Ex Parte Swoboda et al

Board of Patent Appeals and Interferences

May 29, 2012

11454570 (B.P.A.I. May. 29, 2012)

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.
11/454,570 06/16/2006 Dean P. Swoboda 20075-USA 8468
31743 7590 05/29/2012
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-41
ATLANTA, GA 30303
EXAMINER
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
05/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEAN P. SWOBODA, RANA SHEHADEH,
ANTHONY J. SWIONTEK, and GREGORY J. ANDERSON
__________

Appeal 2010-012538
Application 11/454,570
Technology Center 1700
____________

Before CHARLES F. WARREN, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
15-61. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to a method of making foamed
paperboard composite that includes in situ foaming of the low density
polyethylene (LDPE) portion of the composite (Spec. 1: 10-22). The
Specification discloses that the LDPE portion used in the method has a melt
index (MI) of greater than 8 to 20 g/10 min. (Id. at 3:2-3).
Claims 15 and 34 are illustrative:
15. A method for making a foam paperboard laminate,
comprising:
a) providing paperboard having an outer and an inner
surface wherein the paperboard has a moisture content of from
about 4 wt% to about 10 wt%, based on total weight of the
paperboard;
b) providing a melted LDPE having a melt index of at
least about 8.0 g/10 min as measured by ASTM D 1238;
c) applying the melted LDPE to the outer surface of the
paperboard using an extruder, thereby providing a LDPE-coated
paperboard material; and
d) heating the LDPE-coated paperboard material at a
temperature of from about 220°F to about 330°F for at least
about 30 seconds thereby resulting in release of the moisture
from the paperboard in the form of steam, wherein the amount
of steam is sufficient to provide a LDPE foam, and wherein the
foam is adhered to the paperboard surface, thereby providing a
foam-paperboard laminate.
34. A method for making a LDPE foam-paperboard
laminate comprising:
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a) providing paperboard having an inner and an outer
surface, wherein the paperboard has a moisture content of from
about 4 wt % to about 10 wt %, based on total weight of the
paperboard;
b) providing a melted LDPE having a melt index of at
least 5.0 g/10 min as measured by ASTM D 1238;
c) applying the melted LDPE to the outer surface of the
paperboard using an extruder, wherein the LDPE is applied at a
web speed of at least about 325 feet per minute, thereby
providing a LDPE-coated paperboard material;
d) heating the LDPE-coated paperboard material at a
temperature of from about 220 °F to about 330 °F for at least
about 30 seconds thereby providing moisture release from the
paperboard in the form of steam, wherein the amount of steam
is sufficient to result in foaming of the LDPE, and wherein the
foam is adhered to the paperboard surface the paperboard
material, thereby providing a foam-paperboard laminate
comprising foam cells, wherein at least 90 % of the foam cells
have an aspect ratio of about 2.0 or greater.
Appellants appeal the following rejections:
1. Claims 15-20, 26-32, 48, 49, 51, 52, and 54-60 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Iioka (US 4,435,344
issued Mar. 6, 1984) in view of Roox (US 4,918,112 issued Apr. 17,
1990).
2. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Iioka in view of Roox and Chiang (US 4,859,379 issued Aug. 22,
1989).
3. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Iioka in view of Roox and Waggoner (US 3,904,806 issued Sept.
9, 1975).
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4. Claim 53 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Iioka in view of Roox and Peer Jr. (US 4,691,858 issued Sept. 8,
1987).
5. Claims 23-25, 33-40, 43-47, 50, and 61 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Iioka in view of Roox and Brinley
(US 5,232,535 issued Aug. 3, 1993).
6. Claim 41 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Iioka in view of Roox, Brinley and Chiang.
7. Claim 42 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Iioka in view of Roox, Brinley and Waggoner.

With regard to rejections (1) and (5), Appellants argue independent
claims 15, 34, and 48 (App. Br. 11-12, 16, 22-23). Appellants further argue
dependent claims 28-30 and 54-56 (id. at 13-18). While Appellants recite
the subject matter of claims 25, 45, and 61 with regard to rejection (5),
merely stating what a claim recites does not constitute a separate argument
of the claim. 37 CFR § 41.37(c)(1)(vii) (2011). Appellants do not
separately argue the claims under rejections (2), (3), (4), (6), and (7), such
that the claims under these rejections will stand or fall with the independent
claim from which they depend (App. Br. 11-23).

Rejections (1) and (5)
ISSUES
1. Did the Examiner reversibly err in determining that the teachings of
Iioka and Roox would have suggested using an LDPE having a melt
index of at least 5.0 g/10 min. (claim 48) or at least 8.0 g/10 min.
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(claim 15) or the teachings of Iioka, Roox and Brinley would have
suggested using an LDPE having a melt index of at least 5.0 g/10 min.
and a web speed of at least about 325 feet per minute (claim 34)? We
decide this issue in the negative.
2. Did the Examiner reversibly err in determining that the claimed
amount and aspect ratio of claims 28 and 29, and the amount and
machine direction (MD) ratio of claim 30 would have flowed
naturally from following the teachings and suggestions of the
combined prior art? We decide this issue in the negative.
3. Did the Examiner reversibly err in finding that Roox teaches the
VICAT softening point of less than the hot press temperature of 15 to
110 degrees Celsius such that Roox’s VICAT softening point range
overlaps and includes Appellants’ claimed VICAT softening points or
that the same material as claimed is taught by Iioka in view of Roox
and so the blend must have the same properties such as the VICAT
temperature ? We decide this issue in the negative.
4. Does Appellants’ evidence of unexpected results rebut the Examiner’s
prima facie obviousness rejection? We decide this issue in the
negative.

FINDINGS OF FACT AND ANALYSES
Issue (1)
The Examiner finds that Iioka teaches the subject matter of
independent claims 15, 34, and 48, except for the claimed melt index and the
web speed (claim 34) (Ans. 4-5 and 8-9). The Examiner finds that Roox
teaches an LDPE blend that has a melt index from 0.1 to 500 g/10 min.,
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which overlaps Appellants’ claimed melt index range (id. at 4; 9). The
Examiner finds that Roox recognizes the melt index as a result effective
variable for controlling viscosity and ease of extrusion that would have been
routinely optimized. Id. The Examiner concludes that it would have been
obvious to substitute Roox’s polymer blend for Iioka’s thermoplastic
material because Roox teaches such blends give good quality foams having
many desirable properties (Ans. 5).
Regarding claim 34, the Examiner finds that Iioka and Roox do not
teach the claimed web speed and the Examiner relies on Brinley to teach that
web speeds from 50 to 500 feet per minute have been used in forming
paperboard and low density polyethylene laminates (id. at 9). The Examiner
concludes that it would have been obvious to use Brinley’s web speed with
Iioka’s process as such are common web speeds used in extruding polymer
films on paper webs. Id.
Appellants argue that Iioka and Roox do not teach using an LDPE
having a melt index of at least 5.0 g/10 min. or 8.0 g/10 min. as required by
claims 15, 34, and 48 (App. Br. 12). Appellants contend that Roox teaches a
blend of polymers, not a pure LDPE, having a melt index range that overlaps
Appellants’ range. Id. Appellants contend that Roox teaches away from
using pure LDPE due to adhesion problems (App. Br. 20).
The immediately preceding arguments are not persuasive in light of
the Examiner’s finding that the claims are not limited to pure LDPE and
would reasonably include the blends of LDPE taught by Roox (Ans. 14).
Appellants do not respond to the Examiner’s claim construction. While the
Specification gives a definition of “LDPE” as low density polyethylene,
such definition does not exclude additional materials or blends of LDPE
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(Spec. 8: 23-29). Appellants have not directed us to any part of the
Specification that limits the LDPE recited in the claims to only pure LDPE
(App. Br. 12). The claim uses the open-ended transitional language
“comprising” and does not exclude any additional material or steps.
Appellants further argue that the Examiner has not established that the
melt index is a result effective variable for affecting the extrusion of the
material (id. at 16). Appellants contend that the Examiner engaged in
impermissible hindsight in determining that melt index is used to control
extrusion. Id.
The Examiner finds that Roox teaches a range of melt indices that
overlaps Appellants’ claimed range (Ans. 4, 9, 13). The Examiner finds that
Roox’s focus on the melt index of the blend indicates that the melt index is
an important variable for controlling viscosity and thus extrusion. Id. Roox
further discloses using higher melt indices to permit dispersion within the
blend (col. 3, ll. 12-15). Based on these findings, we agree with the
Examiner that Roox recognizes melt index is a result effective variable for
controlling the ability of extruded materials to disperse. An improved
dispersability of the materials in the blend would affect viscosity, among
other blend properties, and thus ability to extrude or process the blend. We
do not find that the Examiner engaged in impermissible hindsight in
determining that the melt index of Roox’s LDPE blend is a result effective
variable that would have been optimized to a value within the claimed range.
Appellants further argue that Brinley does not teach or suggest using
the web speeds while extruding LDPE with a melt index of at least 5.0 g/10
min. to provide a foam-paperboard laminate (App. Br. 23). Appellants argue
that there is no reasonable expectation of success or motivation for one of
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ordinary skill in the art to extrude LDPE at the claimed web speeds to
provide foamed paperboard. Id. Appellants contend that the combination of
Brinley, Iioka, and Roox cannot teach or suggest the claimed invention
because Brinley does not teach a correlation between web speed and melt
index (id.). Appellants contend that the Examiner failed to provide
articulated reasoning with rational underpinnings to support the obviousness
conclusion (App. Br. 18). Appellants argue that the Examiner’s stated
reasons for the obviousness conclusion are conclusory. Id. Appellants argue
that the Examiner engaged in impermissible hindsight in combining Iioka,
Roox and Brinley (App. Br. 19).
The Examiner’s stated rejections are not based on impermissible
hindsight or conclusory statements, but rather the teachings of the prior art.
Specifically, the Examiner finds that both Roox and Iioka are silent
regarding the web speed and relies on Brinley to teach conventional web
speeds for forming polyethylene and paperboard laminates (Ans. 8-9). The
Examiner finds that Roox and Iioka teach forming foamed paperboard
laminates (id.). The Examiner concludes that it would have been obvious to
use a web speed within Brinley’s range and that overlaps Appellants’
claimed range in Iioka’s process as modified by Roox as Brinley states that
such web speeds are suitable for extruding polymer films onto a paper web
citing column 3, line 66 to column 4, line 4 of Brinley (id. at 9).
The Examiner further concludes that it would have been obvious to
substitute Roox’s blend having melt index within the claimed range for
Iioka’s material because “Roox teaches such blends give good quality foams
having many desirable properties such as well- maintained cell sizes and
mechanical properties (col. 3, ll. 23-26)” (Ans. 5).
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Appellants’ argument that there is no reasonable expectation of
success or reason for extruding LDPE on paperboard at Brinley’s web
speeds to form foamed paperboard fails to address the combined teachings
of the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The combination
of the art teaches forming a foamed paperboard using a LDPE blend with a
melt index within the claimed range and the Examiner relies on Brinley to
teach conventional web speeds for forming polymer and paperboard
laminates. Accordingly, one of ordinary skill in the art would have had a
reasonable expectation that running Iioka’s foamed paperboard making
process at Brinley’s web speed would have been successful.
The Examiner relies on Brinley to teach conventional web speeds in
order to address Iioka’s and Roox’s silence on the matter. Appellants’
argument that Brinley’s failure to recognize Appellants’ correlation between
melt index and web speed is fatal to the combination does not account for
the teachings of the references as a whole. Id. at 425. Rather, one skilled in
the art would have had a reason to combine Brinley’s web speed with Iioka’s
process as modified by Roox as such are conventional paperboard/polymer
laminate web speeds. Even Brinley discloses that the parameters disclosed
are conventional, but it would have been within the skill of the ordinarily
skilled artisan to adjust and determine suitable parameters (Brinley, col. 4, ll.
48-68). Thus, one of ordinary skill in the art would have combined Iioka,
Roox and Brinley for the reasons of record. Having done so, it would have
been within the skill of the ordinary skilled artisan to adjust the parameters
to achieve a suitable foamed paperboard laminate.
Appellants argue that the Examiner has not given sufficient reason
why Brinley’s running speed disclosure would have prompted one skilled in
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the art to combine Roox’s blend with the melt index with Iioka’s foamed
paperboard to solve the problem of producing foamed paperboard at the
claimed web speeds (App. Br. 19). However, the applied prior art need not
be combined to address Appellants’ problem. KSR Int’l Co. v. Teleflex Inc.,
550 US 398, 420 (2007) (“Any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.”). As noted
above the Examiner has provided sufficient reasoning for making the
proposed combination of Iioka, Roox and Brinley.
For these reasons, we determine that the Examiner has established a
prima facie case of obviousness with regard to the rejection of independent
claims 15, 34 and 48 and the § 103 rejections (2), (3), (4), (6), and (7) of
claims that depend therefrom.

Issue (2)
Appellants argue that the Examiner has not provided a basis in fact or
technical reasoning to support the finding that the claimed foam cell aspect
ratios and amounts necessarily flow from the teaching of Iioka and Roox
(App. Br. 17).
Contrary to Appellants’ argument, the Examiner finds that foam cell
aspect ratios and amounts of claims 28-30 would have inherently flowed
from the teachings of Iioka and Roox (Ans. 5; 13-14). The Examiner
reasons that the materials and process of Iioka as modified by Roox are the
same as required by the claims so the resulting foam cell aspect ratio size
and amount flowing from the modified process of Iioka must be the same as
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required in the claims (id. at 13-14). Appellants do not respond to this
analysis.
While Appellants contend that the MD ratio of claim 30 is tied to the
web speed (App. Br. 18), we note that claim 30 depends from claim 15
which does not require a particular web speed.
For these reasons and on this record, the Examiner has established a
prima facie case of obviousness with regard to the rejection of claims 28-30
over Iioka in view of Roox.

Issue 3
Appellants argue that Iioka in view of Roox does not teach the
VICAT softening temperature of claims 54-57 (App. Br. 15). Appellants
contend that Roox discloses a hot press temperature which is not the same as
the VICAT temperature. Id. Appellants argue that the VICAT temperature
is a characteristic of the material. Id.
The Examiner’s stated rejection is not based on the hot press
temperature per se as argued by Appellants. Rather , the Examiner finds that
Roox’s teaching of the hot press temperature range of 15° to 110°C is
premised on the temperature being greater than the VICAT softening point
of component (b) of the blend and lower than the melting point of
component (a) of the blend. In other words, the VICAT softening
temperature must fall somewhere within the range in order to set the
boundaries of the hot press temperature range. The Examiner finds that the
range overlaps the claimed VICAT softening points (Ans. 13). Accordingly,
Appellants’ arguments fail to address the Examiner’s analysis of the
temperature range and are not persuasive.
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The Examiner further finds that because the VICAT softening point is
the a property of the material as argued by Appellants, Roox’s material
would have possessed the VICAT softenting point as claimed because
Roox’s blend is the same material as required by the claims (Ans. 13).
Appellants do not respond to these findings and analysis of the Examiner.
On this record, we determine that the Examiner has established a
prima facie case of obviousness with regard to the rejection of claims 54-57
over Iioka in view of Roox. .

Issue 4
Appellants argue that Iioka is the closest prior art and they argue that
the Specification evinces that the claimed process achieves unexpected
results with the combination of LDPE melt index, foam cell aspect ratio,
foam cell MD ratio and moisture content of the paperboard to provide
increased web speeds (App. Br. 21-22). Appellants argue that Iioka’s failure
to recognize the combined benefits of the LDPE melt index, foam cell aspect
ratio, foam cell MD ratio and moisture content of the paperboard to provide
increased web speeds is a basis for reversal of the rejection. Id.
Appellants have not proffered any evidence that provides a direct
comparison of the claimed process and Iioka’s process. Instead, we
understand Appellants’ reference to the Specification evidence as an indirect
comparison between the claimed invention and the prior art. However,
Appellants have not explained how the evidence referred to in their
Specification on pages 21-22 of the Appeal Brief is an indirect comparison
to what is taught by Iioka. In re Blondel, 499 F.2d 1311, 1317 (CCPA
1974). Instead, Appellants merely state that the rejection should be reversed
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because Iioka does not recognize the benefits achieved by the combination
of the claimed parameters. Appellants have not satisfied the burden of
explaining how the Specification evidence of advantages achieved by the
method compares to or differs with the results of Iioka’s method. In re
Hoch, 428 F.2d 1341, 1344 (CCPA 1970).
On this record, we find that the evidence of obviousness outweighs
Appellants’ evidence of nonobviousness. We affirm the Examiner’s § 103
rejections.

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.
ORDER
AFFIRMED

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