Ex Parte ¿smus et al

Patent Trial and Appeal Board

Feb 16, 2016

12663419 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/663,419 06/07/2010 Lars lsmus
26694 7590 02/18/2016
VENABLELLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998
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.
43289-282860 3624
EXAMINER
LEONG, NATHAN T
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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):
PTOMail@Venable.com
lahill@venable.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARS ASMUS, LEENA KUNNAS, TARJA SINKKO,
TUOMOP APPILA, and MARI OJANEN
Appeal 2014-002684
Application 12/663419
Technology Center 1700
Before BRADLEY R. GARRIS, PETER F. KRATZ, and N. WHITNEY
WILSON, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1, 5 and 6 as unpatentable over
Wittosch et al. (US 6,548, 120 B 1, iss. Apr. 15, 2003) (hereinafter
"Wittosch") in view of Haavisto et al. (WO 2005/095711 Al, pub. Oct. 13,
2005) (hereinafter "Haavisto"). (Ans. 2). We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.
Appeal2014-002684
Application 12/663,419
Appellants claim a method for manufacturing paper comprising
calendering or pressing a base paper with a presser roll against a machine
glazed cylinder to obtain a base paper with a specific roughness, and coating
the base paper with a barrier layer to obtain a paper with a water vapor
permeability of no greater than 10 g/m2/24h (independent claim 1). The
method further comprises, in a single coating procedure, forming an
additional layer which comprises mineral particles and adhesive on one or
both sides of the barrier layer (dependent claim 5). In addition, the method
comprises calendering the coated paper (dependent claim 6).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A method for manufacturing paper, the method comprising:
providing a base paper with a first side and a second side,
treating at least the first side of the base paper to a
roughness level of Bendtsen roughness from 30 to 500 ml/min
by pressing the base paper with a presser roll against a smooth
and hot surface of a machine glazed cylinder or by
calendering the base paper, and
providing the first side of the base paper with a barrier
layer by a curtain coating method providing a plurality of
layers so that a water vapour permeability of the paper is not
greater than 10 g/m2/24h.
We will sustain the Examiner's rejection for the reasons given in the
Answer and below.
In rejecting claim 1, the Examiner finds that Wittosch teaches a
method for manufacturing a coated, water vapor resistant paper comprising
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Application 12/663,419
coating a base paper with multiple coatings to form a barrier layer via a
curtain coating method (Ans. 2). The Examiner also finds that Wittosch
does not teach that the coated paper has the claimed water vapor
permeability range of no greater than 10 g/m2/24hr (id.). Regarding this
deficiency, the Examiner finds that Wittosch evinces the number of coating
layers is a result effective variable affecting the barrier properties such as
water vapor permeability (id. at 2-3). The Examiner concludes it would
have been obvious to optimize the method of Wittosch depending on the
desired use of the paper, thereby achieving a water vapor permeability
within the claimed range (id.).
The Examiner also finds that Wittosch is silent regarding calendering
a base paper to the claimed Bendtsen roughness level (id. at 3). Regarding
this deficiency, the Examiner finds that Haavisto teaches a method of
making a coated paper by pre-treating the surface to a Bendtsen roughness
of about 0-200 ml/min by calendering, \vhich overlaps the claimed range of
30-500 ml/min (id.). The Examiner concludes that it would have been
obvious to roughen the surface of Wittosch's paper according to the method
of Haavisto because Wittosch teaches the desirability of calendering paper
prior to coating, and Haavisto teaches that a Bendtsen roughness within the
disclosed range aids in the spreading of subsequent coatings on paper (id.).
As for claim 5, the Examiner finds Wittosch teaches the paper can
include an additional basecoat containing mineral fillers and other materials
adhering to the basecoat (id. at 4).
As for claim 6, the Examiner finds that Wittosch does not teach
calendering a coated paper, but finds that Haavisto teaches calendering a
coated paper as a finishing process (id.). The Examiner concludes it would
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Application 12/663,419
have been obvious to calendar Wittosch's coated paper because Haavisto
teaches that the finishing process smoothens and homogenizes the coating,
which would be beneficial to the process of Wittosch because Haavisto
teaches making printable paper (id.).
Appellants contend that the cited references do not suggest the
claimed method because "the lowest number from the broadest range of
Wittosch [], 12.4 g/m2/24h, does not overlap at all with the claimed water
vapor permeability" value (Reply Br. 2-3). Appellants' argument is not
persuasive because it does not address the Examiner's finding that the
number of coating layers is a result effective variable that affects the paper's
water vapor permeability. "[D]iscovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the art."
In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Further, contrary to
Appellants' assertion, 0.8 g/100 in2/24h (i.e., 12.4 g/m2/24h) is not the
lov,rest value of a discrete range disclosed in \Vittosch. Rather, \Vittosch
states "[ t ]he water vapor transmission rates of the coated stocks are typically
in the range of 0.8 to 7 g/100 sq.in./24h" (emphasis added, Wittosch, col. 5,
11. 47--49). Thus, Wittosch allows for coated water vapor transmission rates
that fall outside of the range that would be considered typical.
Appellants further contend that "reading the lowest number from the
broadest range disclosed in the cited art ... is an unduly broad interpretation
of the reference" and that the water vapor examples disclosed in Wittosch
"are much higher than the lowest number from the broad range relied on"
(Reply Br. 3). These arguments are likewise unpersuasive because the
teachings of Wittosch are not limited to the disclosed "typical" water vapor
transmission rates, or to specific examples disclosed therein. "It is well
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Appeal2014-002684
Application 12/663,419
settled that a prior art reference is relevant for all that it teaches to those of
ordinary skill in the art." In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992).
Appellants further contend that "Haavisto [] suggests a different
technical field than the claimed invention" in that it "suggests printing paper
... and how to achieve better printing properties", whereas "the claimed
invention ... addresses ... how to achieve better water vapor permeability
properties for barrier papers" (Reply Br. 5). This argument lacks persuasive
merit, however, because Haavisto discloses, and Appellants' claims recite,
calendering a paper substrate prior to coating it. (Haavisto, col. 5, 1.15---col.
6, 1.11; independent claim 1 ). Further, Appellants' Specification indicates
that paper manufactured by the inventive method not only acts as a
protective barrier to external moisture, but also "advertises a brand [wherein]
a fine appearance and printing create an image of a product of good quality",
with one particular example possessing good printability properties (Spec.
1·1 (Ll ,. '7· 1Q_l0\ _._._._v _._~, 1._1_v _.__,,,}•
Appellants further contend that the cited references do not suggest a
method that can provide a barrier layer with a single coating step (Reply Br.
6-7). Appellants also contend that the coating layer produced on the paper
according to the claimed method "has an unaltered thickness" (id. at 7). We
find these arguments to be unpersuasive, however, because they are directed
to subject matter that is not claimed. Specifically, the claims do not require
the barrier layer to be prepared in a single step, or the coating to be any
uniform thickness. In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
("[A]ppellant's arguments fail from the outset because ... they are not based
on limitations appearing in the claims.")
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Application 12/663,419
Regarding claim 5, Appellants contend that neither Wittosch nor
Haavisto suggests an adhesive. This contention is technically erroneous, and
therefore unpersuasive, because Wittosch discloses that the coatings
comprise a water-based dispersion of a polymer such as polyvinyl alcohol
(Wittosch, col. 5, 11. 22-25). Polyvinyl alcohol is identified in Appellants'
Specification as a preferred adhesive (Spec. 5: 17-20). That Wittosch fails to
explicitly refer to polyvinyl alcohol as an adhesive is of no relevance
because "[f]rom the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing." In re Papesch,
315 F.2d381, 391(CCPA1963).
Regarding claim 6, Appellants contend that Haavisto "only suggests
pre-calendering and not calendering a finished coated paper" (Reply Br. 8).
However, this argument is also technically erroneous and therefore
unpersuasive. Haavisto discloses that after a curtain coating process, the
surface of the coated fibrous \~1eb is finished \~1ith an apparatus selected from
six different types of calenders and a brush polisher (Haavisto, col. 5, 11. 29-
34).
Thus, Appellants have not revealed error in the Examiner's
obviousness conclusion, and for the reasons expressed by the Examiner and
above, we sustain the§ 103 rejection advanced in this appeal.
The decision of the Examiner is AFFIRMED.
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Application 12/663,419
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
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