Ex Parte Uhlir-Tsang et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11058697 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte LINDA C. UHLIR-TSANG,
John R. Moffatt, Mary E. Austin, and LeAnn Marie Bell
________________

Appeal 2010-006685
Application 11/058,697
Technology Center 1700
________________

Before TERRY J. OWENS, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
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A. Introduction1
Linda C. Uhlir-Tsang, John R. Moffatt, Mary E. Austin, and LeAnn
Marie Bell (“HP”) timely appeal under 35 U.S.C. § 134(a) from the final
rejection2 of claims 1-3, 12, 18-25, 34, and 40-44.3 We have jurisdiction.
35 U.S.C. § 6. We AFFIRM-IN-PART.
The subject matter on appeal relates to an “ink jet printing system”
comprising a print medium [e.g., paper ] having an ink-receiving layer
[e.g., an alumina, silica, gelatin, or polyvinyl alcohol coating (Spec. 11,
ll. 24-32)] and an ink-jet ink. The ink-jet ink comprises a liquid vehicle, a
dye, and an anti-bronzing agent that is the focus of the present claims.
According to the 697 Specification, “[b]ronzing is a lustrous sheen of a
printed sample in reflected light” that is associated with certain dyes. (Id.
at 1, ll. 25-26.) Black inks are said to take on a reddish-brown color, and to
have a lowered optical density upon drying, while cyan inks are said to
produce a reddish tone. The special features of the anti-bronzing agent are
recited in claim 1, which is representative.

1 Application 11/058,697, Additives to Eliminate Bronzing of Ink-Jet Inks
Printed on Photo Media, filed 14 February 2005 as a continuation-in-part of
an application filed 25 March 2005 (now U.S. Patent 7,052,537), and
claiming the benefit of a provisional application filed 13 September 2004.
The specification is referred to as the “697 Specification,” and is cited as
“Spec.” The real party in interest is listed as Hewlett-Packard Development
Co., which we abbreviate “HP.” (Appeal Brief, filed 5 February 2009
(“Br.”), 3.)
2 Office action mailed 20 August 2008 (“Final Rejection”; cited as “FR”).
3 Copending claims 4-11, 13-17, 26-33, and 35-39 have been withdrawn
from consideration (FR 1; Br. 5.)
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Representative Claim 1 reads:
1. An ink-jet printing system, comprising:
a) a print medium having an ink-receiving layer; and
b) an ink-jet ink configured for printing on the ink-
receiving layer, said ink-jet ink comprising:
i) a liquid vehicle,
ii) a dye, and
iii) an anti-bronzing agent comprising a planar
aliphatic ring or a planar aromatic ring,
said anti-bronzing agent including a member
selected from the group consisting of
a derivatized cyclic aliphatic ring,
a sulfonated aromatic ring,
a halogenated aromatic ring,
a phenol ring,
a heterocyclic aromatic ring,
a fused aromatic-aliphatic ring system,
and derivatives thereof,[4]
said anti-bronzing agent being present in an
effective concentration to reduce bronzing of the
ink-jet ink printed on the ink-receiving layer.
(Claims App., Br. 29; indentation, paragraphing, and emphasis added.)
Independent claim 23 is directed to a method of reducing bronzing by
ink-jet printing using a system comparable to the system recited in claim 1,
and is not argued separately from claim 1. Certain claims dependent from
claim 1 and the corresponding claims dependent from claim 23 are argued
separately and will be discussed infra.

4 According to the 697 Specification, “the term derivatized or derivative(s),
regardless of the context the term is used, includes appending a chemical
group(s) to the planar aliphatic or aromatic ring.” (Spec. 5, ll. 17-19)
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Initially, we note that the Examiner imposed a requirement for an
election of species of invention for examination, and that in response, HP
identified anti-bronzing compounds based on a heterocyclic aromatic ring.
(Br. 15, 1st full para.) All of the rejections focus on embodiments in which
the anti-bronzing agent is based on a heterocyclic aromatic ring. No other
species of an inkjet printing system specifying an anti-bronzing agent has
been presented for our consideration.
In the Examiner’s Answer,5 the Examiner maintained the following
ground of rejection:
A. Claims 1-3, 12, 18-25, 34, and 40-44 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Fukumoto6 and Lavery,7 as evidenced by the teachings of Oki.8
Under the authority of 37 C.F.R. §41.39(a)(2) (2007), the Examiner entered
the following NEW GROUNDS of rejection (Ans. 6-12):
B. Claims 1-3, 12, 21-25, 34, 43, and 44 stand rejected under
35 U.S.C. § 102(b) in view of Lavery.

5 Examiner’s Answer mailed 6 April 2009 (“Ans.”).
6 Hiroshi Fukumoto, Ink Composition, Inkjet Recording Method Using the
Same and Recorded Matter, U.S. Patent Application Publication
2004/0003755 A1 (8 January 2004), based on an application
filed 21 April 2003.
7 Aidan Joseph Lavery et al., Ink Additives, U.S. Patent 6,319,309 B1
(2001).
8 Yasuhiro Oki et al., Ink Composition, Recording Medium, Inkjet
Recording Method and Recording, U.S. Patent Application Publication
2004/0085421 A1 (6 May 2004), based on an application filed 24 June 2003.
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C. Claims 18-20 and 40-42 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Lavery and Chen.9
D. Claims 1, 3, 12, 21-23, 25, 34, 43, and 44 stand rejected under
35 U.S.C. § 102(b) in view of Kitamura.10
E. Claims 18-20 and 40-42 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Kitamura and Chen.
HP filed a Reply Brief,11 addressing all the grounds of rejection.
Following a Supplemental Examiner’s Answer,12 HP filed a Supplemental
Reply Brief.13
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Obviousness
HP raises reasonably distinct arguments for the separate patentability
of claims 1, 21 (the effective concentration of anti-bronzing agent “improves
stability” of the printed dye), 22 (the anti-bronzing agent is present in the ink
at about 0.2 wt% to 30 wt%), 18 (further limiting the ink-receiving layer of

9 Yung T. Chen et al., Ink Jet Recording Sheet, U.S. Patent 5,942,335 (1999).
10 Kazuhiko Kitamura et al., Ink for Ink Jet Recording, U.S.
Patent 6,100,315 (2000).
11 Reply Brief filed 5 June 2009 (“Reply”).
12 Supplemental Examiner’s Answer, entered 9 July 2009.
13 Appellants’ Supplemental Reply Brief under 37 C.F.R. §41.41,
filed 9 September 2009 (“SReply”).
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the print medium), and 3 (the anti-bronzing agent is neutral in the ink), each
with corresponding method claims that depend from independent claim 23.
Due to the closely related arguments, we consider claims 1, 21, and 22
together, but address claims 18 and 3 separately, as set out infra.
Claims 1, 21, and 22
The Examiner finds that Fukumoto describes inkjet ink compositions
comprising a liquid vehicle, a cyan dye, and aromatic compounds having a
carboxyl group that have an anti-bronzing property. (Ans. 4, 2d para., citing
Fukumoto 3 [0058] and 4 [0068].) The Examiner notes that Fukumoto also
teaches inkjetting the composition onto a recording medium. (Id., citing
Fukumoto 5 [0090].) According to the Examiner, Fukumoto does not
disclose bronzing agents that have a heterocyclic aromatic ring. (Id.)
The Examiner finds that Lavery describes inkjet-ink additives based
on polybasic compounds Z-Xn, where Z includes heterocyclic aromatic
rings, and X includes carboxylic acid groups, that result in less bronzing.
(Ans. 4, 3d para., citing Lavery, col. 1, ll. 22-31, ll. 61-67, and col. 2,
ll. 13-20.)
The Examiner argues that it would have been obvious to use the
heterocyclic carboxylic acids disclosed by Lavery as anti-bronzing agents in
the ink-jet compositions disclosed by Fukumoto because Fukumoto teaches
that aromatic acids function as anti-bronzing agents in ink-jet compositions.
(Ans., para. bridging 4-5.)
Regarding claims 22 and 44, which require effective amounts of anti-
bronzing additive between about 0.2 wt% and 20 wt%, the Examiner finds
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that Fukumoto teaches “relevant percentages” of the anti-bronzing agent.
(Ans. 5, 1st full para., citing Fukumoto 4 [0074] (preferably 0.1 to 10 wt%).)
HP raises several arguments against a prima facie case of
obviousness. The first, that the Examiner’s species election requirement is
evidence of the nonobviousness of the species identified in Fukumoto (Br.,
para. bridging 15-16), is without merit. The species election requirement
only establishes a rebuttable presumption, during examination, that the
indicated species are patentably distinct. Thus, it is a tool to focus initial
examination on a species of the applicant’s choosing. If the elected species
is found patentable, examination proceeds to another species recited in the
claims. Should the applicant file a divisional application directed to a
species subject to a standing election or restriction requirement, the divisions
are protected by 35 U.S.C. § 121 against the use of a patent issuing from
either the parent or the daughter against the other. However, the restriction
requirement does not create a legal presumption of distinct patentability as
against other prior art.14
HP argues further that the Examiner has failed to show that the
“effective concentration” of anti-bronzing agent has been rendered obvious.
(Br. 16.) The evidence of record does not support this argument. First,
according to Fukumoto, aromatic carboxylic acids are effective anti-

14 We note, for future reference, that Fukumoto exemplifies, as an apparent
anti-bronzing agent, 4-hydroxybenzoic acid [HO-C6H4-COOH] in
Examples 7 and 17, which is, according to HP, a derivative of phenol.
Similarly, Lavery, in Example 42, exemplifies as an apparent anti-bronzing
agent the compound sulphoisophthalic acid [C6H3(COOH)2(SO3H)],
a derivative of a sulfonated aromatic ring.
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bronzing agents in the range of 0.1 to 10 wt%. Fukumoto teaches that color
formation and image density can be assured with 0.1 wt% or more, and that
an appropriate viscosity and related issues can be controlled below 10 wt%.
(Fukumoto 4 [0067].) The anti-bronzing efficacy of aromatic carboxylic
acids is disclosed especially for cyan-type dyes such as C.I. Direct Blue 199
(see Fukumoto 2 [0031] for the phthalocyanine structure). Moreover, as the
Examiner points out (Ans. 5), Fukumoto discloses that the inkjet inks were
tested on Epson Premium Glossy Photo Paper from the Seiko Epson Corp
(the assignee of Fukumoto). (See also Fukumoto 8 [0098], further
disclosing printing on Seiko Epson Photo Quality Glossy Film.) In this
regard, it has not escaped our notice that Lavery recommends a variety of
preferred papers for use with ink jet printing inks intended “to give images
having high water fastness and good optical density” (Lavery col. 1, ll. 6-7),
including commercially available treated papers such as HP Premium
Coated Paper and Epson Photo Quality Glossy Paper, among others (id.
at col. 20, ll. 25-34). On the present record, HP’s argument that the
combination of the identity of the anti-bronzing agent, the concentration of
that agent, and the ink-receiving layer, “dictate the effectiveness of anti-
bronzing properties” (Br. 16, 1st full para.), is too general to establish a
degree of unpredictability in the art sufficient to outweigh the specific
evidence supporting a reasonable expectation of success.
Similarly, given the substantial overlap of concentration ranges
recited in claims 22 and 44 (about 0.2 to 30 wt%) with the range taught by
Fukumoto (0.1 to 10 wt%), and the dearth of relevant quantitative
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evidence,15 we are not persuaded of harmful error in the Examiner’s
conclusion that the recited effective concentration ranges would have been
obvious. Although HP’s arguments regarding the scope of the dependent
claims are formally correct, HP has come forward with no credible evidence
that the Examiner’s conclusions, which are based on the concentration
ranges disclosed by Fukumoto, lack substantial evidentiary support.
HP argues, regarding claims 21 and 43, that the Examiner has failed to
establish a prima facie case that the printed ink would be stabilized by the
use of the heterocyclic aromatic acids suggested by Lavery as anti-bronzing
agents according to Fukumoto. (Br. 16-27.) We are not persuaded.
According to Fukumoto, the treated ink compositions have “excellent
fastness (mainly, fastness to gas and light) and anti-bronzing property.”
(Fukumoto 1 [0001].) These results, which are substantiated in the
Examples (Tables 1-1 through 1-4 at Fukumoto 6-7), suffice to establish that
the disclosed compounds “stabilize” the printed dye in one way or another.
The use of another, albeit not mentioned, aromatic carboxylic acid such as
those taught by Lavery, as an equivalent agent, would have been expected,
reasonably, to provide a stabilizing effect due to the comparable acidic

15 See Spec. 13-15, which discloses 14 Examples of anti-bronzing additives
with DB 199a (CI 74180) ink [appears to be a cyan dye comparable to the
C.I. Direct Blue 199 dye recommended by Fukumoto] and three Examples
of anti-bronzing agents with a black dye, plus a “no additive control” for
each. No concentrations or specific conditions are disclosed beyond the pH
(about 8.0 to 8.5) and the use of an experimental photopaper comprising a
photobase substrate and a silica-based ink receiving layer, and a polyvinyl-
alcohol coated “sellable media” (HP Premium Plus Photo Paper, Glossy) as
the print media.
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character. HP has not come forward with credible evidence or argument to
the contrary.
HP’s argument that Lavery teaches away from the claimed invention
because the anti-bronzing agents are said to be effective only in some cases
(Br. 19-20) is without merit for the reasons given by the Examiner (Ans. 17).
Lavery does not discourage the use of aromatic acids by advising that anti-
bronzing is not always achieved. Rather, given the broad teachings of dyes
usefully improved by the additives described by Lavery,16 and the disclosure
of Direct Blue 199 as a suitable inkjet ink dye (Lavery col. 6, l. 10), coupled
with the teachings of Fukumoto that aromatic acids are suitable anti-
bronzing agents for cyan dyes, including Direct Blue 199, in inkjet inks, the
weight of the evidence is that the combination is encouraged. That
encouragement, as the Examiner argued (Ans. 17-18), is also a direct and
persuasive refutation of HP’s argument that the Examiner is somehow
relying on an improper theory of inherency in an obviousness rejection
(Br. 20-21).
In summary, HP has not persuaded us of harmful error in the
Examiner’s rejections of claims 1, 2, 12, 21-24, 43, and 44.
Claims 18-20 and 40-42
Regarding claims 18-20 and corresponding method claims 40-42,
which require further limitations on the ink-receiving layer of the print
medium, the Examiner finds that Fukumoto uses “Premium Glossy Photo

16 “There are no particular constraints on the dye contained in the ink,
provided that it is water-soluble.” (Lavery col. 6, ll. 1-2.)
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Paper,” a product made by Seiko Epson Corp., but does not describe the
composition of any ink-receiving layer. (Ans. 5, 4th full para., citing
Fukumoto 8 [0098].) The Examiner finds that Oki also uses Epson Premium
Glossy Photo Paper, and that Oki further “describe[s] the constituents of
their inkjet recording media.” (Ans. 5, last para., citing Oki 9 [0098]
and 7 [0073] through 8 [0087], respectively.) The Examiner concludes that
“the ‘Premium Glossy Photo Paper’ mentioned by Fukumoto et al. and fully
described by Oki et al. comprises the limitations of applicants’ claims 18-20
and 40-42 as evidenced by Oki et al.” (Ans. para. bridging 5-6; emphasis
added.)
HP’s arguments that the Examiner erred in rejecting claims 18-20
and 40-42, which recite further limitations regarding the ink-receiving layer
on the printing medium because the Examiner did not “combine Fukumoto
with Lavery and Oki” (Br. 25) have a modicum of formal merit, but are not
persuasive of substantive harmful error.
HP does not dispute the Examiner’s specific contentions that Oki
discloses inorganic pigments and binders as components of ink-receiving
layers for printing media suitable for inkjet printing of images. Indeed, Oki,
which is assigned to Seiko Epson, teaches that the ink-absorbing pigments
(e.g., colloidal silica and colloidal alumina) (Oki 7 [0079]) “preferably
comprise 30 wt % or more to 90 wt % or less of the total dry weight of the
ink receiving layer” (id. at [0081]). Similarly, Oki teaches that the binders
“preferably comprise 10 wt % or more to 60 wt % or less of the total dry
weight of the ink receiving layer.” (Id. at 8 [0085].) While these
preferences do not “prove” that the Seiko Epson Premium Glossy Photo
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Paper has colloidal alumina or silica and a polymeric binder as components
of an “ink-receiving layer,” they strongly suggest that it does have such
components. Oki teaches that “[i]nk receiving layers can reproduce color
images and photographic images with high image quality, and there are
well-known ink receiving layers that are configured at least from ink-
absorbing pigment, ink fixatives, and binders.” (Oki 7 [0074]; emphasis
added.) Thus, Oki teaches that the use of ink absorbing pigments and
binders in ink receiving layers designed for use with ink jet printing are well
known in the art of printing photographic images with high image quality.
As noted supra at 8, Lavery recommends the use of HP Premium Coated
Paper and Epson Photo Quality Glossy Paper, among others, for the printing
of images having high water fastness and good optical density. The HP
Premium Coated Paper recommended by Lavery appears to be substantially
the same as the HP Premium Plus Photo Paper, Glossy, used by HP in the
Examples reported in the 697 Specification (Spec. 13, ll. 30-3). We consider
the evidence extremely strong that papers commonly used for the inkjet
printing of photographic quality images have both ink absorbing pigments
and polymeric binders in an ink receiving layer.
On balance, we conclude that harmful error in the Examiner’s
rejection has not been shown. Formal objections notwithstanding, the
evidence of record is strong enough to shift the burden to HP to demonstrate
that Premium Glossy Photo Paper, from Seiko Epson Co., does not have the
composition asserted. Moreover, in response to this obviousness rejection,
the burden was shifted HP to come forward with evidence and argument that
rebuts the prima facie case that it would have been obvious to use such a
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printing paper because it was well known to those skilled in the art to
provide ink absorbing pigments and binders on papers for high quality image
reproduction with ink jet printers. We therefore AFFIRM the rejection of
claims 18-20 and 40-42.
Claims 3 and 25
Regarding claims 3 and 25, which require that the anti-bronzing
compound be neutral in the inkjet ink, the Examiner finds that, because the
pKa of the ink additive described by Lavery may be from 2.0 to 6.0, and
because the pH of the ink may be from 4 to 12, “it is clear to the Examiner
that the polybasic acid may be either anionic (e.g., pKa = 6.0 and pH greater
than 6.0) or neutral (e.g., pKa = 6.0 and pH less than 6.0) as claimed.”
(Ans. 5, 2d full para.)
As HP points out, however, Fukumoto teaches that, “[i]n order to
stably dissolve a predetermined amount of the dye and a predetermined
amount of the aromatic compound having a carboxyl group and/or a salt
thereof, the pH (20° C.) of the ink composition is preferably 8.0 or more.”
(Fukumoto 4 [0076].) More preferably, according to Fukumoto, the pH of
the ink ranges from 8.5 to 10.0. (Id.) Under such conditions, the acids
would be at least partially in their anionic form. The Examiner’s focus on
Lavery is misdirected, as it is Fukumoto’s conditions, in the Examiner’s
theory of obviousness, that control.
Accordingly, we REVERSE the rejections of claims 3 and 25.
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The New Grounds of Rejection
Anticipation requires a clear and unequivocal description of the
claimed subject matter in the prior art, “without any need for picking,
choosing, and combining various disclosures not directly related to each
other by the teachings of the cited reference.” In re Arkley, 455 F.2d 586,
587 (CCPA 1972). “Such picking and choosing may be entirely proper in
the making of a 103, obviousness rejection,” the court continued, “but it has
no place in the making of a 102, anticipation rejection.” (Id. at 587-88.)
The Examiner selects from the disclosures of broad genuses of
compounds both in Lavery and in Kitamura, broad subgenuses of
compounds that may be within the scope of the recited genus of anti-
bronzing agents. (Ans. 6, 8.) The Examiner then combines these
disclosures with teachings of various inks and papers, and concludes that the
prior art provides descriptions of embodiments within the scope of the
claimed invention. As HP argues (e.g., SReply 8, ll. 10-11), such picking
and choosing in an anticipation rejection is legal error that requires reversal.
We make no comments on obviousness. As the court noted in Arkley, the
examining corps is “free to make such a rejection after our decision in this
case should it think it appropriate.” Arkley, 455 F.2d at 589.
The Examiner’s reliance on Chen for teachings relevant to papers
having ink-receiving layers does not cure any of the defects of the principal
references. Nor has the Examiner expanded the fact-finding or reasoning
supporting the legal conclusion of obviousness. Accordingly, the new
grounds of rejections for obviousness are also REVERSED.
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C. Order
We AFFIRM the rejection of claims 1, 2, 12, 18-24, and 40-44 in
view of the combined teachings of Fukumoto and Lavery, as evidenced by
the teachings of Oki.
We REVERSE the rejection of claims 3 and 25 in view of the
combined teachings of Fukumoto and Lavery, as evidenced by the teachings
of Oki.
We REVERSE the rejection of claims 1-3, 12, 21-25, 34, 43, and 44
under 35 U.S.C. § 102(b) in view of Lavery.
We REVERSE the rejection of claims 18-20 and 40-42 under
35 U.S.C. § 103(a) in view of the combined teachings of Lavery and Chen.
We REVERSE the rejection of claims 1, 3, 12, 21-23, 25, 34, 43,
and 44 under 35 U.S.C. § 102(b) in view of Kitamura.
We REVERSE the rejection of claims 18-20 and 40-42 under
35 U.S.C. § 103(a) in view of the combined teachings of Kitamura and
Chen.
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-IN-PART

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