Ex Parte Han-Adebekun et al

Patent Trial and Appeal Board

Mar 22, 2013

12029909 (P.T.A.B. Mar. 22, 2013)

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.
12/029,909 02/12/2008 Gang C. Han-Adebekun 93270AJA 9696
1333 7590 03/22/2013
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
NILAND, PATRICK DENNIS
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
03/22/2013 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
____________________

PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EASTMAN KODAK COMPANY
Inventors: Gang C. Han-Adebekun and Gary L. House
____________________

Appeal 2012-002025
Application 12/029,909
Technology Center 1700
____________________

Before FRED E. McKELVEY, ROMULO H. DELMENDO and
JAMES C. HOUSEL, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

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Statement of the case
Eastman Kodak Company (“applicant”), the real party in interest (Brief, 1
page 1), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 2
4 January 2011. 3
The application was filed in the USPTO on 12 February 2008. 4
The application on appeal claims priority of Provisional application 5
60/892,137, filed 28 February 2007. 6
The application has been published as U.S. Patent Application Publication 7
2008/0206465 A1. 8
In support of a § 103 rejection, the Examiner relies on the following 9
evidence. 10
Nagasawa et al.
“Nagasawa”
U.S. Patent 5,846,307 8 Dec. 1998

Applicant does not contest the prior art status of the evidence relied upon by 11
the Examiner. 12
We have jurisdiction under 35 U.S.C. § 134(a). 13
Claims on appeal 14
Claims 1-13, 15 and 19 are on appeal. Brief, page 1; Answer, page 3. 15
Claim 1, which we reproduce from the Claim Appendix of the Brief 16
(page 9), reads [matter in brackets and indentation added (see 37 C.F.R. § 1.75(i)); 17
principal limitations in issue in italics]: 18
An inkjet comprising; 19
[1] water 20

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[2] a self-dispersing carbon black pigment, and 1
[3] a water soluble polymer containing acid groups neutralized 2
by an inorganic base, 3
wherein 75 to 100% of the acid groups on the polymer are 4
neutralized by alkaline metal hydroxide, 5
wherein said carbon black pigment comprises greater than 6
11 weight % volatile surface functional groups, 7
wherein the weight % of volatile surface functional groups on 8
the carbon black pigment is determined 9
[a] by thermogrametric analysis and 10
[b] calculated by the equation: 11
wt % volatile surface functional group = 12
(weight loss 125 ºC → 700 ºC) / 13
(weight loss 125 ºC → 700 ºC) + (weight loss 700 ºC → 805 ºC). 14
The equation is discussed in the Specification at page 8:21-30. 15
The alkaline metal hydroxides include potassium, sodium and lithium 16
hydroxide. Specification, page 12:1-3. 17
Rejections 18
The Examiner maintains two rejections in the Answer. 19
Rejection 1: All claims on appeal stand rejected under § 112 for lack of 20
enablement. Answer, page 4. 21
Rejection 2: All claims on appeal stand rejected as being unpatentable under 22
§ 103(a) over Nagasawa. Answer, page 10. 23

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A final rejection under § 102(b) over Nagasawa has been withdrawn. 1
Answer, page 4. 2
In presenting the appeal, applicant does not argue the separate patentability 3
of Claims 2-13, 15 and 19. Accordingly, we will decide the appeal on the basis of 4
Claim 1. 37 CFR § 41.37(c)(1)(vii). 5
Analysis 6
Rejection 1—lack of enablement 7
The Examiner observed that Claim 1 calls for self-dispersing “carbon black 8
pigment [that] comprises greater than 11 weight % volatile surface functional 9
groups”. Answer, page 5. We understand the Examiner’s difficulty with the 10
claimed language to be that (1) it includes “all” carbon black having greater than 11
11 weight % volatile surface functional groups and (2) the Specification does not 12
enable one skilled in the art to make “all” of those carbon blacks. 13
The Examiner’s lack of enablement rejection therefore is based on a 14
Specification which does not have an enabling disclosure commensurate in scope 15
with the breadth of the claimed language. 16
For example, the Examiner found that “[t]here are certainly other potentially 17
useful and perhaps yet undiscovered volatile surface functional groups that can be 18
attached to carbon black which are not disclosed in the instant specification but 19
have yet to be discovered.” Answer, page 9. The Examiner’s finding, even if 20
correct, does not necessarily support a legal conclusion of lack of enablement. 21
In re Hogan, 559 F.2d 595, 605-607 (CCPA 1977) (see: Part II. Employment of a 22
Later State of the Art in Testing for Compliance With 35 U.S.C. § 112, First 23
Paragraph). In our view, the Examiner’s “yet undiscovered” rationale is not 24

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consistent with Hogan and therefore does not support a § 112 rejection based on a 1
lack of enablement commensurate in scope with the breadth of the claims. 2
The issue in this appeal with respect to the § 112 rejection is whether the 3
Specification, as filed, enables making inkjet compositions commensurate in scope 4
with the breadth of Claim 1. The answer turns on whether the Specification 5
contains a written description of how to make carbon black having greater than 6
11 weight % volatile surface functional groups. 7
Applicant argues that the subject matter of Claim 1 is an inkjet which 8
includes as one element carbon black. Applicant says we should focus on the 9
combination. We agree with the Examiner that if one element of a combination is 10
not enabled, then the combination is not patentable under § 112. However, we do 11
not agree with the Examiner that “all” carbon blacks falling within the scope of 12
Claim 1 need be enabled. Rather, we think a rule of reason is appropriate and that 13
enablement of the full scope of a claim should be viewed as enablement which 14
reasonably enables the scope of a claim—not every possibility which might fall 15
within the scope of a claim. Cf. In re Angstadt, 537 F.2d 498 (CCPA 1976) (fact 16
that claim may include inoperative embodiments does not per se render claim 17
unpatentable under the first paragraph of 35 U.S.C. § 112). 18
The Specification contains a comprehensive description of a “first class of 19
self-dispersed pigment”. Specification, page 4:15 to page 6:2. Brief, page 4. One 20
patent mentioned in the Specification is Nagasawa. Specification, page 4:23 21
(5,846,307). Other U.S. Patents and other documents are mentioned in the 22
Specification. The U.S. patents and other documents are presumed to be enabling. 23

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In re Spence, 261 F.2d 244, 246 (CCPA 1958); In re Antor Media Corp., 689 F.3d 1
1282, 1288 (Fed. Cir. 2012). 2
One difficulty we have had with the rejection is precisely what is missing 3
apart from possible new developments which may occur post applicant’s filing 4
date. Our difficulty has been compounded by the comprehensive description of the 5
first class of pigments described in the Specification. 6
Rejection 1 is reversed. 7
Rejection 2—obviousness under § 103 8
In effect, the Examiner found that the description in Nagasawa describes or 9
suggests all the elements of Claim 1. Applicant disagrees. 10
(1) 11
Applicant argues that Nagasawa does not describe or suggest neutralization 12
of the acid groups of its acrylic polymers with an alkaline metal hydroxide. 13
Applicant does not deny that Nagasawa describes the use of acrylic polymers. 14
According to Nagasawa, “[t]he acrylic polymer is preferably neutralized by a 15
volatile basic compound selected from ammonia, amine, alkanolamine and 16
alkylalkanolamine . . .” Col. 8:8-11. None of the explicitly described Nagasawa 17
basic compounds are alkaline metal hydroxides. 18
However, as the Examiner points out, the “amine” type compounds 19
described by Nagasawa are its “preferred” neutralization agents. A reference is not 20
limited to its preferred embodiments. In re Mills, 470 F.2d 649, 651 (CCPA 1972) 21
(all the disclosures in a reference must be evaluated, including non-preferred 22
embodiments, and a reference is not limited to the disclosure of specific working 23
examples (citing In re Chapman, 357 F.2d 418, 424 (CCPA 1966)). In the context 24

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of neutralizing carbon black, Nagasawa also describes neutralization via an amine 1
or in the alternative a combination of an amine and an alkaline metal hydroxide. 2
Col. 5:34-65, in particular col. 5:62-65. Nagasawa establishes that alkaline metal 3
hydroxides, such as potassium, sodium and lithium hydroxide are well known 4
neutralizing agents. Nagasawa does not indicate that alkaline metal hydroxides are 5
not suitable acid polymer neutralizing agents; rather, Nagasawa merely expresses a 6
preference for amines. 7
We agree with the Examiner that Nagasawa suggests one having ordinary 8
skill in the art would have found it obvious to use an alkaline metal hydroxide to 9
accomplish Nagasawa’s neutralization. 10
(2) 11
According to applicant, use of an alkaline metal hydroxide vis-à-vis an 12
amine yields unexpected results. Example C on pages 27-29 of the Specification 13
is said to support applicant’s position. 14
An applicant attempting to establish unexpected results must do so with 15
clear and convincing evidence. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It 16
was incumbent upon appellants to submit clear and convincing evidence to support 17
their allegation of unexpected . . . property.”). See also McClain v. Ortmayer, 141 18
U.S. 419, 429 (1891) (conclusive evidence needed to establish new function). 19
Moreover, a showing of unexpected results must be commensurate scope with a 20
claimed range. In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“[T]he record 21
does not show that the improved performance would result if the weight-22
percentages were varied within the claimed ranges. Even assuming that the results 23

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were unexpected, Harris needed to show results covering the scope of the claimed 1
range.”). 2
The Examiner found that the data in Example C (which we assume is based 3
on actual experimentation) is not commensurate in scope with the breadth of the 4
claims. On that basis, the Examiner declined to give controlling weight to 5
Example C. Answer, pages 23-25. 6
We agree with the Examiner that the Example C data is not convincing 7
evidence of an unexpected result commensurate in scope with the breadth of the 8
claims. The results of testing with neutralization based on potassium hydroxide 9
(I-C1 and I-C2, i.e., “invention”-C1 and -C2) vis-à-vis neutralization based on 10
dimethylethanolamine (C-C1 and C-C2, i.e., “comparison”-C1 and -C2) are set out 11
in Table 3 on page 29 of the Specification: 12

The Specification summarizing the data, states (page 29:3-9): 13
The above results show that black inks consisting of water, 14
soluble polymers neutralized by organic base [C-C1 and C-C2] 15
showed significant poor jetting performance, which included the low 16
drop velocity, high velocity drop over print life. . . . [Low drop 17

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velocity . . . and high velocity drop over print life is also said to be] 1
consistent with the polymer levels. At higher polymer levels in the 2
ink, the jetting performance degraded significantly, resulting in 3
premature drop missing, most likely due to the interaction of the 4
organic base neutralized polymeric binders with the thermal printhead 5
heater surface. 6
The data suggests that under one or two circumstances, one skilled in the art 7
might be able to achieve what applicant characterizes as improved properties. 8
We note that Claim 1 does not recite a property. Therefore, to establish 9
unexpected results, applicant was under a burden to show that there is a nexus 10
between the compounds used to neutralize and the properties listed in Table 3. 11
Applicant has not sustained its burden. Likewise, not established by the results is 12
whether any of the properties are a function of the degree of neutralization. 13
We have no basis for disagreeing with the weight the Examiner assigned to 14
the data generated by experimentation reported in Example C 15
(3) 16
Rejection 2 is affirmed. 17
Other arguments 18
We have considered applicant’s remaining arguments and find none that 19
warrant reversal of the Examiner’s § 103(a) rejection of the claims on appeal over 20
the prior art. Cf. In re Antor Media Corp., 689 F.3d 1282, 1294 (Fed. Cir. 2012). 21
Other observation 22
On page 22:16-20 of the Answer, the Examiner makes observations with 23
respect to “experience examining in this art . . .” and interviews “with inventors 24

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and consideration of inventor declarations . . .” Our decision has been based on 1
record before us and we have not found it necessary to consider or rely on the 2
Examiner’s observations. 3
Decision 4
Upon consideration of the appeal, and for the reasons given herein, it is 5
ORDERED that the decision of the Examiner rejecting the claims on 6
appeal under § 103(a) is affirmed. 7
FURTHER ORDERED that the decision of the Examiner rejecting claims 8
the claims on appeal under § 112 is reversed. 9
FURTHER ORDERED that no time period for taking any 10
subsequent action in connection with this appeal may be extended under 37 CFR 11
§ 1.136(a)(1)(iv). 12
AFFIRMED 13
14
ak 15