Ex Parte McCovick

Board of Patent Appeals and Interferences

Jun 16, 2010

10313570 (B.P.A.I. Jun. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TAMMY A. MCCOVICK
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Appeal 2009-012420
Application 10/313,570
Technology Center 1700
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Decided: June 16, 2010
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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
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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.

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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.”
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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,
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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.
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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).
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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.

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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