Ex Parte Deng et al

Patent Trial and Appeal Board

Jan 31, 2018

12985408 (P.T.A.B. Jan. 31, 2018)

United States Patent and Trademark Office
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.
12/985,408 01/06/2011 Lan Deng 70000-US-NP 4289
21898 7590 02/02/2018
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
REDDY, SATHAVARAM I
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAN DENG, BRIAN RUSSELL EINSLA,
CHAO-JEN CHUNG, THOMAS WILLIAM KERMIS, and
REBECCA LUANN SMITH
Appeal 2017-004657
Application 12/985,408
Technology Center 1700
Before DONNA M. PRAISS, WESLEY B. DERRICK, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—4. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 In explaining our decision, we make reference to the Specification filed
Jan. 6, 2011 (“Spec.”), the Final Office Action entered Feb. 26, 2016 (“Final
Act.”), the Appeal Brief filed July 25, 2016 (“App. Br.”), the Examiner’s
Answer entered Nov. 22, 2016 (“Ans.”), and the Reply Brief filed Jan. 19,
2017 (“Reply Br.”).
Appeal 2017-004657
Application 12/985,408
The subject matter of this appeal relates to recording material, and
specifically, recording material for formation of an image typically effected
through the use of heat, pressure, or combinations thereof. Spec. 1:6—19.
Claims 1 and 4 are illustrative (disputed elements italicized and
paragraphing added):
1. A recording material comprising:
a) a support comprising at least one colored surface; and,
disposed thereon,
b) a layer comprising polymeric particles having a
core/shell structure, said particles selected from the group
consisting of:
(i) particles having an outermost polymer shell having a
calculated Tg of from 40 °C to 80 °C and
(ii) particles having an inner polymer shell having a
calculated Tg of from 40 °C to 130 °C and an outer polymer
shell having a calculated Tg of from -55 °C to 50 °C;
wherein the calculated Tg of said outer polymer shell is
lower that of said inner polymer shell;
said particles comprising, when dry, at least one void;
wherein said colored surface has sufficient color density
to be visibly contrasting to a surface of the subsequent layer
comprising polymeric particles disposed thereon; and
wherein the formation of an image on said recording
material is effected through the use of heat, pressure, or
combinations thereof
4. A recording material comprising:
a) a support; and, disposed thereon,
b) a layer comprising a permanent colorant-and
polymeric particles having a core/shell structure, said particles
selected from the group consisting of:
(i) particles having an outermost polymer shell having a
calculated Tg of from 40 °C to 80 °C and (ii) particles having
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Application 12/985,408
an inner polymer shell having a calculated Tg of from 40 °C to
130 °C and an outer polymer shell having a calculated Tg of
from -55 °C to 50 °C; wherein the calculated Tg of said outer
polymer shell is lower that of said inner polymer shell;
said particles comprising, when dry, at least one void,
wherein said permanent colorant has a visible color that
was substantially invariant during an application or drying of
the layer on the support, storage of the recording material, and
formation of an image using said recording material with
an agent selected from the group consisting of heat, pressure,
and combinations thereof
App. Br. 15,16 (Claims Appendix). Independent claim 2 is similar to claim
1, but additionally recites “a surface roughness of less than 3.0 microns,”
and does not require the colored surface to have “sufficient color density to
be visibly contrasting to a surface of the subsequent layer comprising
polymeric particles disposed thereon” as recited in claim 1. Id. at 15—16.
The Examiner maintains, and Appellants2 appeal, the following
rejections under 35 U.S.C. § 103(a):
1. Claim 4 stands rejected over Blankenship3 in view of Nelli;4
2. Claim 1 stands rejected over Blankenship in view of Nelli and
further in view of Behl;5 and
3. Claims 2 and 3 stand rejected over Blankenship in view of Nelli
and further in view of Behl and Fillion.6
2 Appellants identity the real party in interest as The Dow Chemical
Company. App. Br. 3.
3 Blankenship et al., US 6,139,961, iss. Oct. 31, 2000 (“Blankenship”).
4 Nelli, US 2008/0075869 Al, pub. Mar. 27, 2008 (“Nelli”).
5 Behl, US 6,387,500 Bl, iss. May 14, 2002 (“Behl”).
6 Fillion et al., US 2004/0180184 Al, pub. Sept. 16, 2004 (“Fillion”).
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Application 12/985,408
Ans. 2; App. Br. 6. Appellants argue the subject matter of claims 2 and 3 as
a group. App. Br. 12—14. In accordance with 37 C.F.R. § 41.37(c)(l)(iv),
claim 3 will stand or fall together with claim 2 from which it depends.
OPINION
The dispositive issue for this appeal is whether the Examiner erred in
finding that the recording material of the cited prior art is analogous art that
encompasses the claimed recording material.
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejections.
Rejection 1: Claim 4
It is the Examiner’s position that Blankenship in view of Nelli
discloses the subject matter of claim 4 for the reasons stated on pages 2-4 of
the Final Action and pages 3^4 of the Answer.
In the Appeal Brief, Appellants argue that neither Blankenship nor
Nelli is analogous art because each provides images via the application of an
external ink component rather than via an agent selected from the group
consisting of heat, pressure, and combinations thereof. App. Br. 7.
According to Appellants, coated paper for conventional printing, such as
Blankenship and Nelli, is materially different from the coated paper for
thermal recording claimed by Appellants “since (1) they rely on different
sources of the images (applied ink vs. revealing a visible image via
transparentization of a specific coating ingredient), (2) they require different
coatings properties to effect image formation, and (3) they require different
equipment to provide an image.” Id. at 7—8. Appellants distinguish claim 4
over the combination of references on the basis that “Nelli’s invention would
not work as a thermal printing medium since there is no mechanism for
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Application 12/985,408
transparentization of selected portions of his sheet.” Id. at 9 (emphasis
omitted). Appellants further assert that “the use of a thermal printer device
or any other heating device to dry an externally applied ink does not
motivate one to appellants’ recording sheet or formation of an image by the
application of heat or pressure, or a combination thereof.” Id.
The difficulty with Appellants’ arguments is that none of the asserted
differences between coated paper for thermal recording and coated paper for
conventional printing is recited in claim 4 in a manner that distinguishes the
claimed subject matter from the cited prior art. See Ans. 3^4. Appellants do
not identify where in claim 4 “transparentization of a specific coating
ingredient” is required as the source of the image, nor do Appellants identify
where in claim 4 “different coatings properties” or “different equipment to
provide an image” are recited. See App. Br. 8. Limitations not appearing in
the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
In the Reply Brief, Appellants contend that their “invention requires
that ‘the formation of an image on said recording material is effected
through the use of heat, pressure, or combinations thereof.’” Reply Br. 2,
quoting claim 1. However, Appellants concede that Nelli discloses a coated
paper as a base and that Nelli discloses that the coatings result in thermal
printer inks drying quickly. App. Br. 9. Appellants do not adequately
explain why Nelli’s thermal printer and ink does not form an image on
Nelli’s coated paper recording material “through the use of heat” as asserted
or “with an agent selected from the group consisting of heat, pressure, and
combinations thereof’ as recited in claim 4. Properly construed, claim 4
does not preclude ink, a thermal printer, or applying heat to form an image.
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Appellants’ assertion that the references are not analogous to their
invention (Reply Br. 2) is not persuasive because the claim does not
preclude recording material used with ink and, thus, encompasses the
recording material from the combined teachings of Blankenship and Nelli.
The analogous-art test requires that a reference is either in the field of the
applicant’s endeavor or is reasonably pertinent to the problem with which
the inventor was concerned in order to rely on that reference as a basis for
rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). While
Appellants argue that the claimed recording sheet and the recording sheet of
the prior art rely on different techniques to provide images on their
respective recording sheets (App. Br. 7), Appellants do not dispute the
Examiner’s finding (Final Act. 4; Ans. 3) that Blankenship and Nelli are in
the same field as Appellants’ endeavor (the field of coated paper for
printing). We agree with the Examiner that Appellants’ invention as
claimed is also in the field of coated paper for printing, the same field of art
as Blankenship and Nelli (Ans. 3). The Examiner’s determination that
Blankenship and Nelli are in the same field of endeavor as Appellants is
supported by the Specification, which similarly describes the invention
broadly as a recording material comprising a support and a layer disposed
thereon comprising a permanent colorant and polymeric particles having a
core/shell structure with certain glass transition temperatures. See, e.g.,
Spec. 2:13—17. The support may be paper (Spec. 2:23—24), the specifics of
the layer that Appellants do not dispute are disclosed by Blankenship, and
“using said recording material with an agent selected from the group
consisting of heat, pressure, and combinations thereof’ further recited in
claim 4 is met by the use of heat in the printing process of Nelli.
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Accordingly, based on the appeal record, we are not persuaded of reversible
error in the Examiner’s rejection of claim 4 over Blankenship and Nelli.
Rejection 2: Claim 1
It is the Examiner’s position that Blankenship in view of Nelli and
Behl discloses the subject matter of claim 1 for the reasons stated on pages
4—9 of the Final Action and pages 4—6 of the Answer.
Appellants argue that Blankenship, Nelli, and Behl are not analogous
art because each provides images via the application of an external ink
component rather than “via an agent selected from the group consisting of
heat, pressure, and combinations thereof.” App. Br. 10; Reply Br. 4.
Regarding the combination of references, Appellants distinguish
Blankenship on the basis that Blankenship does not disclose the support
having a colored surface that has sufficient color density to be visibly
contrasting to a surface of the subsequent layer comprising polymeric
particles disposed thereon as required by the claim. App. Br. 10-11; Reply
Br. 4—5. Appellants distinguish Nelli on the basis that “Nelli refers to
providing an image via the use of an external ink regardless of the
production method used.” App. Br. 11; Reply Br. 5. Appellants distinguish
Behl on the basis that “Behl fails to provide any particles much less the
particles of appellants’ claim 1, having the potential to change from opacity-
engendering polymeric particles to clear particles.” App. Br. 11; Reply Br.
5.
The difficulty with Appellants’ argument that the references are non-
analogous is that Appellants do not identify where in claim 1 inks are
precluded by the claim. Limitations not appearing in the claims cannot be
relied upon for patentability. In re Self, 671 F.2d at 1348. As discussed
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above in connection with claim 4, the claimed use of the recording material
with, e.g., heat does not preclude the use of inks in Nelli’s process that uses
a thermal printer. Appellants’ additional arguments are not persuasive
because they distinguish each of the applied references rather than address
the rejection which is over the combination of the references. One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Moreover, claim 1 does not even require that the particles have
the potential to change from opacity-engendering polymeric particles to
clear particles as argued by Appellants (App. Br. 11; Reply Br. 5).
Accordingly, we are not persuaded of reversible error by the Examiner in
rejecting claim 1 over the combination of Blankenship, Nelli, and Behl.
Rejection 3: Claims 2 and 3
It is the Examiner’s position that Blankenship in view of Nelli, Behl,
and Fillion discloses the subject matter of claims 2 and 3 for the reasons
stated on pages 7—5 of the Final Action and pages 6—8 of the Answer.
Appellants argue that Blankenship, Nelli, Behl, and Fillion are not
analogous art because each provides images via the application of an
external ink component rather than “via an agent selected from the group
consisting of heat, pressure, and combinations thereof.” App. Br. 12; Reply
Br. 6. Regarding the combination of references, Appellants distinguish
Blankenship on the basis that Blankenship does not disclose the support
having a colored surface that has sufficient color density to be visibly
contrasting to a surface of the subsequent layer comprising polymeric
particles disposed thereon. App. Br. 13; Reply Br. 7. Appellants distinguish
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Nelli on the basis that “Nelli refers to providing an image via the use of an
external ink regardless of the production method used.” App. Br. 13; Reply
Br. 7. Appellants distinguish Behl on the basis that “Behl fails to provide
any particles much less the particles of appellants’ claim 2—3, having the
potential to change from opacity-engendering polymeric particles to clear
particles.” App. Br. 13; Reply Br. 7. Appellants distinguish Fillion on the
basis that Fillion does not teach or suggest “surface roughness and porosity
that are suitable for thermal recording sheets.” App. Br. 13—14; Reply Br. 8.
The difficulty with Appellants’ argument that the references are non-
analogous is that Appellants do not identify where in claim 2 inks are
precluded by the claim. Limitations not appearing in the claims cannot be
relied upon for patentability. In re Self, 671 F.2d at 1348. As discussed
above in connection with claims 1 and 4, the claimed use of the recording
material with, e.g., heat does not preclude the use of inks in Nelli’s process
that uses a thermal printer. Appellants’ additional arguments are not
persuasive because they distinguish each of the applied references rather
than address the rejection which is over the combination of the references.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Keller, 642 F.2d at 426; In re Merck & Co., 800 F.2d at 1097. Moreover,
claim 2 does not even require (1) that the colored surface be visibly
contrasting to a surface of the subsequent layer comprising polymeric
particles disposed thereon or (2) that the particles have the potential to
change from opacity-engendering polymeric particles to clear particles as
argued by Appellants (App. Br. 13; Reply Br. 7). Accordingly, we are not
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persuaded of reversible error by the Examiner in rejecting claim 2 over the
combination of Blankenship, Nelli, Behl, and Fillion.
Conclusion
For the foregoing reasons, we affirm all of the Examiner’s rejections
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
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