Ex Parte Romano

Board of Patent Appeals and Interferences

Apr 28, 2010

10925444 (B.P.A.I. Apr. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES E. ROMANO, JR.
____________

Appeal No. 2009-007023
Application 10/925,444
Technology Center 1700
____________

Decided: April 28, 2010
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 and 13.1 See pages 1 and 2 of the Appeal

1 The Examiner also finally rejected claims 2 through 5, 7, 9 through 12, 14,
15, 18, and 19 in the final Office action dated June 20, 2007. (See also App.
Br. 1.) However, Appellant decides to not appeal these finally rejected
claims. (See App. Br. 1-2.) Consequently, subsequent to a Remand, the
expressly or impliedly withdrawn claims 2-5, 7, 9-12, 14, 15, 18, and 19
were cancelled by the Examiner in a Communication mailed on January 02,
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Brief (“App Br.”) filed January 3, 2008. We have jurisdiction under 35
U.S.C. §§ 6 and 134.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “an inkjet recording
element” (See Spec. 1, ll. 14-15 and claims 1 and 13). Details of the
appealed subject matter are recited in claims 1 and 13 reproduced from the
Claims Appendix to the Appeal Brief as shown below:
1. An inkier recording dement comprising, in order over a support,
at least three hydrophilic non-porous absorbing layers as follows:
(a) a base layer comprising as binder a hydrophilic synthetic or
natural polymer;
(b) an inner layer comprising a poly(vinyl alcohol) binder, having a
degree of hydrolysis of at least 95 percent, in the amount of at least 85
weight percent based on solids, and particles of synthetic, substantially
amorphous aluminosilicate material present in an amount of 2.5 to 15 weight
percent solids; and
(c) an overcoat comprising poly(vinyl alcohol) binder and particles
of synthetic, substantially amorphous aluminosilicate material, wherein the
ratio of hydrophilic binder to the synthetic, substantially amorphous
aluminosilicate material in the overcoat is from 95:2.5 to 75:25;
wherein the synthetic, substantially amorphous aluminosilicate
material in the inner layer and the overcoat exhibits an X-ray diffraction
pattern that comprises weak peaks at about 2.2 and 3.3 Ǻ.
I3. The inkjet recording element of claim 1 wherein the polymeric
aluminosilicate comprises organic groups.

2009. See Manual of Patent Examining Procedure § 1215.03 (Rev. 3, Aug.
2005).
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As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 3 of the
Answer. (“Ans.”) dated June 16, 2008:
Liu 6,548,149 B1 Apr. 15, 2003
Ohashi 6,254,845 B1 Jul. 3, 2001

Appellant requests review of the Examiner’s § 103(a) rejection of
claims 1 and 13 as unpatentable over the combined disclosures of Liu and
Ohashi (App. Br. 2).
Appellant traverses the Examiner’s § 103(a) rejection, arguing that
one of ordinary skill in the art would not have been led to employ the
amorphous aluminosilicate material taught by Ohashi as the amorphous
aluminosilicate pigment of the inner and overcoat layers of Liu’s inkjet
recording element (App. Br. 3). Appellant also contends that Ohashi “does
not disclose an aluminosilicate material comprising organic groups as
required by claim 13” (App. Br. 4).

ISSUES AND CONCLUSIONS
The first dispositive question is: Would one of ordinary skill in the art
have been led to employ the amorphous aluminosilicate material taught by
Ohashi as the amorphous aluminosilicate of the inner and overcoat layers of
Liu’s inkjet recording element as required by claim 1? On this record, we
answer this question in the affirmative.
The second dispositive question is: Does Ohashi disclose an
aluminosilicate material comprising organic groups as required by claim 13?
On this record, we answer this question in the affirmative.

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RELEVANT FACTUAL FINDINGS
The following relevant factual findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office):
1. Appellant does not dispute the Examiner’s finding that Liu teaches or
would have suggested an ink jet recording element comprising a support
coated with at least three hydrophilic non-porous absorbing layers, wherein
the three hydrophilic non-porous absorbing layers include a base layer
containing a hydrophilic synthetic or natural polymer binder, an inner layer
containing a poly(vinyl alcohol) binder having the claimed solids and
hydrolyzed contents and amorphous aluminosilicate pigment particles, and
an overcoat containing a poly(vinyl alcohol) binder and amorphous
aluminosilicate pigment particles. (Compare Ans. 3-6 with App. Br. 3-4 and
the Reply Brief (“Reply Br.”) filed August 12, 2008, 1-3).
2. Appellant does not dispute the Examiner’s finding that Liu teaches or
would have suggested employing in both the inner layer and the overcoat,
any amount of amorphous aluminosilicate pigment particles per the binder,
with the preferred binder to the amorphous aluminosilicate pigment particle
ratio being 10:1 and 10:10. (Compare Ans. 3 and 6 with App. Br. 3-4 and
Reply Br. 1-3; see also Liu, col. 11, ll. 5-15.)
3. Appellant does not dispute the Examiner’s finding that Liu teaches
that the amorphous aluminosilicate pigment particles have a primary particle
size of 3 to 40 nm and a secondary particle size of 10 to 300 nm (the
secondary particle size is formed when the amorphous aluminosilicate
pigment particles are agglomerated with amorphous silica pigment
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particles). (Compare Ans. 3 with App. Br. 3-4 and Reply Br. 1-3; see also
Liu, col. 6, ll. 44-51 and col. 10, ll. 18-45).
4. Liu, like Appellants, exemplifies forming amorphous aluminosilicate
particles by subjecting a mixture containing an aluminum alkoxide and a
silicon alkoxide in the (alumina moieties/silica moieties) weight ratio of 1:4
to 4:1 to a hydrolysis procedure. (Compare Liu, col. 9, ll. 44-53 with Spec.
10 and 11.)
5. Liu teaches that pigments, such as amorphous silica particles, need to
exhibit a desired ink absorbing property and was known for use “for
example, absorptive separations, catalyst carriers, and fillers for paints and
resins” (col. 7, ll. 37-41 and col. 8, ll. 31-34 and 64-67).
6. Liu does not mention that its amorphous aluminosilicate pigments in
the inner and overcoat layers exhibit “an X-ray diffraction pattern that
comprises weak peaks at about 2.2 and 3.3 Ǻ” as required by claim 1. (See
generally Liu.)
7. Ohashi teaches forming high purity, homogeneous amorphous
aluminosilicate spherical particles having a mean particle diameter of 3 to 5
nm (col. 4, ll. 5-12 and col. 5, ll. 40-42).
8. Appellant acknowledges that the aluminosilicate particles taught by
Ohashi exhibit “an X-ray diffraction pattern that comprises weak peaks at
about 2.2 and 3.3 Ǻ” as required by claim 1 (App. Br. 3 and Spec. 4-5).
9. Ohashi teaches that the amorphous aluminosilicate material can be
linked to, inter alia, organometallic compounds (col. 3, ll. 8-24).
10. Ohashi teaches that its high purity, homogeneous amorphous
aluminosilicate spherical particles have
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the excellent water resistance, heat resistance, and corrosion
resistance of inorganic compounds and can thus be used as
adsorbents of hazardous substances; detergents; deodorants;
catalyst carriers, humidity adjustors for automatically
controlling the humidity of living rooms, car interiors, and other
living environments; drug microcapsules utilizing the irregular
shape thereof; and a wide variety of other commercial
applications (emphasis added) (col. 6, ll. 13-20).

PRINCIPLES OF LAW
As stated by the Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 417-18 (2007):
[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ. [(Emphasis added.)]

See also In re Bozek, 416 F.2d 1385, 1390, (CCPA 1969) (“Having
established that this knowledge was in the art, the examiner could then
properly rely, as put forth by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”).
The knowledge commonly available to a person having ordinary skill in the
art includes facts admittedly well known in the art. See In re Nomiya, 509
F.2d 566, 570-71 (CCPA 1975) (The admittedly known prior art in the
Appellant’s Specification may be used in determining the patentability of a
claimed invention.).

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ANALYSIS
There is no dispute that Liu teaches or would have suggested an ink
jet recording element comprising a support coated with at least three
hydrophilic non-porous absorbing layers, wherein the three hydrophilic non-
porous absorbing layers include a base layer containing a hydrophilic
synthetic or natural polymer binder, an inner layer containing a poly(vinyl
alcohol) binder having the claimed solids and hydrolyzed contents and the
claimed amount of amorphous aluminosilicate pigment particles, and an
overcoat containing a poly(vinyl alcohol) binder and the claimed amount of
amorphous aluminosilicate pigment particles. Liu also teaches that pigment
particles, such as silica materials, for its recording element were also known
to be useful as, for example, absorptive elements and catalyst carriers and
were known to exhibit a desired ink absorbing property.
Although Liu does not specifically mention that its amorphous
aluminosilicate particles exhibit “an X-ray diffraction pattern that comprises
weak peaks at about 2.2 and 3.3 Ǻ” as required by claim 1, it does
generically mention employing amorphous aluminosilicate pigment particles
having a particle size of 3 to 40 nm, which are inclusive of the amorphous
aluminosilicate spherical particles having a mean particle size of 3 to 5 nm
taught by Ohashi. More importantly, Ohashi teaches that its amorphous
aluminosilicate spherical particles are homogeneous and highly pure and
have
the excellent water resistance, heat resistance, and corrosion
resistance of inorganic compounds and can thus be used as
adsorbents of hazardous substances; detergents; deodorants;
catalyst carriers, humidity adjustors for automatically
controlling the humidity of living rooms, car interiors, and other
living environments; drug microcapsules utilizing the irregular
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shape thereof; and a wide variety of other commercial
applications (emphasis added) (col. 6, ll. 13-20).

According to Appellant, the amorphous aluminosilicate spherical particles
taught by Ohashi exhibit “an X-ray diffraction pattern that comprises weak
peaks at about 2.2 and 3.3 Ǻ” as required by claim 1.
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ the claimed amounts
of amorphous aluminosilicate particles in general, especially those impurity
free amorphous aluminosilicate spherical particles having the above-
mentioned advantageous properties taught by Ohashi (having the claimed X-
ray diffraction pattern), as pigments in the inner and overcoat layers of Liu’s
inkjet recording element, with a reasonable expectation of successfully
providing them with the desired pigmentation untarnished by impurities.
In reaching this determination, we have considered Appellant’s
contention at page 4 of the Appeal Brief that Appellant’s reason for
employing Ohashi’s amorphous aluminosilicate particles (i.e., improved
adhesion and excellent image quality) is not taught or suggested by Liu and
Ohashi. However, as indicated supra, Liu and Ohashi as whole would have
prompted one of ordinary skill in the art to employ the amorphous
aluminosilicate particles taught by Ohashi as pigments for the inner and
overcoat layers of Liu’s inkjet recording element. Liu and Ohashi need not
be combined for the same reason contemplated by Appellant to establish a
prima facie case of obviousness so long as there is some reason, suggestion
or motivation in Liu and Ohashi to employ the amorphous aluminosilicate
particles taught by Ohashi in the inner and overcoat layers of Liu’s inkjet
recording element. See KSR, 550 U.S. at 419-420; see also In re Beattie,
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974 F.2d 1309, 1312 (Fed. Cir. 1992) ("As long as some [reason,]
motivation or suggestion to combine the references is provided by the prior
art taken as a whole, the law does not require that the reference be combined
for the reasons contemplated by the inventor.")
Appellant for the first time in this appeal relies on Controls 1 through
24 exemplified in the Specification at pages 1 through 3 of the Reply Brief
to show that the claimed invention imparts unexpected results. It is well
established that any arguments and/or evidence not timely raised in the
Appeal Brief are not considered absent a showing of good cause explaining
why such arguments and/or evidence could not have been presented in the
Appeal Brief. See Optivus Technology, Inc. v. Ion Beam Applications S.A.,
469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for the first time in the
reply brief that could have been raised in the opening brief is waived);
accord Ex parte Scholl, No. 2007-3653, slip op. at 18 n. 13 (BPAI March
13, 2008) (designated as “Informative Opinion”); Ex Parte George R.
Borden IV, 2010 WL 191083 *1-5 (BPAI 2010); Ex Parte Atsuhisa
Nakashima, 2010 WL 191183 *3-5 (BPAI 2010); see also Cross Med.
Prods. Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320-21 n. 3
(Fed. Cir. 2005) (It is well established that arguments not raised in the
opening Brief are deemed waived.) On this record, Appellant has not made
such a showing of good cause and therefore, we shall not consider the
arguments and evidence directed to unexpected results.
As to claim 13, contrary to Appellant’s argument at page 4 of the
Appeal Brief, Ohashi teaches that the amorphous aluminosilicate material
can be linked to, inter alia, organometallic compounds. Nowhere does
Appellant contend that this amorphous aluminosilicate material linked to
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organometallic compounds is not useful as pigments for the inner and
overcoat layers of Liu’s inkjet recording element. Thus, we are constrained
to agree with the Examiner that one of ordinary skill in the art would have
been led to employ such material as pigments in the inner and overcoat
layers of Liu’s inkjet recording element.
Accordingly, based on the totality of the record, including due
consideration of Appellant’s arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness
within the meaning of 35 U.S.C. § 103.
ORDER
In view of the foregoing, the decision of the Examiner 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

PL Initial;
sld

Paul A. Leipold
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester NY 14650-2201