Ex Parte Propst

Patent Trial and Appeal Board

Jan 2, 2014

12860391 (P.T.A.B. Jan. 2, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/860,391 08/20/2010 Charles W. Propst JR. 8691.033.DVUS00 9938
77176 7590 01/03/2014
Novak Druce Connolly Bove + Quigg LLP
1875 Eye Street, NW
Eleventh Floor
WASHINGTON, DC 20006
EXAMINER
PENNY, TABATHA L
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
01/03/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHARLES W. PROPST, JR.
__________

Appeal 2012-011140
Application 12/860,391
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/860,391

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A. STATEMENT OF THE CASE
The Appellant has filed an appeal under 35 U.S.C. § 134 from an
Examiner’s decision finally rejecting claims 23-33. An oral hearing was held on
December 19, 2013. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The Appellant’s invention is directed to a coating that is said to “provide
grease, oil and wax resistance to paper substrates without the deleterious inclusion
of fluorocarbons, while maintaining other desired properties.” Spec. 1, ll. 5-7. The
Appellant discloses that the inclusion of fluorocarbons “is recognized across the
industry as a useful and economic method to add oil, water and solvent resistivity
to paper and other fibrous products.” Spec. 2, ll. 16-18. However, the Appellant
discloses that fluorocarbons have recently been recognized to have deleterious
health consequences. Spec. 2, ll. 19-22.
According to the Appellant:
[T]here exists a need in the art to provide a coating which gives
resistance to grease, oil and wax which is also environmentally
palpable. Essentially, this requires the development of a coating
which is free of fluorocarbons and other volatile organic component
(VOC) emissions, while maintaining a degree of repulpability and the
ability to be applied during the manufacture of the paper itself or
during an off-line coating process.
Spec. 3, ll. 13-18.
The Appellant discloses a coating which includes “a filler material to
provide coloring and other properties, a binder and calcium carbonate, while being
essentially free from surfactants and fluorocarbons.” Spec. 5, ll. 10-12. The
Appellant discloses that chemicals such as stearic acid, sodium polyacrylate and
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other wetting agents permit absorption of grease, oil or hot wax into the calcium
carbonate mineral surface. Spec. 6, ll. 15-18.
Claim 23 is representative of the subject matter on appeal and is reproduced
below from the Claims Appendix of the Appeal Brief dated February 29, 2012
(“Br.”).
23. A method of imparting grease, oil and wax resistance to a
substrate comprising:
providing a cellulose-containing substrate having a surface area,
selected from the group consisting of individual fibers, paper,
paperboard, bagstock, ticket stock, blended or unblended kraft or liner
board;
applying a water based mineral coating, comprising
a filler material;
a binder; and
calcium carbonate, essentially free from surfactants, to
the substrate.
Claim 33, the other independent claim on appeal, also recites a method of
imparting grease, oil and wax resistance to a substrate. However, claim 33 recites
that the water based mineral coating comprises, inter alia, “calcium carbonate,
which calcium carbonate is free from surfactants.” Br., Claims App’x.
The claims stand rejected as follows:1

1 The Examiner has withdrawn (1) a rejection of claims 23, 26, 27, and 31-33
under 35 U.S.C. § 102(b) as anticipated by Hiorns and (2) a rejection of claims 23,
26-28, and 31-33 under 35 U.S.C. § 103(a) as unpatentable over Hiorns in view of
Jones as evidenced by Somasundaran. Examiner’s Answer dated April 27, 2012
(“Ans.”), at 4.
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(1) claim 32 under 35 U.S.C. § 112, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the subject matter which the
Appellant regards as the invention;
(2) claims 23, 25, 27, and 29-33 under 35 U.S.C. § 102(b) as anticipated
by Nishijima;2
(3) claims 23, 24, 26, 32, and 33 under 35 U.S.C. § 102(b) as anticipated
by Clitherow3 as evidenced by paintmaking.com4 or Hansen;5
(4) claims 23 and 25-33 under 35 U.S.C. § 103(a) as unpatentable over
Nishijima in view of Jones6 as evidenced by Somasundaran;7 and
(5) claims 23, 24, 26-28, 32, and 33 under 35 U.S.C. § 103(a) as
unpatentable over Clitherow in view of Jones as evidenced by Somasundaran.
B. DISCUSSION
1. Rejection (1)
Claim 32 recites that “the binder is at least one of latex, PVC, PVA, acrylate,
maleic acid and protein.” Br., Claims App’x. The Examiner concludes that claim
32 is indefinite because it is unclear whether “PVA” means polyvinyl alcohol or
polyvinyl acrylate. Ans. 5. The Examiner contends that “PVA is a generally
accepted abbreviation for both of these chemical compounds” and relies on U.S.

2 US 5,985,367, issued November 16, 1999.
3 US 5,017,268, issued May 21, 1991.
4 http://paintmaking.com/inert_pigments.htm (last visited Aug. 10, 2012).
5 US 6,123,855, issued September 26, 2000.
6 US 2,210,835, issued August 6, 1940.
7 ENCYCLOPEDIA OF SURFACE AND COLLOID SCIENCES 5264 (CRC Press 2006).
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Patent 6,206,963 as evidence that “PVA” is used in the paper science art to refer to
“polyvinyl acrylate binder.” Ans. 5, 13.
In response, the Appellant argues one of ordinary skill in the art would have
understood that “PVA” means “‘poly vinyl alcohol’ and not ‘poly vinyl acetate.’”8
Br. 4. For support, the Appellant relies on page 6, first paragraph, of the
Specification and U.S. Patent 5,811,488. Br. 4-5.
“The test for definiteness is whether one skilled in the art would understand
the bounds of the claim when read in light of the specification.” Miles Labs., Inc.
v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). Page 6, first paragraph, of the
Appellant’s Specification offers little insight into the meaning of “PVA.” See
Spec. 6, ll. 2-3 (“binders such as latex, PVC, PVA, acrylates, maleic acid, proteins,
and combinations thereof” are preferred). Thus, we are left with U.S. Patent
6,206,963 which demonstrates that “PVA” is known in the art to mean polyvinyl
acrylate and U.S. Patent 5,811,488 which demonstrates that “PVA” is known in the
art to mean polyvinyl alcohol.
Based on the foregoing, we find one of ordinary skill in the art would have
understood that the abbreviation “PVA” is intended to refer to a particular polymer
and the abbreviation “PVA” is subject to more than one reasonable interpretation
by persons of ordinary skill in the relevant arts. Therefore, the § 112, second
paragraph, rejection of claim 32 is sustained.
2. Rejections (2) and (4)
The Examiner finds Nishijima teaches a method of coating a paper substrate
by applying a water-based mineral coating comprising a filler material, a binder,

8 On appeal, the Examiner does not contend that “PVA” means “poly vinyl
acetate.” See Final Office Action dated June 16, 2011, at 2, 17; Ans. 5, 13.
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and calcium carbonate to the substrate. The Examiner finds Nishijima does not
disclose that the coating imparts grease, oil, and wax resistance to the substrate.
Ans. 5. Nonetheless, the Examiner finds “the prior art exemplifies the applicant’s
claimed method, so the claimed grease, oil, and was [sic, wax] resistance
properties relating to the film formed by the method are present in the prior art.”
Ans. 6. The Examiner relies on In re Best, 562 F.2d 1252 (CCPA 1977), for
support. Ans. 6.
In Best, 562 F.2d at 1255, the court explained:
Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the
characteristics of his claimed product.
The Appellants contend that the coating disclosed in Nishijima is not
identical to the claimed coating but rather contains additional components, such as
heavy calcium carbonates which contain surfactants. Br. 6.
Turning to Nishijima, we find the disclosed coating contains rice grain- or
spindle-shaped precipitated calcium carbonate as a pigment component as well as
other pigments, such as heavy calcium carbonate. Nishijima, col. 2, ll. 48-54 and
col. 5, ll. 27-34. Moreover, Nishijima discloses that the coating solution may
include various auxiliaries, such as dispersing agents, thickening agents, water
retaining agents, anti-foaming agents, and waterproofing agents, which are
incorporated into ordinary pigments for coated papers. Nishijima, col. 5, ll. 55-59.
The Examiner contends that Nishijima does not teach that heavy calcium
carbonate is necessarily present in the composition. Ans. 14. However, the
Examiner has failed to direct us to an embodiment in Nishijima that does not
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include heavy calcium carbonate. See In re Arkley, 455 F.2d 586, 587 (CCPA
1972) (a rejection under 35 U.S.C. § 102 is proper only when the claimed subject
matter is identically disclosed or described in the prior art). In this regard, we note
that the coatings in the inventive examples of Nishijima (i.e., Examples 1-7)
include heavy calcium carbonate as well as a sodium polyacrylate-based dispersing
agent. Nishijima, col. 7, l. 21-col. 8, l. 8 and col. 9, l. 33-col. 10, l. 21.
Based on the foregoing, we find the Examiner has failed to establish that the
claimed coating and any specific coating described in Nishijima are substantially
identical. Therefore, the evidence of record fails to support a finding that the
coating of Nishijima necessarily or inherently imparts grease, oil and wax
resistance to a substrate as recited in claims 23 and 33. For this reason, the
§ 102(b) rejection of claims 23, 25, 27, and 29-33 based on Nishijima is not
sustained.
The Examiner does not rely on Jones or Somasundaran to cure the above-
identified deficiencies of Nishijima. Therefore, the § 103(a) rejection of claims 23
and 25-33 under 35 U.S.C. § 103(a) based on the combination of Nishijima, Jones
and Somasundaran is not sustained.
3. Rejection (3)
The Examiner finds Clitherow teaches a method of coating a paper substrate
by applying a water-based mineral coating comprising a filler material, a binder,
and calcium carbonate to the substrate. Ans. 7. The Examiner further finds:
Clitherow et al. teaches ground calcium carbonate such as chalk
whiting is appropriate for use with the invention (col. 3 ln. 51-53).
Paintmaking.com is cited as evidence that chalk whiting is a ground
natural chalk (para. 5), i.e. free from surfactants since natural chalk
would not have surfactants and is the only required ingredient.
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Ans. 7.
The Examiner finds Clitherow does not disclose that the coating imparts
grease, oil, and wax resistance to the substrate. Ans. 7. Nonetheless, relying on
Best, 562 F.2d at 1255, the Examiner finds “the prior art exemplifies the
applicant’s claimed method, so the claimed grease, oil, and was [sic, wax]
resistance properties relating to the film formed by the method are present in the
prior art.” Ans. 8. That is, performing the method described in Clitherow would
necessarily impart grease, oil, and wax resistance to a substrate coated with the
disclosed mineral coating.
The Appellant contends that the chalk whiting disclosed in Clitherow is
classified with precipitated calcium carbonate and thus is surface treated with
surfactants. Br. 8. For support, the Appellant relies on a Specialty Minerals data
sheet (Exhibit D in the Evidence Appendix) which is said to establish that “most
grades of PCC [precipitated calcium carbonate] are surface treated with
surfactants.” Br. 8. The Appellant also relies on the Specialty Minerals data sheet
to establish that calcium carbonate identified as “BRITOMYA V” or BRITOMYA
S” in Clitherow’s examples is treated with surfactants. Br. 8-9.
The Appellant’s argument is not persuasive of reversible error. According
to Clitherow, chalk whiting, “BRITOMYA V,” and “BRITOMYA S” are ground
calcium carbonates. Clitherow, col. 3, ll. 51-53 (disclosing that mineral fillers such
as “calcium carbonate (e.g. precipitated calcium carbonate or ground calcium
carbonate, such as chalk whiting)” (emphasis added)); Clitherow, col. 11, ll. 51-53
(disclosing that “Britomya V” and “Britomya S” are ground calcium carbonates).
However, the Specialty Minerals data sheet relied on by the Appellants relates to a
particular ultrafine precipitated calcium carbonate identified by the trade name
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“MULTIFEX-MM®.” See Exhibit D in the Evidence Appendix. The Appellant
has failed to establish any equivalence between the ground calcium carbonates
disclosed in Clitherow and the precipitated calcium carbonate described in the
Specialty Minerals data sheet. Therefore, the Specialty Minerals data sheet does
not support a finding that the chalk whiting or ground calcium carbonate disclosed
in Clitherow is treated with surfactants.
In sum, the weight of the evidence supports the Examiner’s finding of
anticipation. Therefore, the § 102(b) rejection of claims 23, 24, 26, 32, and 33
based on Clitherow and as evidenced by paintmaking.com or Hansen is sustained.
4. Rejection (4)
Clitherow teaches that the calcium carbonate used in the disclosed coating
may be either precipitated calcium carbonate or ground calcium carbonate. The
Examiner finds Clitherow does not expressly disclose that the precipitated calcium
carbonate is essentially free from surfactants. However, the Examiner finds Jones
teaches a precipitated calcium carbonate which is not treated with surfactants and
concludes that it would have been obvious to one of ordinary skill in the art to
modify the precipitated calcium carbonate disclosed in Clitherow with the
precipitated calcium carbonate disclosed in Jones. Ans. 11.
The Appellant argues:
The fact that Jones et al, even in view of Somasundaran, further treats
a PCC with a non-surfactant, does not equate to the fact that the PCC
of Clitherow et al has not been treated with surfactants since Specialty
Minerals teaches most PCCs are treated with surfactants.
Br. 11.
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The Appellant’s argument fails to appreciate the rejection on appeal. The
Examiner relies on Jones, not Clitherow, as teaching a precipitated calcium
carbonate which is free from surfactants and modifies Clitherow’s precipitated
calcium carbonate with the precipitated calcium carbonate disclosed in Jones.
Thus, it is of no moment that the precipitated calcium carbonate disclosed in
Clitherow may have been treated with a surfactant.9 See In re Keller, 642 F.2d
413, 425 (CCPA 1981) (the test for obviousness is not whether the claimed
invention must be expressly suggested in any one or all of the references; the test is
what the combined teachings of the references would have suggested to one of
ordinary skill in the art).
For the reasons set forth above, the § 103(a) rejection of claims 23, 24, 26-
28, 32, and 33 based on the combination of Clitherow, Jones, and Somasundaran10
is sustained.
C. DECISION
The Examiner’s decision rejecting claim 32 under 35 U.S.C. § 112, second
paragraph, is affirmed.
The Examiner’s decision rejecting claims 23, 25, 27, and 29-33 under
35 U.S.C. § 102(b) as anticipated by Nishijima is reversed.

9 We note that the Appellant has failed to establish any equivalence between the
particular ultrafine precipitated calcium carbonate described in the Specialty
Minerals data sheet (i.e., “MULTIFEX-MM® PCC) and the precipitated calcium
carbonates described in Clitherow or Jones.
10 Somasundaran is not prior art under 35 U.S.C. § 102. However, the Examiner
merely relies on Somasundaran to teach a “universal fact,” i.e., to establish that
casein, which is used to coat the precipitated calcium carbonate in Jones, is not a
surfactant. See MPEP (8th ed., Rev. 9, Aug. 2012).
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The Examiner’s decision rejecting claims 23, 24, 26, 32, and 33 under
35 U.S.C. § 102(b) as anticipated by Clitherow as evidenced by paintmaking.com
or Hansen is affirmed.
The Examiner’s decision rejecting claims 23 and 25-33 under 35 U.S.C.
§ 103(a) as unpatentable over Nishijima in view of Jones as evidenced by
Somasundaran is reversed.
The Examiner’s decision rejecting claims 23, 24, 26-28, 32, and 33 under
35 U.S.C. § 103(a) as unpatentable over Clitherow in view of Jones as evidenced
by Somasundaran is affirmed.
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-IN-PART

kmm