Ex Parte Tran et al

Board of Patent Appeals and Interferences

Sep 13, 2010

11105882 (B.P.A.I. Sep. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte HAI Q. TRAN
and GARY W. BYERS
______________

Appeal 2009-009180
Application 11/105,882
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 12, 18-24, 26-32, and 34-44 in the Office
Action mailed September 23, 2008. 35 U.S.C. §§ 6 and 134(a) (2002);

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.
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37 C.F.R. § 41.31(a) (2008).
We affirm the decision of the Primary Examiner.
Claim 12 illustrates Appellants’ invention of a print medium for inkjet
printing, and is representative of the claims on appeal:2
12. A print medium for inkjet printing, comprising:
a print substrate;
a fixative agent disposed on the print substrate, wherein the fixative
agent includes a multi-valent salt and a cationic polymer, wherein the multi-
valent salt includes a metallic cation and an anion, wherein the metallic
cation is selected from: sodium, calcium, copper, nickel, magnesium, zinc,
barium, iron, aluminum, and chromium ions, wherein the anion is selected
from: chloride, iodide, bromide, nitrate, sulfate, sulfite, phosphate, chlorate,
acetate ions, wherein the fixative agent being disposed on the print substrate
to achieve a load factor of about of about 0.1 gram per square meter (GSM)
to 5 GSM; and
an anti-curl composition disposed on the print medium, wherein the
anti-curl composition includes an amine oxide, wherein the anti-curl
composition being disposed on the print substrate to achieve a load factor of
about 0.015 GMS to 2.69 GMS of the anti-curl composition on the print
substrate, wherein the amine oxide is selected from a compound having the
formula:
R1
|
R2−N+→ O
|
R3
wherein R1, R2, and R3 are each individually selected from H and an
alkyl group, and wherein the alkyl is a linear C1 to C6 alkyl group,
wherein the curl of the print medium is less than 20 millimeters (mm)
when printed on by a dye based ink, wherein the curl of the print medium is
less than 50 mm when printed on by a pigment based ink, and wherein the

2 We have copied claim 12 as it stands of record in the Amendment filed
June 24, 2008.
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curl of the print medium is less than 30 millimeters when printed on by a
combination of a dye based ink and pigment based ink.
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 12, 18-24, 26-32, and
34-44 over Bagwell (us 2005/0084614 A1) in view of Login (US 6,500,215
B1) and Frenkel (US 2006/0028521 A1). App. Br. 5; Ans. 3.
We decide this appeal based on independent claims 12, 24, and 32,
and on other claims to the extent argued in the Appeal Brief. 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
Opinion
Upon thorough consideration of the record, we agree with the
Examiner’s findings of fact, conclusions of law, and responses to
Appellants’ arguments. See generally Ans. We add the following for
emphasis.
We cannot agree with Appellants’ position, with respect to claim 1,
that the Examiner erred in finding that Bagwell and Login are analogous
prior art. According to Appellants, Bagwell relates to inkjet printing, and
Login relates to processes of dyeing cotton fabrics in a dye bath. App. Br. 8,
citing Bagwell ¶ 0002; Login col. 5, ll. 49-52, col. 8, ll. 15-16, and col. 17,
ll. 16 and 54-56. “Bagwell discloses that textile fabrics are particularly
difficult for use as substrates for inkjet printing, because the ink droplets
may fail to penetrate the fabric’s fibers,” and Login soaks textiles in a hot
dye bath to avoid the penetration problem. App. Br. 8, citing Bagwell
¶ 0004. Appellants argue that one of ordinary skill in the art “would not
have had a reasonable expectation of success in including components
disclosed in Login for modifying Bagwell’s process,” pointing out that this
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person “would not generally consider immersing Bagwell’s ink jet print
media in a dye bath, because this could hinder subsequent absorption of ink
jet ink into the print media.” App. Br. 8-9
As the Examiner points out, Bagwell would have disclosed to one of
ordinary skill in this art that pretreating a textile fabric and other substrates
including, among other things, paper, with coating compositions containing
the amine oxide N-methylmorpholine-N-oxide (NMMO), avoids the
penetration problem when these substrates are inkjet printed. Ans. 3-4 and
6-7, citing Bagwell, abstract, ¶¶ 0004, 0057 and 0058; see also Bagwell,
e.g., 0002, 0003, 0007-0009. As the Examiner further points out, Login
treats textiles with amine oxides, including NMMO, to make the textiles
more receptive to dyes. Ans. 4, citing Login col. 4, ll. 25-46; see also Login,
e.g., abstract, col. 1, ll. 52-65, col. 3, ll. 16-27. We find that Login would
have disclosed that “an amine oxide composition can also be printed onto
the textile material.” Login col. 2, ll. 54-56. We also find that Frenkel
would have acknowledged that inkjet printing is applied to “recording media
such as paper, cloth or film.” Frenkel ¶ 0007. Thus, we agree with the
Examiner that one of ordinary skill in the art would have considered
Bagwell and Login as well as Frenkel to be analogous prior art. See, e.g., In
re Clay, 966 F.2d 656, 659-60 (Fed. Cir. 1992). We further agree with the
Examiner that Appellants’ argument that the combination of Bagwell and
Login must be considered on the basis of whether Bagwell’s inkjet print
media can be subjected to Login’s dyebath is not persuasive because Login
is relied on for the teaching of treating textiles with amine oxides, and not
for methods of dyeing a substrate. Ans. 7. See, e.g., In re Keller, 642 F.2d
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413, 425 (CCPA 1981) (“The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”).
We further cannot agree with Appellants’ position, with respect to
claims 1, 24, and 32, that the Examiner erred in applying Login for a coating
composition containing an amine oxide. According to Appellants, “Login
discloses print media that are treated with an amine oxide that, after a
washing step, is absent from the final product,” and thus, “the fiber surfaces
re-harden to their original consistency.” App. Br. 9 (original emphasis
deleted), citing Login col. 7, ll. 29-31 and 33-37; see also App. Br. 11-12
and 14-15; Reply Br. 2-5. Appellants further contend that Frenkel does not
cure this deficiency. App. Br. 9.
As the Examiner points out, Login would have taught one of ordinary
skill in the art that amine oxides react with textiles fibers, and unreacted
amine oxides can be rinsed out. Ans. 7, citing Login col. 2, ll. 1-7 and 65,
and col. 5, ll. 29-45; see also Login col. 3, ll. 25-27, and col. 5, ll. 45-48.
We find, as does the Examiner, that Login describes Example 1 as “[t]his
experiment demonstrates that appropriate treatment of cotton fabric with a
selected amine oxide will temporarily plasticize the surface of the cotton
fibers without altering their original fibrous characteristics.” Login col. 6, ll.
63-66. We note here that, as the Examiner further points out, Frenkel is not
relied on with respect to the teachings supplied by Login. Ans. 8. Thus,
contrary to Appellants’ position, the Examiner has established find that one
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of ordinary skill in the art would have recognized that Login teaches the
amine oxide reacts with and is retained on the textile fiber, and that the
experiment described in Login Example 1 does not establish otherwise.
Appellants’ contention that the Examiner erred in equating Login’s “coating
composition” with “a print medium” as claimed is without merit. Reply Br.
2.
Appellants’ contentions with respect to claims 18-23, 26-31, 34-39,
40-44, merely recite limitations in these claims, which does not constitute
argument, and otherwise rely on the arguments we considered above. App.
Br. 10-11, 12-13, and 15-16. 37 C.F.R. § 41.37(c)(1)(vii) (2008) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”). 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”). .
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Bagwell, Login, and Frenkel with Appellant’s
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 12, 18-24, 26-32, and 34-44
would have been obvious as a matter of law under 35 U.S.C.
§ 103(a).
The Primary Examiner’s decision 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)(1)(iv).
AFFIRMED

sld

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