Ex Parte Beasley et al

Board of Patent Appeals and Interferences

Apr 28, 2009

10656416 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BILLY FRANKLIN BEASLEY JR.,
ANTHONY LOUIS CROSS, ROBERT MICHAEL SCHOCK,
JOHANNES W. VAN DE CAMP, PAM A. HORINE, and
TERRI L. SMITH
____________

Appeal 2009-0075
Application 10/656,416
Technology Center 1700
____________

Decided:1 April 28, 2009
____________

Before, EDWARD C. KIMLIN, PETER F. KRATZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0075
Application 10/656,416

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 22, all of the claims pending
in the above-identified application. We have jurisdiction pursuant to
35 U.S.C. § 6.
We AFFIRM.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a paperboard tube or sheet,
which may be multi-layered. (Claims 1, 5, 15, and 19). According to
Appellants, this paperboard may be used to form, inter alia, corrugated
boxes. (Spec. 6).
Further details of the appealed subject matter are recited in claims
1, 5, 15, and 19, which are reproduced below:
1. A paperboard sheet comprising:
at least one layer containing cellulose fibers and a sufficient quantity
of wood sawdust such that the resulting paperboard sheet contains between 1
and 40 percent wood sawdust by weight, wherein at least 95 percent of the
sawdust by weight has a particle size greater than 350 micrometers and less
then [sic] 3175 micrometers.

5. A multi-layer paperboard sheet comprising:
at least one relatively low-density paperboard layer containing
cellulose fibers and a quantity of wood sawdust, wherein at least 95 percent
of the sawdust by weight has a particle size greater than 350 micrometers
and less then [sic] 3175 micrometers;
at least one relatively high-density layer containing cellulose fibers,
wherein there is at least a 1% difference in density between the at least one
relatively low-density layer and the at least one relatively high-density layer;
and
wherein the at least one relatively low-density layer and the at least
one relatively high density layer are joined together producing a multi-layer
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paperboard sheet, and wherein the resulting paperboard sheet contains
between 1 and 40 percent wood sawdust by weight.

15. A paperboard tube comprised of a plurality of paperboard plies,
wherein
at least one of the plies has at least one layer that contains cellulose
fibers and a sufficient quantity of wood sawdust such that the resulting at
least one paperboard ply contains between 1 and 40 percent wood sawdust
by weight, wherein at least 95 percent of the sawdust by weight has a
particle size greater than 350 micrometers and less then [sic] 3175
micrometers; and
wherein said plurality of paperboard plies are wound about an axis
and adhered together to form a paperboard tube.

19. A paperboard tube comprised of:
a paperboard ply having at least one layer containing cellulose fibers
and a sufficient quantity of wood sawdust such that the resulting paperboard
ply contains between 1 and 40 percent wood sawdust by weight, wherein at
least 95 percent of the sawdust by weight has a particle size greater than 350
micrometers and less then [sic] 3175 micrometers; and
wherein the paperboard ply is wound about an axis and overlapped on
itself and adhered together to form a low-density paperboard tube.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references2:

2 We also note that Appellants refer to the Sigma-Aldrich Co. document
"Catalog/Handbook of Fine Chemicals" in the Evidence Appendix section of
the Appeal Brief. (App. Br. 13). However, Appellants do not dispute the
Examiner's statement in the Answer that this document was not entered into
the record. (Compare Ans. 4 with Reply Brief in its entirety). Since this
document is not of record, we shall not consider it. 37 C.F.R. §
41.37(c)(1)(ix) (2007). Moreover, the Evidence Appendix erroneously
contains the following reference: Clark, James d'A., "Pulp Technology and
Treatment for Paper," Second Ed., Miller Freeman Publications, Inc., p. 473
(1985) (hereinafter "Clark"). Appellants do not rely on Clark to support any
arguments made in the Appeal Brief, so why it was included in the Evidence
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Clapp US 1,765,860 June 24, 1930
McCowan US 5,203,965 Apr. 20, 1993
Gomez US 5,227,024 Jul. 13, 1993
Qui US 5,505,395 Apr. 9, 1996
Chance US 5,770,013 Jun. 23, 1998
Howard US 6,033,352 Mar. 7, 2000

Appellants seek review of the following rejections3:
1) Claims 1-4 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Chance in view of the disclosure of Clapp or McCowan;
2) Claims 5-18 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Chance in view of the disclosure of Clapp or McCowan and
further in view of the disclosures of Gomez and Qui; and
3) Claims 19-22 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Chance in view of the disclosure of Clapp or McCowan and
further in view of the disclosures of Gomez, Qui, and Howard.
With respect to rejection (1), Appellants separately argue independent
claim 1. (App. Br. 5-10 and Reply Br. 1-3). Appellants do not advance any
specific argument regarding the rejection of the remaining claims, which
ultimately depend from independent claim 1. Id. Instead, Appellants refer
to their arguments made in connection with the rejection of independent
Appendix is unclear. Additionally, Appellants do not indicate where Clark
was entered into the record as required by 37 C.F.R. § 41.37(c)(1)(ix)
(2007). For the above reasons, we have not considered Clark.
3 As is apparent from pages 4-9 of the Answer, the Examiner has withdrawn
the § 103(a) rejection over the disclosure of Clapp set forth in the Final
Office Action mailed September 30, 2006.
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claim 1. Id. Accordingly, we address Appellants' arguments with respect to
independent claim 1 only.
With respect to rejection (2), Appellants separately argue independent
claims 5 and 15. (App. Br. 10-12 and Reply Br. 1-3). Appellants do not
advance any specific argument regarding the rejection of the remaining
claims, which ultimately depend from independent claim 5 or 15. Id.
Instead, Appellants refer to their arguments made in connection with the
rejection of either independent claim 5 or 15. Id. Accordingly, we address
Appellants' arguments with respect to independent claims 5 and 15 only.
With respect to rejection (3), Appellants separately argue independent
claim 19. (App. Br. 12-13 and Reply Br. 1-3). Appellants do not advance
any specific argument regarding the rejection of the remaining claims, which
ultimately depend from independent claim 19. Id. Instead, Appellants refer
to their arguments made in connection with the rejection of independent
claim 19. Id. Accordingly, we address Appellants' arguments with respect
to independent claim 19 only.

ISSUES
With respect to rejections (1), (2), and (3), the Examiner determines
(Ans. 4-9) that Chance in combination with Clapp or McCowan would have
suggested a paperboard sheet or tube having the recited particle size of wood
sawdust. Appellants argue (App. Br. 7) that "[t]here is no disclosure,
teaching or suggestion in Clapp that would direct one of skill in the art to
adopt a particle size between 350 to 420 µm." Appellants argue (Reply Br.
2) that
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Clapp further states that this sawdust-containing product is "not quite
as satisfactory" as when wood flour is used. Clapp, page 2, lines 70-
79. An objective reading of Clapp makes clear that the
cellite/kieselguhr, sawdust, china clay slurry "forms" on the
cylindrical mold despite the presence of the coarse sawdust and not
because of it. Accordingly, one of ordinary skill in the art who was
presented with Clapp would certainly not be taught, as the Examiner
suggests, to use sawdust in a papermaking slurry in order to ensure
good formation on a cylindrical papermaking mold.

In addition, Appellants argue that Clapp does not teach nor would
have suggested the percentage of sawdust particles required by claims 1, 5,
15, and 19. (App. Br. 6). Specifically, Appellants argue that "Clapp
discloses a '40 to 80 mesh sieve' and, despite omitting the customary positive
(+) and negative (-) signs, appears to suggest that 90 percent of the 'finely
divided sawdust' would pass through a 40 mesh sieve (420 µm) and be
retained by an 80 mesh sieve (177 µm)." (App. Br. 6).

Appellants also argue (App. Br. 7) that

Clapp teaches away from adopting a composition of sawdust wherein
the claimed percentage of sawdust is within the claimed particle size
range. More specifically, Applicant respectfully submits that if one of
ordinary skill in the art were to produce a paper carrier web from
Clapp's less desired material, i.e., sawdust, such an artisan would be
taught by Clapp to adopt a sawdust particle size distribution that is
focused predominantly toward the disclosed lower limit of 177 µm to
more closely approximate Clapp's more desired material, i.e., wood
flour. . . .

In addition, Appellants argue that
McCowan teaches that longer wood fibers are preferred to shorter
wood fibers when attempting to increase paper strength. Thus, if one
of ordinary skill in the art were to apply McCowan to the task of
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manufacturing relatively high-strength paperboard, such an artisan
would be led to adopt a particle size distribution that is heavily
focused toward the upper limit of the disclosed range (i.e., 6350 µm).
McCowan thus teaches away from adopting a particle size distribution
in the manufacture of paperboard that is heavily focused toward the
lower end of the disclosed range (i.e., 1587.5 µm).

(App. Br. 9) (emphasis omitted). Also, Appellants argue (Reply Br. 2) that
"[a]lthough suggesting that particles up to 6360 µm may have a sufficient
TSF for making tissue or writing paper, McCowan does not teach or suggest
that such a 'substantial TSF' would be sufficient for making a stronger
paperboard product."
Thus, the first issue is: Have Appellants shown reversible error in the
Examiner's determination that the combined teachings of Chance and Clapp
or McCowan would have suggested a paperboard sheet or tube having at
least 95 percent of the sawdust by weight with a particle size greater than
350 micrometers and less than 3175 micrometers as required by claims 1, 5,
15, and 19 within the meaning of § 103(a)? We decide this issue in the
negative.
With respect to rejection (2), the Examiner determines (Ans. 4-9) that
Chance in combination with the other cited prior art references would have
suggested a paperboard sheet or tube having the recited particle size range of
wood sawdust.
Appellants argue (App. Br. 10-12) that
[Gomez teaches away from the claimed invention because] its low-
density filler is comprised of a pulverized vegetable filler or wood
waste material wherein "at least 95% by weight of the particles . . . are
less than 150 micrometers in size and at least 80 % by weight of the
particles are greater than 10 micrometers in size."
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Appellants also argue (App Br. 11) that
[Because] the Qui reference does not teach or suggest that such
differing densities are attributable to the use of sawdust within a low-
density paperboard layer[,] . . . Qui cannot teach or suggest that "at
least 95 percent of the sawdust by weight has a particle size greater
than 350 micrometers and less than 3175 micrometers."

Thus, the second issue is: Have Appellants shown reversible error in
the Examiner's determination that Chance in combination with the other
cited prior art references would have suggested a paperboard sheet or tube
having at least 95 percent of the sawdust by weight with a particle size
greater than 350 micrometers and less than 3175 micrometers as required by
claims 5 and 15 within the meaning of § 103(a)? We decide this issue in the
negative.
With respect to rejection (3), the Examiner finds (Ans. 4-9) reasons
for combining the cited prior art references. Appellants argue that the
combination of the cited prior art references "is impermissibly based on
hindsight. There is no implicit or explicit motivation, outside of Applicant's
present disclosure to combine this vast array of references." (App. Br. 13).
Thus, the third issue is: Have Appellants shown reversible error in the
Examiner's reasons for combining the cited prior art references (i.e., Chance,
McCowan or Clapp, Gomez, Qui, and Howard) within the meaning of §
103(a)? We decide this issue in the negative.

RELEVANT FINDINGS OF FACT (FF)

1. Appellants do not specifically dispute the Examiner's finding that
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Chance et al discloses a 3-ply paperboard comprising wood
(cellulose) fibers and sawdust. The wood fiber material is present in
an amount of about 20-25% by weight of the paperboard and
comprises from 5-70% sawdust (col 4, lines 36-39 and col 8, lines 32-
38). Thus, the amount of sawdust that can be present by weight of the
multi-ply paperboard can be from 1 to 17.5%, which significantly
overlaps the claimed ranges.
. . . .
Clapp discloses a multi-layer liner board or paper comprising a
bottom layer containing cellulosic fibers and a top layer having 5-20
parts by weight bleached sulphite pulp, 10-20 parts wood flour . . .
and 75 to 105 parts other material (Claim 1; p 1, lines 58-72; p2, lines
5-13, 70-74). . . . The sawdust particles are capable of passing through
a 40-80 mesh sieve, or having a particle size range from about 177 to
about 420 µm (p2, lines 5-13, 71-74). . . .
. . . .
McCowan et al discloses that making a paper using sawdust
that has been screened to a particle size of greater than about 1/16
inch (about 1590 µm) results in paper having good strength properties
(TSF factor). McCowan also discloses that the paper can have at least
30% sawdust (Abstract; col 1, lines 37-44; col 4, line 51 to col 5, line
11).
. . . .
. . . McCowan discloses . . . sawdust with particle sizes in the
upper portion of the claimed range to obtain good strength properties.
. . . .
The only size criteria recited by McGowan for the portion of
sawdust useable in papers is that the particle size fraction separated by
the number 3 and 12 screens (about 1590 to 6000 micrometers)
provides substantial TSF value. . .
(Compare Ans. 5-16 with App. Br. 5-14 and Reply Br. 1-3).

2. Clapp teaches "paper or card-board" made from, inter alia, wood
flour. (Clapp, p. 1, ll. 1-20). Clapp teaches that this wood flour is
useful as a "carrier" for the purpose of "forming" on a cylinder mold
of a paper machine. (Clapp, p. 2, ll. 35-43). Although Clapp states
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that "in my opinion the results are not quite as satisfactory when
finely-divided sawdust is used as when wood flour is used," nowhere
does Clapp discourage the use of sawdust. (Clapp, p. 2, ll. 75-78). To
the contrary, Clapp states that "I would not consider it a departure
from the spirit and scope of the invention if one were to . . . substitute
. . . wood flour [for] . . . sawdust." (Clapp, p. 2, ll. 68-72).
3. McCowan teaches using sawdust as an ingredient in paper products,
one of which may be a cardboard box. (McCowan col. 1, ll. 15-34
and col. 2, ll. 7-8). Although McCowan teaches that prior to its
invention "[a] high TSF [total strength factor] requirement generally
demands a greater proportion of long fibered pulp," nowhere does
McCowan discourage the use of the lower limit of its particle size
range of 1590 - 6000 micrometers. (McCowan, col. 1, ll. 42-44 and
FF 1). To the contrary, McCowan states a sawdust "particle that will
pass through a number 12 screen . . . has no perceived TSF value. Yet
particles about that size and up to number 3 screen size . . . ha[ve] [a]
substantial TSF value." (McCowan, col. 4, ll. 51-56).
4. Although McCowan discloses (col. 2, ll. 6-9) in its preferred
embodiments that sawdust is an ingredient in tissue and writing paper
products, McCowan does not limit its disclosure to only these
products. Indeed, McCowan discloses that "[t]his invention relates to
utilization of sawdust . . . for paper production" and that "different
types of paper are produced from wood pulp." (McCowan, col. 1, ll.
9-27). These different types of paper include, inter alia, cardboard
boxes. (McCowan, col. 1, ll. 25-36).
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5. Appellants do not dispute the Examiner's finding that Qui teaches "a
spirally wound paperboard tube having multiple plies of lower and
higher densities . . . [and] that the plies are coated with adhesive prior
to winding to adhere them together . . . [and] that the density of
paperboard can be varied by varying raw materials or additives."
(Compare Ans. 7-8 with App. Br. 5-14 and Reply Br. 1-3). Also, with
respect to rejection (2), Appellants do not dispute the Examiner's
reasons for combining Chance with Qui and Clapp or McCowan.
(Compare Ans. 8-9 and 16 with App. Br. 5-14 and Reply Br. 1-3).
6. Although Gomez discloses that "if the particles of micronized
vegetable filler have mean dimensions equal to or larger than 150
micrometers, the resulting fibrous sheet product exhibits uniformity
defects, especially formation defects," this does not constitute a
teaching away from using sawdust having a particle size in the recited
range to decrease the density of the sheet. (Gomez, col. 6, ll. 13-16).
7. Additionally, Appellants do not dispute the Examiner's finding that
Gomez teaches that it is well known in the art that vegetable fillers
(e.g., wood waste obtained from sawing) decrease the density of
paper. (Compare Ans. 8, 14, 16 with App. Br. 5-14 and Reply Br. 1-
3).
8. Appellants do not dispute the Examiner's finding that "Howard . . .
teaches that it was known in the art to wind paperboard tubes with
plies overlapping at the seams to form a spirally wound tube."
(Compare Ans. 16 with App. Br. 5-14 and Reply Br. 1-3). In this
regard, Howard teaches a trimmed ply 62 is applied to an adhesive
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coated surface of paperboard ply 50 to form a spiral seam 68 in order
to "provid[e] spiral wound tubes of improved uniformity, appearance,
and/or strength." (Howard, col. 4, ll. 40-45 and col. 6, ll. 30-47).

PRINCIPLES OF LAW
“In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003).
"[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references." In re Keller, 642 F.2d 413, 426 (CCPA 1981).
“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning . . .” In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971). Reconstruction is proper if it relies
upon knowledge within the level of ordinary skill at the time of the invention
and not upon knowledge gained solely from Appellants' disclosure. Id.
It is well settled that "a reference must be considered in its entirety,
and it is well established that the disclosure of a reference is not limited to
specific working examples contained therein." In re Fracalossi, 681 F.2d
792, 794 n.1 (CCPA 1982).
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). "A known or obvious composition does not become
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patentable simply because it has been described as somewhat inferior to
some other product for the same use." Id. “[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered." Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989).
“[W]here the prior art gives reason or motivation to make the claimed
[invention] . . . the burden (and opportunity) then falls on an applicant to
rebut that prima facie case. Such rebuttal or argument can consist of . . . any
other argument or presentation of evidence that is pertinent.” In re Dillon,
919 F.2d 688, 692-93 (Fed. Cir. 1990) (en banc).
It is well settled that objective evidence must be factually supported
by an appropriate affidavit or declaration. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
A factual finding not shown by Appellants to be erroneous may be
accepted as fact. In re Kunzmann, 326 F.2d 424, 426 n. 3 (CCPA 1964).

ANALYSES AND CONCLUSIONS

ISSUE (1): Have Appellants shown reversible error in the Examiner's
determination that the combined teachings of Chance and Clapp or
McCowan would have suggested a paperboard sheet or tube having at least
95 percent of the sawdust by weight with a particle size greater than 350
micrometers and less than 3175 micrometers as required by claims 1, 5, 15,
and 19 within the meaning of § 103(a)?

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Rejections based on Clapp
With respect to rejections (1), (2), and (3), Appellants do not dispute
that the combined teachings of Chance and Clapp would have taught or
suggested all the features of claims 1, 5, 15, and 19, except for the recited
percentage of sawdust having the recited particle size range. (Compare Ans.
4-17 with App. Br. 5-14 and Reply Br. 1-3; see also FF 1). Appellants argue
(App. Br. 7) that "[t]here is no disclosure, teaching or suggestion in Clapp
that would direct one of skill in the art to adopt a particle size between 350
to 420 µm." We disagree.
Clapp teaches "paper or card-board" (paperboard) made from, inter
alia, wood flour or sawdust. (FF 1-2). Appellants do not dispute the
Examiner's determination that Clapp's sawdust has a particle size range from
about 177 to about 420 micrometers. (FF 1). Implicit in this teaching is that
100% of the sawdust has a particle size range from about 177 to about 420
micrometers. Thus, we determine that Clapp's percentage of sawdust meets
the recited percentage of sawdust particles.
Thus, because Clapp's particle size range overlaps the recited particle
size range, we agree with the Examiner's determination that Clapp would
have suggested to one of ordinary skill in the art to employ wood sawdust
having the recited particle size range within the meaning of 35 U.S.C. §
103(a). Peterson, 315 F.3d at 1330. In addition, because the Examiner uses
the knowledge of those skilled in the art at the time of the invention as a
reason for employing sawdust having the recited particle size range, we
determine that the Examiner does not use impermissible hindsight in
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determining the combined teachings of Chance and Clapp would have
rendered obvious the claimed invention.
Appellants next argue that Clapp teaches away from the recited
particle size range because one of ordinary skill would "adopt a sawdust
particle size distribution that is focused predominantly toward the disclosed
lower limit of 177 µm to more closely approximate Clapp's more desired
material, i.e., wood flour." (App. Br. 7). Appellants' assertion that the 177
micrometer sawdust "more closely approximate[s]" the particle size of wood
flour is merely attorney argument with no basis in fact. It is well settled that
objective evidence must be factually supported by an appropriate affidavit or
declaration. See De Blauwe, 736 F.2d at 705. In this case, Appellants have
not provided any persuasive evidence in an affidavit or declaration to
support their argument. Moreover, Appellants have not directed us to any
persuasive evidence in the record to support their argument.
Accordingly, given that Appellants' argument is unsupported by any
factual evidence, we determine that Clapp does not teach away from the
recited range.
Appellants also argue that there is no reason to use sawdust in Clapp's
papermaking slurry because Clapp teaches that its papermaking slurry
"forms" on the cylindrical mold despite the presence of sawdust. (Reply Br.
2). Appellants' argument misses the mark. Although Clapp states that "in
my opinion the results are not quite as satisfactory when finely-divided
sawdust is used as when wood flour is used," Clapp also states that "I would
not consider it a departure from the spirit and scope of the invention if one
were to . . . substitute . . . wood flour [for] . . . sawdust." (FF 2).
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Thus, given that Clapp teaches two embodiments for its papermaking
slurry: one slurry composed of wood flour and the other slurry composed of
sawdust, we agree with the Examiner's determination that Clapp teaches
sawdust as an ingredient in its papermaking slurry.
Appellants allege that "Clapp discloses a '40 to 80 mesh sieve' and,
despite omitting the customary positive (+) and negative (-) signs, appears to
suggest that 90 percent of the 'finely divided sawdust' would pass through a
40 mesh sieve (420 µm) and be retained by an 80 mesh sieve (177 µm)."
(App. Br. 6). We do not find this allegation to be persuasive.
On this record, Appellants' allegation is merely attorney argument
with no basis in fact. Appellants have not provided any evidence to support
their allegation that "90 percent of the 'finely divided sawdust' would pass
through a 40 mesh sieve (420 µm) and be retained by an 80 mesh sieve (177
µm)." Thus, we cannot agree with Appellants that Clapp would not have
suggested this feature.
Therefore, because we determine that the Examiner has established a
prima facie case of obviousness, the burden properly shifted to Appellants to
present persuasive arguments or evidence refuting the prima facie case.
However, on this record, Appellants have not done so.
Accordingly, it follows that Appellants have not shown reversible
error in the Examiner's determination that Chance in view of Clapp would
have suggested a paperboard sheet or tube having at least 95 percent of the
sawdust by weight with a particle size greater than 350 micrometers and less
than 3175 micrometers as required by claims 1, 5, 15, and 19.

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Rejections based on McCowan
With respect to rejections (1), (2), and (3), Appellants do not dispute
that the combined teachings of Chance and McCowan would have taught or
suggested all the features of claims 1, 5, 15, and 19, except for the recited
percentage of sawdust having the recited particle size range. (Compare Ans.
4-17 with App. Br. 5-14 and Reply Br. 1-3; see also FF 1).
Appellants argue that "if one of ordinary skill in the art were to apply
McCowan to the task of manufacturing relatively high-strength paperboard,
such an artisan would be led to adopt a particle size distribution that is
heavily focused toward the upper limit of the disclosed range (i.e., 6350
µm)." (App. Br. 9)(emphasis omitted). We do not agree.
McCowan teaches using sawdust as an ingredient in paper products,
one of which may be a cardboard box (paperboard). (FF 3). Appellants do
not specifically dispute the Examiner's finding that McCowan teaches using
sawdust having a particle size range from about 1,590 to 6,000 micrometers.
(FF 1). Implicit in this teaching is that 100% of the sawdust has a particle
size range from about 1,590 to 6,000 micrometers.
Thus, we agree with the Examiner's determination that McCowan
would have suggested to one of ordinary skill in the art to employ the recited
particle size range of wood sawdust within the meaning of 35 U.S.C. §
103(a). Peterson, 315 F.3d at 1330.
Appellants next argue that "[a]lthough [McCowan] suggest[s] that
particles up to 6360 µm may have a sufficient TSF for making tissue or
writing paper, McCowan does not teach or suggest that such a 'substantial
TSF' would be sufficient for making a stronger paperboard product." (Reply
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Br. 2) (emphasis omitted). Although McCowan discloses in its preferred
embodiments that sawdust is an ingredient in tissue and writing paper
products, McCowan does not limit its disclosure to only these products. (FF
4). Indeed, McCowan discloses that "[t]his invention relates to utilization of
sawdust . . . for paper production" and that "different types of paper are
produced from wood pulp." (FF 4). These different types of paper include,
inter alia, cardboard boxes. (FF 4). Thus, we agree with the Examiner's
determination that McCowan teaches using sawdust as an ingredient in its
cardboard boxes.
With respect to Appellants' "teaching away" argument, although
McCowan teaches that prior to its invention "[a] high TSF [total strength
factor] requirement generally demands a greater proportion of long fibered
pulp," nowhere does McCowan discourage the lower limit of its particle size
range of 1590 - 6000 micrometers. (FF 3).
To the contrary, McCowan states a sawdust "particle that will pass
through a number 12 screen . . . has no perceived TSF value. Yet particles
about that size and up to number 3 screen size . . . ha[ve] [a] substantial TSF
value." (FF 3). In other words, sawdust particles sized from about 1,590
micrometers and larger have a substantial (i.e., high) TSF value. (FF 1, 3).
Thus, merely because McCowan teaches that prior to its invention long
fibered pulp was required to obtain a high TSF value does not constitute a
teaching away from McCowan's teaching in its preferred embodiment that
sawdust particles of about 1,590 micrometers and larger having a high TSF
value.
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Therefore, because a prima facie case of obviousness has been
established, we determine that the burden properly shifted to Appellants to
present persuasive arguments or evidence refuting the prima facie case.
However, on this record, Appellants have not done so.
Thus, it follows that Appellants have not shown reversible error in the
Examiner's determination that Chance in view of McCowan would have
suggested a paperboard sheet or tube having at least 95 percent of the
sawdust by weight with a particle size greater than 350 micrometers and less
than 3175 micrometers as required by claims 1, 5, 15, and 19 within the
meaning of § 103(a).

ISSUE (2): Have Appellants shown reversible error in the Examiner's
determination that Chance in combination with the other cited prior art
references would have suggested a paperboard sheet or tube having at least
95 percent of the sawdust by weight with a particle size greater than 350
micrometers and less than 3175 micrometers as required by claims 5 and 15
within the meaning of § 103(a)?

With respect to Appellants' arguments in rejection (2) directed to Qui
and Gomez, it is well settled that one cannot show non-obviousness by
attacking the references individually when the rejection is based on a
combination of references. Keller, 642 F.2d at 426.
As stated above, the Examiner relies on Clapp or McCowan to teach
the recited particle size range of wood sawdust. Appellants do not dispute
the Examiner's finding that Chance teaches a three-ply paperboard
comprising, inter alia, wood fibers and sawdust. (FF 1). In addition,
Appellants do not dispute the Examiner's finding that Qui teaches "a spirally
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Application 10/656,416

wound paperboard tube having multiple plies of lower and higher densities .
. . [and] that the plies are coated with adhesive prior to winding to adhere
them together . . . [and] that the density of paperboard can be varied by
varying raw materials or additives." (FF 5). Appellants also do not dispute
the Examiner's finding that Gomez teaches that it is well known in the art
that vegetable fillers (e.g., wood waste obtained from sawing) decrease the
density of paper. (FF 5). In addition, Appellants not dispute the Examiner's
reasons for combining Chance with Qui and Clapp or McCowan. (FF 5).
Therefore, we agree with the Examiner's determination that one of
ordinary skill in the art would have been led to design a multi-layered
paperboard sheet or paperboard tube having a plurality of paperboard plies
as taught by Chance and Qui using Clapp or McCowan's paperboard, which
is known to have a low density, to provide structural strength.
In reaching this determination, we have considered Appellants'
argument that Gomez teaches away from the claimed paperboard. (App. Br.
10). Although Gomez discloses that "if the particles of micronized
vegetable filler have mean dimensions equal to or larger than 150
micrometers, the resulting fibrous sheet product exhibits uniformity defects,
especially formation defects," this does not constitute a teaching away from
using sawdust having a particle size in the recited range to decrease the
density of the sheet. (FF 6).
If sawdust having a particle size in the recited range is used as
suggested by Clapp or McCowan, one of ordinary skill would have
understood that formation defects would have been a trade-off. However,
such a trade-off does not amount to discouraging the use of the recited
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Application 10/656,416

particle size range of sawdust to decrease the density. Accordingly, we do
not find that Gomez teaches away from the recited particle size range of
sawdust being greater than 350 micrometers and less than 3175 micrometers.
Thus, it follows that Appellants have not shown reversible error in the
Examiner's determination that the combined teachings of Chance and the
other cited prior art references would have suggested a paperboard sheet or
tube having at least 95 percent of the sawdust by weight with a particle size
greater than 350 micrometers and less than 3175 micrometers as required by
claims 5 and 15.

ISSUE (3): Have Appellants shown reversible error in the Examiner's
reasons for combining the cited prior art references (i.e., Chance, McCowan
or Clapp, Gomez, Qui, and Howard) within the meaning of § 103(a)?

With respect to rejection (3), as stated above, Chance in combination
with Clapp or McCowan teaches a paperboard having the recited particle
size range of wood sawdust.
In addition, Appellants do not dispute the Examiner's finding that
Gomez teaches that it is well known in the art that vegetable fillers (e.g.,
wood waste obtained from sawing) decrease the density of paper. (FF 7).
Nor do Appellants dispute the Examiner's finding that "Howard . . . teaches .
. . wind[ing] paperboard tubes with plies overlapping at the seams to form a
spirally wound tube." (FF 8). In this regard, Howard teaches a trimmed ply
62 is applied to an adhesive coated surface of paperboard ply 50 to form a
spiral seam 68 in order to improve the spiral wound tube's strength in order
to "provid[e] spiral would tubes of improved uniformity, appearance, and/or
strength." (FF 8).
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Thus, we agree with the Examiner's determination that one having
ordinary skill in the art would have been led to design a paperboard tube as
taught by Howard using the paperboard, which is known to have a low
density, suggested by Chance in combination with Clapp or McCowan. In
doing so, one of ordinary skill would have a reasonable expectation of
successfully obtaining a spirally wound tube having good strength.4
Moreover, the Examiner does not use impermissible hindsight but, rather,
the knowledge of those skilled in the art at the time of the invention as a
reason for employing sawdust having the recited particle size range.
Thus, it follows that Appellants have not shown reversible error in the
Examiner's reasons for combining the cited prior art references within the
meaning of § 103(a).

ORDER
Therefore, based on the Factual Findings set forth in the Answer and
above, we affirm the following:
1. The § 103(a) rejection of claims 1-4 over the disclosure of Chance
in view of the disclosure of Clapp or McCowan;
2. The § 103(a) rejection of claims 5-18 over the disclosure of Chance
in view of the disclosure of Clapp or McCowan and further in view of the
disclosures of Gomez and Qui; and
3. The § 103(a) rejection of claims 19-22 over the disclosure of
Chance in view of the disclosure of Clapp or McCowan and further in view
of the disclosures of Gomez, Qui, and Howard.

4 We note that a discussion of Qui is unnecessary to resolve the issue raised.
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Accordingly, the decision of the Examiner is affirmed.

TIME PERIOD
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)(v).

AFFIRMED

cam

ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
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