Ex parte D'Hont et al.

Board of Patent Appeals and Interferences

Mar 30, 2001

08435224 (B.P.A.I. Mar. 30, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DIRK D’HONT,
LUC VOET,
and
LUC LEENDERS
_____________
Appeal No. 1998-0150
Application 08/435,224
______________
HEARD: FEBRUARY 13, 2001
_______________
Before KIMLIN, PAK, and WARREN, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1 through 12,
which are all of the claims pending in the above-identified
application.
Claim 1 is representative of the subject matter on appeal
Appeal No. 1998-0150
Application No. 08/435,224
2
and reads as follows:

Appeal No. 1998-0150
Application No. 08/435,224
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1. Heat mode recording element comprising, in order:
(a) a support,
(b) a layer containing a roughening agent,
(c) a metal recording layer,
(d) a protective element.
In support of his rejection, the examiner relies on the
following prior art references:
Tabei et al. (Tabei) 4,388,400 Jun. 14,
1983
Wada et al. (Wada) 4,499,178 Feb. 12,
1985
Grzeskowiak et al. (Grzeskowiak) 4,711,838 Dec. 8,
1987
Yoshihara 5,017,449 May 21,
1991
Claims 1 through 12 stand rejected under 35 U.S.C. § 103
as unpatentable over either Tabei or Wada taken together with
Yoshihara or Grzeskowiak.
We have carefully reviewed the claims, specification, and
applied prior art, including all of the arguments advanced by
both the examiner and appellants in support of their
respective positions. This review leads us to conclude that
the examiner’s § 103 rejection is not well founded.
Accordingly, we will not sustain the examiner’s § 103
rejection for essentially those reasons set forth in the
Brief. We add the following for emphasis and completeness.
Appeal No. 1998-0150
Application No. 08/435,224
4
The claimed subject matter is directed to a heat mode
recording element comprising, in order: a support, a layer
containing a roughening agent, a metal recording layer and a
protective element. According to pages 5 and 6 of the
specification, the claimed layer containing a roughening agent
is defined as follows:
The roughening agent incorporated in layer (b)
- for many actual substances this term will be
equivalent to the more familiar terms “matting agent”
or “spacing agent”, but the term is chosen for its
functional aspect - must fulfil several requirements
for the successful practice of the present invention.
Chemical nature, concentration and particle distribution
of the roughening agent must be chosen in such a way
that a certain degree of unevenness can be introduced
in the metal recording layer. It is shown that this
unevenness can reduce the occurrence of interference
patterns because the reflectance gets more diffuse.
It will be clear that the roughening agent must be
closely packed in the layer. It will also be easily
understood that the thickness of layer (b), the average
particle size and the coverage of the roughening
agent must be tuned to each other in such a way
that a sufficient number of the roughening particles
must protrude above the interface layer (b) / metal layer
in order to induce local deformation spots into this
metal layer. When the average particle size is too
low the roughening agent will not be able to introduce
unevenness in the metal layer. When the average
particle size is too great too high a coverage will
be required which would make layer (b) too thick.
So it is clear that an optimal particle size should
be chosen for the roughening agent and that this
optimum will depend on the mechanical strength of
Appeal No. 1998-0150
Application No. 08/435,224
5
the metal layer and therefore on its thickness.
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Application No. 08/435,224
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Accordingly, we interpret the appealed claims as requiring
their layer containing a roughening agent to have a sufficient
number
of protruding roughening particles and to be located just
below the claimed metal recording layer to “induce local
deformation spots into this metal [recording] layer.”
Having interpreted the appealed claims as indicated
above, we review the content of the prior art relied upon by
the examiner to determine whether the examiner has established
a prima facie case of obviousness under 35 U.S.C. § 103. Our
review indicates that both Tabei and Wada describe a heat-mode
recording material comprising a support, a metal recording
layer, and a protective element. As is apparent from pages 4
and 5 of the Answer, the examiner recognizes that both Tabei
and Wada do not describe a roughening agent containing layer
located just below a metal recording layer, providing a
sufficient number of protruding roughening particles therefrom
for the purpose of inducing “local deformation spots” into the
metal recording layer.
To remedy this deficiency, the examiner relies on the
disclosure of Yoshihara or Grzeskowiak. However, not only do
Appeal No. 1998-0150
Application No. 08/435,224
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they not teach or suggest employing the above-mentioned
roughening agent containing layer just below a metal recording
layer to “induce . . . deformation spots into this metal
layer,” but they also do not teach or suggest using their
roughening agent containing layer in a heat-mode recording
material. Nor has the examiner explained why it would have
been obvious to one of ordinary skill in the art to use the
roughening agent containing layer employed in Yoshihara’s
electrophotographic photosensitive member or Grzeskowiak’s
photographic elements just below the metal recording layer of
the heat-mode recording material of the type described in
Tabei or Wada.
Appeal No. 1998-0150
Application No. 08/435,224
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Under these circumstances, we agree with appellants that
the examiner has not carried his burden of establishing a
prima facie case of obviousness regarding the claimed subject
matter under 35 U.S.C. § 103. Accordingly, on this record, we
are constrained to reverse the examiner’s decision rejecting
all of the appealed claims under 35 U.S.C. § 103 over the
applied prior art references.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
CKP:hh
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Application No. 08/435,224
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