Ex Parte McManus

Patent Trial and Appeal Board

Oct 12, 2016

11398786 (P.T.A.B. Oct. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111398,786 0410612006
22879 7590 10/14/2016
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Richard J. McManus
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.
82220180 8721
EXAMINER
REDDY, SATHAVARAM I
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
10/14/2016 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 RICHARD J. MCMANUS 1
Appeal2015-004869
Application 11/398,786
Technology Center 1700
Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
MONTE T. SQUIRE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-3, 6---8, 11, 21, 22, 25, and 26. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellant claims a media sheet comprising an inkjet image-receiving
layer that comprises about 25 to about 70% by dry weight of a first pigment
1 Hewlett-Packard Development Company, LP is identified as the real party
in interest. App. Br. 3.
Appeal2015-004869
Application 11/398,786
for absorption, wherein the first pigment comprises calcined clay, and that
further comprises about 30 to about 60% of a second pigment for gloss,
wherein the second pigment comprises kaolin clay or precipitated calcium
carbonate (independent claim 1; see also remaining independent claim 8).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A media sheet, comprising:
a substrate; and
an inkjet image-receiving layer formed on the substrate, the inkjet
image-receiving layer having a thickness from about 2 microns to about 50
microns; wherein the inkjet image-receiving layer comprises about 25 to
about 70 percent by dry weight of a first pigment for absorption, wherein the
first pigment comprises calcined clay and has an oil absorption of greater
than about 100 grams of oil per 100 grams of calcined clay, and
said calcined clay has a median particle size of less than about 1.6 microns;
wherein the inkjet image-receiving layer also comprises about 30 to
about 60 percent of a second pigment for gloss, wherein the second pigment
comprises kaolin clay or precipitated calcium carbonate, and wherein said
kaolin clay and said precipitated calcium carbonate have a median particle
size of less than about 650 nanometers;
wherein the gloss of the inkjet image-receiving layer is greater than
about 50 when measured at a 7 5 degree viewing angle.
The§ 112 Written Description Rejection
The Examiner rejects claims 1-3, 6, 7, 11, 21, 22, 24, and 25 under
the 1st paragraph of 35 U.S.C. § 112 as failing to comply with the written
description requirement on the ground that Appellant's original disclosure
does not support the claim 1 limitation "about 25 to about 70 percent by dry
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Appeal2015-004869
Application 11/398,786
weight of a first pigment for absorption" (claim 1) (Final Action 3; see also
Ans. 2).2
Appellant correctly argues that claim 11, which depends from non-
rejected claim 8, does not contain the above quoted claim 1 limitation (App.
Br. 18). The Examiner does not respond to this argument (see Ans. 2-3).
Accordingly, we do not sustain the written description rejection of
claim 11.
Appellant argues that the written description rejection of the
remaining claims is improper because paragraphs 7 and 9 disclose
embodiments wherein the inkjet image-receiving layer comprises about 25
to about 70% by dry weight of calcined clay for absorption (App. Br. 17;
Reply Br. 6). However, as correctly indicated by the Examiner (Final
Action 3; Ans. 2-3), these disclosures are specific to calcined clay and
therefore do not provide descriptive support for the broader claim 1
recitation of a first pigment generically. See Ariad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en bane) ("[t]he written
description requirement also ensures that when a patent claims a genus by its
function or result, the specification recites sufficient materials to accomplish
that function").
We sustain, therefore, the written description rejection of claims 1-3,
6, 7, 21, 22, 24, and 25.
2 In the Final Action, the Examiner also criticizes the claim 1 limitation
"about 30 to about 60 percent of a second pigment for gloss" (claim 1) as
lacking descriptive support (Final Action 3) but effectively withdraws this
criticism in the Answer by conceding that the limitation is described in the
Specification (i.e., Spec. i-f 8) (Ans. 3).
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Appeal2015-004869
Application 11/398,786
The§ 103 Rejection3
The Examiner rejects all appealed claims under 35 U.S.C. § 103(a) as
unpatentable over Kitamura et al. (US 6,465,086 B 1, issued Oct. 15, 2002)
("Kitamura") in view of Schliesman (US 2004/0076772 Al, published Apr.
22, 2004) (Final Action 4-7). In rejecting claims 1, 3, and 26, the Examiner
finds that Kitamura discloses an upper recording layer that reads on the
claimed inkjet image-receiving layer wherein the upper recording layer
contains at least one pigment from a group comprising the claimed calcined
clay, kaolin, calcium carbonate, and plastic pigments and having average
primary particle sizes within the claimed median particle size range (id. at 4-
5, 7).
Appellant points out that Kitamura discloses "the smaller particles in
the upper recording layer can provide high gloss, while the larger particles in
the under recording layer can provide high absorption" (App. Br. 22 (citing
Kitamura col. 5, 11. 18-31)) and argues that "Kitamura does not teach a
single image-rece1vmg layer that includes both a first pigment for absorption
and a second pigment for gloss as required by claim 1" (id. at 23). 4
3 Appellant presents arguments specifically directed to independent claims 1
and 8 as well as dependent claims 3 and 26 but does not present separate
arguments specifically directed to the other claims under rejection (App. Br.
21-25). Therefore, these other claims will stand or fall with their parent
independent claims of which claim 1 is representative.
4 We emphasize that Appellant does not challenge the Examiner's
conclusion that it would have been obvious to provide the upper inkjet
image-receiving layer of Kitamura with the thickness values disclosed by
Schliesman and required by the independent claims (App. Br. 21-25; cf
Final Action 5).
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Appeal2015-004869
Application 11/398,786
Appellant's argument is not persuasive. As indicated above and not
disputed by Appellant, the Examiner finds that Kitamura discloses providing
the upper layer with at least one pigment from a group that includes the
claimed pigments and discloses a particle size range that includes the
claimed size range (Final Action 4-5, 7; Ans. 3--4 (citing Kitamura col. 8, 11.
19-34)). These disclosures would have suggested the pigments and size
ranges recited in argued claims 1, 3, and 26. Further, the Examiner
accurately explains that Appellant fails to present any evidence that such
pigments in Kitamura's upper layer would not be capable of providing the
absorption and gloss functions of the identical pigments recited in claim 1
(Ans. 4). On the other hand, such capability is evinced by the fact that the
pigment types and sizes recited in the argued claims and disclosed by
Kitamura are identical. For these reasons, Appellant fails to show error in
the Examiner's determination that Kitamura teaches or would have
suggested an upper inkjet image-receiving layer having the pigments
required by independent claim l as well as dependent claims 3 and 26.
Regarding the additional plastic pigment limitations of dependent
claims 3 and 26 specifically, Appellant states that, because Kitamura's
pigment list "includes twenty-four different pigments ... , a person of skill in
the art would have to choose from over two thousand different combinations
of three pigments on the list to arrive at the combination of pigments recited
in claim 3 [and claim 26]" (App. Br. 24; see also id. at 25). Appellant then
argues without embellishment that "[i]t would not have been obvious for a
person of skill in the art to create the composition recited in claim 3 [and
claim 26] based on the disclosure of Kitamura, without any teaching to use
this combination of pigments" (id. at 24; see also id. at 25).
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Appeal2015-004869
Application 11/398,786
That an artisan would have to choose three specific pigments from a
list of over two thousand different combinations, by itself, is inadequate to
establish nonobviousness. See Merck & Co. v. Biocraft Laboratories, Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) ("That the '813 patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious."). Furthermore, Appellant offers no explanatory
support for the unembellished contention that it would not have been
obvious to select from Kitamura's pigment list the three pigments required
by claims 3 and 26. For these reasons, Appellant's argument regarding these
claims lacks persuasive merit.
For the reasons stated above and given by the Examiner, we sustain
the § 103 rejection of all appealed claims over Kitamura in view of
Schliesman.
Conclusion
The decision of the Examiner is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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