Ex Parte Campbell et al

Board of Patent Appeals and Interferences

Aug 31, 2011

11378780 (B.P.A.I. Aug. 31, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/378,780 03/17/2006 Bruce C. Campbell 91904CPK 7296
1333 7590 08/31/2011
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
SHEWAREGED, BETELHEM
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
08/31/2011 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 BRUCE C. CAMPBELL, KENNETH J. RUSCHAK,
THOMAS P. NICHOLAS, and LISA B. TODD
____________________

Appeal 2010-002346
Application 11/378,780
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002346
Application 11/378,780

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-7, 9-17, 23, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Totani (US 2001/0009712 A1, pub. Jul. 26, 2001) in view
of Nishiguchi (US 5,879,442; issued Mar, 9, 1999) and Koike (US
2003/0104175 A1, pub. Jun. 5, 2003). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The claims are directed to an inkjet recording element having a porous
base layer including two types of calcium carbonate: (1) precipitated
calcium carbonate having scalenohedral morphology; and (2) ground
calcium carbonate. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An inkjet recording element comprising a support having
thereon:

(a) a porous image-receiving layer; and

(b) under the porous image-receiving layer, a porous base layer
comprising a polymeric binder and at least 80 percent by
weight of inorganic particles, wherein at least 60 percent by
weight of the inorganic particles comprise calcium carbonate
particles, and wherein the calcium carbonate particles [sic,
comprise1] precipitated calcium carbonate particles, having
scalenohedral morphology, and ground calcium carbonate
particles in a weight ratio of 50:50 to 95:5.

1 The word “comprise” was deleted by the amendment of September 2,
2008. We treat the claim as “comprising” both kinds of carbonate given the
manner in which the issues have been developed by the Appellants and
Examiner.
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Application 11/378,780

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The Examiner finds that Totani describes an ink jet recording element
including, among other things, an undercoat layer containing a pigment such
as calcium carbonate (Ans. 3, citing Totani, ¶ [0048]). Totani does not teach
using a mixture of precipitated and ground calcium carbonate (id.).
However, the Examiner further finds that Nishiguchi teaches a paper coating
composition comprising a pigment containing both precipitated calcium
carbonate and ground calcium carbonate (Ans. 3, citing Nishiguchi,
Abstract). The Examiner concludes that “[a]t the time of the invention, it
would have been obvious to a person of ordinary skill in the art to combine
the pigment of Nishiguchi with the invention of Totani, and the motivation
would be, as Nishiguchi suggests, providing a composition having excellent
water retentivity and high solid concentration with good flowability
(abstract).” (Ans. 4.)
Appellants contend that there is no suggestion in the prior art to
substitute the mixture of calcium carbonate taught by Nishiguchi for the
calcium carbonate pigment of Totani (Br. 4-5). This is because, according to
Appellants, Totani seeks to form an ink jet recording layer with high water
resistance whereas Nishiguchi is directed to a water absorbent coating layer
(id.)
The issue is: Does the evidence support the Examiner’s finding of a
suggestion in the prior art for using Nishiguichi’s mixture of precipitated
calcium carbonate and ground calcium carbonate as the calcium carbonate
pigment of the undercoat layer of Totani?
We answer this question in the affirmative.
Appeal 2010-002346
Application 11/378,780

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OPINION
Totani is directed to an ink jet recording sheet having excellent water
resistance (Totani, ¶ [0001]). Totani explains that conventional ink jet
recording sheets with a cellulosic pulp substrate are easily damaged when
wetted with water (Totani, ¶ [0008]). Therefore, the cellulosic pulp
substrate has been replaced with a polyolefin polymer-based film substrate,
but these recording sheets are usable only with oil-based inks and still
subject to peeling of the ink receiving layer from the substrate due to poor
water resistance (Totani, ¶¶ [0009-11]). Totani adds an undercoat layer
between the ink receiving layer and polymeric film substrate (Totani, ¶¶
[0014] and [0031]). The undercoat layer is water repellant and improves
bonding such that water penetrates only with difficulty into the interface
between the substrate and the ink receiving layer (Totani, ¶¶ [0031] and
[0043]). The bonding is strong such that even if water penetrates into the
interface, the bond between the ink receiving layer and substrate is not
degraded (id.). Accordingly, this bonding force contributes to an enhanced
resistance to water in the ink jet recording sheet of Totani (id.).
The undercoat layer of Totani is itself water repellant (Totani, ¶
[0025]). This water repellency property arises due to the water resistant
nature of the selected polymeric binder as well as, presumably, the
properties of the pigment (Totani, ¶¶ [0039-40] and [0055]).
Totani lists a range of inorganic and organic pigments for inclusion in
the undercoat layer, but states that the preferred pigments are calcium
carbonate pigments (Totani, ¶¶ [0048] and [0050]). Totani counsels that it is
preferable that the pigment particles have a particular aspect ratio and
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Application 11/378,780

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suggests the use of pigment particles of particular shapes such as weaving
spindle, plate or rod (Totani, ¶ [0052]). Totani is unsure why pigment
particles of the specified aspect ratio contribute to bonding strength and
water resistance, but posits that the flat thin particles arrange themselves to
provide a plurality of fine pores in the undercoat layer (Totani, ¶¶ [0051-
52]).
Nishiguchi is concerned with the viscosity and flowability properties
of calcium carbonate pigment slurries used to coat paper sheets for forming
coatings on, among others, ink jet recording papers (Nishiguchi, col. 1, ll. 6-
23). Nishiguchi indicates that it was known in the art to use both
precipitated calcium carbonate and ground calcium carbonate in the aqueous
slurries in combination with water-soluble resins used to coat paper
(Nishiguchi, col. 1, ll. 61-67). Nishiguchi discusses the grades of calcium
carbonate pigments used in different papers and discloses that mixtures of
precipitated and ground calcium carbonates were known and selected
depending on the application and grade of the coated paper to be obtained
(Nishiguchi, col. 2, ll. 18-29 and ll. 36-57).
As evidenced by Nishiguchi, at least the spindle-shaped calcium
carbonate particles of Totani are precipitated calcium carbonate particles
having scalenohedral morphology as claimed (Compare, Totani, ¶ [0052]
with Nishiguchi, col. 2, ll. 48-52).
Nishiguchi explains that the precipitated calcium carbonate slurries
have a problem: they are inferior in high-speed flowability behavior as
compared to ground calcium carbonate slurries of the same concentration
and are difficult to use in high-speed coating machines (Nishiguchi, col. 2, l.
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66 to col. 3, l. 6). Nishiguchi solves the problem by mixing the two types of
calcium carbonate by a particular method (Nishiguchi, col. 4, ll. 10-43).
When combining the teachings of references to establish obviousness,
one must ask what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
question is whether making the combination involves more than the
predictable use of prior art elements according to their established functions.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). An improvement in
the art is obvious if “it is likely the product not of innovation but of ordinary
skill and common sense.” KSR, 550 at 421.
In this appeal, the totality of the evidence supports the position of the
Examiner. The references provide ample guidance for incorporating ground
calcium carbonate into precipitated calcium carbonate slurries to obtain a
coating slurry that has the flowability needed to allow coating at high-speed,
yet result in a coating having properties within the property parameters
required in Totani’s undercoat layer. Any experimentation needed appears to
be routine in nature given the very specific guidelines provided in Totani
with regard to size, shape, and oil absorptivity of the pigment particles.
The evidence supports the Examiner’s finding of a suggestion in the
prior art for using Nishiguchi’s mixture of precipitated calcium carbonate
and ground calcium carbonate in the undercoat layer of Totani.
The only other claims argued by Appellants are claims 23 and 24.
Claims 23 and 24 require that the base layer of the inkjet recording element
have a Bristow Ink absorption value above 25 ml/m2 (claim 23) or at least 15
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ml/m2 (claim 24). With respect to claims 23 and 24, Appellants rely upon
the same arguments as presented against claim 1, and further argue that the
prior art does not reasonably teach or suggest a combination that would
implicitly achieve the claimed performance requirement (Br. 5). However,
based upon the ingredients, concentrations, and effects disclosed by Totani,
we agree with the Examiner that an ink absorption value within the claimed
ranges is likely achieved (Ans. 6). Totani’s pigments are selected to have oil
absorption values of 20-100 ml/100 g (Totani, ¶¶ [0055-56]). Moreover,
Totani desires that the undercoat layer (base layer) be absorbent so that firm
bonding to the ink receiving layer is achieved (Totani, ¶ [0056]).
As Appellants do not present arguments for any of the other claims,
the other claims fall with claim 1.
CONCLUSION
We sustain the Examiner’s decision to reject the claims.
DECISION
For the above reasons, the decision of the Examiner is affirmed.
TIME PERIOD FOR RESPONSE
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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