Ex Parte Cagle

Board of Patent Appeals and Interferences

Jul 24, 2012

11249606 (B.P.A.I. Jul. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PHILLIP C. CAGLE
__________

Appeal 2010-006855
Application 11/249,606
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1, 2, 4-12, and 14. Claims 15-18 and 20-39 are
also pending but have been withdrawn from consideration. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM and enter new grounds of rejection.
The subject matter on appeal is directed to a marking fluid for a vinyl
substrate comprising a dispersion of pigment in a liquid vehicle wherein the liquid
vehicle comprises a water portion and a non-water portion. The non-water portion
comprises at least one solvent that is capable of softening but not dissolving the
vinyl substrate in the absence of the water portion.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A marking fluid, comprising:
a dispersion of pigment in a liquid vehicle, the liquid vehicle
comprising:
a water portion; and
a non-water portion comprising one or more solvents
having Hansen hydrogen bonding partial solubility
parameters of about 16 MPa0.5 or less;
wherein the non-water portion is capable of softening vinyl in
the absence of the water portion and without dissolving the
vinyl;
wherein the non-water portion is in a sufficient concentration
relative to the water portion that, upon removal of the water
portion, a portion of the non-water portion persists in the
marking fluid and facilitates softening of a vinyl substrate
without dissolving the vinyl substrate; and
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wherein the persisting portion of the non-water portion has a
composite Hansen hydrogen bonding partial solubility
parameter of about 16 MPa0.5 or less.
App. Br., Claims Appendix (emphasis added).1
The Appellant seeks review of the following rejections:
(1) the rejection of claims 1, 2, 7, and 9 under 35 U.S.C. § 112, first
paragraph, based on the written description requirement;
(2) the rejection of claims 1, 2, and 4-7 under 35 U.S.C. § 102(b) as
anticipated by Pearlstine2; and
(3) the rejection of claims 1, 2, 4-12, and 14 under 35 U.S.C. § 102(b) as
anticipated by Chen.3
The Appellant argues the claims in each ground of rejection as a group. See
App. Br. 11, 12, 14 (indicating that claim 1 is representative of the claims in each
ground of rejection). Thus, for each ground of rejection on appeal, the claims
stand or fall with the patentability of claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2010).
B. DISCUSSION
1. Rejection under § 112, first paragraph
The claims on appeal recite, inter alia, a marking fluid vehicle comprising a
non-water portion comprising one or more solvents. Claim 1 recites that the non-
water portion is “capable of softening vinyl . . . without dissolving the vinyl.”4

1 Appeal Brief dated October 20, 2009.
2 US 6,087,416 issued July 11, 2000.
3 US 6,764,173 B2 issued July 20, 2004.
4 Similarly, claim 2 recites that the one or more solvents in the non-water portion
“facilitate softening of a vinyl substrate without dissolving the vinyl substrate”;
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The Examiner contends the original disclosure does not provide literal
support for the limitation “without dissolving the vinyl substrate” recited in claims
1, 2, 7, and 9. Relying on Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), the
Examiner contends that “without dissolving the vinyl substrate” is a negative
limitation which must be expressly disclosed in the originally filed application to
comply with the written description requirement of § 112. Ans. 4.5 We disagree.
The original disclosure describes a marking fluid vehicle comprising at least
one co-solvent that is capable of softening vinyl. Spec., para. [0010]. The
Appellant recognizes the original disclosure does not expressly state that these co-
solvents are capable of softening vinyl without dissolving the vinyl. However, the
Appellant directs our attention to paragraph [0013] which describes subjective
grades of the solvents tested in terms of their effect on vinyl film. App. Br. 10.
According to the original disclosure, “1 = no observable mark or swelling of the
vinyl; 2 = no mark or v. slight mark; 3 = slight mark; 4 = visible softening and
marking of the vinyl; and 5 = extensive softening or dissolving of the vinyl film.”
Spec., para. [0013]; see also Table 1B.
We conclude the limitation “without dissolving the vinyl substrate” is not a
“negative limitation” within the meaning of Grasselli. See Grasselli, 231 USPQ at
394 (“the express exclusion of certain elements implies the permissible inclusion
of all other elements not so expressly excluded”). Rather, the phrase “softening
vinyl . . . without dissolving the vinyl substrate” recited in claim 1 refers to one of

claim 7 recites that the one or more solvents in the non-water portion “facilitates
softening of a vinyl substrate . . . without dissolving the vinyl substrate”; and claim
9 recites that one or more co-solvents is “capable of swelling a surface of a vinyl
substrate without dissolving the vinyl substrate.” App. Br., Claims Appendix.
5 Examiner’s Answer dated January 25, 2010.
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several effects of the disclosed solvents on vinyl film. As pointed out above, the
Appellant discloses that solvent effects range from “no observable mark” to
“dissolving of the vinyl film” with “visible softening” and “extensive softening”
being separate and distinct solvent effects that fall between these two extremes.
See Spec., para. [0013].
Based on the foregoing, we find the original disclosure conveys with
reasonably clarity to those skilled in the art that, as of the filing date, the Appellant
had possession of a marking fluid vehicle comprising a non-water portion or
solvent that softens but does not dissolve the vinyl. In re Kaslow, 707 F.2d 1366,
1375 (Fed. Cir. 1983).
For the reasons set forth above, the § 112 rejection is reversed.
2. Rejection under § 102(b) based on Pearlstine
The issue in this rejection is whether the Examiner reversibly erred in
finding that Pearlstine describes a marking fluid vehicle comprising a non-water
portion capable of softening but not dissolving a vinyl substrate as recited in claim
1.
The Examiner finds Pearlstine discloses an ink jet composition for printing
on vinyl substrates comprising an aqueous vehicle containing co-solvents, such as
pyrrolidones (e.g., N-methyl pyrrolidone and 2-pyrrolidone). Ans. 4-5; Pearlstine,
col. 2, ll. 51-54. There is no dispute on this record that 2-pyrrolidone “perform[s]
as required in the claimed marking fluid at room temperature,” i.e., softens but
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does not dissolve a vinyl substrate as recited in claim 1. App. Br. 12; see also
Table 1B.6
However, referring to Table 1B in the Appellant’s Specification, the
Appellant contends that 2-pyrrolidone dissolves a vinyl substrate at 80ºC. The
Appellant also contends that N-methyl pyrrolidone dissolves a vinyl substrate at
room temperature and at 80ºC. The Appellant argues “Pearlstine’s teaching that
N-methyl pyrrolidone is a suitable co-solvent in their ink composition is evidence
that the Pearlstine ink must differ from that of claim 1.” App. Br. 12.
The Appellant’s arguments are not persuasive of reversible error. There is
no dispute on this record that Pearlstine describes a marking fluid vehicle
comprising 2-pyrrolidone which softens but does not dissolve a vinyl substrate at
room temperature. See Appellant’s Table 1B. It is of no moment that 2-
pyrrolidone may dissolve a vinyl substrate at 80ºC since claim 1 merely recites that
the non-water portion is “capable” of softening but not dissolving a vinyl substrate
and claim 1 does not limit the temperature at which this softening occurs. See Ans.
6. Moreover, the Appellant’s Table 1B identifies 2-pyrrolidone as a “5” at 80ºC.
According to the Appellant’s Specification, “5” indicates “extensive softening or
dissolving of the vinyl film,” i.e., two separate and distinct solvent effects. Spec.,
para. [0013] (emphasis added). There is no evidence on this record that 2-
pyrrolidone dissolves rather than extensively softens vinyl at 80ºC.
Finally, to the extent the Appellant is arguing that Pearlstine’s use of N-
methyl pyrrolidone as a co-solvent would have led one of ordinary skill in the art

6 There is no dispute that 2-pyrrolidone disclosed in Pearlstine and 2-pyrrolidinone
disclosed in the Appellant’s Table 1B refer to the same compound. Likewise, there
is no dispute that N-methyl pyrrolidone and N-methyl pyrrolidinone refer to the
same compound. App. Br. 11-12.
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away from using a co-solvent that does not dissolve vinyl, this argument is not
persuasive in a rejection based on anticipation. See Celeritas Techs., Ltd. v.
Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“[T]he question
whether a reference ‘teaches away’ from the invention is inapplicable to an
anticipation analysis.”).
For the reasons set forth above, the § 102(b) rejection based on Pearlstine is
affirmed.
C. NEW GROUNDS OF REJECTION
1. Rejection under § 102(b) based on Chen
The issue in this rejection is whether the Examiner reversibly erred in
finding that Chen describes a marking fluid vehicle comprising a non-water portion
capable of softening but not dissolving a vinyl substrate as recited in claim 1.
Referring to column 8, lines 14-44, the Appellant argues that Chen discloses
a number of co-solvents, some of which satisfy the requirements of claim 1 (i.e.,
softens but does not dissolve a vinyl substrate) and some of which do not satisfy
the requirements of claim 1. App. Br. 13-14.
We recognize the disclosure in column 8 of Chen encompasses a large
number of co-solvents. However, Chen also discloses an example of an ink jet
composition for printing on a vinyl substrate wherein the composition comprises 2-
pyrrolidone as a co-solvent in an aqueous medium. Chen, col. 11, ll. 32-43 and
col. 12, l. 59-col. 13, l. 4. The evidence of record establishes that 2-pyrrolidone is
capable of softening but not dissolving a vinyl substrate. See Appellant’s Table
1B. Thus, we find this example in Chen anticipates the subject matter of claim 1.
See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (to
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anticipate under § 102, a prior art reference must disclose all elements of a claim as
arranged in the claim).
Based on the foregoing, the § 102(b) rejection based on Chen is affirmed.
We denominate this rejection a new ground of rejection because the Examiner did
not rely on the example in Chen (i.e., col. 11, ll. 32-43 and col. 12, l. 59-col. 13,
l. 4) in the § 102(b) rejection on appeal.
2. Rejection under 35 U.S.C. § 103(a) based on Chen
We also enter a new ground of rejection of claims 1, 2, 4-12, and 14 under
35 U.S.C. § 103(a) based on Chen.
Although Chen discloses a number of co-solvents, there is no dispute on this
record that some of these co-solvents satisfy the requirements of claim 1 (i.e.,
softens but does not dissolve a vinyl substrate). These co-solvents include acetone,
dimethylsulfoxide, and diethylene glycol monomethyl ether. App. Br. 13-14; Ans.
7.
We find it would have been within the ordinary skill in the art to use any of
the disclosed co-solvents, including co-solvents that satisfy the requirements of
claim 1, in the ink composition of Chen. See Merck & Co., Inc. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (disclosure of a multitude of effective
combinations does not render any particular formulation less obvious). For this
reason, claim 1 is rejected under § 103(a) as unpatentable over Chen.
D. DECISION
The rejection of claims 1, 2, 7, and 9 under 35 U.S.C. § 112, first paragraph,
based on the written description requirement is reversed.
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The rejection of claims 1, 2, and 4-7 under 35 U.S.C. § 102(b) as anticipated
by Pearlstine is affirmed.
The rejection of claims 1, 2, 4-12, and 14 under 35 U.S.C. § 102(b) as
anticipated by Chen is affirmed and designated a new ground of rejection.
Claims 1, 2, 4-12, and 14 are subject to a new ground of rejection under
35 U.S.C. § 103(a) as unpatentable over Chen.
New grounds of rejection are entered pursuant to 37 C.F.R. § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off.
Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R. § 41.50(b) provides "[a] new
ground of rejection pursuant to this paragraph shall not be considered final for
judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellant, 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 the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a) (2011).

AFFIRMED;
37 C.F.R. § 41.50(b)

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