Ex Parte Singh et al

Patent Trial and Appeal Board

Feb 25, 2016

13188507 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/188,507 07/22/2011
1726 7590 02/25/2016
INTERNATIONAL PAPER COMPANY
6283 TRI-RIDGE BOULEVARD
LOVELAND, OH 45140
FIRST NAMED INVENTOR
KAPIL M. SINGH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CSP-048403-US 8324
EXAMINER
CORDRAY, DENNIS R
ART UNIT PAPER NUMBER
1741
MAILDATE DELIVERY MODE
02/25/2016 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 KAPIL M. SINGH, MICHAEL F. KOENIG, and
LARRY HOLLMAIER
Appeal2014-003119
Application 13/188,507
Technology Center 1700
Before PETER F. KRATZ, MICHAEL P. COLAIANNI, and
JULIA HEANEY, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003119
Application 13/188,507
.l .... ,1 .... ,..,.,-TTr"l,..,,1\-1,..,.A, .. r- .. • ,• £' .. • Appellants' appeal unaer j) u.~.L. s U4 me rma1 reJecuon or ciam1s
1-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to paper products and a method of
making paper products having a size coating containing a pigment and a
starch (Spec. i-f 1 ). The size coating reduces the amount of ink required to
tint the paper product (Spec. i-f 10).
Claim 1 is illustrative:
1. A white tinting file folder comprising:
a paper web including cellulosic fibers, said paper web having a density
from about 5 lb/3000 ft2/mil to about 15 lb/3000 ft2/mil and a caliper after
calendaring from 3 to about 30 mils; and
a size-press applied coating composition at least substantially covering a
first surface of said paper web, said coating composition including:
a styrene acrylic emulsion,
a starch, and
pigment,
wherein a weight ratio of said pigment to said starch is at least 1 :4; and
wherein said paper web treated with said coating composition provides
for a reduction of ink in a subsequent flexographic printing process in an
amount up to about 13 % compared to paper webs not treated with said
coating composition.
Appellants appeal the following rejection:
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Williams et al. (US 2006/0231227 Al, published Oct. 19, 2006) (hereinafter
"Williams") in view of Song et al. (US 2007/0125267 Al, published June 7,
2007) (hereinafter "Song") and Jackson et al. (US 2009/0320708 Al,
published Dec. 31, 2009) (hereinafter "Jackson").
1 Appellants identify the real party in interest as International Paper
Company. Br. 1.
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Application 13/188,507
Appellants' arguments focus on the subject matter of claims 1, 3, 4,
and 102 (App. Br. 4--14, 17). Appellants' arguments regarding claims 5-9
and 11-20 rely on arguments made regarding claim 1 (App. Br. 18-22).
Accordingly, claims 5-9, and 11-20 will stand or fall with our analysis of
the rejection of claim 1.
FINDINGS OF FACT & ANALYSIS
We have fully considered Appellants' arguments and find ourselves in
agreement with the Examiner that the combined teachings of Williams, Song
and Jackson would have rendered obvious the subject matter of claims 1 and
4 for the reasons advanced by the Examiner on pages 2-7 of the Answer and
pages 2-6 of the Final Action. We add the following analysis primarily for
emphasis.
The Examiner finds that Williams teaches a file folder having a size
composition applied to the surface of the file folder paper stock (Final Act.
2-3). The Examiner finds that Williams does not teach a styrene acrylic
emulsion, using calcium chloride, the required weight ratio of pigment to
starch, or reduction of ink required properties (Final Act. 3). The Examiner
finds that Song discloses coating a paper substrate with a sizing composition
that includes a starch binder and a pigment with a starch to pigment ratio
most preferably from 10: 1 to 1:3, which overlaps the claimed starch to
pigment ratio range (Final Act. 3). The Examiner finds that Song further
2 Appellants do not indicate specifically that claims 3 and 10 are separately
argued, however, Appellants argue the subject matter (i.e., calcium chloride)
of those claims. Appellants acknowledge that calcium chloride is only
recited in claims 3 and 10 (App. Br. 2-3).
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Application 13/188,507
teaches that the sizing composition may contain calcium chloride as an
inorganic salt. Id. The Examiner finds that Jackson discloses a sizing
composition that when applied to a paper substrate provides enhanced print
density for flexographic printing inks at reduced concentrations and equal or
better print density and dry time (Final Act. 4). The Examiner finds that
Jackson's paper substrate has a density and weight that overlaps the paper
substrates of Williams and Song. Id. The Examiner finds that Jackson
discloses that the sizing agent includes an inorganic salt such as calcium
chloride and preferably a surface sizing agent is a styrene acrylic emulsion.
Id. The Examiner concludes that it would have been obvious to select and
use a sizing composition comprising the required weight ratio of pigment to
starch, calcium chloride and a styrene acrylic emulsion surface sizing agent
in the sizing/ coating composition of Williams in view of Song and Jackson
in order to obtain the enhanced print density, color-to-color bleed, print
sharpness and/or image dry time as disclosed by Song and Jackson (Final
Act. 5). The Examiner finds that after combining the teachings of Song and
Jackson with Williams' paper file folder, the reduction in ink required by
claim 1 would flow naturally from the coated paper because the paper would
have been identical to the claimed coated file folder paper (Final Act. 5).
Appellants argue that Williams does not teach using a styrene acrylic
emulsion, calcium chloride or the required starch to pigment ratio (App. Br.
6). The Examiner already found, however, that Williams does not teach the
argued features (Final Act. 3). In other words, Appellants' argument merely
points out what the Examiner finds is missing from Williams.
Appellants argue that paragraph 19 of Song discloses a preference for
sodium chloride, a monovalent inorganic salt, and not calcium chloride
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Application 13/188,507
(App. Br. 8; Reply Br. 10-11). Although Song teaches sodium chloride is
the preferred salt in paragraph 19, a mere preference does not constitute a
teaching away from a broader disclosure of suitable inorganic salts which
include divalent cationic metals such as calcium with anionic counterion
including chlorine (i-f 19). In other words, Song discloses several suitable
inorganic salts that may be used as part of the composition, but that does not
render any one of the inorganic salts less obvious. Merck & Co., v. Biocraft
Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (A disclosure of a
multitude of effective compositions that are used for same purpose as the
claimed invention does not render any particular formulation less obvious).
Moreover, the nature of Song's teaching is not to disparage or discourage
use of calcium chloride because it would be not produce the result sought by
Appellants. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We do not find
that Song's preference for using sodium chloride constitutes a teaching away
from using calcium chloride in the coating composition. Although
Appellants argue an "obvious to try" rationale in the Reply Brief at pages
11-12 with regard to the selection of calcium chloride, such an argument is
misplaced as we find that the Examiner relies on the teachings and
suggestions of the references, not an obvious-to-try rationale.
Appellants argue that the Examiner's statement that Jackson teaches
that styrene acrylic emulsion is a preferred surface sizing agent is not a fair
characterization of Jackson's teachings (App. Br. 9). Appellants contend
that there is no particular preference disclosed by Jackson for the styrene
acrylic emulsion required by claim 1 (App. Br. 10; Reply Br. 12-14).
Appellants contend that Jackson's paragraph 107 does not teach that
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Application 13/188,507
combinations of the sizing agents including starch and styrene acrylic
emulsions should be used. Id.
The Examiner finds that Jackson teaches a preference for styrene
acrylic emulsion as the sizing agent (Ans. 5). We agree in that Jackson
discloses broadly that any sizing agent may be used but then limits that
disclosure to a list of ten preferred surface sizing agents that include styrene
acrylic emulsion. Therefore, contrary to Appellants' arguments, an
ordinarily skilled artisan would have been directed to select among ten
preferred sizing agents in making the sizing composition. Selecting among
ten preferred and effective sizing agents does not render the selection of any
one of the sizing agents less obvious. Compare Merck &Co., 874 F.2d at
807 (Selection was among thousands of effective combinations). Regarding
Appellants' argument that Jackson does not teach the combination of starch
and styrene acrylic emulsion as sizing agents, we concur with the
Examiner's finding on page 5 of the Answer. On page 5 of the Answer, the
Examiner finds that Jackson and Song each disclose that starch may be used
as a binder in sizing compositions and is used with other sizes such as
styrene acrylic emulsion. Jackson discloses that combinations of sizing
agents, including starch and styrene acrylic emulsion, may be used in the
sizing composition (Jackson i-fi-f 107, 109).
Appellants argue that the Examiner's reasons for combining the
teachings of Williams, Song, and Jackson lack appropriate factually
supported rational underpinning for combining these references (App. Br.
12; Reply Br. 6-7). Appellants contend that the Examiner's conclusion is
based upon mere conclusory statements instead of articulated reasoning with
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rational underpinning. Id. Appellants also contend that the Examiner
engaged in impermissible hindsight (App. Br. 13-14; Reply Br. 8-9).
The Examiner's reasons for combining the teachings of Williams,
Song, and Jackson are located on pages 4--5 of the Final Action. The
Examiner's reason for combining the teachings of the applied prior art is to
obtain a paper material with enhanced print density, color-to-color bleed,
print sharpness and/or image dry time as disclosed by Song and Jackson
(Final Act. 5). The Examiner's reasons are based upon the teachings of the
references, not impermissible hindsight. The Examiner applies Song's
teaching that the sizing composition improves substrate's print density,
color-to-color bleed, print sharpness, and/or image dry time (i-f 8). The
Examiner further applies Jackson's teaching that a composition applied to a
paper substrate provides enhanced print density and dry time for
flexographic inks (i-fi-f 2, 6, 10). The Examiner's reasons for the combination
of Song's and Jackson's coating compositions with Williams' coating
composition for paper are not conclusory or lacking articulated reasoning
but, rather, are based upon the teachings of the references. Indeed, contrary
to Appellants' argument that the Examiner's reasons are "made-up" (App.
Br. 14) (emphasis omitted), the Examiner's findings regarding the teachings
of Song and Jackson as providing a reason for the modification of Williams'
coating composition are grounded in the disclosures of Song and Jackson.
Appellants contend that Song and Jackson do not disclose file folders
and so there is no reason to modify Williams' file folder with the teachings
of Song and Jackson (Reply Br. 16-17). However, the Examiner finds that
each reference teaches paper of similar weight and thickness. Song and
Jackson teach applying a coating to the paper to achieve greater print
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Application 13/188,507
density, color-to-color bleed and print sharpness (Song i18; Jackson i1i12, 6,
10). Williams teaches a file folder that uses a paper web that may contain
pigments and dyes (i-f 4 7) and is coated with a sizing composition that may
include pigments (i-f 58). In other words, Williams file folder can be colored
using pigments and dyes. The combined teachings of the applied prior art
would have suggested using Song's and Jackson's coating composition as
William's size coating in order to achieve greater print density, color-to-
color bleed and print sharpness. The Examiner's findings that Williams,
Song and Jackson are analogous art is not the sole basis for the combination
but rather, one of several reasons why one of ordinary skill in the art would
have combined the teachings to arrive at the claimed invention.
With regard to claim 4, Appellants argue that the Examiner's finding
that Song and Jackson teach minimal penetration of the coating composition
into the paper mischaracterizes Song's and Jackson's teaching (App. Br. 17).
Appellants contend that Song and Jackson teach minimizing penetration of
the coating into the paper, while the claims require at least partial
penetration of the coating into the surface of the paper web. Id.
Regarding claim 4, the Examiner finds that paper is porous by nature
and would permit at least some minimal penetration of the sizing
composition into the paper (Final Act. 5). The Examiner finds that Song and
Jackson each discloses minimal interpenetration of the sizing composition
into the paper substrate. Id.
We note that claim 4 merely recites that "at least a portion of said
coating composition penetrates the surface of said paper web." The claim
does not require any particular depth of penetration. Accordingly, any
amount of penetration of the coating into the paper substrate would suffice
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to satisfy the claim. With the proper claim construction in mind, we find
that the Examiner correctly finds Song's and Jackson's minimal penetration
of the coating into the surface of the paper web satisfy the requirements of
claim 4. Indeed, Figure 2 in each of Song and Jackson shows an
interpenetration layer 4 of the sizing coating 2 into the cellulose fiber
substrate 3 (Song i-f 37; Jackson i-f 132).
On this record, we affirm the Examiner's§ 103 rejection.
DECISION
The Examiner's decision 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).
ORDER
AFFIRMED
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