Ex Parte Romano

Board of Patent Appeals and Interferences

Sep 21, 2006

10068824 (B.P.A.I. Sep. 21, 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for publication and is not binding precedent of the Board.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 CHARLES E. ROMANO, JR.
__________

Appeal 2006-2197
Application 10/068,824
Technology Center 1700
___________

Decided: September 21, 2006
___________

Before KIMLIN, PAK, and JEFFREY T. SMITH, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals the Examiner’s final rejection of claims 1, 3-22, and 38.
Claims 23-36 stand withdrawn from consideration (Br. 1). We have jurisdiction
under 35 U.S.C. § 134.
We AFFIRM
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CITATION OF REFERENCES
In rejecting the claimed subject matter the Examiner relies on the following
references:
Kawano US 5,478,631 Dec. 26, 1995
Ueda EP 0 791 475 Aug. 27, 1997
Tomizawa US 6,224,971 May 1, 2001
Niu US 6,599,593 Jul. 29, 2003
The Examiner has entered the following grounds of rejection:1
Claim 38 stands rejected under 35 U.S.C. § 112, ¶ 1 as failing to comply
with the written description requirement.
Claims 1, 3, 9, 11, 12, 15, 21, and 22 stand finally rejected under 35 U.S.C.
§ 102(b) as being anticipated by Kawano.
Claims 1, 3, 7-15, and 19-22 stand finally rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kawano.
Claims 1, 2, and 4-6 stand finally rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kawano and further in view of Tomizawa.
Claims 1 and 15-18 stand finally rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kawano and further in view of Ueda.
Claims 1, 7, 8, 21, and 22 stand finally rejected under 35 U.S.C. § 102(e) as
being anticipated by Niu.
Claims 1, 9-14, 19-22, and 38 stand finally rejected under 35 U.S.C. §
103(a) as being unpatentable over Niu.

1 The Examiner in the statement of the rejections appearing in the Answer has
inadvertently included claims 2 and 37 which have been indicated by Appellant as
having been canceled (Br. 1). We have excluded these claims from the statement
of the rejections.
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Claim 38 stand finally rejected under 35 U.S.C. § 103(a) as being
unpatentable over Niu.
Claims 1 and 4-6 stand finally rejected under 35 U.S.C. § 103(a) as being
unpatentable over Niu in view of Tomizawa.
Claims 1 and 15-18 stand finally rejected under 35 U.S.C. § 103(a) as being
unpatentable over Niu in view of Ueda.
Upon careful consideration of the views expressed by the Appellant, in the
Brief field October 13, 2005, and the Examiner, in the Answer of December 20,
2005, we are in agreement with the position presented by the Examiner. Our
reasons follow.
BACKGROUND
The present invention relates to an ink recording element comprising a
support having thereon a hydrophilic absorbing layer and a laminate adhesion
promoting absorbing hydrophilic overcoat. According to Appellant, the present
invention produces an image which has excellent image quality, and the ability to
absorb large amounts of ink and dry quickly to avoid blocking and exhibit high
optical densities in the printed areas (Specification 3). Representative claims 1 and
38, as presented in the Brief, appear below:
1. An ink recording element comprising a support having thereon a
hydrophilic absorbing layer and a laminate adhesion promoting absorbing
hydrophilic overcoat polymer layer comprising acetoacetylated poly(vinyl
alcohol).

38. An ink recording element comprising a support having thereon a
hydrophilic absorbing layer and a laminate adhesion promoting absorbing
hydrophilic overcoat polymer layer comprising acetoacetylated poly(vinyl alcohol)
and an anionic vinyl latex polymer or an anionic polyurethane dispersion.
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THE REJECTION UNDER § 112, ¶ 1
Claim 38 stands rejected under § 112, ¶ 1 as failing to comply with the
written description requirement. Specifically, the Examiner asserts that the
specification as originally filed does not provide written descriptive support for a
laminate adhesion promoting absorbing hydrophilic overcoat polymer layer
comprising an “anionic vinyl latex polymer.” (Answer 4). Appellant argues that
the Examples in the specification, particularly Example 4, provide written
description of an anionic latex (Br. 3). In support of this position, Appellant
provides the product information sheet for Mocryl® 132 to indicate that one of
ordinary skill in the art would understand that Mocryl® 132 is anionic (Br. 4).
Appellant further argues that the anionic nature of Mocryl® is an inherent
characteristic of the chemical compound bearing the Mocryl trade name (Br. 4).
Upon careful review of the product information sheet for Mocryl® 132, we agree
with the Examiner that it is not readily apparent from this document that the latex
is anionic (Answer 12). We also note that the Examiner has requested that
Appellant provide further explanation or information regarding the chemical
structure. However, Appellant has failed to provide such information in responsive
briefing. Moreover, Mocryl® does not reasonably convey to one of ordinary skill
in the art that any and all anionic vinyl latex is useful for the claimed ink
composition.
Appellant, Brief page 4, also relies on the specification disclosures of
anionic polyurethane dispersions. The cited portions of the specification are not
persuasive because these disclosures do not refer to an anionic vinyl latex polymer
as required by the claim. Appellant has not directed to evidence that establishes
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that a preference for an anionic polyurethane dispersion also requires that the other
polymers must also be anionic. An ipsis verbis disclosure is not necessary to
satisfy the written description requirement of § 112. Instead, the disclosure need
only reasonably convey to persons skilled in the art that the inventor had
possession of the subject matter in question. See In re Edwards 568 F.2d 1349,
1351-52, 196 USPQ 465, 467 (CCPA 1978). The Examiner, however, has met the
initial burden of proof by establishing that Appellant is claiming embodiments of
the invention that are completely outside the scope of the specification. See In re
Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996). Appellant’s
arguments and evidence have not overcome this prima facie case. The Examiner’s
rejection is affirmed.
THE REJECITONS OVER KAWANO
Claims 1, 3, 9, 11, 12, 15, 21, and 22 stand rejected under 35 U.S.C. §
102(b) as anticipated by Kawano.2 The Examiner has found that Kawano discloses
an ink jet recording element that meets the presently claimed invention (Answer 5-
6). Appellant argues that the subject matter of the appealed claims is not
anticipated by Kawano because evidence indicates that the phrase “laminate
adhesion” has a specific meaning which is different from the meaning of the term
“adhesion.” (Br. 8). More specifically, Appellant states on Brief pages 9-10 the
following:
The term “laminate adhesion” and the term “adhesion” have accepted
and different meanings in the art. “Laminate adhesion” refers to the

2 Appellants have not provided separate arguments for the rejected claims. We
select claim 1 as representative of the rejected claims and will limit our discussion
thereto.
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adhesion of a coating as part of a laminate. There are multiple aspects to
laminate adhesion, as is illustrated by ASTM Test Method F2226-03,
Section 4.6 and FIG. 2 on pg. 2, provided in Appendix II. The term
“laminate adhesion” includes the adhesion of each layer within the multi-
layer laminate to an adjacent layer, the adhesion of the multiple layers to the
support, and adhesion of all the laminate layers together. Laminate adhesion
failure can occur between any two layers of the multi-layer structure, not just
at the interface of a layer with the substrate or at the interface of a layer with
a layer containing acetoacetylated poly(vinyl alcohol). The cited prior art
contains a different term, that is, simple “adhesion”, which refers to the
adhesion between a layer and the adjacent substrate. Simple adhesion is
understood by those of ordinary skill in the art to refer to the relationship
between the substrate and layer applied directly to the substrate. See ASTM
Test Method D3359-02, especially the Appendix at X1.3.2., provided in
Appendix II. The inventive element presently claimed has an adhesion
promoting overcoat layer over inner layer(s). The use of this layer improves
the adhesion of all the layers, both to adjacent layers and to the substrate. In
“laminate adhesion” as presented used, the substrate is not in contact with
the adhesion promoting overcoat layer. In the prior art, enhanced
“adhesion” involves an adjacent layer. Therefore, the definitions of the
terms “adhesion” and “laminate adhesion” are not synonymous and the
reference cannot anticipate the present claims.

Appellant’s arguments and evidence are not persuasive. The ASTM Test
Method F 2226-03 disclosure does not provide a specific definition for the phrase
“laminate adhesion.”3 The reference to section 4.6 of ASTM Standard F 2226-03
also does not provide a special definition for “laminate adhesion.” Appellant in his
discussion of laminate adhesion on Brief page 9 recognizes that failure can occur
between any two layers of a multilayer structure. Appellant also recognizes that

3 It is noted that ASTM Test Method F 2226-03 provides a terminology section on
page 1. The discussion of the various terminology in the portion of the reference
does not provide a special meaning to the phrase “laminate adhesion.”
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the term adhesion includes failure occurring between a layer and an adjacent layer.
As such, the description provided by the Appellant for the disputed language does
not provide a patentable distinction. Appellant has not directed us to evidence that
establishes that laminate adhesion excludes the substrate from being in contact
with the adhesion promoting overcoat layer. Thus, Appellant’s definition for
laminate adhesion does not distinguish the claimed ink recording element form the
cited prior art.
Appellant’s reference to ASTM test method D 3359-02 does not provide a
distinct definition for the phrase “laminate adhesion.” Moreover, the test method
D 3359-02 “cover procedures for assessing the adhesion of coating films to
metallic substrates by applying and removing pressure-sensitive tape over cuts
made in the film.” (P. 1: 1.1). Appellant has not established that metallic
substrates are at issue in the present invention. Thus, the relevance of this
document to the present invention is unclear. Appellant’s reference to Appendix
XI.3.2 is also been noted. This section discusses the specific test method of D
3359-02 and particularly the adhesion failure and mat substrate articles, however,
there is no specific definition given for “laminate adhesion.” For the reasons set
forth above as well as those presented in the Answer, we agree with the Examiner
that Appellant has not established a special meaning for the phrase “laminate
adhesion” which provides a patentable distinction between the ink recording
element described in Kawano and the claimed invention.
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Claims 1, 3, 7-15 and 19-22 stand rejected under 35 U.S.C. § 103(a) over
Kawano. We affirm for the reasons presented in the Answer and add the
following.4
Appellant argues Kawano fails to disclose or suggest a laminate adhesion
promoting overcoat layer containing acetoacetylated polyvinyl alcohol which
provides better laminate adhesion. Appellant also argues that Kawano fails to
mention the property laminate adhesion. Finally, Appellant argues that even
assuming a prima facie case has been made, the present invention provides
surprising results (Br. 15-16).
Appellant’s arguments regarding the phrase “laminate adhesion” are not
persuasive for the reasons set forth in our previous discussion of the Kawano
reference. We note Appellant has failed to argue that Kawano does not provide a
hydrophilic absorbing layer that comprises acetoacetylated polyvinyl alcohol.
Rather, Appellant argues that the polyvinyl alcohol of Kawano must be used in
conjunction with an amphoteric latex (Br. 16). Appellant’s arguments are not
persuasive because the present claim language includes the transitional term
“comprising.” This language allows for the addition of other components to be
used in conjunction with the acetoacetylated polyvinyl alcohol. Appellant’s
discussion of the examples of Kawano which allegedly provide inferior results in
strength and water resistance are not persuasive. Appellant has not limited the
present invention to any particular strength and/or water resistant characteristics.
As such, the results achieved by Kawano do not serve to provide a patentable
distinction between Kawano and the present invention. Further, we also share the

4 We select claim 1 as representative of the rejected claims.
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Examiner’s concern with the examples in the present record and the showings
presented in the Declaration of Romano included in Appendix II of Appellant’s
Brief (See the Examiner’s discussion of the examples and the Declaration, Final
Rej. 6-8). Appellant has not established that the invention specified by the
appealed claims are commensurate with the showing of unexpected results. That
is, Appellant has not established that the adhesive properties of the Kawano
invention are patentably distinct from the adhesive properties of the presently
claimed invention. While Appellant has provided a lengthy discussion of an
alleged difference between “laminate adhesion” and “adhesion,” such discussion
does not provide a basis for patentable distinction between the invention of
Kawano and the presently appealed claims.
Appellant’s discussion of the examples in the specification and the results
provided in Table II of the specification are not persuasive. The Specification does
not provide information sufficient to determine the difference between a peel force
described as excellent versus a peel force described as poor. Moreover, this
terminology does not provide an indication as to where the laminate failure
occurred. That is, there is no indication as to whether the laminate failure occurred
between the overcoat layer and the adjacent underling substrate or some other
intervening layer. As such, these examples are insufficient to establish a
distinction even if we were to use Appellant’s definition of “laminate adhesion.”
For the foregoing reasons and those set forth in the Answer, the rejection of claims
1, 3, 7-15, and 19-22 under § 103(a) as obvious over Kawano is affirmed.
Claims 1 and 4 to 6 have been rejected under 35 U.S.C. § 103(a) over the
combined teachings of Kawano and Tomizawa. The Examiner relies on the
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Tomizawa reference for describing the particular properties of acetoacetylated
polyvinyl alcohols. More specifically, the Examiner recognizes that Tomizawa
and the present invention use the same class of commercially available
acetoacetylated polyvinyl alcohol (Answer 8). The Examiner concludes that the
acetoacetylated polyvinyl alcohols described in Tomizawa must possess the
properties of the rejected claims. Appellant in the Brief has not challenged the
Examiner’s position that the acetoacetylated polyvinyl alcohol disclosed in
Tomizawa possesses the properties of the rejected claims. Rather, Appellant
argues that Tomizawa, like Kawano, fails to teach disclose or suggest laminate
adhesion (Br. 21). Appellant further argues that Tomizawa does not disclose a
laminate structure (Br. 21).
Appellant’s arguments are not persuasive because Tomizawa, like Kawano,
is directed to ink recording sheets. Kawano discloses the suitability of using
acetoacetylated polyvinyl alcohol in ink jet recording sheets. A person of ordinary
skill in the art would reasonably expect that the acetoacetylated polyvinyl alcohol
disclosed in Tomizawa would have also been suitable for use in the inkjet
recording sheets disclosed in Kawano. Appellant has not established that the
acetoacetylated polyvinyl alcohol which has the properties described in claims 4
and 6 provide unexpected results in ink recording sheets. Appellant’s arguments
regarding laminate adhesion presented on page 22 of the Brief have been
considered and are not persuasive for the reasons set forth above in the discussion
of the Kawano reference.
Claims 1 and 15-18 stand rejected under 35 U.S.C. § 103(a) over the
combined teachings of Kawano and Ueda. The Examiner cites the Ueda reference
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for teaching the use of gelatin in inkjet recording media (Answer 8-9). Appellant
does not specifically address the suitability of adding gelatin to the teachings of the
Kawano reference. Rather, Appellant repeats the arguments regarding the phrase
“laminate adhesion.” These arguments are not persuasive for the reasons set forth
above in the discussion the Kawano reference. The Examiner’s motivation for
adding gelatin to the composition of Kawano is reasonable. Appellant has failed to
provide arguments which establish otherwise. The Examiner’s rejection is
affirmed.
THE REJECTIONS OVER NIU
Claims 1, 7, 8, 21 and 22 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Niu.5
The Examiner discloses that Niu discloses ink receiving media that may be
used as an inkjet recording medium. According to the Examiner, Niu discloses
that the top layer may comprise an acetoacetylated polyvinyl alcohol (Answer 9).
Appellant argues that Niu does not disclose a laminate adhesion promoting
overcoat containing acetoacetylated polyvinyl alcohol which provides better
laminate adhesion (Br. 25). Appellant’s arguments are not persuasive. Niu
discloses that acetoacetylated polyvinyl alcohol is suitable for use in the top layer
of an inkjet recording medium as disclosed by the Examiner. The Appellant has
not specifically addressed the teachings appearing in col. 9 of the cited reference.
As discussed above, claim 1 includes the transition term “comprising” in the
discussion of the top layer of the claimed ink recording element. As such, the top
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layer does not exclude the presence of other components. Appellant has not
established that the other components disclosed in the Niu reference detract from
the adhesive properties obtained therein. As such, for the reasons set forth in the
Answer and discussed above, we affirm the Examiner’s rejection.
Claims 1, 9-14, 19-22 and 38 stand rejected under 35 U.S.C. § 103(a) as
obvious over Niu.6 We affirm the rejection of these claims for the reason set forth
in the Answer and above in the discussion of the 102 rejection. Appellant repeats
his arguments regarding the phrase “laminate adhesion.” This discussion is not
persuasive of patentability for the reasons set forth above. As discussed above Niu
discloses the suitability of employing an acetoacetylated polyvinyl alcohol in an
inkjet recording medium. This disclosure by Niu renders the subject matter of
claim 1 unpatentable. Appellant’s discussion of the control Example 4 of the
present record is not persuasive for the reasons discussed above when discussing
the Kawano reference. The evidence provided in the present record is not
sufficiently specific to establish that the present invention is patentably distinct
from the invention of the cited references. Thus, we affirm the Examiner’s
rejection for the reasons previously established on the present record.
Claims 1 and 4 to 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Niu and Tomizawa. We affirm.

5 Appellant has not provided separate argument for the individual claims. Thus,
we select claim 1 as representative of the rejected claims and will limit our
discussion thereto.
6 Appellant has not presented separate arguments for the individual claims.
Therefore, we select claim 1 as representative of the rejected claims.
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The Examiner relies on the Tomizawa reference for describing the particular
properties of acetoacetylated polyvinyl alcohol. More specifically, the Examiner
recognizes that Tomizawa and the present invention use the same class of
commercially available acetoacetylated polyvinyl alcohol (Answer 8). The
Examiner concludes that the acetoacetylated polyvinyl alcohols described in
Tomizawa must possess the properties of the rejected claims. Appellant in the
Brief has not challenged the Examiner’s position that the acetoacetylated polyvinyl
alcohol disclosed in Tomizawa possesses the properties of the rejected claims.
Rather, Appellant argues that Tomizawa, like Niu, fails to teach, disclose or
suggest laminate adhesion (Br. 30). Appellant further argues that Tomizawa does
not disclose a laminate structure (Br. 30).
Appellant’s arguments are not persuasive because Tomizawa, like Niu, is
directed to ink recording sheets. Niu discloses the suitability of using
acetoacetylated polyvinyl alcohol in inkjet recording sheets. A person of ordinary
skill in the art would reasonably expect that the acetoacetylated polyvinyl alcohol
disclosed in Tomizawa would have also been suitable for use in the inkjet
recording sheets disclosed in Niu. Appellant has not established that the
acetoacetylated polyvinyl alcohol which has the properties described in claims 4
and 6 provides unexpected results in ink recording sheets. Appellant’s arguments
regarding laminate adhesion presented on page 31 of the Brief have been
considered and are not persuasive for the reasons set forth above in the discussion
of the Niu reference.

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Claims 1 and 15-18 are rejected under 35 § 102(b) over Niu and Ueda.
The Examiner cites the Ueda reference for teaching the use of gelatin in inkjet
recording media (Answer 11). Appellant does not specifically address the
suitability of adding gelatin to the teachings of the Kawano reference. Rather,
Appellant repeats the arguments regarding the phrase “laminate adhesion.” (Br.
32). These arguments are not persuasive for the reasons set forth above in the
discussion of the Niu reference. The Examiner’s motivation for adding gelatin to
the composition of Niu is reasonable. Appellant has failed to provide arguments
which establish otherwise. The Examiner’s rejection is affirmed.
Claim 38 stands rejected under 35 U.S.C. § 103(a) as obvious over Niu in
view of Appellant’s admission on pages 8, 9 of the specification. We affirm for
the reasons forth in the Answer and add the following.
Appellant repeats the arguments that Niu is silent as to disclosing a laminate
adhesion promoting overcoat containing acetoacetylated polyvinyl alcohol (Br. 6-
7). Appellant’s arguments are not persuasive for the reasons discussed above.
Appellant has not argued that the commercially available polyurethane dispersion
discussed by the Examiner would not have been suitable for use in the invention of
Niu. Further Appellant argues that Niu does not recognize improving laminated
adhesion by using the combination of acetoacetylated polyvinyl alcohol and
anionic polyurethane dispersion. These arguments are not persuasive. Appellant
has not directed us to evidence that the claimed polyvinyl alcohol and polyurethane
provide unexpected results. It is not disputed that Niu in column 9 discloses that
the combination of a polyurethane resin and acetoacetylated polyvinyl alcohol can
be used in the top layer of inkjet recording media. The Appellant has not
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established that anionic polyurethane dispersion provides unexpected results over
other known polyurethane dispersions used in combination with acetoacetylated
polyvinyl alcohol.7 The rejection of claim 38 is affirmed for the reasons set forth
above and by the Examiner.
In summary we affirm each of the Examiner’s rejections under 35 U.S.C.
§§§ 102, 103 and 112, ¶ 1.
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

7 Appellant’s reliance on evidence provided in the form of declarations and
examples contained in the present specification are not persuasive for the reason
set forth in the discussion of the rejections over the Kawano reference. As stated
above, this evidence is not limited to the scope of the appealed claims. This is
especially true with regard to claim 38 because the combination of acetoacetylated
polyvinyl alcohol and anionic polyurethane dispersion has not been compared to
the closest prior art of Niu.
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Paul A. Leipold
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester, NY 14650-2201

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