SUN CHEMICAL CORPORATION

Patent Trials and Appeals Board

Sep 8, 2021

2020005521 (P.T.A.B. Sep. 8, 2021)

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.
14/771,414 08/28/2015 Paul A. Merchak 66847-9392 (C-936 US) 4595
96610 7590 09/08/2021
Ostrolenk Faber LLP
845 THIRD AVENUE
8TH FLOOR
New York, NY 10022
EXAMINER
REDDY, SATHAVARAM I
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
09/08/2021 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL A. MERCHAK
____________

Appeal 2020-005521
Application 14/771,414
Technology Center 1700
____________

Before DONNA M. PRAISS, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134, Appellant1 appeals from a final rejection
of claims 1, 3, 4, 6–8, 10–18, 21, and 22. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Sun Chemical Corporation as the real
party in interest. Appeal Br. 1.
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The invention relates to a 6-Color Set of chromatic primary colors
having a bordeaux color and/or a yellow shade orange color that provides an
improved, more evenly spaced extended color gamut process ink set than
other color sets. Spec. ¶¶ 2, 58. Claim 1, reproduced below, illustrates
Appellant’s invention:
1. A 6-Color Set of chromatic primary colors
comprising:

( a) a bordeaux color having a midpoint wavelength
(MPW) between 610 and 625 nm;

(b) optionally a yellow shade orange color having a
MPW between 545 and 560 nm; and

(c) a number of other colors in order to have a total of 6
colors in the set;

wherein a magenta color having a MPW between 600
and 606 nm is not one of the chromatic primary colors and the
6-Color Set is suited for subtractive color combinations; and

wherein the 6-color set comprises 4 colors with
predominantly “S” curve spectral response features with
relatively even separation between the midpoint wavelengths,
wherein the ∆ MPW(Max-Min), the difference between the
largest separation for two adjacent colors midpoint wavelengths
and the smallest separation for two adjacent colors midpoint
wavelengths, is less than 35.

Independent claim 17 recites a method of using the 6-Color Set of
chromatic primary colors of claim 1.
Appellant requests review of the Examiner’s rejection of claims 1, 3,
4, 6–8, 10–18, 21, and 22 under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Jackson (US 7,399,351 B2, issued July 15, 2008), Sato (US
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2007/0002109 A1, published January 4, 2007), and Hoogmartens (US
2010/0047455 A1, published February 25, 2010). Appeal Br. 4; Final Act.
3.
Appellant presents arguments only for independent claim 1 and relies
on these arguments to address the rejection of the remaining claims. See
generally Appeal Br. Accordingly, we select independent claim 1 as
representative of the subject matter claimed and decide the appealed ground
of rejection based on the arguments Appellant makes in support of the
patentability of claim 1.

OPINION
We have thoroughly reviewed each of Appellant’s arguments for
patentability presented in the Appeal Brief.2 However, we determine that a
preponderance of the evidence supports the Examiner’s § 103 rejection of
claims 1, 3, 4, 6–8, 10–18, 21, and 22. Accordingly, we sustain the
Examiner’s rejection for essentially the reasons the Examiner presents in the
Final Office Action and the Answer. We add the following for emphasis.
Independent claim 1 recites a 6-Color Set of chromatic primary
colors comprising a bordeaux color and/or a yellow shade orange color, each
having a specific midpoint wavelength (MPW) and additional colors to have
a total of 6 colors in the set, wherein the claimed 6-Color Set provides a
more evenly spaced extended color gamut process ink set than other color
sets.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 1. Final Act. 3–7.

2 Appellant did not file a Reply Brief.
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Briefly, the Examiner finds Jackson teaches a 6-Color Set of
chromatic primary colors comprising a yellow shade orange color, a yellow
ink comprising Pigment Yellow 14 and a total of six inks including cyan,
magenta, yellow, red, green, and blue. Final Act. 3–4; Jackson col. 5, l. 47–
col. 6, l. 11.3 The Examiner finds Jackson’s 6-Color Set of chromatic
primary colors does not disclose an inkjet ink set comprising a bordeaux ink,
the exclusion of a specific magenta ink, the inclusion of a deep hot pink, and
the specific features for colors. Final Act. 4. The Examiner finds Sato
discloses a magenta ink composition for an inkjet ink set comprising
Pigment Violet 32 that meets the claimed bordeaux ink and that has an
MPW greater than 606. Final Act. 4–5; Sato ¶¶ 10, 11, 91, 177. The
Examiner further finds Hoogmartens discloses an inkjet ink set including a
non-aqueous inks comprising a pigment of C.I. Pigment Red 22 (deep hot
pink) and a non-aqueous pigment of C.I. Pigment Yellow 83 and 14. Final
Act. 5; Hoogmartens ¶¶ 55, 68–80. The Examiner finds that the inks taught
by the cited references are among Appellant’s preferred inks for the 6-Color
Set of chromatic primary colors and, therefore, would inherently possess the
claimed and disclosed MPW properties. Final Act. 6–7. The Examiner
determines it would have been obvious to one of ordinary skill in the art to
modify Jackson’s 6-Color Set of chromatic primary colors by (1)
substituting Jackson’s magenta ink with Sato’s magenta ink comprising
Pigment Violet 32, (2) substituting Jackson’s Pigment Yellow 14 for the
yellow ink with Hoogmartens’s Pigment Yellow 83, and (3) including

33 We note Jackson also teaches Pigment Violet 32 among the useful
pigments for the disclosed invention. Jackson col. 6, l. 10. Appellant
discloses Pigment Violet 32 as a source for the bordeaux color. Spec. ¶ 88.
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Hoogmartens’s ink comprising Pigment Red 22 (deep hot pink). The
Examiner reasons that such modifications result in a 6-Color Set of
chromatic primary colors that obtains sufficient color reproducibility in a
high chroma and low lightness red area at a low concentration and enlarges
the color gamut to improve image quality by lowering graininess. Final Act.
6; Sato ¶ 156; Hoogmartens ¶ 55.
Appellant argues the Examiner failed to consider the invention as a
whole because the present invention is not simply a list of pigments. Appeal
Br. 6. According to Appellant, the claimed invention creates a 6-color set of
chromatic primary colors by combining colors in a specific way using Mid-
Point Wavelength (MPW) values, a property allegedly discovered by
Appellant, to arrive at a 6-color set of chromatic primary colors that results
in a more evenly spaced extended color gamut process ink set. Appeal Br.
6–7; see also Spec. ¶ 67. Appellant also argues that the Examiner points to
no portion of the cited references teaching this concept nor establishes that it
is inherent in the teachings of the cited art. Appeal Br. 7. Appellant further
argues that, absent impermissible hindsight, the Examiner does not provide
adequate motivation to arrive at the claimed invention. Appeal Br. 7–8.
Appellant’s arguments do not point to reversible error in the
Examiner’s determination of obviousness. It is well settled that “the
discovery of a previously unappreciated property of a prior art composition,
or of a scientific explanation for the prior art’s functioning, does not render
the old composition patentably new to the discoverer.” Atlas Powder Co. v.
IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). “The discovery of a new
property or use of a previously known composition, even when that property
and use are unobvious from the prior art, can not impart patentability to
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claims to the known composition.” In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) (citation omitted). See also In re Skoner, 517 F.2d 947, 950 (CCPA
1975). Moreover, where the Examiner provides a reasonable basis for
finding that the property or characteristic recited in the claims would have
been inherent to the prior art product, the burden of proof shifts to Appellant
to show that this characteristic or property is not possessed by the prior art.
See In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
As the Examiner explains, the cited art teaches it is known to select
colors/pigments such as Pigment Violet 32 (bourdeuax), Pigment Red 22
(deep hot pink), Yellow 83, and Pigment Orange 62 (yellow shade orange)
as pigments for ink jet sets. See generally Final Act. The Examiner also
provides an adequate explanation why one skilled in the art would have used
the recited prior art colors/pigments in a 6-Color Set of chromatic primary
colors. See Final Act. 6. As the Examiner further explains, and Appellant
does not dispute, these prior art colors/pigments are the ones Appellant
recites among preferred colors/pigments. Ans. 9; see generally Final Act.;
Spec. ¶¶ 88–91; Appeal Br. 9. Thus, contrary to Appellant’s arguments, the
Examiner provides a reasonable basis for finding that the property or
characteristic recited in the claims would have been inherent to the prior art
colors/pigments. Appellant fails to provide an adequate technical
explanation or direct us to other objective evidence supporting the assertion
that the prior art colors/pigments do not necessarily possess the claimed
property or characteristic.
Appellant argues, even if the MPW of pigments were an inherent
feature, the present invention is still non-obvious because the key feature of
the invention is how the inks are combined in a set using ∆MPW(Max-Min)
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with the other colors in the 6-color set or by their spectral features. Appeal
Br. 9. Appellant asserts the Examiner has failed to provide any rational
reason why one of ordinary skill in the art would have combined the
different inks in the same way as the presently claimed invention, without
any knowledge of the present invention. Id.
These arguments are also unpersuasive of reversible error in the
Examiner’s determination of obviousness.
As the Examiner explains, once Jackson’s 6-Color Set is modified to
include the colors/pigments of the cited art, it would be reasonable to expect
that the modified 6-Color Set would also possess the characteristic for the
ink set (∆ MPW(Max-Min)). Final Act. 6–7 (discussing the Examiner’s
basis for establishing the modified 6-Color Set as meeting the claimed
∆ MPW(Max-Min)); Ans. 9–10; see also In re O’Farrell, 853 F.2d 894, 904
(Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a
reasonable expectation of success.”). Appellant has not shown that the 6-
Color Set from the combined teachings of the cited art does not possess this
characteristic.
Appellant argues that data in the Specification shows the criticality of
the claimed invention. Appeal Br. 11; Application Figure 13; Spec. ¶¶ 59,
61, 87. According to Appellant, the data shows that prior art ink sets lacking
the claimed MPW relationship do not print as cleanly as the ink set of the
present invention. Appeal Br. 11.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976). The burden of establishing unexpected results rests on
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the Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Appellant must establish the unexpected results with factual
evidence; attorney statements are insufficient to establish unexpected results.
See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a
showing of unexpected results with evidentiary support must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
We have considered Appellant’s evidence of unexpected results and
agree with the Examiner’s analysis that the evidence is insufficient to
overcome a prima facie case of obviousness. Ans. 11.
First, it is not clear that Appellant has compared the claimed invention
against the closest prior art. The only comparative examples presented
involve two prior art examples: one based on the teachings of U.S. Patent
No. 6,152,999 to Erdtmann and another based on an unidentified prior art
source. Spec. ¶ 67 (Table 3). The only inventive examples presented
involve three limited tests. Spec. ¶ 67 (Table 2). Appellant has not
established that these tested materials in the comparative examples are in
fact representative of the teachings of the cited art. Nor has Appellant
explained why the limited inventive examples are representative of the broad
range of colors/pigments encompassed by claim 1.
Therefore, Appellant’s Examples neither compared to the closest prior
art nor are commensurate in scope with the claim.
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Thus, on this record, Appellant has not explained adequately why one
of ordinary skill in the art would have found the evidence relied upon
unexpected or why that evidence is reasonably commensurate in scope with
the claims.
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents in the Final Rejection and the Examiner’s
Answer.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1,
3, 4, 6–8, 10–18, 21, and 22 for the reasons the Examiner presents and we
give above.
CONCLUSION
The Examiner’s prior art rejection of claims 1, 3, 4, 6–8, 10–18, 21,
and 22 is affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6–
8, 10–18,
21, 22
103(a) Jackson, Sato,
Hoogmartens
1, 3, 4, 6–8,
10–18, 21,
22

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED