Ex Parte Zeng et al

Patent Trial and Appeal Board

Jan 29, 2018

14786866 (P.T.A.B. Jan. 29, 2018)

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.
14/786,866 10/23/2015 Xi Zeng JR. 84408334 1051
22879
HP Tnr
7590 01/31/2018 EXAMINER
3390 E. Harmony Road
Mail Stop 35
SHEWAREGED, BETELHEM
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XI ZENG, JR., LOKENDRA PAL and
RAJASEKAR VAIDYANATHAN
Appeal 2017-005039
Application 14/786,866
Technology Center 1700
Before MICHAEL P. COLAIANNI, DONNA M. PRAISS,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—15 of Application 14/786,866
under 35 U.S.C. § 103(a) as obvious. Final Act. (Aug. 22, 2016) 2—5.
Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 The Appellant is the Applicant, Hewlett-Packard Development Company,
L.P., which is also identified as the real party in interest. Appeal Br. 3.
Appeal 2017-005039
Application 14/786,866
BACKGROUND
The present application generally relates to printable recording media
(such as paper) containing a base substrate, a pre-coat layer, and an ink-
receiving layer, where the ink-receiving layer comprises three pigments with
varying attributes. Abstract.
Claims 1 and 7 are representative of the pending claims and are
reproduced below:
1. A printable recording media comprising:
a. a base substrate;
b. a pre-coat layer including more than about 60 wt
% of one or more particulate inorganic pigments by total
dry weight of said pre-coat layer;
c. an ink-receiving layer, disposed on said pre-coat
layer, comprising a mixture of:
i. about 10 to about 90 wt % of a first pigment
including precipitated calcium carbonate particles,
ii. about 5 to about 60 wt % of a second
pigment having a larger size and a different shape
than said first pigment particles, and
iii. about 1 to about 50 wt % of a third pigment
having a surface area of at least 50 m2/gram,
wherein said weight percentages are by combined weight
of the first, second and third pigments by total dry weight
of said ink-receiving layer.
7. The printable recording media of claim 1 wherein
the second pigment, of the ink-receiving layer, is a
combination of ground calcium carbonate particles and
platey clay.
Appeal Br. 25, 26 (Claims App.).
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Application 14/786,866
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1—12 are rejected under 35 U.S.C. § 103(a) as obvious over
McManus et al. (US 2007/0235119 Al, published Oct. 11, 2007)
(hereinafter “McManus”) in view of Zeng et al. (US 2010/0304057
Al, published Dec. 2, 2010) (hereinafter “Zeng”) as evidenced by
Caton (US 5,078,793, issued Jan. 7, 1992). Final Act. 2-A.
2. Claims 13—15 are rejected under 35 U.S.C. § 103(a) as obvious
over McManus in view of Zeng as evidenced by Caton and further
in view of Wang et al. (US 2011/0091666 Al, pub. Apr. 21, 2011)
(hereinafter “Wang”). Id. at 4—5.
DISCUSSION
Rejection 1. The Examiner rejected claims 1—12 as obvious over
McManus in view of Zeng as evidenced by Caton. Id. at 2. In support of
such rejection, the Examiner found that McManus teaches an inkjet
recording medium comprising a substrate, a base layer on the substrate, and
a porous ink receiving layer on the base layer. Id. The Examiner further
found that McManus teaches that the ink receiving layer comprises
inorganic particles, but does not teach the specific pigments recited in the
claim. Id. at 2—3. The Examiner additionally found that Zeng teaches an ink
jet paper having a coating layer with three pigments that fall within the
scope of claim 1. Id. at 3. The Examiner determined that it would have
been obvious to a person of ordinary skill in the art to combine the coating
layer of Zeng (containing the three pigments) with the substrate and base
layer of McManus so as “to provide a recording medium that imparts good
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Application 14/786,866
image quality, including reduced print mottling and improved durability
performance, especially highlighter smear resistance.” Id. at 4.
Reason to Combine / Teaching Away
Appellant alleges error in the determination of obviousness. First,
Appellant argues that a person of ordinary skill in the art would not have
been motivated to combine the teachings of McManus and Zeng and,
further, that McManus teaches away from the coating layer of Zeng. Appeal
Br. 16—19. Appellant argues that the Examiner’s proposed hypothetical
combination is contrary to the teaching of McManus that positive results
were achieved “due, at least in part, to the specific combination of the base
layer and the porous ink receiving layer of the embodiment(s) of the medium
disclosed herein.” McManus 140. Appellant argues that the proposed
modification differs from the “specific combination” taught by McManus
and that one of skill in the art would not have “a sufficient likelihood of
success in making such a modification.” Appeal Br. 17.
McManus (published in 2007) teaches an ink receiving layer which
may include “silica, alumina, hydrous alumina (which includes but is not
limited to boehmite and pseudo-boehmite), calcium carbonate, and/or
combinations thereof.” McManus 121. Zeng (published in 2010) observes
that traditional inkjet media employ a “large amount of relatively expensive
materials, such as silica, alumina, boehmite, or mixtures of these.” Zeng 1 5.
Zeng further teaches that “low cost coating pigments include precipitated
calcium carbonate, ground calcium carbonate, kaolin clays, and others.” Id.
17. Zeng goes on to teach a composition comprising “a specific
combination of three different inorganic pigments and at least one binder.”
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Id. 111. Zeng teaches that such components yield good image quality using
low-cost coating materials. Id. 19.
Appellant cites to a portion of McManus stating that favorable optical
density results were achieved using a certain medium and that “that these
results are due, at least in part, to the specific combination of the base layer
and the porous ink receiving layer.” McManus 140. In response, the
Examiner notes that the results in question were derived from a comparison
of two different media having different base layers, but the same ink
receiving layers. Answer 6 (citing McManus 35—36). Thus, the cited
results are attributable to the change in base layer and would not have
motivated a person of ordinary skill to cease efforts to innovate in regard to
the ink-receiving layer. Moreover, a statement in a prior art reference
regarding the advantages of the prior art method does not end all efforts to
modify and combine when there is a sound reason to do so. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007) (“any need or problem known in the
field of endeavor at the time of invention . . . can provide a reason for
combining the elements in the manner claimed.”). Accordingly, it would not
have been contrary to McManus to use the pigments of Zeng in combination
with the base layer of McManus.
Nor does McManus “teach away” from the proposed combination.
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994). Here, McManus, like many patent references, asserts an
advantage of its teachings. Describing the advantages of one ink receiving
layer cannot be said to discourage one of skill in the art from all other ink
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receiving layers. Moreover, as noted by the Examiner, the thrust of the cited
passage is the advantage of the specific base layer (as opposed to the ink
receiving layer) described in McManus.
In addition, Zeng includes clear teachings of the advantages of the
pigments described therein. A reference that arguably teaches away from a
claimed feature must be weighed alongside the teachings of a cited reference
that teaches the propriety of employing that feature. Para-Ordnance Mfg.,
Inc. v. SGSImps. Infl, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).
In view of the foregoing, Appellant has failed to show reversible error
in the Examiner’s finding that a person of ordinary skill in the art would
have had reason to combine the teachings of McManus and Zeng.
Rebuttal of the Prima Facie Case
Second, Appellant argues that even if the Examiner has made a prima
facie case of obviousness, such case is rebutted by the unexpected results
provided by the recording media of the claims at issue. Appeal Br. 19-20.
Establishing unexpected results requires providing a side-by-side
comparison of the claimed invention with the closest prior art which is
commensurate in scope with the claims, and showing that the result would
have been unexpected by one of ordinary skill in the art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984). Moreover, "[i]t is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice." In re De
Blauwe, 736 F.2d at 705, quoted with approval in In re Soni, 54 F.3d 746,
750 (Fed. Cir. 1995).
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Here, Appellant refers to certain examples in the Specification to
show unexpected results. Appeal Br. 202. Examples 1 and 2 are referred to
as “control examples as they do not contain any pre-coat layer.” Spec. 1 50.
Recording media 3 has both a base coat (pre-coat) and an ink-receiving
layer. Id. (Table 3). Thus, the Specification effectively compares an
embodiment of the present application (recording media 3) to an
embodiment of Zeng (ink-receiving layer but no base layer). This, however,
has not been shown to be the relevant inquiry. McManus is the primary
reference and should be the subject of comparison. Moreover, Appellant has
shown only a single embodiment within the scope of the claims. Appellant
bears the burden of showing surprising results commensurate in scope with
the claims. In the present case, a single example is insufficient to do so. Nor
has Appellant cited to objective evidence that such results would have been
unexpected to one of skill in the art.
Accordingly, Appellant has failed to rebut the prima facie showing of
obviousness of the claims at issue.
Claim 7
Appellant separately argues the patentability of claim 7 which
requires that the second pigment be “a combination of ground calcium
carbonate particles and platey clay.” Appeal Br. 20-21. Appellant asserts
that the portion of Zeng cited by the Examiner as disclosing such limitation
2 Appellant does not refer to any specific paragraph or Table within the
Specification. Appeal Br. 20. We construe Appellant’s reference to
“Examples 1—3” (Appeal Br. 20) to refer to Table 3 of the Specification
which shows the constituents of three different recording media and Table 4
which shows certain test results.
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teaches only to use ground calcium carbonate or platey clay in the
alternative — not in combination. Id. at 21 (citing Zeng 118).
The Examiner agrees that Zeng does not explicitly teach to use ground
calcium carbonate and platey clay in combination but determines that it
would have been obvious for a person of skill in the art to do so. Answer 9.
The Examiner finds that Zeng teaches both ground calcium carbonate and
calcined clay as suitable examples of the third pigment. Id. (citing Zenga
118).
In similar cases, the Federal Circuit has determined the combination
of components known to be useful for the same purpose to be obvious. See,
e.g., Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 808—09 (Fed. Cir.
1989) (finding, in regard to the combination of two known diuretics, that
“it is to be expected that their co-administration would induce more sodium
excretion than would either diuretic alone.”); see also In re Crockett, 279
F.2d 274, 276 (1960) (the “joint use [of magnesium oxide and calcium
carbide] is not patentable” where the prior art teaches “that both magnesium
oxide and calcium carbide, individually, promote the formation of a nodular
structure in cast iron, and it would be natural to suppose that, in
combination, they would produce the same effect and would supplement
each other”). Appellant does not put forth evidence or argument that the
claimed combination yields an unexpected result. Appeal Br. 20-21.
Accordingly, Appellant has failed to show error in the rejection of
claim 7.
Rejection 2. The Examiner rejected claims 13—15 as obvious over
McManus in view of Zeng, as evidenced by Caton, and further in view of
Wang. Final Act. 4—5. On review, Appellant relies upon the same
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arguments as put forth regarding claim 1. Appeal Br. 22—23. As such
arguments were not found to be persuasive of reversible error in regard to
claim 1 (and its dependents), we similarly determine that Appellant has not
shown that the Examiner reversibly erred in rejecting claims 13—15.
CONCLUSION
The rejection of claims 1—12 as obvious over McManus in view of
Zeng, as evidenced by Caton, is affirmed. The rejection of claims 13—15 as
obvious over McManus in view of Zeng, as evidenced by Caton, and further
in view of Wang 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
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