Ex Parte Toles

Patent Trial and Appeal Board

Dec 14, 2016

13260377 (P.T.A.B. Dec. 14, 2016)

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.
13/260,377 09/26/2011 Christopher Toles 82754503 3355
22879
HP Tnr
7590 12/16/2016 EXAMINER
3390 E. Harmony Road
Mail Stop 35
SHAH, SAMIR
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
12/16/2016 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 CHRISTOPHER TOLES
Appeal 2015-005797
Application 13/260,377
Technology Center 1700
Before ROMULO H. DELMENDO, ELIZABETH M. ROESEL, and
LILAN REN, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—8 and 15. We have jurisdiction under 35 U.S.C.
§ 6(b).2
1 Hewlett-Packard Development Company, L.P. is identified as the real party
in interest. App. Br. 2.
2 In our opinion below, we reference the Specification filed September 26,
2011 (Spec.), the Final Office Action mailed August 6, 2014 (Final Action),
the Appeal Brief filed December 31, 2014 (App. Br.), the Examiner’s
Answer mailed April 2, 2015 (Ans.), and the Reply Brief filed May 20, 2015
(Reply Br.).
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Application 13/260,377
We AFFIRM-IN-PART and REVERSE-IN-PART. As discussed
below, our partial affirmance is designated a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b).
STATEMENT OF THE CASE
Claimed Invention
The claimed subject matter relates to a coated print media suitable for
inkjet printing. App. Br. 31 (claim 1); Spec. 11. The coated print media
includes a media substrate, such as paper, and a coating layer comprising a
binder and co-milled particles of precipitated calcium carbonate and zeolite.
App. Br. 31 (claim 1); Spec. 124.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below from Appellant’s Claims Appendix:
1. A coated print media comprising:
a media substrate;
a coating layer formed on at least one surface of the
media substrate, said coating layer comprising at least one
binder and co-milled particles of precipitated calcium carbonate
and zeolite,
wherein said zeolite is selected from the group consisting
of Zeolite A, Zeolite X, and combination thereof, and
wherein the co-milled particles are produced by milling
precipitated calcium carbonate in the presence of zeolite and
take on the form of aggregates, and the average particle size of
said aggregates is 400nm or less.
App. Br. 31.
References
Yasuda et al. US 2001/0044488 Al Nov. 22, 2001
Tsuchida et al. US 2002/0071941 Al June 13, 2002
Malla et al. US 2003/0019399 Al Jan. 30, 2003
Sugiyama et al. US 2003/0008115 Al Jan. 9, 2003
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Hiyama et al. US 2006/0210732 A1 Sept. 21, 20063
Rejections
The Examiner maintains the following rejections:
1. Claims 1—3, 7, 8, and 15 under 35 U.S.C. § 103(a) as unpatentable
over Malla in view of Hiyama and Yasuda. Final Action 2—\.
2. Claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over
Malla, Hiyama, and Yasuda in view of Tsuchida. Id. at 5.
3. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Malla,
Hiyama, and Yasuda in view of Sugiyama. Id. at 5—6.
ANALYSIS
Claims 1—3, 7, 8, and 15
Appellant argues claims 1—3, 7, 8, and 15 as a group, focusing on
limitations common to independent claims 1 and 15 and presenting no
separate argument regarding dependent claims 2, 3, 7, or 8. App. Br. 6—21.
Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv), we select
claim 1 as representative of this group, and claims 2, 3, 7, 8, and 15 stand or
fall together with claim 1.
The Examiner finds that Malla discloses a coated print media and
discloses most of the limitations of claim 1. Final Action 2 (citing Malla
112, 55, 73 and claim 30). The Examiner cites Hiyama to teach the average
particle size limitation and concludes that it would have been obvious to use
the average particle size of Hiyama for the particles of Malla “to obtain
proper glossiness and color density.” Id. {citing Hiyama H 41^44). The
Examiner cites Yasuda to teach zeolite 4A and concludes that it would have
3 Hereinafter, we refer to each reference by the first-named inventor.
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been obvious to use the particular zeolite of Yasuda in the coating of Malla
as modified by Hiyama “to obtain excellent heat stabilizing effect.” Id. at 3
(citing Yasuda Abstract, || 12, 93). The Examiner determines that “co­
milled” is a product-by-process limitation and shifts the burden to Appellant
to show that co-milling results in an unobvious difference between the
claimed product and the prior art product. Id.
Appellant argues (i) that the combination of Malla, Hiyama, and
Yasuda does not disclose aggregate particles containing both precipitated
calcium carbonate (“PCC”) and zeolite, App. Br. 7—8; (ii) that Appellant’s
evidence shows an unobvious difference between co-milled particles and the
prior art particles, id. at 8—15; and (iii) that the Examiner’s rationales for
combining the references are flawed, insufficient, and/or rely on
impermissible hindsight, id. at 15—21. For the reasons discussed below, we
are not persuaded that Appellant identifies reversible error in the Examiner’s
rejection of claim 1.
A preponderance of the evidence supports the Examiner’s finding that
Malla discloses aggregate particles containing both PCC and zeolite. The
Examiner directs us to paragraphs 20 and 55 and claims 8 and 9 of Malla.
Final Action 2; Ans. 2. Malla paragraph 20 discloses that aggregated
pigments, for example, PCC or zeolite, are useful in coating compositions
for inkjet printing media. Malla paragraph 55 discloses that the starting
material for the aggregated pigment can be PCC, zeolite, or other mineral
“or a mixture of two or more of these minerals.” Malla claim 8 discloses dry
grinding an unground starting material, whereby the ground material is
aggregated. Malla claim 9 discloses that the starting material may be a
mixture of PCC and zeolite. A similar disclosure is provided in Malla
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paragraphs 52—55 and claims 1 and 2. In view of these disclosures, the
Examiner is correct in finding that Malla discloses aggregated pigments that
comprise a mixture of pigments, such as PCC and zeolite. Ans. 2.
We are not persuaded by Appellant’s arguments based on the “co­
milled” feature of claim 1, App. Br. 8—15, but we rely on different reasoning
than the Examiner. The Examiner finds that the combination of Malla,
Hiyama, and Yasuda does not disclose co-milled particles or co-milling.
Final Action 3; Ans. 10. In contrast to the Examiner, we find that Malla
discloses “co-milled particles of precipitated calcium carbonate and zeolite”
and “wherein the co-milled particles are produced by milling precipitated
calcium carbonate in the presence of zeolite,” as recited in claim 1. Our
finding is based on the same disclosures as cited above regarding aggregate
particles containing both PCC and zeolite. Malla 20, 52—55, claims 1, 2,
8, and 9. As discussed above, Malla discloses that the unground starting
material for the dry grinding step can be “a mixture of two or more of these
materials,” where the list of materials includes PCC and zeolite. Id. 1152-
55, claims 1, 2, 8, and 9. In our view, dry grinding a mixture of PCC and
zeolite is the same as co-milling, and the product of this step is “co-milled
particles,” as recited in claim 1.
Our finding is further supported by Malla’s disclosure of Examples
illustrating grinding a blend of two different minerals. Id. 1 86 (Example 4),
1 89 (Example 5), 194 (Example 6—grinding a blend of PCC and another
mineral). Although Malla does not use the term, “co-milling,” the process is
indistinguishable from what is recited in Appellant’s claim 1.
In view of our finding that Malla discloses the same process (co­
milling) as recited in the product-by-process limitations of claim 1, we need
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not consider whether Appellant’s evidence4 is sufficient to show an
unobvious difference between the claimed product and the products
disclosed in Malla. Cf. Final Action 3. In any event, Appellant’s evidence
does not compare a product of Appellant’s co-milling process to a product of
the co-milling process disclosed in Malla and is therefore not persuasive to
show an unobvious difference between the products.
We are persuaded that the Examiner errs in combining Yasuda’s
teaching of zeolite 4A with the teachings of Malla and Hiyama. More
specifically, we are persuaded that Yasuda’s disclosure of heat stabilization
of flame-retarded thermoplastic resins is not sufficiently relevant to coated
inkjet printing media to support the Examiner’s reliance on Yasuda to teach
a zeolite for coated printing media. App. Br. 15—18; Reply Br. 11.
Accordingly, we are persuaded that the Examiner’s rationale for combining
Yasuda with Malla and Hiyama relies on impermissible hindsight and lacks
a rational underpinning.
Nevertheless, it is undisputed that Malla and Hiyama each teaches the
use of zeolites in coated inkjet printing media—the same purpose for which
Appellant uses Zeolite A or Zeolite X. Malla 155; Hiyama 141. It is also
undisputed Zeolite A and Zeolite X, as recited in claim 1, are among a finite
number of known types of zeolites. Spec. Tflf 11, 13, 15 (Zeolite A (LTA)
and Zeolite X (FAU) are two of the 176 Framework Types recognized by the
4 Appellant’s evidence includes a Declaration under 37 C.F.R. § 1.132 of Dr.
Christopher Toles dated December 8, 2013 and Supplemental Declaration
under 37 C.F.R. § 1.132 of Dr. Christopher Toles dated June 10, 2014, both
of which are included in Appellant’s Evidence Appendix. Appellant’s
evidence also includes the scanning electron microscope (SEM) images in
Figures 3—5.
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International Zeolite Association, citing http://www.iza-online.org/.).5 We
find that, based on the cited teachings of Malla and Hiyama and the
knowledge in the art regarding zeolites, http://www.iza-online.org/, a person
of ordinary skill in the art would have anticipated success in using either
Zeolite A or Zeolite X in the coated printing media of Malla.
Accordingly, we hold that the cited teachings of Malla and Hiyama,
together with the knowledge in the art regarding zeolites, http://www.iza-
online.org/, are sufficient to establish prima facie obviousness of the subject
matter claim 1, without relying on Yasuda. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (obviousness analysis may take into account
whether there is “a design need or market pressure to solve a problem,” “a
finite number of identified, predictable solutions,” and “anticipated
success”); see also In re Corkill, 111 F.2d 1496, 1500 (Fed. Cir. 1985)
(obviousness rejection of claims affirmed in light of prior art teaching that
‘hydrated zeolites will work’ in detergent formulations, even though “the
inventors selected the zeolites of the claims from among ‘thousands’ of
compounds”); Ex parte Fu, 89 USPQ2d 1115, 1122 (BPAI 2008) (Because a
person having ordinary skill in the art would have “anticipated success” in
trying claimed species in view of prior art disclosure of genus, the subject
matter of appealed claim 1 would have been prima facie obvious over prior
art disclosure of genus.)
5 The Specification cites http://www.iza-online.org/ without specifying a
date the web page was last accessed. In this decision, we refer to the web
page as cited in the Specification, i.e., as it existed before the filing date of
Appellant’s application.
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On this record, Appellant does not attempt to rebut prima facie
obviousness, e.g., by showing that Zeolite A or Zeolite X, provides
unexpectedly superior results over other types of zeolites.
To the extent that Appellant challenges the sufficiency of the
Examiner’s rationale for combining the teachings of Malla and Hiyama,
App. Br. 18—21, we are not persuaded that Appellant’s arguments identify
reversible error.
We therefore sustain the obviousness rejection of claims 1—3, 7, 8, and
15 on the basis of Malla, Hiyama, and the knowledge in the art regarding
zeolites, http://www.iza-online.org/, without relying on Yasuda. Because
our reasoning and the art relied upon differs substantially from that of the
Examiner, we designate our affirmance as a new ground of rejection.
37 C.F.R. § 41.50(b).
Claim 6
Claim 6 depends from claim 1 and recites “wherein said coating layer
comprises 100 dry parts of said co-milled particles of precipitated calcium
carbonate and zeolite and 5 to 15 parts of said binder.” App. Br. 32.
The Examiner finds that the amount of binder is not disclosed by the
combination of Malla, Hiyama, and Yasuda, but that Sugiyama discloses a
print media coating containing 5 to 30 parts by weight of binder per 100
parts by weight of pigment. Final Action 6 (citing Sugiyama 1 32). The
Examiner concludes that it would have been obvious to use the amount of
binder disclosed in Sugiyama in the coating of Malla (as modified by
Hiyama and Yasuda). Id.
Appellant argues that the Examiner relies on the wrong disclosure in
Sugiyama. According to Appellant, a skilled artisan would look to the
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Sugiyama’s teaching regarding the amount of binder in an ink receiving
layer (Sugiyama 12—17), not the amount of binder in a glossiness
adjusting layer {id. H 31—32), as cited by the Examiner. App. Br. 25—26;
Reply Br. 14.
We are not persuaded that Appellant identifies reversible error in the
Examiner’s rejection of claim 6.
The Examiner is correct that, although not denominated as such,
Sugiyama’s glossiness adjustment layer functions as an ink receiving layer.
Ans. 15. The Examiner’s finding is supported by Sugiyama, which discloses
that a glossiness adjusting layer may be applied on top of an ink receiving
layer in order to provide “superior recording properties for inkjet printer.”
Sugiyama 131. “Superior recording properties for inkjet printer” means
that the glossiness adjusting layer receives ink. Even if Appellant were
correct that the Examiner relies on the wrong disclosure in Sugiyama,
Appellant has not shown that an obviousness analysis based on the amount
of binder in Sugiyama’s ink receiving layer would have a different result.
We therefore sustain the obviousness rejection of claim 6. For the
reasons discussed above in connection with claim 1, we sustain the rejection
on the basis of Malla, Hiyama, Sugiyama, and the knowledge in the art
regarding zeolites, http://www.iza-online.org/, without relying on Yasuda.
Because our reasoning and the art relied upon as to base claim 1 differs
substantially from that of the Examiner, we designate our affirmance as a
new ground of rejection. 37 C.F.R. § 41.50(b).
Claims 4 and 5
Claim 4 depends from claim 1 and recites: “wherein the weight ratio
of precipitated calcium carbonate to zeolite is in the range of 5:1 to 20:1.”
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Claim 5 depends from claim 1 and recites a narrower weight ratio range of
5:1 to 10:1. App. Br. 31—32.
The Examiner finds that the combination of Malla, Hiyama, and
Yasuda does not disclose the amount of precipitated calcium carbonate, but
that Tsuchida discloses coated print media comprising precipitated calcium
carbonate in an amount of 20 to 90% by weight. Final Action 5 (citing
Tsuchida 137). The Examiner concludes that it would have been obvious to
use the amount of precipitated calcium carbonate of Tsuchida in the coating
of Malla (as modified by Hiyama and Yasuda). Id. Based on the amount of
zeolite disclosed in Yasuda and the amount of PCC disclosed in Tsuchida,
the Examiner finds that “the amount of zeolite and PCC would broadly
overlap the claimed ratio.” Id.
Appellant argues that the combined references do not disclose or
suggest a weight ratio of PCC to zeolite, as recited in claims 4 and 5. App.
Br. 22—23; Reply Br. 13—14. In addition, Appellant argues that a person of
ordinary skill in the art would have no rationale to combine 0.01 to 5 parts
zeolite, as disclosed in Yasuda, with 20-90% PCC, as disclosed in Tsuchida,
when the compositions taught by Yasuda and Tsuchida are so different.
Reply Br. 13—14.
For the reasons argued by Appellant and reiterated below, we are
persuaded that the Examiner errs in concluding that the subject matter of
claims 4 and 5 would have been obvious in view of Malla, Hiyama, Yasuda,
and Tsuchida. Malla, Hiyama, and Tsuchida each discloses PCC and zeolite
for use as pigments or inorganic particles in a coating for inkjet printing
media. Malla 120; Hiyama 141; Tsuchida 31, 3 5. Malla and Tsuchida
each discloses that two or more pigments may be used, thereby teaching a
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combination of PCC and zeolite. Malla 1 55; Tsuchida 135. But Appellant
is correct that none of these references, taken alone or in combination,
discloses, teaches, or suggests a weight ratio of PCC to zeolite.
For the reasons as discussed above in connection with claim 1, we are
persuaded that the Examiner errs in combining the teachings of Yasuda with
Malla, Hiyama, and Tsuchida. Even if it were proper to combine these
references, however, we are persuaded that the Examiner errs in concluding
that the combined teachings of these references would have led a person of
ordinary skill in the art to the weight ratios of PCC to zeolite recited in
claims 4 and 5. More specifically, the Examiner fails to explain sufficiently
how Yasuda’s disclosure of 0.01 to 5 parts by weight zeolite per 100 parts
by weight of thermoplastic resin combined with Tsuchida’s disclosure of 20
to 90 wt.% PCC in a print media coating would have led a person of
ordinary skill in the art to a print media coating containing PCC and zeolite
in a weight ratio of 5:1 to 20:1 (claim 4) or 5:1 to 10:1 (claim 5).
We therefore determine that a preponderance of the evidence does not
support the Examiner’s conclusion of obviousness with respect to claims 4
and 5, and we do not sustain the rejection of these claims over Malla,
Hiyama, and Yasuda in view of Tsuchida.
ORDER
The rejection of claims 1—3, 7, 8, and 15 under 35 U.S.C. § 103(a) is
affirmed on the basis of Malla, Hiyama, and the knowledge in the art
regarding zeolites, http://www.iza-online.org/, and our affirmance is
designated a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).
The rejection of claim 6 under 35 U.S.C. § 103(a) is affirmed on the
basis of Malla, Hiyama, Sugiyama, and the knowledge in the art regarding
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zeolites, http://www.iza-online.org/, and our affirmance is designated a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b).
The rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Malla, Hiyama, and Yasuda in view of Tsuchida is
reversed.
37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136
AFFIRMED-IN-PART; REVERSED-IN-PART; 37 C.F.R, $ 41.50(b)
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