Ex Parte Fujimoto et alDownload PDFPatent Trial and Appeal BoardNov 20, 201712374843 (P.T.A.B. Nov. 20, 2017) Copy Citation 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. 12/374,843 01/23/2009 Tadashi Fujimoto 1272-0141 PUS 1 2498 2292 7590 11/22/2017 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East FALLS CHURCH, VA 22042-1248 EXAMINER REDDY, SATHAVARAM I ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 11/22/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): mailroom @ bskb. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TADASHI FUJIMOTO and KOKI HIRAYAMA Appeal 2016-004134 Application 12/374,843 Technology Center 1700 Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 1 This Decision includes citations to the following documents: Specification filed Jan. 23, 2009 (“Spec.”); Final Office Action mailed Mar. 2, 2015 (“Final”); Appeal Brief filed July 31, 2015 (“Br.”); and Examiner’s Answer mailed Nov. 30, 2015 (“Ans.”). Appeal 2016-004134 Application 12/374,843 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1—8, 10, and 11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The “invention relates to a printing sheet in which a printing surface is formed by a printing layer which contains a semi-solidified plaster wherein, after the printing, the plaster undergoes . . . carbonation and the printed image is firmly held in the printing surface.” Spec. 1:7—11. Claim 1, the sole independent claim on appeal, is representative of the claimed invention: 1. An inkjet recording material comprising a substrate sheet and an inkjet printing layer which is formed on a surface of said substrate sheet, wherein the inkjet printing layer has a thickness of 0.1 to 0.25 mm and contains a plaster precursor in a semi-solidified state where calcium carbonate and calcium hydroxide are present, and said plaster precursor is contained in an amount of not less than 50% by weight calculated as CaCOs, in the inkjet printing layer. Br., Claims App’x 1 (emphasis added). The Examiner maintains the following rejections on appeal: 1. claims 1—8, 10, and 11 under 35 U.S.C. § 112 (pre-AIA), second paragraph, or 35 U.S.C. § 112(b), as indefinite; 2. claims 1—8, 10, and 11 under 35 U.S.C. § 112 (pre-AIA), first paragraph, or 35 U.S.C. § 112(a) as failing to comply with the written description requirement; 2 Appellants identify the real party in interest as Tokuyama Corporation. Br. 1. 2 Appeal 2016-004134 Application 12/374,843 3. claims 1—3, 5—8, and 10 under 35 U.S.C. § 103(a) as unpatentable over Iwamoto (US 6,350,507 Bl, iss. Feb. 26, 2002) in view of Nakata (US 2006/0115612 Al, pub. June 1, 2006) and Sumita (US 2001/0021439 Al, pub. Sept. 13, 2001); 4. claim 4 under 35 U.S.C. § 103(a) as unpatentable over Iwamoto in view of Nakata, Sumita, and Goto (US 7,270,869 B2, iss. Sept. 18, 2007); and 5. claim 11 under 35 U.S.C. § 103(a) as unpatentable over Iwamoto in view of Nakata, Sumita, and Takeuchi (US 5,567,513, iss. Oct. 22, 1996). Rejections under 35 U.S.C. § 1123 The Examiner contends the claims are unpatentable under 35 U.S.C. § 112, first and second paragraphs, because the claim 1 recitation “said plaster precursor is contained in an amount of not less than 50% by weight calculated as CaC03 in the inkjet printing layer” is not described in the original application, and is unclear. Final 2-4. “Whether an applicant has complied with the written description requirement is a finding of fact, to be analyzed from the perspective of one of ordinary skill in the art as of the date of the filing of the application.” In re Alonso, 545 F.3d 1015, 1018 (Fed. Cir. 2008). In considering whether the claims comply with the written description requirement of 35 U.S.C. § 112, first paragraph, the Examiner must first determine the scope of the claims. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1347 (Fed. Cir. 2010) (“Claims define and circumscribe, the written description discloses and 3 For convenience, we refer to the pre-AIA sections of 35 U.S.C. § 112 in our analysis. 3 Appeal 2016-004134 Application 12/374,843 teaches.”). “A determination of claim indefmiteness is a legal conclusion that is drawn from [a] court’s performance of its duty as the construer of patent claims.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008) (quoting Personalized Media Commc’ns, LLC v. Int’l Trade Comm ’n, 161 F.3d 696, 705 (Fed. Cir. 1998)); see also In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014) (noting that indefmiteness is a subset of claim construction). Therefore, when claims are rejected under both the first and second paragraphs of 35 U.S.C. § 112, the “analysis . . . should begin with the determination of whether the claims satisfy the requirements of the second paragraph.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (“[W]hen the first paragraph speaks of ‘the invention’, it can only be referring to that invention which the applicant wishes to have protected by the patent grant, i.e., the claimed invention. For this reason the claims must be analyzed first in order to determine exactly what subject matter they encompass.”). A claim is indefinite under 35 U.S.C. § 112 when it contains words or phrases whose meaning is unclear. Packard, 751 F.3d at 1309. “[T]he definiteness of the language employed must be analyzed— not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.” Moore, 439 F.2d at 1235. In determining whether the phrase “said plaster precursor is contained in an amount of not less than 50% by weight calculated as CaCCb in the inkjet printing layer” is indefinite under 35 U.S.C. § 112, second paragraph, we have considered the entire Specification, but find the following disclosure to be particularly relevant: 4 Appeal 2016-004134 Application 12/374,843 The Specification discloses forming an inkjet printing layer on a substrate by coating a hydrophilic surface of the substrate “with a kneaded product of a powder of slaked lime (calcium hydroxide) and water.” Spec. 7:23—26. When the layer is left to stand in air, the calcium hydroxide reacts with carbonic acid gas to form calcium carbonate, resulting in a plaster precursor in a semi-solidified state that is a mixture of calcium hydroxide and calcium carbonate. Id. at 7:26—31. The Specification discloses that “the content of calcium hydroxide in the printing layer [] can be adjusted by adjusting the ratio of carbonating the calcium hydroxide used for forming the printing layer [] (weight ratio of the formed calcium carbonate to the weight of the slaked lime used for preparing the slurry).” Id. at 8:27—32. A predetermined carbonation ratio can be maintained in the plaster precursor by preserving it in a sealed state. Id. at 15:4—8. After an image is printed, “the printing layer [] is left to stand in the atmosphere whereby the plaster precursor in the printing layer [] is carbonated and finally turns into the plaster.” Id. at 9:13—16. The Specification discloses that, at the time of the invention, techniques existed for determining calcium hydroxide content in a printing layer containing a plaster precursor, i.e., the amount of slaked lime remaining from the original coating slurry that had not been carbonated. See id. at 7:32—35 (“[T]he printing layer 3 is a layer that contains the plaster precursor in a semi-solidified state where the calcium carbonate is present as the slaked lime is partly carbonated.”), 8:25—26 (“The ratio of the calcium hydroxide in the printing layer can be confirmed by the neutralization titration.”). The Specification discloses that additives may be added to the printing layer 3 in a single kind or in two or more kinds .... [T]he additives should be added in amounts of a degree that does not impair the permeation of 5 Appeal 2016-004134 Application 12/374,843 the printing ink into the printing layer 3 or the fixing thereof. For example, it is desired that various kinds of additives are added in a range in which the amount of the calcium carbonate formed by the carbonation of the slaked lime (i.e., the content of the calcium carbonate of when the carbonation ratio is 100%) is maintained to be not less than 50% by weight. Spec. 11:19-29. Based on our review of the Specification, we find one of ordinary skill in the art would understand that a plaster precursor is formed by exposing a coating of slaked lime (calcium hydroxide) to air, causing the calcium hydroxide to react with carbonic acid gas to form calcium carbonate. Therefore, the ordinary artisan would understand that the amounts of calcium carbonate and calcium hydroxide in the plaster precursor are a function of the amount of calcium hydroxide in the initial slaked lime coating that has reacted, and the weight of the plaster precursor is a function of the calcium carbonate and calcium hydroxide contents. Further, the ordinary artisan would understand that, at the time of the invention, there were known techniques for controlling carbonation and measuring and/or calculating the amounts of calcium hydroxide and calcium carbonate in a plaster precursor. We agree with Appellants, therefore, that it would be clear to the ordinary artisan that the phrase “said plaster precursor is contained in an amount of not less than 50% by weight calculated as CaCCE in the inkjet printing layer” requires a plaster precursor content in the printing layer that is based on calcium carbonate content in the plaster precursor. See Br. 6—7. We are not persuaded by the Examiner’s argument that it would be unclear to the ordinary artisan whether the plaster precursor content recited in claim 1 is based on calcium carbonate content in the plaster precursor or based on calcium carbonate content in the solidified 6 Appeal 2016-004134 Application 12/374,843 plaster. See Final 3^4. More specifically, we disagree with the Examiner (see Ans. 3 4) that there is an inconsistency between the language on page 11, lines 19—29 of the Specification4 and the language of claim 1. Rather, we find the ordinary artisan would recognize that the description on Specification page 11 relates to calcium carbonate content of a final, solidified printing layer (i.e., a plaster layer that no longer contains calcium hydroxide), whereas claim 1 recites and pages 7—9 and 15 of the Specification as cited above describe calcium carbonate content of a printing layer containing a plaster precursor (i.e., a layer that contains both calcium hydroxide and calcium carbonate). Accordingly, we do not sustain the rejection of claims 1—8, 10, and 11 as indefinite under 35 U.S.C. § 112 (pre-AIA), second paragraph, or 35 U.S.C. § 112(b). We now turn the rejection under 35 U.S.C. § 112, first paragraph. The test for sufficiency of a written description is “whether the disclosure clearly ‘allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” AriadPharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc) (quoting Vas—Cath Inc. v. Mahurkar, 935 F.2d 1355, 1562-63 (Fed. Cir. 1991)). As indicated in the discussion above, the Examiner finds page 11, lines 19-29 of the Specification describe a fully carbonated plaster having a CaCCE content of not less than 50%. Final 3. The Examiner contends this 4 The Examiner cites to paragraph 33 of the printed publication (US 2009/0233015 Al, pub. Sept. 17, 2009). In the Answer, the Examiner provides a corrected citation to paragraph 32 of the printed publication. See Ans. 3. Paragraph 32 corresponds to page 11, lines 19—29 of the original application. 7 Appeal 2016-004134 Application 12/374,843 does not amount to a description of a plaster precursor contained in an amount of not less than 50% by weight calculated as CaCCE. Id. We have considered Appellants’ argument that “calcium carbonate content in the inkjet printing layer can be easily calculated” (Br. 6), but are not persuaded of error in the Examiner’s rejection. As an initial matter, we note that Appellants’ contention is based solely on unsupported attorney argument. More importantly, however, Appellants’ argument fails to clearly explain how one of ordinary skill in the art would recognize from the written description that the inventors invented what is now claimed. As discussed above in connection with the rejection under 35U.S.C. § 112, second paragraph, we agree with the Examiner that the disclosure in lines 19—29 of Specification page 11 is not a description of what is claimed. Appellants have not directed us to any other disclosure that provides written descriptive support for the invention recited in claim 1. Accordingly, we sustain the rejection of claims 1—8, 10, and 11 under 35 U.S.C. § 112 (pre-AIA), first paragraph, or 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Rejections under 35 U.S.C. § 103(a) Appellants argue the patentability of the appealed claims as a group, and limit their discussion to alleged deficiencies in the combination of references applied by the Examiner in rejecting claim 1. See generally Br. 10-15. Accordingly, we decide the appeal as to all claims on the basis of claim 1; dependent claims 2—8, 10, and 11 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(iv) (2013). The Examiner finds Iwamoto discloses an inkjet recording sheet comprising a substrate sheet (Iwamoto’s base material) and an inkjet 8 Appeal 2016-004134 Application 12/374,843 printing layer (Iwamoto’s ink receiving layer) formed thereon. Final 4—5. The Examiner finds Iwamoto discloses the inkjet printing layer contains a calcium carbonate pigment and a calcium chloride metallic salt, but does not disclose that the inkjet printing layer also contains calcium hydroxide. Id. The Examiner finds Nakata discloses an inkjet printing layer comprising metallic salts of both calcium hydroxide and calcium chloride. See id. at 5 (citing Nakata 140). The Examiner finds one of ordinary skill in the art would have used calcium hydroxide in place of calcium chloride in Iwamoto’s inkjet recording sheet “because having calcium hydroxides provides high ink absorption speed with large ink absorption capacity.” Id. at 6 (citing Nakata 11). Appellants argue the evidence relied on by the Examiner is insufficient to support the Examiner’s findings that (1) one of ordinary skill in the art would have combined the teachings of Iwamoto and Nakata, and (2) the combination would have resulted in an inkjet printing layer comprising “calcium hydroxide as a component of a plaster precursor, as presently claimed.” Br. 13—14. Appellants’arguments are persuasive of reversible error in the Examiner’s obviousness determination for the reasons explained below. Iwamoto describes an inkjet printing layer comprising a pigment, such as calcium carbonate, a binder resin, and a water-soluble divalent or greater metallic salt such as calcium chloride. Iwamoto 2:46—50, 3:32—36, 3:57. Iwamoto discloses that by including a specific water-soluble divalent or greater metallic salt in the inkjet printing layer, “various properties, such as the light resistance of images, are improved very effectively.” Id. at 1:61— 65. Nakata discloses forming an ink absorbing layer by coating a support 9 Appeal 2016-004134 Application 12/374,843 with a water-based coating liquid containing polyvinyl alcohol, fine particle silica; and preferably 0.01 to 10 parts by weight of electrolytes. Nakata 120. Nakata provides an extensive list of exemplary electrolytes that can be used alone or in combination, including calcium hydroxide and “alkaline earth metal salts such as . . . calcium carbonate.” Id. 140. We first consider the issue of whether the evidence supports the Examiner’s finding that one of ordinary skill in the art would have combined the teachings of Iwamoto and Nakata. The Examiner cites Nakata paragraph 1 in support of a finding that one of ordinary skill in the art would have “substitute [d] the calcium chloride of Iwamoto et al[.] with the calcium hydroxide of Nakata et al[.] because having calcium hydroxides provides high ink absorption speed with large ink absorption capacity.” Final 6. In paragraph 1, Nakata discloses that the inventive ink-jet recording sheets have high ink absorption speed and large ink absorption capacity. However, we find no indication in paragraph 1, nor any other disclosure in Nakata relied upon by the Examiner, that these features result from calcium hydroxide or the electrolyte component of the ink absorbing layer in general. As noted by Appellants (Br. 13), Iwamoto discloses that an inkjet recording layer having various properties, such as the light resistance of images, is achieved through the use of salts that meet specific requirements (see Iwamoto 3:32-45). One such suitable salt is calcium chloride. Id. at 3:57. The Examiner has not made, nor identified evidence that would support, a finding that calcium hydroxide would meet these requirements or reasonably would have been expected to function in the same manner as calcium chloride in Iwamoto’s inkjet recording layer. We determine, therefore, that the Examiner has not 10 Appeal 2016-004134 Application 12/374,843 identified sufficient evidence to support findings that one of ordinary skill in the art would have had a reason to combine Iwamoto and Nakata, and would have had a reasonable expectation of success in substituting calcium chloride with calcium hydroxide in Iwamoto’s inkjet recording layer. Although we determine the Examiner reversibly erred in rejecting the claims as obvious for the above-stated reasons, for completeness, we also consider Appellants’ argument that the evidence relied on by the Examiner is insufficient to support a finding that the teachings of Iwamoto and Nakata, even if combined, would have resulted in an inkjet printing layer comprising “calcium hydroxide as a component of a plaster precursor” (Br. 13). As noted above, Nakata provides a list of exemplary electrolytes, including calcium hydroxide and calcium carbonate, for use in Nakata’s inkjet printing layer, and states that the listed electrolytes can be used alone or in combination. Nakata 140. Even assuming one of ordinary skill in the art would have understood this disclosure as suggesting the use of calcium hydroxide in Iwamoto’s inkjet recording sheet, we agree with Appellants that the Examiner has not explained sufficiently why the combination would have resulted in an “inkjet printing layer . . . containing] a plaster precursor in a semi-solidified state where calcium carbonate and calcium hydroxide are present,” as recited in claim 1. See Br. 14. The Specification discloses that: [t]he carbonation reaction of the calcium hydroxide (slaked lime) proceeds upon coming in contact with the carbonic acid gas. Therefore, as far as the slurry is preserved in a sealed state in a nonpermeable bag or a container, there is no problem in maintaining a predetermined carbonation ratio and in maintaining the amount of calcium hydroxide in the printing layer 3 in a predetermined range. 11 Appeal 2016-004134 Application 12/374,843 Spec. 15:2—8. Appellants argue Iwamoto and Nakata do not disclose or suggest a means for preventing a carbonation reaction from proceeding, and, therefore, “[i]f the skilled artisan attempted to add calcium hydroxide to the invention of Iwamoto, the calcium hydroxide would absorb the carbonic acid gas in the air during the inkjet printing, and would convert into calcium hydroxide [sic, calcium carbonate].” Br. 14. The Examiner, in response, contends this argument is not persuasive because Goto discloses a peelable protection sheet for an inkjet recording medium. Ans. 5. As an initial matter, we note that Goto was relied upon in the rejection of dependent claim 4, not the rejection of independent claim 1. Claim 4 recites: “The inkjet recording material according to claim 1, wherein a peelable protection sheet is laminated on said inkjet printing layer.” With respect to the rejection of claim 4, the Examiner found one of ordinary skill in the art would have “modified] the inkjet recording material of Iwamoto et al[.], Nakata et al[.] and Sumita et al[.] to include the peelable protective layer of Goto et al[.] in that having a peelable protective layer prevents offset in an inkjet printing layer.” Final 8—9 (citing Goto 10:5—15). The Examiner does not find (nor does the relied upon disclosure in Goto support a finding) that Goto’s peelable protective layer would prevent a carbonation reaction from proceeding in Iwamoto’s inkjet recording layer if modified to include calcium hydroxide. Accordingly, even if the Examiner had properly cited Goto in rejecting claim 1, we agree with Appellants that the facts and reasons relied upon by the Examiner are insufficient to support a finding that applied prior art, if combined, would have resulted in an “inkjet printing layer . . . contain [ing] a plaster precursor in a semi-solidified state where calcium carbonate and calcium hydroxide are present,” as recited in claim 1. 12 Appeal 2016-004134 Application 12/374,843 In sum, for the reasons discussed above we do not sustain the Examiner’s rejection of claims 1—8, 10, and 11 under 35 U.S.C. § 103(a), or the rejection of claims 1—8, 10, and 11 under 35 U.S.C. § 112 (pre-AIA), second paragraph, or 35 U.S.C. § 112(b), as indefinite. We do, however, sustain the Examiner’s rejection of claims 1—8, 10, and 11 under 35 U.S.C. §112 (pre-AIA), first paragraph, or 35 U.S.C. § 112(a), as failing to comply with the written description requirement. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation