Ex Parte Zhou et alDownload PDFPatent Trial and Appeal BoardMay 26, 201611698518 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111698,518 01125/2007 22879 7590 05/31/2016 HP Inc, 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Zhang-Lin Zhou 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. 82220468 5727 EXAMINER FINK, BRIEANN R ART UNIT PAPER NUMBER 1768 NOTIFICATION DATE DELIVERY MODE 05/3112016 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 ZHANG-LIN ZHOU and SIVAPACKIA GANAPATHIAPPAN Appeal2014-006180 Application 11/698,518 1 Technology Center 1700 Before TERRY J. OWENS, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, 3, 5-15, 17, and 19. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants' invention is directed to a method of making latex particulates, a method of making ink-jet ink compositions, a method of preparing a coating composition, and a latex ink-jet ink composition 1 This application was subject to a previous appeal 2011-004332 in which the Board affirmed the Examiner. Appeal2014-006180 Application 11/698,518 comprising the latex particulates including anti-oxidant moieties incorporated therein (Spec. 4:24-25; Claims 1, 10, 12, 14). The particulates are said to improve ink light fastness compared to standard latex particulates, or can provide other benefits in other applications (Spec. 4:25- 27). Claim 1 is illustrative: 1. A method of preparing anti-oxidant-modified latex particulates in a fluid suspension, comprising: generating an aqueous emulsion with a hydrophilic continuous phase and a hydrophobic discontinuous phase, wherein the hydrophobic discontinuous phase includes multiple types of monomers for polymerization, at least one of the monomers being modified by an anti- oxidant moiety that is unprotected and includes the following structure: and 2 Appeal2014-006180 Application 11/698,518 polymerizing the monomers in the hydrophobic discontinuous phase using a biocatalytic polymerization process. Appellants appeal the following rejection: Claims 1, 3, 5-15, 17, and 19 are rejected under 35 U.S.C. § 103(a) as obvious over Zhou (US 2005/0027065 Al pub. Feb. 3, 2005) in view of Vincent (US 2004/0116596 Al pub. Jun. 17, 2004), Ciba (US 1,283,103 pub. Jul. 26, 1972) or JP '683 (JP 01097683 A as translated in the machine translation of JP2613770 B22 of record), Kaplan (WO 2004/050795 A2 pub. Jun. 17, 2004) and Kalra (Bhanu Kalra and R. A. Gross, "HRP-mediated polymerizations of acrylamide and sodium acrylate", Green Chemistry, 2002, 4, 174-178). Appellants' arguments focus on the subject matter common to claims 1, 10, 12, and 14 (App. Br. 13-16, 12, 19). We select claim 1 as representative. Appellants argue separately the subject matter of claim 11 (App. Br. 17). Accordingly, claims 3, 5-10, 12-15, 17, and 19 will stand or fall with our analysis of the rejection of claim 1. FINDINGS OF FACT AND ANALYSES The Examiner's findings and conclusions regarding Zhou, Vincent, Ciba, JP '683, Kaplan and Kalra are located on pages 2-7 of the Answer. Appellants do not specifically challenge the Examiner's combination of Kalra's and Kaplan's teachings with Zhou with regard to claim 1 (App. Br. 2 JP 2613770B2 is listed as part of the patent family of JP 01097683. See, CAPLUS document of record. 3 Appeal2014-006180 Application 11/698,518 13-16). Accordingly, we focus on the teachings of Zhou, Vincent, Ciba and JP '683 as argued by Appellants. Appellants argue that Zhou and Vincent fail to teach the particular monomer structures recited in claim 1 or the relationship of the present monomers to improving light-fastness (App. Br. 15). Appellants contend that Vincent's disclosures regarding NH, SH and OH functionalities do not equate to a teaching that any compound having these functionalities acts as a stabilizing agent (App. Br. 15). Appellants contend that in light of the Examiner's over-generalization of Vincent's teachings, there would have been no motivation to combine the particulates of Vincent and Zhou with the compounds of Ciba and JP '683 (Reply Br. 6). Appellants contend that Ciba's anti-oxidant monomer is not a homolog of a claimed monomer because the methylene (CH2) group adjacent R2 in the formula shown below and reproduced from page 3 of the Answer is not part of a monomer recited in claim 1 : CH2 =-" C(CH3)-COO(CH0i0COCH~-Ri n~w'.bl~11l ;· . ' ............ '{ -·<(1'\j..-Otl 'i..~ ~"' {lm"~t )-:i:ikjI (Reply Br. 7; Ans. 3). Appellants further argue that Ciba does not teach a homolog of a monomer recited in claim 1 because Ciba's phenol ring includes two lower-alkyl groups which are not required by the monomers recited in claim 1 (Reply Br. 7). Appellants concede that upon proper selections the developer formula recited in JP '683 includes monomers falling within the monomers 4 Appeal2014-006180 Application 11/698,518 recited in claim 1 (Reply Br. 7-8). Appellants contend, however, that the generic disclosure of JP '683 that includes many compounds would not have rendered obvious the selection of the number "n" of -OH groups or the placement of the OH group on the benzene ring, the specific lower alkyl group from R2 and the methyl group for RI (Reply Br. 8). Contrary to Appellants' arguments, the Examiner finds that Zhou teaches using a -NH, -OH or -SH functionalities on a monomer, but is silent as to the desirable effects of using such monomers (Ans. 2-3). The Examiner finds that Vincent teaches that monomers having -NH, -OH, -SH, or -CH functionalities provide a stabilizing effect on the resulting latex particles so as to improve image durability such as light-fastness (Ans. 10). Indeed, Vincent discloses that especially phenols, thiophenols and hindered amines are each isocyanate blocking agents and potent stabilizing agents (Vincent i-f 42). Vincent teaches that the para substituted phenols provide better stabilization and color-fastness because the para position provides a greater electron withdrawing capability (Vincent, i-f 42). In other words, Vincent teaches the -NH, -SH, -OH or -CH monomers provide a stabilizing effect and enhance light-fastness of a resulting ink-jet ink composition. Such a teaching would have suggested the following: 1) Zhou's monomers themselves possess such a desirable property as they contain the same or similar functional groups and 2) the ordinarily skilled artisan would have used Vincent's monomers to provide better light-fastness to the ink-jet ink. Ciba was cited by the Examiner to teach that it is known to use anti- oxidants for in polymers that are homo logs of the monomers recited in claim 1 (Ans. 3-4). The Examiner finds that JP '683 teaches a formula that when the various parameters and variables are selected to have desired values 5 Appeal2014-006180 Application 11/698,518 yields a developer compound that imparts improved storage stability and moisture resistance to the resulting printed image (Ans. 4). The Examiner concludes that it would have been obvious to use Ciba's or JP '683's anti- oxidant as the monomer in Zhou because such monomers are disclosed as providing better water durability and improved color fastness (Ans. 3-4). Although Appellants dispute whether Ciba's anti-oxidant is a homo log of the monomer recited in claim 1, there is no dispute that JP '683 teaches a monomer falling within the list of monomers recited in claim 1 (Reply Br. 7-8). We are unpersuaded by Appellants' argument that JP '683 's generic formula fails to direct one of ordinary skill to a monomer recited in claim 1. As noted by Appellants, the ordinarily skilled artisan needs only to select values for the various parameters within the ranges disclosed by JP '683, which include the values recited in the claim to arrive at one of the monomers (i.e., the fourth monomer on the right-hand side in Appellants' claim 1 ). Even if JP '683 's formula yields a large number of possible monomers, that mere fact that there are a large number of effective monomers with anti-oxidant moieties does not render the use of any one less obvious. Merck & Co., Inc. v. Biocraft Laboratories, Inc., 87 4 F .2d 804, 807 (Fed. Cir. 1989). Though the Examiner relies on the formula indicated on page 3 of this decision and disclosed by Ciba on page 6, we note that Ciba discloses on page 4 a general monomer structure CH2=C(R1)-COX-A-R. Ciba discloses that X can be oxygen (0), Ri can be methyl (CH3), and Risa phenol moiety with the-OH group in the para position, one lower alkyl group (e.g., CH3) in the meta position and a second lower alkyl group (e.g., CH3) in any ring position (Ciba 4-5). Ciba discloses that A can be ---(CmH2mX)aCO-CnH2n- 6 Appeal2014-006180 Application 11/698,518 where n is 0 to 6, m is 1 to 6 and o is 1 to 3. Therefore, if m is 1, n is 0, o is 1, and Xis oxygen then A in the formula is CH20CO. The resulting monomer structure then yields CH2=CCH3-CQO-CH20CO-phenol moiety with a meta-position methyl group and a second methyl group. In other words, the only difference between Ciba's anti-oxidant monomer and the monomer of claim 1 is two additional methyl groups on the phenol ring structure. The Examiner finds that Ciba's monomer with the two additional methyl groups on the phenol ring would have been expected to have similar anti-oxidant properties of a monomer where the methyl groups were instead hydrogen (Final Act. 4; Ans. 4). Although Appellants contend that Ciba's anti-oxidant monomer is not a homolog, Appellants do not dispute specifically the Examiner's finding that Ciba's anti-oxidant having two methyl groups on the phenol ring has similar antioxidant properties to the monomers recited in claim 1. Accordingly, in light of the combined teachings of Zhou, Vincent, Ciba, JP '683, Kalra and Kaplan the preponderance of the evidence favors the Examiner's conclusion that it would have been obvious to combine JP '683 's or Ciba's anti-oxidant stabilizer as anti-oxidant stabilizer in Zhou ink- jet ink composition in order to enhance the water resistance and light- fastness of the composition. Claim 11 Appellants rely on the same unpersuasive arguments made regarding claim 1. We refer to our response to those arguments above. 7 Appeal2014-006180 Application 11/698,518 Appellants argue that the Examiner has not shown that Kaplan and Kalra teach using the hydrophilic continuous phase of such a process to prepare ink-jet ink (App. Br. 17). Appellants' argument fails to address and show reversible error with the Examiner's specific rejection of claim 11 which is based upon the Zhou teaching to form a colloid suspension of latex particles which is then admixed with a liquid vehicle and a colorant to form an ink-jettable ink composition (Final Act. 8; Ans. 8). On this record, we affirm the Examiner's§ 103 rejection of claim 1, 3, 5-15, 17, and 19 over Zhou in view of Vincent, Ciba, JP '683, Kalra and Kaplan. DECISION The Examiner's decision is affirmed. 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). ORDER AFFIRMED 8 Copy with citationCopy as parenthetical citation