Ex Parte Steichen et al

Patent Trial and Appeal Board

Sep 22, 2017

13139018 (P.T.A.B. Sep. 22, 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.
13/139,018 06/10/2011 Christine E. Steichen 82735602 7369
22879
HP Tnr
7590 09/26/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
GOLDEN, CHINESSA T
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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 CHRISTINE E. STEICHEN, JULIO CESAR ALONSO,
XULONG FU, and LOKENDRA PAL
Appeal 2017-002318
Application 13/139,018
Technology Center 1700
Before PETER F. KRATZ, JEFFREY B. ROBERTSON, and
AVELYN M. ROSS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-002318
Application 13/139,018
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 4—6, and 16—18. (App. Br. 11.) We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
The Specification describes an imageable article having a photobase
with a coating layer applied to the backside in order to control “curl”, i.e.,
the unbalance between the front side and backside of the imageable article
caused by application of the imaging layer to the article. (Spec. 2,1. 23 — 3,
1. 2; p. 5,11. 1—16.) Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. An imageable article, comprising:
a filled resin layer bonded to a back side of a paper substrate;
a non-filled resin layer bonded to a front side of the paper
substrate, wherein the non-filled resin layer is selected from the group
consisting of low density polyethylene (LDPE), and a combination of
low density polyethylene (LDPE) and high density polyethylene
(HDPE); and
an imaging layer coated on the non-filled resin layer to support
an image, the imaging layer to render the resin-bonded paper substrate
compatible with receiving the image;
wherein the backside filled resin layer includes: resin selected
from the group consisting of low density polyethylene (LDPE), and a
combination of low density polyethylene (LDPE) and high density
polyethylene (HDPE); and a filler selected from the group consisting
of calcium carbonate, zeolite, silica, talc, alumina, aluminum
1 According to the Appellants, the Real Party in Interest is Hewlett-Packard
Development Company, LP. (Appeal Brief filed May 4, 2016, hereinafter
“App. Br.,” 3.)
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Appeal 2017-002318
Application 13/139,018
trihydrate (ATH), calcium silicate, kaolin, calcined clay, and
combinations thereof, the filler excluding titanium dioxide;
and wherein the backside filled resin layer includes from 3
weight% to 60 weight% of the filler.
THE REJECTIONS
The Examiner rejected claims 1, 4—6, 16, and 18 under 35 U.S.C.
§ 103(a) as obvious over Park (US 2008/0166507 Al, published on July 10,
2008) and Kato (U.S. Patent 4,971,950, issued on November 20, 1990).
The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as obvious
over Park, Kato, and Koike (US 2007/0187054 Al, published on August 16,
2007).
(Examiner’s Answer entered October 21, 2016, hereinafter “Ans.”)
ISSUE
The Examiner found that Park discloses an imageable article as
recited in claim 1, with the exception of a filled resin layer bonded to a back
side of a paper substrate having the fillers recited in claim 1. (Ans. 2—3.)
The Examiner found that Kato discloses an imageable article including a
filled resin layer bonded to a backside of a paper substrate, including a
number of fillers recited in the claims. (Ans. 3.) The Examiner concluded
that it would have been obvious to incorporate the filler of Kato into the
resin layer bonded to the back side of the paper substrate disclosed in Park in
order to form clear images or pictures without undesirable curling and
wrinkle forming. (Ans. 3—4, citing Kato, col. 2,11. 45—68, col. 3,11. 1 4.)
Appellants contend that Kato does not disclose that the filler excludes
titanium dioxide as recited in claim 1, but rather lists titanium dioxide as a
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Application 13/139,018
suitable filler. (App. Br. 6—7.) Accordingly, Appellants argue that because
Kato is silent as to excluding titanium dioxide, it would not have been
obvious to consider some, but not all, of the fillers disclosed in Kato. (App.
Br. 7—8.) Therefore, Appellants contend that the Examiner’s rejection is
based on improper hindsight. (App. Br. 8.)
The dispositive issue in this appeal is:
Did the Examiner reversibly err in concluding that it would have been
obvious to have employed a filler to the backside coating layer of Park,
which does not include titanium dioxide, in view of the disclosure of Kato?
PRINCIPLES OF LAW
As stated by the Supreme Court in KSR, “[i]n determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls. What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007).
ANALYSIS
We confine our discussion to appealed claim 1, which contains claim
limitations representative of the arguments made by Appellants pursuant to
37C.F.R. §41.37(c)(l)(iv).
We are not persuaded by Appellants’ argument that because Kato lists
titanium dioxide as a filler, the recitation in claim 1 that the filler excludes
titanium dioxide would not have been obvious. That is, we agree with the
Examiner that Kato does not require the use of titanium dioxide. (Ans. 7—8.)
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Application 13/139,018
Kato merely identifies titanium dioxide in a list of fillers useful in the back
surface coating film disclosed therein. (Kato, col. 4,11. 51—58.) In addition,
as pointed out by the Examiner, Kato exemplifies calcium carbonate as a
filler in the examples. (Ans. 8, citing Kato, Examples 1—7.) Thus, Kato
provides a reason for one of ordinary skill in the art to select fillers other
than titanium dioxide to be used in the back surface coating film.
Accordingly, we affirm the Examiner’s rejection of claims 1, 4—6, 16,
and 18 as obvious over Park and Kato.
Claim 17
Appellants rely on similar arguments for claim 17 as those addressed
above in relation to claim 1. (App. Br. 8—10.) As a result, we affirm the
Examiner’s rejection of claim 17 for similar reasons.
CONCLUSION
Appellants have failed to demonstrate that the Examiner erred in
concluding that it would have been obvious to have employed a filler to the
backside coating layer of Park, which does not include titanium dioxide, in
view of the disclosure of Kato.
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Application 13/139,018
DECISION
We affirm the Examiner’s decision rejecting claims 1, 4—6, and 16—18
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).
AFFIRMED
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