Ex Parte Zwartz et al

Patent Trials and Appeals Board

Feb 19, 2019

15219816 - (D) (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/219,816 07/26/2016 Edward G. Zwartz
74934 7590 02/20/2019
MARYLOU J. LAVOIE, ESQ. LLC
I BANKS ROAD
SIMSBURY, CT 06070
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.
20081662US03 7094
EXAMINER
ZHANG, RACHELL
ART UNIT PAPER NUMBER
1724
MAIL DATE DELIVERY MODE
02/20/2019 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 PATENT TRIAL AND APPEAL BOARD
Exparte EDWARD G. ZWARTZ and GUERINO G. SACRIPANTE
Appeal2018-004145
Application 15/219 ,816
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1--4, 6, 8-15, and 17 under 35 U.S.C.
1 In explaining our Decision, we cite to the Decision in Appeal No. 2014-
001904 of June 22, 2016 in Application Serial No. 12/553,306 ("Prior
Decision"), Final Office Action of February 8, 2017 ("Final Act."), Appeal
Brief of August 2, 2017 ("Appeal Br."), Examiner's Answer of January 12,
2018 ("Ans."), and Reply Brief of March 10, 2018 ("Reply Br.").
2 Xerox Corporation is the applicant under 37 C.F.R. § 1.46 and is also
identified in the Appeal Brief as the real party in interest. Appeal Br. 1.
Appeal2018-004145
Application 15/219,816
§ I03(a) as obvious over Farrugia, 3 adding Rehm4 to reject claim 7 and
Nakamura to reject claim 16, 5 and the Examiner's new ground of rejection
presented in the Answer rejecting claims 1-17 on the ground of non-
statutory double-patenting as being unpatentable over claims 1-15 of
Zwartz. 6 We have jurisdiction under 35 U.S.C. § 6(b).
Because we sustain the rejection of claims 1-17 on the ground of non-
statutory double-patenting, we AFFIRM. However, in so doing we do not
sustain the rejection of claims 1--4 and 6-17 as obvious over Farrugia alone
or adding other references, and we enter a new ground of rejection to reject
claims 1-17 under 35 U.S.C. § 112 ,r 2.
The claims are directed to a process of making toner particles
including a shell over aggregated particles. The shells are made by
contacting the aggregated particles with unsaturated polymeric resin and
photoinitiator. Claim 1, with the language at issue highlighted, is
illustrative:
1. A process comprising:
contacting an emulsion comprising at least one polymeric
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;
3 Farrugia et al., US 2007/0003856 Al, published Jan. 4, 2007.
4 Rehm et al., US 2007/0272309 Al, published Nov. 29, 2007.
5 Nakamura et al., US 2004/0131962 Al, published July 8, 2004.
6 Zwartz et al., US 9,594,319 B2, issued Mar. 14, 2017.
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Appeal2018-004145
Application 15/219,816
contacting the aggregated particles with at least one
unsaturated polymeric resin in combination with a
photoinitiator to form a shell over the aggregated particles;
coalescing the aggregated particles to form toner particles
of a size of from about 3 microns to about 4 microns; and
recovering the toner particles.
Appeal Br. 13 ( claims appendix) ( emphasis added).
OPINION
Obviousness
In a related case, we affirmed the decision of the Examiner to reject a
claim similar to claim 1, reproduced above, as obvious over Farrugia. Prior
Decision 2 ( claim 1 ). However, the present appeal presents a different
question not reviewed in the prior appeal. The question arising in the
present appeal is: Has Appellant identified a reversible error in the
Examiner's finding that Farrugia teaches forming a shell over the aggregated
particles as required by the claims?
Appellant has identified such an error. Appeal Br. 6; Reply Br. 3--4.
The claims require a step of "contacting the aggregated particles with
at least one unsaturated polymeric resin in combination with a photoinitiator
to form a shell over the aggregated particles." Claims 1, 10 (emphasis
added).
The Examiner finds that Farrugia teaches that "[t]he toner may
comprise a cross-linked shell which is formed of an amorphous resin which
has a methyl ethyl ketone peroxide (PP 0058), which is the photoinitiator of
the instant claims." Final Act. 2.
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Application 15/219,816
Although the Examiner is correct that Farrugia teaches contacting
toner particles with a photoinitiator, the Examiner has not established that
Farrugia teaches contacting the aggregated particles with unsaturated
polymeric resin or that the contacting of the particles with the unsaturated
polymeric resin in combination with a photoinitiator forms a shell over the
aggregated particles. Paragraph 58 of Farrugia discloses a cross-linking
reaction involving the amorphous resin within the toner particles themselves
with photoinitiator (peroxy compound) and a peroxy promotor (metal salt
cobalt octoate ), in the presence of styrene. Farrugia ,r 58. The styrene reacts
with the unsaturated polymer resin chains of the toner particles. Id. The
Examiner does not address the absence of a step of contacting the
aggregated particles with an unsaturated polymeric resin. Ans. 8.
Moreover, Farrugia's shell is in the surface of the particles rather than
created over the particles.
Appellant has identified a reversible error in the Examiner's finding
that Farrugia teaches contacting the aggregated particles to form a shell over
the aggregated particles in the manner required by the claims. The
Examiner's application of Rehm and Nakamura to reject claims 7 and 16
does not cure the deficiency. Thus, we do not sustain the rejection of claims
1--4 and 6-17 under 35 U.S.C. § 103(a).
New Ground for Indefiniteness under 35 U.S.C. § 112 f 2
Although we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejections, we enter a new ground of rejection under 35 U.S.C. § 112 ,r 2
because there is an indefiniteness problem with present claims 1 and 10. We
alluded to this problem in our Prior Decision. Prior Decision 5. As we
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Application 15/219,816
stated in the Prior Decision, "the step of contacting [ with optional colorant
and an optional wax] appears to be optional given that the colorant and wax
are optional. If colorant and wax are not present, there is no contacting
step." Id. Because we sustained the Examiner's rejection of claim 1 in the
Prior Decision, we declined to enter a new ground of rejection under 35
U.S.C. § 112 ,r 2 at that time. However, because we are not sustaining the
Examiner's 35 U.S.C. § 103(a) rejections in the present appeal, we take this
opportunity to enter a new ground of rejection under 35 U.S.C. § 112 ,r 2.
We reject claims 1-17 under 35 U.S.C. § 112 ,r 2 as indefinite. Our reasons
follow.
Because the first contacting step is optional, there is no clear
antecedent basis for "the particles" as recited in the aggregating step. Stated
another way, it is unclear whether the first contacting step limits claims 1
and 10 in any aspect and, thus, the limits on the structure of "the particles"
of the aggregating step are unclear. For instance, it is not clear if "the
particles" of the aggregating step are limited to the size of from about 80
nanometers to about 120 nanometers recited in the optional contacting step.
This problem could be solved, for instance, by either deleting "with an
optional colorant, and an optional wax" or by separating the recitation into
two steps, a first step of forming an emulsion comprising at least one
polymeric resin comprising particles of a size of from about 80 to about 120
nanometers and a second step of contacting the emulsion with an optional
colorant and an optional wax. Either change would provide the necessary
antecedent basis for "the particles" of the aggregating step.
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Application 15/219,816
Non-Statutory Double-Patenting
The Examiner has also rejected claims 1-17 on the ground of non-
statutory double-patenting as being unpatentable over claims 1-15 of
Zwartz. Ans. 7-8.
Appellant contends that claims 1-15 of Zwartz do not recite
"coalescing the aggregated particles to form 3 to 4 micron size core-shell
toner particles," but instead recite "recovering the toner particles of a size of
from about 3 microns to about 4 microns." Reply Br. 7. Although this is
true, it does not address the Examiner's rejection. Namely, it does not
address the Examiner's finding that "[ s ]ince the toner formation process is
the same, one would expect the final toner particles to be the same size,
therefore coalescing and recovering particles from 3--4 microns would be
substantially similar to coalescing toner particles to a size of about 3--4
microns." Ans. 7-8.
Appellant has not identified a reversible error in the Examiner's
finding quoted above or the ultimate conclusion that the claims are not
patentably distinct. Thus, we sustain the rejection of claims 1-17 on the
grounds of non-statutory double-patenting.
CONCLUSION
In summary, we do not sustain the Examiner's rejections of claims 1-
4 and 6-17 under 35 U.S.C. § 103(a), but we enter a new ground of
rejection, rejecting claims 1-17 under 35 U.S.C. § 112 ,r 2. We sustain the
rejection of claims 1-17 on the ground of non-statutory double-patenting as
being unpatentable over claims 1-15 of Zwartz.
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Application 15/219,816
DECISION
The Examiner's decision is affirmed and a new ground of rejection
entered.
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 4I.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
AFFIRMED
37 C.F.R. § 4I.50(b)
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