Ex parte Michelman

Board of Patent Appeals and Interferences

Mar 20, 2001

08371362 (B.P.A.I. Mar. 20, 2001)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN S. MICHELMAN
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Appeal No. 1997-4310
Application No. 08/371,362
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HEARD: February 08, 2001
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Before WALTZ, KRATZ and PAWLIKOWSKI, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 23, 46 and 57-64, which are all of the
claims pending in this application.
BACKGROUND
Appeal No. 1997-4310 Page 2
Application No. 08/371,362
Appellant’s invention relates to a method of treating
paper coated with a hot melt wax to disperse the wax and
converting the paper to pulp form. An understanding of the
invention can be derived from a reading of exemplary claims 46
and 57, which are reproduced below.
46. A method of repulping a paper coated with a hot melt
wax coating comprising the steps of:
(1) preparing a mixture of:
(a) a paper coated with said hot melt wax coating,
said coating comprising:
(1) at least one wax; and
(2) at least one chemical compound incorporated
in said at least one wax, said at least one
chemical compound capable of dispersing said
at least one wax in a substantially aqueous
environment; and
(b) water; and
(2) applying to said mixture an amount of mechanical
energy sufficient to convert said paper to a pulp form.
57. A method of dispersing wax from a hot melt wax-
coated paper, comprising the steps of:
introducing into a substantially aqueous environment a
paper having a hot melt coating thereon, said hot melt coating
comprising a wax and a chemical compound incorporated in said
wax which is capable of undergoing chemical modification so as
to be capable of dispersing said wax in said substantially
aqueous environment;
Appeal No. 1997-4310 Page 3
Application No. 08/371,362
introducing into said substantially aqueous environment a
chemical agent to modify said chemical compound to render said
chemical compound capable of dispersing said wax;
agitating said paper having said hot melt coating thereon
in said substantially aqueous environment; and
dispersing said wax from said paper.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Savage 2,959,513 Nov. 08,
1960
Laumann 3,950,578 Apr. 13,
1976
Gotoh et al. (Gotoh) 4,177,199 Sep. 26,
1978
Appellant also cites the following references:
Goto et al. (Goto) JP 61-47896 Mar. 08,
1996
Michelman et al. (Michelman), “Repulpability of coated
corrugated paperboard,” Tappi Journal, Vol. 74, No. 10, pp.
79-82 (Oct. 1991).
Claims 23 and 57-61 stand rejected under 35 U.S.C. § 103
as being unpatentable over Laumann in view of Savage. Claims
23, 46 and 57-64 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gotoh in view of Savage and Laumann.
OPINION
Appeal No. 1997-4310 Page 4
Application No. 08/371,362
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejections are not well
founded. Accordingly, we reverse these rejections.
Section 103 Rejection over Laumann in view of Savage
Laumann discloses a coated paper that is not wet-
strength grade, such as a tissue or toilet paper and that will
disintegrate upon toilet flushing disposal thereof. Laumann
teaches a coating that includes a paraffin or microcrystalline
wax and wax modifiers such as ethyl vinyl acetate or other
copolymers or synthetic rubbers that may be used together with
a lining for coating that type of paper (column 1, lines 9-
34). Laumann discloses that “[t]he wax may be further modified
by the inclusion of stearic acid or other stearates and
softened by the inclusion of lanolin, petrolatum or other wax
softeners” (column 1, lines 34-37).
Savage discloses a method of defibering waxed paper stock
utilizing sodium hydroxide and sodium silicate together with
other optional chemical compounds in a pulper that contains
hot water (column 2, line 36 through column 3, line 37).
Appeal No. 1997-4310 Page 5
Application No. 08/371,362
According to the examiner,
it would have been obvious to modify the
Laumann process by providing a strong base
in an aqueous bath as well as providing
sufficient mechanical energy to convert the
paper into a pulp since Savage teaches
recycling waxes [sic, waxed] coating paper
in such a manner for the obvious cost
advantages of recycling wastepaper.
We disagree. When an examiner is determining whether a
claim should be rejected under 35 U.S.C. § 103, the claimed
subject matter as a whole must be considered. See In re
Ochiai, 71 F.3d 1565, 1569, 37 USPQ2d 1127, 1131 (Fed. Cir.
1995). The subject matter as a whole of process claims
includes the starting materials and product made. When the
starting and/or product materials of the prior art differ from
those of the claimed invention, the examiner has the burden of
explaining why the prior art would have motivated one of
ordinary skill in the art to modify or select from the
materials of the prior art processes so as to arrive at the
claimed invention. See Ochiai, 71 F.3d at 1570, 37 USPQ2d at
1131. In the present case, the examiner has not carried this
burden.
Appeal No. 1997-4310 Page 6
Application No. 08/371,362
As developed in appellant’s brief (pages 9-11), Laumann
is not directed to a repulping process or forming a wax coated
paper product that would be a suitable starting material for
repulping. Rather, Laumann is concerned with the formation of
disposable paper products such as toilet or facial tissue,
diaper liners, etc. that may be disposed of by flushing into a
sewer system after use. Here, the examiner simply has not
offered a convincing explanation as to why one of ordinary
skill in the art would have been led to apply the repulping
method of Savage to the sewage pipeline disposable product of
Laumann in a manner so as to arrive at the herein claimed
subject matter.
Section 103 Rejection over Gotoh in view of Savage and Laumann
Regarding the rejection of claims 23, 46 and 57-64 under
35 U.S.C. § 103 as being unpatentable over Gotoh in view of
Savage and Laumann, we observe that Gotoh is concerned with a
wax emulsion coating and does not suggest a method of treating
a hot melt wax coated paper of the type all of the appealed
Appeal No. 1997-4310 Page 7
Application No. 08/371,362
Laumann and Savage are described above with regard to1
the rejection of claims 23 and 57-61 over only those
references.
claims require treating. It is significant that a wax1
emulsion coated paper, including the type of coating and paper
product that Gotoh describes, has been distinguished from the
hot melt wax coated paper that is treated by the subject
process on the record before us. See, e.g., pages 12 and 13
of the brief, pages 1-6 of the reply brief, and the carryover
paragraph bridging pages 6 and 7 of the specification.
The examiner does not seem to take issue with the
aforementioned distinction between such coatings and papers so
coated, but rather the examiner’s position appears to be
premised on considering the hot melt wax coated paper
limitation as inconsequential (answer, page 5 and supplemental
answer, paragraph bridging pages 1 and 2). That position runs
afoul of the basic premise that a sustainable rejection under
§ 103 must address the claimed subject matter as a whole
including all of the limitations thereof. Here, the
examiner’s failure to adequately address the hot melt wax
coated paper limitation is fatal to the stated rejection. In
Appeal No. 1997-4310 Page 8
Application No. 08/371,362
other words, even if we could have agreed with the examiner
that it would have been obvious to one of ordinary skill in
the art to somehow apply the teachings of Laumann and Savage
to a repulping of the emulsion coated paper of Gotoh, such a
combination would not result in the herein claimed process
which requires treating hot melt wax coated paper.
Appeal No. 1997-4310 Page 9
Application No. 08/371,362
CONCLUSION
The decision of the examiner to reject claims 23 and 57-
61 under 35 U.S.C. § 103 as being unpatentable over Laumann in
view of Savage and to reject claims 23, 46 and 57-64 under 35
U.S.C.
§ 103 as being unpatentable over Gotoh in view of Savage and
Laumann is reversed.
Appeal No. 1997-4310 Page 10
Application No. 08/371,362
REVERSED
Thomas A. Waltz )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Peter F. Kratz ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )
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