Ex Parte Makau et al

Patent Trial and Appeal Board

Mar 14, 2016

13033406 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/033,406 02/23/2011
22879 7590 03/16/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Fredrick Mu ya Makau
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82600631 8797
EXAMINER
GUO, TONG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDRICK MUY A MAKAU and DREY AM. ALFEKRI
Appeal2014-005554
Application 13/033,406
Technology Center 1700
Before PETER F. KRATZ, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-19. We have jurisdiction pursuant to
35 U.S.C. § 6. We reverse.
Appellants' claimed invention is directed to a canvas having a base
layer, a gesso layer, a microporous layer on the gesso layer, and a
transparent layer, as well as a method of forming a textured canvas.
Claims 1 and 7 are illustrative and reproduced below:
1. A canvas comprising:
a base layer;
a gesso layer on said base layer;
Appeal2014-005554
Application 13/033,406
a microporous layer on said gesso layer, said
microporous layer comprising uniform cracks formed
according to a weave pattern of said base layer; and
a transparent layer to fill said cracks.
7. A method of forming a textured appearing canvas
comprising forming a gesso layer on a base layer;
forming a microporous layer on said gesso layer, said
microporous layer comprising uniform cracks formed
according to a weave pattern of said base layer; and
forming a transparent layer to fill said cracks.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Higuma et al.,
Bi et al.,
Niu et al.,
Chen
us 4,785,313
US 2005/0238826 Al
US 2008/0254240 Al
WO 2009/091361 Al
Nov. 15, 1988
Oct. 27, 2005
Oct. 16, 2008
July 23, 2009
The Examiner maintains the following grounds of rejection:
Claims 1, 2, 5-8, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Niu in view of Chen. Claims 5 and 13 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Niu in view of
Chen and Higuma. Claims 3, 4, 9-12, and 15-19 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Niu in view of Chen and Bi.
We reverse the stated rejections. Our reasoning follows.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
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Application 13/033,406
Here, the Examiner's reliance on a combination of Niu and Chen to
underpin all of the stated obviousness rejections is not well-founded. In this
regard and as indicated in the Examiner's first stated obviousness rejection,
the Examiner relies on Niu for disclosing a canvas that includes a base
canvas layer, a gesso layer on the base layer, and an ink receptive layer on
the base layer, which ink receptive layer is a microporous layer and includes
cracks (Final Office Action 2; Ans. 3, 6; Niu i-fi-f l, 23, 33).
However and as argued by Appellants, the Examiner has not
established that either of Niu or Chen teaches a microporous layer in
combination with a gesso layer (App. Br. 11 ). In this regard, the Examiner
has not established that Niu teaches that the ink receiving layer that can
include microporous inorganic particles, such as silica as described in
paragraph 23 of Niu is formed on a gesso layer, by referring to Niu's
background disclosure relating to a gesso layer employed in conventional
canvas structures as indicated in paragraph 1 of Niu. Indeed, Niu teaches
that Niu's "ink receiving layer is disposed directly onto the substrate without
a gesso layer" (i-f 14). Moreover, the Examiner does not contend that Chen
disposes its ink receiving layer on a gesso layer; rather, the Examiner
proposes replacing the ink receiving layer of Niu with the silica based
porous ink receiving layer of Chen and adding the gloss layer of Chen to the
porous ink receiving layer of Niu (Ans. 3, 6-7; Final Office Action 3-5).
Consequently, even if we agreed with the Examiner that it would have
been obvious for one of ordinary skill in the art to replace the ink receiving
layer of Niu with the ink receiving layer of Chen and to coat the clear gloss
layer of Chen onto the replaced ink receiving layer of Niu, the Examiner has
not supplied a basis for why one of ordinary skill in the art would have
placed a gesso layer between the canvas base layer of Niu and the replaced
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Appeal2014-005554
Application 13/033,406
ink receiving layer from Chen. This is because the Examiner has erred in
asserting that Niu employs a gesso layer with Niu's microporous particle-
containing ink receiving layer and the Examiner has not otherwise
articulated why Niu and/or Chen would teach or suggest interposing a gesso
layer at a location between a base layer and the ink receiving layer of Niu or
Chen in a manner as required by all of the appealed claims subject to the
first stated rejection. (Niu i-f 14; see appealed claims 1, 7).
In addition, we concur with Appellants' argument indicating that the
Examiner has erred in failing to reasonably establish that the proposed
combination of Niu and Chen would have suggested that the replaced ink
receiving layer was a microporous layer that comprises uniform cracks
formed according to a weave pattern of the base layer as required by
independent claims 1 and 7, and all of the other claims subject to the
Examiner's first stated obviousness rejection (App. Br. 12-16; Reply Br. 5-
8). In this regard, the Examiner's reliance on Appellants' teachings as set
forth in the subject Specification in an apparent attempt to establish
inherency as to the required uniform cracks formation feature is misplaced
given that the Examiner has not established that the claimed and prior art
canvas structures and methods are otherwise identical (Ans. 4, 5, 7, 8; Spec.
,-r 20).
Thus, the record indicates that the Examiner used impermissible
hindsight in rejecting the Appellants' claims. See In re Warner, 379 F.2d
1011, 1017 (CCP A 1967) ("A rejection based on section 103 clearly must
rest on a factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art"). Accordingly, we do not
sustain the Examiner's first stated rejection.
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Application 13/033,406
As for the Examiner's separate rejection of dependent claims 5 and 13
over Niu and Chen together with Higuma, the Examiner relies on Higuma
for certain additional features called for in these dependent claims, not for
establishing that Higuma cures the above-noted deficiencies in the base
combination of Niu and Chen (Final Office Action 6; Ans. 9).
It follows that we do not sustain the latter rejection.
Concerning the Examiner's separate rejection of independent claim 15
and certain dependent claims over Niu and Chen together with Bi, the
Examiner further relies on Bi's disclosure pertaining to the use of boric acid
(a cross-linker) in an amount so as to avoid cracking of the porous ink
receiving layer as being suggestive of using an amount of boric acid so as to
affect the appearance of uniform cracks formed along regions corresponding
to a weave pattern of the base layer and/or corresponding to interstitial
regions of the base layer, as variously required by the claims subject to this
separate rejection (Final Office Action 7-11; Ans. 9-12). As argued by
Appellants, however, the cited disclosure of Bi suggests avoiding crack
formation, not controlling the appearance of uniform cracks that are formed
in the ink receiving layer (App. Br. 17-20; Reply Br. 8-11). Moreover, the
Examiner has not otherwise explained how Bi cures the deficiencies in the
base rejection discussed above.
It follows that we shall reverse the latter rejection.
CONCLUSION
The Examiner's decision to reject the appealed claims is reversed.
REVERSED
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