Ex Parte Wang et al

Board of Patent Appeals and Interferences

Sep 15, 2010

10021341 (B.P.A.I. Sep. 15, 2010)

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.
10/021,341 12/12/2001 Yongcai Wang 82662HEC 6168
7590 09/15/2010
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester, NY 14650-2201
EXAMINER
HESS, BRUCE H
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
09/15/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte YONGCAI WANG, KURT M. SCHROEDER, LORI
J. SHAW-KLEIN, THOMAS P. NICHOLAS, SRIDHAR
SADASIVAN, and CHRISTINE M. VARGAS
________________

Appeal 2010-005259
Application 10/021,341
Technology Center 1700
________________

Decided:
________________

Before TERRY J. OWENS, PETER F. KRATZ, and JEFFREY T. SMITH,
Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 8-11, 14, 15 and 17. Claim 18, which is the only other
pending claim, stands withdrawn from consideration by the Examiner. We
have jurisdiction under 35 U.S.C. § 6(b).
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The Invention
The Appellants claim an inkjet recording element. Claim 1 is
illustrative:
1. An ink jet recording element comprising a support
having thereon an image-receiving layer having a thickness of 5 to
20 microns and, between said support and said image-receiving layer, a base
layer having a thickness of 20 to 50 microns, both layers comprising
inorganic particles and stabilizer particles in an amount of from about
10 mg/m2 to about 5g/m2, said stabilizer particles being free of any organic
solvent and comprising greater than about 80% by weight of a water-
insoluble antioxidant and having a mean particle size of greater than about
5 nm to 500 nm, said inorganic particles comprising greater than about 50%
by weight of said image-receiving layer and of said base layer, wherein
greater than 50% by weight of said base layer comprises inorganic particles
consisting of precipitated calcium carbonate and silica gel, and wherein the
base layer also contains binder in the amount of from about 5 to about 20
weight percent, and wherein greater that 50% by weight of the image-
receiving layer consist of inorganic particles selected from the group
consisting of fumed silica, colloidal silica, fumed alumina, colloidal
alumina, and pseudo-boehmite and wherein the inorganic particles in the
image-receiving layer have a mean particle size of 50 nm to 500 nm,
wherein the coating thickness of the image-receiving layer is determined
such that the image-receiving layer holds ink near the surface of the image-
receiving layer, above the base layer, when ink in a solvent is applied to the
ink jet recording element by an ink jet printer.

The References
Saito 6,217,166 B1 Apr. 17, 2001
Chu 6,440,537 B1 Aug. 27, 2002
(filed Mar. 27, 2000)
Cuch 7,056,969 B2 Jan. 6, 2006
(provisional application filed Oct. 9, 2001)1
Kitamura EP 0 903 246 A2 Mar. 24, 1999

1 There is no dispute as to whether Cuch is prior art.
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The Rejections
The claims stand rejected as follows: claims 1, 8, 9, 11, 14, 15 and 17
under 35 U.S.C. § 103 over Kitamura alone or in view of Saito or Cuch;
claims 1 and 10 under 35 U.S.C. § 103 over Kitamura alone or in view of
Saito or Cuch, further in view of Chu; and claim 17 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Appellants regard as the
invention.
OPINION
We affirm the rejections of claims 1, 8-11, 14 and 15 and reverse the
rejections of claim 17.
Rejections of claims 1, 8-11, 14 and 15
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Kitamura would have rendered obvious, to one of
ordinary skill in the art, a base layer comprising an antioxidant?
Findings of Fact
Kitamura discloses an ink jet recording material comprising one or
more ink receiving layers, at least one of which comprises an ultraviolet ray
absorber which preferably comprises an antioxidant (¶¶ 0007-8, 0033-34;
0053). The antioxidant can be a water insoluble powder having a particle
size of 500 nm or less (¶ 0041).
Analysis
The Appellants argue that Kitamura does not disclose stabilizer
particles in both of two ink receiving layers (Br. 4). The Appellants argue
that Kitamura never refers to the antioxidant being in more than one ink
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receiving layer and does not say that if two ink receiving layers are used
they have the same composition (Br. 4-5). Kitamura, the Appellants argue,
is concerned only with light resistance in the outermost ink receiving layer
and discloses that the additional ink receiving layer may contain no
ultraviolet absorber (Br. 4, 6; Reply Br. 3).
Kitamura’s disclosure that at least one of the ink receiving layers can
contain an antioxidant (¶¶ 0007-8, 0033-34) is a disclosure that the
antioxidant can be contained in more than one ink receiving layer.
Moreover, Kitamura’s disclosure that at least one of two or more ink
receiving layers is the principal ink receiving layer which contains the
ultraviolet ray absorber (and antioxidant) and preferably forms an outermost
layer (¶ 0053) indicates that “outermost layer”, as that term is used by
Kitamura, can comprise more than one layer, the outer of which corresponds
to the Appellants’ imaging receiving layer and an inner one of which
corresponds to the Appellants’ base layer.2
The Appellants argue that their “base layer is designed, not for
imaging with dye, but for use as a sump for the solvent in applied ink during
printing” (Br. 6).
The Examiner finds that Kitamura’s ink receiving layers other than
the outer layer act as a sump and, therefore, correspond to the Appellants’
base layer (Ans. 7-8).3 Because the Examiner’s finding is reasonable and

2 Thus, we are not persuaded by the Appellants’ argument that “[t]here
cannot really be more than one outermost layer and the reference
paragraph [0055] can only be interpreted to be the formation of one layer
(Reply Br. 3).
3 The pages of the Examiner’s Answer are unnumbered. The page numbers
cited herein have been provided by the Board.
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the Appellants have not argued that it is wrong (Reply Br. 3-4), we accept it
as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964).
The Appellants argue that the examples in their Specification indicate
that the composition of the base layer is significantly different from the
composition of the image receiving layer (Br. 7).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). The Appellants’ Specification states that
the ink jet recording element preferably contains a base layer and that the
base layer preferably comprises inorganic particles and stabilizer particles
(Spec. 4:22-25). The Specification, however, does not indicate that the
compositions of the image receiving layer and base layer must be different.
Thus, the Appellants improperly are arguing a limitation that is not in the
claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
The Appellants argue that Tables 1-3 in their Specification show that
the claimed invention provides an improvement with respect to ambient light
fade (Br. 7-8; Reply Br. 5).
That argument is not well taken because the Appellants have not
provided a side-by-side comparison of the claimed invention with the closest
prior art which is commensurate in scope with the claims, and explained
why the results would have been unexpected by one of ordinary skill in the
art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
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1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972).
Conclusion of Law
The Appellants have not indicated reversible error in the Examiner’s
determination that Kitamura would have rendered obvious, to one of
ordinary skill in the art, a base layer comprising an antioxidant.
Rejection of claim 17 under 35 U.S.C. § 103
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Kitamura discloses an image receiving layer having no
UV absorbers for preventing light fade?
Analysis
The Appellants argue that Kitamura requires an ultraviolet ray
absorber in the image receiving layer (Br. 8).
The Examiner argues that Kitamura’s ultraviolet ray absorber can be a
transition metal oxide [¶ 0025], in which case an organic ultraviolet ray
absorber is not required (Ans. 4).
Kitamura teaches that the ultraviolet ray absorber provides light
resistance (¶ 0008). When Kitamura’s image receiving layer contains a
transition metal oxide ultraviolet ray absorber it does not meet the
Appellants’ claim 17 requirement that the image receiving layer has no
ultraviolet ray absorber for preventing light fade.
Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that Kitamura discloses an image receiving layer having no
UV absorbers for preventing light fade.
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Rejection of claim 17 under 35 U.S.C. § 112, second paragraph
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that “the image-receiving layer has no UV absorbers for
preventing light fade” in claim 17 is indefinite?
Analysis
“[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a
particular area with a reasonable degree of precision and particularity.’”
Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed.
Cir. 2005), quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Appellants’ claim 17 depends from claim 1 which recites that the
image receiving layer contains inorganic particles selected from fumed
silica, colloidal silica, fumed alumina, colloidal alumina, and
pseudo-boehmite. The Examiner argues that claim 17 appears to be at odds
with the Appellants’ Specification which discloses inorganic particles such
as titanium dioxide and zinc oxide which are known UV absorbers
(Spec. 4:29-5:5) (Ans. 8-9; Supp. Ans. 2).
The Appellants argue that claim 17 is limited to excluding inorganic
particles that are effective for preventing light fade, and that claim 1’s
inclusion of inorganic particles that are excluded by claim 17 does not
render claim 17 indefinite (Reply Br. 2; Second Reply Br. 1).
As argued by the Appellants, inorganic particles such as titanium
dioxide and zinc oxide which are UV absorbers that prevent light fade are
excluded by claim 17. The Examiner has not established that the exclusion
of such inorganic particles causes claim 17 to fail to circumscribe a
particular area with a reasonable degree of precision and particularity.
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Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that “the image-receiving layer has no UV absorbers for
preventing light fade” in claim 17 is indefinite.
DECISION/ORDER
The rejection of claims 1, 8, 9, 11, 14, 15 and 17 under
35 U.S.C. § 103 over Kitamura alone or in view of Saito or Cuch is affirmed
as to claims 1, 8, 9, 11, 14 and 15 and reversed as to claim 17. The rejection
of claims 1 and 10 under 35 U.S.C. § 103 over Kitamura alone or in view of
Saito or Cuch, further in view of Chu is affirmed. The rejection of claim 17
under 35 U.S.C. § 112, second paragraph, is reversed.
It is ordered that the Examiner’s decision is affirmed-in-part.
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

tc

Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester, NY 14650-2201