Appeal 2007-2677
Application 10/622,229
known composition, even when that property is not obvious from the prior
art, cannot impart patentability to claims to the known composition).
As for gloss, referring to Example 7 and Table 3 of Darsillo, the
Appellants argue that glossy coatings are only obtained in Darsillo after
calendering. Brief 7.
The teachings of Darsillo are not limited to the specific examples
disclosed. Darsillo expressly discloses that the recording medium has a 75º
specular gloss of at least about 15%, and more preferably, a 75º specular
gloss of at least about 65%. Darsillo 3:25-31. To the extent that Darsillo
discloses that gloss may be increased by calendering the recording medium,
we conclude that the claims do not exclude a calendered recording medium.
As for porosity, the Appellants argue that the claimed porosity is not
shown in Darsillo. The Appellants argue that Darsillo “discloses porosity of
the particles and not the layer of the image-receiving member.” Brief 10.
The Appellants’ argument is not persuasive. Namely, the Appellants have
failed to demonstrate that the porous particles of Darsillo would not be
expected to form a porous layer.
Based on the foregoing, it is reasonable to conclude that Darsillo
renders the claimed invention prima facie obvious. The Appellants rely on
secondary considerations, namely “unexpected results,” to rebut the prima
facie case of obviousness. Specifically, the Appellants argue that the data in
Table 1 of the Appellants’ Specification shows that the claimed invention
exhibits high porosity, high gloss, and low fade compared to several
comparative examples (Examples C-1 to C-7). The Appellants do not
compare the claimed invention with any actual examples in Darsillo.
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