Ex Parte Nair et al

Board of Patent Appeals and Interferences

May 22, 2012

11962520 (B.P.A.I. May. 22, 2012)

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.
11/962,520 12/21/2007 Mridula Nair 94745CFR 8246
1333 7590 05/22/2012
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
MESH, GENNADIY
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
05/22/2012 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
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MRIDULA NAIR and TAMARA K. JONES
________________

Appeal 2011-006580
Application 11/962,520
Technology Center 1700
________________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

Best, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 1-15 of Application 11/962,520.
Pursuant to 35 U.S.C. § 134(a), Appellants come to the Board seeking
reversal. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
Background
The ’520 application is directed to methods for the preparation of
particles to be used as toner in various printing uses. The particles are
composed of a solid phase that encloses multiple liquid phase domains.
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Spec. 5. The solid phase is comprised of a polymer or resin and serves as the
binder for the toner pigment, which is dispersed in the solid phase. Id. The
liquid phase is comprised of an oil in which the polymer or resin does not
dissolve.
Such particles are produced by dispersing the polymer phase in a
mixture of an organic solvent, the oil, and the pigment and then preparing an
oil-in-water emulsion. Id. at 9. The organic solvent and water are then
removed, leaving the particles behind. Id.
Claim 1 is representative and reproduced below:
1.A method of manufacturing ink polymer particles comprising:
providing an organic phase comprising a solvent
containing a dissolved polymer, an oil, and a pigment;
dispersing the organic phase in an aqueous phase
containing a stabilizer to form an emulsion containing droplets
of the organic phase; and
removing the solvent from the droplets to form discrete
polymer particles comprising a solid phase having multiple
domains of a liquid phase comprising oil and pigment contained
therein; wherein the oil does not solubilize the solid phase of
the discrete polymer particles.
App. Br. 8
Rejections
1) The Examiner rejected claims 1-7, 9-12, and 15 as obvious under
35 U.S.C. § 103(a) over published U.S. Patent App. 2007/0141501
A1 (“Jin,” June 21, 2007) in view of U.S. Patent No. 4,814,253
(“Gruber,” issued March 21, 1989).
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2) The Examiner rejected claim 8, 13, and 14 as obvious under 35
U.S.C. § 103(a) over Jin in view of Gruber, further in view of U.S.
Patent No. 5,601,960 (“Mahabadi,” issued Feb. 11, 1997).
Issue
An issue that is dispositive of all of the appealed rejections is whether
the combination of Jin and Gruber describes every step in claim 1 of the
’520 application. For the reasons set forth below, we answer this question in
the negative. We, therefore, cannot sustain the Examiner’s rejections of
claims 1-15 of the ’520 application.
Discussion
Obviousness is a legal conclusion based upon underlying factual
determinations. In re Kumar, 418 F.3d 1361, 1365 (Fed. Cir. 2005). These
underlying factual determinations include: (1) the level of ordinary skill in
the art, (2) the scope and content of the prior art, (3) the differences between
the claimed invention and the prior art, and (4) any objective indicia of
nonobviousness that may be present. Graham v. John Deere Co., 383 U.S. 1,
17-18 (1966).
Jin describes a method for making toner particles with a porosity of
greater than 20 percent. Jin, cl. 1. The method comprises mixing a pore
generating compound, a polymerization initiator, and a colorant with water-
immiscible polymerizable monomers. Id. at ¶ 17. This organic mixture is
then dispersed into water to create an oil-in-water emulsion and the
monomers are polymerized. Id. The water-immiscible pore generating
compound is then removed by evaporation or extraction with an organic
solvent and the particles are isolated. Id. at ¶ 29.
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Gruber describes toner particles that encapsulate a release agent,
preferably a silicone oil. Gruber, col. 1, ll. 8-11.
The Examiner cites Gruber as motivating a person of ordinary skill in
the art to stop carrying out the process described in Jin and to isolate the
particles with the pore generating compound still inside the pores. Ans. 4-5.
Since Jin describes the pore generating compound as an alkane or a mineral
oil, Jin ¶ 28, the Examiner reasons that this modified process would produce
particles identical to those produced by Appellants’ claimed process. Ans. 4-
5.
Appellants argue that the rejection is improper because the
Examiner’s proposed modification to Jin’s process is inconsistent with the
basic teaching of Jin, which is to remove the pore generating compound to
leave empty spheres. App. Br. 3. Appellants argue that such a large
modification defeats Jin’s basic purpose and is therefore improper. Id. at 3-4.
Appellants also argue that the particles that would be produced by the
Examiner’s proposed method differ from the particles produced by their
claimed method. App. 5-6. Appellants’ method produces particles having
multiple domains of oil dispersed throughout the particle, while there is no
indication that the residual pore generating compound in the Examiner’s
proposed method would occupy more than one domain. Id.
We agree with Appellants. Jin describes a significantly different
method for creating porous particles when compared to the Appellants’
claimed method. Jin’s method must be substantially modified to create a
possible prima facie case of obviousness. The work-up conditions must be
modified so that only the organic solvent is removed from the particles,
leaving the pore generating compound behind. This modification is contrary
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to Jin’s teaching that the pore generating compound is removed from the
particles.
Considering, as we must, Jin’s teachings as a whole, we find that
Gruber does not provide motivation or guidance to make the substantial
changes to Jin’s process suggested by the Examiner. We conclude that these
modifications, which represent differences between the prior art and the
claimed invention, are sufficiently substantial that the Examiner has not
demonstrated that the claimed invention would have been obvious. The
changes that would be required to create a prima facie case of obviousness
from the combination of Jin and Gruber would defeat the entire purpose of
the process described in Jin, which is to create porous, oil-free particles. See
In re Donovan, 509 F.2d 554, 562 (CCPA 1975) (“That [the prior art] might
incorporate elements which could be used in appellants’ system does not
render appellants’ claims obvious when there is no suggestion of using these
elements in substantially the same manner as appellants use them”); In re
Ratti, 270 F.2d 810, 813 (CCPA 1959) (“Once appellant had taught how this
could be done, the redesign[ed process] may, by hindsight, seem to be
obvious to one having ordinary skills in the . . . art.”).
Furthermore, the changes that must be made to the method described
in Jin are substantial and yet they do necessarily create a prima facie case of
obviousness. As Appellants note, the claims require that the particles
produced by the method have multiple liquid phase domains containing the
oil, while Jin’s method results in opened, hollow spheres, e.g., Jin ¶ 44. In
Gruber, the toner particles contain an encapsulated component with a
silicone oil therein. Col. 1, ll. 8-11. This suggests that the modified method
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would have a single liquid phase domain. Thus, the Examiner has not
established a prima facie case of obviousness.
Conclusion
For the reasons stated above, we cannot sustain the Examiner’s
rejections of claims 1-15 of the ’520 application.
REVERSED

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