Ex parte Malhotra

Board of Patent Appeals and Interferences

Mar 26, 1999

08208317 (B.P.A.I. Mar. 26, 1999)

Application for patent filed March 10, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHADI L. MALHOTRA
____________
Appeal No. 96-3946
Application No. 08/208,3171
____________
ON BRIEF
____________
Before THOMAS, HAIRSTON, and GROSS, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 32, which are all of the claims
pending in this application.
The appellant's invention relates to a printing process
of ejecting an aqueous ink onto a recording sheet which
Appeal No. 96-3946
Application No. 08/208,317
2
includes a substrate and two coating layers, each coating
layer being formed of a binder and microspheres. Claim 1 is
illustrative of the claimed invention, and it reads as
follows:
1. A printing process which comprises the steps of
(a) incorporating into an ink jet printing apparatus
containing an aqueous ink a recording sheet which
consists essentially of (1) a substrate; (2) a first
coating layer which comprises a binder and
microspheres having an average particle diameter of
at least about 1 micron; (3) a second, ink-receiving
coating layer situated so that the first coating
layer is between the second, ink-receiving coating
layer and the substrate, said second, ink-receiving
layer comprising a hydrophilic binder and
microspheres having an average particle diameter of
at least about 1 micron; (4) an optional antistatic
agent; (5) an optional biocide; and (6) an optional
filler; and (b) causing droplets of the ink to be
ejected in an imagewise pattern onto a surface of
the recording sheet containing microspheres, thereby
generating images on the recording sheet.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Miyamoto et al. (Miyamoto) 4,460,637 Jul. 17, 1984
Ayers et al. (Ayers) 4,575,729 Mar. 11, 1986
Vieira et al. (Vieira) 5,073,448 Dec. 17, 1991
Claims 1 to 32 stand rejected under 35 U.S.C. § 112,
second paragraph as being vague and indefinite.
Appeal No. 96-3946
Application No. 08/208,317
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Claims 27, 28, 31, and 32 stand rejected under 35 U.S.C.
§ 112, first paragraph, as containing new matter.
Claims 1 to 12, 27, 28, and 32 stand rejected under 35
U.S.C. § 103 as being unpatentable over Miyamoto.
Claims 13 to 24 and 31 stand rejected under 35 U.S.C. §
103 as being unpatentable over Miyamoto in view of Ayers.
Claims 25 and 26 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Miyamoto in view of Vieira.
Claims 29 and 30 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Miyamoto in view of Ayers and Vieira.
Reference is made to the Examiner's Answer (Paper No. 10,
mailed June 10, 1996) for the examiner's complete reasoning in
support of the rejections, and to the appellant's Brief (Paper
No. 9, filed March 04, 1996) for the appellant's arguments
thereagainst.
OPINION
As a preliminary matter we note that appellant indicates
on page 4 of the Brief (with reasons as set forth in 37 CFR
§ 1.192(c)(5) and (c)(6)) that the claims do not stand or
Appeal No. 96-3946
Application No. 08/208,317
We note that claim 32 is identical to claim 28.2
4
fall together. Appellant groups the claims as follows: (1)
claims 1 through 12, (2) claims 13 through 24 and 31, (3)
claims 25, 26, 29, and 30, and (4) claims 27, 28 and 32 .2
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by the appellant and the examiner. As a consequence of our
review, we will affirm the 112 second paragraph rejection of
claims 7, 8,
10, 11, 19, 20, 22, and 23, but reverse the 112 second
paragraph rejection of the remaining claims, affirm the 112
first paragraph rejection of claims 27, 28, 31, and 32, affirm
the obviousness rejection of claims 1 to 12, 25, and 26, and
reverse the obviousness rejections of claims 13 through 24,
and 27 through 32.
The examiner first objects to the use of "optional" in
independent claims 1 and 13. She states (Answer, page 4) that
"'optional' is not definite since the limitation does not
clearly set forth the metes and bounds of the patent
Appeal No. 96-3946
Application No. 08/208,317
5
protection desired." Appellant asserts (Brief, page 18) that
the use of the term "optional" does not render the claims
indefinite and cites Ex parte Cordova, 10 USPQ2d 1949 (Bd.
Pat. App. & Int. 1987), Ex parte Head, 214 USPQ 551 (Bd. App.
1981), and Ex parte Wu, 10 USPQ2d 2031 (Bd. Pat. App. & Int.
1989), as evidence that the Board has previously upheld the
use of the term "optional." See also Ex parte Holt, 19 USPQ2d
1211 (Bd. App. & Int. 1991). In response to appellant's
arguments, the examiner adds (Answer, page 13), "It is not
'optional' taken alone that obfuscates the claims, but the
fact that calculated ranges of weight percentages depend upon
the claims of the optional constituents. How do these ranges
differ if the optional constituents are included?"
The term "optional" taken alone does not render the
claims
indefinite, as admitted by the examiner. The term merely
denotes alternatives. As to the examiner's position that the
calculated ranges of weight percentages are unclear since they
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Application No. 08/208,317
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depend upon the "optional" components, no ranges of weight
percentages are recited in claims 1 and 13. Such
considerations would only arise for those claims which recite
weight percentages of at least one constituent. Still,
"claims are not to be considered 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.'
When considered in the light of the prior art and the
specification, claims otherwise indefinite may be found
reasonably definite." See In re Kroekel, 504 F.2d 1143, 1146,
183 USPQ 610, 612 (CCPA 1974). In the present case, the
weight percentage range for each element is disclosed, and one
of ordinary skill in the art would know how to manipulate the
amounts within the ranges if other components were being
added. Further, if the examiner's concern is that the total
weight percent could be more than 100% if the optional
components were included, the court in In re Kroekel, supra,
held that "a rejection based on indefiniteness cannot stand
simply because the
Appeal No. 96-3946
Application No. 08/208,317
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proportions actually recited in the claims may be read in
theory to include compositions that are impossible in fact to
formu-late." Accordingly, the term "optional" in the claims
does not render the claims indefinite.
The examiner further questions (Answer, pages 5-6)
whether the coating weight in claims 7, 8, 10, 11, 19, 20, 22,
23, 27, 28, 31, and 32 refers to a dry coating weight or a wet
coating weight. However, the relative weight percentages
remain the same whether the coating is wet or dry.
Accordingly, the failure to indicate whether the coating
weight is for a wet or a dry coating does not render the
claims indefinite.
The examiner asserts (Answer, page 5) that in claims 7,
8, 10, 11, 19, 20, 22, and 23, "'the solid contents' lack
antecedent basis and is therefore indefinite. It is not clear
as to what defines the solid contents." Appellant contends
(Brief, page 19) that
The meaning of "solids content" is clear and
unambig-uous to those in the coating art. In
addition, the working examples at pages 27 and 28
clearly indicate the meaning of the term "solids
content" to one of ordinary skill in the art;
specifically, this term refers to the solid contents
of the coating composition that are admixed with a
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solvent for coating onto the substrate, subsequent
to which the solvent evaporates from the coating.
Turning to the specification, we find no definition of
"solids content." Furthermore, the description of the micro-
spheres on page 9 of the specification says:
The first coating layer, situated between the
second ink-receiving layer and the substrate,
typically contains microspheres in an amount of from
about 0.25 to about 50 percent by weight, and
preferably from about 2.5 to about 25 percent by
weight, although the amount can be outside these
ranges.
A similar description of the microspheres in the second layer
appears in the paragraph bridging pages 11 and 12 of the
specification, but with ranges of 0.1 to 10 percent and
preferably 0.1 to 3 percent. In other words, the percentages
claimed are identical to those recited in the specification,
but "in the solids content" does not appear in the above
referenced sections of the specification. Therefore, it is
unclear how "in the solids content" limits the claims, since
the ranges are the same as in the specification where the
phrase does not appear. Appellant refers to the examples on
pages 27 and 28, wherein the weight percent of solids in a
Appeal No. 96-3946
Application No. 08/208,317
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solvent is stated. Yet, the weight percentages of solids
recited in the examples differs from the claimed weight
percentages. Accordingly, the use of the phrase "in the
solids content" is confusing at best. Consequently, we
must agree with the rejection of claims 7, 8, 10, 11, 19, 20,
22, and 23 under 35 U.S.C. § 112, second paragraph.
The examiner (Answer, page 4) further rejects claims 27,
28, 31, and 32 under 35 U.S.C. § 112, first paragraph, as
containing new matter. She contends that the weight
percentages of the binder were not disclosed in the
specification as originally filed. The appellant suggests
that the percentages are indirectly disclosed, since the
weight percentages of the microspheres are recited in the
specification.
We agree that the percentages of the binder can be calcu-
lated using what is explicitly disclosed, but the calculated
ranges do not match those now claimed. For example, for the
first coating layer, the microspheres are present in an amount
of 0.25 to 50 percent or preferably 2.5 to 25 percent. Thus,
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the percent of binder (absent any optional elements) would be
50 to 99.75 or preferably 75 to 97.5 percent. Thus, the
claimed range of at least 75 percent could be considered to be
disclosed. However, claims 28 and 30 recite a range of at
least about 97 percent, which does not correspond with either
calculated range. Similarly, for the second coating layer,
the microspheres are present in an amount of 0.1 to 10 percent
or preferably 0.1 to 3 percent. Calculating the percent of
binder yields 90 to 99.9
percent or preferably 97 to 99.9 percent. Yet the claimed
percentage is at least about 75 percent in all four claims.
Since at least 75 percent does not even remotely correspond to
the calculated ranges, we have to agree that the claimed
ranges are not supported by the original disclosure.
With respect to the obviousness rejections, independent
claim 1 requires a recording sheet
which consists essentially of . . . (2)a first
coating layer which comprises a binder and
microspheres having an average particle diameter of
at least about 1 micron;(3)a second, ink-receiving
coating layer . . . comprising a hydrophilic binder
and microspheres having an average particle diameter
of at least about 1 micron. (emphasis added)
Appeal No. 96-3946
Application No. 08/208,317
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In other words, each of the two coating layers includes
microspheres with an average particle diameter of at least
about 1 micron. Miyamoto discloses (column 5, line 46-column
6, line 9):
In an embodiment of the invention in which the
ink receptive layer is composed of two or more
strata, it is necessary that the pore radius
distribution of the uppermost layer shows at least
one peak at 0.2 to 10 µm. This requirement can be
met by coating with a particulate pigment of 1 to 50
µm in average size . . . It is, therefore,
necessary to dispose an intermediate layer (second
layer) of a large ink-receptive capacity, in which
layer the total pore volume of pores of 0.05 µm or
below in size is 0.2 ml/g or above. To provide such
an intermediate layer, a pigment having a particle
size of 0.2 µm or below is coated by various means
to form a layer. (emphasis added)
Thus, Miyamoto requires at least one layer with particles with
an average diameter of 1 to 50 µm and a second layer with
particles having an average diameter of 0.2 µm or below.
The examiner contends (Answer, page 6) that Miyamoto
discloses an average particle size of 1-50 microns for each of
two layers. She focuses on the phrase "two or more strata" in
Miyamoto, asserting that "or more" suggests a device with two
of the first layer and therefore two layers with particles of
diameter 1 to 50 µm. We agree that Miyamoto suggests a
Appeal No. 96-3946
Application No. 08/208,317
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recording medium with a second uppermost layer, thereby
totaling three layers altogether. However, as pointed out by
the examiner (Answer, pages 10-11), the present claims say
"consists essentially of," which has been defined as
"includ[ing] the listed ingredients and [being] open to
unlisted ingredients that do not materially affect the basic
and novel properties of the invention." PPG Industries Inc. v.
Guardian Industries Corp., 156 F.3d 1351, 1354, 48 USPQ2d
1351, 1353 (Fed. Cir. 1998); In re Herz, 537 F.2d 549, 190
USPQ 461, 463 (CCPA 1976). We interpret "ingredients that . .
. materially affect" as only being directed to elements that
materially affect in a deleterious manner. The issue,
therefore, is whether the intermediate layer of Miyamoto
with particles having an average diameter of 0.2 µm or lower
would materially and detrimentally affect the basic and novel
properties of the invention.
Appeal No. 96-3946
Application No. 08/208,317
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In the specification (page 4), appellant discloses that
the purpose of the invention is to provide an improved
recording sheet suitable for ink jet printing and which
"exhibit rapid drying times when imaged with aqueous inks."
Miyamoto states in column 2, lines 62-67, that the
intermediate layer with small particles provides high image
resolution and high ink absorptivity. In column 2, lines 44-
49, Miyamoto discloses that a larger and a higher rate of ink
absorption makes the ink dry faster. In other words, the
addition of Miyamoto's intermediate layer would seem to
enhance the properties of appellant's recording sheet, or
rather, not to materially and deleteriously affect the basic
and novel properties of the invention. Accordingly, we find
that claim 1 and claims 2 through 12, all of which depend from
claim 1, would have been obvious over Miyamoto.
Independent claim 13 is identical to claim 1 with a
further step of "thereafter exposing the substrate to
microwave radiation, thereby drying the recording liquid on
the recording sheet." The examiner relies on Ayers for
motivation to include a step of applying microwave radiation.
The examiner states
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Application No. 08/208,317
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(Answer, page 8) that it would have been obvious to use the
microwave drying of Ayers "because the microwave drying of
Ayers, et al. drys the ink as desired by Miyamoto, et al."
She further asserts (Answer, page 11) that
Ayers does not limit drying to any particular
recording sheet. And Miyamoto does not prohibit
drying, in fact Miyamoto, et al. teach to dry the
ink receptive layer in example 1. Therefore,
Miyamoto, et al. desire a dried recording medium.
Appellants have not given sufficient reason why
Miyamoto would not want a dried recording medium in
the ink jet art.
First, the drying of Example 1 of Miyamoto referenced by
the examiner (Answer, page 11), occurs during the preparation
of the medium for use in a printing process, not during the
printing process itself. Furthermore, Miyamoto discloses in
column 2, lines 54-62, that
for the purpose of producing an ink jet recording
sheet having a high rate of ink absorption so as to
render the ink apparently dry immediately after the
application, it is most effective to construct the
uppermost layer, with which the ink droplets come in
first contact, with pigment particles of a suitable
size to utilize the capillary effect of the
interparticle voids or to provide a porous layer of
the similar pore size or pore radius to absorb the
ink. (emphasis added)
In other words, Miyamoto discloses that the recording medium
dries immediately by itself by virtue of the porosity of the
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uppermost layer, and thereby teaches away from additional
drying of the medium after printing. Therefore, the
examiner's statement that Miyamoto desires to dry the ink
lacks basis in the reference.
We do agree with the examiner that Ayers suggests to the
skilled artisan that ordinarily a recording medium needs to be
dried after printing, and that known methods include microwave
drying. However, since Miyamoto specifies a medium that dries
immediately without external drying means, adding a microwave
drying step to Miyamoto's method would appear to be contrary
to the teachings of Miyamoto. Therefore, it would not have
been obvious to one of ordinary skill in the art to add a
microwave drying step to Miyamoto. Accordingly, the examiner
has failed to establish a prima facie case of obviousness, and
we cannot maintain the rejections of claim 13 and claims 14
through 24 and 31, which depend from claim 13.
For the addition of biocides and antistatic agents, for
claims 25, 26, 29, and 30, the examiner submits (Answer, pages
8-9) that Vieira teaches in column 7, line 67-column 8, line
4,
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Application No. 08/208,317
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using biocides and/or antistatic agents for ink jet recording
mediums. She concludes:
It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to make the ink jet recording medium of Miyamoto, et
al. with biocides and antistatic agents as taught by
Vieira, et al. because biocides and antistatic
agents are known additives for ink jet printing
mediums.
We agree that Vieira suggests that biocides and antistatic
agents are conventional additives for recording mediums.
Consequently, we find that the addition of such biocides and
antistatic agents to the recording medium of Miyamoto would
have been obvious to one of ordinary skill in the art for the
purposes that their names suggest. Therefore, we agree with
the examiner that claims 25 and 26 would have been obvious
over Miyamoto in view of Vieira.
As to claims 29 and 30, however, Vieira does not remedy
the deficiency in the rejection of claim 13, from which claims
29 and 30 depend. Accordingly, we must reverse the rejections
of claims 29 and 30.
With respect to claims 27, 28, and 32, the examiner
(Answer, page 6) points to Example 1 and column 7, lines 21-
26, to show that Miyamoto teaches a 20% solids composition in
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Application No. 08/208,317
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the coatings (and thus 80% binder). However, in column 7
Miyamoto teaches that the amount of binder should be no more
than 100 parts by
weight to 100 parts by weight of pigment. Similarly, in
Example 1, the amount of binder is 15 parts by weight to 100
parts by
weight of pigment. In other words, the weight percentage of
binder disclosed by Miyamoto is less than 50 percent, which
does not even approach the claimed ranges of at least 75
weight percent and at least 97 weight percent. Therefore, we
cannot uphold the rejection of claims 27, 28, and 32 under 35
U.S.C. § 103.
CONCLUSION
The decision of the examiner to reject claims 1 through
32 under 35 U.S.C. § 112, second paragraph is affirmed for
claims 7, 8, 10, 11, 19, 20, 22, and 23 and reversed for
claims 1 through 6, 9, 12 through 18, 21, and 24 through 32.
Appeal No. 96-3946
Application No. 08/208,317
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The decision of the examiner to reject claims 27, 28, 31, and
32 under 35 U.S.C.
§ 112, first paragraph is affirmed. The decision of the
examiner to reject claims 1 through 32 under 35 U.S.C. § 103
is affirmed for claims 1 through 12, 25, and 26 and reversed
for claims 13 through 24, and 27 through 32.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 96-3946
Application No. 08/208,317
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vsh
Appeal No. 96-3946
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RONALD ZIBELLI
XEROX CORPORATION
XEROX SQUARE 020
ROCHESTER, NY 14644