Ex Parte Fors et al

Board of Patent Appeals and Interferences

Feb 22, 2010

10497831 (B.P.A.I. Feb. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEFAN FORS, JOHAN GRON, PENTTI RAUTIAINEN, and
TIMO ESKOLA
____________

Appeal 2009-003475
Application 10/497,831
Technology Center 1700
____________

Decided: February 22, 2010
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Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 16, 17, 21, 23, 24, 28, 30, 31, 35, and 37-42. We have
jurisdiction under 35 U.S.C. § 6(b).

Appeal 2009-003475
Application 10/497,831

STATEMENT OF THE CASE
Claim 16 is representative of the subject matter on appeal and is set
forth below:
16. A method for manufacturing a coated paper web having
at least one side coated with at least two coat layers, the method comprising:

applying a first coating furnish layer to at least one surface of a
paper web;

drying the applied first coating furnish layer sufficiently to
allow another coating furnish layer to be applied thereon;

applying a second coating furnish layer on said first coating
furnish layer;

drying the applied second coating furnish layer; and

applying and drying successive coating furnish layers until a
desired coat thickness is attained,

wherein the coating furnish layers are applied using a metering
film transfer method operating without leveling of the applied coating
furnish layer by doctoring, and wherein at least one of the coating furnish
layers comprises a furnish having a solids content of not less than 62%, and
wherein the solids content of the furnish applied in the successive coating
furnish layers is reduced stepwise toward the top layer of the finished
product, and

wherein the composition of both the web and the web furnishes
to be applied thereon are selected such that a pore size in each successive
applied coating furnish layer is smaller than in an underlying applied coating
furnish layer thereof but allows for penetration of water through each of the
applied furnish layers, and wherein the compositions of the furnishes is
selected so that solids particles of a next overlying furnish layer will not
penetrate into an underlying furnish layer.

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Appeal 2009-003475
Application 10/497,831

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barrett US 2,582,407 Jan. 15, 1952
Brundige US 3,336,862 Aug. 22, 1967
Loomer US 2,937,955 May 24, 1960
Elvidge US 6,316,060 B1 Nov. 13, 2001
Wurster US 5,916,420 Jun. 29, 1999

THE REJECTION(S)
1. Claims 16, 17, 21, 23, 24, 28, 30, 31, 35, 37, 38 and 41 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Barrett in view of
Brundige and Loomer.
2. Claim 42 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barrett in view of Brundige and Loomer, and further in
view of Elvidge.
3. Claims 39-40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barrett in view of Brundige and Loomer, and further in
view of Wurster.
ISSUE
Have Appellants shown reversible error in the Examiner’s
determination that the applied art suggests the aspect of claim 16 of
“wherein the composition of both the web and the web furnishes to be
applied thereon are selected such that a pore size in each successive applied
coating furnish layer is smaller than in an underlying applied coating furnish
layer thereof”?
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Application 10/497,831

PRINCIPLES OF LAW
A prima facie case of obviousness is established where the Examiner
demonstrates that the invention is nothing more than the predictable result of
a combination of familiar elements according to known methods. KSR Int'l.
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. See In re Keller,
642 F.2d 413, 425 (CCPA 1981).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. Keller, 642
F.2d at 425-426; In re Merck & Co., Inc., 800 F.2d 1091, 1097-98 (Fed. Cir.
1986).
After evidence or argument is submitted by the Applicant in response,
patentability is determined on the totality of the record, by a preponderance
of evidence (that it is more likely than not), with due consideration to
persuasiveness of argument. In re Caveny, 761 F.2d 671, 674 (Fed. Cir.
1985); In re Johnson, 747 F.2d 1456, 1460 (Fed. Cir. 1984).

FINDINGS OF FACT
The Examiner’s basic position is that the combination of Barrett,
Brundige, and Loomer as a whole suggests the claimed feature of a
successively smaller pore size, and we refer to the Examiner’s discussion
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Application 10/497,831

and findings made on pages 12-14 of the Answer in this regard. Appellants
do not address the teachings of the applied art as a whole with respect to this
claimed feature.

ANALYSIS
As an initial matter, we confine our discussion to representative claim
16, which contains claim limitations commensurate with the arguments
made by Appellants, pursuant to 37 C.F.R. § 41.37(c)(1)(vii). As such, we
focus on the rejection involving the combination of Barrett in view of
Brundige and Loomer. With regard to the other references applied in the
other rejections, Appellants simply argue that these references do not cure
the alleged deficiencies of the combination of Barrett in view of Brundige
and Loomer.
Appellants’ primary argument is that the applied references do not
suggest the pore size relationship recited in claim 16. Br. 4, 5, 6-8.
Appellants state that Barrett differs from their claimed invention in that
Barrett fails to teach or suggest the claimed pore size relationship to allow
penetration of water. Br. 4. Appellants argue that the other references do not
cure this deficiency.
The Examiner recognizes this deficiency of Barrett. Ans. 4. As
explained on pages 12-14 of the Answer, it is the Examiner’s basic position
that the combination of Barrett, Brundige, and Loomer suggests this claimed
feature of a successively smaller pore size. The Examiner explains that
Barrett, for example, provides that using multiple coating applications
provides a smoother and more uniform coating application (column 3, lines
20-30 of Barrett), and Brundige provides a two layer application system,
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Application 10/497,831

where the bottom layer is relatively smooth, but the top coat is desirably
especially smooth and uniform (column 1, lines 60-70 of Brundige). The
Examiner states that this idea of providing a smoother surface with each
successive coat is suggestive of a smaller pore size in the second, top layer
to correspond to the smoother surface desired on the top surface. Ans. 13.
Notably, Appellants do not identify error in this logic. The Examiner further
explains that this suggestion, combined with the teaching of Loomer to have
successive layering that "allows for penetration of water through each of the
applied coating furnish layers" and wherein "solids particles of a next
overlying furnish layer will not penetrate into an underlying furnish layer",
suggests the idea of having a pore size in each successive applied coating
furnish layer that is smaller than the underlying applied coating furnish
layer. Ans. 13-14.
Appellants argue Loomer individually by asserting that Loomer does
not discuss pore size. Br. 6. However, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. In re Keller, 642 F.2d at 425-26; In re Merck & Co., Inc., 800
F.2d at 1097-1098.
With regard to Appellants’ other points made, Appellants argue that
Brundige and Loomer describe processes that specifically use doctoring. Br.
6. We agree with the Examiner that the teachings of these references remain
pertinent in the manner as applied by the Examiner. Ans. 14. Also, the
Examiner relies upon Barrett for teaching application of a coating layer
without doctoring. Ans. 4.
In view of the totality of the record before us, we agree with the
Examiner’s obviousness determination. In re Caveny, 761 F.2d at 674; In re
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Johnson, 747 F.2d at 1460. We therefore affirm the rejection. For the same
reasons, we also affirm the other rejections of record.

CONCLUSIONS OF LAW
Appellants have not identified error in the Examiner’s determination
that the applied art suggests the aspect of claim 16 of “wherein the
composition of both the web and the web furnishes to be
applied thereon are selected such that a pore size in each successive applied
coating furnish layer is smaller than in an underlying applied coating furnish
layer thereof”.

DECISION
Each 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)(v).
AFFIRMED

tc

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