Ex Parte McCovickDownload PDFBoard of Patent Appeals and InterferencesJun 16, 201010313570 (B.P.A.I. Jun. 16, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte TAMMY A. MCCOVICK ________________ Appeal 2009-012420 Application 10/313,570 Technology Center 1700 ________________ Decided: June 16, 2010 ________________ Before CHUNG K. PAK, CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 58-99 (Notice of Appeal filed Apr. 26, 2007). In the Appeal Brief the Appellant states that claims 92-99 are finally rejected but not appealed (Br. 1). Hence, we dismiss the appeal as to claims 92-99. See Appeal 2009-012420 Application 10/313,570 2 Manual of Patenting Examining Procedure § 1215.03 (8th ed., Rev. 3, Aug. 2005). We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims a method for inkjet printing. Claim 58 is illustrative: 58. A method for ink jet printing an image onto a receiving element comprising providing a glossy, porous receiver and applying thereto with an ink jet printer an ink jet ink composition comprising water, composite colorant particles, and a synthetic trioctahedral smectite clay mineral additive. The References Romano 5,723,211 Mar. 3, 1998 Beall 5,804,613 Sep. 8, 1998 Erdtmann 6,030,438 Feb. 29, 2000 Sano (EP ‘992) EP 1,153,992 A1 Nov. 14, 2001 The Rejections The claims stand rejected as follows: claims 58-91 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the Appellant regards as the invention; claims 58-66 and 69-91 under 35 U.S.C. § 103 over EP ‘992 in view of Erdtmann and Romano; and claims 67 and 68 under 35 U.S.C. § 103 over EP ‘992 in view of Erdtmann, Romano and Beall. OPINION We reverse the rejection under 35 U.S.C. § 112, second paragraph, and affirm the rejections under 35 U.S.C. § 103. Appeal 2009-012420 Application 10/313,570 3 Rejection under 35 U.S.C. § 112, second paragraph Issue Has the Appellant indicated reversible error in the Examiner’s determination that “glossy, porous receiver” is indefinite?1 Analysis The Examiner argues that it is not clear whether a “glossy, porous receiver” in claim 58 is a porous receiver having a gloss coating or a receiver comprising a porous gloss coating (Ans. 3). The Examiner states that the Appellant's Specification (Spec. 23:13-24) appears to indicate that the latter is correct (Ans. 3). The Examiner indicates that claim 58 would be definite if amended to recite “porous glossy receiver” instead of “glossy, porous receiver.” See id. The Appellant argues that “the intent of the claim is a receiver having a coating that is both porous and glossy. That is believed to be what claim 58 states, as supported by the present specification” (Br. 2). The relevant inquiry under 35 U.S.C. § 112, second paragraph, is whether the claim language, as it would have been interpreted by one of ordinary skill in the art in light of the Appellant's Specification, sets out and circumscribes a particular area with a reasonable degree of precision and particularity. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). The Appellant's Specification indicates that the receiver comprises a support which can be porous or nonporous, and an ink receiving layer that is porous and glossy (Spec. 23:13-24; 24:25; 25:1-4; 29:15-16). Hence, “glossy, porous receiver”, when interpreted by one of ordinary skill in the art 1 In the Appellant's “Appendix I – Claims on Appeal”, claim 58, the comma is missing from “glossy, porous receiver.” Appeal 2009-012420 Application 10/313,570 4 in light of the Appellant's Specification, would have set out and circumscribed a particular area with a reasonable degree of precision and particularity. Conclusion of Law The Appellant has indicated reversible error in the Examiner’s determination that “glossy, porous receiver” is indefinite. Rejections under 35 U.S.C. § 103 Issue Has the Appellant indicated reversible error in the Examiner’s determination that an inkjet ink comprising EP ‘992’s resin-coated pigment colorant and Erdtmann’s smectite swelling clay would have been obvious to one of ordinary skill in the art? Findings of Fact EP ‘992 discloses an ink which preferably is for inkjet recording and comprises a resin-coated pigment colorant (which corresponds to the Appellant's composite colorant particles), a penetrating agent, an aqueous organic solvent, and other components which can include inorganic materials such as titanium and aluminum (¶¶ 0010, 0013, 0044). The ink “possesses excellent printing stability, ejection stability, and storage stability and, at the same time, can realize good images, especially images possessing excellent color reproduction” (¶ 0010). Erdtmann discloses “an ink jet ink composition comprising from about 30 to about 90% by weight of water, from about 0.5 to about 30% by weight of a pigment, from about 0.1 to about 10% by weight of a swelling clay, and from about 10 to about 50% by weight of a humectant comprising a polyhydric alcohol or a nitrogen-containing cyclic compound” (col. 2, Appeal 2009-012420 Application 10/313,570 5 ll. 21-27). The swelling clay can be smectite and the pigment can be any known organic pigment (col. 2, ll. 36-40; col. 3, ll. 1-2). The swelling clay is highly effective in improving the drying time of pigmented inkjet inks onto a receiver, has excellent colloidal stability and can be used with a wide variety of inks (col. 2, ll. 28-32). Erdtmann indicates that the ink receptive substrates with which the ink is useful include that of Romano (Erdtmann, col. 4, ll. 29-32). Romano’s inkjet image recording element comprises a substrate, a solvent absorbing gelatin layer and a single image forming layer of porous, pseudo-boehmite having an average pore radius of 10 to 80 Å (col. 2, ll. 40- 47). The images exhibit rapid ink dry times, high optical densities and a wide color gamut, good waterfastness and excellent offset and smudge resistance (col. 2, ll. 48-51).2 Analysis The Appellant argues that 1) it would not have been obvious to one of ordinary skill in the art to add clay to EP ‘992’s ink because the clay could increase viscosity, affect jettability and have a negative interaction with other ink components, especially polymeric compounds, and 2) one of ordinary skill in the art would not have used Erdtmann’s clay in EP ‘992’s ink because EP ‘992’s ink, due to the polymer contained therein, has no drying time problem (Br. 4-5). Those arguments are not persuasive because they are mere attorney argument, and arguments of counsel cannot take the place of evidence. See 2 The Appellant does not separately argue claims 67 and 68 but, rather, argues that Beale does not remedy the alleged deficiency in EP ‘992, Erdtmann and Romano (Br. 6). Hence, we do not further discuss Beale. Appeal 2009-012420 Application 10/313,570 6 In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). The Appellant argues that there is no evidence that Erdtmann considered the clay to provide any benefit for porous receivers (Br. 5). That evidence is Erdtmann’s indication (col. 4, ll. 29-33) that useful substrates include that of Romano which is porous (col. 2, ll. 46-47). In the Declaration under 37 C.F.R. § 1.132 of David Erdtmann (filed Dec. 11, 2006), Erdtmann argues that one of ordinary skill in the art would not have included a polymer in Erdtmann’s ink because the polymer “might” have slowed drying time and “may” have adversely affected adsorption by the receiver (Decl. 1-2). The “might” and “may” in Erdtmann’s argument indicate that Erdtmann is providing mere speculation. The Appellant has not provided evidence that one of ordinary skill in the art would not have considered improving the drying time of EP ‘992’s ink to be desirable. The Appellant argues that Tables 3 to 5 of the Specification show that comparison inks containing only a polymer had good drying time but poor coalescence, and that the added clay in the Appellant's inks improved coalescence but not drying time (Br. 5). The Appellant’s evidence is not convincing for the following reasons. First, it is not enough for the Appellant to show that the results for the Appellant's invention and the comparative examples differ. The difference must be shown to be an unexpected difference. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appeal 2009-012420 Application 10/313,570 7 The Appellant's Specification does not state that the comparative results would have been unexpected by one of ordinary skill in the art. Second, the evidence is not commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). The Appellant's claims encompass composite colorant particles and glossy porous receivers generally, yet the first comparison in Table 4 shows a combination of composite colorant particles and glossy porous receiver for which the addition of clay provided no improvement. Also, the second comparison in Table 4 shows that the addition of clay improved coalesence but increased dry time. Moreover, the Appellant's claim 1 encompasses the use of any amount of trioctahedral smectite clay, including amounts as small as a trace amount, and the Appellant's narrowest claim with respect to the amount of smectite clay (claim 73) includes an amount of smectite clay as small as 0.02 wt%, yet the Appellant's evidence is limited to 0.55 wt% clay. The Appellant has not provided evidence that the clay amount of 0.55 wt% is representative of the full range of clay amounts encompassed by the Appellant's claims.3 Furthermore, the Appellant's independent claim 58 encompasses composite colorant particles generally and the dependent claims recite numerous polymers as the polymeric component of the composite colorant particles (claims 69 and 79), yet the Appellant's comparative results are limited to two polymers (Spec. 26:25-30, 27:22-25). We do not find in the Appellant's 3 The Appellant's argument that “the comparative results in the present application shows reasonable evidence of superior results, from the point of view of a reasonable, realistic skilled artisan” (Reply Br. 4) is mere attorney argument, not evidence, and, consequently, is unpersuasive. Appeal 2009-012420 Application 10/313,570 8 evidence any reasonable basis for concluding that the great number of polymers encompassed by the Appellant's claims would behave as a class with respect to coalescence in the same manner as the particular polymers tested. See In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Susi, 440 F.2d 442, 445-46 (CCPA 1971). Conclusion of Law The Appellant has not indicated reversible error in the Examiner’s determination that an inkjet ink comprising EP ‘992’s resin-coated pigment colorant and Erdtmann’s smectite swelling clay would have been obvious to one of ordinary skill in the art. DECISION/ORDER The rejection of claims 58-91 under 35 U.S.C. § 112, second paragraph, is reversed. The rejections under 35 U.S.C. § 103 of claims 58- 66 and 69-91 over EP ‘992 in view of Erdtmann and Romano, and claims 67 and 68 over EP ‘992 in view of Erdtmann, Romano and Beall are affirmed. It is ordered that the Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cam PAUL A. LEIPOLD PATENT LEGAL STAFF EASTMAN KODAK CO. 343 STATE STREET ROCHESTER, NY 14650-2201 Copy with citationCopy as parenthetical citation