Ex Parte Chen et al

Patent Trial and Appeal Board

Mar 10, 2016

13113841 (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/113,841 05/23/2011
22879 7590 03/14/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Tienteh Chen
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.
82748978 1374
EXAMINER
LE,HOAT
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/14/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIENTEH CHEN and YUBAI BI,
Appeal2014-007580
Application 13/113,841
Technology Center 1700
Before GEORGE C. BEST, ELIZABETH M. ROESEL, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 23-28 and 38. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Hewlett-Packard Development Company, LP as the
real party in interest. App. Br. 3.
Appeal2014-007580
Application 13/113,841
STATEivIENT OF THE CASE
Claimed Invention
The claimed subject matter relates to treated silica particulates, which
can be used to prepare a porous coating composition that can be coated on a
media substrate, e.g., paper, to form media sheets for receiving an ink-jet
printed image. App. Br. 20 (claim 23); Spec. 1:11-14, 3:19-23. Claim 23 is
the sole independent claim and is reproduced below from Appellants'
Claims Appendix:
1. Treated silica particulates for use in ink-jet media
coatings, comprising
silica particulates being surface-activated by a surface
activating agent, the surface active agent including an
aluminum chloride hydrate, and
wherein the said silica particulates are also reagent-
modified by an organosilane reagent; the organosilane reagent
includes an amine-containing silane,
vvherein the aluminum chloride hydrate is present in an
amount of 2 wt% to 20 wt% compared to the silica particulates
content.
App. Br. 20 (paragraph breaks added).
Alexander et al.
Mindick et al.
Bunger et al.
Lee et al.
Bi et al.
References
us 3,007,878
us 3,252,917
us 3,689,300
us 4,407 ,920
US 7,906,188 B2
Nov. 1, 1956
May 24, 1966
Sept. 5, 1972
Oct. 4, 1983
Mar. 15, 2011
2
("Alexander")
("Mindick")
("Bunger")
("Lee")
("Bi")
Appeal2014-007580
Application 13/113,841
The Rejections
1. Claims 23-28 and 38 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 1 of Bi.
Ans. 2. 2
2. Claims 23-25, 27, 28, and 38 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Bunger in view of Mindick. Ans. 2-5.
3. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bunger in view ofMindick and further in view of Lee. Ans. 5.
ANALYSIS
Appellants' arguments are directed to independent claim 23 only. The
dependent claims are not separately argued. App. Br. 9-19. 3 As a
consequence, the dependent claims stand or fall with independent claim 23,
and we confine our discussion to independent claim 23.
Obviousness-Type Double Patenting
The Examiner finds that claim 23 is directed to the same subject
matter as claim 1 of Bi, namely silica particles coated with an aluminum
chloride hydrate and an amine-containing silane. Ans. 2. Regarding the
amount of aluminum chloride hydrate, the Examiner finds that Bi teaches
0.5-5 mol% relative to silica, id. (citing Bi 4:44--46 and claim 6), which the
2 The grounds of rejection are set forth in a Non-Final Action dated June 7,
2013 and elaborated upon in a Final Action dated December 4, 2013 and in
the Answer, Ans. 2-5. Appellants did not petition to have any rejection
stated in the Answer designated a new ground of rejection.
3 Although dependent claim 26 is argued under a separate heading,
Appellants rely on the same arguments as presented for independent claim
23. App. Br. 18-19.
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Application 13/113,841
Examiner finds is equivalent to 1-11 wt.% and within the claimed range.
Ans. 2.
Appellants argue that claim 23 is patentably distinct from claim 1 of
Bi because the latter does not teach the recited amount of aluminum chloride
hydrate. App. Br. 12. Appellants assert that the Examiner's reliance on a
teaching in the body of Bi is improper as the reference is not prior art. Id.
"[T]he doctrine of obviousness-type double patenting ensures that a
particular invention (and obvious variants thereof) does not receive an undue
patent term extension." Abbvie, Inc. v. Kennedy Inst. of Rheumatology, 764
F.3d 1366, 1373 (Fed. Cir. 2014). In applying the doctrine, we must
determine whether the application's claims are patentably distinct from the
issued claims, which is analogous to an analysis of obviousness under
35 U.S.C. § 103. Id. at 1378. If the application's claims are merely an
obvious variation of an invention disclosed and claimed in the reference
patent, then they are not patentable due to obviousness-type double
patenting. Id. at 1379.
Analysis of obviousness-type double patenting focuses on the claims
of the reference patent because the non-claim portion ordinarily does not
qualify as prior art against the appealed claims. Eli Lilly & Co. v. Teva
Parenteral Meds., Inc., 689 F.3d 1368, 1379 (Fed. Cir. 2012). This does
not, however, mean that we disregard the non-claim portion entirely. For
example, we may look to the specification to define terms found in the
claims of the reference patent. In re Vogel, 422 F.2d 438, 441 (CCPA
1970). Additionally, in answering the question, "Does any claim in the
application define merely an obvious variation of an invention disclosed and
claimed in the [reference] patent?" we may look to the various disclosed
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Appeal2014-007580
Application 13/113,841
embodiments, as they provide a tangible and more meaningful way to
discern whether what is claimed was merely modified in an obvious manner.
Id. at 442. As the predecessor of our reviewing court held, the use of the
specification in this manner "is not in contravention of the cases forbidding
its use as prior art, nor is it applying the patent as a reference under
35 U.S.C. § 103." Id. at 442. Thus, in limited circumstances, we may tum
to the specification of the reference patent in the analysis of whether there is
obviousness-type double patenting.
Here, Appellants' claim 23 and claim 1 of Bi both recite silica
particles coated with an aluminum chloride hydrate and an amine-containing
silane. App. Br. 20; Bi 17:2-8. Bi's claim 1 is silent, however, on the
amount of aluminum chloride hydrate. For this limitation, the Examiner
cites Bi's disclosure of a molar ratio of aluminum chloride hydrate (ACH)
relative to silica of 0.5 to 5.0%. Bi 4:44--46. The Examiner also cites Bi's
claim 6, which recites a narrower range, 0.8 to 2.0%. Bi 18: 13-15; see also
Bi 4:46-48 (disclosing same narrower range).
Bi's claim 1 encompasses treated silica particulates comprising silica
particulates that are surface-activated by aluminum chloride hydrate in any
amount. Bi 17:2-8. Embodiments of Bi's claim 1 include treated silica
particulates containing aluminum chloride hydrate in an amount ranging
from 0.5 to 5.0% by mole relative to silica. Bi 4:44--46. The Appeal Brief
does not challenge the Examiner's finding that Bi's disclosed range of 0.5 to
5.0 mol% is equivalent to 1 to 11 wt.%. Ans. 2; see also Final Action 2
(same calculation). A large portion-91 o/o--0f Bi's disclosed range is
within Appellants' claimed range of 2 to 20 wt.%. It stands to reason that
Bi's narrower range of 0.8 to 2.0 mole%, as recited in Bi's claim 6, is more
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Appeal2014-007580
Application 13/113,841
1 , 1 • ."1 • • 11 , ' 1 • 1 LL • 11 , 1 , , comp1ete1y wnnm Appellants· crn1mea range.~ Appellants ao not assen
criticality, e.g., unexpected results, for the claimed range, as compared to
any other range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)
(where "the difference between the claimed invention and the prior art is
some range ... the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range"). We, therefore, determine that a
preponderance of the evidence supports the Examiner's conclusion that
Appellants' claim 23 is not patentably distinct from Bi's claim 1, and the
Examiner did not err by relying upon Bi's disclosed embodiments of the
claimed particulates to facilitate a more meaningful comparison between the
appealed claims and the reference patent claims.
For the first time in the Reply Brief, Appellants argue that the range of
1 to 11 wt.% calculated by the Examiner is incorrect. Reply Br. 5.
Appellants provide no excuse for not presenting this argument earlier. The
argument is untimely and will not be considered. 37 C.F.R. § 41.41(b)(2);
Ex parte Nakashima, No. 2009-001280, 2010 WL 191183, *1 (BPAI Jan. 7,
2010) (informative) ("any argument not timely presented in the principal
Brief, will not be considered when filed in a Reply Brief, absent a showing
of good cause explaining why the argument could not have been presented
in the Principal Brief').
4 We note that Bi discloses specific examples within the scope of Bi's claim
1, where the molar ratio of aluminum chloride hydrate (ACH) to silica is
1.20% and the molecular weights of these components are 17 4.5 and 60,
respectively. Bi 14:42-51 (Table 1). By our calculation, these examples
contain 3 .4 wt.% aluminum chloride hydrate, which falls squarely within
Appellants' claimed range.
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Appeal2014-007580
Application 13/113,841
Obviousness
The Examiner finds that Bunger discloses a formulation comprising
silica coated with a polyvalent metal oxide and an organosilane, where the
organosilane may be gamma-aminopropyltriethoxysilane-an amino-
containing silane. Ans. 3 (citing Bunger 2:20-42, 4:5-9). According to the
Examiner, Bunger teaches that the polyvalent metal oxide coating may be
the aluminum chloride hydrates disclosed by Alexander, id. (citing Bunger
2:32-35 and Alexander 4:3-11), or basic aluminum chloride, which the
Examiner finds is synonymous with aluminum chloride hydrate, id. (citing
Bunger 6:18-21(Example1), 7:57-59 (Example 4). Citing Mindick as
teaching the stability of aluminum chloride hydrate-coated silica sols, the
Examiner concludes that it would have been obvious to use aluminum
chloride hydrate in the formulation of Bunger to obtain a composition that is
stable during storage. Id. (citing Mindick 3:67--4:16).
Regarding the amount of aluminum chloride hydrate, the Examiner
finds that Bunger follows the teaching of Alexander, which discloses a range
of molar ratios of metal atoms to silica as a function of the surface area of
the silica. Id. at 3--4 (citing Bunger 2:32-35 and Alexander 2:21-33). The
Examiner finds that Alexander's disclosed range is within the claimed range,
when using silica having a particle size as taught by Bunger. Id. at 4 (citing
Bunger 2:24--25). In addition, the Examiner finds that Bunger and
Alexander teach that the amount of aluminum chloride hydrate is a result-
effective variable for converting the charge on the silica surface from
negative to positive, id. at 3--4, 7-8 (citing Bunger 2:32-35 and Alexander
2:21-33), and that Appellants' Specification discloses the same surface
charge-converting function for aluminum chloride hydrate, id. at 8 (citing
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Application 13/113,841
Spec. 11 ). The Examiner concludes that one of ordinary skill in the art
would have arrived at the claimed range through routine experimentation,
reasoning that "the amount of aluminum chloride hydrate that sufficiently
makes silica surface positively charged is expected to be the same for silica
particles of Bunger as for the claimed silica particles." Id.
Appellants argue that the claimed amount of aluminum chloride
hydrate is not taught by Bunger and would not have been obvious as a
matter of routine optimization because the end uses for the treated silica
particles are different. App. Br. 16. According to Appellants, their particles
are used in ink-jet media coatings, and Bunger's particles are used to
reinforce filler materials that will be laminated with plastic. Id. Appellants
contend that the degree to which the charge on the silica surface must be
converted from negative to positive and the amount of aluminum chloride
hydrate necessary to effect that conversion are not necessarily the same for
these disparate uses for the silica particles. Id.; Reply Br. 6-7.
"A prima facie case of obviousness typically exists when the ranges of
a claimed composition overlap the ranges disclosed in the prior art." In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Where the prior art teaches
that a variable affects a particular property of a product or composition, the
variable is called "result-effective." In re Applied Materials, Inc., 692 F.3d
1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective.").
Where an overlapping range pertains to a result-effective variable, then
determination of the optimum range by routine experimentation is deemed to
be within the ability of one of ordinary skill in the art and not inventive. Id.
at 1295; In re Boesch, 617 F.2d 272, 276 (CCP A 1980) ("[D]iscovery of an
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Application 13/113,841
optimum value of a result effective variable ... is ordinarily within the skill
of the art.").
Here, the Examiner finds that the amount of aluminum chloride
hydrate in the treated silica particles is a result-effective variable. Ans. 3--4,
7-8. That finding is amply supported by the evidence. Bunger discloses
that silica particles coated with a polyvalent metal oxide "have a high
positive charge as opposed to the more traditional silica sols which are
negatively charged." Bunger 2:30-31. For a description of positively
charged coated silica sols, Burger refers to Alexander. Id. at 2:33-36.
Alexander discloses that mixing silica particles with a basic metal salt5 in a
particular ratio results in "a stable aquasol of the coated silica particles, in
which the particles are positively charged." Alexander 2:21-36. Alexander
teaches that the proportion of basic metal salt to silica particles is "critical,"
id. at 4:46--48 and teaches the consequences of a ratio outside the disclosed
range, id. at 4:65-70. For example, Alexander discloses that an amount less
than the lower limit "is insufficient to produce the positive charge necessary
for stabilization." Id. at 4:65---67.
The Examiner finds that the property affected by the amount of
aluminum chloride hydrate-a positive charge on the surface of the treated
silica particles-is a desired property, both for the prior art compositions and
5 Appellants do not dispute the Examiner's finding that the basic metal salts
disclosed by Alexander include aluminum chloride hydrate, as recited in
Appellants' claim 23. Ans. 3 (citing Alexander 4:3-11). That finding is
supported by Alexander's chemical formula for basic aluminum chloride,
Alexander 3:6-11 ("Al:Cl:(OH)2"), which is within the scope of Appellants'
chemical formula for aluminum chloride hydrate, Spec. 4:32-5:1
("Aln(OH)mClc3n-m), wherein n can be from 1 to 50, and m can be from 1 to
150").
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Application 13/113,841
Appellants' disclosed compos1t10ns. Ans. 7-8. That finding is likewise
supported by the evidence. Bunger 2:30-31; Alexander 2:21-36, 4:65---67,
5:30-37; Spec. 3:1-5, 3:28, 6:16-20, 7:31-8:2, 9:20-27, 10:32-11:9. For
example, like Appellants, Alexander teaches that the disclosed amount of
basic metal salt (aluminum chloride hydrate) is sufficient to achieve a
positive charge on the silica surface. Alexander 4:65-70; Spec. 11 :7-9.
Under applicable case law, the Examiner's findings are sufficient to
establish prima facie obviousness and shift the burden to Appellants to show
that the claimed range is critical and produces a different and unexpected
result as compared with the prior art. Applied Materials, 692 F.3d at 1297.
Appellants' argument that the degree of positive charge and amount of
aluminum chloride hydrate may be different for Appellants' coating
compositions as compared with the prior art, App. Br. 16, Reply Br. 6-7, is
speculative, not supported by evidence or technical reasoning, and not
sufficient to establish error in the Examiner's prima facie case.
Appellants do not explain how the difference in end uses for
formulations containing treated silica particles would change the degree of
positive charge or amount of aluminum chloride hydrate that is needed.
Appellants do not assert that the claimed range (in weight percent) differs
from Alexander's disclosed range (a molar ratio per unit surface area). Nor
do Appellants assert that optimizing the amount of aluminum chloride
hydrate based on the teachings of Bunger and Alexander would have
required a level of skill greater than that possessed by the ordinary artisan.
On this record, the fact that Bunger's treated silica particles are used in
formulations for coating different substrates for different purposes, as
compared with Appellants' treated silica particles, does not persuade us of
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Application 13/113,841
reversible error in the Examiner's finding that the amount of aluminum
chloride hydrate is a result-effective variable that one of ordinary skill in the
art could have optimized through routine experimentation.
Next, Appellants argue that the combination of aluminum chloride
hydrate and an amine-containing silane, as recited in claim 23, provides
unexpected results (good coalescence and air fade resistance) over the prior
art. App. Br. 17 (citing Example 12 of the Specification). Appellants
further argue that neither Bunger nor Mindick recognizes this claimed
combination or its associated benefits. Id. Appellants contend that they are
not required to show unexpected results over the combination of Bunger and
Mindick. Id.; Reply Br. 7-8.
The Examiner finds that Appellants' Example 12 only shows that
silicas coated with both of these chemicals (aluminum chloride hydrate and
an amine-containing silane) are better than silicas coated with either
chemical alone. Id. at 9. According to the Examiner, Example 12 is not
commensurate with Appellants' patentability argument because it fails to
compare silicas coated with the claimed amount of ACH with silicas coated
with an amount of ACH outside the claimed range. Id. at 9-10. The
Examiner states: "Bunger in view of Mindick provides silica coated with
both ACH and amine-containing silane, which silica is expected to exhibit
improved properties over silicas coated with ACH or amine-containing
silane alone." Ans. 10.
For a showing of "unexpected results" to be probative evidence of
non-obviousness, the applicant must establish "(1) that there actually is a
difference between the results obtained through the claimed invention and
those of the prior art, ... and (2) that the difference actually obtained would
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not have been expected by one skilled in the art at the time of invention." In
re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citation omitted). "[A]n
applicant relying on comparative tests to rebut a prima facie case of
obviousness must compare his claimed invention to the closest prior art."
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("when unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art"). Furthermore, "any
superior property must be unexpected to be considered as evidence of non-
obviousness." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir.
2007).
To meet their burden to show unexpected results, Appellants rely on
Example 12 of the Specification. The conclusion reached in the Example is:
The aminosilane reagent treated silica (Silica 10),
provided poor coalescence, but showed some air fade resistance
gain. Aluminum chloride hydrate (ACH) treated silica (Silica
14 ), provided good coalescence performance, but exhibited
poor air fade resistance. By incorporating both ACH and the
aminosilane reagent (Silicas 11-13 ), a balance between the
good air fade resistance and good coalescence was achieved.
Spec. 25:16---21. Appellants do not direct us to evidence, in the Specification
or elsewhere, sufficient to show that the results obtained in Example 12
would have been unexpected by one of ordinary skill in the art. For
example, Appellants submit no declaration or other evidence regarding the
expectations of one of ordinary skill in the art regarding the coalescence and
air fade resistance properties discussed in Example 12. Appellants do not
explain whether it was known that aminosilane provides air fade resistance
and ACH provides good coalescence performance. Also, Appellants do not
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show sufficiently that the "balance" of properties achieved in Example 12 is
anything other than the combination of the known effects of each chemical
acting alone.
Furthermore, Appellants do not explain how their comparative
examples are representative of the closest prior art, i.e., Bunger, which
discloses a formulation containing silica particles coated with basic
aluminum chloride and amino-containing silane. Bunger 2:20-42, 4:5-9,
6:18-21(Example1), 7:57-59 (Example 4: "The starting materials forthe
positive sols are basic aluminum chloride and colloidal silica sols."), 7:66-
70 (Example 5: "a coupling agent solution containing gamma-
aminopropyltriethoxysilane ... and positive sol").
Accordingly, we agree with the Examiner that Appellants do not meet
their burden to show unexpected results.
Based on the foregoing, the weight of the evidence supports the
Examiner's conclusion of obviousness. Therefore, the§ 103(a) rejection is
sustained.
CONCLUSION OF LAW AND DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a) (1).
AFFIRMED
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