Ex Parte Hallden-Abberton et al

Board of Patent Appeals and Interferences

Jun 8, 2009

11126107 (B.P.A.I. Jun. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL HALLDEN-ABBERTON
and STEPHEN A. CRESCIMANNNO
____________

Appeal 2009-001918
Application 11/126,107
Technology Center 1700
____________

Decided:1 June 08, 2009
____________

Before CHARLES F. WARREN, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001918
Application 11/126,107

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of all pending claims 1-6. (Appeal Brief filed December 5, 2007,
hereinafter “App. Br.,” 2). We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
THE INVENTION
Appellants describe an ink jet binder comprising an aqueous
dispersion of polymer particles. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. An inkjet ink binder comprising an aqueous dispersion of
polymer particles, said polymer comprising as polymerized
units from 3 to 20 wt.% monoethylenically unsaturated acid
monomer, based on polymer weight, and having a glass
transition temperature (Tg) in the range of from -40°C to
120°C, and said polymer particles having a volume average
particle diameter as measured by dynamic light scattering
(DLS) of at least 35 nanometers greater than the weight average
particle diameter as measured by capillary hydro-dynamic
fractionation (CHDF).

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kidder 5,470,895 Nov. 28, 1995
Beach US 6,646,024 B2 Nov. 11, 2003

The Examiner rejected claims 1-6 under 35 U.S.C. § 102(e) as being
anticipated by Beach taken in view of the evidence given in Kidder.
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Application 11/126,107

The Examiner found that Beach discloses binders including polymer
particles obtained from 1-10 % acid monomer. (Examiner’s Answer entered
February 12, 2008, hereinafter “Ans.,” 3). The Examiner found that Beach
does not disclose the volume average particle size of the binder as measured
by DLS, but that because Beach discloses binders produced by emulsion
polymerization using the same type and amount of monomer, neutralizer,
and having the same weight average particle size disclosed by Appellants;
the binders of Beach would inherently have a volume average particle size
as measured by DLS of at least 35 nanometers (nm) greater than the weight
average particle diameter as measured by CHDF. (Ans. 4).
Appellants contend that Beach does not inherently disclose a volume
average particle diameter of at least 35 nm greater than the weight average
particle diameter as required in the claims. (App. Br. 3). Appellants argue
that it is possible to produce a polymeric binder in accordance with the
teachings of Beach that does not meet the recited volume average particle
size because the 1-10 weight % range of acid monomer in Beach only
overlaps the 3-20 weight % acid monomer range recited in the claims. (App.
Br. 5). Thus, Appellants contend that a polymer as recited in the present
claims does not necessarily result as is required for inherent anticipation.
(App. Br. 5 and 6).

ISSUE
We frame the issue on appeal as: have Appellants shown that the
Examiner reversibly erred in finding that Beach inherently discloses polymer
particles having a volume average particle diameter as measured by dynamic
light scattering (DLS) of at least 35 nanometers (nm) greater than the weight
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Application 11/126,107

average particle diameter as measured by capillary hydro-dynamic
fractionation (CHDF)?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification states: “[s]uitable acid monomers include
. . . methacrylic acid.” (Spec. 2, ll. 15-18).
2. Appellants’ Specification states: “the inkjet ink binders are
typically prepared by emulsion polymerization.” (Spec. 3, l. 8).
3. Appellants’ Specification discloses that the emulsion
polymerization takes place in the presence of a neutralizer in an
amount of from 15 to 75%, on an equivalent basis, based on the
monoethylenically unsaturated acid monomer. (Spec. 4, ll. 3-5).
4. Appellants’ Specification defines neutralizer as “a basic material
which is capable of entering into an acid-base reaction with the
acid monomer.” (Spec. 4, ll. 7-8).
5. The Declaration under 37 C.F.R. § 1.132 of Michael Paul Hallden-
Abberton of April 14, 2007 (hereinafter “Declaration”) states that
the neutralizer is equivalent to a buffer. (Declaration, para. 4).
6. Beach states:
[i]n another embodiment, the polymeric binder comprises
10% to 50% by weight methyl methacrylate, 50% to 85%
by weight butyl acrylate, and 3% to 10% by weight
methacrylic acid, based on the total weight of the
polymeric binder; for example 14.5% by weight methyl
methacrylate, 80.5% by weight butyl acrylate, and 5% by
weight methacrylic acid.
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(Col. 5, ll. 13-19).
7. Beach discloses that the polymeric binder has a Tg in the range of
-20ºC to about 70ºC. (Col. 5, ll. 54-55).
8. Beach discloses that the polymer particles have an average
diameter in the range of about 250 nm to about 400 nm, where the
average particle size is measured by capillary hydrodynamic
fractionation (CHDF). (Col. 6, ll. 8-10 and 35-37).
9. Beach discloses that the binder is polymerized in the presence of
buffered water. (Col. 7, ll. 10-31).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631-32 (Fed. Cir. 1987).
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(citing In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986)); In re Ludtke, 441
F.2d 660, 664 (CCPA 1971).
“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
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ANALYSIS
Appellants do not separately argue dependent claims 2-6.
Accordingly, we confine our discussion to appealed claim 1, and claims 2-6
stand or fall with claim 1 pursuant to 37 C.F.R. § 41.37(c)(1)(vii).2
We are unpersuaded by Appellants’ arguments that Beach fails to
inherently disclose polymeric binders having a volume average particle
diameter of at least 35 nm greater than the weight average particle diameter
as recited in claim 1. Beach discloses that polymeric binder particles have
an acid monomer content of 3-10 wt % methacrylic acid, which Appellants
list as an acceptable monoethylenically unsaturated acid monomer, and
which is entirely within the range claimed by Appellants. (FF 1, 6; Ans. 5).
Beach also discloses a polymeric binder having 5 wt % methacrylic acid.
(FF 6). Moreover, Beach discloses that the binder is polymerized in the
presence of buffered water, which is similar to Appellants’ emulsion
polymerization in the presence of neutralizer. (See FF 2-5 and 9).
Accordingly, there is a sound basis for believing that the polymeric binders
of Beach have a volume average particle diameter of at least 35 nm greater
than the weight average particle diameter as recited in claim 1. Spada,
supra.
In addition, Appellants have failed to provide sufficient evidence that
the polymeric binders disclosed by Beach are different from the polymeric
binders recited in the claims. The Declaration fails to provide any evidence
that binders having 3-10 wt % methacrylic acid or specifically 5 wt %

2 Only those arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but chose not
to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2007).
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methacrylic acid as disclosed by Beach would not possess the relationship
between volume average particle diameter and weight average particle
diameter recited in claim 1.

CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in finding that Beach inherently discloses polymer particles having a
volume average particle diameter as measured by dynamic light scattering
(DLS) of at least 35 nanometers greater than the weight average particle
diameter as measured by capillary hydro-dynamic fractionation (CHDF).

ORDER
We affirm the Examiner’s decision rejecting claims 1-6 under 35
U.S.C. § 102(e) as being anticipated by Beach taken in view of the evidence
given in Kidder.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(v).
AFFIRMED

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