Ex Parte Goredema et al

Patent Trial and Appeal Board

Oct 5, 2018

14573191 (P.T.A.B. Oct. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/573,191 12/17/2014 Adela Goredema
74934 7590 10/05/2018
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.
20140595US01 2163
EXAMINER
DIAZ, MATTHEW R
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
10/05/2018 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 ADELA GOREDEMA, C. GEOFFREY ALLEN, GORDON SISLER,
BARKEV KEOSHKERIAN, and CUONG VONG
Appeal2017-010142
Application 14/573,191
Technology Center 1700
Before TERRY J. OWENS, LINDA M. GAUDETTE, and SHELDON M.
McGEE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's decision
finally rejecting claims 1-8 and 10-15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 This Decision includes citations to the following documents: Specification filed
Dec. 17, 2014 ("Spec."); Final Office Action dated Oct. 5, 2016 ("Final"); Appeal
Brief filed Mar. 21, 2017 ("Appeal Br."); Examiner's Answer dated May 30, 2017
("Ans."); and Reply Brief filed July 25, 2017 ("Reply Br.").
2 Appellant is the Applicant and the real party in interest: Xerox Corporation. See
Appeal Br. 1.
Appeal2017-010142
Application 14/573,191
Claim 1 is the sole independent claim on appeal, and is reproduced below.
1. A nanosilver ink composition comprising:
silver nanoparticles;
a clay dispersion;
wherein the clay dispersion comprises clay, a clay dispersant,
and a clay dispersion vehicle; and
an ink vehicle.
Appeal Br. 16 (Claims Appendix).
The Examiner maintains the following grounds of rejection on appeal (see
Ans. 2-9):
1. claims 1, 3, 6, 8, and 13 under 35 U.S.C. § I02(a)(l) as
anticipated by, or, in the alternative, under 35 U.S.C. § 103 as obvious over, Lin
(US 2009/0149592 Al, pub. June 11, 2009);
2. claims 1-3, 6, 8, 10, 11, 13, and 15 under 35 U.S.C. § 103 as
unpatentable over Sasaki (US 7,517,632 B2, iss. Apr. 14, 2009);
3. claims 1-8 and 10-15 under 35 U.S.C. § 103 as unpatentable over
Kang (US 2011/0232527 Al, pub. Sept. 29, 2011) in view of Sager (US 7,306,823
B2, iss. Dec. 11, 2007); and
4. claims 1, 3-8, and 10-15 under 35 U.S.C. § 103 as unpatentable over
Chopra (US 8,062,698 B2, iss. Nov. 22, 2011) in view of Weiss (US 7,267,055 B2,
iss. Sept. 11, 2007).
Appellant argues the claims subject to each ground of rejection as a group.
See Appeal Br. 7-13. Accordingly, we decide the appeal as to each ground of
rejection based on claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)(20I6).
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Application 14/573,191
Appellant's arguments on appeal raise the following issues:
( 1) Did the Examiner reversibly err in finding that each of Lin, Sasaki,
and the combinations of Kang/Sager and Chopra/Weiss, discloses or suggests a
"clay dispersion" as recited in claim 1? See Appeal Br. 7-13.
(2) Did the Examiner reversibly err in finding that Weiss is analogous
art? See id. at 13.
We answer both of these questions in the negative for the reasons discussed
below. 3
(1) Did the Examiner reversibly err in finding that each of Lin,
Sasaki, and the combinations of Kang/Sager and Chopra/Weiss,
discloses or suggests a "clay dispersion" as recited in claim 1?
Appellant does not dispute the Examiner's findings that each of Lin, Sasaki,
and the combinations of Kang/Sager and Chopra/Weiss discloses or suggests an
ink composition comprising silver nanoparticles, an ink vehicle, a clay, a
dispersant suitable for dispersing the clay, and a solvent suitable for use as the clay
dispersion vehicle. See Appeal Br. 7-13. Appellant argues, however, that neither
the individual references nor the proposed combinations of references discloses or
suggests "clay dispersion compris[ing] clay, a clay dispersant, and a clay
dispersion vehicle" ( claim 1) as a distinct element of an ink composition. Reply
Br. 3; see Appeal Br. 7-13. Appellant argues that merely adding clay to a
composition containing silver nanoparticles, a dispersant, and an ink vehicle
comprising a solvent suitable for use as a clay dispersant vehicle would not result
in an ink composition having the advantages described in the Specification. Reply
Br. 3--4.
3 Any additional arguments made by Appellant that are not discussed explicitly in
this Decision have been fully considered, but are not found persuasive for the
reasons stated by the Examiner in the Final Office Action and the Answer.
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Application 14/573,191
Turning first to the rejection of claims 1, 3, 6, 8, and 13 under 35 U.S.C.
§ 102(a)(l) as anticipated by Lin, Appellant's argument that Lin does not describe a
"clay dispersion" as a separate element of the disclosed ink composition (see
Appeal Br. 7-9; Reply Br. 4) is not persuasive of error given the Examiner's
finding that Lin discloses a composition comprising silver nanoparticles, an ink
vehicle, and each of the individual components of the clay dispersion, and
Appellant's acknowledgements that (1) in the inventive composition, the
components of the clay dispersion do not remain discrete from the silver
nanoparticles and ink vehicle once combined, and (2) the claims do not require the
use of different solvents for the ink vehicle and clay dispersion vehicle. Reply Br.
3; compare Spec. ,r 35 (ink vehicle), with id. ,r 33 (clay dispersion vehicle). "The
anticipation analysis asks solely whether the prior art reference discloses and
enables the claimed invention, and not how the prior art characterizes that
disclosure .... " See Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314,
1324 n.6 (Fed. Cir. 2003). Appellant's argument that Lin's composition would not
possess the same properties as the claimed composition ( e.g., improved viscosity)
because Lin's composition is made by adding clay, rather than a clay dispersion to
silver nanoparticles and an ink vehicle, is not persuasive because the claims do not
recite explicitly that the composition possess specific properties and, as
acknowledged by Appellant, the claims are not drafted in product-by-process
format, i.e., the claims do not require that the composition is made by adding a clay
dispersion to the nanoparticles and ink vehicle. See Reply Br. 3--4.
Turning next to the rejections under 35 U.S.C. § 103 over each of Lin,
Sasaki, and the combinations of Kang/Sager and Chopra/Weiss, Appellant's
arguments that the applied prior art fails to teach or suggest a "clay dispersion" as a
separate element of an ink composition (see Appeal Br. 9-13; Reply Br. 4--7) are
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Application 14/573,191
unpersuasive for the same reasons discussed above in connection with the rejection
under 35 U.S.C. § 102. Appellant also attempts to overcome the rejections under
35 U.S.C. § 103 by arguing the claimed composition exhibits unexpected results.
Appellant directs us to Specification paragraph 28 (Reply Br. 4), which reads as
follows: "It was surprisingly found that adding clay without any modifications
does not increase ink viscosity. In the present embodiments, it was found that the
clay needed to be dispersed in order to impact ink viscosity."
Appellant further directs us to the examples in the Specification as evidence
of unexpected results. Reply Br. 3. Table 2 of the Specification provides a
comparison of five nanosilver ink compositions. Spec. 18, Table 2. According to
the Specification, similar viscosities were exhibited by Ink Example 1, which did
not contain any clay, and Ink Example 2, made by adding unprocessed clay to a
silver concentrate and decalin and bicyclohexyl solvents (see Spec. 17, Table 1 ).
Spec. ,r 61. By contrast, increased viscosities were exhibited by Ink Examples 3-5,
made by adding clay dispersions to a silver concentrate (see Spec. 17, Table 1 ).
Spec. ,r 61.
We agree with the Examiner (Ans. 12-13) that the Specification Examples
test a very limited number of ink compositions, and Appellant has not provided
evidence that other ink compositions falling within the scope of the claims
reasonably would be expected to exhibit the same increases in viscosity. See In re
Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("Evidence of secondary considerations
must be reasonably commensurate with the scope of the claims. This does not
mean that an applicant is required to test every embodiment within the scope of his
or her claims. If an applicant demonstrates that an embodiment has an unexpected
result and provides an adequate basis to support the conclusion that other
embodiments falling within the claim will behave in the same manner, this will
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Application 14/573,191
generally establish that the evidence is commensurate with scope of the claims."
(internal citations omitted)). Moreover, the Specification Examples do not appear
to provide a comparison with the closest prior art, i.e., Lin's ink composition. See
In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991) ("[W]hen
unexpected results are used as evidence of nonobviousness, the results must be
shown to be unexpected compared with the closest prior art.").
In sum, for the reasons stated above, we are not persuaded of reversible error
in the Examiner's finding that each of Lin, Sasaki, and the combinations of
Kang/Sager and Chopra/Weiss, discloses or suggests a "clay dispersion" as recited
in claim 1 .
(2) Did the Examiner reversibly err in finding that Weiss is
analogous art?
The Examiner found Chopra discloses an ink composition as recited in claim
1 with the exception of a clay. Final 8-9. The Examiner found, however, that
Chopra discloses that the ink composition may contain one or more additives such
as a thickening agent. Id. at 9 (citing Chopra 6:43-50). The Examiner found the
ordinary artisan would have employed a clay as the thickening agent in Chopra,
based on Weiss's teaching that the addition of a clay to solvent-borne inks as a
thixotropic thickening agent was conventional in the art at the time of the
invention. Id.
Appellant contends the ordinary artisan would not have looked to Weiss in
considering suitable thickening agents for use in a nanosilver ink composition,
because Weiss is concerned with screen printing inks, and "[t]he problems and
concerns of preparing a nanosilver ink composition are not related to the problems
and concerns of preparing an ink for use in membrane image transfer printing
processes as described in Weiss." Appeal Br. 13.
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Application 14/573,191
Two separate tests define the scope of analogous prior art: (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 Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004)). The Examiner finds Weiss qualifies as analogous
prior art under the second test, because it is pertinent to the issue of maintaining or
adjusting the viscosity of a printable solvent-borne ink, and the claimed nanosilver
ink composition is a printable, solvent-borne ink. Ans. 19. Appellant does not
provide persuasive argument or evidence demonstrating that this finding is
erroneous or unreasonable. See, e.g., Reply Br. 7 (reiterating the argument
advanced in the Appeal Brief, but failing to provide evidence that an ordinary
artisan would not have considered Weiss pertinent to the problem faced by the
inventors).
Accordingly, we are not persuaded that the Examiner reversibly erred in
finding that Weiss is analogous art and, therefore, qualifies as prior art for an
obviousness analysis.
CONCLUSION
Appellant has not identified reversible error in the Examiner's determination
that (1) claims 1, 3, 6, 8, and 13 are unpatentable under 35 U.S.C. § 102(a)(l) as
anticipated by Lin, (2) claims 1, 3, 6, 8, and 13 are unpatentable under 35 U.S.C.
§ 103 as obvious over Lin, (3) claims 1-3, 6, 8, 10, 11, 13, and 15 are unpatentable
under 35 U.S.C. § 103 obvious over Sasaki, (4) claims 1-8 and 10-15 are
unpatentable under 35 U.S.C. § 103 as obvious over Kang and Sager, and (5)
claims 1, 3-8, and 10-15 are unpatentable under 35 U.S.C. § 103 obvious over
Chopra and Weiss. Accordingly, we sustain all grounds of rejection.
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Application 14/573,191
The Examiner's decision to reject claims 1-8 and 10-15 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
AFFIRMED
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