Ex Parte Kou et al

Patent Trial and Appeal Board

May 26, 2016

12667693 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/667,693 01/05/2010
94799 7590
BASF Corporation
Patent Department
500 White Plains Road
P.O. Box 2005
Tarrytown, NY 10591
05/31/2016
FIRST NAMED INVENTOR
Huiguang Kou
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.
23765/CCN 4 1370
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
05/31/2016 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):
andrea.dececchis@basf.com
Marilyn.praw@basf.com
basf-ip@basf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUIGUANG KOU, FRANK OLIVER HEINRICH PIRRUNG,
HAIYANG YU, YINZHI MA, and PETRUS JOHANNES HARBERS 1
Appeal2014-006235
Application 12/667 ,693
Technology Center 1700
Before PETER F. KRATZ, ROMULO H. DELMENDO, and
DONNA M. PRAISS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1and10. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is identified as CIBA Corporation. App. Br. 3.
Appeal2014-006235
Application 12/667 ,693
STATEMENT OF THE CASE
The "invention relates to a modified cellulose based dispersant
characterized by a 'graft onto' approach, which can be used in ink
applications." Spec. 1. Representative claim 1 is reproduced below:
1. An ink composition comprising:
a pigment; and
a dispersant represented as a mixture of compounds of
Formula 1 and Formula 2
H H
T-f AyN,R/NYB'P L
I 0 0
2
H H
B I l B
/ vN, ,..N"'-"" ,
p u R n p
0 0
wherein,
T is cellulose nitrate (nitrocellulose) with a molecular
weight of 500 - 1,000,000 g/mol;
A and B are each, independently, -0- or -NH-;
R is selected from toluenediyl, 4,4 methylene diphenylene,
tetramethyl-m-xylylene, hexamethylene, isophoronyl
and 4,4 methylene dicyclohexylene;
P is the residue of polyethylene glycol methyl ether,
polypropylene glycol monobutyl ether, an amino
terminated polyalkylene glycol, or a polyester with
molecular weight between 100 and 10,000 g/mol,
n is a number of 1- 5000.
App. Br. 11-12 (Claims App'x). Claim 10 depends from claim 1 and further
requires that "the pigment dispersion is in nitrocellulose-alcohol (NC-A),
nitrocellulose-ester (NC-E) or Nitrocellulose-alcohol/ester (NC-A/E)." Id. at
12.
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Appeal2014-006235
Application 12/667 ,693
Claims 1 and 10 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Akashi2 as evidenced by Kraemer3 and under 35 U.S.C. §
103 (a) as unpatentable over Akashi, in view of Smart, 4 when the polyether is
amino terminated. Ans. 2---6; Final Act. 2--4.
DISCUSSION
Appellants state that "the present appeal will stand or fall on the basis
of independent claim 1" and, further, "[ w ]ith regard to Kraemer and Smart,
it should be noted that these references, as cited, fail to cure at least the
above-noted deficiencies of Akashi." App. Br. 6, 9--10. Because Appellants
do not separately argue the claims or the obviousness rejection, we confine
our discussion to claim 1 and whether it is anticipated by Akashi.
The Examiner finds, and Appellants do not dispute, that Akashi
discloses the dispersant of claim 1 comprising formula 1 and formula 2.
Final Act. 2-3; Ans. 2--4; App. Br. 6-10.
Regarding the Examiner's finding that Akashi discloses the pigments
carbon black and iron oxide in Example 1, Appellants argue that the
Examiner erred because "Akashi makes no mention of any inks or pigments
in its disclosure." App. Br. 7. Appellants do not dispute that carbon black
and iron oxide are well-known pigments and disclosed by Akashi, but,
rather, that "what Akashi teaches is a magnetic recording medium" and that
"carbon black and iron oxide have multiple other well-known uses." Id. at
2 U.S. Patent No. 3,630,771, Dec. 28, 1971.
3 Elmer 0. Kraemer, Molecular Weights of Celluloses and Cellulose
Derivatives, 30 INDUS. ENG'G CHEMISTRY 1200 (1938).
4 U.S. Patent No. 3,386,931, June 4, 1968.
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Appeal2014-006235
Application 12/667 ,693
6, 7. Appellants further argue that because Akashi relates to a magnetic
recording medium, a person of ordinary skill in the art would not tum to
Akashi for an ink composition that is "applicable for food contact
applications." Id. at 8 (citing Spec. 7:5-8). According to Appellants, the
Fe203 powder and fluorine oil next to the polymer components in Akashi's
composition of Examples 1 and 2 are "not appropriate for food contact
application." Id. In addition, Appellants contend that "ink composition" as
recited in the preamble is "a fundamental characteristic of the claimed
invention which should indeed properly be construed as a limitation of the
claim." Id. at 9.
Thus, the dispositive issue arising from these contentions is:
Did Appellants show reversible error in the Examiner's conclusion
that Akashi anticipates the ink composition of claim 1 and, specifically, the
pigment required by claim 1?
We do not find any of Appellants' arguments persuasive.
As pointed out by the Examiner, Appellants are correct that Akashi
does not describe the iron oxide and carbon black as being pigments in the
disclosed composition. Ans. 7. However, if the prior art teaches the
identical chemical structure, the properties the claims recite are necessarily
present. In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). Here, because of
their chemical structure, the iron oxide and carbon black disclosed in
Akashi' s composition would necessarily possess the property of being
pigments in the disclosed composition.
Regarding the preamble of claim 1 which recites "[a Jn ink
composition," the preponderance of the evidence supports the Examiner's
finding that it is a statement of intended use. The Examiner finds that
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Appeal2014-006235
Application 12/667 ,693
Formulation 2 in the Specification supports the term ink composition as
implicitly teaching the inclusion of a solvent and pigment, which are taught
by Akashi. Ans. 7 (citing Spec. 16-17 (Formulation 2)). The Examiner
further finds that "[ t ]hese components are taught by Akashi et al." because
"Akashi et al. teaches an organic dispersion (dispersion in butyl acetate)
comprising the polymer and the carbon black and iron oxide (pigments)
(Example 1)." Id. 7 (citing Akashi 2:32-57 (Example 1)). The Examiner
additionally finds that "[ t ]he appellant has failed to identify any other
components that would be required to make the composition function as an
ink or provide evidence that the composition of Akashi et al. would not be
capable of functioning as an ink." Id. 7-8.
While Akashi teaches that the disclosed composition relates to a
magnetic recording medium, it nevertheless anticipates the claimed ink
composition. "It is well settled that the recitation of a new intended use for
an old product does not make a claim to that old product patentable." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Further, as the Examiner finds here, "[i]f ... the body of the claim fully and
intrinsically sets forth the complete invention, including all of its limitations,
and the preamble offers no distinct definition of any of the claimed
invention's limitations, but rather merely states, for example, the purpose or
intended use of the invention, then the preamble is of no significance to
claim construction because it cannot be said to constitute or explain a claim
limitation." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999) (citations omitted).
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Appeal2014-006235
Application 12/667 ,693
It is also immaterial that Akashi is directed to a different field of use
than the claimed invention. See App. Br. 9. As explained by our reviewing
court in In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997):
the question whether a reference is analogous art is irrelevant to
whether that reference anticipates. See In re Self, 671F.2d1344,
1350, 213 USPQ 1, 7 (CCPA 1982). A reference may be from an
entirely different field of endeavor than that of the claimed invention
or may be directed to an entirely different problem from the one
addressed by the inventor, yet the reference will still anticipate if it
explicitly or inherently discloses every limitation recited in the claims.
In this case, the Examiner has shown sufficiently that Akashi anticipates
claim 1 because Akashi discloses a composition in the form of an organic
dispersion in a solvent (butyl acetate) comprising the formula 1 and formula
2 dispersants and pigment (carbon black and iron oxide). See Ans. 7-8
(citing Akashi 2:32-57 (Example 1 )).
Finally, Appellants' argument that Akashi' s composition is
distinguishable because it contains Fe203 powder and fluorine oil next to the
polymer components and, thus, is incompatible with food contact
applications (App. Br. 8) is unpersuasive for the additional reason that these
features are not required by claim 1. Although the claims are interpreted in
light of the specification, limitations from the specification are not read into
the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
For the foregoing reasons, we affirm the rejections of claims 1 and 10
under 35 U.S.C. §§ 102(b) and 103(a). No time period for taking any
subsequent action in connection with this appeal may be extended under 37
C.F.R. § 1.136(a)(l )(v).
AFFIRMED
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