Ex Parte SANO

Patent Trial and Appeal Board

Jan 13, 2017

12633829 (P.T.A.B. Jan. 13, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/633,829 12/09/2009 Tsuyoshi SANO 9319S-003587 6434
27572 7590 01/18/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
JIANG, LIS HA
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
01/18/2017 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):
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSUYOSHI SANO
Appeal 2015-005599
Application 12/633,829
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of a decision of
the Primary Examiner to reject claims 1, 4—7, 9—12, 16, and 22—25 under 35
U.S.C. § 103(a) over at least the combined prior art of Kobayashi,2
Oiwamoto,3 Oyanagi4, and Watanabe.5,6
1 The real party in interest is stated to be Seiko Epson Corporation (App. Br.
3).
2 US 2007/0188547 Al, published Aug. 16, 2007.
3 US 2005/0158488 Al, published July 21, 2005.
4 US 2006/0160917 Al, published July 20, 2006.
5 US 2004/0239738 Al, published Dec. 2, 2004.
6 The Examiner applies additional prior art to dependent claims 11 and 24
(Final Action 11 and 14). Appellant relies upon the arguments for claim 1
for these claims (App. Br. 11).
Appeal 2015-005599
Application 12/633,829
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Claim 1 is illustrative of the claimed subject matter (emphasis added)
1. An image recording method comprising:
using an inkjet recording method to form an undercoat layer of
an undercoat-forming ink composition containing a volatile
component on a medium, the medium being non-absorbent or
low-absorbent of inks;
drying the undercoat layer to control a content of the
volatile component remaining in the undercoat layer such that
the remaining volatile component content is 5% by mass to
50% by mass; and
using an inkjet recording method to form a color image
layer of a process color ink composition on the undercoat layer
in a state where the content of the volatile component remaining
in the undercoat layer is 5% to 50% by mass,
wherein the undercoat layer-forming ink composition is
one of a brilliant ink composition and a white ink composition,
wherein the brilliant ink composition contains:
a metallic pigment formed of aluminum or an aluminum
alloy in an amount of 0.1 to 10% by mass, and
an organic solvent containing at least one alkylene glycol
ether that is liquid at room temperature and normal pressure,
and
wherein the white ink composition contains:
a white color material selected from titanium dioxide and
hollow resin particles, the content of titanium dioxide being in
the range of 5% to 15% by mass and the content of the hollow
resin particles being in the range of 5% to 20% by mass, and
at least one compound selected from the group consisting
of an alkanediol and a glycol ether, the alkanediol and/or the
glycol ether content in the white ink composition being 1 % to
20% by mass.
2
Appeal 2015-005599
Application 12/633,829
Upon consideration of the appeal record including the Appellant’s
position in this appeal as set forth on pages 6—10 of the Appeal Brief, we
affirm the Examiner’s rejections for the reasons stated by the Examiner
(Final Office Action mailed June 18, 2014, at 2—5; Examiner’s Answer
mailed March 11, 2015 at 2—8).
Appellant’s arguments are directed to the lack of any explicit
disclosure in Kobayashi for any amount of remaining volatile component
(App. Br. 6—9). A preponderance of the evidence supports the Examiner’s
finding that Kobayashi’s teaching that the undercoat primer layer should be
sufficiently dried to prevent mixture of undried ink with ground-color layer
50 is sufficient to establish that the volatile content is a result effective
variable (Ans. 3). A “recognition in the prior art that a property is affected
by the variable is sufficient to find the variable result-effective.” In re
Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Indeed,
Appellant also admits it was known in the prior art to perform inkjet
printing “before the wet undercoating is dried” (Spec. 1 5).7
Thus, as indicated by the prior art and the Examiner, the amount of
volatile content in an undercoat layer is a result-effective variable in an ink
jet printing operation (e.g., Ans. 3). Moreover, it is well settled that it would
have been obvious for an artisan with ordinary skill to develop workable or
even optimum ranges for result-effective parameters. In re Boesch, 617 F.2d
7 See, Constant v. Advanced Micro-Devices, Inc., 848 F. 2d 1560, 1570
(Fed. Cir. 1988) (“A statement in a patent that something is in the prior art is
binding on the applicant and patentee for determinations of anticipation and
obviousness.”), and//? re Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (A
statement by an applicant that certain matter is prior art is an admission that
the matter is prior art for all purposes).
3
Appeal 2015-005599
Application 12/633,829
272, 276 (CCPA 1980); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) (where the difference between the claimed invention and the prior art
is some range, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results).
Thus, the use of as little as 5% (claim 1) or 10% (dependent claims 6 and 25
(App. Br. 11)) up to 50% (claim 1 and 25) or 25% (claim 6) of volatile
content remaining is deemed within the level of ordinary skill in the art.
The burden of showing unexpected results rests on the person who
asserts them by establishing that the difference between the claimed
invention and the closest prior art was an unexpected difference. See In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). Further, a showing of unexpected result
supported by factual evidence must be reasonably commensurate in scope
with the degree of protection sought by the claims on appeal. In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980).
The Examiner’s determination that the alleged unexpected results in
Table 2 of the Specification are not commensurate with the claimed
invention is reasonable, since only one example of one specific ink of Table
1 was tested (Ans. 6). The Examiner also relied upon Oberski as rebuttal
evidence to indicate that adjusting the wetness and viscosity of a primer
layer results to obtain good image quality in inkjet printing is an expected
result, not an unexpected result (e.g., Final Action 15; Ans. 5). Appellant
responds that even if the Specification, Table 2 results are not considered
unexpected, these results illustrate that the amount of volatile content affects
the bleeding between the undercoat layer and the subsequently formed
4
Appeal 2015-005599
Application 12/633,829
image (Reply Br. 7). However, Koboyashi also indicates that the dryness of
the undercoat layer affects the image deterioration (| 91).8
Accordingly, all of the Examiner’s 103 rejections on appeal are
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).
AFFIRMED
8 Appellant’s arguments that Kobayashi and Oberski teach away from one
another since Kobayashi indicates that sufficient dryness is preferred, while
Oberski (as well as the admitted prior art) indicate that a wet interface is
desirable, are also not persuasive of error in the Examiner’s obviousness
determination. Whether a reference teaches away from a claimed invention
is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.
2005). The Examiner pointed out that Oberski was not relied upon in the
rejection of the claims, but merely as rebuttal evidence to Appellant’s
arguments (Ans. 2). In any event, since the prior art of record exemplifies
that the volatile content of the undercoat layer was a result effective variable
for image quality in inkjet printing, the evidence supports the Examiner’s
conclusion that determining workable ranges for specific undercoat layers
and the applied ink would have been prima facie obvious.
5