Ex Parte Swei et al

Patent Trials and Appeals Board

Apr 19, 2019

13755078 - (D) (P.T.A.B. Apr. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/755,078 01/31/2013
22879 7590 04/23/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Jason Swei
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.
83140761 9421
EXAMINER
SASTRI, SATYA B
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
04/23/2019 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON SWEI, HAIGANG CHEN, and BOR-JIUNN NIU
Appeal2018-005579
Application 13/755,078
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection under 35 U.S.C. § 103(a) of claims 1, 3-8, 16, and 18 as
unpatentable over the combined prior art of Dannhauser (US 2013/0293647
Al, pub. Nov. 7, 2013) and Anderson (US 6,096,469, iss. Aug. 1, 2000).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellant is the Applicant, Hewlett-Packard Development Company, LP,
which is also stated to be the real party in interest (Appeal Br. 3). An earlier
appeal of this case, Appeal 2015-007047 mailed Feb. 13, 2017, affirmed the
Examiner's rejections based on Dannhauser of claims similar to those
currently on appeal.
Appeal2018-005579
Application 13/755,078
CLAIMED SUBJECT MATTER
Claims 1 and 18 are representative ( emphasis added to highlight
key disputed limitations):
1. A pre-treatment coating, comprising:
a solvent;
a matrix, including:
from 50 wt. % to 80 wt. % of a polyvalent metal
salt,and
from 5 wt. % to 20 wt. % of a latex having a Tg of
at least 35 °C and below 100 °C; and
wax particles at from 5 wt.% to 30 wt.%,
wherein weight percentages of the polyvalent metal salt,
the latex, and the wax particles are based on a total
amount of solids present in the pre-treatment coating
after removal of the solvent, and wherein the pre-
treatment coating is formulated so that at least a portion
of the wax particles have a particle size that is greater
than an average thickness of the matrix when applied to a
media substrate.
18. The pre-treatment coating of claim 1, wherein the
polyvalent metal salt is CaCb present in an amount from
70.75 wt.% to 78.13 wt.%, wherein the latex has a Tg of
35 °Candis present in an amount from 9.43 wt.% to
10.42 wt.%, and wherein the wax particles have a particle
diameter from 8 micrometers to 18 micrometers and are
present in an amount from 10.42 wt.% to 18.87 wt.%, by
dry weight.
OPINION
Upon consideration of the evidence in this appeal and each of
Appellant's contentions as set forth in the Appeal Brief filed Jan. 2, 2018,
and Reply Brief filed May 10, 2018, we determine that Appellant has not
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Application 13/755,078
demonstrated reversible error in the Examiner's rejection (e.g., Ans. 2-9
(mailed March 22, 2018)). In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir.
2011) (explaining the Board's long-held practice of requiring Appellant to
identify the alleged error in the Examiner's rejection). We sustain the
rejection for the reasons expressed by the Examiner in the Final Office
Action and the Answer. We add the following for emphasis.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264-
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant's main argument is that Dannhauser teaches away from the
Examiner's proposed combination with Anderson because Dannhauser
prefers a hydrophilic coating whereas Anderson prefers binders ( e.g.,
cationic latex polymers, polyacrylates, polyurethanes, etc.) that are water
insoluble or water resistant (Appeal Br. 14, 15). Appellant relies in part
upon a Declaration filed April 12, 2017 by the inventors to conclude that,
"based on Dannhauser, a person of ordinary skill in the art would not expect
the latex to have an effect on the durability of the images printed on the
coating" (Appeal Br. 18). Appellant also contends that the claims "provide
unexpected results" (Appeal Br. 14, 20). These arguments are not
persuasive for the reasons set out by the Examiner (Ans. 5-9; generally
Final Action).
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Application 13/755,078
Notably, Appellant does not sufficiently address the Examiner's
position that both Dannhauser (e.g., ,i 42) and Anderson exemplify the use
of latex materials that one of ordinary skill in the art, using no more than
ordinary creativity, would have been selected to meet the Tg (glass transition
temperature) recited in their pretreatment compositions, since Anderson
establishes that the Tg of the binder(s) is a known result-effective variable.
See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(holding that the prior art's disclosure of over 1200 possible combinations
rendered all possible formulations obvious).
While Appellant focuses on one preferred embodiment of Dannhauser
that includes a hydrophilic polymer binder (such as polyvinyl alcohol) ( e.g.,
,i,i 33, 43), the broader disclosure of Dannhauser includes other binders
alone or in combination with such hydrophilic binders ( e.g., ,i 43). Notably,
Appellant's claims also include the use of such hydrophilic binders (e.g.,
dependent claim 3 on appeal recites use of a polyvinyl alcohol as one of
many alternatives). Furthermore, Dannhauser's statement that it prefers
hydrophilic binders does not detract from its broader disclosure that other
binders may be used. An artisan of ordinary skill would have weighed the
advantages and disadvantages of how much to use of hydrophilic binders
and water resistant latex binders. "The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another." Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n. 8 (Fed. Cir. 2000).
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Application 13/755,078
The Examiner points out that Example 3 of Dannhauser contains
cationic styrene acrylic latex ( e.g., Ans. 7), and the Appellant responds that
Example 3 also has 22 parts of polyvinyl alcohol and other ingredients
(Appeal Br. 17). However, Appellant's claim 1 permits the use of such
other ingredients (indeed, as mentioned previously, dependent claim 3 on
appeal recites use ofup to 20 wt.% of a binder that may be polyvinyl
alcohol).
Moreover, as pointed out by the Examiner, Anderson teaches that
flexibility and scratch resistance of its ink receptor media (pretreatment
coating) are largely controlled by the Tg of the polymer binder (Ans. 3;
Anderson col. 9, 11. 36-54). "A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective." In
re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Accordingly, substantial evidence supports the Examiner's finding
that the glass transition temperature of the binder is a result-effective
variable. Moreover, it is well settled that it would have been obvious for an
artisan with ordinary skill to develop workable or even optimum ranges for
result-effective parameters. In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir.
1990); In re Boesch, 617 F.2d 272,276 (CCPA 1980); In re Aller, 220 F.2d
454, 456 (CCPA 1955).
Consequently, there is ample reason to combine the applied prior art
to use a latex material having the recited Tg since the modification appear to
be nothing more than a mere selection of known latex binder materials
recognized in the art and the Tg of such a polymeric binder latex is a known
result-effective variable which can be selected/optimized via selection of the
polymer material (generally Ans.). KSR Int'! Co., 550 U.S. at 421 ("A
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Application 13/755,078
person of ordinary skill is also a person of ordinary creativity, not an
automaton."); Ball Aerosol and Specialty Container, Inc. v. Limited Brands,
Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth
by the Supreme Court, the PTO must take account of the "inferences and
creative steps," as well as routine steps, that an ordinary artisan would
employ).
A preponderance of the evidence also supports the Examiner's
obviousness determination of dependent claim 18 (Ans. 3, 4, 9; Appeal Br.
20, 21).
Appellant further urges that the Specification data rebut any prima
facie case of obviousness that may have been established by evincing the
criticality of the claimed Tg (claim 1 and claim 18) (Appeal Br. 19-21).
Appellant's reliance on the examples in the Specification to evince
unexpected results from the use of a latex having a Tg as recited in claim 1
or dependent claim 18 (Appeal Br. 19, 20; Reply Br. 9, 10) are not
persuasive of error. The burden of showing unexpected results rests on the
person who asserts them by establishing that the difference between the
claimed invention and the closest prior art was an unexpected difference.
See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be
established by factual evidence, and attorney statements are insufficient to
establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71
(Fed. Cir. 1997). Further, a showing of unexpected results supported by
factual evidence must be reasonably commensurate in scope with the degree
of protection sought by the claims on appeal. In re Grasselli, 713 F .2d 731,
743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
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Application 13/755,078
Appellant has not met their burden of showing unexpected results for at least
the reasons set out by the Examiner (Ans. 8, 9). Notably, Appellant has not
explained how an apparently single example ( or best case, four examples) of
unspecified latex material(s) having a Tg of 35°C is commensurate in scope
with any of the claims on appeal, which are open-ended and permit up to at
least about 40 wt. % of unspecified ingredients ( claim 1, noting there is no
minimum amount of matrix required) or up to about 10 wt. % of unspecified
ingredients ( claim 18).
Moreover, we do not find Appellant's contention that there are
unexpected results supporting the patentability of claim 18 which recites a
limited Tg of 35°C for the latex component of the composition to be well-
founded. Critically ( as we stated in our previous decision in this application
on appeal), Appellant does not direct us to any statement in the Specification
attesting to the unexpected nature of the results from the use of a latex
having this property or to any persuasive evidence that the results obtained
would have been unexpected at the time of the invention. 2 Absent such,
Appellant cannot meet the burden. See, e.g., In re Geisler, 116 F.3d at 1471
("Geisler made no such assertion [ that results were unexpected] in his
application. Nor did Geisler submit any such statement through other
evidentiary submissions, such as an affidavit or declaration under Rule 132 .
. . . Instead, the only reference to unexpected results was a statement by
Geisler' s counsel ... that Geisler' s results were 'surprising."').
2 Indeed, Appellant's Specification focuses on the use of a specific relative
size of the wax particles in a pre-treatment coating ( e.g., Spec. ,-J 7), and
there is no dispute that Dannhauser discloses the claimed wax particle size to
matrix thickness relationship (Appeal Br., Reply Br. generally; e.g., Ans. 2).
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Appeal2018-005579
Application 13/755,078
After weighing all the evidence anew, we determine that a
preponderance of the evidence supports the Examiner's obviousness
determination of all the claims on appeal.
DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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