Ex Parte Pal et al

Patent Trial and Appeal Board

Oct 24, 2017

13273895 (P.T.A.B. Oct. 24, 2017)

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.
13/273,895 10/14/2011 Lokendra Pal 82829461 4239
22879
HP Tnr
7590 10/26/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
STACHEL, KENNETH J
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOKENDRA PAL, XULONG FU,
XIAOQI ZHOU, and RONALD J. SELENSKY
Appeal 2016-007423
Application 13/273,8951
Technology Center 1700
Before CATHERINE Q. TIMM, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL2
This is an appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 11—18 and 21—25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter of this appeal relates to surface treatments used in
the production of print media to improve image quality and reduce the
1 Appellants identify the real party in interest as Hewlett-Packard
Development Company, LP. App. Br. 2.
2 In our analysis, we make reference to the Specification filed Oct. 14, 2011
(“Spec.”), the Final Office Action dated July 29, 2015 (“Final Act.”), the
Appeal Brief filed Dec. 4, 2015 (“App. Br.”), the Examiner’s Answer dated
May 31, 2016 (“Ans.”), and the Reply Brief filed July 27, 2016 (“Reply
Br.”).
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Application 13/273,895
drying times after printing. Spec. 1. More particularly, it relates to a
surface treatment solution comprising a number of water soluble, multi­
valent salts, a number of water dispersible, multi-valent salts, a binder that
binds the water dispersible, multi-valent salts to a medium and to the
elements within the surface treatment solution, and an organosilane. Id. 1 8.
Claim 11, the sole independent claim, is representative (bracketed
numbering and lettering, indentions, and italics added):
11. A surface treatment solution comprising:
[1] a number of water soluble, multi-valent, organic acid
salts;
[2] a number of water dispersible, multi-valent, organic
acid salts;
[3] an organosilane; and
[4] a binder that binds the water dispersible, multi-valent,
organic acid salts to a medium,
[a] wherein the binder also binds the water
dispersible, multi-valent, organic acid salts to the water
soluble, multi-valent, organic acid salts within the surface
treatment solution, and
[b] the binder binds the water dispersible, multi­
valent organic acid salts to the organosilane within the
surface treatment solution;
wherein the surface treatment solution is prepared and
applied as a single solution.
App. Br. 29 (Claims Appendix).
The Examiner maintains, and Appellants appeal, the following
rejections:
1. Claims 11—18 and 21—25 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description
requirement;
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2. Claims 11-18 and 21-25 under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and
distinctly claim the subject matter which the inventor regards as
the invention;
3. Claims 11, 12, 14, 16—18, 21, and 23—25 under
35 U.S.C. § 103(a) as obvious over Koike,3 Zhou,4 Keiser,5 and
Lee;6
4. Claim 13 under 35 U.S.C. § 103(a) as obvious over
Koike, Zhou, Keiser, and Sugiyama;7 and
5. Claim 15 under 35 U.S.C. § 103(a) as obvious over
Koike, Zhou, Keiser, and Wiese.8
Ans. 2; App. Br. 8. Appellants do not appeal the Examiner’s rejection of
claim 22 under 35 U.S.C. § 103(a) as obvious over Koike, Zhou, Keiser,
Wiese, and Furholz.9 Final Act. 18—21. In accordance with
37 C.F.R. § 41.37(c)(l)(iv), claims separately argued will be addressed
separately.
ANAFYSIS
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm.
3 Koike et al., US 2005/0019506 Al, pub. Jan. 27, 2005 (“Koike”).
4 Zhou et al., WO 2009/145790 Al, pub. Dec. 3, 2009 (“Zhou”).
5 Keiser et al., US 2011/0046239 Al, pub. Feb. 24, 2011 (“Keiser”).
6 Kenneth Fee, How Oil Dispersants Work, Centre for Offshore Oil, Gas and
Energy Research, Fisheries and Oceans Canada, Bedford Institute of
Oceanography (“Fee”).
7 Sugiyama et al., US 2003/0008115 Al, pub. Jan. 9, 2003 (“Sugiyama”).
8 Wiese et al., US 2006/0191653 Al, pub. Aug. 31, 2006 (“Wiese”).
9 Furholz et al., US 2009/0233016 Al, pub. Sept. 17, 2009 (“Furholz”).
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Rejection 1: Written Description
It is the Examiner’s position that, for the reasons stated on pages 2-4
of the Final Office Action, each of the claims lacks written description
support for the claim 11 recitations “wherein the surface . . . solution is
prepared and applied as a single solution” and “wherein the binder also
binds the water dispersible, multi-valent, organic acid salts to the water
soluble, multi-valent, organic acid salts within the surface treatment
solution.” For the reasons stated on pages 4—6 of the Final Office Action,
the Examiner also finds that dependent claims 21—25 lack written
description support for “further comprising a dispersant,” “salt of
polyacrylic acid,” “any anions in solution are non-halogens,” “the solution
has a pH between 6.5 and 7.5,” and “free of boron,” respectively. We
address each of the recited terms in turn below.
Claim 11 “single solution ”
Regarding claim 11, Appellants argue that the Examiner erred because
“[t]he specification describes the formulation for solutions 17-19 found in
paragraphs 0043 -0045 and Table 1 to include all the recited elements of the
claimed [invention].” App. Br. 9. Appellants assert that “one of ordinary
skill in the art would understand the formulae listed in Table 1 as describing
a range of formulations, not all of which are covered by the claimed subject
matter.” Id. at 10. According to Appellants, the terminology, including “the
surface treatment solution comprises,” is “clear that all these components are
part of a single solution.” Id. (emphasis omitted).
The Examiner responds that the Specification never uses the phrase
“single solution” and does not disclose what component is added to what
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other component to form one or more sub combinations or all together to
comprise the surface treatment solution as a single solution. Ans. 6—7.
We agree with Appellants that the Specification adequately discloses
all possible components of the claimed surface treatment solution and
conveys with reasonable clarity to those skilled in the art that the
components of the solution are contained in the same single solution. See
Agilent Techs., Inc. v. Asymetrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009)
(“Adequate written description means that the applicant, in the specification,
must ‘convey with reasonable clarity to those skilled in the art that, as of the
filing date sought, he or she was in possession of the [claimed] invention’”)
(internal citation omitted). We note that the term “solution,” which is
explicitly disclosed in the Specification, is a singular term. Spec. 27, 28,
43—45, Table 1.
Claim 11 “the binder also binds ...”
Appellants argue that the Examiner erred in rejecting claim 11 and its
dependent claims because paragraphs 27 and 46 of the Specification
describe the role of the binder in the claimed solution as providing adhesion
between dispersible salt particles and filler and between the print medium
and the dispersible salt and fillers. App. Br. 11. The Specification also
states that the surface treatment solution comprises, inter alia, “a binder that
binds the water dispersible, multi-valent salts to a medium and to the
elements within the surface treatment solution” which indicates that the
binder binds the water dispersible multi-valent salts to the elements within
the surface treatment solution. Id.
The Examiner replies that paragraphs 27 and 46 of the Specification
“do not describe the binder binding the water dispersible, multi-valent,
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organic acid salts directly to the water soluble, multi-valent, organic acid
salts within the surface treatment solution” without a concomitant binding of
the water dispersible, multi-valent salts through the binder to a medium.
Ans. 8—9.
We agree with Appellants that the Specification adequately discloses
that the binder provides adhesion between salt particles and other
components in the solution, which would be inclusive of the water-soluble
salts. App. Br. 11; Reply Br. 8; Spec. 27, 34, 40. Therefore, we reverse
the rejection of claims 11—18 and 21—25 on this basis.
Claim 21 “a dispersant”
Appellants argue that the Examiner erred in rejecting claim 21
because the Specification explicitly describes a dispersant throughout. App.
Br. 12 (citing Spec. 14, 43—45, Table 1).
The Examiner replies that claim 21 is open to any amount and any
kind of dispersant while the Specification provides no guidance to predict
successful use of dispersants. Ans. 10. The Examiner finds that the
Specification fails to describe any amount of dispersant with the named
components, therefore, any amount would mean just more than zero of any
kind with the amounts of the other components. Id.
We agree with Appellants that the Specification adequately discloses
to a skilled artisan dispersants that would function as a dispersant and that
one skilled in the art would, based on the disclosure, readily understand that
sodium salt of polyacrylic acid is such a dispersant and that other salts of
polyacrylic acid may also be used. Reply Br. 8. Therefore, we reverse the
rejection of claim 21 on this basis.
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Claim 22 “salt ofpoly acrylic acid”
Appellants argue that the Examiner erred in rejecting claim 22
because the Specification explicitly describes a dispersant as being a
“sodium salt of a polyacrylic acid.” App. Br. 13 (citing Spec. 14, 43—45,
Table 1) (emphasis omitted).
The Examiner replies that, because claim 22 depends from claim 21, it
likewise is open to any amount of any salt of polyacrylic acid, so one skilled
in the art would not have any guidance from the Specification to predict
successful use of dispersants, and specifically a sodium salt of polyacrylic
acid, in an amount other than 0.10 wt. %. Ans. 10.
We agree with Appellants because the Specification explicitly
discloses at least at paragraph 44 “a dispersant such as, for example, a
sodium salt of a polyacrylic acid.” Spec. 144. Therefore, the Specification
adequately discloses to a skilled artisan dispersants that would function as a
dispersant including a salt of a polyacrylic acid and we reverse the rejection
of claim 22 on this basis.
Claim 23 “any anions in solution are non-halogens ”
Appellants argue that the Examiner erred in rejecting claim 23
because paragraph 22 of the Specification reasonably conveys to those
skilled in the art that any anions in solution are non-halogens because all
anions described in paragraph 22 are non-halogens. App. Br. 14.
Specifically, Appellants contend that paragraph 22 discloses that the M+
cation species “includ[es] Group I metals, Group II metals, Group III metals
and transition metals,” which are non-halogens. Id. (quoting Spec. 22)
(emphasis omitted).
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The Examiner replies that there is no description of anions as non­
halogens and that because the Specification discloses metals that are metals,
not halogens, the claim language is a negative or exclusionary limitation not
supported by the Specification. Ans. 11—12.
We agree with the Examiner that the Specification does not
adequately disclose to those skilled in the art that the anions of the ionic
compounds in solution are not halogens. The portion of the Specification to
which Appellants direct us broadly discloses that both the anions and cations
are inclusive of exemplary metals and species (Spec. 122), however, this
broad disclosure has not been shown to reasonably convey to a person
having skill in the art that Appellants had possession of the concept of
excluding all non-halogen anions. Although not argued by Appellants, we
are cognizant that the Specification also discloses that inorganic metal salts
in surface treatment solutions raise corrosion concerns, identifying the
chloride ion specifically. Spec. 1, 7, 8, 41. The disclosure of chloride
alone, however, has not been shown by Appellants to convey to a skilled
artisan that all halogens categorically are to be avoided in the claimed
surface treatment solution. Therefore, we affirm the rejection of claim 23 on
this basis.
Claim 24 “the solution has a pH between 6.5 and 7.5”
Appellants argue that the Examiner erred in rejecting claim 24
because paragraphs 29 45 and Table 1 of the Specification explicitly
disclose a pH of at least as high as 7.5 and at least as low as 6.48. App. Br.
15.
The Examiner replies that “the solutions of examples 15-19 with all of
the components in claim 11 are in particular types and amounts achieving a
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pH ranging from 6.48 to 7.12” and that “6.48 to 7.12 is not 6.5 to 7.5 for pH,
a logarithmic scale.” Ans. 13.
We agree with Appellants (Reply Br. 10) that examples 5, 6, 8, and 9
in the Specification disclose a pH of 7.5 or higher, depending on the number
of significant digits used to express the pH value, therefore, Table 1 is
inclusive of values in the claimed range of 6.5 to 7.5 (Spec. Table 1).
However, Appellants do not adequately respond to the Examiner’s finding
that it is only the solutions of Examples 15—19 in Table 1 that include the
components required by claim 11 (Ans. 13). Appellants assert in the Reply
Brief that “one of skill in the art would readily be able to apply the pH
buffers described at paragraph [0028] to achieve a solution with the desired
pH value” based on all the surface treatments reported in Table 1 (Reply Br.
10), but do not explain sufficiently why the claimed pH range would be
desired for the solution of claim 11.
Appellants acknowledge that the solution of claim 11 requires an
organosilane and that it is Examples 14—19 that contain an organosilane.
App. Br. 6 (citing Spec. 40-45). The Specification discloses that the
reactive groups of organosilane “are hydrolysable in a neutral to acidic
environment.” Spec. 126. According to Table 1, Examples 5, 6, 8, and 9,
which Appellants direct us to, do not contain an organosilane. The highest
pH disclosed in Table 1 for an organosilane-containing solution is 7.12 as
the Examiner finds (Ans. 13). Appellants have not shown that the
Specification conveys a pH above 7.12 for the organosilane-containing
solution of claim 11, nor have Appellants shown that a pH above 7.12 would
be within the “neutral to acidic environment” range disclosed in the
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Specification for an organosilane-containing solution (Spec. 26).
Therefore, on this record, we affirm the rejection of claim 24 on this basis.
Claim 25 “free of boron”
Appellants argue that the Examiner erred in rejecting claim 25
because the Specification conveys with reasonable clarity solutions free of
boron as claimed, and, more particularly, because Table 1 “implicitly
describes a solution without Boron.” App. Br. 16.
The Examiner replies that the mere absence of a positive recitation of
Boron is not a basis for an exclusionary proviso or negative limitation in the
claim. Ans. 14.
We agree with the Examiner that the compilation of examples in
Table 1 is insufficient written description support for a solution that excludes
Boron. “Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.”
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012); see
also AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc) (“‘[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.’”
(Citation omitted)).
The question is not whether the Specification provides a reason to
have made the invention which is now claimed, but whether the invention,
with all its claimed limitations, is described in it. See Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Appellants do not
adequately explain how a skilled artisan would understand from the
examples provided in Table 1 that the surface treatment solutions generally
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taught by the Specification exclude the metal boron. Stated another way, the
broad disclosure of organic metallic salts inclusive of certain metal groups
(Spec. 122) in no way suggests the exclusion of either the group of metals
that Boron belongs to or Boron specifically. Against that broad disclosure of
possible metals, Table 1 collects the exemplified solutions described in
paragraphs 29 45 of the Specification. Appellants do not direct us to any
evidence that the Specification distinguishes among the genus of metals or
that Table 1 provides extensive examples fully supportive of the genus now
claimed. Cf. In re Johnson, 558 F.2d 1008, 1018 (CCPA 1977).
In sum, Appellants’ arguments are persuasive of reversible error in the
Examiner’s rejection of claims 11—18, 21, and 22 as lacking written
description. We are not persuaded of reversible error by the Examiner in the
rejection of claims 23—25.
Rejection 2: Indefiniteness
It is the Examiner’s position that each of the claims is indefinite in
regard to the “binder” recited in claim 11, the “any anions in solution”
recited in claim 23, and the lack of antecedent basis for “the solution” in
claims 24 and 25 for the reasons stated on pages 6—8 of the Final Office
Action.
Regarding rejection 2, Appellants contend that the Examiner erred
because the “binder” recited in claim 11 is described as a sodium salt of a
polyacrylic acid in at least one example of the Specification and “the
properties of the binder and the manner in which the binder reacts or
interacts with other chemicals are explicitly known such that those skilled in
the art would understand what is claimed” in view of the Specification.
App. Br. 17 (citing Spec. Table 1).
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Appellants further contend that the Examiner’s rejection of “any
anions in solution” recited in claim 23 is in error because the Specification
describes the “organic metal salt” as an ionic compound comprising cations
and anions, and that the anion species may include negatively charged
carbon species, therefore, the anions in solution would be understood by a
skilled artisan in view of the Specification. Id. at 18 (citing Spec. 122).
Regarding “the solution” recited in claims 23—25, Appellants argue
that the Examiner’s indefmiteness rejection is in error because “the solution”
has an antecedent basis in “surface treatment solution” recited in
independent claim 11 as the only solution recited and no other solution is
introduced or recited in the claims. Id. at 19.
The Examiner responds that Table 1 does not disclose a sodium salt of
a polyacrylic acid as a binder, but only as a dispersant. Ans. 15. Regarding
“any anions” recited in claim 23, the Examiner responds that the issue is not
if water soluble organic metal salt has anions as described in paragraph 22 of
the Specification, but, rather, are the recited “any anions” additional to water
soluble organic metal salt having anions. Id. at 16. Regarding “the
solution” recited in claims 23—25, the Examiner responds that Appellants
miss the point of the rejection because it is unclear whether “the solution” is
the same or different from the “surface treatment solution” recited in claim
11 due to claim 11 being an open-ended comprising claim. Id.
We agree with Appellants that the “binder” recited in claim 11 is
sufficiently definite for a person having skill in the art to understand in view
of the Specification’s disclosure of how the binder functions in the claimed
solution. Reply Br. 12 (citing Spec. Tflf 8, 27); App. Br. 17. Moreover, the
Specification provides examples of binders in paragraph 27.
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Regarding dependent claims 23—25, we agree with Appellants that one
having ordinary skill in the art would understand that “any anions” recited in
dependent claim 23 is not indefinite because it is inclusive of all anions
however present in the solution. We also agree with Appellants that
“solution” recited in claims 23—25 unambiguously refers back to the only
solution recited in independent claim 11, particularly in view of claim 11 ’s
further characterization of the claimed solution as a “single solution” in
claim 11.10 Therefore, the open-ended comprising structure of claim 11 does
not render indefinite subsequent references to “the solution” in the
dependent claims.* 11
In sum, we agree with Appellants that the Examiner reversibly erred
in rejecting claims 11—18 and 21—25 under 35U.S.C. § 112, second
paragraph.
Rejection 3: Obviousness
It is the Examiner’s position that claims 11, 12, 14, 16—18, 21, and
23—25 would have been obvious over the combination of Koike, Zhou,
Keiser, and Lee for the reasons stated on pages 8—14 of the Final Office
Action.
Regarding rejection 3, Appellants contend that the combination of
Koike and Zhou fails to disclose “a number of water dispersible, multi­
valent, organic acid salts” as recited in claim 11. App. Br. 20. The reasons
10 If prosecution continues in this application, Appellants should consider
using the phrase “surface treatment solution” rather than “surface treatment”
to refer back to the surface treatment solution of the independent claim.
11 If prosecution continues in this application, claim 23 should be amended
to include “the” before “solution” for proper antecedent reference as in
dependent claims 24 and 25.
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provided by Appellants include (1) claim 11 recites “[a] surface treatment
solution” (emphasis added) and not a second liquid, (2) potassium
dihydrogen citrate is not water dispersible because it does not have solubility
of less than 10 g per 100 g of water, (3) Zhou’s filtration step would prevent
the addition of a dispersible salt to the coating solution, (4) calcium acetate,
magnesium acetate, and calcium chloride disclosed in Zhou are water
soluble, not water dispersible, and (5) simultaneously mixing together on the
substrate the solution of the cited references is not applying as a single
solution because it is “a situation where the first coating layer ... is formed
on a substrate before a second liquid layer is applied.” Id. at 20-23.
Appellants further argue that the combination of Koike and Zhou in the
manner described by the Examiner would not enable the uniform dispersion
required by Zhou. Id. at 24.
The Examiner responds that the indefinite article “a” in an open-ended
comprising claim does not limit the number of liquids encompassed by the
claim. Ans. 17. The Examiner further responds that the combination of
Koike and Zhou, as evidenced by Keiser, discloses a prepared and applied
single treatment solution from two liquids and Appellants do not address the
finding that “Koike discloses ‘a treatment solution’ when the first and
second liquids are prepared by simultaneous application to the medium.” Id.
at 17—18. The Examiner particularly finds that Koike’s “simultaneous
providing of the two liquids to form a combination of the two liquids as a
surface treatment on the support the surface treatment is prepared and
applied after simultaneous provision as a single treatment solution on the
support.” Id. at 25 (citing Koike Abstr., 117). The Examiner further finds
that even Koike’s alternative “wet on wet method” of preparation and
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application meets the recited “prepared and applied as a single solution”
because the second coating is formed on a first coating before the first coat
dries. Id. at 25, 28 (citing Koike 14, 19, 45, 47).
Regarding Zhou failing to disclose a uniform dispersion, the Examiner
quotes paragraph 26 of Zhou which states “[t]he co-crystalline salt must be
capable of being uniformly dissolved or dispersed in a suitable liquid, such
as water or other aqueous solvent, to form a surface treatment composition”
and finds that Zhou explicitly discloses solutions that are dispersed. Id. at
18—19. Regarding potassium dihydrogen citrate being water soluble, the
Examiner responds that Appellants’ argument is not supported by the record,
but only attorney argument, because the cited Wikipedia reference is
directed to various potassium citrates and not potassium dihydrogen citrate.
Id. at 20. Additionally, the Examiner cites Appellants’ own Specification
which defines water dispersible broadly as a species that does not readily
dissolve in water. Id. at 20-21 (citing Spec. 124). Regarding Appellants’
additional arguments over Zhou, the Examiner points out these arguments
are over an example or preferred embodiment of the Zhou reference without
addressing the broad teaching of Zhou. Id. at 22—23 (noting that the water
soluble salt filtering in example 1 of Zhou does not diminish Zhou’s
teaching of the dispersion). In addition, the Examiner points out that the
Final Office Action did not rely on calcium chloride of Zhou as water
dispersible. Id. at 26.
The Examiner further finds that Koike discloses the second coating
has one or more metal compounds as multi-valent, organic acid salts such as
ammonium zirconium citrate or zirconyl stearate, the latter being shown to
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be a water-insoluble metallic soap as evidenced by Taylor.12 Id. at 21 (citing
Koike 22—24, 83, 116, 117; Taylor 4:49—55)). Regarding the Appellants’
argument that the combination of Koike and Zhou does not describe or
enable the uniform dispersion that Zhou requires or a single solution as
required by the claim, the Examiner responds that Appellants provide no
evidence to support its position. Id. at 27. The Examiner also finds that the
simultaneous provision of first and second liquids forming a surface
treatment of the support in Koike combined with the water dispersible co­
crystalline multi-valent organic acid salts of Zhou “are the very salts useful
in producing uniformly dispersed co-crystalline salts according to Zhou.”
Id.
Regarding binding as required by the claims, the Examiner finds that
Koike discloses in paragraph 14 that water soluble resin with the cross-
linking agents forms a coating layer that hardens with the second coating
layer by crosslinking to form an ink receiving layer on the support. Id. at 29
(also citing Koike 32, 55, 61 for disclosing the first liquid has a silane
coupling agent identified as an organosilane). The Examiner finds “[g]iven
the hardening of the simultaneously applied first and second liquids into the
ink receiving layer on a support, the components of the combined first and
second liquids would be bound by the resin cross-linked to [form] a coating
layer [bond] with the support.” Id.
In the Reply Brief, Appellants contend that Koike’s first and second
liquids prepared by simultaneous application to the medium does not meet
the recited “prepared and applied as a single solution.” Reply Br. 15
(quoting claim 11 with emphasis), 20. According to Appellants, the
12 US 2,733,154, issued Jan. 31, 1956.
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Examiner’s finding “does not consider the chemistry involved in preparing a
single solution and the advantages of doing so” including ease of application
to the support, manufacture of the print medium, and homogeneity of the
composition of the mixture. Id. at 17—18. Appellants also maintain that the
combination of Koike and Zhou would not enable the uniform dispersion
that Zhou requires. Id. at 16—17. Appellants further contend that the cited
references are silent as to whether any chemical reactions occur using the
wet-on-wet application and whether they form a uniform dispersion if
combined, therefore, the Examiner’s findings are not supported by evidence.
Id. at 18—19. Appellants also maintain in the Reply Brief that Zhou’s
filtration would prevent the addition of a dispersible salt to the coating
solution. Id. at 15—16. Appellants do not rebut the Examiner’s finding that
dispersibility is broadly defined in the Specification as a species that does
not readily dissolve in water (Ans. 20—21).
Appellants’ arguments are not persuasive of error for the reasons
stated by the Examiner in the Final Office Action and the Answer. We add
the following primarily for emphasis.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1,17 (1966) (noting that 35 U.S.C.
§103 leads to three basic factual inquiries: (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue;
and (3) the level of ordinary skill in the art). Furthermore, the Examiner’s
obviousness rejection must be based on
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“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” .... [Hjowever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Appellants’ arguments regarding whether “prepared and applied as a
single solution” recited in claim 11 distinguishes Koike’s method of
preparation and application of its ink receiving layer on a support to form an
inkjet recording medium are not persuasive because Appellants do not
adequately show a physical difference in the product to demonstrate
patentability of the claimed surface treatment solution over the claimed prior
art combination. See In re Thorpe, 111 F.2d 695, 697, (Fed. Cir. 1985)
(internal citations omitted) (noting that “even though product-by-process
claims are limited by and defined by the process, determination of
patentability is based on the product itself. The patentability of a product
does not depend on its method of production. If the product in a product-by­
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process”). Therefore, Appellants’ assertions that its method has the
advantages of ease of application to the support, manufacture of the print
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medium, and homogeneity of the composition of the mixture (Reply Br. 17—
18) are irrelevant to the patentability of the claimed surface treatment
solution over the prior art surface treatment solution.
Appellants’ arguments also are unpersuasive because claim 11 does
not require any mixing of the claimed components during preparation or
prior to application. Although Koike does not precisely teach a surface
treatment solution “prepared and applied as a single solution” as recited in
claim 11, Koike does disclose a single layer on a substrate that is formed of
two liquids that are combined in a simultaneous fashion. We are not
persuaded that the simultaneous coating of two liquids described by Koike
constitutes two separate solutions being separately applied to the substrate.
Appellants do not adequately explain how simultaneously coating with two
liquids does not form a single combined liquid as applied to the substrate.
Moreover, to the extent that Appellants’ arguments seek to introduce
additional limitations into the recited “prepared and applied as a single
solution” recitation of claim 11, they are unpersuasive because limitations
not appearing in the claims cannot be relied upon for patentability. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants also do not adequately rebut the Examiner’s findings that
the simultaneous combination of two wet layers containing the claimed
components as taught by Koike to form “an ink receiving layer” (Koike
114) on a support to produce an inkjet recording medium constitutes
preparation and application of a single solution. Appellants argue that the
Examiner has not shown that the combination of two liquids necessarily
results in crosslinking between them on the substrate when separately
applied in the wet-on-wet alternative method of application to the substrate
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taught by Koike. The Examiner finds that Koike discloses that the first
liquid is a water-soluble resin having a silane coupling agent, which Keiser
evidences is an organosilane, hardens together with the second liquid, which
contains a metal compound and a basic compound, by crosslinking to form
the ink receiving layer on the support. Ans. 29; Final Act. 8—9. The
Examiner’s findings are supported by the record. Koike 22—24, 55, 61,
83, 116, 117; Keiser 132. Appellants’ assertion that the reference is silent
on crosslinking does not adequately rebut the Examiner’s finding that
crosslinking is evidenced by hardening.
Regarding Appellants’ arguments that Zhou does not disclose a water
dispersible salt, these arguments are insufficient to rebut the Examiner’s
finding that Zhou explicitly teaches a co-crystalline salt capable of being
dispersed in a suitable liquid, which is supported by the record. Zhou 126.
Appellants’ reliance on certain examples contained in Zhou rather than the
broader teachings of Zhou are not persuasive of error. In a determination of
obviousness, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art]
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious”). Moreover, “a reference is not limited
to the disclosure of specific working examples.” In re Mills, 470 F.2d 649,
651 (CCPA 1972) (internal citation omitted).
Similarly, Appellants’ argument that Zhou includes a filtration step
that would preclude a dispersible salt is not persuasive because “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
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the test is what the combined teachings of [those] references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review”); In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures”).
Rather, “if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417. On this
record, Appellants do not address the Examiner’s finding that the motivation
for combining Zhou’s co-crystalline salt is to “provid[e] pigmented colorant
to the surface of the paper and to retard corrosion in manufacturing
equipment” (Ans. 24; Final Act. 9).
In sum, Appellants’ arguments are not persuasive of reversible error
in the Examiner’s rejection of claims 11, 12, 14, 16—18, 21, and 23—25 over
the combination of Koike, Zhou, Keiser, and Lee.
Rejection 4: Obviousness of Claim 13
It is the Examiner’s position that claim 13 would have been obvious
over the combination of Koike, Zhou, Keiser, and Sugiyama for the reasons
stated on pages 14—16 of the Final Office Action.
Regarding rejection 4, Appellants rely on the same arguments
presented with respect to claim 11. App. Br. 26.
Because we are not persuaded of reversible error in the Examiner’s
rejection of claim 11 for the reasons discussed above, we also find
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Appellants’ arguments unpersuasive of reversible error in the Examiner’s
rejection of claim 13 for the same reasons.
Rejection 5: Obviousness of Claim 15
It is the Examiner’s position that claim 15 would have been obvious
over the combination of Koike, Zhou, Keiser, and Wiese for the reasons
stated on pages 16—18 of the Final Office Action.
Regarding rejection 5, Appellants rely on the same arguments
presented with respect to claim 11. App. Br. 26.
Because we are not persuaded of reversible error in the Examiner’s
rejection of claim 11 for the reasons discussed above, we also find
Appellants’ arguments unpersuasive of reversible error in the Examiner’s
rejection of claim 15 for the same reasons.
DECISION
For the foregoing reasons, we
(1) reverse the Examiner’s rejection of claims 11—18, 21, and 22
under 35 U.S.C. § 112, first paragraph, as lacking written description;
(2) affirm the Examiner’s rejection of claims 23—25 under 35 U.S.C.
§112, first paragraph;
(3) reverse the Examiner’s rejection of claims 11—18 and 21—25 under
35 U.S.C. § 112, second paragraph; and
(4) affirm the Examiner’s rejection of claims 11—18 and 21—25 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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