Ex Parte Nowak et al

Board of Patent Appeals and Interferences

Aug 18, 2009

10094060 (B.P.A.I. Aug. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL R. NOWAK, LOUANN S. MUELLER, and
WILLIAM R. ARNDT
____________

Appeal 2009-009885
Application 10/094,060
Technology Center 1700
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Decided: August 18, 2009
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Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
LINDA M. GAUDETTE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 19, 20, 22-29, and 31-36 (Amended Appeal Brief filed September 12,
2008, hereinafter “App. Br.” at 1; Final Office Action mailed November 15,
2007). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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STATEMENT OF THE CASE
Appellants’ claimed invention relates to a wrapped ream of paper
comprising a particular composite wrap material (claim 19; Specification,
hereinafter “Spec.,” 4, ll. 14-21). According to Appellants, the composite
wrap material provides: (i) a wrapped package having high burst strength;
(ii) a barrier against moisture absorption by the wrapped contents; (iii) fold
characteristics of paper; and (iv) a high gloss print surface or standard paper
print surface (Spec. 3, ll. 18-20 and 28-29; 4, ll. 3-4 and 7-8).
Claim 19 is representative and reads as follows:
19. A wrapped ream of paper, comprising: a laminated
composite wrap material including a first layer of paper having
an inner surface and an outer surface, said first layer of paper
comprising tissue, air laid fabric, wet laid fabric or creped
tissue; a second layer of polymer film material having an outer
surface and an inner surface; and an adhesive layer between the
inner surfaces of said first and second layers; wherein said
laminated composite wrap material wraps said ream of paper,
the outer surface of said first layer of paper is coated by a
polyethylene layer, and the inner surface of said second layer of
polymer film material is printed before lamination.
(App. Br. 7; Claims App’x.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed December 5, 2008, hereinafter
“Ans.,” 3):
Gatewood US 2002/0050119A1 May 2, 20021
The Examiner rejected claims 19, 20, 22-29, and 31-36 under 35
U.S.C. § 103(a) as unpatentable over Gatewood.

1 Gatewood has a filing date of September 28, 2001 and claims priority to
Provisional Application 60/236,988 filed on September 29, 2000.
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ISSUES
Based on specific findings of fact and reasoning, the Examiner
concluded that the subject matter recited in the appealed claims would have
been obvious to one of ordinary skill in the art in view of Gatewood’s
teachings (Ans. 3-4). According to the Examiner, Gatewood is available as
prior art because the current application is not entitled to benefit of an earlier
effective filing date based on parent Application 09/178,329 (‘329
Application) filed on October 23, 1998 (Ans. 4-6).2 Specifically, the
Examiner found that the ‘329 Application does not provide written
description “support for the claimed wrapped ream of paper wherein the
wrap has either of the following structures: printed polymer
film/adhesive/paper/coating layer of polyethylene as in instant Claim 19 or
polymer film/adhesive/printed paper/coating layer of polyethylene as in
instant Claim 28; more specifically, the coating layer of polyethylene . . .”
(id. at 5; underscoring added).
Appellants do not dispute the Examiner’s obviousness conclusion
based on Gatewood’s teachings (App. Br. 4-6). Rather Appellants argue that
Gatewood is not available as prior art under any subsection of 35 U.S.C. §
102 because the current application is entitled to the benefit of the earlier
filing date of the ‘329 Application (id.). Appellants assert that support for
the subject matter of the appealed claims is found in paragraphs [0023] and
[0003] of the ‘329 Application (id. at 4-5).

2 When referring to the ‘329 Application, we cite to the published
application (US 2003/0129431 published on July 10, 2003).
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Thus, the dispositive issue arising from the contentions of the
Examiner and Appellants is:
Have Appellants shown reversible error in the Examiner’s factual
finding that paragraphs [0023] and [0003] of the ‘329 Application do not
provide written description support for the subject matter of the appealed
claims including the limitation “the outer surface of said first layer of paper
is coated by a polyethylene layer” as recited in claims 19 and 28, the sole
independent claims on appeal?

FINDINGS OF FACT (“FF”)
1. Paragraph [0003] of the published ‘329 Application states:
Conventional commercial wrappers include
paper/polyethylene/paper laminates, paper/wax/paper
laminates, polyethylene-coated papers, wax-coated
papers, and transparent polymer films. A drawback of
paper based wrap materials is their low burst strength.
Oftentimes, such packages tend to break open before
reaching the consumer because the wrapper is not strong
enough to hold the paper upon repeated handling and
stacking on store shelves. This not only ruins the product
by causing an unsightly appearance on a store shelf, but
can damage the paper which can cause copiers and
printers to become jammed.
(Emphasis added.)
2. Paragraph [0023] of the published ‘329 Application further
discloses:
In use, one side of the wrap material is placed next
to the paper or other material being wrapped. The other
side of the wrap material may be printed upon using
known printing techniques, or the paper layer 15 or film
layer 20 can be printed before lamination, and then
laminated so the print shows through the film layer.
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3. The current application was filed on March 8, 2002.

PRINCIPLES OF LAW
“Claims found in a later-filed application are entitled to the filing date
of an earlier application if, inter alia, the disclosure in the earlier application
provides an adequate written description of the later-filed claims under 35
U.S.C. § 112, ¶ 1.” In re Curtis, 354 F.3d 1347, 1351 (Fed. Cir. 2004).
“A disclosure in a parent application that merely renders the later
claimed invention obvious is not sufficient to meet the written description
requirement; the disclosure must describe the claimed invention with all its
limitations.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998).

ANALYSIS
Appellants argue the appealed claims together, relying solely on the
contention that Gatewood is not prior art. See 37 C.F.R. § 41.37(c)(1)(vii).
We are in complete agreement with the Examiner that the relied upon
disclosures in the ‘329 Application do not provide adequate written
description for the subject matter recited in claim 19 or claim 28, including
the limitation “outer surface of said first layer of paper is coated by a
polyethylene layer.” The only reference to polyethylene in the relied upon
portions of the ‘329 Application is in a discussion of conventional or
commercially available “polyethylene-coated papers” per se, which is said
to have the “drawback of . . . low burst strength” (FF 1). In this context,
Appellants distinguish the claimed invention over the prior art polyethylene-
coated papers disclosed in the ‘329 Application. Thus, the relied upon
disclosure would not have reasonably conveyed to one skilled in the relevant
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art that Appellants possessed the now-claimed subject matter as their
invention at the time the ‘329 Application was filed. See Tronzo, 156 F.3d
at 1159 (“[T]he only reference in the ‘589 patent’s specification to different
shapes [for a cup in a prosthesis] is a recitation of the prior art . . . . Instead
of suggesting that the ‘589 patent encompasses additional shapes, the
specification specifically distinguishes the prior art as inferior and touts the
advantages of the conical shape of the ‘589 cup.”) (Internal citation omitted.)
Paragraph [0023] of the ‘329 Application does not cure the deficiency
of paragraph [0003] (FF 2). Accordingly, paragraph [0023] also fails to
reasonably convey to one skilled in the relevant art that Appellants
possessed the now-claimed subject matter as their invention at the time the
‘329 Application was filed.
Since Appellants did not demonstrate that the appealed claims are
entitled to the benefit of an earlier filing date of the ‘329 Application,
Gatewood is available as prior art under 35 U.S.C. § 102 (FF 3).

CONCLUSION
Appellants have not shown reversible error in the Examiner’s factual
finding that paragraphs [0023] and [0003] of the ‘329 Application fail to
provide written description support for the subject matter of the appealed
claims including the limitation “the outer surface of said first layer of paper
is coated by a polyethylene layer” as recited in claims 19 and 28.

DECISION
The Examiner’s decision to reject appealed claims 19, 20, 22-29, and
31-36 under 35 U.S.C. § 103(a) as unpatentable over Gatewood is affirmed.
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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

MAT

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IP Department
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