Ex Parte Wickramanayake

Board of Patent Appeals and Interferences

Dec 10, 2010

10120470 (B.P.A.I. Dec. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PALITHA WICKRAMANAYAKE
____________

Appeal 2009-014152
Application 10/120,470
Technology Center 1700
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Before EDWIN C. KIMLIN, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-7, and 23-30. Claims 20-22 have been withdrawn
(App. Br. 5). We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/120,470

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We REVERSE.
Representative claim 1 reads as follows:
1. A coated substrate for ink-jet printing, comprising:

(a) a paper or photographic media substrate,
having coated thereon,

(b) a porous coating, said porous coating comprising
silica covalently attached to a chelating agent through a reactive
group, prior to printing ink on the paper or photographic media
substrate.

Claims 1, 3, 7, 26, 27, 29, and 30 are rejected under 35 U.S.C. §
103(a) as being unpatentable over JP ‘049 (JP 08-337049, published Dec.
24, 1996, as translated) in view of JP ‘580 (JP 60-224580, published Nov. 8,
1985, as translated).
Claims 4-6, 23-25, and 28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined prior art of JP ‘049, JP ‘580, and De
Antoniis (US 4,714,769, Dec. 22, 1987).
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with
approval in KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
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Application 10/120,470

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KSR Int'l. Co. v. Teleflex Inc., 550 U.S. at 421(citing Graham v. John Deere
Co. of Kansas City, 383 U.S. 1, 36 (1966) (warning against a “temptation to
read into the prior art the teachings of the invention in issue”)).
“Inherency … may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citation omitted); see also, In re Rijckaert, 9 F.3d 1531, 1534
(Fed. Cir. 1993) (rejection reversed because inherency was based on what
would result due to optimization of conditions, not what was necessarily
present in the prior art).
Applying the preceding legal principles with respect to obviousness to
the factual findings in this record, we determine that the Examiner has not
properly identified factual findings and reasoning for establishing a prima
facie case of obviousness based on the applied prior art, for essentially the
reasons given by Appellants (see generally App. Br.; Reply Br.).
Specifically, we agree with Appellant that the Examiner has not
established that the claimed element of a chelating agent covalently attached
to silica through a reactive group is inherently present when the references
are combined as proposed by the Examiner (App. Br. 18-21; Reply Br. 6-9).
Notably, as argued by Appellant and as described in their Specification,
certain reaction conditions are necessary for the claimed compound to form,
and the Examiner has not provided any persuasive technical reasoning that
the conditions set forth in the references would necessarily result in the
formation of the claimed compound (see, e.g., Spec. 14:1-20; see also, Reply
Br. 9 (“(which conditions, incidentally, are not set forth in either [of the
applied] reference[s]).”). The Examiner has also not provided any evidence
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that a chelating agent covalently attached to silica through a reactive group
was known to be useful for a coated substrate for ink-jet printing (Ans.
generally).
Under these circumstances, it is apparent that the only teaching or
suggestion for combining the applied references in such a manner as to
achieve the here claimed invention derives from the Appellant’s own
Specification rather than the applied prior art. Therefore we conclude that
the Examiner’s rejection is based upon improper hindsight reasoning
combined with the deficient inherency rationale as discussed above. See
W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984) (“To imbue one of ordinary skill in
the art with knowledge of the invention in suit, when no prior art reference
or references of record convey or suggest that knowledge, is to fall victim to
the insidious effect of a hindsight syndrome wherein that which only the
inventor taught is used against its teacher.”).
The additional reference to De Antoniis applied in the remaining
rejection has not been relied upon by the Examiner to cure the deficiencies
noted above.
On this record, we cannot say the Examiner has established a prima
facie case of obviousness within the meaning of 35 U.S.C. § 103(a) for the
claims on appeal. For these reasons and those set out in the Appeal Brief,
we reverse all of the Examiner’s § 103 rejections on appeal.
CONCLUSION
In summary, the rejections before us on appeal are reversed.

REVERSED
Appeal 2009-014152
Application 10/120,470

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kmm

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