Ex parte Schwarz

Board of Patent Appeals and Interferences

Mar 31, 1999

08325914 (B.P.A.I. Mar. 31, 1999)

Application for patent filed October 19, 1994. 1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a
law journal and (2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM M. SCHWARZ, Jr.
__________
Appeal No. 96-3689
Application 08/325,9141
___________
ON BRIEF
___________
Before WEIFFENBACH, ELLIS and WALTZ, Administrative Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
1-27. The remaining claims in the application, claims 28-38, have been withdrawn from consideration
pursuant to a restriction requirement. We have carefully considered the respective positions advanced by
appellant and the examiner. For the reasons set forth below, we reverse the examiner's rejection.
Appeal No. 96-3689
Application 08/325,914
U.S. Patent No. 4,666,621 issued May 19, 1987.2
In the final Office action, the examiner rejected claims 1-6, 9-15, 18-24 and 27 under 35 U.S.C. § 102(b) as3
anticipated by Clark and claims 7, 8, 16, 17, 25 and 26 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under 35 U.S.C. § 103 as obvious over Clark. In response to the appeal brief, the examiner prepared an answer and two
supplemental answers. In the answer (paper no. 7), the examiner stated the rejections appealed as set forth in the final
Office action and introduced a new ground of rejection wherein claims 1-6, 9-15, 18-24 and 27 were rejected under 35
U.S.C. § 103 over Clark. The examiner repeated the grounds of rejection in the first supplemental answer (paper no. 8).
In response to the new ground of rejection, appellant submitted an amendment (amendment “B”, paper no. 9) wherein
the phrase “said images exhibiting sharp line edges” was added to the end of independent claims 1, 10 and 19. In
response to the amendment, the examiner mailed a second supplemental answer (paper no. 10) wherein the examiner
notified appellant that the amendment “B” was entered and restated the rejections as follows: “[c]laims 1 to 6, 9 to 15,
18 to 24 and 27 stand finally rejected under 35 U.S.C. § 102(b) as being anticipated by Clark et al.” and that “[c]laims 1-27
stand finally rejected under 35 U.S.C. § 103(a) as being unpatentable over Clark et al.” (second suppl. answer: pp. 3-4).
It would appear that the examiner has withdrawn the rejection of claims 7, 8, 16, 17, 25 and 26 under 35 U.S.C. § 102(b)
as anticipated by Clark. Accordingly, we consider the examiner’s rejection of claims 7, 8, 16, 17, 25 and 26 under 35 U.S.C.
§ 102(b) as anticipated by Clark to have been withdrawn since the rejection does not appear in the second supplemental
examiner's answer. Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
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The examiner rejected claims 1-6, 9-15, 18-24 and 27 under 35 U.S.C. § 102(b) as anticipated
by Clark et al. (Clark) and claims 1-27 under 35 U.S.C. § 103(a) as unpatentable over Clark. The2 3
claims on appeal are directed to a recording sheet. Claim 1 is representative of the claimed subject matter
and reads as follows:
A recording sheet which comprises a substrate and an image receiving coating
situated on at least one surface of the substrate, said coating comprising water and a
surfactant capable of exhibiting a liquid crystalline phase in water at a temperature of about
25E C or higher, said coating containing the water and surfactant in relative concentrations
such that upon addition of water to the coating, the surfactant undergoes a phase change,
thereby increasing the viscosity of the coating, wherein the recording sheet is suitable for
receiving printed images, said substrate being selected from the group consisting of paper
and transparent polymeric materials, said image receiving coating being suitable for
receiving high quality images of an aqueous ink, said images exhibiting sharp line edges.
Appeal No. 96-3689
Application 08/325,914
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According to the examiner, claims 1-6, 9-15, 18-24 and 27 are anticipated by Clark because
Clark discloses a substrate made of wood pulp fibers as well as synthetic fibers and having a coating
containing water and ammonium laureth sulfate (a surfactant disclosed by appellant on page 16 and in
Example I in the specification). See the final Office action, p. 2, ¶3, paper no. 4.
The invention in Clark is not directed to a recording sheet, but to a pre-moistened wipe for cleaning
hard surfaces. The wipe comprises (i) a substrate which comprises specific proportions of wood pulp
fibers and synthetic fibers and (ii) a cleaning composition which includes water and a surfactant (col. 2, lines
11-54). The substrate disclosed in Clark would meet the requirements of appellant’s claim 1 in that the
substrate could be paper or a polymeric material. The cleaning composition, however, does not appear
to be a coating as required by claim 1. According to Clark, “[t]he pre-moistened wipe of the invention
comprises a flexible substrate comprising a nonwoven fabric which has been treated with a small amount
of a polymeric material and wet-impregnated with a liquid cleaning composition” (col. 3, lines 3-7). Even
if the composition could be construed as being a coating on the substrate, we do not find that Clark
presents a prima face case of anticipation.
It has long been established that the initial burden of establishing a prima facie basis to deny
patentability to a claimed invention rests upon the examiner. Ex parte Levy, 17 USPQ2d 1461, 1463-64
(Bd. Pat. App. & Int. 1990). The factual determination of anticipation requires the disclosure in a single
reference of every element of the claimed invention. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990); In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566 , 1567 (Fed. Cir. 1990);
Appeal No. 96-3689
Application 08/325,914
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Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ2d 1315, 1317 (Fed. Cir.
1988); In re Marshall, 578 F.2d 301, 304, 198 USPQ 344, 346 (CCPA 1978); In re Arkley, 455 F.2d
586, 587, 172 USPQ 524, 526 (CCPA 1972). Moreover, it is incumbent upon the examiner to identify
wherein each and every facet of the claimed invention is disclosed in the applied reference. Lindemann
Maschinenfabrik GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485
(Fed. Cir. 1984). Here the examiner has failed to consider two features of the claimed subject matter,
namely, that the water and surfactant composition be “capable of exhibiting a liquid crystalline phase in
water at temperatures of about 25E C or higher” and that the coating composition contain “water and
surfactant in relative concentrations such that upon addition of water to the coating, the surfactant
undergoes a phase change.”
The meaning “crystalline phase” and “phase change” as set forth in the claims must be considered
in light of the specification as it would be interpreted by one of ordinary skill in the art. Gechter v.
Davidson, 116 F.3d 1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir. 1997); In re
Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Appellant discloses the
following at page 16 of the specification:
... Figure 3 [which is reproduced to the left
of this column] represents the viscosity in
milliPascal-seconds of the surfactant ammonium
laureth sulfate, of the structural formula C H -12 25
(OCH CH ) OSO NH , in water at varying2 2 2 3 4 ÷ æ
concentrations in percent by weight of the surfac-
tant in the solution at a fixed temperature of about
Appeal No. 96-3689
Application 08/325,914
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25EC. As indicated, at relatively low concentrations, the viscosity increases with
increasing concentration. In these low concentration regions, spherical and rod micelles
are the predominant phase .... As concentration increases, viscosity peaks, and the
surfactant molecules are predominantly in the hexagonal liquid crystalline phase (repesented
by “C” ...). As concentration further increases, viscosity drops as the surfactant molecules
predominantly assume the lamellar liquid crystalline configuration (represented by “D” ...).
Accordingly, for the purposes of the present invention, the surfactant solution
coated onto the recording sheet at the time of printing is in a phase such that the aqueous
ink contacting the surfactant solution dilutes the surfactant solution to the extent necessary
to effect a phase change that results in an increase in viscosity in the surfactant solution.
For example, in a preferred embodiment of the present invention, the recording sheet
substrate is coated with a solution of the surfactant in the lamellar phase. Upon application
of an aqueous ink to the coating, the concentration of the surfactant is decreased by the
local dilution effect of the ink drop. This decrease in concentration shifts the surfactant to
the hexagonal liquid crystalline phase, and accordingly increases the viscosity of the
recording sheet coating in the area of the ink droplet. While not being limited to any
particular theory, it is believed to be possible that this local increase in viscosity on the
recording sheet decreases drying time and inhibits printing defects such as fuzzy line edges,
line growth, and intercolor bleed.
Clark’s Example 2 discloses a composition comprising water and ammonium laureth sulfate, a
surfactant within the scope of appellant’s claim 1 as noted, supra. The amount of water in the composition
is about 79% by weight while the amount of surfactant is about 0.015% by weight. In fact, the
concentration of surfactant disclosed by Clark in his cleaning composition does not exceed about 1% by
weight (col. 2, lines 45-48). As can be gleaned from Fig. 3, supra, these concentrations are nowhere near
the amounts illustrated in the Fig. 3 which are required to cause the phase changes recited in appellant’s
claims. For the foregoing reasons, the examiner’s rejection of claims 1-6, 9-15, 18-24 and 27
under 35 U.S.C. § 102(b) as anticipated by Clark is reversed.
Appeal No. 96-3689
Application 08/325,914
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For the same reasons, we also reverse the rejection of claims 1-27 under 35 U.S.C. § 103 over
Clark. We find no teaching or suggestion in Clark, and the examiner has not provided any technical or
scientific reasoning, which would have led a person having ordinary skill in the art to the claimed recording
sheet. In addition, we agree with appellant that Clark is not analogous prior art with respect to the claimed
subject matter. We do not find Clark to be in the field of appellant’s endeavor, i.e., recording sheets for
receiving images of an aqueous ink, or reasonably pertinent to the particular problem with which the
appellant is concerned. In re Clay, 966, F.2d 656, 659, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992).
Accordingly, the examiner’s rejection of claims 1-27 for obviousness is also reversed.
In summary, the decision of the examiner is reversed.
REVERSED
CAMERON WEIFFEBACH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOAN ELLIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
CW/kis
Appeal No. 96-3689
Application 08/325,914
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Ronald Zibelli
Xerox Corporation
Xerox Square 020
Rochester, NY 14644