Ex Parte Stork et al

Board of Patent Appeals and Interferences

Jul 31, 2012

11478167 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/478,167 06/29/2006 Gerhard Stork 4881-20-297478.000 6805
27799 7590 08/01/2012
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
EXAMINER
HESS, BRUCE H
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
08/01/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GERHARD STORK and KARSTEN LERIUS
____________

Appeal 2011-003054
Application 11/478,167
Technology Center 1700
____________

Before PETER F. KRATZ, HUBERT C. LORIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s second or subsequent rejection of claims 1-14, 16, and 17. We
have jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2011-003054
Application 11/478,167

2
Appellants’ claimed invention is directed to an ink jet recording
material.
Claim 1 is illustrative and reproduced below:
1. Ink-jet recording material with a paper substrate that has a
single coating on at least one side, wherein the coating contains binder and
inorganic pigment, wherein:
(a) the substrate has a density in a range of 0.6 to 1.0 g/cm3 and a
Cobb60 value in a range of 19-25 g/m2;
(b) said single coating consists solely of a single layer formed as a
recording layer, which is applied directly to the substrate;
(c) the pigment present in the recording layer consists of colloidal
synthetic boehmite with a mean crystal size in a range of 10-50 nm; and
(d) the binder present in the recording material consists of silanized
polyvinyl alcohol to an extent of 80-100 wt.%.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Eguchi EP 0701904 A1 Mar. 20, 1996
Mingus US 5,843,549 Dec. 1, 1998
Takashima US 7,500,743 B2 Mar. 10, 2009

The Examiner maintains the following grounds of rejection.1
Claims 1-14, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Takashima in view of Mingus. Claims 1-14, 16,
and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Eguchi in view of Takashima and Mingus.
We reverse the stated rejections. In this regard, "the examiner bears
the initial burden, on review of the prior art or on any other ground, of

1 A previously maintained rejection of claims 1-4 and 6-17 under 35 U.S.C.
§ 112, second paragraph has been withdrawn by the Examiner (Ans. 3).
Appeal 2011-003054
Application 11/478,167

3
presenting a prima facie case of unpatentability." In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
We need only address independent claim 1.
Concerning the first stated obviousness rejection, the Examiner’s
proposed combination of references falls short of proffering a sustainable
rationale that supports the asserted obviousness rejection. In this regard,
Takashima is directed to an ink jet recording method that permits the
recording of images that have high glossiness appropriate for photographic
images and displays weather resistance (ozone resistance and light fastness)
(col. 1, ll. 53-65).
As explained by Takashima, the ink jet recording medium should
contain a support and at least one ink receiving layer, wherein at least one of
the ink receiving layers or an intermediate layer comprises a thermoplastic
resin so as to furnish effectively enhanced ozone resistance to the medium
(col. 3, ll. 15-33). Takashima notes that the support has a base material and
that a polyolefin material should be on one or both faces of the support for
improving smoothness and glossiness of the ink jet recording medium (col.
3, ll. 35-40). As regards the base material, Takashima indicates a wide
variety of materials may be suitable, as long as certain properties are
satisfied, such as adequate surface smoothness being provided for (col. 3, ll.
41-54). Against that backdrop, Takashima furnishes a large list of a variety
of classes of materials that may be employed as a base material alone or, in
combination, as a laminate of two or more of the listed materials together
with optional subsequent processing and/or optional surface layers, as
necessary, so as to meet the requisite requirements for the base layer(s) of
the support for the ink receiving layer of the recording medium (col. 3, l. 45-
Appeal 2011-003054
Application 11/478,167

4
col. 6, l. 14). Similarly, Takashima furnishes a large list of materials,
including various choices for organic or inorganic fine particles (including
pigments) that may be selected for use alone or together and a list of several
binders that may be employed in forming an ink receiving layer of the ink jet
recording medium (col. 6, l. 15- col. 18, l. 12).
The Examiner maintains that one of ordinary skill in the art would
have been led to: (1) select paper for the substrate of Takashima from among
the several base material possibilities identified in Takashima without using
any of the intermediate facing layers disclosed by Takashima for providing
desired surface characteristics for the support, (2) select pseudoboehmite
particles having a diameter less than 200 nm and a binder consisting of up to
100 percent silanized polyvinyl alcohol for an ink receiving layer that is
directly applied to the paper substrate from among the many possible binders
and pigments listed in Takashima, while (3) limiting and/or modifying the
paper selected for the substrate of Takashima such that the substrate has a
Cobb60 value within the range specified for Appellants’ claim1 recording
material based on a disclosure by Mingus of Cobb60 values not exceeding 25
g/m2 for “paper substrates in ink jet recording material” providing a water
absorbency advantage (preventing too much water being absorbed ) (Ans. 3-
4).
Appellants argue that the paper substrate, including its characteristics,
described by Mingus is a paper substrate that serves as a label release liner
and, as such, the Examiner has not reasonably established that Mingus
would have been suggestive of the requisite properties for a substrate to be
selected for the ink jet recording medium of Takashima (App. Br. 7-8;
Mingus, col. 8, ll. 37-40). In this regard, we note that Mingus indicates that
Appeal 2011-003054
Application 11/478,167

5
the range of Cobb60 values for their label backing paper is at least, in part,
premised on providing the backing paper with an anti-curl characteristic in
forming labels and providing resultant properties of the paper substrate
(release liner) that are in balance with characteristics of facestocks so as to
provide a layflat label construction (col. 2, ll. 34-41; col. 3, ll. 53-61; col. 5,
ll. 14-37; and col. 9, ll. 21-38).
The Examiner surmises that all ink jet recording paper substrates
subjected to ink jet printing would have a propensity to curl if its Cobb60
value was greater than 25 g/m2 (Ans. 6.). However, Appellants argue, as
indicated above, that Mingus addresses properties for a label backing paper
(release liner), not a paper substrate used in an ink jet recording medium as
may be used as a substrate for the ink jet recording medium of Takashima
(Reply Br. 2, ll. 14-21).
On this record, we agree with Appellants that the Examiner has not
discharged the burden of substantiating the assertions made respecting the
reach of the teachings of Mingus. Instead, the Examiner appears to employ
impermissible hindsight to guide the multiple selections being made from
the collective teachings of Takashima and Mingus rather than furnishing
sufficient reasoning based on adequately identified guideposts found in the
applied references for the modifications and selections advanced by the
Examiner in tendering the rejection (App. Br. 6-9; Reply Br. 3-6). See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness"), cited with approval in KSR
Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). Rejections based on
Appeal 2011-003054
Application 11/478,167

6
§ 103(a) must rest on a factual basis with these facts being interpreted
without hindsight reconstruction of the invention from the prior art. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
We note that the Examiner’s application of Eguchi together with
Takashima and Mingus in the second stated rejection suffers from
substantially the same shortcomings outlined above (App. Br. 9-10; Reply
Br. 4-6).
It follows that we shall reverse both rejections.

ORDER
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

sld