Ex Parte Bi

Board of Patent Appeals and Interferences

Apr 26, 2010

10854350 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte YUBAI BI
__________

Appeal 2009-005399
Application 10/854,350
Technology Center 1700
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Decided: April 26, 2010
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Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
PETER F. KRATZ, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 24-38.1 We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.

1 Claims 1-23 are also pending but have been withdrawn from consideration.
Final Office Action dated March 18, 2008 (“Final”), at 1.
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Application 10/854,350

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According to the Appellant, unreacted or excess amounts of “water
soluble coating formulation additives” that remain in ink-receiving layers are
undesirable with respect to print quality. Spec. 4:14-18. The removal of
these materials is said to improve color gamut of printed images, and
particularly, the removal of salts is said to improve humid fastness. Spec.
4:23-25. The Appellant’s invention is drawn to ink-jet media wherein ionic
and other interfering water soluble components are “at least partially
removed” to produce improved compatibility with ink-jet components, such
as dyes and/or pigments. Spec. 8:17-21.
Claim 24, reproduced below, is representative of the subject matter on
appeal.
24. A media sheet, comprising:

a media substrate;

a coating composition including metal or semi-metal
oxide particulates, a polymeric binder, and at least one water
soluble coating formulation additive applied to the media
substrate, wherein the water soluble coating formulation
additive enhances at least one coating preparation, coating
application, or media performance property of the media sheet,
and wherein excess unreacted amounts of the water soluble
coating formulation additive have been removed after the
coating composition is applied to the media substrate.

App. Br., Claims Appendix (emphasis added).2
Although the purpose of the Appellant’s invention is to remove
unreacted water soluble coating formulation additives, other formulation
additives that do not interfere with print quality may also be used in the
Appellant’s coating composition. Spec. 10:14-18.

2 Appeal Brief dated October 23, 2008.
Appeal 2009-005399
Application 10/854,350

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The following Examiner’s rejections are before us on appeal:
(1) Claims 24-35 are rejected under 35 U.S.C. § 102(b) as
anticipated by Mishima3 or Ohbayashi.4
(2) Claims 24-35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mishima or Ohbayashi in view of Shaw-Klein.5
(3) Claims 36-38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mishima or Ohbayashi in view of Shaw-Klein and further
in view of Ichinose.6
(4) Claims 36-38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mishima or Ohbayashi in view of Ichinose.
B. ISSUES7
Does the process limitation “wherein excess unreacted amounts of the
water soluble coating formulation additive have been removed after the
coating composition is applied to the media substrate,” recited in claim 24,
patentably distinguish the claimed media sheet from the media sheet
disclosed in Mishima or Ohbayashi?
Is the media sheet recited in claim 24 rendered obvious by the
teachings of Shaw-Klein in combination with Mishima or Ohbayashi?

3 US 6,183,851 B1 to Mishima issued February 6, 2001.
4 US 6,492,005 B1 to Ohbayashi et al. issued December 10, 2002.
5 US 6,303,212 B1 to Shaw-Klein et al. issued October 16, 2001.
6 US 6,550,909 B2 to Ichinose et al. issued April 22, 2003.
7 For rejections (1) and (2), the Appellant argues the patentability of claims
24-35 as a group. Thus, claims 25-35 stand or fall with the patentability of
claim 24. The Appellant does not present separate arguments for rejections
(3) and (4). See App. Br. 18-19. Therefore, we have considered these
grounds of rejection based on the arguments advanced in support of the
patentability of claim 24. See 37 C.F.R. § 41.37(c)(1)(vii) (2009).

Appeal 2009-005399
Application 10/854,350

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C. PRINCIPLES OF LAW
The patentability of a product recited in a product-by-process claim is
determined based on the product, not on the method of making the product.
In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
During patent examination, the pending claims must be interpreted as
broadly as their terms reasonably allow. In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989).
D. ANALYSIS
The Examiner found that Mishima and Ohbayashi each discloses a
coating composition including metal or semi-metal oxide particulates, a
polymeric binder, and at least one water soluble coating formulation
additive. Final 7. Neither Mishima nor Ohbayashi discloses that their
coating composition, when applied to a media substrate, contains an
unreacted amount of the water soluble additive. Thus, the Examiner found
that Mishima and Ohbayashi each discloses a product as recited in claim 24,
i.e., a media sheet comprising a media substrate and a coating composition
which contains no excess unreacted amount of the water soluble additive.
Final 7; Ans. 5-6.8
In the Appeal Brief, the Appellant does not direct us to any error in
the Examiner’s findings that Mishima and Ohbayashi each discloses a
coating composition including metal or semi-metal particulates, a polymeric
binder, and at least one water soluble coating formulation additive.9 Instead,

8 Examiner’s Answer dated November 21, 2008.
9 In the Reply Brief, the Appellant argues that the composition of Mishima’s
coating layer is different from the coating composition recited in claim 24.
Reply Brief dated January 13, 2009, at 2-3. This argument is untimely and
will not be considered on appeal. See Optivus Technology, Inc. v. Ion Beam
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Application 10/854,350

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the Appellant argues that the media sheets of Mishima and Ohbayashi are
chemically different from the claimed media sheet. App. Br. 11, 12. The
Appellant contends:
The product in Mishima, in the absence of a washing step, must
contain excess unreacted amounts of additives by their chemical
nature in accordance with the principles of chemistry. The
natural consequences of reaction kinetics dictate that the
chemicals, including the additives, react to a state of
equilibrium. This equilibrium inherently contains unreacted
amounts of additives. In order to receive the desired benefits of
the additives and drive the reaction with other components to
completion, an excess amount of additives must be added.
Naturally, then, excess unreacted amount of additives must be
present at completion. It is chemically impossible that the exact
amount of additive was added and all of the additive fully
reacted. Thus, the removal of the excess unreacted additives
after the reaction naturally produces a media sheet that is
chemically different from those in Mishima in which the excess
unreacted additives are not removed.

App. Br. 10-11. The Appellant presents the same argument, verbatim, for
Ohbayashi. App. Br. 12.
Significantly, the Appellant’s argument does not address the specific
water soluble additives in the coating compositions of Mishima and
Ohbayashi. To the extent that the Appellant’s argument may be true of
certain reactions, the Appellant has failed to direct us to any credible
evidence establishing that this argument is applicable to the coating

Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for
the first time in the reply brief that could have been raised in the opening
brief is waived) accord Ex parte Scholl, No. 2007-3653, slip op. at 18 n.13
(BPAI March 13, 2008) (designated as “Informative Opinion”),
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf (last visited
April 19, 2010).

Appeal 2009-005399
Application 10/854,350

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compositions of Mishima and Ohbayashi. In particular, the Appellant has
failed to direct us to any credible evidence demonstrating that one of
ordinary skill in the art would have used excess amounts of the water soluble
additives disclosed in Mishima and Ohbayashi to drive the reactions to
completion. See Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092
(Fed. Cir. 1997) (nothing in the rules or in jurisprudence requires the fact
finder to credit unsupported or conclusory assertions); In re Schulze, 346
F.2d 600, 602 (CCPA 1965) (arguments in the brief do not take the place of
evidence in the record).
Furthermore, claim 24 recites that “excess unreacted amounts” of the
water soluble additives are removed after the coating composition is applied
to the media substrate. App. Br., Claims Appendix. To the extent that the
coating compositions in Mishima and Ohbayashi do contain some amount of
unreacted water soluble additives, there is no evidence on this record that the
amount of unreacted water soluble additives deleteriously affects print
quality, and thus, constitutes an “excess” within the scope of claim 24. See,
e.g., Spec. 9:4-6 (free acid and free high valent ions are “substantially
removed”).
Finally, in the obviousness rejections of claim 24, the Examiner relies
on Shaw-Klein in combination with either Mishima or Ohbayashi. Final 2-
3; Ans. 6-7. The Appellant argues that Shaw-Klein teaches removing excess
ion impurities from a polymeric mordant, i.e., an additive, and does not
teach removing excess additive from the recording layer after application to
a media substrate as recited in claim 24. App. Br. 13-14, 16-17.
Shaw-Klein discloses an image-recording layer comprising a binder
and a polymeric mordant, i.e., an additive. Shaw-Klein 2:25-34. Shaw-
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Klein discloses that during synthesis of the polymeric mordant, impurities
may be introduced in the form of salts. Shaw-Klein 3:10-11. According to
Shaw-Klein, image stability under high humidity conditions can be obtained
by reducing the ionic content of the polymeric mordant. See, e.g., Shaw-
Klein 2:42-46, 3:10-16; compare Spec. 4:23-25.
Although Shaw-Klein removes ion impurities from the additive rather
than the coating composition, Shaw-Klein reasonably suggests that
removing impurities, such as ion impurities, can improve print quality.
Thus, to the extent that the coating compositions of Mishima and Ohbayashi
do contain excess unreacted water soluble additives, such as ion impurities,
the teachings of Shaw-Klein reasonably suggest removing these unreacted
additives to improve print quality.
E. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

PL Initial:
sld

Appeal 2009-005399
Application 10/854,350

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