Ex Parte Puttonen et al

Patent Trial and Appeal Board

May 10, 2017

13319447 (P.T.A.B. May. 10, 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.
13/319,447 11/08/2011 Sami Puttonen 221105-1810 4022
24504 7590 05/12/2017
THOMAS I HORSTEMEYER, LLP
400 INTERSTATE NORTH PARKWAY SE
SUITE 1500
ATLANTA, GA 30339
EXAMINER
ZHAO, XIAO SI
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
05/12/2017 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):
uspatents @ tkhr.com
ozzie. liggins @ tkhr.com
docketing @ thomashorstemeyer. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMI PUTTONEN, MARI OJANEN, and
KIMMO HUHTALA
Appeal 2016-004391
Application 13/319,447x
Technology Center 1700
Before: BRADLEY R. GARRIS, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1 2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
4—7, 9—15, and 17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Kemira OYJ as the real party in interest. Appeal Br. 3.
2 In our Opinion, we refer to the Specification filed November 8, 2011
(“Spec”); the Final Action electronically delivered on March 13, 2015
(“Final Act.”); the Advisory Action electronically delivered on June 8, 2015
(“Adv. Act.”); the Appeal Brief filed July 30, 2015 (“Appeal Br.”); the
Examiner’s Answer electronically delivered on January 15, 2016 (“Ans.”);
and the Reply Brief filed on March 14, 2016 (“Reply Br.”).
Appeal 2016-004391
Application 13/319,447
The claims are directed to methods for preparing inkjet recording
sheets. Claim 1, reproduced below with disputed matter emphasized, is
illustrative of the claimed subject matter:
1. Method for preparing an inkjet recording sheet
comprising wood or lignocellulosic fibre material, the method
comprising:
treating the recording sheet surface with a composition
comprising 10-80 parts of calcium sulphate dihydrate and 40-
95 parts of starch solution, and
forming a treatment layer on to the surface so that the inkjet
recording sheet obtains a Cobb60 value of < 70g/m2, measured
using standard method ISO 535.1991.
Appeal Br. 12 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Vieira et al. US 5,073,448 Dec. 17, 1991
(“Vieira”)
Sarkar et al. US 2002/0022118 Al Feb. 21,2002
(“Sarkar”)
Nishita US 2002/0067402 Al June 6, 2002
Feret et al. US 2002/0069989 Al June 13, 2002
(“Feret”)
Kotaki et al. US 2003/0020790 Al Jan. 30, 2003
(“Kotaki”)
Takashima et al. US 2004/0166252 Al Aug. 26, 2004
(“Takashima”)
Blum et al. US 2004/0182533 Al Sept. 23, 2004
(“Blum”)
Okutani et al. US 2004/0219379 Al Nov. 4, 2004
(“Okutani”)
Sanne et al. US 2005/0279474 Al Dec. 22, 2005
(“Sanne”)
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Appeal 2016-004391
Application 13/319,447
Zhang US 2009/0199740 A1 Aug. 13, 2009
Fehtimaki EP 0 875 537 A1 Nov. 4, 1998
Ventola EP 1 688 539 A1 Aug. 9, 2006
REJECTIONS
The claims stand rejected under pre-AIA 35 U.S.C. § 103(a) as
follows:
1. claims 1 and 17 over Ventola in view of Feret;
2. claim 4 over Ventola in view of Feret and further in view of
Sanne;
3. claims 5 and 6 over Ventola in view of Feret and further in
view of Fehtimaki;
4. claim 7 over Ventola in view of Feret and further in view of
Zhang;
5. claim 9 over Ventola in view of Feret and further in view of
Okutani;
6. claim 10 over Ventola in view of Feret and further in view of
Sarkar;
7. claim 11 over Ventola in view of Feret and further in view of
Vieira;
8. claim 12 over Ventola in view of Feret and further in view of
Blum;
9. claim 13 over Ventola in view of Feret and further in view of
Kotaki;
10. claim 14 over Ventola in view of Feret and further in view of
Nishita;
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Application 13/319,447
11. claim 15 over Ventola in view of Feret and further in view of
Takashima.
OPINION
Appellants argue that claims 1 and 17 are not obvious over Ventola in
view of Feret. Appeal Br. 7—8. We select claim 1 as representative of the
group.
In rejecting claim 1, the Examiner finds that Ventola discloses a
method of forming a coating composition for coating paper or other fibrous
webs wherein the coating comprises 20-100% by weight of gypsum
(calcium sulphate dihydrate) and at least 3% by weight of starch. Final Act.
3. The Examiner further finds Ventola discloses that adding gypsum results
in coated products with improved printing properties and that the amount of
starch affects the surface strength and paper gloss, as well as the runnability
of the composition. Id. (citing Ventola Tflf 2, 3, and 12).
Appellants argue in broad terms that the combination of Ventola and
Feret fails to teach all elements of claim 1. Appeal Br. 7—8. Appellants
focus, however, only on the disclosure of Ventola. See id. at 8—10.
Specifically, Appellants contend that (1) Ventola teaches away from
compositions having greater than 18% starch; and (2) a composition of
Ventola with more than 18% starch would leave recording sheets unfit for
their intended purpose. Id. at 8—9.
Ventola discloses that the binder of the coating “preferably comprises
less than 18% by weight of starch, calculated on the weight of pigment.”
Ventola 1 8 (emphasis added). In contrast, claim 1 requires “40-95 parts of
starch solution.” Appeal Br. 12 (Claims App’x) (emphasis added). “Starch
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Appeal 2016-004391
Application 13/319,447
solution” is defined in the Specification as “a water solution of starch that
has been cooked according to methods that are as such well-known for a
person skilled in the art.” Spec. 8,11. 19—20. Neither the Specification nor
the claims provide information on how much starch, as opposed to how
much starch solution, is required. Appellants contend that in paper coating,
the amounts of coating components are conventionally given as “parts”
calculated in relation to the mineral pigment, wherein the total pigment is
given the value 100. Reply Br. 2. Appellants then argue that, “[u]sing the
conventional way of defining the amounts of coating components, it can be
seen that the amount of starch is completely different.” Id. This argument is
unconvincing, as Appellants still compare “starch” in Ventola to “starch
solution” in claim 1. Appellants provide no evidence to support that “40-95
parts of starch solution” is outside the range of starch disclosed in Ventola.
Appellants’ argument that Ventola teaches away from a composition
comprising 18% by weight of starch or more is unpersuasive at least because
Appellants compare Ventola’s disclosure of percentage of starch to the
claimed parts of starch solution. In addition, Ventola discloses that the
starch binder of the coating “preferably comprises less than 18% by weight
of starch, calculated on the weight of pigment.” Ventola 1 8 (emphasis
added). But a “teaching away” requires more than the mere expression of a
general preference. Galderma Labs., L.P., v. Tolmar, Inc., 737 F.3d 731,
738 (Fed. Cir. 2013); see also In reMouttet, 686 F.3d 1322, 1334 (Fed. Cir.
2012) (“Mouttet fails to cite any reference suggesting that the claimed
invention would be unlikely to work using electrical circuitry; he alleges
only that it may be inferior for certain purposes.”). Teaching away requires
that a reference “criticize, discredit, or otherwise discourage the solution
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Application 13/319,447
claimed” by Appellants. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
At most, Ventola suggests that too high a starch content could affect surface
strength, but also teaches that the more starch the better runnability, and
runnability is to be balanced against surface strength. Ventola 113.
Ventola’s disclosure of a preference for less than 18% by weight of starch
fails to teach away from using more.
In arguing that Ventola’s composition with more than 18% starch
would leave the composition unfit for its intended purpose, Appellants again
implicitly treat 18 % by weight of starch as the same as “parts of starch
solution.” See Appeal Br. 8—9. As we noted, there is no support for this
supposition.
As convincingly explained by the Examiner, Ventola teaches that the
amount of starch in its composition is a result-effective variable. See Final
Act. 4; Ans. 5. Ventola teaches that the amount of starch content affects
runnability, as well as surface strength and paper gloss. Ventola 2, 3, and
12. “A recognition in the prior art that a property is affected by the variable
is sufficient to find the variable result-effective.” In re Applied Mat ’Is, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012). Where “the optimized variable is a
‘result-effective variable’ and the general conditions of a patent claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” Id. at 1295. The skilled
artisan required no more than routine experimentation to optimize the
amount of starch in Ventola’s composition.
Appellants’ arguments do not show reversible error by the Examiner
in finding claim 1 obvious over Ventola in view of Feret. We, therefore
sustain the rejection of claims 1 and 17.
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Application 13/319,447
Appellants contend that none of the other cited references against
dependent claims cure the alleged deficiencies of Ventola in view of Feret
with regard to claim 1. Appeal Br. 10. For the reasons above, we sustain
the rejections of claims 4—7 and 9—15 as obvious.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 4—7, 9—
15, and 17 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)(l)(iv).
AFFIRMED
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