Ex Parte Missell

Board of Patent Appeals and Interferences

Oct 28, 2009

10882141 (B.P.A.I. Oct. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREGORY E. MISSELL
____________

Appeal 2009-005456
Application 10/882,141
Technology Center 1700
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Decided: October 29, 2009
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

Appeal 2009-005456
Application 10/882,141

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 5-8, 10, 13 and
15-32. Claim 1 is illustrative:
1. An inkjet recording element comprising a support having
thereon a porous layer, 20 to 70 µm thick, made by coating and drying an
aqueous composition, the porous layer comprising between 75% and 95% by
weight of particles in polymeric binder, which particles form pores of the
porous layer by the spacing between the particles, wherein at least 25 weight
percent of the total particles in the porous layer are particles consisting
essentially of calcium metasilicate in the form of needles having a length of
from 1 µm to 30 µm and an aspect ratio of 8:1 to 20:1, wherein the
polymeric binder is present in an amount between 5 and 25 weight percent
based on the total weight of the layer, wherein the porous layer further
comprises organic and/or inorganic particles, wherein the weight ratio of the
calcium metasilicate to the organic and/or inorganic particles is 30:70 to
70:30.

In addition to the admitted prior art, the Examiner relies upon the
following references as evidence of obviousness:
Watanabe WO 2004/045861 A1 Jun. 3, 2004
Sebastian 7,182,455 B2 Feb. 27, 2007
Sen 2004/0109957 A1 Jun. 10, 2004
Sen 2004/0180151 A1 Sep. 16, 2004

Appellant’s claimed invention is directed to an ink jet recording
element comprising a porous layer on a support and an inkjet printing
process using the recording element. The porous layer comprises particles
of calcium metasilicate in a polymeric binder. The particles are in the form
of needles having a length and aspect ratio within the recited ranges. The
porous layer also comprises organic and/or inorganic particles.
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
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(a) claims 1, 5-8, 10, 13, 15-25, 29, 31 and 32 over Watanabe in view
of Sebastian and the admitted prior art,
(b) claims 10 and 26-30 over Watanabe in view of Sebastian, the
admitted prior art and either Sen’957 or Sen’151,
(c) claims 28 and 29 over Watanabe in view of Sebastian, the
admitted prior art and either Sen’957 or Sen’151.
Appellant has not replied to the new ground of rejection of claims 28
and 29 under 35 U.S.C. § 103(a) over Watanabe in view of Sebastian, the
admitted prior art and Sen’957 or Sen’151 (see Ans. 3, para. 2).
Consequently, the appeal of the § 103 rejection of claims 28 and 29 is
dismissed.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner’s
reasoned analysis and application of the prior art, as well as her cogent and
thorough disposition of the arguments raised by Appellant. Accordingly, we
will adopt the Examiner’s reasoning as our own in sustaining the rejections
of record, and we add the following for emphasis only.
There is no dispute that Watanabe, like Appellant, discloses an inkjet
recording element comprising a porous layer made up of calcium silicate
particles in a polymeric binder wherein the calcium silicate particles have a
length and aspect ratio within the claimed ranges. The principal argument
advanced by Appellant is that Watanabe does not disclose the presently
claimed particles of calcium metasilicate. However, as set forth by the
Examiner, Sebastian evidences that it was known in the art to add silicates
and metasilicates in an ink receptive medium, and Watanabe expressly
teaches that “[t]here is no special limitation on the aforementioned fibrous
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Application 10/882,141

crystal particles as long as they have the aforementioned shape and size”
(Trans. 8, ll. 6-7). Accordingly, based on the collective teachings of
Watanabe and Sebastian, we concur with the Examiner that it would have
been obvious for one of ordinary skill in the art to use calcium metasilicate
particles of the appropriate size and shape in the ink jet recording element of
Watanabe. The calcium silicate disclosed by Watanabe is simply exemplary
and we are persuaded that one of ordinary skill in the art would have found it
obvious to use other, known fibrous crystal particles of suitable size and
shape, e.g., the alkaline earth metasilicates disclosed by Sebastian.
Appellant submits that calcium metasilicates and calcium silicate are
different materials having different properties. However, Appellant fails to
articulate a specific property of the calcium silicate exemplified by
Watanabe that would have dissuaded one of ordinary skill in the art from
using calcium metasilicate in the recording element of Watanabe.
Appellant also points out that Watanabe requires “that the fibrous
particles are coated on their surface with a cationic hydrated metal” (App.
Br. 4, para. 2). However, the Examiner’s finding that the appealed claims do
not preclude the fibrous particles from having such a hydrated coating has
not been refuted by Appellant. As for Appellant’s argument that claims 10
and 30 require that the calcium metasilicate particles are in a sump layer,
Appellant’s specification acknowledges that such sump layers are known in
the art and Appellant has not refuted the Examiner’s reasoning that the
porous layer of Watanabe absorbs a substantial amount of liquid carrier and,
thereby, qualifies as a sump layer.
Appellant cites experimental results in TABLE 1 of the present
Specification as demonstrating that the present invention exhibits superior
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cracking compared to control elements which, according to Appellant, is an
unexpected result. However, Appellant’s Brief is totally devoid of the
requisite analysis of the specification data. Manifestly, it is not within the
province of this Board to independently assess the probative value of
Specification data and interpret in a light most favorable to Appellant. It is
axiomatic that the burden of establishing unexpected results rests on the
party asserting them and, in the present case, Appellant has fallen far short
of carrying this burden. Furthermore, Appellant has not rebutted the
Examiner’s criticism of the data set forth at Ans. 9, second paragraph. In
addition we find it noteworthy that specification examples 3-9, which are
representative of the present invention, use calcium silicate, not calcium
metasilicate, the very same calcium silicate used in COMPARATIVE
EXAMPLE 2.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims 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)(1)(iv).
AFFIRMED

tc

PAUL A. LEIPOLD
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201
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