Xerox Corporation

Patent Trials and Appeals Board

Nov 9, 2020

15296755 - (D) (P.T.A.B. Nov. 9, 2020)

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.
15/296,755 10/18/2016 Mihaela Maria Birau 20160213US01 4908
74934 7590 11/09/2020
MARYLOU J. LAVOIE, ESQ. LLC
1 BANKS ROAD
SIMSBURY, CT 06070
EXAMINER
ROBINSON, MICHAEL
ART UNIT PAPER NUMBER
1744
MAIL DATE DELIVERY MODE
11/09/2020 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
____________

Ex parte MIHAELA MARIA BIRAU, MARCEL P. BRETON, JAMES D.
MAYO, AURELIAN VALERIU MAGDALINIS, JONATHAN SIU-
CHUNG LEE, BIBY ESTHER ABRAHAM, NAVEEN CHOPRA, and
YVAN GAGNON

____________

Appeal 2020-000765
Application 15/296,755
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–10 and 22–24.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Xerox Corporation as the real party in
interest. Appeal Brief filed July 16, 2019 (“Appeal Br.”) at 1.
2 Final Office Action entered February 21, 2019 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims an ink composition for use in digital offset printing.
Appeal Br. 2. Claim 1, the sole pending independent claim, illustrates the
subject matter on appeal and reads as follows:
1. An ink composition for use in digital offset printing,
comprising:
a white colorant;
wherein the white colorant is present in an amount of
greater than 50 percent by weight based upon the total weight
of the ink composition;
at least one component selected from the group
consisting of a curable monomer and a curable oligomer;
at least one phase change agent, wherein the at least one
phase change agent is a gellant;
an optional dispersant; and
an optional photoinitiator.

Appeal Br. 15 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered September 11, 2019 (“Ans.”):
I. Claims 3–5 and 24 under 35 U.S.C. § 112(b) as indefinite for
failing to particularly point out and distinctly claim the subject matter that
the inventors regard as the invention;
II. Claims 1–6, 9, 10, and 22–24 under 35 U.S.C. § 103 as
unpatentable over Breton3 in view of Chopra;4 and
III. Claims 7 and 8 under 35 U.S.C. § 103 as unpatentable over

3 Breton et al., US 2015/0077501 A1, published March 19, 2015.
4 Chopra et al., US 2013/0328980 A1, published December 12, 2013.
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Breton in view of Chopra and Kinoshita5 as evidenced by Chromium Oxide
Green.6
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1–10 and 22–24 under 35 U.S.C. § 103 for the reasons set forth in the
Final Action, the Answer, and below. We reverse the Examiner’s rejection
of claims 3–5 and 24 under 35 U.S.C. § 112(b) for the reasons discussed
below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); 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) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Rejection I
We first address the Examiner’s rejection of claims 3–5 and 24 under
35 U.S.C. § 112(b) as indefinite.
The Examiner determines that recitation of the term “about” in claims
3–5 and 24 renders these claims indefinite because, according to the
Examiner, “about” is a relative term and “is not defined by the claim, the

5 Kinoshita et al., US 2011/0015339 A1, published January 20, 2011.
6 “Chromium Oxide Green” obtained October 29, 2018 from
https://www.naturalpigments.com/chromium-oxide-green-pigment.html.
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specification does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill in the art would not be reasonably apprised
of the scope of the invention.” Final Act. 2.
In response to the Examiner’s rejection, Appellant amended claims 3–
5 and 24 in a Response filed April 27, 2019 to remove each instance of the
term “about,” and the Examiner confirmed entry of the amendments in an
Advisory Action entered May 16, 2019. Although the Examiner indicates in
the Answer that the Examiner maintains this rejection because “Appellant
has not provided arguments against the rejection” (Ans. 3), the basis for the
Examiner’s assertion of indefiniteness no longer exists in claims 3–5 and 24.
We, therefore, do not sustain this rejection.
Rejection II
We turn now to the Examiner’s rejection of claims 1–6, 9, 10, and 22–
24 under 35 U.S.C. § 103 as unpatentable over Breton in view of Chopra.
Appellant’s arguments for this rejection are not directed to any
particular claim, but are based on subject matter recited in claim 1. Appeal
Br. 6–10. We, therefore, select claim 1 as representative, and decide the
appeal as to claims 1–6, 9, 10, and 22–24 based on claim 1 alone. 37 C.F.R.
§ 41.37(c)(1)(iv).
Breton discloses an ink composition suitable for digital offset printing
that comprises, in part, a radiation-curable monomer and a colorant. Breton
¶¶ 6, 39, 40, 43. Breton explains that “[i]nks formulated for ink-based
digital printing, or digital offset inks, are different in many ways from other
inks developed for printing applications, including . . . UV gel inks . . . For
example, digital offset inks contain much higher pigment and therefore have
higher viscosity at room temperature than other inks.” Breton ¶ 38.
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Breton discloses that “any desired or effective colorant may be
employed [in the digital offset ink composition of Breton’s invention],
including pigments,” and Breton indicates that “[e]xamples of suitable
pigments include titanium dioxide.” Breton ¶¶ 42, 43. Consistent with
Breton’s disclosure that digital offset inks contain high levels of pigment,
Breton discloses including a white pigment in Breton’s ink composition in
an amount of 20 to 80% by weight. Breton ¶ 49, claims 1, 2, and 5. Breton
discloses that the ink composition of Breton’s invention may also include a
leveling agent, and Breton discloses that the transfer efficiency of the ink
composition “may be further optimized through appropriate selection of . . .
leveling agent.” Breton ¶¶ 43, 47.
The Examiner finds that Breton does not disclose including a gellant
in Breton’s digital offset ink composition, and the Examiner relies on
Chopra for suggesting inclusion of a gellant in Breton’s ink composition.
Final Act. 4–5.
Chopra discloses a UV-curable gel ink that is solid at room
temperature and molten at elevated temperatures for application to a
substrate, which “can be employed in . . . indirect (offset) printing ink jet
applications.” Chopra ¶¶ 5, 18, 34, 82. Chopra discloses that the UV-
curable gel ink includes a gellant compound having tunable viscoelastic
properties that imparts self-leveling to the ink. Chopra ¶¶ 18, 118. Chopra
discloses that “[a]ny desired or effective colorant can be employed in the ink
compositions,” including pigments and “conventional ink-colorant
materials.” Chopra ¶¶ 72, 73. Chopra discloses that “[t]he colorant may be
present in the ink in any desired or effective amount to obtain the desired
color or hue such as, for example, at least from about 0.1 percent by weight
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of the ink to about 50 percent by weight of the ink.” Chopra ¶ 74.
In view of these disclosures in Chopra, the Examiner concludes that it
would be have been obvious to one of ordinary skill in the art “to use the
amide gellant taught by Chopra in the ink taught by Breton because the
amide gallant improves the tunable viscoelastic control of an ink and imparts
self-leveling capability.” Final Act. 5 (citing Chopra ¶ 18).
Appellant argues that although Breton discloses that a leveling agent
may be included in Breton’s ink composition, “this would not make it
obvious to select a gellant from the solid ink of Chopra and use it as a
leveling agent in Breton when Breton clearly states that the inks therein are
distinct from gel inks.” Appeal Br. 9. Appellant argues that although
Breton states that transfer efficiency may be optimized through appropriate
selection of leveling agent, “Breton does not teach or suggest a gellant
would be acceptable as a leveling agent when the inks therein are expressly
distinguished as not gellant inks.” Appeal Br. 9–10.
Although Breton does describe differences between digital offset inks
and UV gel inks, and does not disclose including a gellant in the digital
offset ink composition of Breton’s invention, Breton explicitly discloses
including a leveling agent in the ink composition, and explains that the
transfer efficiency of the ink composition “may be further optimized through
appropriate selection of . . . leveling agent.” Breton ¶ 47. Breton further
discloses including high levels of white pigment in the ink composition,
which Breton explains results in the composition having “higher viscosity at
room temperature than other inks.” Breton ¶ 38. Chopra’s disclosure of a
gellant compound having tunable viscoelastic properties that imparts self-
leveling to a solid (and thus highly viscous) ink useful for offset printing
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reasonably would have led one of ordinary skill in the art to use Chopra’s
gellant as the leveling agent in Breton’s high viscosity digital offset printing
ink, in order to allow the viscoelastic properties of Breton’s ink to be tuned
(or adjusted) as desired. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) (“[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.”).
We find no evidence on the record before us indicating that a gellant
as disclosed in Chopra would be unsuitable for use in Breton’s digital offset
ink composition, and Chopra’s explicit disclosure that the gellant can be
used in offset printing ink would have suggested that Chopra’s gellant could
be successfully used as a leveling agent Breton’s ink composition. In re
Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (“Obviousness does not require
absolute predictability of success . . . all that is required is a reasonable
expectation of success.”) (emphasis omitted, citing In re O’Farrell, 853 F.2d
894, 903‒04 (Fed. Cir. 1988)).
Appellant argues that Chopra discloses a “vast number” of colorants,
but does not teach or suggest a white colorant, and Chopra, therefore, “does
not teach or suggest that an ink containing a white colorant is suitable with a
gellant.” Appeal Br. 8. Appellant argues that Chopra also “does not teach
or suggest a colorant present in an amount of greater than 50 weight
percent,” and Chopra, therefore, “does not teach or suggest that an ink
containing greater than 50 weight percent colorant is suitable with a gellant.”
Appeal Br. 8–9.
As discussed above, however, Chopra explicitly indicates that any
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desired or effective colorant can be employed in the UV gel ink described in
the reference, including pigments and “conventional ink-colorant materials.”
Chopra ¶ 72. One of ordinary skill in the art would have understood this
disclosure to indicate that any conventional colorant or pigment, such as the
titanium dioxide pigment disclosed in Breton, would be suitable for use in
combination with the gellant described in Chopra. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) ([A]n obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for [an examiner] can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”; see also In re
Preda, 401 F. 2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account
not only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.”).
As also discussed above, Chopra explicitly indicates that “[t]he
colorant may be present in the ink in any desired or effective amount to
obtain the desired color or hue such as, for example, at least from about 0.1
percent by weight of the ink to about 50 percent by weight of the ink.”
Chopra ¶ 74 (emphasis added). Chopra, therefore, indicates that any amount
of colorant can be used in combination with the gellant in Chopra’s ink,
which would include 20 to 80% by weight pigment as disclosed in Breton.
And Chopra’s use of the term “about” to describe the upper limit of the
colorant content range set forth in the reference indicates that the upper limit
can be applied flexibly, allowing for colorant content that is somewhat
above 50 % by weight. In re Ayers, 154 F.2d 182, 185 (CCPA 1946)
(finding that at least about 10% anticipated by about 8% because it permitted
“some tolerance and the use of the words ‘at least’ before ‘about’ in the
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claim” was not viewed as a modification critical in character).
Contrary to Appellant’s arguments, one of ordinary skill in the art,
therefore, would have understood from Chopra’s disclosures that the gellant
described in the reference would be suitable for use in an offset printing ink
composition having a white colorant content of greater than 50 weight
percent.
Appellant argues that “Breton as a whole does not teach any
embodiment employing a gellant, not even as an optional component, and
the specification of Breton expressly distinguishes the ink therein from other
types of inks[,] including from UV gellant inks.” Appeal Br. 7. Appellant
argues that Breton’s “prosecution history”7 makes clear that “the inks of
Breton are not gellant inks,” and claim 1 of the patent that issued from
Breton recites that “the ink composition is not a UV gel ink.”8 Appeal Br.
7–8. Appellant argues that “[t]he lack of teaching of a gellant in the
specification of Breton, combined with the clear attempt in the Breton
specification to expressly distinguish the inks in Breton from UV gel inks,
would lead one of skill in the art away from making the combination that the
Examiner suggests of combining the gellant of Chopra into the ink of
Breton.” Appeal Br. 8.
Although Breton’s Specification does describe differences between
digital offset inks and UV gel inks (Breton ¶ 38), and does not disclose
including a gellant in the digital offset ink composition of Breton’s

7 Appellant appears to be referring to a Response filed on May 19, 2016
during prosecution of Breton, which Appellant listed on an Information
Disclosure Statement filed on October 7, 2018 for the present application.
8 Breton issued as U.S. patent 9,745,484, and Appellant listed the issued
patent on the Information Disclosure Statement filed October 7, 2018.

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invention, Appellant does not identify any disclosure in Breton that
criticizes, discredits, or otherwise would have discouraged one of ordinary
skill in the art from incorporating a gellant as disclosed in Chopra into
Breton’s ink composition. Contrary to Appellant’s arguments, Breton,
therefore, does not teach away from including Chopra’s gellant in Breton’s
digital offset ink composition. In re Ethicon, Inc., 844 F.3d 1344, 1351
(Fed. Cir. 2017) (teaching away requires “clear discouragement” from
implementing a technical feature); In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (“[t]he prior art’s mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed”).
And although Appellant further relies on Breton’s “prosecution
history” and claim 1 of the patent that issued from Breton as indicating that
Breton’s ink composition is not a UV gel ink, such a distinction does not
negate the suggestion stemming from the combined disclosures of Breton
and Chopra to include a gellant as described in Chopra in Breton’s ink
composition, discussed above.
We, accordingly, sustain the Examiner’s rejection of claims 1–6, 9,
10, and 22–24 under 35 U.S.C. § 103.
Rejection III
Finally, we turn to the Examiner’s rejection of claims 7 and 8 under
35 U.S.C. § 103 as unpatentable over Breton in view of Chopra and
Kinoshita, as evidenced by Chromium Oxide Green. To address this
rejection, Appellant repeats arguments that Appellant presents for Rejection
II (discussed above), and argues that Kinoshita does not cure the deficiencies
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of Breton and Chopra. Appeal Br. 10–11. Because Appellant’s arguments
do not identify reversible error in the Examiner’s rejection of claim 1 for the
reasons discussed above, Appellant’s arguments also do not identify
reversible error in the Examiner’s rejection of claims 7 and 8, which we
accordingly sustain.

CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3–5, 24 112(b) Indefiniteness 3–5, 24
1–6, 9, 10,
22–24
103 Breton, Chopra 1–6, 9, 10,
22–24

7, 8 103 Breton, Chopra,
Kinoshita,
Chromium Oxide
Green
7, 8
Overall
Outcome
1–10,
22–24

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)(iv).

AFFIRMED