Ex Parte Makau et al

Patent Trial and Appeal BoardMar 14, 2016

13033406 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/033,406 02/23/2011 22879 7590 03/16/2016 HP Inc. 3390 E. Harmony Road Mail Stop 35 FORT COLLINS, CO 80528-9544 FIRST NAMED INVENTOR Fredrick Mu ya Makau 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82600631 8797 EXAMINER GUO, TONG ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 03/16/2016 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 yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FREDRICK MUY A MAKAU and DREY AM. ALFEKRI Appeal2014-005554 Application 13/033,406 Technology Center 1700 Before PETER F. KRATZ, GEORGE C. BEST, and WESLEY B. DERRICK, Administrative Patent Judges. KRATZ, Administrative Patent Judge. This is a decision on an appeal under 35 U.S.C. Â§ 134 from the Examiner's final rejection of claims 1-19. We have jurisdiction pursuant to 35 U.S.C. Â§ 6. We reverse. Appellants' claimed invention is directed to a canvas having a base layer, a gesso layer, a microporous layer on the gesso layer, and a transparent layer, as well as a method of forming a textured canvas. Claims 1 and 7 are illustrative and reproduced below: 1. A canvas comprising: a base layer; a gesso layer on said base layer; Appeal2014-005554 Application 13/033,406 a microporous layer on said gesso layer, said microporous layer comprising uniform cracks formed according to a weave pattern of said base layer; and a transparent layer to fill said cracks. 7. A method of forming a textured appearing canvas comprising forming a gesso layer on a base layer; forming a microporous layer on said gesso layer, said microporous layer comprising uniform cracks formed according to a weave pattern of said base layer; and forming a transparent layer to fill said cracks. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Higuma et al., Bi et al., Niu et al., Chen us 4,785,313 US 2005/0238826 Al US 2008/0254240 Al WO 2009/091361 Al Nov. 15, 1988 Oct. 27, 2005 Oct. 16, 2008 July 23, 2009 The Examiner maintains the following grounds of rejection: Claims 1, 2, 5-8, 13, and 14 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Niu in view of Chen. Claims 5 and 13 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Niu in view of Chen and Higuma. Claims 3, 4, 9-12, and 15-19 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Niu in view of Chen and Bi. We reverse the stated rejections. Our reasoning follows. It is well settled that the burden of establishing a prima facie case of non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). 2 Appeal2014-005554 Application 13/033,406 Here, the Examiner's reliance on a combination of Niu and Chen to underpin all of the stated obviousness rejections is not well-founded. In this regard and as indicated in the Examiner's first stated obviousness rejection, the Examiner relies on Niu for disclosing a canvas that includes a base canvas layer, a gesso layer on the base layer, and an ink receptive layer on the base layer, which ink receptive layer is a microporous layer and includes cracks (Final Office Action 2; Ans. 3, 6; Niu i-fi-f l, 23, 33). However and as argued by Appellants, the Examiner has not established that either of Niu or Chen teaches a microporous layer in combination with a gesso layer (App. Br. 11 ). In this regard, the Examiner has not established that Niu teaches that the ink receiving layer that can include microporous inorganic particles, such as silica as described in paragraph 23 of Niu is formed on a gesso layer, by referring to Niu's background disclosure relating to a gesso layer employed in conventional canvas structures as indicated in paragraph 1 of Niu. Indeed, Niu teaches that Niu's "ink receiving layer is disposed directly onto the substrate without a gesso layer" (i-f 14). Moreover, the Examiner does not contend that Chen disposes its ink receiving layer on a gesso layer; rather, the Examiner proposes replacing the ink receiving layer of Niu with the silica based porous ink receiving layer of Chen and adding the gloss layer of Chen to the porous ink receiving layer of Niu (Ans. 3, 6-7; Final Office Action 3-5). Consequently, even if we agreed with the Examiner that it would have been obvious for one of ordinary skill in the art to replace the ink receiving layer of Niu with the ink receiving layer of Chen and to coat the clear gloss layer of Chen onto the replaced ink receiving layer of Niu, the Examiner has not supplied a basis for why one of ordinary skill in the art would have placed a gesso layer between the canvas base layer of Niu and the replaced 3 Appeal2014-005554 Application 13/033,406 ink receiving layer from Chen. This is because the Examiner has erred in asserting that Niu employs a gesso layer with Niu's microporous particle- containing ink receiving layer and the Examiner has not otherwise articulated why Niu and/or Chen would teach or suggest interposing a gesso layer at a location between a base layer and the ink receiving layer of Niu or Chen in a manner as required by all of the appealed claims subject to the first stated rejection. (Niu i-f 14; see appealed claims 1, 7). In addition, we concur with Appellants' argument indicating that the Examiner has erred in failing to reasonably establish that the proposed combination of Niu and Chen would have suggested that the replaced ink receiving layer was a microporous layer that comprises uniform cracks formed according to a weave pattern of the base layer as required by independent claims 1 and 7, and all of the other claims subject to the Examiner's first stated obviousness rejection (App. Br. 12-16; Reply Br. 5- 8). In this regard, the Examiner's reliance on Appellants' teachings as set forth in the subject Specification in an apparent attempt to establish inherency as to the required uniform cracks formation feature is misplaced given that the Examiner has not established that the claimed and prior art canvas structures and methods are otherwise identical (Ans. 4, 5, 7, 8; Spec. ,-r 20). Thus, the record indicates that the Examiner used impermissible hindsight in rejecting the Appellants' claims. See In re Warner, 379 F.2d 1011, 1017 (CCP A 1967) ("A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art"). Accordingly, we do not sustain the Examiner's first stated rejection. 4 Appeal2014-005554 Application 13/033,406 As for the Examiner's separate rejection of dependent claims 5 and 13 over Niu and Chen together with Higuma, the Examiner relies on Higuma for certain additional features called for in these dependent claims, not for establishing that Higuma cures the above-noted deficiencies in the base combination of Niu and Chen (Final Office Action 6; Ans. 9). It follows that we do not sustain the latter rejection. Concerning the Examiner's separate rejection of independent claim 15 and certain dependent claims over Niu and Chen together with Bi, the Examiner further relies on Bi's disclosure pertaining to the use of boric acid (a cross-linker) in an amount so as to avoid cracking of the porous ink receiving layer as being suggestive of using an amount of boric acid so as to affect the appearance of uniform cracks formed along regions corresponding to a weave pattern of the base layer and/or corresponding to interstitial regions of the base layer, as variously required by the claims subject to this separate rejection (Final Office Action 7-11; Ans. 9-12). As argued by Appellants, however, the cited disclosure of Bi suggests avoiding crack formation, not controlling the appearance of uniform cracks that are formed in the ink receiving layer (App. Br. 17-20; Reply Br. 8-11). Moreover, the Examiner has not otherwise explained how Bi cures the deficiencies in the base rejection discussed above. It follows that we shall reverse the latter rejection. CONCLUSION The Examiner's decision to reject the appealed claims is reversed. REVERSED 5