10406967 (B.P.A.I. Apr. 13, 2010)

Ex Parte Bi et al

Board of Patent Appeals and InterferencesApr 13, 2010

10406967 (B.P.A.I. Apr. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte YUBAI BI, PIERRE-ALAIN BRUGGER, MARTIN STAIGER, ROLF STEIGER, and KARL PETERNELL ________________ Appeal 2009-009694 Application 10/406,967 Technology Center 1700 ________________ Decided: April 13, 2010 ________________ Before TERRY J. OWENS, PETER F. KRATZ, and MARK NAGUMO, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 4-9, 11, 12, 14, 15 and 32-37, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-009694 Application 10/406,967 2 The Invention The Appellants claim a coated paper for ink jet printing. Claim 1 is illustrative: 1. A coated paper, suitable for printing ink jet inks thereon and providing a photographic-like print, comprising: (a) a substrate comprising polyethylene-extruded photobase; (b) a first ink-receiving layer disposed on said substrate and comprising a first cationic silica, said first cationic silica comprising amorphous silica, mixed with a first cationic- inducing compound and a binder, wherein said amorphous silica has a primary particle size of about 5 to 30 nm and an aggregated particle size between about 50 and 500 nm; and (c) a second gloss-enhancing layer disposed on said first ink-receiving layer and comprising a second cationic silica, said second cationic silica comprising spherical silica, mixed with a second cationic-inducing compound, said first cationic- inducing compound being the same or different than said second cationic-inducing compound, wherein said first cationic- inducing compound consists essentially of a hydroxyl- containing polyvalent metal salt, wherein said spherical silica has a particle size of about 25 to 100 nm; wherein said coated paper provides a photoparity image that is essentially equivalent to a silver halide photograph when printed with an ink jet printer. The References Cousin 4,554,181 Nov. 19, 1985 Ogawa 5,750,200 May 12, 1998 Liu 5,958,168 Sep. 28, 1999 Anderson 6,096,469 Aug. 1, 2000 Ohbayashi 6,492,005 B1 Dec. 10, 2002 Appeal 2009-009694 Application 10/406,967 3 Stork 2004/0189778 A1 Sep. 30, 2004 (PCT filed Aug. 22, 2002) Nissan Chemical America Corp., Snowtex® 1-4 at http://www.snowtex.com/snowtex.htm (© 2001-2004) (hereafter Nissan). The Rejections Claims 1, 4-9, 11, 12, 14, 15 and 32-37 stand rejected under 35 U.S.C. § 103 over Ogawa in view of Nissan, Liu, Cousin, Ohbayashi, Stork and Anderson. OPINION We affirm the rejection. The Appellants argue the claims as a group (Br. 6-12).1 We therefore limit our discussion to one claim, i.e., claim 1, which is the sole independent claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Issue Have the Appellants indicated reversible error in the Examiner’s determination that the applied prior art would have rendered prima facie obvious, to one of ordinary skill in the art, an ink receiving layer comprising cationic silica which comprises amorphous silica mixed with a cationic- inducing compound consisting essentially of a hydroxyl-containing polyvalent metal salt? Findings of Fact Ogawa discloses an ink jet recording sheet comprising an ink receiving layer including a pigment which can be synthetic amorphous silica or colloidal silica (col. 5, ll. 54-60; col. 6, ll. 39-49). Cationic colloidal 1 The Appellants rely, regarding dependent claim 37, upon a limitation in independent claim 1 from which claim 37 depends (Br. 6). Appeal 2009-009694 Application 10/406,967 4 pigment particles are preferred, and preferably they are combined with a cationic dye-fixing agent which is a secondary amine, a tertiary amine or a quaternary ammonium salt and can be Sumirez® resin 1001 (col. 7, ll. 10-12, 27-29; col. 8, ll. 6-15; col. 20, l. 52). Liu discloses an ink jet recording material comprising an ink receiving layer formed by applying to a substrate a coating liquid prepared by pulverize-dispersing agglomerate pigment particles (particle size about 1 µm to about 50 µm) in a cationic resin-containing liquid to such an extent that the average particle size of the pulverize-dispersed pigment particles is 1 µm or less, more preferably 10-300 nm (col. 3, ll. 59-67; col. 4, ll. 63-65; col. 6, ll. 18-26). The pigment particles can be anionic silica colloidal particles (col. 4, l. 58 – col. 4, l. 6; col. 6, ll. 1-4). The disclosed cationic resins include polyalkylenepolyamines and polypropylenepolyamines (col. 7, ll. 55-60) (which are among the Appellants’ cationic-inducing compounds (Spec. 6:1-2, 16-18)). Liu believes that the cationic resin covers substantially all of the silica particle surfaces (col. 5, ll. 21-23). The ink receiving layer provides the ink jet recording material with high color density, excellent ink absorption, excellent gloss and high moisture and water resistance, the high moisture and water resistance being due to the cationic resin (col. 4, ll. 56-58; col. 5, ll. 7-11, 41-45). Cousin discloses an ink jet recording sheet “comprising a substrate having a recording surface including a water soluble polyvalent metal salt and a cationic polymer wherein the polymer contains cationic groups which are available for ionically interacting with an anionic dye and insolubilizing it” (col. 2, ll. 39-44). The polyvalent metal salt can be aluminum chlorohydrate (col. 5, l. 67 – col. 6, l. 1) (which is one of the Appellants’ Appeal 2009-009694 Application 10/406,967 5 hydroxyl-containing polyvalent metal salts (Spec. ¶ 0030)). The cationic polymers preferably “are polymeric amines such as polymers of quaternary amines or amines which are converted to quaternary amines under acid conditions” (col. 4, ll. 25-28). The cationic polymer forms “a network of polymeric bridges between the substrate and the dye which tends to improve water fastness and reduce feathering” (col. 3, ll. 27-31). “As a result of the salt addition, the dye contained in the ink is set (insolubilized) more rapidly and concomittantly [sic] there is substantially less tendency for set-off” (col. 3, ll. 8-11). Analysis The Appellants argue that “there is no motivation for one skilled in the art to combine Cousin, which teaches or suggests nothing about cationizing silica layers on a printable substrate, with either or both of Liu, which discloses an amorphous silica layer, or Ogawa, which discloses a spherical silica layer. Based on what Cousin actually teaches (i.e., treating substrates with cationic resins AND polyvalent metal salts), it is submitted that one skilled in the art would not conclude from Cousin that polyvalent metal salt ought to be substituted for the cationic resin in Liu’s amorphous silica layer. [Br. 9] Liu teaches that the cationic resin provides high moisture and water resistance (col. 4, ll. 56-58). Cousin teaches that the combination of the polyvalent metal salt and the cationic polymer has the benefits of improved water fastness and reduced feathering provided by the cationic polymer and rapid dye insolubilization and substantially less tendency for set-off provided by the polyvalent metal salt (col. 3, ll. 8-11, 27-31). Hence, one of ordinary skill in the art, through no more than ordinary creativity, would have used, as Ogawa’s pigment particles, Liu’s pigment particles coated not Appeal 2009-009694 Application 10/406,967 6 only with a cationic resin to provide moisture and water resistance in addition to the benefits of high color density and excellent gloss provided by the pulverize-dispersed particles (Liu, col. 4, l. 56 – col. 5, l. 11; Ogawa, col. 8, ll. 6-18; col. 20, l. 52), but also with a polyvalent metal salt to provide the additional benefit of rapid dye insolubilization and substantially less tendency for set-off (Cousin, col. 3, ll. 8-11, 28-31). See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). The Appellants argue that Cousin does not disclose that the polyvalent metal salt stabilizes the pigment dispersion at a slightly acidic condition to keep the silica from agglomerating prematurely and thereby provide a glossy surface (Br. 10). To establish a prima facie case of obviousness, references need not be combined for the purpose of solving the problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). Liu’s particle pulverizing in the presence of a cationic resin prevents particle agglomerization and thereby provides a glossy surface (col. 4, l. 63 – col. 5, l. 11; col. 5, ll. 24-33). One of ordinary skill in the art would have combined Cousin’s polyvalent metal salt with the cationic resin to provide the additional benefit of rapid dye insolubilization and substantially less tendency for set-off (Cousin, col. 3, ll. 8-11, 28-31). Appeal 2009-009694 Application 10/406,967 7 The Appellants argue that neither Stork nor Anderson teaches or suggests using a hydroxyl containing polyvalent metal salt to treat silica (Br. 10-11; Reply Br. 7-8). That suggestion would have been provided by Ogawa, Liu and Cousin as discussed above. Conclusion of Law The Appellants have not indicated reversible error in the Examiner’s determination that the applied prior art would have rendered prima facie obvious, to one of ordinary skill in the art, an ink receiving layer comprising cationic silica which comprises amorphous silica mixed with a cationic- inducing compound consisting essentially of a hydroxyl-containing polyvalent metal salt. DECISION/ORDER The rejection of claims 1, 4-9, 11, 12, 14, 15 and 32-37 under 35 U.S.C. § 103(a) over Ogawa in view of Nissan, Liu, Cousin, Ohbayashi, Stork and Anderson is affirmed. It is ordered that the Examiner’s decision 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)(1)(v). AFFIRMED kmm HEWLETT-PACKARD COMPANY INTELLECTUAL PROPERTY ADMINISTRATION 3404 E. HARMONY ROAD MAIL STOP 35 FORT COLLINS, CO 80528