Ex Parte Brust et al

Patent Trial and Appeal Board

Nov 4, 2014

12234753 (P.T.A.B. Nov. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/234,753 09/22/2008 Thomas B. Brust 94074AEK 4728
1333 7590 11/04/2014
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
HUHN, RICHARD A
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
11/04/2014 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
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS B. BRUST, PAUL D. YACOBUCCI, YONGCAI
WANG, CATHERINE A. FALKNER, and THANHCHAU T. NGUYEN
____________

Appeal 2013-002292
Application 12/234,753
Technology Center 1700
____________

Before TERRY J. OWENS, LINDA M. GAUDETTE, and MICHELLE N.
ANKENBRAND, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–3, 6–9, 11, 13, 15, 16, and 19–21, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify Eastman Kodak Company as the real party in interest.
App. Br. 1.
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Application 12/234,753

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The Invention
Appellants claim a composition for inks useful for thermal inkjet
printing. Spec. 1:7–10. Claim 1 is representative of the claims on appeal,
and is reproduced below from the Claims Appendix to the Appeal Brief:
1. An inkjet ink composition comprising:
(A) water; and
(B) at least one water-dispersible polyurethane/urea polymer
having at least a first soft segment formed from a polyol
prepolymer and at least a second soft segment formed from a
polyamine prepolymer, wherein the polyol prepolymer forms
urethane bonds in the polyurethane/urea and the polyamine
prepolymer forms urea bonds in the polyurethane/urea, and
further wherein at least about 4% by weight of the combined
soft segments is formed by polyamine prepolymers that form
urea bonds in the polyurethane/urea polymer[;] and
(C) a pigment;
wherein the first and second soft segments are formed
from prepolymers having ester, carbonate, or ether
linkages and having molecular weights above about 300
and below about 3000, the polyurethane/urea polymer
has an acid number between 50 and 150, and the
viscosity of the ink is less than 3.0 centipoise at 25
degrees Celsius.
The References
Nakamura US 2002/0186278 A1 Dec. 12, 2002
Yau US 2004/0085419 A1 May 6, 2004
Tielemans US 2004/0198868 A1 Oct. 7, 2004
Bauer US 2006/0023044 A1 Feb. 2, 2006

Huntsman Corporation, Jeffamine® Polyetheramine Products
Overview (Jeffamine® Polyetheramines)
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Application 12/234,753

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The Rejections
The claims stand rejected as follows:
1. Claims 1–3, 6–9, 11, 13, 15, 16, and 21 are rejected under
35 U.S.C. § 103(a) as unpatentable over Tielemans in view of Yau
and Nakamura, and as evidenced by Jeffamine® Polyetheramines; and
2. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tielemans in view of Yau and Nakamura, as
evidenced by Jeffamine® Polyetheramines, and further in view of
Bauer.
OPINION
We reverse the rejections of claims 1–3, 6–9, 11, 13, 15, 16, and 19–
21 under 35 U.S.C. § 103(a). We need only address claim 1, the sole
independent claim on appeal.
Appellants argue that the Examiner’s rejection should be reversed
because the facts and reasons relied on by the Examiner are insufficient to
support a prima facie case of obviousness. Specifically, Appellants argue
the Examiner failed to explain why optimizing the amount of polyamine
prepolymer for the purposes suggested in Tielemans would have necessarily
led one of ordinary skill in the art to use an appropriate amount of polyamine
prepolymer including the at least 4 wt% of polyamine prepolymer soft
segments that Appellants’ claim 1 requires. App. Br. 3–4.
The Examiner acknowledges that “Tielemans fails to specifically
disclose that at least about 4% by weight of the combined soft segments is
formed by the polyamine prepolymers.” Final Office Action 4. The
Examiner argues, however, that
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Application 12/234,753

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[i]n view of Tielemans’ recognition that the amount of
polyamine is chosen based upon the amount of terminal
isocyanate groups in order to obtain a fully reacted polymer,
and further that the polyamines may be used to control the
degree of nonlinearity of the polymer, it is evident that amount
of polyamine in the polymers is a result effective variable
because changing it will clearly affect the degree of
non-linearity and the degree of polymerization of the polymer.
Id. The Examiner then concludes that, “based upon Tielemans’ disclosure of
the effects of the polyamine with respect to the degree [of] non-linearity and
the degree of polymerization of the polymer,” a skilled artisan would have
been motivated to utilize “essentially any amount of the polyamine” in order
to obtain the desired degree of non-linearity and polymerization, including
an amount with Appellants’ recited “at least about 4% by weight” range.
Ans. 6.
“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed.
Cir. 2012) (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
Nonetheless, “[t]his rule is limited to cases in which the optimized variable
is a ‘result-effective variable.’” Id. (citing In re Antonie, 559 F.2d 618, 620
(CCPA 1977)).
The Examiner has not directed us to any evidence that explains, with
any specificity, why a skilled artisan would have considered the polyamine
prepolymer weight percent to be a result-effective variable. Nor has the
Examiner explained why a polyamine prepolymer having a weight percent
within the range recited in Appellants’ claim 1 would have been expected to
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Application 12/234,753

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have Tielemans’ desired degree of non-linearity and desired degree of
polymerization.
Though Tielemans describes weight percent ranges for some of the
components of its polyurethane polymer, see, e.g., Tielemans ¶ 20,
Tielemans does not describe any polyamine prepolymer weight percent
ranges. Further, Tielemans discloses the average functionality, not weight
percent, of the polyamine prepolymer as controlling the degree of non-
linearity of the polyurethane polymer. Tielemans ¶ 47 (“The degree of non-
linearity of the polyurethane polymer is controlled by the functionality of the
polyamine used for the chain extension.”).
Unlike Tielemans, Appellants’ specification describes the importance
of the polyamine prepolymer weight fraction, noting that although adding a
polyamine prepolymer provides advantages, “it has also been observed that
if too high a percentage (e.g., more than 50%) of the soft segment is formed
by a polyamine, control of the polymerization process becomes difficult.”
Spec. 16:11–15. Appellants’ specification further explains that it was
previously known in the art to use a weight fraction of a polyurethane urea
that is “at most 2.0 wt% to the urethane resin.” Id. at 3:20–21.
Given Tielemans’ failure to describe polyamine prepolymer weight
percent ranges and Appellants’ specific disclosure of the prior art polyamine
prepolymer weight percent range as at most 2.0 wt%, we are not convinced
that the Examiner has presented the necessary reasoning with a rational
underpinning to support this obviousness rejection. See In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006).
Accordingly, we reverse the Examiner’s rejection of claims 1–3, 6–9,
11, 13, 15, 16, and 21 under 35 U.S.C. § 103(a).
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Application 12/234,753

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Claims 19 and 20 depend directly and indirectly, respectively, from
claim 1 and also require an ink composition wherein at least about 4% by
weight of the combined soft segments is formed by polyamine prepolymers
that form urea bonds in the polyurethane/urea polymer. The Examiner has
not explained how this deficiency is cured by any of the secondary
references relied upon in rejecting these claims. Accordingly, we also
reverse the Examiner’s rejection of claims 19 and 20 under 35 U.S.C.
§ 103(a).

DECISION/ORDER
The Examiner’s rejections of claims 1–3, 6–9, 11, 13, 15, 16, and 19–
21 under 35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED

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