Ex Parte Nonni et al

Patent Trial and Appeal Board

Oct 5, 2017

13314493 (P.T.A.B. Oct. 5, 2017)

United States Patent and Trademark Office
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.
13/314,493 12/08/2011 Arthur J. Nonni 20663C1 (2734.651-1) 6148
71654 7590
Georgia-Pacific/Finnegan
901 New York Avenue
Washington, DC 20001-4413
EXAMINER
PIERCE, JEREMY R
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
10/10/2017 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):
GP-pros @ finnegan. com
regional-desk @ finnegan. com
gplawpatents @ gapac .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTHUR J. NONNI, CHARLES E. COURCHENE,
CHRISTOPHER MICHAEL SLONE, and PETER R. ABITZ
Appeal 2016-004191
Application 13/314,493
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO, and
MICHAEL G. McMANUS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 248—275. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a bleached kraft paper. Claim 248 is
illustrative:
248. A bleached kraft fiber exhibiting an aldehyde content
ranging from about 1 meq/lOOg to about 9 meq/lOOg, a
carboxyl content of at least about 3 meq/lOOg, a 0.5% capillary
CED viscosity of less than about 10 mPa*s, an ISO brightness
Appeal 2016-004191
Application 13/314,493
of at least about 88, and a length-weighted average fiber length
of at least about 2 mm.
The References
Awofeso
Cimecioglu
US 5,087,324 Feb. 11, 1992
US 2002/0005262 A1 Jan. 17, 2002
US 2007/0051481 A1 Mar. 8, 2007Tan
The Rejections
Claims 248—275 stand rejected under 35 U.S.C. § 103 over
Cimecioglu in view of Tan and Awofeso.
OPINION
We reverse the rejection. We need address only the sole independent
claim, i.e., claim 248.
Cimecioglu discloses paper made from aldehyde-modified cellulose
pulp (which can be bleached Kraft pulp) having, per 100 g of cellulose, an
aldehyde functionality of 1 to 20 mmoles and a generated carboxyl content
of about 1 to 40 mmoles (H 8, 21, 23). The aldehyde-modified cellulose
pulp is made by “selective oxidation of cellulose and cellulose pulp or fiber
using a limited amount of oxidant mediated with a nitroxyl radical under
defined conditions to provide derivatives with effective aldehyde content”
(113) and is “particularly suitable for use in providing paper with desired
wet strength, temporary wet strength and dry strength properties” (id. ).
Tan removes hemicellulose from Kraft pulp by extracting the pulp
with steam, thereby rendering the pulp bleachable to an ISO brightness of at
least 90(H17, 30).
Awofeso discloses that “HBA is a bleached Kraft pulp available from
Weyerhauser which is chemically and mechanically modified to make it
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Appeal 2016-004191
Application 13/314,493
suitable for bulking in wet laid paper applications. Its Kajaani weighted
average fiber length is about 2.7 mm while the coarseness is about 34 mg per
100M” (col. 3,11. 33-38).
The Examiner concludes that “[i]t would have been obvious to a
person having ordinary skill in the art at the time of the invention to improve
the ISO brightness of the bleached pulp disclosed by Cimecioglu to at least
about 90 in order to improve the brightness of the paper product, as shown to
be well known by Tan” (Ans. 3), and “[i]t would have been obvious to a
person useful [sic, having] ordinary skill in the art at the time of the
invention to provide the bleached kraft fibers of Cimecioglu with an average
length of about 2.7 mm in order to provide a fiber useful in textile
applications such as tissues or towels, as taught to be known by Awofeso”
(id.).
The Examiner’s findings that Kraft pulp fibers having an ISO
brightness of at least about 90 or a weighted average fiber length of about
2.7 mm were known in the art (Ans. 3) do not establish that removing
hemicellulose from Kraft pulp to enable the pulp to be bleached to an ISO
brightness of at least about 90 as taught by Tan (|| 17, 30) and oxidizing the
pulp with a limited amount of oxidant mediated with a nitroxyl radical as
taught by Cimecioglu (113) would produce fiber having a 0.5% capillary
CED viscosity of less than about 10 mPa-s or a length-weighted average
fiber length of at least about 2 mm as required by the Appellants’ claim 248.
The Examiner finds, based upon the Appellants’ disclosure, that a
“presumption of inherency of the claimed properties is found in the use of
similar materials, i.e. bleached kraft fibers disclosed in Cimecioglu having
similar aldehyde and carboxyl content, undergoing similar processing steps,
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Application 13/314,493
i.e. modification to provide similar bleachability and ISO brightness, to
manufacture the fibers for similar applications, i.e. paper” (Ans. 4).
The Examiner does not establish that Cimecioglu’s Kraft pulp
oxidized with a limited amount of oxidant mediated with a nitroxyl radical
(113) is similar to the Appellants’ treated pulp or that the Appellants use a
step similar to Tan’s hemicellulose removal.
Thus, the Examiner has not set forth a factual basis which is sufficient
to support a conclusion of obviousness of the Appellants’ claimed invention.
See In re Warner, 379F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art”). Accordingly, we reverse the rejections.
DECISION/ORDER
The rejection of claims 248—275 stand under 35 U.S.C. § 103 over
Cimecioglu in view of Tan and Awofeso is reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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