Ex Parte Zwartz et al

Patent Trial and Appeal Board

Jun 20, 2016

12553306 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/553,306 0910312009 Edward Graham Zwartz
97903 7590 06/22/2016
MDIPLLC
PO Box 2630
Montgomery Village, MD 20886
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.
20081662-US-NP 6301
EXAMINER
ZHANG, RACHELL
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
mail@mdip.biz
dhn@mdip.biz
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte EDWARD GRAHAM ZWARTZ and
GUERINO G. SACRIP ANTE 1
Appeal2014-001904
Application 12/553,306
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1, and 3-17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART. 2
1 Appellants identify the real party in interest as Xerox Corporation. Appeal
Br. 2.
2 In our opinion below, we refer to the Specification filed Sept. 3, 2009
(Spec.), Final Office Action mailed October 16, 2012 (Final), the Appeal
Brief filed May 15, 2013 (Appeal Br.), the Examiner's Answer mailed
Appeal2014-001904
Application 12/553,306
The claims are directed to an emulsion aggregation and coalescence
process for making toner particles (see, e.g., claims 1 and 8), and a process
of non-contact fusing the toner particles to a substrate to form an image on
the substrate (see, e.g., claim 10). Claim 1 is illustrative of the toner making
process:
1. A process comprising:
contacting an emulsion comprising at least one polyester
resin comprising particles of a size of from about 80
nanometers to about 120 nanometers with an optional colorant,
and an optional wax;
aggregating the particles by contacting the particles with
from about 0.01 to about 0.35 parts per hundred of an
aggregating agent to form aggregated particles;
contacting the aggregated particles with at least one
unsaturated polyester resin in combination with a photoinitiator
to form a shell over the aggregated particles;
coalescing the aggregated particles to form toner
particles; and
recovering the toner particles of a size of from about 3
microns to about 4 microns,
wherein the emulsion comprising at least one polyester
resin has a solids content of from about 15 to about 50% solids
in water.
Claims Appendix, Appeal Br. 20.
The Examiner maintains the following rejections:
September 24, 2013 (Ans.), and the Reply Brief filed November 25, 2013
(Reply Br.).
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Application 12/553,306
A. The rejection of claims 1, 3-6, 8-15, and 17 under 35 U.S.C.
§ 103(a) as obvious over Farrugia; 3
B. The rejection of claim 7 under 35 U.S.C. § 103(a) as obvious over
Farrugia in view of Rehm; 4 and
C. The rejection of claim 16 under 35 U.S.C. § 103(a) as obvious over
Farrugia in view of Nakamura. 5
OPINION
Rejection A
We first tum our attention to the rejection of claims 1, 3-6, 8-15, and
17 as obvious over Farrugia. Appellants argue the claims as a group and
then argue the rejection of claim 5 separately. Appeal Br. 7-12. We select
claim 1 as representative to decide the issues for the claims as a group, and
consider the issues raised for claim 5 separately.
Claim 1
Claim l requires "contacting an emulsion compnsmg at least one
polyester resin comprising particles of a size of from about 80 nanometers to
about 120 nanometers with an optional colorant, and an optional wax"
(emphasis added).
The issue on appeal is: Have Appellants identified a reversible error
in the Examiner's finding that Farrugia would have led the ordinary artisan
3 Farrugia et al., US 2007/0003856 Al, published Jan. 4, 2007 ("Farrugia").
4 Rehm et al., US 2007/0272309 Al, published Nov. 29, 2007 ("Rehm").
5 Nakamura et al., US 2004/0131962 Al, published July 8, 2004
("Nakamura").
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Application 12/553,306
to form polyester resin emulsion particles of a size within the claimed
range? 6
Appellants have not identified such an error.
Farrugia teaches a method of forming toner particles from a
combination of amorphous and crystalline polyester resins such as
sulfonated-polyesters. Farrugia i-fi-121-23, 30. The toner particles may be
"prepared by well-known aggregation and coalescence processes in which
small-size resin particles are aggregated to the appropriate toner particle size
and then coalesced to achieve the final toner-particle shape and
morphology." Farrugia i141. Farrugia does not disclose the size of the
"small-size resin particles" that are to be aggregated to the appropriate toner
particle size.
In the Background section, Farrugia describes a process disclosed in
U.S. Patent 5,593,807 that, according to Farrugia, prepares toner
compositions by forming an emulsion latex of sodio-sulfonated polyester
resin particles of from about 5 to about 500 nm diameter before adding a
pigment dispersion, and aggregating and coalescing the particles to form
toner particles of from about 4 to about 9 microns in volume average
diameter. Farrugia i-f 11. The toner particle size of about 4 to about 9
microns in volume average diameter is within the toner particle size Farrugia
discloses for the inventive process (average particle size of about 1 to about
15 microns). Farrugia i1 50.
Although, as argued by Appellants, Farrugia's paragraph 11 is not a
discussion of the process of making Farrugia's toner, paragraph 11 provides
6 We will not consider the new arguments Appellants introduce in the Reply
Brief (Reply Br. 5-6) as good cause has not been shown. 3 7 C.F .R. § 41.41
(2013).
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Appeal2014-001904
Application 12/553,306
some evidence of an emulsion particle size those of ordinary skill in the art
would have sought to achieve in the process of forming Farrugia's emulsion
so that upon aggregation and coalescence a toner particle size of from about
4 to about 9 microns would be achieved. Both the starting materials and
process steps are similar and both seek to form toner particles in similar size
ranges. The evidence tends to support a finding that when the ordinary
artisan performed the routine experimentation required to determine the
emulsion particle size that would result in the desired toner particle size, the
ordinary artisan would have arrived at an emulsion particle size within the
claimed range.
Appellants have not identified a reversible error in the Examiner's
finding that Farrugia suggests forming particles in the size range of the
claim.
We further note that the step of contacting appears to be optional
given that the colorant and wax are optional. If colorant and wax are not
present, there is no contacting step. Thus, even if Farrugia did not lead one
of ordinary skill in the art to select emulsion particles within the size range
of the claim, the requirements of the claim would be met as the contacting
step is not required.
Claim 5
Claim 5 reads:
5. The process according to claim 1, wherein the at least
one polyester resin comprises an amorphous polyester resin of
the formula:
5
Appeal2014-001904
Application 12/553,306
~ ~ -
~010VU01°rl 1
wherein m is from about 5 to about 1000, in combination
with a crystalline polyester resin of the formula:
wherein b is from about 5 to about 2000 and d is from
about 5 to about 2000.
Claims Appendix, Appeal Br. 22.
The Examiner finds that Farrugia teaches a structurally similar
polyester resin, and determines that a prima facie case of obviousness exists
based on the close structural similarities and similar utilities of the Farrugia
polyester resin to the polyester resin of claim 5. Final 3--4. According to the
Examiner, Farrugia teaches an amorphous structure in paragraph 76 and, a
polycondensation product in paragraphs 3 8 and 39 similar to the structures
of the claim. Id.
The structure of Farrugia's paragraph 76 is:
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Application 12/553,306
As pointed out by Appellants, the structure at paragraph 7 6 is not the
same as the amorphous structure recited in claim 5. Farrugia's structure
includes additional methyl groups and is sodium sulfonated.
Moreover, Farrugia's crystalline polyester resin is also different than
that of claim 5. As acknowledged by the Examiner, mesaconic acid, the
diacid the Examiner relies upon, differs from the fumaric acid Appellants
use to form the formula II structure of claim 5. Mesaconic contains an extra
methyl group. The structures are:
(~~ ,,
!·K\,8[_.-""'·'\.'<-;.-"'"'.L.,OH
6 .
Fumaric acid
("\
HO,'-::··"·)\""->,...J'OH
Mesaconic acid
But that is not the only difference. Appellants' formula II compound
is not just the polycondensation product of fumaric acid and dodecanediol,
the formula II compound is also composed of ethylene glycol units. Spec.
i-f 29. In contrast, the polycondensation product disclosed by Farrugia
including the diol (dodecanediol) and diacid (mesaconic acid) of paragraphs
38 and 39, is the product of a reaction of the diol with the diacid, at least one
of which is sulfonated, or with at least one other difunctional sulfonated
monomer. Farrugia i-f 36.
The Examiner does not account for the ethylene glycol moiety
difference in the crystalline resin.
With regard to the sulfonate group difference, the Examiner
determines that the use of "comprises" in claim 5 opens the claim to the
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Appeal2014-001904
Application 12/553,306
additional sulfonate groups. This is not the case. The claim reads: "the at
least one polyester resin comprises an amorphous polyester resin of [formula
I] ... in combination with a crystalline polyester resin of [formula II]."
Claim 5 (emphasis added). Although "comprises" opens the "at least one
polyester resin" to other components, it does not open the amorphous
polyester resin and crystalline resin to anything other than the structures of
the two formulas. The claim requires an amorphous polyester resin "of'
formula I. Likewise the crystalline polyester resin is "of' formula II. The at
least one polyester resin can include other resins and other additives, but it
must have an amorphous polyester of formula I and a crystalline polyester of
formula II. Formulas I and II are not open to containing either ethylene
glycol moieties or sulfonate moieties.
Appellants have identified a reversible error in the Examiner's
rejection of claim 5. Thus, we do not sustain the rejection of claim 5.
Rejection B
To reject claim 7, the Examiner's adds Rehm.
Claim 7 depends from claim 1. Claim 1 requires a step of "contacting
the aggregated particles with at least one unsaturated polyester resin in
combination with a photoinitiator to form a shell over the aggregated
particles." Claim 1 (emphasis added). Claim 7 further limits the
photoinitiator to one selected from a group. Amongst the recited group of
photoinitiators is 2,4,6-trimethylbenzophenone.
In rejecting claim 1, the Examiner finds that Farrugia teaches forming
a cross-linked shell from an amorphous resin using methyl ethyl ketone
peroxide, a photoinitiator. Final 2. Appellants do not dispute this finding.
Appeal Br. 7-9; Reply Br. 4---6. In rejecting claim 7, the Examiner finds
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Rehm discloses 2,4,6-trimethylbenzophenone as a polymerization initiator.
Final 4. Appellants do not dispute that 2,4,6-trimethylbenzophenone was a
known polymerization initiator. Appeal Br. 13-15; Reply Br 7-10. Instead,
Appellants contend that Rehm is from a non-analogous art because Rehm is
directed to microfluidic devices. Appeal Br. 13-15.
Although Rehm's overall invention is directed to forming microfluidic
devices, Rehm has a more specific teaching concerning a composite polymer
Rehm uses to form a regulator within the device. Rehm i-f 39. Rehm
discloses forming this composite polymer by combining a polymerizing
element (e.g., a polymerization catalyst) with a polymerizable precursor and
particulate filler. Rehm i-fi-139, 62. According to Rehm, "[t ]he polymerizing
element can include any of various common polymerization initiators."
Rehm i-f 62. Rehm lists aromatic ketones such as benzophenone, and Sarcure
SRl 135, which contains 2,4,6-trimetylbenzophenone, in the list of common
polymerization initiators. Id.
Rehm provides evidence that 2,4,6-trimethylbenzophenone was a
known polymerization initiator and Appellants provide no persuasive
evidence that those of ordinary skill in the art of polymerization would not
understand it to be so. Rather, Appellants direct our attention to the non-
analogous art test laid out in In re Clay:
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.
In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992); see also In re Wood, 599
F.2d 1032, 1036 (CCPA 1979).
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Although the non-analogous art test provides helpful insight on the
underlying question of what is "prior art" within the meaning of the statute,
we should not be blind to the reality of the circumstances of the case before
us. Wood, 599 F.2d at 1036. Nor should we adhere to rigid and mandatory
formulas that overly limit the inquiry. KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007). Farrugia seeks to initiate polymerization. When
seeking to polymerize, the ordinary artisan would seek out known
polymerization initiators. Here, there is evidence that one of the compounds
of claim 7 was known to initiate polymerization. "The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR, 550 U.S. at 416.
Appellants have not identified a reversible error in the Examiner's findings
regarding the initiator or the suggestion for using that initiator as the initiator
of Farrugia.
Rejection C
The Examiner rejects claim 16 as obvious over Farrugia in view of
Nakamura.
Claim 16 depends from claim 10. Claim 10 is a process with toner-
forming steps similar to claim 1, but with additional steps directed to non-
contact fusing the toner particles onto a substrate to form an image on the
substrate. Claim 16 further requires the non-contact fusing occur "by
exposing the toner particles to infrared light at a wavelength of from about
750 nm to about 2500 nm for a period of time of from about 30 milliseconds
to about 3 seconds."
In rejecting claim 16, the Examiner acknowledges that Farrugia fails
to teach the fusing method of the claim. Final 5. But the Examiner finds
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that Nakamura discloses a method of non-contact heat fixing using infrared
rays of wavelength 810-840 nm that prevents smearing of the toner image.
Id. The Examiner concludes that "[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to use the toner of
Farrugia in any known fixing method, such as the non-contact fixing of
Nakamura." Id.
Appellants contend that "[ o ]ne of ordinary skill in the art would not be
[sic, not have been] led to believe that the Nakamura et al. flash fixing
system would be suitable for use with a toner as disclosed in Farrugia et al."
because Nakamura "teaches a combination of a toner containing IR
absorbers and a flash fixing system intended for use in combination with the
toner containing those absorbers." Appeal Br. 17.
Appellants have not identified a reversible error in the Examiner's
finding of a suggestion to make the combination. "A person of ordinary
skill is also a person of ordinary creativity, not an automaton." KSR, 550
U.S. at 421. Appellants provide no convincing reason why the ordinary
artisan would not simply add the IR absorbers suggested by Nakamura to the
toner of Farrugia so that the flash fixing system could be used. As pointed
out by the Examiner, Farrugia itself suggests adding phthalocyanine or
anthraquinone dyes to Farrugia's toner albeit as colorants. Ans. 9; Farrugia
i-fi-161---62. These dyes are the same type of dyes Nakamura teaches as IR
absorbing agents. Thus, the evidence indicates that the dyes were known
components in Farrugia's toner. Nakamura provides evidence that toner
including those dyes can be fused by non-contact fusing by exposing the
toner particles to infrared light as required by claim 16.
Appellants have not identified a reversible error in the Examiner's
rejection of claim 16.
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DECISION
We sustain the rejection of claims 1, 3, 4, 6, 8-15, and 17 as obvious
over Farrugia, the rejection of claim 7 over Farrugia in view of Rehm, and
the rejection of claim 16 over Farrugia in view of Nakamura. We do not
sustain the rejection of claim 5 over Farrugia. The decision of the Examiner
is affirmed-in-part.
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 )(iv).
AFFIRMED-IN-PART
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