Ex Parte Tom et al

Patent Trial and Appeal Board

Aug 9, 2016

12922088 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/922,088 09/10/2010
22879 7590 08/11/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Howard S. Tom
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.
82242800 7727
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
08/11/2016 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):
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
Exparte HOWARDS. TOM, and SIVAPACKIA GANAPATHIAPPAN 1
Appeal2014-005494
Application 12/922,088
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
AVEL YN M. ROSS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision
to reject claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Hewlett-Packard
Development Company, LP. Appeal Br. 3.
2 In our opinion below, we reference the Specification filed September 10,
2010 (Spec.), Non-final Office Action mailed April 24, 2013 (Non-final),
Final Office Action mailed September 26, 2013 (Final), the Appeal Brief
filed January 10, 2014 (Appeal Br.), the Examiner's Answer mailed
February 4, 2014 (Ans.), and the Reply Brief filed March 21, 2014 (Reply
Br.).
Appeal2014~005494
Application 12/922,088
The claims are directed to a composition of latex polymer particles
dispersed in an aqueous-based liquid vehicle. The composition is
formulated to be ink-jetted onto a substrate. The composition is
substantially devoid of colorant. Claim 1 is illustrative:
1. An overcoating composition for improving dry rub
resistance and resistance to highlighter smear of a printed image
on a substrate, comprising an aqueous-based liquid vehicle and
about 0.5 wt.% to about 40 wt. % latex polymer particles
dispersed in the aqueous-based liquid vehicle, said latex
polymer particles including:
(a) about 80 wt.% to about 99.5 wt.% polymerized
hydrophobic monomers including butyl acrylate and monomers
selected from the group consisting of 4- methylstyrene,
cyclohexyl acrylate, isobomyl methacrylate, isobomyl acrylate,
and combinations thereof, and
(b) about 0.1 wt.% to about 20 wt.% polymerized acid
monomers,
wherein the overcoating composition is formulated to be
ink-jetted onto the substrate and is substantially devoid of
colorant.
Claims Appendix, Appeal Br. 18.
The Examiner maintains the rejections set forth in the Office Action
dated September 26, 2013 (Final). Ans. 2. Those rejections are:
A. The rejection of claim 4 under 35 U.S.C. § 112 ~ 4 for being in
improper dependent form;
B. The rejection of claims 2-7 under 35 U.S.C. § 112 ~ 2 as
indefinite; and
C. The rejection of claims 1-7 under 35 U.S.C. § 103(a) as obvious
over Ganapathiappan. 3
3 US 2006/0199877 Al, pub. Sep. 7, 2006.
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Application 12/922,088
Rejections A and B
OPINION
Appellants do not address the rejections the Examiner maintains under
35 U.S.C. § 112 ~~ 2 and 4. Because Appellants have not identified
reversible errors in those rejections, we summarily affirm them.
Rejection C
With respect to the rejection of claims 1-7 as obvious over
Ganapathiappan, Appellants argue claims 1-5 and 7 as a group. We select
claim 1 as representative for resolving the issues on appeal for that group.
Appellants argue claim 6 separately. Thus, we consider claim 6 separately.
Claim 1
The Examiner finds that Ganapathiappan discloses an aqueous
composition comprising latex polymer particles dispersed in an aqueous
liquid vehicle. Non-final~ 19.4 Ganapathiappan teaches forming the latex
particles by lightly crosslinking polymerizable, hydrophobic monomers with
acid bearing monomers. Ganapathiappan ~ 27. The hydrophobic monomers
may include butyl acrylate as well as hexyl acrylate and 4-methylstyrene.
The Examiner directs attention to Ganapathiappan's Example I to support a
finding that Ganapathiappan discloses a composition containing polymerized
hydrophobic monomers with polymerized acid monomers in concentrations
within the ranges of the claim. Id.
In Example I, Ganapathiappan discloses creating polymer particles
from a hydrophobic monomer and acid bearing monomer, filtering the
4 The Examiner incorporated by reference the rejection as set forth in
paragraph 19 of the Non-final Office Action. Final 5.
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Appeal2014~005494
Application 12/922,088
resulting latex, and diluting with water to obtain a composition with 4 wt%
latex polymer particles. Ganapathiappan ~ 37 (Example 1 ). Ganapathiappan
uses the composition in a shear test. Id. There is no dispute that the
Example I composition does not contain colorant. Colorant is not added
until the composition is "formulated into an aqueous ink-jet ink
formulation," as set forth in Example IV. Ganapathiappan ~ 42.
Ganapathiappan does not describe ink-jet printing the composition of
Example I, nor does the reference describe it as an "overcoat composition
for improving dry rub resistance and resistance to highlighter smear of a
printed image on a substrate" or that the composition is "formulated to be
ink-jetted."
Appellants contend that Ganapathiappan's Example I composition is
not an overcoat composition, not formulated for ink-jet printing, and does
not meet the requirement of providing excellent highlight smear
performance and dry rub resistance performance. Appeal Br. 13-15.
The question is whether the intermediate shear tested compositions
suggested by Ganapathiappan nonetheless meet the requirements of claim 1
as found by the Examiner. We determine that they do.
The question hinges on the proper interpretation of claim 1. Claim 1
is directed to a composition, i.e., a mixture of substances. See PIN/NIP, Inc.
v. Platte Chem. Co., 304 F.3d 1235, 1244 (Fed. Cir. 2002) ("The term
'composition' in chemistry is well-established. It generally refers to
mixtures of substances."). There is no dispute that Ganapathiappan suggests
forming an intermediate composition for shear testing containing the
substances (monomers) of the claim in the concentrations within the ranges
of the claim. The fact that the composition is an intermediate, rather than an
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Appeal2014~005494
Application 12/922,088
end-product ink-jet ink is of no matter. As a matter of chemistry, a
composition exists from the moment it is created. Exxon Chem. Pats., Inc.
v. Lubrizol Corp., 64 F.3d 1553, 1555-58 (Fed. Cir. 1995).
Because the claim is directed to a composition, all of the claim
limitations must be interpreted through the prism of how they further limit
the substances and their concentrations of the composition.
Considering the word "overcoating," Appellants use that term to
describe aqueous dispersion compositions containing the latex polymer with
the recited hydrophobic and acid monomers that is overcoated onto a printed
image. Spec. 4--5. But the intended use of the composition as a coating to
overcoat a printed image does not distinguish the composition from those
Ganapathiappan shear tests. Ganapathiappan' s suggested shear test
compositions also contain an aqueous dispersion of latex polymer containing
hydrophobic and acid bearing monomers. The mixture of monomers in the
composition is no different whether it is used as an overcoating or for some
other purpose such as for shear testing.
Likewise, the language in the preamble, "for improving dry rub
resistance and resistance to highlighter smear of a printed image on a
substrate," does not distinguish the composition from that of the prior art.
Again, this a purpose or intended use for the composition already recited in
the claim. Spec. 4:1-10, 5:3--4, 6:5-8. Where a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention, the preamble is not a
claim limitation. Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).
Turning to the recitation "formulated to be ink-jetted onto the
substrate," we also cannot say that this recitation confers a further limitation
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Appeal2014~005494
Application 12/922,088
on the claim. Appellants themselves describe aqueous dispersions of
polymer latexes similar to those of Ganapathiappan as formulated to be ink-
jetted. Appellants do not disclose that any other substances are necessary to
make the composition ink-jettable. That Ganapathiappan does not actually
ink-jet the shear testing composition is of no matter. The action of ink-
jetting is not a limitation on the claim, which is directed to a composition,
not a process.
The use of the latex dispersion as an ink-jetted overcoating
composition is merely a different intended use or function of the latex
dispersions taught and suggested by Ganapathiappan as shear test
intermediates. "It is elementary that the mere recitation of a newly
discovered function or property, inherently possessed by things in the prior
art, does not cause a claim drawn to those things to distinguish over the prior
art." In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For this reason, the
claimed "overcoating" is interpreted as encompassing compositions
containing the recited concentrations of monomers inherently capable of
performing the claimed function or intended use. See In re Ludtke, 441 F.2d
660, 663---64 ( CCP A 1971 ). Given the similarities of Ganapathiappan' s
latex dispersion to that of Appellants, it is reasonable to presume that
Ganapathiappan's composition is inherently capable of being ink-jetted.
A preponderance of the evidence supports the Examiner's conclusion
of obviousness.
Claim 6
Turning to claim 6, Appellants contend
claim 6 further limits the scope of the claims by reciting
"wherein when the overcoating composition is ink-jetted over a
printed image on a substrate and subjected to rub resistance
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Application 12/922,088
testing on HP Bright White paper and under 4 pounds weight
and 10 cycles shows no visible displacement of the underlying
printed image." Appellants note that such an element is a
functional limitation that further narrows the scope of the
claims and further reinforces the unexpected results presently
achieved. Notably, Example 8 specifically compares the present
overcoat compositions to unprotected images, with the present
overcoated images providing superior results.
Appeal Br. 15-16.
Example 8 compares the dry rub resistance of an image overcoated
with an ink-jetted overcoat composition prepared by dispersing 8 wt% of the
latex polymer particles of Example 1, Latex A, in a liquid vehicle containing
25 wt% organic cosolvent, 0.6 wt% surfactant, 0.15 wt% biocide. Spec.
11:12-12:2, Table 1, 13:12-17 (Example 5), 14:1-11(Example6), 14:25-33
(Example 8). Latex A contains 20 wt% isobomyl methacrylate, 74 wt%
butyl acrylate, and 6 wt% methacrylic acid. Example 8 states that
In the case of the image having no overcoat, the area of the
substrate subjected to the rub testing shows a general gray color
and distinctive streaks of colorant. In the image with the
overcoating, there is no visible spreading of the ink of the
image, leaving a crisp black image on white paper, as before
being subjected to rub testing.
Spec. 14:29-33. Examples 5 and 8 do not identify the composition of the
printed ink.
First, we disagree that the functional limitation of claim 6 further
limits the composition of claim 1. Appellants point to no disclosure in the
Specification which would indicate that the composition is somehow
different than that already recited in claim 1 based upon the method steps of
overcoating by ink-jetting and subjecting the overcoated product to rub
resistance testing.
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Application 12/922,088
Second, the evidence does not support a determination that the
composition is unexpected in the context of what is tested; at best it is the
method of ink-jetting the composition onto a printed substrate as an
overcoating that provides the increased rub resistance. Ganapathiappan
discloses that the latex polymer, when used in the ink formulation "can form
a hydrophobic print film on a media surface, entrapping and protecting the
colorant within the hydrophobic print film." Ganapathiappan ~ 3.
Third, it is not clear that the comparison is to the closest prior art,
which would be a comparison to the ink-jetted product of Ganapathiappan's
Example IV, which contains the latex polymer dispersion within the ink-jet
composition.
Fourth, we agree with the Examiner that Latex A is not commensurate
in scope with the breath of claim 6. Ans. 6.
A totality of the evidence supports the Examiner's conclusion of
obviousness.
CONCLUSION
We sustain the Examiner's rejections.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
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).
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Appeal2014~005494
Application 12/922,088
AFFIRMED
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