Ex Parte Romano et al

Board of Patent Appeals and Interferences

Apr 8, 2010

10925506 (B.P.A.I. Apr. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES E. ROMANO, JR., RICHARD J. KAPUSNIAK,
LORI J. SHAW-KLEIN, TERRY C. SCHULTZ, and PETER J. GHYZEL
____________

Appeal 2009-005363
Application 10/925,506
Technology Center 1700
____________

Decided: April 8, 2010
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3, 5, 7-9, 12, 13, and 16-19 (App. Br. 1).
Appellants expressly state that, “[i]n order to reduce and simplify the issues,
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only the rejection of claims 1 and 19 (the only two independent claims) are
appealed from” (id. at 1, 2). We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a swellable non-porous inkjet recording element
comprising (a) a base layer comprising gelatin or polyvinyl alcohol and a
base-layer polymeric mordant comprising between 1 and 10 weight percent
solids of weakly mordanting cationic polymer comprising between 10 and
30 mole percent of a cationic monomer, (b) an inner layer comprising
polyvinyl alcohol or a derivative thereof and either no polymeric mordant or
15 to 25 weight % of a polymeric mordant that is a weakly mordanting
cationic polymer having 10 to 30 mole percent of a cationic monomer, and
(c) an overcoat (claim 1).
Further details regarding this claimed subject matter are set forth in
representative claim 1 which reads as follows:
1. A swellable non-porous inkjet recording element
comprising a support having thereon, in order, at least three non-porous
layers, as follows:
(a) a base layer comprising gelatin or polyvinyl alcohol, as a
binder, and base-layer polymeric mordant comprising between
1 and 10 weight percent solids of weakly mordanting cationic
polymer comprising between 10 and 30 mole percent of
cationic monomer, wherein substantially no other polymeric
mordant is present in the base layer;
(b) an inner layer comprising polyvinyl alcohol or a
derivative thereof and either (i) substantially no polymeric
mordant in the inner layer or (ii) 15 to 25 weight percent of an
inner-layer polymeric mordant that is weakly mordanting
cationic polymer having 10 to 30 mole percent of cationic
monomer and substantially no other polymeric mordant other
than the inner-layer polymeric mordant present in the inner
layer; and
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(c) a non-porous overcoat comprising a hydrophilic polymer
which overcoat comprises substantially no polymeric mordant;
wherein the dry layer thickness of the inner layer is from 0.5 to 5
micrometers, the dry coverage of the overcoat layer is from 0.5 to 1.5
micrometers, the dry layer thickness of the base layer is from 5 to 15
micrometers, and wherein the ratio of the thickness of the base layer to that
of the inner layer and overcoat is at least 2.5 to 1.

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Graczyk 6,372,329 B1 Apr. 16, 2002
Sunderrajan 6,447,114 B1 Sep. 10, 2002
Baker 6,534,156 B1 Mar. 18, 2003
Lawrence 6,578,960 B1 Jun. 17, 2003
Romano, Jr. 2003/0148046 A1 Aug. 7, 2003

Under 35 U.S.C. § 103 (a), the Examiner rejects claims 1 and 19 over
Romano alone or alternatively over Romano in view of Baker or
alternatively over Romano alone or in view of Baker and further in view of
Lawrence, Sunderrajan, or Graczyk.
We will sustain these rejections based on the findings of fact,
conclusions of law, and rebuttals to argument expressed by the Examiner in
the Answer (Ans. 3-6). We add the following comments for emphasis.
In accordance with the Examiner’s findings, Romano discloses an
inkjet recording element comprising a gelatin base layer, a polyvinyl alcohol
inner layer, and an overcoat layer (Romano ¶ [0019]). According to the
Examiner’s additional findings, Romano teaches that mordants are added to
ink receiving layers in order to improve water and humidity resistance, that
most mordants adversely affect dye light stability, but that “[a]ny polymeric
mordant can be used in the image-recording layer of the invention provided
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it does not adversely affect light fade resistance” (Romano ¶ [0046]). As
such polymeric mordants, Romano teaches cationic polymers such as poly
(diallyl dimethyl ammonium chloride) (id.). Appellants also teach poly
(diallyl dimethyl ammonium chloride) as a cationic polymer mordant used in
their invention (Spec. 8, ll. 1-8). With respect to Romano’s teaching of
using cationic polymer mordants in the image-recording layer, the Examiner
expressly finds that Romano’s image-recording layer includes the gelatin
base layer and the polyvinyl alcohol inner layer (Ans. Para. Bridging 4-5;
Romano ¶ [0023], [0034], [0035]).
The Examiner acknowledges that Romano does not disclose the
amount of cationic polymer mordant in the base or inner layers but
concludes that “determination of appropriate amounts of mordant to mordant
[i.e., bind] the dye without adversely affecting light fade resistance would
have been obvious to one of ordinary skill in the art” (Ans. Para. Bridging 3-
4).
In contesting the Examiner’s rejection of claims 1 and 19, Appellants
make the following statement:
Romano Jr. et al. ‘046 fails to disclose a base layer comprising
between 1 and 10 weight percent solids of weakly mordanting
cationic polymer comprising between 10 and 30 mole percent
of a cationic monomer in combination with an inner layer
comprising either substantially no polymeric mordant in the
inner layer or 15 to 25 weight percent of an inner-layer
polymeric mordant that is a weakly mordanting cationic
polymer having 10 to 30 mole percent of a cationic monomer.

(App. Br. Para. Bridging 5-6)

However, this statement merely reiterates the Examiner’s above noted
finding that Romano does not disclose the amount of cationic polymer
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mordant (e.g., poly(diallyl dimethyl ammonium chloride)) in the base and
inner layers. Appellants’ statement does not specifically address much less
identify deficiencies in the Examiner’s conclusion that it would have been
obvious to determine appropriate amounts of such mordant.
In an apparent attempt to show nonobviousness, Appellants allude to
the experimental results disclosed in Table 1 on page 27 of their
Specification (App. Br. Para. Bridging 4-5). Appellants state, without
explanation, that “the results of the present invention are entirely
unexpected” (App. Br. 5).
This statement is without credible evidentiary support in the record of
this appeal. Appellants point to nothing and we find nothing in their
Specification which characterizes the Table 1 results as being unexpected.
Moreover, Appellants do not explain in their Briefs why these results are
thought to be unexpected and commensurate in scope with representative
claim 1.
Finally, Appellants argue that “the optimization of product as set forth
in the claim is not obvious” (Rep. Br. Para. Bridging 1-2). According to
Appellants, claim 1 recites 13 limitations (id.) and “there are too many
specific limitations in these claims [i.e., claims 1 and 19] to conclude it to be
obvious optimization, to reach the superior product of the invention” (id. at
3).
This argument lacks convincing merit for a number of reasons. First,
the Examiner’s obviousness conclusion is not premised on optimization of
the 13 limitations recited in claim 1. Rather, the Examiner’s obviousness
conclusion relates to determining or optimizing only the amount of cationic
polymer mordant in the base and inner layers of Romano. Second, this
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argument is without convincing merit in that it refers to specific claim
limitations (e.g., layer thickness; see Rep. Br. 3) which were not contested in
the Appeal Brief. Appellants have not explained why arguments concerning
such claim limitations were not presented in the Principal Brief. Under
regulations governing appeals to the Board, any argument not timely
presented in the Principal Brief will not be considered when filed in a Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the Principal Brief, as explained more fully in Ex
parte Borden, 2010 WL 191083*1-*5 (BPAI 2010) and Ex Parte Nakashima
2010 WL 191183*3-*5 (BPAI 2010).
For the reasons stated above and in the Answer, the Examiner has
established a prima facie case of obviousness in the § 103 rejection of claims
1 and 19 over Romano alone, and Appellants reveal no harmful error on the
Examiner’s part in making this rejection. Accordingly, we sustain this
rejection over Romano alone as well as the corresponding rejections over
Romano in various combinations with the other applied references.
As indicated above, Appellants state that “only the rejection of claims
1 and 19 (the only two independent claims) are appealed from” (App. Br. 1,
4). We summarily sustain the Examiner’s rejection of the other rejected
claims since Appellants have presented no arguments in this Appeal
regarding these other rejected claims.
The decision of the Examiner is affirmed.

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

AFFIRMED

tc

Paul A. Leipold
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester, NY 14650-2201

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