Ex Parte Sen et al

Board of Patent Appeals and Interferences

Sep 29, 2010

10789963 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RADHA SEN, TIENTEH CHEN, ROBERT BEER and
KRISTINA GEE
____________

Appeal 2009-005168
Application 10/789,963
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
TERRY J. OWENS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 48, 49, 51 through 53, 55 through 58, 71,
72, and 80 through 90, all of the pending claims in the above-identified
application.2 We have jurisdiction under 35 U.S.C. § 6.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

2 See page 4 of the Appeal Brief (“App. Br.”) filed September 30, 2008.
Appeal 2009-005168
Application 10/789,963

STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of “generating
microporous ink receptive coating using little to no binder materials”( Spec.,
3, para. 0015). Details of the appealed subject matter are recited in
illustrative claim 48 reproduced from the Claims Appendix to the Appeal
Brief as shown below:
48. A print medium having a microporous coating comprising:

a substrate which serves as a base of said print medium;

a first microporous layer comprising a first binder deposited as a
liquid on said substrate; and

a fusible latex layer deposited over said first microporous layer,
wherein said fusible latex layer is microporous and includes particles
comprising a hard core material and a soft shell material;

wherein said latex exhibits self-adhesive properties at a room
temperature such that said latex remains in place on said first microporous
layer without requiring a second binder and without being fused.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following sole prior art reference at page 3 of the
Answer (“Ans.”) dated November 26, 2008:
Kasperchik 7,086,732 B2 Aug. 8, 2006

Appellants seek review of the following grounds of rejection set forth
at pages 3 through 7 of the Answer:
1) Claims 48, 49, 51 through 53, 55 through 58, 71, 72, and 80
through 90 under 35 U.S.C. § 112, first paragraph, as lacking written
descriptive support for the presently claimed subject matter in the
application disclosures as originally filed;
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2) Claims 48, 49, 51 through 53, 55 through 58, 71, 72, and 80
through 90 under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
applicants regard as their invention;
3) Claims 48, 49, 51 through 53, 55, 57, 58, 71, 72, 86, and 87
under 35 U.S.C. § 102(e) as anticipated by the disclosure of Kasperchik3;
and
4) Claims 48, 49, 51 through 53, 55, 57, 58, 71, 72, 80, and 86
through 89 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of
Kasperchik.
DISCUSSION
I. 35 U.S.C. § 112, FIRST PARAGRAPH
ISSUE and CONCLUSION
The dispositive question is: Did the Examiner err in determining that
the application disclosure, as originally filed, does not reasonably convey the
phrase “deposited as a liquid on said substrate” recited in claim 48 within the
meaning of 35 U.S.C. § 112, first paragraph? On this record, we answer
this question in the affirmative.
FINDINGS OF FACT, PRINCIPLES OF LAW, and ANALYSIS
As our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan

3 The Examiner has withdrawn the rejection of claims 80 through 85 and 88
through 90 under 35 U.S.C. § 102(e) as anticipated by the disclosure of
Kasperchik (Ans. 10).
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that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language….The
content of the drawings may also be considered in determining
compliance with the written description requirement. [Citations
omitted.] [(Emphasis added.)]

This test requires that the original application disclosure as a whole
must be considered. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989).
Here, the Specification, as originally filed, clearly indicates that “any
other known liquid coating technique” may be used to provide a first
microporous layer on a substrate (Spec. 4-5, para. 0019). Consistent with
this earlier disclosure, the Specification, as originally filed, also states at
page 5, paragraph 0021, that:
As shown in Figure 1, a microporous substrate (114) is
disposed on the photo or film base (112) immediately preceding
the deposition of the hard core/soft shell latex (150), according
to a wet on wet configuration.

On this record, the Examiner has not supplied any adequate reason for
doubting that the application disclosure as originally filed reasonably
conveys to one of ordinary skill in the art that the inventors had possession
of the limitation “a first microporous layer…deposited as a liquid on said
substrate” recited in claim 48. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir.
1996)(“If, on the other hand, the specification contains a description of the
claimed invention, albeit not in ipsis verbis (in the identical words), then the
examiner or Board, in order to meet the burden of proof [of lack of adequate
written description], must provide reasons why one of ordinary skill in the
art would not consider the description sufficient.”). Accordingly, we
reverse the Examiner’s decision rejecting claims 48, 49, 51 through 53, 55
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through 58, 71, 72, and 80 through 90 under 35 U.S.C. § 112, first
paragraph, as lacking written descriptive support for the presently claimed
subject matter in the application disclosures as originally filed.

II. 35 U.S.C. § 112, SECOND PARAGRAPH
ISSUES and CONCLUSIONS
The first dispositive question is: Did the Examiner err in determining
that the limitation “a first microporous layer comprising…deposited as a
liquid on said substrate” recited in claim 48 is indefinite within the meaning
of 35 U.S.C. § 112, second paragraph? On this record, we answer this
question in the affirmative.
The second dispositive question is: Did the Examiner err in
determining that the use of the inconsistent preamble limitation in dependent
claims 49, 51 through 53, 55 through 58, 71, 72, and 80 through 90 renders
them indefinite within the meaning of 35 U.S.C. § 112, second paragraph?
On this record, we answer this question in the negative.
The third dispositive question is: Did the Examiner err in determining
that the limitation relating to a shell material comprising a monomer or
comprising a coalescing agent recited in claims 81 through 84 and 90 is
indefinite within the meaning of 35 U.S.C. § 112, second paragraph? On
this record, we answer this question in the affirmative.
FINDINGS OF FACT, PRINCIPLES OF LAW, and ANALYSIS

A claim is considered indefinite under 35 U.S.C. § 112, second
paragraph, if it does not reasonably apprise those skilled in the art of its
scope. Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1217 (Fed.
Cir. 1991); In re Venezia, 530 F.2d 956, 959 (CCPA 1976). Definiteness is
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analyzed “not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art.” In re Moore,
439 F.2d 1232, 1235 (CCPA 1971).
With respect to the limitation “a first microporous layer
comprising…deposited as a liquid on said substrate” recited in claim 48, we
note that Appellants state that they have “the right to claim a component that
is in a particular phase at a particular time” (Reply Br. 9). However, were
we to interpret the limitation “a first microporous layer comprising …
deposited as a liquid on said substrate” recited in claim 48 as a first
microporous layer in liquid phase (a liquid microporous layer), the subject
matter recited in claim 48 would be non-enabling within the meaning of 35
U.S.C. § 112, first paragraph, since the Specification does not provide any
guidance as to how to make a liquid microporous layer comprising a binder.
It is clear from the Specification that the limitation “deposited as a liquid on
said substrate” is a process limitation by which a first microporous layer is
formed as acknowledged by the Examiner at page 8 of the Answer and
discussed above in the context of written descriptive support at pages 4 and
5 of the Specification. Indeed, the Examiner fully understood the meaning
and effect of this process limitation on product claim 48 as is apparent from
his response at page 8 of the Answer. Thus, we cannot agree with the
Examiner that the limitation “a first microporous layer comprising …
deposited as a liquid on said substrate” would have rendered claim 48
indefinite within the meaning of 35 U.S.C. § 112, second paragraph.
With respect to the preamble limitation “The microporous coating of
claim” recited in dependent claims 49, 51 through 53, 55 through 58, 71, 72,
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and 80 through 90, it is not clear from these claims whether Appellants
intend to further limit the print medium recited in claim 48 or claim only the
microporous coating portion of a print medium. On the one hand, claims 49,
51 through 53, 55 through 58, 71, 72, and 80 through 90, by virtue of their
dependency on claim 48, could be interpreted as further limiting the printed
medium recited in claim 48. On the other hand, the plain language of the
preamble limitation “The microporous coating” recited in claims 49, 51
through 53, 55 through 58, 71, 72, and 80 through 90 indicates that they are
directed to a microporous coating, not a printed medium. In other words,
dependent claims 49, 51 through 53, 55 through 58, 71, 72, and 80 through
90 are susceptible to at least two plausible claim constructions due to
Appellants’ inconsistent use of the preamble limitations between claim 48
and its dependent claims. As stated in Ex parte Miyazaki, No. 2007-3300,
2008 WL 5105055, at *5 (BPAI Nov. 19, 2008):
[I]f a claim is amendable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant
to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. §
112, second paragraph, as indefinite.

Thus, we agree with the Examiner that dependent claims 49, 51 through 53,
55 through 58, 71, 72, and 80 through 90 are indefinite within the meaning
of 35 U.S.C. § 112, second paragraph.
With respect to the limitation relating to a shell material comprising a
monomer or comprising a coalescing agent recited in claims 81 through 84
and 90, the Examiner does not provide any adequate reason why such
limitation is deemed indefinite. In other words, the Examiner does not
indicate why such limitation does not reasonably apprise those skilled in the
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art of its scope. Rather, the Examiner merely alleges inoperability of the
claimed invention by stating that “[s]aid monomers do not form a shell and
they must be polymerized to become a shell” and “said coalescing agent is a
solvent as taught by Kasperchik… and a solvent cannot form a shell” (Ans.
4-5). Thus, we concur with Appellants that the Examiner has not
demonstrated that the limitation relating to a shell material comprising a
monomer or comprising a coalescing agent would have rendered the scope
of claims 81 through 84 and 90 indefinite within the meaning of 35 U.S.C. §
112, second paragraph.
III. 35 U.S.C. § 102(e)4
ISSUES AND CONCLUSIONS
With respect to claim 48, the dispositive question is: Did the
Examiner err in finding that the print medium taught by Kasperchik is
identical or substantially identical to the claimed print medium within the
meaning of 35 U.S.C. § 102(e)? On this record, we answer this question in
the negative.
With respect to claim 49, the dispositive question is: Did the
Examiner err in finding that the colorant-receiving layer taught by
Kasperchik corresponding to the claimed fusible latex layer is “ink
permeable” within the meaning of 35 U.S.C. § 102(e)? On this record, we
answer this question in the affirmative.
With respect to claim 52, the dispositive question is: Did the
Examiner err in finding that Kasperchik teaches the claimed glass transition

4 In order to avoid piece meal appeal and to resolve the propriety of the prior
art rejection, we will presume that the dependent claims are directed to the
print medium recited by their parent claim 48.

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temperatures for a hard core and a soft shell with sufficient specificity to
constitute a description within meaning of 35 U.S.C. § 102(e)? On this
record, we answer this question in the affirmative.
With respect to claims 55 and 57, the dispositive question is: Did the
Examiner err in finding that that Kasperchik teaches an ink permeable
fusible latex layer having a hydrophilic shell comprising a cationic monomer
and a coalescing agent within the meaning of 35 U.S.C. § 102(a)? On this
record, we answer this question in the affirmative.
With respect to claim 86, the dispositive question is: Did the
Examiner err in finding that the claimed core-shell particles size would be
inherently produced in Kasperchik’s example 1 within the meaning of 35
U.S.C. § 102(e)? On this record, we answer this question in the affirmative.
With respect to claim 87, the dispositive question is: Did the
Examiner err in finding that Kasperchik exemplifies a latex colorant-
receiving material having a hydrophilic shell having a Tg of about 40 oC
within the meaning of 35 U.S.C. § 102(e)? On this record, we answer this
question in the negative.
RELEVANT FACTULA FINDINGS, PRINCIPLES OF LAW, AND
ANALYSES
The patentability of a claim in product-by-process form is determined
based on the product itself, not on the method of making it. See In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“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 art product was made by a
different process.”). Whether a rejection is under 35 U.S.C. § 102 or § 103,
when the appellants’ product and a product of the prior art appear to be
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identical or substantially identical, the burden shifts to the Appellants to
provide evidence that the prior art product does not necessarily or inherently
possess the characteristics of the Appellants’ claimed product. See In re
Fitzgerald, 619 F.2d 67, 70 (CCPA 1980). As stated in In re Best, 562 F.2d
1252, 1255 (CCPA 1977):
[w]here . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on 'inherency' under 35 U.S.C.
§ 102, on 'prima facie obviousness' under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO's inability to manufacture
products or to obtain and compare prior art products. [Footnote
and citations omitted)].
CLAIM 48
The Examiner has correctly found at pages 5 and 6 of the Answer that
Kasperchik teaches a print medium comprising a photobase layer 4
corresponding to the claimed substrate, a porous vehicle sink layer 6 having
a binder corresponding to the claimed first microporous layer, and a porous
colorant-receiving layer 8 formed from “core-shell polymer” particles (a
polymer having a hydrophilic shell and fusible hydrophobic core)
corresponding to the claimed fusible latex layer. The hydrophilic shell and
hydrophobic core taught by Kasperchik may be formed with the claimed
monomers and can have the claimed Tg (See col. 4, l. 53 to col. 5, l. 20 with
a specific focus on col. 9 ll. 18-40 and col. 5, 20-32.)
Although Kasperchik does not mention that the claimed functional
limitation of the colorant-receiving layer, i.e., “said latex exhibits self-
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adhesive properties at a room temperature such that said latex layer remains
in place on said first microporous layer without requiring a second binder
and without being fused” as asserted by Appellants, the Examiner has reason
to believe that such functional properties are present in the colorant-
receiving layer taught by Kasperchik since it is made of the claimed
ingredients and/or it is placed over the porous vehicle sink layer having a
binder without any mention of an additional binder. In re Schreiber, 128
F.3d 1473, 1477-78 (Fed. Cir. 1997), quoting In re Swinehart, 439 F.2d 210
(CCPA 1971) (“[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting patent
claims.”… Yet, choosing to define an element functionally, i.e., by what it
does, carries with it a risk.”). Thus, we concur with the Examiner that
Kasperchik renders the subject matter of claim 48 anticipated within the
meaning of 35 U.S.C. § 102(e).
CLAIM 49
On this record, we concur with Appellants that the colorant-receiving
layer taught by Kasperchik is not “ink permeable” since it is treated to have
mordant properties to prevent the passage of a dye or colorant in an ink
vehicle (col. 4, l. 34 to col. 5, l. 67). As is apparent from col. 4, ll. 43-46, of
Kasperchik, the colorant-receiving layer taught by Kasperchik allows the
passage of an ink vehicle only, but not the ink colorant. Thus, we find that
the Examiner has not demonstrated that Kasperchik renders the subject
matter of claim 49 anticipated within the meaning of 35 U.S.C. § 102(e).
CLAIM 52
On this record, the Examiner found at page 6 of the Answer that
Kasperchik teaches that its colorant-receiving layer can have a hydrophobic
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core having a glass transition temperature (Tg) higher than ambient
temperature, preferably 45 oC to about 160 oC, more preferably to 60 oC to
about 130 oC (col. 5, ll. 21-32). The Examiner also found at page 6 of the
Answer that the latex colorant-receiving material exemplified by Kasperchik
has a hydrophobic core having Tg of about 45 oC and a hydrophilic shell
having a Tg of about 40 oC (col. 9, ll. 35-40). It follows that some picking
and choosing is required to arrive at the claimed core and shell glass
transition temperatures. As stated in In re Arkley, 455 F.2d 586, 587-88
(CCPA 1972) states:
[F]or the instant rejection under 35 U.S.C. § 102(e) to
have been proper, the [prior art] reference must clearly and
unequivocally disclose the claimed compound or direct those
skilled in the art to the compound without any need for picking,
choosing, and combining various disclosures…. Such picking
and choosing may be entirely proper in the making of a 103,
obviousness rejection, where the applicant must be afforded an
opportunity to rebut with objective evidence any inference of
obviousness…, but it has no place in the making of a 102,
anticipation rejection.

Accordingly, we concur with Appellants that Kasperchik does not
teach the claimed glass transition temperatures for a hard core and a shell
with sufficient specificity to constitute a description within meaning of 35
U.S.C. § 102(e). In re Schaumann, 572 F.2d 312, 315 (CCPA 1978); see
also In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.

CLAIMS 55 AND 57
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Contrary to Appellants’ arguments at pages 15 and 16 of the Appeal
Brief, the Examiner correctly found that Kasperchik teaches, at col. 4, l. 43
to col. 5, l. 20, that its hydrophilic shell comprises a cationic monomer and a
coalescing agent at pages 5, 6, 8, and 10 of the Answer. However, as
indicated supra, Kasperchik does not teach an ink permeable color-receiving
layer. Thus, for the same reasons states above, we concur with Appellants
that Kasperchik does not render the subject matter of claims 55 and 57
anticipated within the meaning of 35 U.S.C. § 102(e).
CLAIM 86
The Examiner asserts that “the core-shell particles in example 1[of
Kasperchik] would meet the [core-shell particle size recited in] claim 86
inherently” (Ans. 10). However, the Examiner has not supplied any factual
basis, much less any explanation, as to why or how the claimed core-shell
particles size would necessarily be produced in Kasperchik’s example 1.
Thus, on this record, the Examiner has not demonstrated that Kasperchik
inherently produces a colorant-receiving layer having the claimed core-shell
particles size within the meaning of 35 U.S.C. § 102(e). Ex parte Levy, 17
USPQ2d 1461, 1464 (BPAI 1990) (When an examiner relies upon a theory
of inherency, there must be “a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”)
CLAIM 87
As indicated supra, the Examiner correctly found that the exemplified
latex colorant receiving material has a hydrophobic core having a glass
transition temperature (Tg) of about 45 oC and a hydrophilic shell having a
Tg of about 40 oC. (col. 9, ll. 35-40). Thus, on this record, we concur with
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the Examiner that Kasperchik renders the subject matter of claim 87
anticipated within the meaning of 35 U.S.C. § 102(e).

IV. 35 U.S.C. § 103(a).
ISSUE AND CONCLUSION
The dispositive question is: Did the Examiner err in concluding that
Appellants have failed to remove Kasperchik as “prior art” for the purpose
of the § 103(a) rejection of record? On this record, we answer this question
in the affirmative.
RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, AND
ANALYSIS
We concur with Appellants that this rejection fails since Kasperchik is
not available as prior art under 35 U.S.C. § 103. In particular, 35 U.S.C. §
103(c) states that:
Subject matter developed by another person, which qualifies as
prior art only under one or more of subsections (e), (f), and (g)
of section 102 of this title, shall not preclude patentability under
this section where the subject matter and the claimed
invention were, at the time the invention was made, owned by
the same person or subject to an obligation of assignment to the
same person.
Appellants state that Kasperchik and the present application are
assigned to the same Hewlett-Packard development Co. LP (App. Br. 22) In
support of this position, Appellants provide the recorded reel/frame
assignment numbers for both Kasperchik and the present application (id.)).
Pursuant to Manual of Patent Examining Procedure (MPEP) § 706.02(l)(2)
(Rev. 6, Sept. 2007), Appellants further state that:
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Appellants hereby state that the subject matter of the
present application and the Kasperchik reference were, at the
time the invention of the present application was made, owned
by, or subject to an obligation of assignment to, the same
person, i.e., Hewlett-Packard Development Co. LP.” [(Appeal
Brief filed June 25, 2008 and Reply Br. 15.)].

Accordingly, we reverse the Examiner’s decision rejecting claims 48,
49, 51 through 53, 55, 57, 58, 71, 72, 80, and 86 through 89 under 35 U.S.C.
§ 103(a) as unpatentable over the disclosure of Kasperchik.
ORDER
In summary:
1) The rejection of claims 48, 49, 51 through 53, 55 through 58,
71, 72, and 80 through 90 under 35 U.S.C. § 112, first paragraph, as lacking
written descriptive support for the presently claimed subject matter in the
application disclosures as originally filed is reversed;
2) The rejection of claim 48 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as their invention
is reversed;
3) The rejection of claims 49, 51 through 53, 55 through 58, 71,
72, and 80 through 90 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicants regard as their invention is affirmed;
4) Claims 48 and 87 under 35 U.S.C. § 102(e) as anticipated by
the disclosure of Kasperchik is affirmed;
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5) Claims 49, 51 through 53, 55, 57, 58, 71, 72, and 86 under 35
U.S.C. § 102(e) as anticipated by the disclosure of Kasperchik is reversed;
and
6) The rejection of claims 48, 49, 51 through 53, 55, 57, 58, 71,
72, 80, and 86 through 89 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Kasperchik is reversed.

In view of the foregoing, the decision of the Examiner is affirmed.
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

tc

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
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