Ex Parte Nissing

Board of Patent Appeals and Interferences

Sep 29, 2006

10657320 (B.P.A.I. Sep. 29, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NICHOLAS JAMES NISSING
____________

Appeal 2006-1310
Application 10/657,320
Technology Center 1700
____________

Decided: September 29, 2006
____________

Before GARRIS, PAK, and TIMM, Administrative Patent Judges.
PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner's final rejection of claims 1
through 15, which are all of the claims pending in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 134.

I. APPEALED SUBJECT MATTER
The subject matter on appeal is directed to “a printed substrate which
exhibits local variations in color density of given color within one or more
printed areas of the substrate.” (See Specification 1.) These local variations
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Application 10/657,320

in color density are used to enhance aesthetics of paper products. (See
Specification 1 and 3.) Details of the appealed subject matter are recited in
claims 1, 4, 5, 7, 8, 9, and 131, which are reproduced below:
1. A printed substrate having microscope color density variation, said
printed substrate comprising: a substrate having a first outer
surface and a second outer surface opposed thereto, whereby at
least one of said first or said second outer surface includes indicia,
said indicia comprised of print elements and wherein said substrate
includes a substrate color density, a background color density, and
a print element color density wherein said background color
density is greater than said substrate color density and less than
said print element color density.

4. The printed substrate of Claim 1 wherein said substrate is textured.

5. A printed disposable paper product, said printed disposable paper
product comprising: a substrate having a first outer surface and a
second outer surface opposed thereto, whereby at least one of said
first or said second outer surface includes ink applied thereto, said
ink comprised of at least two solid print regions and wherein the
color density ratio between the at least two solid print regions is at
least about 1.15.

7. The printed disposable paper product of Claim 5 wherein said
substrate is textured.

8. A printed disposable paper product, said printed disposable paper
product comprising:

a substrate having a first outer surface and a second outer surface
opposed thereto, whereby at least one of said first or said second
outer surface includes ink applied thereto, said ink comprised of at

1 The Appellant's arguments are limited to claims 1, 4, 5, 7, 8, 9, and 13.
(See Br. 5-13.) Therefore, for purposes of this appeal, we limit our
discussion to these claims consistent with 37 C.F.R. § 41.37(c)(1)(vii)
(2004).
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least two print regions said two print regions exhibiting the same
color and the same color density and wherein the two print regions
have a rub-off ratio greater than 1.1.

9. The printed disposable paper product of Claim 8 wherein said
substrate is textured.

13. The printed disposable paper product of Claim 8 wherein said ink
comprises a pigment.

According to pages 5 and 6 of the Specification:
As used herein “printed element color density” refers to
the color density of each individual print element within the
image area of the printed substrate.
…
As used herein, “substrate color density”, [sic.] refers to
the color density of the unprinted areas of substrate. A non-
limiting example which illustrates this definition would be a
paper product printed by the flexographic printing process. For
a paper product printed by the flexographic printing process,
substrate color density would refer to the areas of the printed
paper product which do not comprise an image area (i.e.; the
unprinted areas of the paper product.

As used herein “background color density” refers to the
color density surrounding each individual print element within
the image area of the printed substrate. For example, when
printing images comprised of dots that are printed in
accordance with the prior art, in a given image area,
background color density is that of substrate color density. In
contrast, when printing according to the present invention,
background color density may be greater than that of substrate
color density and less than that of print element color density.
….
As used herein, “microscopic color density variation”
refers to the gradual variation in color density between a print
element and the background surround the print element. This
variation can be local in nature. [Emphasis added.]
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The Specification states (page 14) that:
The color density of an image may be measured with a
densitometer. Color density, a dimensionless measurement,
refers to the density of the color produced by the ink. The
higher the color density of the ink, the greater the intensity or
strength of the color.

At page 4 of the Specification, “rub-off” is defined as “the transfer of color
from the surface of a printed substrate to another surface.” At page 8 of the
specification, “ink” is defined as “any composition or components thereof
applied to the substrate and which remains [sic., remain] thereon in a visible
pattern even though components of the ink may evaporate.”

II. PRIOR ART
As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Mowry, Jr. US 5,853,197 Dec. 29, 1998
Harris US 5,871,615 Feb. 16, 1999
Brugada US 5,904,375 May 18, 1999

III. REJECTION
The appealed claims stand rejected as follows:
1) Claims 1 through 3, 5, 6, 8, 10, 12, 14, and 15 stand rejected
under 35 U.S.C. § 102(b) as anticipated by the disclosure of Mowry, Jr.;
2) Claims 4, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Mowry, Jr. and Harris; and
3) Claims 1 through 3, 5, and 10 through 14 stand rejected under
35 U.S.C. § 102(b) as anticipated by the disclosure of Brugada.
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IV. FACTUAL FINDINGS AND CONCULSIONS
Upon careful consideration of the claims, specification and prior art
references, including the arguments advanced by both the Appellant and the
Examiner in support of their respective positions, we determine that the
Examiner’s §§102 (b) and 103(a) rejections are well-founded. Accordingly,
we affirm the Examiner’s decision rejecting claims 1 through 15 on appeal
under §§102(b) and 103(a) for the reasons set forth in the Answer and
below.
As evidence of anticipation of the subject matter defined by claims 1
through 3, 5, 6, 8, 10, 12, 14, and 15 under 35 U.S.C. § 102(b), the Examiner
relies on the disclosure of Mowry, Jr. (See Answer 3.) There is no dispute
that Mowry, Jr. teaches a printed substrate comprising a substrate having
two opposing outer surfaces with at least one of the surfaces including
indicia comprised of printed elements. The Appellant only argues that
Mowry, Jr. does not teach that its substrate has printed matter having
different color densities as recited in claims 1 and 5 and different rub-off
properties as recited in claim 8. (Br. 3-6.) We do not agree.
Initially, we observe that the paper substrate described by Mowry, Jr.
necessarily provides the claimed substrate color density which according to
the Appellant includes “the color density of the unprinted areas of substrate”
as indicated supra. We observe that Mowry, Jr. also teach a background
printed matter having a color density corresponding to the claimed
background color density and a security term having a color density
corresponding to the claimed print element color density. See Figure 1,
together with columns 4-6. Specifically, we find that Mowry, Jr. teaches
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that the background printed matter shown to have a color density greater
than the substrate color density is taught to have a different color density
than the security term such that the security term can be made more
noticeable. (See col. 6, ll. 19-40.) We find that Mowry, Jr. goes on to
exemplify at column 6, lines 34-37, a density of 15% for the security term
and 10% for the background printed matter, which are encompassed by the
“microscopic color density variation” recited in claim 1 and the microscopic
color density variation defined in terms of “color density ratio” recited in
claim 5. We find that the security term described in Mowry, Jr. has a rub-off
property necessarily significantly higher than that of the background printed
matter as required by claim 8 since it cannot be rubbed-off from the security
document if it is to be used for the security purposes. Moreover, as further
explained by the Examiner (Answer 4-5), Figure 1 of Mowry, Jr. itself
illustrates a security document having different color intensities for the
security term and background element on a paper substrate as required by
claims 1, 5, and 8.
Even were we to accept the Appellant’s arguments that the claimed
printed paper does not include either the security document described or
illustrated in Mowry, Jr., our conclusion would not be altered. We find that
the claimed printed matter defined in terms of color densities or rub-off
properties is not functionally related to the substrate involved. Indeed, the
Appellant acknowledges that the claimed printed matter is used to impart
only aesthetically pleasing characteristics (not functional characteristics).
(See Specification 1 and 3). At page 3 of the Specification, the Appellant
emphasizes that “[i]n order to enhance the aesthetics of absorbent disposable
paper products, it is desirable to use pigment-based inks which produce
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vibrant high color densities when applied to the absorbent disposable paper
product.” As such, we determine that the claimed printed matter defined in
terms of color densities or rub-off properties is not entitled to any patentable
weight. The court in In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862,
1864 (Fed. Cir. 2004) stated that:
As the Gulack court pointed out, “[w]here the
printed matter is not functionally related to the
substrate, the printed matter will not distinguish
the invention from the prior art in terms of
patentability.”

In view of the foregoing, we concur with the Examiner that Mowry,
Jr. would have rendered the subject matter defined by claims 1 through 3, 5,
6, 8, 10, 12, 14, and 15 anticipated within the meaning of 35 U.S.C. §102(a).
As evidence of obviousness of the subject matter of claims 4, 7, and 9
under 35 U.S.C. 103(a), the Examiner further relies on the combined
disclosures of Mowry, Jr. and Harris. The disclosure of Mowry, Jr. is
discussed above. According to the Examiner (Answer 8-9), Mowry, Jr. does
not teach the claimed texture substrate.
To remedy this deficiency, the Examiner relies on the disclosure of
Harris. The Appellant does not dispute that Harris teaches employing a
textured substrate to make a security document. (Br. 8-11). Nor does the
Appellant contest the Examiner’s determination that it would have been
obvious to employ the texture substrate of the type described in Harris to
make the security document of the type taught in Mowry, Jr. Id. The
Appellant only repeats the arguments directed to the limitations of claims 1,
5, and 8 discussed above. Id. Thus, for the reasons set forth above and in
the Answer, we concur with the Examiner that the combined teachings of
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Mowry, Jr. and Harris would have rendered the subject matter defined by
claims 4, 7, and 9 obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103.
As evidence of anticipation of the subject matter defined by claims
1 through 3, 5, and 10 through 14 under 35 U.S.C. § 102(b), the Examiner
relies on the disclosure of Brugada. There is no dispute that Brugada
teaches a printed substrate. The Appellant only argues that Brugada does
not teach that a printed substrate comprising printed matter having different
color densities as required by claims 1 and 5 and rub-off properties as
required by claims 13 and 14. (Br. 6-8.)
Even were we to accept the Appellant’s arguments that the claimed
printed paper does not include the security document described in Brugada,
we do not agree that Brugada does not anticipate the claimed subject matter
within the meaning of 35 U.S.C. §102(b). As indicated supra, we find that
the claimed printed matter defined in terms of color densities or rub-off
properties is not functionally related to the substrate involved. Indeed, at
page 3 of the Specification, the Appellant states that “[i]n order to enhance
the aesthetics of absorbent disposable paper products, it is desirable to use
pigment-based inks which produce vibrant high color densities when applied
to the absorbent disposable paper product.” As such, we determine that the
claimed printed matter defined in terms of color densities or rub-off
properties is not entitled to any patentable weight. The court in In re Ngai,
367 F.3d 1336, 1338, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) stated that:

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As the Gulack court pointed out, “[w]here
the printed matter is not functionally related
to the substrate, the printed matter will not
distinguish the invention from the prior art in
terms of patentability.”

In view of the foregoing, we concur with the Examiner that Brugada
would have rendered the subject matter defined by claims 1 through 3, 5,
and 10 through 14 anticipated within the meaning of 35 U.S.C. §102(a).

V. CONCLUSION
The decision of the Examiner is affirmed.

VI. TIME PERIOD
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) (2005).

AFFIRMED

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Intellectual Property Division
Winton Hill Technical Center
Box 161
6110 Center Hill Avenue
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