Ex Parte Jackson et al

Patent Trial and Appeal Board

Jun 24, 2016

12492585 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/492,585 0612612009
1726 7590 06/28/2016
INTERNATIONAL PAPER COMPANY
6283 TRI-RIDGE BOULEVARD
LOVELAND, OH 45140
FIRST NAMED INVENTOR
John F. Jackson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CSP-044754-US 7582
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
06/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@ipaper.com
loretta.shirk@ipaper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN F. JACKSON, KRSHNA M. PAMIDIMUKKALA, and
JOSEPH T. McCARTHY1
Appeal2015-001120
Application 12/492,585
Technology Center 2800
Before BRADLEY R. GARRIS, JEFFREY W. ABRAHAM, and
JENNIFER R. GUPTA, Administrative Patent Judges.
ABRAHAM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's rejection, for at least the second time, of claims 1, 3-12, 15, 17,
19, 20, and 23-27. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We
affirm.
1 According to the Appeal Brief, the real party in interest is the International
Paper Company. App. Br. 1.
Appeal2015-001120
Application 12/492,585
BACKGROUND
Appellants' claimed invention relates to a printed substrate paper and
methods for making a printed substrate paper having an enhanced optical
print density for flexographic printing inks. Spec. 1-2.
Claim 1 is illustrative, and reproduced below:
1. A method of making a printed substrate paper,
compnsmg:
providing a substrate paper comprising ligno
cellulosic fibers and treated on at least one surface
thereof with a composition comprising starch and a
water soluble divalent metal salt to form an I-beam
structure having a concentration of the water
soluble divalent metal salt on the at least one
surface effective to enhance optical print density
when forming an image with a flexoprinting ink on
the treated at least one surface using a
flexoprinting process, wherein the sizing
composition comprises from 1 to 3 wt % of the
water soluble divalent metal salt based on the total
weight of the solids in the composition; and
forming an image with a flexoprinting ink onto the
treated at least one surface using a flexoprinting
process.
App. Br. 41 (Claims App'x).
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Application 12/492,585
The Examiner maintains, and Appellants appeal, the following
rejections:
1. Claims 1, 7-12, 15, 19, 20, and 23-27 as unpatentable under
35 U.S.C. § 103(a) over Koenig2 in view of Appellants' Admitted
Prior Art3 ("AAPA");
2. Claims 3 and 4 as unpatentable under 35 U.S.C. §103(a) over
Koenig and AAP A, further in view of Nakamura;4
3. Claims 5 and 6 as unpatentable under 35 U.S.C. §103(a) over
Koenig, AAP A, and Nakamura, further in view of Schwartz; 5 and
4. Claim 17 as unpatentable under 35 U.S.C. § 103(a) over Koenig
and AAPA, further in view ofNakamura and/or Delwiche. 6
OPINION
We sustain the above rejections primarily based on the Examiner's
findings of fact, conclusions of law, and rebuttals to Appellants' arguments,
as expressed in the Non-Final Action and Answer. The following comments
are added for emphasis.
Claims 1, 7-12, 15, 19, 20, and 23-27
Appellants do not separately argue the patentability of dependent
claims 7-12, 15, 19, and 20, which depend (either directly or indirectly)
2 Koenig et al., US 2007/0087138 Al, published Apr. 19, 2007.
3 Referring to statements made regarding the "I-Beam" structure in the first
paragraph of the "Background of the Invention" section on page 1 of the
Specification.
4 Nakamura et al., US 2005/0193906 Al, published Sept. 8. 2005.
5 Schwartz et al., US 2007/0161115 Al, published July 12, 2007.
6 Delwiche et al., US 6,220,157 Bl, issued Apr. 24, 2001.
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Application 12/492,585
from claim 1, or dependent claims 24--27, which depend from claim 23.
Therefore, claims 7-12, 15, 19, 20, and 24--27 stand or fall with the
independent claim from which each depends. Additionally, Appellants rely
on the same arguments with regard to the patentability of independent
claims 1 and 23. See App. Br. 5-30. In view of this, we confine our
discussion to claim 1, which we select as representative pursuant to
37 C.F.R. § 41.37(c)(l)(iv).
Claim 1 requires, inter alia, a composition comprising starch and a
water soluble divalent salt, wherein the composition has "1 to 3 wt % of the
water soluble divalent metal salt based on the total weight of the solids in the
composition." App. Br. 41. The Examiner recognizes that Koenig does not
explicitly teach this limitation, but finds that Koenig discloses a preferred
composition wherein the weight ratio of calcium chloride (a divalent metal
salt) to starch is about 5%. Non-Final Act. 3 (citing Koenig i-f 37). The
Examiner further finds that Koenig "teach[ es] an 'effective amount' of
divalent metal salt on the surface of the substrate should be used in order to
enhance the dry time of the substrate, and that the 'effective amount' can
vary widely," provided the desired dry time is achieved. Id. (citing Koenig
i-f 33). The Examiner determines that the amount of divalent metal salt in the
coating composition itself will affect the amount of divalent metal salt on the
surface of the substrate, and, therefore, the amount of divalent metal salt in
the coating composition would have an effect on the drying time of the
substrate (i.e., is a result-effective variable). Id. The Examiner thus
concludes it would have been obvious to a person of ordinary skill in the art
to arrive at the claimed range of 1-3 wt% in view of Koenig, because the
amount of divalent metal salt in the composition "is optimizable by one
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having ordinary skill in the art," and that "when the general conditions are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation." Id.; Ans. 2-5 (citing
MPEP§ 2144.05).
Appellants argue that the Examiner "fails to properly address why one
of ordinary skill in this art would pick the specific claimed amounts of
divalent metal salt present in the sizing composition" in view of Koenig's
disclosure that the amount of divalent metal salt present can "vary widely"
and the fact that Koenig does not explicitly disclose the claimed range. App.
Br. 9 (emphasis omitted). Appellants contend that the Examiner's failure to
identify any guidance in Koenig that would lead a person of ordinary skill in
the art to the specific claimed range demonstrates that the Examiner relied
on impermissible hindsight, using Appellants' Specification and claims as a
road map. Id. at 9, 13-14; Reply Br. 12-14.
Appellants' arguments are unpersuasive. It is well settled that,
generally speaking, it would have been obvious for a person of ordinary skill
in the art to develop workable or even optimum ranges for result-effective
parameters. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220
F.2d 454, 456 (CCPA 1955). Exceptions to this general rule include where
the parameter optimized was not recognized in the art to be a result effective
variable and where the results of optimizing a variable, which was known to
be result effective, were unexpectedly good. In re Antonie, 559 F.2d 618,
621(CCPA1977); In re Waymouth, 499 F.2d 1273, 1276 (CCPA 1974).
It is uncontested that Koenig discloses ( 1) a paper substrate having an
"effective amount" of the divalent water soluble metal in contact with at
least one surface of the substrate to enhance the dry time of the substrate to
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Application 12/492,585
any extent, (2) that this amount "can vary widely," provided the desired dry
time is achieved, and (3) a preferred coating composition having 5% by
weight of divalent metal salt. Koenig i-fi-133, 37. Appellants do not
specifically dispute the Examiner's finding that Koenig teaches the amount
of divalent metal salt in the composition would have an effect on the drying
time of the substrate, i.e., that it is a result effective variable. Appellants
also fail to demonstrate that the claimed range is critical, for example by
showing that the claimed range achieves unexpected results. See In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In view of this, we find the
Examiner reasonably determined that Koenig discloses the general
conditions of claim 1 and that the discovery of the optimum or workable
range would have resulted from the use of routine experimentation for a
person of ordinary skill in the art. Non-Final Act. 3--4; Ans. 4; see In re
Aller, 220 F.2d at 456.
Claim 1 further requires treating the substrate with the composition
"to form an I-beam structure having a concentration of the water soluble
divalent metal salt on at least one surface effective to enhance optical print
density." App. Br. 41. The Examiner recognizes that Koenig does not
disclose the formation of an I-beam structure, but finds that Appellants'
Admitted Prior Art teaches "giving paper substrates with starch-based
coatings an I-beam structure in order to give the substrate improved bulk
stiffness and/or high dimensional stability." Non-Final Act. 4 (citing
Spec. 1 ). In view of these improvements, the Examiner determines that it
would have been obvious to a person of ordinary skill in the art to modify
Koenig's substrate by forming an I-beam structure. Id.
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The Examiner further finds that Koenig, as modified to form an 1-
beam structure (in view of Appellants' Admitted Prior Art) and to have a
coating composition that contains 1-3 wt% of the water soluble divalent salt
(after routine experimentation by a person of ordinary skill in the art), uses a
method and materials that are substantially identical to those in claim 1.
Non-Final Act. 4. The Examiner thus determines that the modified method
of Koenig would inherently result in enhanced optical print density. Id. at
4--5; Ans. 3--4.
Appellants argue that the Examiner "provides absolutely no proper
'evidence or reasoning' to support the current rejection" in view of the
Examiner's admission that Koenig "fails to teach two key features recited
in the appealed method [c]laims that impart these allegedly 'inherent
properties."' App. Br. 13 (citing Ex parte Whalen IL 89 USPQ2d 1078,
1083 (PBAI 2008); Reply Br. 15.
Appellants' arguments are unavailing. The basis for the Examiner's
determination regarding inherency is not Koenig alone, but rather Koenig
modified in view of Appellants' Admitted Prior Art and the knowledge of a
person of ordinary skill in the art. Ans. 3--4; Non-Final Act. 4--5. According
to the Examiner, it is this "modified method of Koenig" that uses methods
and materials that are "at least substantially identical to that claimed" by
Appellants. Ans. 3--4; Non-Final Act. 4--5. In view of this, we find the
Examiner reasonably determined that providing a paper substrate according
to the Examiner's modified Koenig method would necessarily result in
enhanced optical print density, as required in claim 1. In re Best, 562 F.2d
1252, 1255 (CCPA 1977).
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Appellants have not directed us to evidence sufficient to establish that
the claimed property is not inherent. Id.; see also In re Spada, 911 F.2d 705,
709 (Fed. Cir. 1990) ("When the PTO shows a sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not."). As a result, we likewise agree
with the Examiner's finding that:
Appellants' argument that the interrelatedness of the I-beam
structure and the concentration of the water soluble divalent metal salt
is ignored by the combination is moot, since the combination of
Koenig et al. and AAP A meets the claimed limitations. Any alleged
benefits arising from the interrelatedness would be inherent as a result
of combining the teachings of AAP A with Koenig et al.
Ans. 5.
We have considered Appellants' remaining arguments and, for the
reasons given by the Examiner, find none that warrant reversal of the
appealed rejections. Cf In re Antor Media Corp., 689 F.3d 1282, 1294
(Fed. Cir. 2012).
We, therefore, sustain the Examiner's rejection of claims 1, 7-12, 15,
19, 20, and 23-27.
Claims 3 and 4
In response to the Examiner's rejection of dependent claims 3 and 4 as
unpatentable under 35 U.S.C. § 103 over Koenig, Appellants' Admitted
Prior Art, and Nakamura, Appellants rely on the same arguments offered in
support of claim 1, and argue that Nakamura does not disclose the features
alleged to be "missing or not taught" by Koenig in view of Appellants'
Admitted Prior Art. App. Br. 31-33. Because we find no deficiencies in the
combined disclosures of Koenig and Appellants' Admitted Prior Art, we
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affirm the Examiner's rejection of claims 3 and 4 for the same reasons we
affirm the Examiner's rejection of claim 1.
Claims 5 and 6
Claim 5 depends from claim 3 (which depends from claim 1) and
requires diluting the pigmented ink before forming an image. Claim 6
depends from claim 5, and further requires that "the dilution is at least 1 % to
about 20% based upon the standard concentration of conventional
flexoprinting pigmented ink." App. Br. 41.
The Examiner finds that Koenig teaches that its substrates have an
"improved image density," and that Schwartz teaches that the dilution rate of
pigmented flexo inks is a variable which affects the optical density of a
printed substrate. Non-Final Act. 9-10 (citing Koenig i-f 6; Schwartz i-f 136,
Table 19); Ans. 7-8. The Examiner thus determines that it would have been
obvious to a person of ordinary skill in the art, "through routine
experimentation, to dilute the pigmented flexographic ink in the modified
method of Koenig et al. by 1 % to 20% in order to determine the optimal
dilution rate which results in the desired, acceptable optical density for the
lowest cost." Non-Final Act. 10.
In response, Appellants first rely on the same arguments offered in
support of claim 1, and argue that neither Nakamura nor Schwartz discloses
the features alleged to be "missing or not taught" by Koenig in view of
Appellants' Admitted Prior Art. App. Br. 33-36. As discussed above,
however, we find no deficiencies in the combined disclosures of Koenig and
Appellants' Admitted Prior Art.
Appellants further argue that the Examiner's rejection is factually
unsupported because Schwartz teaches how to vary pigment concentration,
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but not when or whether the pigment can be diluted to do so. Id. at 36.
Appellants' argument, however, is unpersuasive, as it fails to demonstrate
that pigment concentration is not a result-effective variable, or that the
claimed dilution range is critical. See Boesch, 617 F.2d at 276; Aller, 220
F.2d at 456; Antonie, 559 F.2d at 621; Waymouth, 499 F.2d at 1276;
Woodruff, 919 F.2d 1578.
We, therefore, affirm the Examiner's rejection of claims 5 and 6.
Claim 17
In response to the Examiner's rejection of claim 17 as unpatentable
under 35 U.S.C. § 103 over Koenig, Appellants' Admitted Prior Art, and
Nakamura and/or Delwiche, Appellants rely on the same arguments offered
in support of claim 1, and argue that neither Nakamura nor Delwiche
disclose the features alleged to be "missing or not taught" by Koenig in view
of Appellants' Admitted Prior Art. App. Br. 37--40. Because we find no
deficiencies in the combined disclosures of Koenig and Appellants'
Admitted Prior Art, we affirm the Examiner's rejection of claim 17 for the
same reasons we affirm the Examiner's rejection of claim 1.
CONCLUSION
For the reasons set forth above, we affirm the rejections of claims 1,
3-12, 15, 17, 19, 20, and 23-27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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