Ex Parte McManus

Patent Trial and Appeal Board

Dec 19, 2018

11398786 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/398,786 04/06/2006
22879 7590 12/21/2018
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Richard J. McManus
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.
82220180 8721
EXAMINER
REDDY, SATHAVARAM I
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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
barbl@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 RICHARD J. MCMANUS 1
Appeal2018-002431
Application 11/398,786
Technology Center 1700
Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
MONTE T. SQUIRE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
final rejection under 35 U.S.C. § 103(a) of claims 1-3, 8, 21, 22, 25, and 26
as unpatentable over Kitamura (Kitamura et al.; US 2003/0134093 Al; pub.
July 17, 2003; hereinafter "Kitamura"). We have jurisdiction under 35
U.S.C. § 6.
We REVERSE.
1 Appellant identifies Hewlett-Packard Development Company, LP, as the
real party in interest (App. Br. 3).
Appeal2018-002431
Application 11/398,786
Appellant claims a media sheet comprising a substrate having an
inkjet image-receiving layer formed thereon wherein the inkjet image-
receiving layer comprises about 25 to about 70 percent by dry weight of
calcined clay and about 30 to about 60 percent of kaolin clay or precipitated
calcium carbonate (independent claim 1) or wherein the jet image-receiving
layer comprises a first pigment for absorption and a second pigment for
gloss, the first pigment being calcined clay that makes up about 25 to about
70 percent of the inkjet image-receiving layer by dry weight and the second
pigment being an inorganic pigment that makes up about 30 to about 60
percent of the inkjet image-receiving layer by dry weight (remaining
independent claim 8).
A copy of representative claims 1 and 8, taken from the Claims
Appendix of the Appeal Brief, appears below.
1. A media sheet, comprising:
a substrate; and
an inkjet image-receiving layer formed on the
substrate as an outermost layer of the media sheet,
the inkjet image-receiving layer having a thickness
from about 2 microns to about 50 microns; wherein
the inkjet image-receiving layer comprises about 25
to about 70 percent by dry weight of calcined clay
having an oil absorption of greater than about 100
grams of oil per 100 grams of calcined clay, and a
median particle size of less than about 1.6 microns;
wherein the inkjet image-receiving layer also
comprises about 30 to about 60 percent of kaolin clay
or precipitated calcium carbonate, wherein said kaolin
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Appeal2018-002431
Application 11/398,786
clay or said precipitated calcium carbonate have a
median particle size of less than about 650
nanometers;
wherein the gloss of the inkjet image-
receiving layer is greater than about 50 when
measured at a 75 degree viewing angle;
and wherein the media sheet does not include
an intermediate layer between the substrate and the
image-receiving layer.
8. A media sheet comprising:
a paper substrate; and
an inkjet image-receiving layer formed on the
paper substrate as an outermost layer of the media
sheet, the inkjet image-receiving layer having a
thickness from about 2 microns to about 50 microns;
wherein the inkjet image-receiving layer
comprises at least a first pigment for absorption and a
second pigment for gloss;
wherein the first pigment is calcined clay that
makes up about 25 to about 70 percent of the inkjet
image-receiving layer by dry weight and has an oil
absorption of greater than about IOO grams of oil per
IOO grams of calcined clay, and the calcined clay has a
median particle size of less than about 1.6 microns;
wherein the second pigment is an inorganic
pigment that makes up about 30 to about 60 percent of
the inkjet image-receiving layer by dry weight having
a median particle size of less than about 650
nanometers;
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Appeal2018-002431
Application 11/398,786
wherein the gloss of the inkjet image-receiving
layer is from about 65 to about 7 5 when measured at a
75 degree viewing angle; and
wherein the media sheet does not include an
intermediate layer between the substrate and the
image-receiving layer.
(App. Br. 24--25, Claims App.)
The Examiner finds that Kitamura discloses a media sheet with an
inkjet image-receiving layer having calcined clay, kaolin clay, and calcium
carbonate pigments as explicitly recited by independent claim 1 and at least
encompassed by independent claim 8 (Final Action 2 ( citing Kitamura
,r 58)). The Examiner also finds that Kitamura does not disclose the claimed
weight percentage of these pigments but concludes that it would have been
obvious to optimize such weight percentages thereby achieving pigment
amounts within the ranges of the independent claims (id. at 4).
Appellant contests the Examiner's optimization proposal by arguing
that "Kitamura does not identify the weight percentage of the pigments as a
result effective variable" (App. Br. 17).
Appellant's argument lacks persuasive merit. One with ordinary skill
in this art would have recognized weight percentage as a result effective
variable for the reasons given in the Answer (Ans. 6) and in our prior
Decision mailed August 16, 2012 for Appeal 2011-007895 (Dec. 4).
Appellant further argues the media sheet of Kitamura includes
composite particles (i.e., silica, alumina, or aluminosilicate pigment in
combination with cationic resin) in amounts (i.e., preferably from 70% to
95% by mass) that preclude Kitamura's calcined clay, kaolin clay, and
calcium carbonate pigments from being present in the claimed percentages
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Appeal2018-002431
Application 11/398,786
(App. Br. 19--20). In response to the Examiner's position that composite
particles need not be used in Kitamura as evinced by Examples 1 and 3
(Final Action 6; see also Ans. 7-8), Appellant argues that the compositions
of Examples 1 and 3 in fact contain such composite particles and that
"Kitamura never teaches any embodiments that do not include the composite
particles" (App. Br. 21; see also Reply Br. 9).
We agree with Appellant that composite particles of silica in
combination with cationic resin are used as the sol A of Example 1 (see
Kitamura ,r,r 92-94; see also id. at ,r 100 (referring to the cationic resin of
Example 1 )) and Example 3 (see id. at ,r,r 97-99). Indeed, Example 3
explicitly recites "silica-cationic resin composite sol A" (id. at ,r 98).
Therefore, no credible evidence supports the Examiner's position that
composite particles need not be used in Kitamura.
In summary, the Examiner provides the appeal record with no
convincing rebuttal to Appellant's argument that the amount of Kitamura's
composite particles prevents the calcined clay, kaolin clay, and calcium
carbonate pigments of Kitamura being present in the amounts recited by
independent claims 1 and 8. For this reason, the record before us shows
reversible error in the Examiner's conclusion that it would have been
obvious to optimize the amounts of Kitamura's calcined clay, kaolin clay,
and calcium carbonate pigments thereby yielding the claimed amounts. We
do not sustain, therefore, the Examiner's stated 35 U.S.C. § 103 rejection of
claims 1-3, 8, 21, 22, 25, and 26 as unpatentable over Kitamura.
The decision of the Examiner is reversed.
REVERSED
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