Ex Parte Ghyzel

Patent Trial and Appeal Board

Sep 21, 2012

11964987 (P.T.A.B. Sep. 21, 2012)

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.
11/964,987 12/27/2007 Peter J. Ghyzel 94697CPK 2705
1333 7590 09/24/2012
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
HUHN, RICHARD A
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
09/24/2012 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte PETER J. GHYZEL
________________

Appeal 2011-005277
Application 11/964,987
Technology Center 1700
________________

Before BRADLEY R. GARRIS, CHARLES F. WARREN and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005277
Application 11/964,987

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A. Introduction1
Peter J. Ghyzel (“Ghyzel”) timely appeals under 35 U.S.C. § 134(a)
from the final rejection2 of claims 1-22, which are all of the pending claims.
We have jurisdiction. 35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to ink-jet recording layer (“ILR”)
compositions adapted for high speed printing. IRLs are said to comprise,
e.g., a porous coating comprising inorganic particles, a polymeric binder,
and additives. (Spec. 1, ll. 27-29.) According to the 987 Specification, “[a]
problem arises when multiple ink droplets are deposited in very close
proximity in a short time: if the porosity of the receiver is not adequate, the
drops will coalesce, severely degrading the image quality.” (Id. at 2,
ll. 16-18.) Moreover, “[t]he amount of binder in the coated layers is
relevant, since if too much binder is present, the porosity of the receiver is
diminished, resulting in coalescence, and if too little binder is present,
unacceptable cracking is observed.” (Id. at ll. 18-21.)
The present invention is said to be an improvement on an IRL
described by Merkel, which comprised a fine silica, a hydrophilic polymer
binder, and a fluorosurfactant. (Spec. 2, ll. 25-30; see n.5, infra, for Merkel
citation.) Merkel, however, requires that “coating compositions comprising
the fluorosurfactants should be coated within a period of twelve hours from

1 Application 11/964,987, Stabilized Coating Dispersions for Porous Inkjet
Recording Media, filed 27 December 2007. The specification is referred to
as the “987 Specification,” and is cited as “Spec.” The real party in interest
is listed as the Eastman Kodak Company. (Appeal Brief,
filed 23 September 2010 (“Br.”), 1.)
2 Office action mailed 13 January 2010.
Appeal 2011-005277
Application 11/964,987

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the time of addition of the fluorosurfactant to the dispersion, in order to
avoid excessive agglomeration of the particles resulting in poor gloss.” (Id.
at 2, l. 31, to 3, l. 3.) The instability of the coating composition, such as the
thickening behavior upon standing, creates manufacturing problems, as large
amounts of the composition may need to be discarded if the coating is not
used promptly, and coating quality may change during coating as the
composition ages. (Id. at 3, ll. 3-8.)
According to Ghyzel, these problems are solved by adding a
nonfluorinated non-ionic surfactant having a hydroxyl number3 larger
than 300. (Id. at para. bridging 3-4.)
Representative Claim 1 reads:
1. A coating composition comprising a dispersion of
fine particles of silica having a particle size of
less than 300 nm,
hydrophilic hydroxy-containing polymer,
a first non-ionic surfactant comprising a perfluoroalkyl-
containing alcohol comprising ethylene oxide repeat
units, and
a second non-ionic surfactant selected from the group
consisting of non-fluorine-containing surfactants that
comprises a hydrophobic moiety and a hydrophilic
moiety comprising hydroxy groups, wherein the
hydroxy number of the second non-ionic surfactant is
greater than 300.
(Claims App., Br. 8.)

3 Hydroxyl number = 56,100/(equivalent weight in g for one mole of
hydroxyl). (Spec. 8, ll. 24-25.)
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Application 11/964,987

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The Examiner maintains the following grounds of rejection:4
A. Claims 1-22 stand rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Merkel5 and Olson.6
B. Claim 16 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Merkel, Olson, and Grolitzer.7
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Ghyzel argues that the Examiner’s obviousness rejection should be
reversed because the Examiner found, erroneously, that the high-hydroxyl
number of surfactants described by Olson are used for the “same or similar
purpose” as the additional surfactants suggested by Merkel.
The appealed claims are drawn to an improvement on the inkjet image
receiving layers described by Merkel. There is no dispute that Merkel
describes inkjet receiving layers having fine silica particles, a hydrophilic
hydroxyl-containing polymer binder, and fluorosurfactants as required by
appealed claim 1. (Merkel 1 [0025], [0027], 2 [0030], respectively.) There
is also no dispute that Merkel does indicate that additional surfactants can be

4 Examiner’s Answer mailed 3 December 2010 (“Ans.”).
5 Paul B. Merkel et al., Image-Recording Element with Fluorosurfactant
and Colloidal Particles, U.S. Patent Application Publication
2005/0013947 A1 (2005).
6 Leif P. Olson and Kurt M. Schroeder, Method for Reducing Sensitizing
Dye Stain, U.S. Patent Application Publication 2005/0244762 A1 (2005).
7 Marilyn A. Grolitzer, Glucoside Surfactants, U.S. Patent 4,528,106
(1985).
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Application 11/964,987

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added to the composition to obtain adequate coatability, as long as they do
not interfere with the interactions between the fluorosurfactant and colloidal
silica particles (Id. at 7 [0106].) Nor is there a dispute that Merkel does not
describe the high-hydroxyl number surfactants required by the appealed
claims.
Olson describes a silver halide color photographic light-sensitive
material, such as a photographic paper. (Olson 1 [0001].) The layer of
interest comprises a sensitized emulsion and a dye dispersion that comprises
at least one dye and a dye stain reducing water soluble surfactant.
(Id. at [0009].) Olson explains that, “[w]ith short processing times, . . .
residual dye stain may occur due to poor elution of the spectral sensitizing
dyes contained in the light-sensitive material into the processing solutions,”
resulting in degraded print appearance. (Id. at [0005].)
As Ghyzel argues (Br. 3), the Examiner has failed to come forward
with a plausible argument, supported by evidence of record, that the more
efficient elution of residual sensitizing dyes from a silver halide emulsion
layer, described by Olson, shares a significant similarity with the coatability
issues addressed by Merkel. Merely identifying a reference in a “related” art
does not establish that its teaching would have been considered relevant to
any particular proposed modification of the prior art.
Moreover, as Ghyzel argues (Br., para. bridging 5-6), Olson presents
mostly relatively low hydroxyl number surfactants such as A-2, Tergitol®
(Union Carbide), and only a few relatively high hydroxyl surfactants such
as A-4, Olin-10G® (Dixie). The comparative Examples in
the 987 Specification, however, show a much higher viscosity after 24 hours
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Application 11/964,987

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(Spec. 30-31, Table 1 (CE-4 through CE-6 use a Tergitol®)) and
after 8 hours (id. at 33, Table 2, CE-8 uses Triton X-100®, said to have a
hydroxyl number of 90.) The reasonable expectation, based on the
Examiner’s proposed rationale, would be that all of the surfactants suggested
by Olson would have similar effects in the compositions described by
Ghyzel. The differing results further emphasize the inadequacy of the
rejections.
The Examiner’s additional analyses of the argued unpatentability of
the dependent claims, including separately rejected claim 16, do not cure the
defects of the rejection of claim 1.
C. Order
We REVERSE the rejection of claims 1-22 under 35 U.S.C. § 103(a)
in view of the combined teachings of Merkel and Olson.
We REVERSE the rejection of claim 16 under 35 U.S.C. § 103(a) in
view of the combined teachings of Merkel, Olson, and Grolitzer.
REVERSED
cam