Ex Parte Hood

Board of Patent Appeals and Interferences

Feb 1, 2011

11198963 (B.P.A.I. Feb. 1, 2011)

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.
11/198,963 08/08/2005 David K. Hood FDN-2943 9666
7590 02/01/2011
Attn: William J. Davis, Esq.
INTERNATIONAL SPECIALTY PRODUCTS
Legal Department, Building No. 8
1361 Alps Road
Wayne, NJ 07470
EXAMINER
NERANGIS, VICKEY MARIE
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
02/01/2011 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 DAVID K. HOOD
____________

Appeal 2010-000870
Application 11/198,963
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-000870
Application 11/198,963

2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1-6, 8, 9, 11, and 13-203. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claims 1 and 15, the sole independent claims, are representative of the
invention and are reproduced below from the Claims Appendix to the
Appeal Brief:
1. A coating composition for making glossy inkjet-receptive coatings
on a substrate consisting essentially of:

(a) a cationic polymer,

(b) colloidal silica having an average particle size in the nanometer
range,

(c) water,

(d) optionally, an additional binder selected from the group consisting
of a latex, polyvinyl alcohol, cellulose, a cationic polyurethane dispersion
and combinations thereof; and

(e) optionally, a crosslinker,

2 Final Office Action mailed Oct. 10, 2008 (“Final”).
3 Claim 12 is the only other claim pending in the application. (Appeal Brief
filed May 11, 2009 (“App. Br.”), 5; Examiner’s Answer mailed Aug. 3,
2009 (“Ans.”), 2(3).) The Examiner identifies claim 12 as finally rejected.
However, claim 12 has not been identified as subject to any final ground of
rejection. (Reply Brief filed Oct. 5, 2009 (“Rep. Br.”), 6; see generally Final
2-4.) Claim 12 was previously rejected under 35 U.S.C. § 112, second
paragraph. (Office Action mailed Jan. 25, 2008, 2.) However, this rejection
was withdrawn in the Final Office Action. (Final 2 (1.).)
Appeal 2010-000870
Application 11/198,963

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wherein (a) is 45 to 95% and (b) is 5 to 55% by dry weight
based on the total dry weight of (a) and (b).

15. A coating composition for making glossy inkjet-receptive
coatings on a substrate consisting essentially of:

(a) a cationic polymer,

(b) colloidal silica having an average particle size in the nanometer
range, and

(c) water,

wherein (a) is 45 to 95% and (b) is 5 to 55% by dry weight based
on the total dry weight of (a) and (b).

Appellant requests review of the following grounds of rejection (App.
Br. 9):
1. claims 1-3, 5, 6, 8, 9, 11, 13-17, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Tomizawa4 in view of Miyachi5 (Ans. 3-4);
2. claims 4 and 186 under 35 U.S.C. § 103(a) as unpatentable over
Tomizawa in view of Miyachi and further in view of Ceruti7 (Ans.4 ); and

4 6,224,971 B1, issued May 1, 2001
5 US 2003/0224129 A1, published Dec. 4, 2003
6 Appellant erroneously identifies claim 8, rather than claim 18, as subject to
this ground of rejection. (App. Br. 9; Rep. Br. 3.)
7 6,592,953 B1, issued Jul. 15, 2003
Appeal 2010-000870
Application 11/198,963

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3. claims 1, 5, 6, and 88 as provisionally rejected on the ground of
nonstatutory obviousness-type double patenting over claims 2-4 of co-
pending Application No. 11/546,0699.
Rejections under 35 U.S.C. § 103(a)
In traversing the rejections under 35 U.S.C. § 103(a), Appellant
focuses on independent claim 1 (see App. Br. 11) and does not present
separate arguments in support of patentability of any other claim or group of
claims. (App. Br. 10-11.) Accordingly, we decide the appeal as to the first
two grounds of rejection on the basis of independent claim 1 and dependent
claim 4, respectively. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple
claims subject to the same ground of rejection are argued as a group by
appellant, the Board may select a single claim from the group of claims that
are argued together to decide the appeal with respect to the group of claims
as to the ground of rejection on the basis of the selected claim alone.”).
The sole basis on which Appellant requests reversal of the first two
grounds of rejection is that neither Tomizawa nor Miyachi discloses or
suggests a binder “selected from the group consisting of a latex, polyvinyl
alcohol, cellulose, a cationic polyurethane dispersion and combinations
thereof” as recited in claim 1 (App. Br. 11 (quoting claim 1)). As pointed
out by the Examiner, and acknowledged by Appellant, claim 1 lists the
component (d) binder as an optional component. (Ans. 6; App. Br. 11; Rep.
Br. 4 (“Claim 1 of the present application indicates that when the optional

8 Both Appellant and the Examiner identify claim 7 as subject to this ground
of rejection. (App. Br. 9; Rep. Br. 3; Ans. 5.) Claim 7 was cancelled in an
Amendment filed Jun. 25, 2008.
9 This application issued as US 7,651,748 on Jan. 26, 2010.
Appeal 2010-000870
Application 11/198,963

5
additional binder is present. . .”).) Likewise, claim 4 does not require the
presence of the component (d) binder.10
Because Appellant’s arguments are directed solely to features which
are not required by the argued claims, we are not persuaded of reversible
error in the Examiner’s rejections under 35 U.S.C. § 103(a). See In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
Provisional Obviousness-type Double Patenting Rejection
The Examiner found that “[w]hile US appl. '069 claims other
ingredients in the coating composition, the instant claims encompass claims
2-4 of US appl. '069.” (Ans. 5 (relying on page 4, ll. 24-25 of US appl. '069
to establish that particle size of the claimed colloidal silica is 20-150 nm).)
Appellant argues the Examiner erred in failing to explain why the ordinary
artisan would have modified the claims of the co-pending application to
arrive at Appellant’s claimed composition. (App. Br. 11-12.) Because
Appellant has not shown error in the facts and reasons relied on by the
Examiner in determining that appealed claims 1, 5, 6, and 8 encompass
claims 2-4 of the Appellant’s co-pending application, we are not persuaded
of reversible error on the part of the Examiner.
For the foregoing reasons, we sustain: the rejection of claims 1-3, 5,
6, 8, 9, 11, 13-17, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over
Tomizawa in view of Miyachi ; the rejection of claims 4 and 18 under
35 U.S.C. § 103(a) as unpatentable over Tomizawa in view of Miyachi and
further in view of Ceruti; and the provisional rejection of claims 1, 5, 6, and

10 We also note that claim 15 does not recite “an additional binder,” even as
an optional component.
Appeal 2010-000870
Application 11/198,963

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8 on the ground of nonstatutory obviousness-type double patenting over
claims 2-4 of co-pending Application No. 11/546,069.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

cam

ATTN: WILLIAM J. DAVIS, ESQ.
INTERNATIONAL SPECIALTY PRODUCTS
LEGAL DEPT., BLDG. NO. 8
1361 ALPS ROAD
WAYNE, NJ 07470