Ex parte Knauf

Board of Patent Appeals and Interferences

Feb 25, 2000

08326501 (B.P.A.I. Feb. 25, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GARY H. KNAUF
____________
Appeal No. 1997-1516
Application No. 08/326,501
____________
ON BRIEF
____________
Before KIMLIN, WARREN, and OWENS, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1-10. Claim 11, the other claim remaining in the present
application, stands withdrawn from consideration.
Claims 1 and 2 are illustrative:
1. A release liner carrier web, for dispensing die
cut film labels onto a surface, comprising:
Appeal No. 1997-1516
Application No. 08/326,501
2
(a) a paper substrate having a front side and a
back side;
(b) a polypropylene coating layer located on
said front side of said paper substrate; and
(c) a protective sealant layer selected from the
group consisting of a soap based acrylic resin,
polyvinylidene dichloride and polyvinyl alcohol
located on said back side of said paper
substrate.
2. A release liner comprising:
(a) a paper substrate having a front side and a
back side;
(b) a polypropylene coating layer located on
said front side of said paper substrate;
(c) a silicone coating layer located on said
polypropylene coating layer; and
(d) a protective sealant layer selected from the
group consisting of a soap-based acrylic resin,
polyvinylidene dichloride and polyvinyl alcohol
located on said back side of said paper
substrate.
In the rejection of the appealed claims the examiner
relies upon the following references:
Groff et al. (Groff) 3,118,534 Dec. 16,
1959
Keeling et al. (Keeling) 3,896,249 Jul.
22, 1975
Hosoda et al. (Hosoda) 4,609,589 Sep. 02,
1986
Appeal No. 1997-1516
Application No. 08/326,501
3
Fagan 4,783,354 Nov. 08,
1988
Appellant's claimed invention is directed to a release
liner carrier web comprising a paper substrate, a
polypropylene coating on one side of the substrate, and a
protective sealing layer, such as an acrylic resin, on the
other side of the substrate. Appealed claim 2 additionally
recites a silicone release layer on the polypropylene layer.
According to appellant, the sealant, or undercoat, layer
"traps loose fibers of the paper substrate and
prevents them from clogging machinery associated with the
production or handling the release sheet." (page 3 of
principal brief). In addition, appellant explains that the
protective sealant layer "promotes ready peelability of a
suitable label from the present release sheet" by seeping
through the substrate and contacting the silicone release
layer (page 3 of principal brief).
Appealed claims 1, 2, 6, 8 and 9 stand rejected under 35
U.S.C. § 102(b) over Hosoda. The appealed claims also stand
rejected under 35 U.S.C. § 103 as follows:
Appeal No. 1997-1516
Application No. 08/326,501
4
(a) Claims 1, 2, 6, 8 and 9 over Hosoda;
(b) Claims 1-10 over Hosoda in view of Fagan;
(c) Claims 1-10 over Keeling in view of Groff.
Both appellant and the examiner agree that all the
appealed claims stand or fall together. However, inasmuch as
the examiner gives separate treatment to independent claim 2,
which includes a feature not recited in independent claim 1,
we will separately address the patentability of claim 2.
Accordingly, claims 1 and 3-10 stand or fall together.
We consider first the rejection of claims 1, 2, 6, 8 and
9 under § 102 over Hosoda. We will not sustain this rejection
because Hosoda does not specifically describe a polypropylene
coating layer on a paper substrate as required by the appealed
claims. The examiner refers to the reference teaching that
the support sheet may "include a paper base, non woven
fabrics, polymeric films and metal foils. These may be used
either alone or in the form of a lamination thereof" (column
3, lines 13-16). Hosoda further discloses that polypropylene
may be a suitable polymeric film (column 3, lines 24-27).
However, Hosoda neither exemplifies nor expressly discloses an
Appeal No. 1997-1516
Application No. 08/326,501
5
embodiment wherein a paper base is coated with polypropylene.
While it may be argued that the reference disclosure would
have suggested a paper base coated with polypropylene, such a
suggestion is not tantamount to the description required by 35
U.S.C. § 102. In re Schaumann 572 F.2d 312, 316, 197 USPQ 5,
9 (CCPA 1978). Accordingly, we will not sustain the
examiner's § 102 rejection.
We next consider the examiner's rejection of claims 1, 2,
6, 8 and 9 under § 103 over Hosoda. We will sustain this
rejection as it pertains to claims 1, 6, 8 and 9. In our
view, Hosoda's disclosure at column 3, lines 12-16 would have
suggested a lamination comprising a polypropylene film coated
on a paper base and, as pointed out by the examiner, Hosoda
also discloses that either side of the base may be coated with
an acrylic resin.
While appellant urges that, unlike the present invention,
Hosoda discloses that the acrylic undercoated layer is
situated between the release layer and the support, the
"comprising" language of claim 1 renders it "open" to the
additional layers disclosed by Hosoda and, furthermore, claim
Appeal No. 1997-1516
Application No. 08/326,501
6
1 fails to recite any release layer. We agree with the
examiner that the embodiment depicted in figure 1 of Hosoda
meets the claim requirements for a paper substrate having one
side coated with a polypropylene layer and the other side with
an acrylic sealant layer. Also, although appellant submits
that Hosoda "does not contain a soap-based acrylic resin
coating layer placed on the opposite side of the substrate
from the release layer" (page 6 of principal brief), the
examiner correctly notes that appealed claim 1 fails to recite
either a soap-based acrylic resin or a release layer.
We will not sustain the examiner's rejection of claim 2
under § 103 over Hosoda because the reference does not teach
or suggest the required "silicone coating layer located on
said polypropylene coating layer." Rather, Hosoda discloses
that the silicone coating layer is located on the acrylic
undercoat layer.
We now turn to the examiner's rejection of claim 1-10
under § 103 over Hosoda in view of Fagan. Inasmuch as we have
Appeal No. 1997-1516
Application No. 08/326,501
As noted earlier in the decision, claims 3-10 stand or fall together1
with claim 1.
7
sustained the examiner's rejection of claim 1 over Hosoda,
taken alone, it follows that we will also sustain the
examiner's rejection of claims 1 and 3-10 over Hosoda in view
of Fagan. Also, since Fagan does not remedy the1
aforementioned deficiency of Hosoda to teach or suggest a
silicone coating layer located on the polypropylene layer, as
required by appealed claim 2, we will not sustain the
examiner's rejection of claim 2 over Hosoda in view of Fagan.
Finally, we will not sustain the examiner's rejection of
claims 1-10 under § 103 over Keeling in view of Groff. In
essence, we concur with appellant that Groff's disclosure of a
pressure sensitive adhesive comprising polypropylene would not
have made obvious to one of ordinary skill in the art the
substitution of polypropylene in the polyethylene/paper
laminate of Keeling. Insofar as the polyethylene in the
paper/polyethylene laminate of Keeling is not a pressure
sensitive adhesive, it would not have been obvious for one of
ordinary in the art to employ any pressure sensitive adhesive
in the backing sheet laminate of Keeling.
Appeal No. 1997-1516
Application No. 08/326,501
8
As a final point, regarding the § 103 rejections of
claims 1 and 3-10, which we have sustained based upon Hosoda,
appellant bases no argument upon objective evidence of
nonobviousness, such as unexpected results.
In conclusion, since we have sustained the examiner's
rejections under 35 U.S.C. § 103 of claims 1 and 3-10 and have
reversed all the examiner's rejections of claim 2, the
examiner's decision is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
Appeal No. 1997-1516
Application No. 08/326,501
9
)
)
TERRY J. OWENS )
Administrative Patent Judge )
vsh
Appeal No. 1997-1516
Application No. 08/326,501
10
Hoffman, Wasson & Gitler
2361 Jefferson Davis Highway
Suite 522
Arlington, VA 22202