Ex Parte Hood

Patent Trial and Appeal Board

Nov 14, 2012

11198963 (P.T.A.B. Nov. 14, 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.
11/198,963 08/08/2005 David K. Hood FDN-2943 9666
7590 11/14/2012
Attn: William J. Davis, Esq.
INTERNATIONAL SPECIALTY PRODUCTS
Legal Department, Building No. 8
1361 Alps Road
Wayne, NJ 07470
EXAMINER
NERANGIS, VICKEY M
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
11/14/2012 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 DAVID K. HOOD
____________

Appeal 2013-000343
Application 11/198,963
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2013-000343
Application 11/198,963

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DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-6, 9, 11, 13-15 and 17-27.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claim 1 is representative of the invention and is reproduced below from the
Claims Appendix to the Appeal Brief:
1. A coating composition for making glossy inkjet-receptive
coatings on a substrate comprising:

(a) a cationic polymer,

(b) colloidal silica having an average particle size in the
nanometer range,

(c) water,

(d) an additional binder selected from the group consisting of a
latex, polyvinyl alcohol, cellulose, a cationic polyurethane dispersion
and combinations thereof: and

(e) optionally, a crosslinker,

wherein (a) is 45 to 95% and (b) is 5 to 55% by dry weight
based on the total dry weight of (a) and (b), wherein said coating
composition provides glossy inkjet receptive coatings on a substrate
having a gloss of about 90 or more at 60°.

Appellant requests review of the following grounds of rejection under 35
U.S.C. §103(a)3

1 Final Office Action mailed Jan. 6, 2012
2 Appeal Brief filed Jun. 6, 2012 (“App. Br.”)
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1. claims 1-3, 5, 6, 9, 11, 13-15, 17, 19-24, and 26 as unpatentable over
Tomizawa (US 6,224,971 B1, issued May 1, 2001) in view of Miyachi (US
2003/0224129 A1, published Dec. 4, 2003) (Ans. 2-3);
2. claims 4, 18, and 25 as unpatentable over Tomizawa in view of
Miyachi, and further in view of Ceruti (US 6,592,953 B1, issued Jul. 15, 2003
(Ans. 3-4); and
3. claims 9, 26, and 27 as unpatentable over Asano (US 6,511,736 B1,
issued Jan. 28, 2003) (Ans. 4).
Rejection of claims 1-3, 5, 6, 9, 11, 13-17, 19-24, and 26
as unpatentable over Tomizawa in view of Miyachi
and
Rejection of claims 4, 18, and 25 as unpatentable over Tomizawa
in view of Miyachi, and further in view of Ceruti
With respect to the first two grounds of rejection, Appellant presents
arguments in support of separate patentability of the independent claims, i.e.,
claims 1, 15, and 22. (See generally, App. Br. 9-10.) Accordingly, the remaining
claims subject to these grounds of rejection will stand or fall with the independent
claim from which they depend. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner relies on Tomizawa for a disclosure of an inkjet coating
composition comprising a polyvinylpyrrolidone resin (component (a) of claims 1,
15, and 22), an aqueous dispersion of colloidal silica (components (b) and (c) of
claims 1, 15, and 22) and an acetoacetylated polyvinyl alcohol (component (d) of
claim 1, optional component (d) of claim 22). (Ans. 2.) The Examiner

3 The Examiner has withdrawn the rejection of claims 1-6, 9, 11-15, and 17-21
under 35 U.S.C. §112, first paragraph. (Examiner’s Answer mailed Jul. 23, 2012
(“Ans.”), 5.) The only remaining grounds of rejection maintained by the Examiner,
see infra, do not include pending claim 12, which originally stood finally rejected
(see Final 1).

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acknowledges Tomizawa does not disclose the size of the colloidal silica particles
(id.), and relies on Miyachi for a teaching that “the particle size of colloidal silica
in an ink-jet recording material is preferably 10-100 nm” (id. at 3).
Claim 15:
Appellant correctly points out (see App. Br. 10) the transitional phrase
“consisting of” in the preamble of claim 15 precludes the presence of components
other than those specified, i.e., components (a)-(c). See AFG Indus., Inc. v.
Cardinal IG Co., Inc., 239 F.3d 1239, 1244-45 (Fed. Cir. 2001) (“‘[C]losed’
transition phrases such as ‘consisting of’ are understood to exclude any elements,
steps, or ingredients not specified in the claim.”). Appellant has persuasively
argued that the Examiner failed to clearly explain (see e.g. Ans. 6) how the
proposed combination of Tomizawa and Miyachi would result in a composition
which meets the limitations recited in the wherein clauses of claim 15, but does not
include an acetoacetylated polyvinyl alcohol, i.e., a fourth component which is not
listed in claim 15. (Reply Br. 4.) Therefore, we reverse the rejection of
independent claim 15, and its dependent claims 17-21 as unpatentable over the
combination of Tomizawa and Miyachi.
Claims 1 and 22:
Appellant contends the Examiner’s finding that Tomizawa discloses a
composition comprising “an additional binder” as recited in claims 1 and 22 is
based an overly broad interpretation of the claim term “polyvinyl alcohol” as
encompassing acetoacetylated polyvinyl alcohol, which is a “modified polyvinyl
alcohol.” (App. Br. 10.)
During examination, “the PTO must give claims their broadest reasonable
construction consistent with the specification.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007); cf. DSW, Inc. v. Shoe Pavilion, Inc., 537
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F.3d 1342, 1347 (Fed. Cir. 2008) (“[A]bsent contravening evidence from the
specification or prosecution history, plain and unambiguous claim language
controls the construction analysis.”).
The present Specification does not explicitly define the term “polyvinyl
alcohol;” however, there is no indication that this term is intended to encompass
anything other than PVOH. (See e.g. Spec. 5, EXAMPLE 2 (“Add 7 g of
polyvinyl alcohol, PVOH (20% solids in water)”).)
To establish that one of ordinary skill in the art would interpret “polyvinyl
alcohol” as encompassing modified forms thereof, the Examiner relies on US
2006/0041059 A14 to Fukasawa. (Ans. 5.) Prior art references may be “indicative
of what all those skilled in the art generally believe a certain term means” and “can
often help to demonstrate how a disputed term is used by those skilled in the art.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).
Appellant argues (Reply Br. 3), and we agree, that Fukasawa distinguishes
between the terms “polyvinyl alcohol” and “modified polyvinyl alcohol” (see e.g.,
Fukasawa Abstract and ¶ [0012]). Likewise, we agree with Appellant’s contention
(Reply Br. 3-4) that Tomizawa indicates one of ordinary skill in the art would not

4 We note this argument was raised for the first time in a footnote in the Response
to Argument section of the Answer, Otsuka Pharm. Co. v. Sanaloz, Inc., 678 F.3d
1280, 1294 (Fed. Cir. 2012) (holding that issues raised only in a footnote may be
deemed waived), and the reference has not been positively included in a ground of
rejection, see In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) (noting that
where a reference is relied upon to support a rejection, even in a minor capacity,
there would appear to be no excuse for not positively including that reference in
the statement of the rejection).
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understand the term “polyvinyl alcohol” as encompassing an acetoacetyl-modified
polyvinyl alcohol. (See Tomizawa col. 1, l. 66-col. 2, l. 9.5)
In sum, we agree with Appellant that the claim term “polyvinyl alcohol”
does not encompass modified polyvinyl alcohols and, therefore, does not read on
Tomizawa’s acetoacetylated polyvinyl alcohol. We further agree with Appellant
that the Examiner’s obviousness determination as to claims 1 and 22 cannot be
sustained because it is based on an erroneous finding that Tomizawa discloses “an
additional binder” as recited in claims 1 and 22. While the Examiner correctly
notes claim 22 recites the “additional binder” is an optional component, use of the
transitional phrase “consisting of” in the claim 22 preamble precludes the presence
of an acetoacetylated polyvinyl alcohol in the claimed coating composition, since it
is not explicitly included in the recited Markush group of additional binders (see
claim 22, component (d)).
We reverse the rejections of claims 1 and 22, and their dependent claims 2-6,
9, 11, 13, 14, and 22-26 as unpatentable over the combination of Tomizawa and
Miyachi.
Rejection of claims 9, 26, and 27 as unpatentable over Asano
Asano “discloses an ink jet recording material having a high gloss.” (Col. 1,
ll. 7-8, cited in Ans. 6.) The material “includes a multi-layered ink fixing layer,
formed on a substrate material and composed of an outermost ink fixing layer, and
one or more intermediate ink fixing layers superposed on each other, and each
includes a binder and a pigment selected from silica, aluminosilicate,

5 See also, Asano col. 11, ll. 23-24 (distinguishing between polyvinyl alcohol and
modified polyvinyl alcohols).
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alumina and zeolite.” (Asano Abstract.) Asano discloses “the surface of the
outermost ink fixing layer preferably has a gloss at a specular angle of 75 degrees
of 30% or more, determined in accordance with JIS P 8142.” (Col. 3, ll. 61-63.)
The Examiner finds Asano suggests an outermost fixing layer meeting the
limitations recited in appealed claims 9, 26, and 27, which depend from claims 1
and 22. (See Ans. 4.) In the exemplary embodiment referenced by the Examiner,
“the [ ] outermost fixing layer comprises fine silica, a cationic
diallylmethylammonium chloride-acrylamide copolymer, and a cationic aqueous
polyesterpolyurethane resin” (id. (citing Asano col. 19, ll. 44-60)). The
embodiment referenced by the Examiner also includes a release agent. (Asano col.
19, ll. 59-60.) However, Asano identifies release agents as an optional component
of the outermost ink fixing layer. (Id. at col. 16, ll. 50-51.) The Examiner does
not find the weight ratios of cationic polymer and silica in the referenced
embodiment fall within Appellant’s claimed ranges, but notes Asano provides a
more general disclosure that the cationic polymer and silica (pigment) are present
in amounts which overlap the ranges recited in claims 1 and 22. (Ans. 4 (citing
Asano col. 14, ll. 40-45).) The Examiner further finds Asano discloses the
composition has a gloss value which overlaps Appellant’s claimed value of “about
90 or more at 60°” (claims 1 and 26). (Ans. 6 (“While gloss at 75° is not
equivalent to claimed gloss at 60°, the amount of gloss (at least 30%) overlaps with
claimed range of 90 or more[]. Also, the gloss at the higher angle of 75° is
expected to give lower values of gloss.”); see also, Ans. 4 (citing Asano col. 17, ll.
20-26 (“To provide a photograph-printing paper sheet-like appearance on the ink
jet recording material of the present invention, the 75° specular gloss of the surface
of the outermost ink fixing layer determined in accordance with Japanese Industrial
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standard (JIS) P8142 is preferably 30% or more, more preferably 40% or more,
still more preferably 50% or more, further preferably 65% or more.”)).)
Appellant argues “one of ordinary skill in the art would never be lead [sic,
led] to the amounts set forth in the claims” because the ranges in Asano col. 14, ll.
40-45 “are so broad and not limited to the specific cationic compounds and the
specific colloidal silica.” (Reply Br. 5.) Appellant also argues the “disclosed gloss
in Asano of at least 30% is significantly lower than [Appellant’s] claimed range of
90 or more.” (Reply Br. 5.)
A prima facie case of obviousness exists where the prior art and claimed
ranges overlap, as well as in those cases where the claimed range and the prior art
range, though not overlapping, are sufficiently close that one skilled in the art
would have expected them to have the same properties. See, e.g., In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469 (Fed.
Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); Titanium Metals
Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). “[T]he existence of
overlapping or encompassing ranges shifts the burden to the applicant to show that
his invention would not have been obvious.” In re Peterson, 315 F.3d at 1330.
This burden can be met either by a showing that the prior art taught away from the
invention or by a showing of new and unexpected results relative to the prior
art. Tyco Healthcare Group LP v. Mutual Pharmaceutical Co., Inc., 642 F.3d
1370, 1372-73 (Fed. Cir. 2011) (citing Iron Grip Barbell Co., Inc. v. USA Sports,
Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004)).
The Examiner identified disclosure in Asano (see Asano col. 14, ll. 40-45
supra p. 7) which supports the Examiner’s findings that Asano discloses the
cationic polymer and silica are present in amounts which overlap the ranges recited
in claims 1 and 22. The Examiner also identified disclosure in Asano which
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provides a reasonable basis for the Examiner’s finding that Asano’s composition
would have been expected to have a gloss value which overlaps Appellants’
claimed value of “about 90 or more at 60°” (claims 1 and 26) (see col. 17, ll. 20-26
supra pp. 7-8). Thus, the Examiner shifted the burden to Appellant to establish
that the claimed invention would not have been obvious. The arguments in
Appellant’s Appeal and Reply Briefs alone are not sufficient to meet this burden.
Accordingly, we affirm the rejection of claims 9, 26, and 27, as well as claims 1
and 22, as unpatentable over Asano. See Ormco Corp. v. Align Technology, Inc.,
498 F.3d 1307, 1319-20 (Fed. Cir. 2007) (explaining that when dependent claims
“were found to have been obvious, the broader claims . . . must also have been
obvious”).
CONCLUSION
For the reasons stated above, we reverse the rejections based on the
combination of Tomizawa and Miyachi, but affirm the rejection based on Asano.
The Examiner’s decision to reject claims 1, 9, 22, 26, and 27 is AFFIRMED. The
Examiner’s decision to reject claims 2-6, 11, 13-15, 17-21, and 23-25 is
REVERSED.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART

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