Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

Mar 2, 2022

2021003193 (P.T.A.B. Mar. 2, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 16/310,064 12/14/2018 Alireza RAHIMI 85055159 6250 22879 7590 03/02/2022 HP Inc. 3390 E. Harmony Road Mail Stop 35 Fort Collins, CO 80528-9544 EXAMINER SHAH, MANISH S ART UNIT PAPER NUMBER 2853 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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 jessica.pazdan@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 ALIREZA RAHIMI and GEORGE SARKISIAN Appeal 2021-003193 Application 16/310,064 Technology Center 2800 BEFORE BEVERLY A. FRANKLIN, RAE LYNN P. GUEST, and JEFFREY R. SNAY, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-15.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Hewlett-Packard Development Company, LP. Appeal Br. 3. 2 The Examiner does not address pending claims 16 and 17. Appeal 2021-003193 Application 16/310,064 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. An aqueous ink composition, comprising: from 2 wt% to 5 wt% pigment, from 70 wt% to 95 wt% water, from 1 wt% to 10 wt% binder, from 0.1 wt% to 3 wt% non-ionic surfactant, from 1 wt% to 15 wt% humectant solvent including a hydrophilic group, and from 0.3 wt% to 4.5 wt% non-volatile glycol ether co-solvent having a boiling point of 220°C or greater. Appeal Br. 25 (Claims Appendix). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Sullivan US 2002/0071701 A1 June 13, 2002 Aida US 2004/0068030 A1 Apr. 8, 2004 Everhardus US 2014/0364548 A1 Dec. 11, 2014 Fujii US 2015/0077480 A1 Mar. 19, 2015 REJECTIONS 1. Claims 1-9 are rejected under 35 U.S.C. § 103 as being unpatentable over Everhardus in view of Fujii and Aida. 2. Claims 10-12 are rejected under 35 U.S.C. § 103 as being unpatentable over Everhardus in view of Fujii and Sullivan. Appeal 2021-003193 Application 16/310,064 3 3. Claims 13-15 are rejected under 35 U.S.C. § 103 as being unpatentable over Everhardus in view of Fujii. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s rejections on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis. Rejections 1-3 We refer to the Examiner’s statement of Rejection 1 as set forth on pages 2-6 of the Final Office Action. Therein, the Examiner’s position is that Everhardus teaches certain claim elements as discussed on pages 2-4 of the Final Office Action. The Examiner finds that Everhardus teaches the claimed element of a non-volatile glycol ether co-solvent in ¶ 212 of Everhardus. The Examiner recognizes that the claimed boiling point of 220°C or greater, of the co-solvent as claimed in claim 1, is not taught by Everhardus. Final Act. 4. The Examiner relies upon Fujii for teaching this missing element of Appellant’s claim 1, and states that it would have been Appeal 2021-003193 Application 16/310,064 4 obvious to have modified the ink composition of Everhardus by employing the non-volatile glycol ether co-solvent having a boiling point of 220°C or greater according to Fujii “in order to have the ink composition with uniform discharge property, and curl free printed image.” Final Act. 5. Appellant’s position is set forth on pages 15-21 of the Appeal Brief. Therein, Appellant argues, inter alia, that the Examiner misinterprets the teachings of Fujii in this regard, and argues that Fujii does not relate discharge reliability or prevention of curling to moisturizers.3 Appeal Br. 18. Appellant more specifically addresses this point in the Reply Brief. Therein, Appellant states that ¶ 33 of Fujii specifically requires a combination of 3-methoxy-1-butanol and one of six other specific moisturizers (which does not include a non-volatile glycol ether co-solvent), to achieve good intermittent dischargeability. Reply Br. 6. Paragraph 33 of Fujii is reproduced below: [0033] An ink including not only 3-methoxy-1-butanol but also at least one of 1,3-butane diol, 3-methyl-1,3-butane diol, 1,2-butane diol, 1,2-pentane diol, 2,3- butane diol, 3-methyl-3-hydroxymethyl oxetane has good intermittent dischargeability. We agree with Appellant’s understanding of Fujii in this regard as it pertains to good intermittent dischargeability. We add that Fujii teaches to use a non-volatile glycol ether co-solvent having a boiling point of 220°C or greater as a moisturizer (Fujii, ¶37), and Fujii teaches the amount of moisturizer used is from 35 to 60% by weight in terms of discharge reliability and prevention of curling (Fujii, ¶29). This amount is not the 3 In Fujii, the non-volatile glycol ether co-solvent is used as moisturizer as pointed out by Appellant on pages 15-16 of the Appeal Brief. Appeal 2021-003193 Application 16/310,064 5 amount of from 0.3 wt% to 4.5 wt% of non-volatile glycol ether co-solvent recited in Appellant’s claim 1. The Examiner relies upon the amount taught in Everhardus (that amount being from 1-3 wt % as converted by the Examiner on page 4 of the Final Office Action from the teachings in ¶ 212 of Everhardus), in an effort to reach the amount claimed in Appellant’s claim 1. However, in the instant case, one cannot have it both ways (make the proposed combination “in order to have the ink composition with uniform discharge property, and curl free printed image” (Final Act. 5), which is achieved by the amounts taught by Fujji (from 35 to 60% by weight (discussed, supra)), by relying upon the amounts taught by Everhardus4). In view of the above, we reverse Rejection 1. We reverse Rejections 2-3 for the same reasons (the Examiner does not rely upon the additionally applied references in these rejections to cure the stated deficiencies found in Rejection 1). CONCLUSION We reverse the Examiner’s decision. 4 Paragraph 212 of Everhardus teaches that the glycol ether compound is used as a penetrant in the ink composition of Everdardus. Appeal 2021-003193 Application 16/310,064 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-9 103 Everhardus, Fujii, Aida 1-9 10-12 103 Everhardus, Fujii, Sullivan 10-12 13-15 103 Everhardus, Fujii 13-15 Overall Outcome 1-15 REVERSED