Ex Parte Lauw et al

Board of Patent Appeals and Interferences

Jun 17, 2009

11076223 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIANG P. LAUW and TYE J. DODGE
____________

Appeal 2009-002149
Application 11/076,223
Technology Center 1700
____________

Decided:1 June 17, 2009
____________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

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).

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Application 11/076,223

2
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-8, 10-24, and 26-44.2 (App. Br. 10). We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellants describe an ink-jet ink composition including a surfactant
having an aromatic containing portion. The surfactant is present in a
concentration from about 0.4 to about 0.95 times the critical micelle
concentration (CMC) of the surfactant in the ink-jet composition. (Spec. 3,
ll. 24-30). Claims 1, 34, and 39, reproduced below, are representative of the
subject matter on appeal.
1. An ink-jet ink composition, comprising:
a) a colorant, and
b) a liquid vehicle including a surfactant, said surfactant
having a critical micelle concentration with respect to the ink-
jet composition, said surfactant being present in the ink-jet ink
composition at a concentration from about 0.4 to about 0.95
times the critical micelle concentration, said surfactant also
having an aromatic-containing portion; wherein said surfactant
has a diffusion coefficient in the ink-jet ink composition such
that diffusion of surfactant molecules to an air-liquid interface
forms a substantially equilibrated film in less than about 1
second.

34. A method of ink-jet printing with reduced clogging and
increased slewing decap time, comprising the step of jetting an

2 Claims 9 and 25 have been canceled. (Appeal Brief filed January 18, 2008,
hereinafter “App. Br.,” 5).
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ink-jet ink composition from a printhead, said ink-jet ink
composition including a colorant, a liquid vehicle, and a
surfactant, said surfactant being present at a concentration
which is from about 0.4 to about 0.95 times a critical micelle
concentration of the surfactant in the ink composition and
having an aromatic portion.

39. The method of claim 34, wherein the slewing decap time is
from about 5 seconds to about 25 seconds.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Reboa US 6,478,418 B2 Nov. 12, 2002

The Examiner rejected claims 1-8, 10-24, and 26-44 under 35 U.S.C.
§ 103(a) as being unpatentable over Reboa.3
The Examiner found that Reboa discloses an ink jet ink including a
surfactant that is present in a concentration at or below its critical micelle
concentration. (Ans. 3). The Examiner found that Reboa does not teach the
exact same proportions as recited in the claims, but that it would have been
obvious to select the portions of ranges that overlap citing In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003) and In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990). (Ans. 4).
Appellants contend that Reboa does not provide the motivation to
select an amount of surfactant falling within the recited range because Reboa

3 The Examiner withdrew the rejection of claims 1-8, 10-24, and 26-44 under
35 U.S.C. § 103(a) as being unpatentable over EP 1 350 821 to Kabalnov in
the Examiner’s Answer. (Examiner’s Answer entered June 3, 2008,
hereinafter “Ans.,” 2).
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allegedly teaches improvements by maximizing the surfactant concentration
to as close to the critical micelle concentration as possible. (App. Br. 16-
17). Appellants additionally argue that Reboa fails to teach surfactants
having a diffusion coefficient as recited in the claims. (App. Br. 17).
Appellants contend that the diffusion coefficient is not an inherent property,
but a function of both the identity of the surfactant and of the constituent
properties of the ink. (App. Br. 17-18). Appellants argue that Reboa does
not teach the slewing decap time element recited in the dependent claims.
(App. Br. 20).

ISSUES
Have Appellants shown that the Examiner reversibly erred in
determining that it would have been obvious in view of Reboa to employ a
surfactant in a concentration from about 0.4 to about 0.95 times the critical
micelle concentration?
Have Appellants shown that the Examiner reversibly erred in
determining that it would have been obvious in view of Reboa to employ a
surfactant having a diffusion coefficient in the ink-jet ink composition such
that diffusion of surfactant molecules to an air-liquid interface forms a
substantially equilibrated film in less than about 1 second?
Have Appellants shown that the Examiner reversibly erred in
determining that the recited slewing decap times would have been obvious in
view of Reboa?

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification states: “[a]s used herein, ‘critical micelle
concentration’ or ‘CMC’ refers to the concentration of a surfactant
at which additional surfactant substantially all forms micelles . . .
CMC values are based on weight percent unless otherwise noted.”
(Spec. 5, ll. 3-18).

2. Appellants’ Specification states: “[a]s used herein, ‘slewing decap
time’ is the time during which a nozzle is exposed between
ejection of an ink droplet . . . slewing decap time refers to the time
during use of a printhead between firings.” (Spec. 5, ll. 26-30).
3. Appellants’ Specification states:
the surfactant can be present in the ink-jet ink
composition at a concentration which is about 0.4 to 0.95
times the critical micelle concentration. Depending on
the particular formulation and surfactant, one particularly
effective range of concentrations can be from about 0.7
to about 0.95 times the critical micelle concentration. In
some of these formulations, concentrations above about
0.90 to 0.95 begin to exhibit decreased performance such
as increased wicking. Similarly, concentrations below
about 0.4 tend to have insufficient surfactant content to
affect a reduction in clogging. Typically, the degree of
wicking noted at these embodiments would not be
considered problematic.
(Spec. 7, ll. 5-14).

4. Appellants’ Specification states:
The specific amount of surfactant added in accordance
with the present invention will depend largely on the CMC
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value of the particular surfactant. However, as a general
guideline, the concentration of surfactant can range from about
0.01 wt% to about 1 wt%, depending on the surfactant and the
specific ink that its CMC is compared to.
(Spec. 9, ll. 11-15).

5. Appellants’ Specification states:
Without being bound by a particular theory, it is
thought that one influential factor of the present
invention is choosing a surfactant which can have a
diffusion coefficient in the ink-jet ink composition which
effects surfactant behavior at an air-liquid interface of the
ink composition. More specifically, the surfactant can be
chosen such that diffusion of surfactant molecules to an
air-liquid interface forms a substantially equilibrated film
in less than about 1 second.
(Spec. 9, ll. 17-22).

6. Reboa describes ink jet inks including at least one surface active
additive (surfactant). (Col. 3, ll. 40-49).
7. Reboa states: “[t]he surfactant (amine oxide, betaine, sulfo-betaine,
polymeric surfactant) has a concentration in the ink that is at or
below its critical micelle concentration (cmc). (Col. 6, ll. 54-56).
8. Reboa states:
an inkjet ink having better directionality and hence better
print quality ink would have the seemingly incompatible
properties of relatively high surface tension and relatively
low contact angle between the ink and the orifice plate
material. The surfactant(s) employed in the practice of
the present invention provide the ink with the requisite
surface tension and contact angle to provide the
improved results.
(Col. 6, l. 65 – col. 7, l. 5).

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9. Reboa states:
It stands to reason that, if the nozzle is aiming correctly,
the more the ink interacts with the walls (i.e., KAPTON
material) of the nozzle in the orifice plate, then the better
because it will be directed to its target more accurately.
This effect is clearly seen in FIG. 3 with C12AO where
the concentration of the C12AO is increased in going
from left to right, and contact angle correspondingly
decreases.
(Col. 6, ll. 9-16).

10. Reboa states:
The inks of the present invention comprise (1) about 5 to
50 wt %, preferably about 10 to 25 wt %, water-miscible
organic co-solvent, (2) about 0.05 to 10 wt %, preferably
about 0.5 to 10 wt %, colorant (pigment or dye), (3)
about 0.01 to 10 wt %, preferably about 0.01 to 5 wt %,
and most preferably about 0.05 to 2 wt %, surface active
additive (one or more surfactant plus one or more
oligomer) of the present invention, and (4) water. Other
components and additives to the ink may also be present,
as discussed below.
(Col. 7, ll. 32-40).

11. Reboa states: “[t]he balance of the ink is water, together with
other additives commonly added to inkjet inks, which are
employed to optimize the properties of the ink for specific
applications.” (Col. 9, ll. 1-4).
12. Reboa discloses polymeric surfactants containing aromatic groups.
(Col. 6, ll. 33-53).

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PRINCIPLES OF LAW
The Federal Circuit has held that when the difference between a
claimed invention and the prior art is a claimed range; the applicant must
show that the range is critical through unexpected results. In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990) (internal citations omitted).

A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference,
or would be led in a direction divergent from the path that
was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a
reference will teach away if it suggests that the line of
development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the
applicant.

In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994). In determining whether
prior art references teach away from the claimed combination, the nature of
the teachings is highly relevant. Id. at 553.
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

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ANALYSIS
We confine our discussion to appealed claims 1, 34, and 39, which
contain claim limitations representative of the arguments made by
Appellants pursuant to 37 C.F.R. § 41.37(c)(1)(vii).4
Regarding claims 1 and 34, we are not persuaded by Appellants’
argument that Reboa teaches against the recited range of surfactants.
Reboa’s disclosure that the concentration of surfactant is “at or below its
critical micelle concentration” includes all concentrations below the CMC
and significantly overlaps concentrations corresponding to 0.4 to 0.95 times
the CMC recited in the appealed claims. (See FF 7). Further, Reboa
discloses that the amount of surfactant may be selected to impart the
“requisite surface tension and contact angle to provide the improved results.”
(FF 8).
In addition, we are unpersuaded by Appellants’ argument that because
Reboa discloses that decreased contact angle is one factor contributing to
better directionality and that increased surfactant concentration results in
decreased contact angle, Reboa teaches against concentrations within the
recited range. (App. Br. 16-17). Contrary to Appellants’ arguments, Reboa
does not teach that the concentration of surfactant must be above 0.95 times
the CMC. (See FF 7-9). Indeed, Reboa’s preference for higher surfactant
concentrations and requirement that the concentration of surfactant is limited
to at or below the CMC provides a reason for one of ordinary skill in the art

4 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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to optimize Reboa’s concentrations to within Appellants’ recited range.
Accordingly, we affirm the Examiner’s decision rejecting claim 34.
With respect to claim 1, Appellants additionally argue that Reboa fails
to disclose the recited diffusion coefficient. The Examiner maintains that
“the only thing needed [to obtain the recited diffusion coefficient] is a liquid
vehicle (water and solvent) including surfactant that meets the [recited
concentration requirements]…because [Appellants have] not claimed any
components that appear to contribute [to] the diffusion coefficient other than
the surfactant.” (Ans. 6). However, we agree with Appellants that the
diffusion coefficient is a separate claim limitation, and the Examiner has
failed to direct us to any evidence of record that the polymeric surfactants
containing aromatic groups disclosed by Reboa would possess the recited
diffusion coefficient. Moreover, Appellants’ Specification states that the
diffusion coefficient depends on the choice of surfactant, and not the
particular concentration of surfactant. (FF 5). Therefore, we reverse the
Examiner’s decision rejecting claims 1-8, 10-24, 26-33, and 38.
Regarding claim 39, Appellants argue that Reboa fails to disclose the
slewing decap time and that Reboa’s compositions would not possess the
recited slewing decap time because the recited ink compositions are distinct
from Reboa’s compositions. (App. Br. 20). However, because we agree
with the Examiner that the recited compositions are not distinct from
Reboa’s compositions as discussed supra, Appellants’ arguments are not
persuasive.

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CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in determining that it would have been obvious in view of Reboa to
employ a surfactant in a concentration from about 0.4 to about 0.95 times the
critical micelle concentration.
Appellants have failed to demonstrate that the Examiner reversibly
erred in determining that the recited slewing decap times would have been
obvious in view of Reboa.
Appellants have demonstrated that the Examiner reversibly erred in
determining that it would have been obvious in view of Reboa to employ a
surfactant having a diffusion coefficient in the ink-jet ink composition such
that diffusion of surfactant molecules to an air-liquid interface forms a
substantially equilibrated film in less than about 1 second.

ORDER
We affirm the Examiner’s decision rejecting claims 34-37 and 39-44
under 35 U.S.C. § 103(a) as being unpatentable over Reboa.
We reverse the Examiner’s decision rejecting claims 1-8, 10-24, 26-
33, and 38 under 35 U.S.C. § 103(a) as being unpatentable over Reboa.

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-IN-PART

Appeal 2009-002149
Application 11/076,223

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