Ex Parte Ghyzel

Patent Trial and Appeal BoardSep 21, 2012

11964987 (P.T.A.B. Sep. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/964,987 12/27/2007 Peter J. Ghyzel 94697CPK 2705 1333 7590 09/24/2012 EASTMAN KODAK COMPANY PATENT LEGAL STAFF 343 STATE STREET ROCHESTER, NY 14650-2201 EXAMINER HUHN, RICHARD A ART UNIT PAPER NUMBER 1764 MAIL DATE DELIVERY MODE 09/24/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte PETER J. GHYZEL ________________ Appeal 2011-005277 Application 11/964,987 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, CHARLES F. WARREN and MARK NAGUMO, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005277 Application 11/964,987 2 A. Introduction1 Peter J. Ghyzel (“Ghyzel”) timely appeals under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-22, which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6. We REVERSE. The subject matter on appeal relates to ink-jet recording layer (“ILR”) compositions adapted for high speed printing. IRLs are said to comprise, e.g., a porous coating comprising inorganic particles, a polymeric binder, and additives. (Spec. 1, ll. 27-29.) According to the 987 Specification, “[a] problem arises when multiple ink droplets are deposited in very close proximity in a short time: if the porosity of the receiver is not adequate, the drops will coalesce, severely degrading the image quality.” (Id. at 2, ll. 16-18.) Moreover, “[t]he amount of binder in the coated layers is relevant, since if too much binder is present, the porosity of the receiver is diminished, resulting in coalescence, and if too little binder is present, unacceptable cracking is observed.” (Id. at ll. 18-21.) The present invention is said to be an improvement on an IRL described by Merkel, which comprised a fine silica, a hydrophilic polymer binder, and a fluorosurfactant. (Spec. 2, ll. 25-30; see n.5, infra, for Merkel citation.) Merkel, however, requires that “coating compositions comprising the fluorosurfactants should be coated within a period of twelve hours from 1 Application 11/964,987, Stabilized Coating Dispersions for Porous Inkjet Recording Media, filed 27 December 2007. The specification is referred to as the “987 Specification,” and is cited as “Spec.” The real party in interest is listed as the Eastman Kodak Company. (Appeal Brief, filed 23 September 2010 (“Br.”), 1.) 2 Office action mailed 13 January 2010. Appeal 2011-005277 Application 11/964,987 3 the time of addition of the fluorosurfactant to the dispersion, in order to avoid excessive agglomeration of the particles resulting in poor gloss.” (Id. at 2, l. 31, to 3, l. 3.) The instability of the coating composition, such as the thickening behavior upon standing, creates manufacturing problems, as large amounts of the composition may need to be discarded if the coating is not used promptly, and coating quality may change during coating as the composition ages. (Id. at 3, ll. 3-8.) According to Ghyzel, these problems are solved by adding a nonfluorinated non-ionic surfactant having a hydroxyl number3 larger than 300. (Id. at para. bridging 3-4.) Representative Claim 1 reads: 1. A coating composition comprising a dispersion of fine particles of silica having a particle size of less than 300 nm, hydrophilic hydroxy-containing polymer, a first non-ionic surfactant comprising a perfluoroalkyl- containing alcohol comprising ethylene oxide repeat units, and a second non-ionic surfactant selected from the group consisting of non-fluorine-containing surfactants that comprises a hydrophobic moiety and a hydrophilic moiety comprising hydroxy groups, wherein the hydroxy number of the second non-ionic surfactant is greater than 300. (Claims App., Br. 8.) 3 Hydroxyl number = 56,100/(equivalent weight in g for one mole of hydroxyl). (Spec. 8, ll. 24-25.) Appeal 2011-005277 Application 11/964,987 4 The Examiner maintains the following grounds of rejection:4 A. Claims 1-22 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Merkel5 and Olson.6 B. Claim 16 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Merkel, Olson, and Grolitzer.7 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Ghyzel argues that the Examiner’s obviousness rejection should be reversed because the Examiner found, erroneously, that the high-hydroxyl number of surfactants described by Olson are used for the “same or similar purpose” as the additional surfactants suggested by Merkel. The appealed claims are drawn to an improvement on the inkjet image receiving layers described by Merkel. There is no dispute that Merkel describes inkjet receiving layers having fine silica particles, a hydrophilic hydroxyl-containing polymer binder, and fluorosurfactants as required by appealed claim 1. (Merkel 1 [0025], [0027], 2 [0030], respectively.) There is also no dispute that Merkel does indicate that additional surfactants can be 4 Examiner’s Answer mailed 3 December 2010 (“Ans.”). 5 Paul B. Merkel et al., Image-Recording Element with Fluorosurfactant and Colloidal Particles, U.S. Patent Application Publication 2005/0013947 A1 (2005). 6 Leif P. Olson and Kurt M. Schroeder, Method for Reducing Sensitizing Dye Stain, U.S. Patent Application Publication 2005/0244762 A1 (2005). 7 Marilyn A. Grolitzer, Glucoside Surfactants, U.S. Patent 4,528,106 (1985). Appeal 2011-005277 Application 11/964,987 5 added to the composition to obtain adequate coatability, as long as they do not interfere with the interactions between the fluorosurfactant and colloidal silica particles (Id. at 7 [0106].) Nor is there a dispute that Merkel does not describe the high-hydroxyl number surfactants required by the appealed claims. Olson describes a silver halide color photographic light-sensitive material, such as a photographic paper. (Olson 1 [0001].) The layer of interest comprises a sensitized emulsion and a dye dispersion that comprises at least one dye and a dye stain reducing water soluble surfactant. (Id. at [0009].) Olson explains that, “[w]ith short processing times, . . . residual dye stain may occur due to poor elution of the spectral sensitizing dyes contained in the light-sensitive material into the processing solutions,” resulting in degraded print appearance. (Id. at [0005].) As Ghyzel argues (Br. 3), the Examiner has failed to come forward with a plausible argument, supported by evidence of record, that the more efficient elution of residual sensitizing dyes from a silver halide emulsion layer, described by Olson, shares a significant similarity with the coatability issues addressed by Merkel. Merely identifying a reference in a “related” art does not establish that its teaching would have been considered relevant to any particular proposed modification of the prior art. Moreover, as Ghyzel argues (Br., para. bridging 5-6), Olson presents mostly relatively low hydroxyl number surfactants such as A-2, Tergitol® (Union Carbide), and only a few relatively high hydroxyl surfactants such as A-4, Olin-10G® (Dixie). The comparative Examples in the 987 Specification, however, show a much higher viscosity after 24 hours Appeal 2011-005277 Application 11/964,987 6 (Spec. 30-31, Table 1 (CE-4 through CE-6 use a Tergitol®)) and after 8 hours (id. at 33, Table 2, CE-8 uses Triton X-100®, said to have a hydroxyl number of 90.) The reasonable expectation, based on the Examiner’s proposed rationale, would be that all of the surfactants suggested by Olson would have similar effects in the compositions described by Ghyzel. The differing results further emphasize the inadequacy of the rejections. The Examiner’s additional analyses of the argued unpatentability of the dependent claims, including separately rejected claim 16, do not cure the defects of the rejection of claim 1. C. Order We REVERSE the rejection of claims 1-22 under 35 U.S.C. § 103(a) in view of the combined teachings of Merkel and Olson. We REVERSE the rejection of claim 16 under 35 U.S.C. § 103(a) in view of the combined teachings of Merkel, Olson, and Grolitzer. REVERSED cam