Ex Parte Deka

Patent Trial and Appeal Board

Mar 20, 2013

11649714 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/649,714 01/04/2007 INV001Ganesh C. Deka NPI-136 (0010) 6365
22827 7590 03/20/2013
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
TOLIN, MICHAEL A
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
03/20/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GANESH C. DEKA
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Appeal 2011-012833
Application 11/649,714
Technology Center 1700
____________

Before RICHARD TORCZON, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-9 and 19-28. We have jurisdiction under 35 U.S.C. § 6. The
Examiner maintains and Appellant requests review of the following
rejections: claims 1-9 and 19-28 under 35 U.S.C. § 103(a) as obvious over
the combination of Bean (U.S. 6,743,522 B2), Harris (U.S. 5,871,615) and
Bond (U.S. Publ. No. 2005/0064150 A1). (Ans. 5; App. Br. 4).

Appeal 2011-012833
Application 11/649,714

2
OPINION1

We have thoroughly reviewed the Examiner’s rejection and
Appellant’s arguments thereagainst. We affirm the Examiner’s rejection for
the reasons presented by the Examiner. We add the following.
Appellant’s invention relates in general to a method for forming a
medical packaging substrate including a fibrous web formed from cellulosic
material. (Spec. 2). Claim 1 is illustrative of the subject matter on appeal
and is reproduced from Appellant’s Brief below.
1. A method for forming a medical packaging substrate from a
saturated nonwoven web, the method comprising:
forming a suspension of fibers into a fibrous web, the
suspension comprising a cellulosic fibrous material, wherein
the fibrous web has a first thickness;
forming a security image in the fibrous web by displacing the
fibers of the web while the web is still in a wet state to create
areas of differing thickness, wherein the security image is
defined by portions of the web having a second thickness that
differs from the first thickness such that the security image can
be seen by a person using transmitted light;
impregnating the fibrous web with a binder composition to
form the saturated nonwoven web; and
forming a medical packaging substrate from the saturated
nonwoven web, wherein the saturated nonwoven web has a
Gurley porosity of from about 0.1 to about 120 seconds per 100
cubic centimeters.

1 Appellant has presented arguments only directed to independent claims 1
and 19. Appellant has not presented separate arguments directed to the
remaining claims. We select independent claim 1 as representative of the
subject matter on appeal.
Appeal 2011-012833
Application 11/649,714

3
The dispositive issue for this rejection is: Did the Examiner err in
determining that the combination of Bean, Harris, and Bond would have
suggested a method for forming a medical packaging substrate from a
saturated nonwoven web, comprising forming a security image in a fibrous
web material as required by the subject matter of independent claims 1 and
19?
The claimed invention defines a security image as the portions of the
web having a second thickness that differs from the first thickness. (Claims
1 and 19).
The Examiner found Bean discloses the manufacture of a paper
(cellulosic) web for medical packaging applications, but does not teach or
suggest forming a security image in the fibrous web. The Examiner found,
that “it is generally known in the art of forming cellulosic packaging
material to provide such a security image in order to resist attempts at
fraudulent imitation.” (Ans. 5). The Examiner found Harris exemplifies
distinctive packaging formed from verifiable packaging paper which
contains relatively thick and thin areas forming a security image. (Id.). The
Examiner found that Bond exemplifies the state-of-the-art in the formation
of watermarks in security paper by providing the paper with relatively thick
and thin areas by pressing a dandy roll in the paper making process. (Id.;
Bond [0002]). The Examiner found that it would have been obvious to a
person of ordinary skill in the art to provide the step of adding a security
image in the process of Bean motivated to produce medical packaging paper
with means for resisting imitation. (Id. at 6).
Appeal 2011-012833
Application 11/649,714

4
Appellant argues that Bond’s disclosure of embossability was not
sufficient to suggest that a security image could have been formed by
displacing fibers in the web while it was wet. (App. Br. 6).
Appellant’s argument is not persuasive. Bean describes the process of
producing medical packaging utilizing wet fabrication processes. (Paragraph
bridging columns 2 and 3). It is well known by persons of ordinary skill in
the art to utilize watermarks or shadow marks which produce localized
variation in the thickness of the cellulosic web to create security images in
paper while the web is still wet. (See Harris, Bond). Appellant has
acknowledged this knowledge by persons of ordinary skill in the art in the
present Specification (page 1). Contrary to Appellant’s arguments, a person
of ordinary skill in the art would have reasonably expected that Bean’s
process of forming medical packaging could have been modified to include
an embossing process.
We are not persuaded by Appellant’s arguments that the addition of a
watermark to the medical paper of Bean would have rendered the substrate
unsuitable for the intended purpose. (App. Br. 7). Appellant has not
adequately explained what properties resulting from the addition of a
watermark would have rendered Bean’s substrate unsuitable.
Appellant argues the present invention provides surprising,
unexpected results to a person of ordinary skill in the art. In support of this
position Appellant presented the Declaration of Dr. Deka (the inventor of the
present application). (App. Br. 8-9).
We agree with the Examiner that this evidence is insufficient to
overcome the stated rejections. (Answer 12-14). Appellant’s opinion on the
ultimate legal issue is not evidence in the case. In re Chilowsky, 306 F.2d
Appeal 2011-012833
Application 11/649,714

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908, 916 (CCPA 1962). While we do feel that some weight ought to be
given to a persuasively supported statement of one skilled in the art on what
was not obvious to him, In re Lindell, 385 F.2d 453, 456 (CCPA 1967), in
the present case, it is not clear what evidence Dr. Deka is relying upon to
reach the stated opinion.
Under these circumstances, we find no error in the Examiner’s
obviousness determination.

ORDER
The Examiner’s rejection is affirmed.
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)(iv).

AFFIRMED
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