Ex Parte McManusDownload PDFPatent Trial and Appeal BoardOct 12, 201611398786 (P.T.A.B. Oct. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111398,786 0410612006 22879 7590 10/14/2016 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Richard J. McManus 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. 82220180 8721 EXAMINER REDDY, SATHAVARAM I ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 10/14/2016 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 RICHARD J. MCMANUS 1 Appeal2015-004869 Application 11/398,786 Technology Center 1700 Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and MONTE T. SQUIRE, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-3, 6---8, 11, 21, 22, 25, and 26. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellant claims a media sheet comprising an inkjet image-receiving layer that comprises about 25 to about 70% by dry weight of a first pigment 1 Hewlett-Packard Development Company, LP is identified as the real party in interest. App. Br. 3. Appeal2015-004869 Application 11/398,786 for absorption, wherein the first pigment comprises calcined clay, and that further comprises about 30 to about 60% of a second pigment for gloss, wherein the second pigment comprises kaolin clay or precipitated calcium carbonate (independent claim 1; see also remaining independent claim 8). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A media sheet, comprising: a substrate; and an inkjet image-receiving layer formed on the substrate, the inkjet image-receiving layer having a thickness from about 2 microns to about 50 microns; wherein the inkjet image-receiving layer comprises about 25 to about 70 percent by dry weight of a first pigment for absorption, wherein the first pigment comprises calcined clay and has an oil absorption of greater than about 100 grams of oil per 100 grams of calcined clay, and said calcined clay has a median particle size of less than about 1.6 microns; wherein the inkjet image-receiving layer also comprises about 30 to about 60 percent of a second pigment for gloss, wherein the second pigment comprises kaolin clay or precipitated calcium carbonate, and wherein said kaolin clay and said precipitated calcium carbonate have a median particle size of less than about 650 nanometers; wherein the gloss of the inkjet image-receiving layer is greater than about 50 when measured at a 7 5 degree viewing angle. The§ 112 Written Description Rejection The Examiner rejects claims 1-3, 6, 7, 11, 21, 22, 24, and 25 under the 1st paragraph of 35 U.S.C. § 112 as failing to comply with the written description requirement on the ground that Appellant's original disclosure does not support the claim 1 limitation "about 25 to about 70 percent by dry 2 Appeal2015-004869 Application 11/398,786 weight of a first pigment for absorption" (claim 1) (Final Action 3; see also Ans. 2).2 Appellant correctly argues that claim 11, which depends from non- rejected claim 8, does not contain the above quoted claim 1 limitation (App. Br. 18). The Examiner does not respond to this argument (see Ans. 2-3). Accordingly, we do not sustain the written description rejection of claim 11. Appellant argues that the written description rejection of the remaining claims is improper because paragraphs 7 and 9 disclose embodiments wherein the inkjet image-receiving layer comprises about 25 to about 70% by dry weight of calcined clay for absorption (App. Br. 17; Reply Br. 6). However, as correctly indicated by the Examiner (Final Action 3; Ans. 2-3), these disclosures are specific to calcined clay and therefore do not provide descriptive support for the broader claim 1 recitation of a first pigment generically. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en bane) ("[t]he written description requirement also ensures that when a patent claims a genus by its function or result, the specification recites sufficient materials to accomplish that function"). We sustain, therefore, the written description rejection of claims 1-3, 6, 7, 21, 22, 24, and 25. 2 In the Final Action, the Examiner also criticizes the claim 1 limitation "about 30 to about 60 percent of a second pigment for gloss" (claim 1) as lacking descriptive support (Final Action 3) but effectively withdraws this criticism in the Answer by conceding that the limitation is described in the Specification (i.e., Spec. i-f 8) (Ans. 3). 3 Appeal2015-004869 Application 11/398,786 The§ 103 Rejection3 The Examiner rejects all appealed claims under 35 U.S.C. § 103(a) as unpatentable over Kitamura et al. (US 6,465,086 B 1, issued Oct. 15, 2002) ("Kitamura") in view of Schliesman (US 2004/0076772 Al, published Apr. 22, 2004) (Final Action 4-7). In rejecting claims 1, 3, and 26, the Examiner finds that Kitamura discloses an upper recording layer that reads on the claimed inkjet image-receiving layer wherein the upper recording layer contains at least one pigment from a group comprising the claimed calcined clay, kaolin, calcium carbonate, and plastic pigments and having average primary particle sizes within the claimed median particle size range (id. at 4- 5, 7). Appellant points out that Kitamura discloses "the smaller particles in the upper recording layer can provide high gloss, while the larger particles in the under recording layer can provide high absorption" (App. Br. 22 (citing Kitamura col. 5, 11. 18-31)) and argues that "Kitamura does not teach a single image-rece1vmg layer that includes both a first pigment for absorption and a second pigment for gloss as required by claim 1" (id. at 23). 4 3 Appellant presents arguments specifically directed to independent claims 1 and 8 as well as dependent claims 3 and 26 but does not present separate arguments specifically directed to the other claims under rejection (App. Br. 21-25). Therefore, these other claims will stand or fall with their parent independent claims of which claim 1 is representative. 4 We emphasize that Appellant does not challenge the Examiner's conclusion that it would have been obvious to provide the upper inkjet image-receiving layer of Kitamura with the thickness values disclosed by Schliesman and required by the independent claims (App. Br. 21-25; cf Final Action 5). 4 Appeal2015-004869 Application 11/398,786 Appellant's argument is not persuasive. As indicated above and not disputed by Appellant, the Examiner finds that Kitamura discloses providing the upper layer with at least one pigment from a group that includes the claimed pigments and discloses a particle size range that includes the claimed size range (Final Action 4-5, 7; Ans. 3--4 (citing Kitamura col. 8, 11. 19-34)). These disclosures would have suggested the pigments and size ranges recited in argued claims 1, 3, and 26. Further, the Examiner accurately explains that Appellant fails to present any evidence that such pigments in Kitamura's upper layer would not be capable of providing the absorption and gloss functions of the identical pigments recited in claim 1 (Ans. 4). On the other hand, such capability is evinced by the fact that the pigment types and sizes recited in the argued claims and disclosed by Kitamura are identical. For these reasons, Appellant fails to show error in the Examiner's determination that Kitamura teaches or would have suggested an upper inkjet image-receiving layer having the pigments required by independent claim l as well as dependent claims 3 and 26. Regarding the additional plastic pigment limitations of dependent claims 3 and 26 specifically, Appellant states that, because Kitamura's pigment list "includes twenty-four different pigments ... , a person of skill in the art would have to choose from over two thousand different combinations of three pigments on the list to arrive at the combination of pigments recited in claim 3 [and claim 26]" (App. Br. 24; see also id. at 25). Appellant then argues without embellishment that "[i]t would not have been obvious for a person of skill in the art to create the composition recited in claim 3 [and claim 26] based on the disclosure of Kitamura, without any teaching to use this combination of pigments" (id. at 24; see also id. at 25). 5 Appeal2015-004869 Application 11/398,786 That an artisan would have to choose three specific pigments from a list of over two thousand different combinations, by itself, is inadequate to establish nonobviousness. See Merck & Co. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious."). Furthermore, Appellant offers no explanatory support for the unembellished contention that it would not have been obvious to select from Kitamura's pigment list the three pigments required by claims 3 and 26. For these reasons, Appellant's argument regarding these claims lacks persuasive merit. For the reasons stated above and given by the Examiner, we sustain the § 103 rejection of all appealed claims over Kitamura in view of Schliesman. Conclusion The decision of the Examiner is affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation