Szajeski II Claim 1 and the second polymer is the polymer of the 7 colorless ink, also mentioned in Szajewski II Claim 1. No Szajewski II claim calls 8 for an ink having a mixture of both a polyurethane and an acrylic polymer as 9 required by Claim 1 on appeal. 10 We therefore agree with Kodak that a double patenting rejection is not 11 appropriate in this case. 12 The § 103(a) rejection falls with the § 102(a) rejection. For reasons already 13 given, neither Szajeski I nor Sazajeski II describe all the elements of Claims 18-20. 14 We therefore agree with Kodak that a § 103(a) rejection in not appropriate in 15 this case. 16 Decision 17 Upon consideration of the appeal, and for the reasons given herein, it is 18 ORDERED that the decisions on the Examiner rejecting claims 1-20 19 based on § 102(a), § 103(a) and double patient are reversed. 20 FURTHER ORDERED that no time period for taking any subsequent 21 action in connection with this appeal may be extended under 37 C.F.R. 22 § 1.136(a)(1)(iv). 23 REVERSED 24 Appeal 2011-006033 Application 12/029,929 7 ack 1