Ex Parte Sheng

Board of Patent Appeals and Interferences

Jul 17, 2009

10431487 (B.P.A.I. Jul. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MINGHUI SHENG
____________

Appeal 2009-003579
Application 10/431,487
Technology Center 1700
____________

Decided:1 July 17, 2009
____________

Before EDWARD C. KIMLIN, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 12, 13, 15-20, 22,
23, 26, 27, 29-34, 36, 37, and 40-60. We have jurisdiction under 35 U.S.C.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-003579
Application 10/431,487

§ 6(b).
Claim 12 is illustrative:

12. A method of preparing ink jet media, comprising the steps
of:

providing an opaque substrate having two sides;

providing a glossy, water-based coating for receiving ink comprising
(1) a binder comprising between about 5% by weight and about 30% by
weight of said coating and (2) a pigment selected from the group consisting
of alumina and silica having a particle size less than 1 µm;

selecting a low friction substance, in an emulsified form, from the
group consisting of waxes, organic polymers including oxygen in its oxo
form, and fluoropolymers having a particle size less than 1 µm;

mixing together said binder and the selected low friction substance;
and

applying the mixture, including said pigment, to both sides of said
substrate, thereby providing said ink jet media with a gloss of greater than
40% at 60 degrees.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 2):
Harasawa 5,445,868 Aug. 29, 1995
Martinson 5,445,866 Aug. 29, 1995

Appellant’s claimed invention is directed to a method of preparing ink
jet media. The method entails applying a mixture comprising a binder and a
low friction substance on both sides of an opaque substrate. The binder is
part of a water-based coating that also comprises either alumina or silica as a
pigment. The low friction substance may be selected from waxes, organic
2
Appeal 2009-003579
Application 10/431,487

polymers and fluoropolymers. The low friction substance allows for
efficient feeding of the media.
All the appealed claims stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Harasawa in view of Martinson.
Appellant does not present an argument that is reasonably specific to
any particular claim on appeal. Accordingly, all the appealed claims stand
or fall together.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we find ourselves in complete agreement with the
Examiner’s reasoned analysis and application of the prior art, as well as her
cogent and thorough disposition of the arguments raised by Appellant.
Accordingly, we will adopt the Examiner’s reasoning as our own in
sustaining the rejection of record, and we add the following primarily for
emphasis.
There is no dispute that Harasawa, like Appellant, discloses a method
of preparing ink jet media by applying a water-based coating comprising a
binder and pigment, which may be alumina or silica. As recognized by the
Examiner, Harasawa does not teach the inclusion of a low friction substance
in the coating composition. However, Martinson discloses a recording
material comprising an image receiving coating which contains the presently
claimed low friction substance, e.g., polymer beads, for improving the
feedability of the sheet material. Accordingly, based on the collective
teachings of Harasawa and Martinson, we concur with the Examiner that it
would have been obvious for one of ordinary skill in the art to incorporate a
low friction substance of the type disclosed by Martinson in the coating of
Harasawa to provide for efficient sheet feeding. We also agree with the
3
Appeal 2009-003579
Application 10/431,487

Examiner that Martinson’s disclosure of providing the coating layer on a
least one major surface of the sheet is a teaching of coating both sides of the
sheet with an ink receiving coating. We agree with the Examiner that it
would have been likewise obvious to provide the ink receiving coating of
Harasawa on both sides of the substrate “to prevent curling, increase
feedability, and to render both surfaces capable of receiving an image” (Ans.
4, second para.).
We are not persuaded by Appellant’s argument that Harasawa and
Martinson are not combinable because Martinson does not teach ink jet
printing. As pointed out by the Examiner, Martinson discloses in the
background section that transparencies of the type disclosed therein are
made by different printing and imaging methods, such as ink jet printing
(col. 1, ll. 11-15). Although Martinson does not exemplify ink jet printing, a
reference must be considered for all that it fairly teaches and not just its
preferred and exemplified embodiments.
Also, Appellant provides no factual basis for the statement that
Martinson teaches “a transparency, that cannot be printed with inkjet” (App.
Br. 12, last para.), and Appellant has advanced no reason why one of
ordinary skill in the art would have expected the low friction substances of
Martinson to be incompatible with the coating of Harasawa. On the other
hand, the Examiner has set forth that both references disclose polycarbonate
and polyethylene terephthalate as substrates, and both references employ
coatings that are formed primarily from inorganic particles. Hence, the
Examiner has set forth a factual basis for concluding that one of ordinary
skill in the art would have reasonably expected that the low friction
substances of Martinson would be similarly effective in the coating of
4
Appeal 2009-003579
Application 10/431,487

Harasawa. Moreover, assuming, arguendo, that one of ordinary skill in the
art would not use the recording sheet of Martinson for ink jet printing,
Appellant has not explained how this is relevant to the expectation of
enabling efficient sheet feeding by adding a low friction substance to a
surface coating of the type disclosed by Harasawa.
As a final point, we note that Appellant bases no argument upon
objective evidence of non-obviousness, such as unexpected results.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims 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) (2008).

AFFIRMED

ssl

HEWLETT-PACKARD COMPANY
INTELLECTUAL PROPERTY ADMINISTRATION
P. O. BOX 272400
FORT COLLINS, CO 80527-2400

5