Appeal No. 2005-1332 Page 3
Application No. 09/774,064
OPINION
Hoshino describes a waterborne pigmented paper or paperboard coating composition
including, among other things, a pigment containing inorganic pigments and emulsion particles
as plastic pigments (Hoshino, ¶ 0016, ll. 6-10). Hoshino notes that hard emulsion particles have
been studied as additives for coating agents for reducing coating weight, improving gloss,
whiteness, opacity, etc. (Hoshino, ¶ 0002, ll. 1-4). According to Hoshino, the industrial use of
these emulsion particles as replacements for inorganic pigments such as kaolin, calcium
carbonate, talc, satin, etc. in the paper coating field is increasing (Hoshino, ¶ 0002, ll. 4-7).
Hoshino describes emulsion particles with a bimodal particle distribution (Hoshino, ¶
0009-10). The Examiner finds, and Appellants do not dispute, that the Examples of Hoshino
show the claimed proportion and diameters of the two emulsion polymer particles required by
claim 1 (Answer, p. 3; Brief and Reply Brief in their entirety). Nor is there any dispute that the
emulsion polymer particles of Hoshino meet the other requirements of the aqueous polymeric
dispersion recited in claim 1 (Answer, p. 3; Brief and Reply Brief in their entirety). Appellants’
arguments focus instead on the calcium carbonate concentration recited in the claim. The issue,
therefore, is whether Hoshino sufficiently describes including calcium carbonate in the
composition in an amount sufficient to anticipate the composition of the claim or whether there
is a sufficient reason, suggestion, or motivation to add calcium carbonate in the claimed amount
such that there is a prima facie case of obviousness.
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