Ex Parte Chen

Board of Patent Appeals and Interferences

Apr 9, 2010

11084571 (B.P.A.I. Apr. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIENTEH CHEN
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Appeal 2009-015417
Application 11/084,571
Technology Center 1700
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Decided: April 09, 2010
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
ADRIENE LEPIANE HANLON, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-19. We have
jurisdiction under 35 U.S.C. § 6(b).
Claims 1, 16, and 19 are illustrative:

Appeal 2009-015417
Application 11/084,571

1. A method of making a fluid for coating an inkjet recording
medium, the method comprising combining mineral oxide particles, a
solvent, and a silylated polymeric coupling agent for a period of time
sufficient to permit significant coupling of the agent and the particles,
thereafter combining with the particles a polymeric binder that is miscible
with the agent to form the fluid.

16. The method of claim 1, wherein the pH of the combined agent,
solvent, and particles is decreased during the period.

19. The method of claim 1, wherein the combined agent, solvent,
and particles are mixed for a period of time sufficient to permit the viscosity
to decrease to a value that does not substantially decrease over time.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Maruyama 4,617,239 Oct. 14, 1986
Purbrick 2002/0081419 A1 Jun. 27, 2002

Appellant’s claimed invention is directed to a method of making a
fluid for coating an inkjet recording medium. The method entails combining
mineral oxide particles, a solvent, and a silylated polymeric coupling agent
for a sufficient time to allow significant coupling of the coupling agent and
the particles. The mixture is then combined with a polymeric binder.
Appealed claims 1-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Purbrick in view of Maruyama.
Appellant presents separate, substantive arguments for only claims 16,
17, and 19. Accordingly, claims 2-15 and 18 stand or fall together with the
claim 1.
We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. In so doing, we agree with the Examiner that
the subject matter of claims 1-15 and 18 would have been obvious to one of
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Application 11/084,571

ordinary skill in the art within the meaning of § 103 in view of the applied
prior art. Accordingly, we will sustain the Examiner’s rejection of these
claims for essentially those reasons expressed in the Answer. We will not,
however, sustain the Examiner’s rejection of claims 16, 17, and 19.
We consider first the Examiner’s § 103 rejection of claims 1-15 and
18. There is no dispute that Purbrick, like Appellant, discloses a method of
making a fluid for coating an inkjet recording medium which comprises
mixing Appellant’s four components, namely, mineral oxide particles, a
solvent, a silylated polymeric coupling agent and a polymeric binder.
Appellant also does not contest the Examiner’s legal conclusion that it
would have been obvious for one of ordinary skill in the art to use the
particular silylated polymeric coupling agents disclosed by Maruyama in the
composition of Purbrick.
The principal argument advanced by Appellant is that “while Purbrick
may teach a method involving coating fluid ingredients also recited by the
present claims” (App. Br. 13, second para.), neither of the applied references
teaches the particular method defined by the appealed claims. In particular,
Appellant emphasizes that neither Purbrick nor Maruyama discloses first
combining the oxide particles, solvent and silylated coupling agent for a
sufficient time to permit significant coupling of the agent and particles
before the polymeric binder is introduced into the mixture. Appellant urges
that Purbrick only teaches mixing all the claimed components together.
In general, it is a matter of prima facie obviousness for one of
ordinary skill in the art to modify or alter the order of addition or mixing of
known ingredients in making a known composition. See In re Burhans, 154
F.2d 690, 692 (CCPA 1946); Ex parte Rubin, 128 USPQ 440, 441-42 (BPAI
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Application 11/084,571

1959). In such cases, the burden is on the Applicant to demonstrate with
objective evidence that changing the order of addition of ingredients
produces a new, unexpected result.
While Appellant submits that the claimed method “allows the use of a
relatively small amount of silylated coupling agent, which can be expensive
and tends to intrinsically crosslink, resulting in gelation” (App. Br. 14, first
full para.), Appellant has not proffered any objective evidence in support of
this contention, nor any evidence that any smaller amount of coupling agent
used would have been unexpected to one of ordinary skill in the art. Also,
Appellant does not define the claim recitation “significant coupling” in any
way that indicates that the coupling resulting from the claimed method is
appreciably different than the coupling achieved by the method fairly
disclosed by Purbrick. In addition, Appellant has not established that the
final coating on an inkjet recording medium produced by the claimed
method is patentably distinct from the coating produced by the method of
Purbrick. Also, Appellant has presented no evidence to factually support the
argument that “[t]hose skilled in the art will recognize that, while a
crosslinking agent reacts with inorganic oxide in Purbrick and in the claimed
process, the nature of the reaction and the resulting material is quite different
between the two” (App. Br. 14, second full para.). Accordingly, the evidence
of obviousness presented by the Examiner has not been rebutted by
Appellant.
The Examiner’s § 103 rejection of separately argued claims 16, 17,
and 19 is another matter. Claims 16 and 17 require that the pH of the initial
composition is decreased during a period of time. The Examiner states that
the “pH requirements are inherent in Purbrick because Purbrick contains
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substantially identical components that are found in the current invention”
(Ans. 6, first full para.). However, Appellant’s Specification discloses that
acid is added to the composition to decrease the pH, and the Examiner has
pointed to no corresponding disclosure in Purbrick regarding the addition of
an acid to the composition. Consequently, the Examiner’s finding of
inherency lacks the requisite factual support. Likewise, the Examiner has
not factually supported the conclusion of obviousness regarding the claim 19
requirement of mixing the composition for a sufficient time to permit the
viscosity to decrease to a value that does not substantially decrease over
time. Indeed, the Examiner does not address Appellant’s separate argument
for claim 19 in the Answer.
In conclusion, based on the foregoing, the Examiner’s § 103 rejection
of claims 1-15 and 18 is sustained and the rejection of claims 16, 17, and 19
is reversed. The Examiner’s decision rejecting the appealed claims is
affirmed-in-part.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED-IN-PART

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