Ex Parte Liu et al

Board of Patent Appeals and Interferences

Jan 30, 2009

10209246 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YINGCHUN LIU, ALEXANDRA BERMEL,
and GREGORY E. MISSELL
____________

Appeal 2008-4447
Application 10/209,246
Technology Center 1700
____________

Decided: 1 January 30, 2009
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-4447
Application 10/209,246

decision rejecting claims 1 and 6 -12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a method of making an ink jet recording
element.
Claim 1 is illustrative of the subject matter on appeal:
1. A method of making an ink jet recording element comprising
providing a support and thereon:

a) forming a subbing layer by coating the surface of the support with a
composition comprising polymeric binder and a borate or a borate
derivative, said borate or borate derivative being present in the coating
composition in an amount of up to 3 g/m2, wherein said polymeric
binder comprises sulfonated polyester dispersion present in the
coating composition for said subbing layer in an amount of up to 3
g/m2, and the weight ratio of said polymeric binder to said borate or
borate derivative is from 0.2: 1 to 3: 1; and

b) forming a porous image-receiving layer having an interconnected
pore structure, over the subbing layer, wherein the composition for the
image-receiving layer comprises inorganic particles, which inorganic
particles form the interconnected pore structure, and a cross-linkable
polymer containing hydroxyl groups, said inorganic particles being
present an amount of up to 50 g/m2 and said cross-linkable polymer
being present in an amount of less than about 25 g/m2, and the weight
ratio of said cross-linkable polymer to said inorganic particles is from
about 5:95 to about 30:70,

wherein borate or borate derivative in the subbing layer essentially
diffuses into the image-receiving layer to cross-link the cross-linkable
polymer in the image-receiving layer.

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The Examiner relies on the following prior art reference to show
unpatentability:
Smith US 5,378,577 Jan. 03, 1995
Missell US 2003/0104172 A1 June 05, 2003

The Examiner has rejected claims 1 and 6-12 under 35 U.S.C. §
102(e) as being anticipated by Missell as evidenced by Smith.
Appellants have not separately argued any of dependent claims 6-12.
Therefore, these claims will stand or fall with representative claim 1.

ISSUE ON APPEAL
Appellants contend that Missell does not anticipate the claims because
the “smaller colloidal inorganic particles” which “cover larger polymeric
particles [of Missell] would not result in the inorganic particles, as compared
to the organic particles, forming the interconnecting pore structure of the
image-receiving layer” (App. Br. 3).
However, the Examiner contends that since the inorganic particles
used to cover the polymeric particles of Missell “are substantially identical
to the claimed silica and alumina”, it then reasonably appears that the
particles of Missell would “function in the same manner” and “inherently
form the claimed interconnecting pore structure” (Ans. 5).
The issue on appeal arising from these contentions of the Appellants
and the Examiner is: have the Appellants shown that the Examiner
reversibly erred in establishing a prima facie case of anticipation;
specifically, that the method of Missell makes a product in which “inorganic
particles form the interconnected pore structure” as recited in claim 1?
We answer this question in the negative.
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PRINCIPLES OF LAW
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Appellants have chosen to describe the invention, in part, in terms of
certain physical characteristics of the resulting product produced by the
process described in their specification. Merely choosing to describe the
invention in terms of variables not present in the prior art does not render the
claimed subject matter patentable. In re Skoner, 517 F.2d 947, 950 (CCPA
1975).
Where the Examiner establishes a reasonable belief that the property
or characteristic recited in the claims would have been inherent to the
product or process, the burden of proof shifts to Appellants to show that this
characteristic or property is not possessed by the prior art. In re Best, 562
F.2d 1252, 1254-55 (CCPA 1977); In re Spada, 911 F.2d 705, 708, (Fed.
Cir. 1990).
Appellants’ attorney’s arguments do not take the place of evidence in
the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).

FINDINGS OF FACTS
Findings of fact (FF) throughout this decision are supported by a
preponderance of the evidence. Additional findings of fact as necessary
appear in the Analysis portion of the opinion.
1. Appellants describe that their invention relates to a subbing layer
for an ink jet recording element (Spec. 1: 10-13).
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2. Appellants do not dispute the Examiner’s findings that Missell, as
evidenced by Smith, describes a method of making an ink jet recording
element as recited in claim 1, including forming a subbing layer as claimed,
except that Appellants contend that the inorganic particles of the image-
receiving layer of Missell do not “form the interconnected pore structure” as
recited in claim 1 (see e.g., Ans. 3-4; Missell, p. 2, ¶ [0031]; p. 3, ¶¶ [0038]
and [0044]; App. Br. 3-5).
3. The disclosure of Smith is expressly incorporated by reference in
Missell (Missell, p. 2, ¶ [0031]). Missell describes the use of porous
polymeric particles covered with a layer of colloidal inorganic particles (id.).
These colloidal inorganic particles are preferably colloidal silica (e.g.,
Smith, col. 2, ll. 10-15). These particles may also be alumina (id.).
4. Appellants’ claims 8 and 9 encompass, and claim 10 recites, that
the inorganic particles may be “colloidal silica”. Appellants’ describe that
the inorganic particles used in the invention may be “silica, alumina,
zirconia, or titania.” (Spec. 4:24-29); with a preference for fumed or
colloidal silica (id.). These particles, when fumed silica, may have an
aggregate particle size less than 300 nm, and when colloidal silica, they
preferably have a particle size of less than 150 nm (Spec. 5:1-5).
5. Missell teaches that the inorganic covered polymer particles may
have a particle size “most preferably less than about 0.6 um [i.e., 600 nm]”
(p. 2, ¶ [0032]; emphasis provided).
6. Appellants’ claims do not recite any particle size for the inorganic
particles.
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7. Since the image-receiving layer of Missell is porous, and the
polymeric particles covered by inorganic particles (preferably of colloidal
silica) are porous, Missell fairly describes that the inorganic particles at least
in part form an interconnected pore structure in the image-receiving layer.
ANALYSIS
We are in agreement with the Examiner that the method of Missell
appears to be substantially identical to the claimed process under 35 U.S.C.
§ 102 (see, e.g., Ans. 4-5; FF 1-5 above).
Appellants only argument is that the inorganic particles of Missell do
not form an interconnected pore structure. Appellants however do not
dispute that Missell’s method of making an ink jet recording element process
forms a porous image-receiving layer having an interconnected pore
structure (App. Br. 4). Appellants only argue that the inorganic particles per
se do not form the interconnected pore structure (id.) This argument is not
persuasive for the following reasons.
The claim recites the porous image receiving layer “comprises”
inorganic particles. It is not in dispute that the porous image receiving layer
of Missell also comprises inorganic particles. The claim does not in any
way limit the interconnected pore structure as being formed solely from the
inorganic particles, nor even that all of the inorganic particles present in the
layer form the interconnected pore structure. The Examiner’s position is
therefore reasonable, as it would have been expected that at least some of the
inorganic particles covering the porous polymeric particles of Missell “form
the interconnected pore structure” in Missell.
Thus, the burden was properly shifted to Appellant to prove that the
property as claimed is not inherent in the prior art process of forming the
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image-receiving layer taught in Missell. The PTO has no reasonable ability
to manufacture and determine whether there is, in fact, a patentable
difference between the prior art product made in Missell’s process and the
product made in the claimed process. Under the circumstances, it is
reasonable to shift the burden to Appellants to show that the claimed process
results in an ink jet recording element image-receiving layer that is, in fact,
patentably different from the image-receiving layer produced by the process
of Missell. In re Best, 562 F.2d at 1255-1256.
Appellants have not directed us to evidence sufficient to refute the
Examiner’s finding the process of Missell (as evidenced by Smith) would
have created the claimed product wherein the inorganic particles form an
interconnected pore structure as recited. Instead, Appellants provide
unsupported attorney argument as to a skilled artisan’s conclusions
regarding the teachings of Missell and Smith (App. Br. 3-5). An attorney’s
argument is no substitute for objective evidence against the Examiner’s
finding. Pearson, 494 F.2d at 1405. Further, it has not escaped us that both
Appellants and Missell have the same assignee. Manifestly, no one is in
better position than Appellants to clarify on this record the pore structure of
the porous image-receiving layer fairly described by Missell.
Therefore, for the foregoing reasons and those stated in the Answer,
we agree with the Examiner that claim 1 is anticipated by Missell, as
evidenced by Smith.
CONCLUSION
Appellants have not shown that the Examiner reversibly erred in
finding that the method of Missell makes a product which has “inorganic
particles form the interconnected pore structure” as recited in claim 1.
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ORDER
The Examiner’s rejection of claims 1 and 6-12 under 35 U.S.C.
§ 102(e) as being anticipated over Missell as evidenced by Smith is
affirmed.
The Examiner’s decision is affirmed.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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PAUL A. LEIPOLD
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201
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