Ex Parte Theisen et al

Board of Patent Appeals and Interferences

Sep 10, 2012

11067310 (B.P.A.I. Sep. 10, 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.
11/067,310 02/25/2005 John Theisen 7542.234US01 3359
23552 7590 09/11/2012
MERCHANT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
CORDRAY, DENNIS R
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
09/11/2012 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 JOHN THEISEN
and John Engel
________________

Appeal 2011-002601
Application 11/067,310
Technology Center 1700
________________

Before JEFFREY T. SMITH, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
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A. Introduction1
John Theisen and John Engel (“Theisen”) timely appeal under
35 U.S.C. § 134(a) from the final rejection2 of claims 1, 7-18, 23-34,
and 39-49, which are all of the pending claims. We have jurisdiction.
35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to differential release liners, i.e.,
two-sided release liners having different release properties on each side.
One side, only, of the release liner is provided with a selective indicator, in
particular, with an optical brightener that fluoresces blue upon exposure to
ultraviolet (“UV”) light. Theisen explains in the Brief that this arrangement
provides an easy way to distinguish the sides of the differential release liner,
so “the worker using the release liner for making a laminate can ensure that
the proper side of the release liner contacts the proper substrate.” (Br. 6,
3d para.)
Claim 1 is representative and reads:
1. A paper product comprising: a paper substrate comprising
a web of fibers having a first side and a second side and
having
an optical brightener provided over the first side,
wherein the optical brightener absorbs ultraviolet
light and re-emits light in the blue region;

1 Application 11/067,310, Paper Product and Method for Manufacturing,
filed 25 February 2005. The specification is referred to as the
“310 Specification,” and is cited as “Spec.” The real party in interest is
listed as Wausau Papers Mills, LLC. (Appeal Brief, filed 8 June 2010
(“Br.”), 2.)
2 Office action mailed 11 August 2009 (“Final Rejection”; cited as “FR”).
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a first release coating provided over the first side; and
a second release coating provided over the second side,
wherein the first release coating and the second
release coating have different release properties;
wherein the optical brightener is selected so that
the first side is readily distinguishable from the
second side not having the optical brightener when
viewed under UV light.
(Claims App., Br. 23; indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection:3
A. Claims 1,7-18, 23-34 and 39-49 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Hurst,4
Junghans,5 Bae-Lee,6 Williams,7 Smook,8 Casey,9 and
Lindahl.10

3 Examiner’s Answer mailed 3 August 2010 (“Ans.”).
4 Alan R. Hurst, Composite Differential Release Tape, U.S.
Patent 3,432,333 (1969).
5 Andreas Junghans et al., Pack for Adhesive Sheets, U.S.
Patent 6,986,923 B1 (17 January 2006), based on an application
filed 21 November 2000.
6 Myongsuk Bae-Lee et al., Transparent/Translucent Liquid Enzyme
Compositions in Clear Bottles Comprising UV Absorber, U.S.
Patent 6,159,918 (2000).
7 William W. Williams and William E. Wallace, Triazine Fluorescent
Agents, U.S. Patent 2,660,578 (1953).
8 GARY A. SMOOK, HANDBOOK OF PULP & PAPER TERMINOLOGY
(Angus Wilde Publications, Inc. 1990).
9 3 PULP AND PAPER CHEMISTRY AND CHEMICAL TECHNOLOGY
(James P. Casey ed., 3d ed. 1981).
10 Jonas A.I. Lindahl, Process for Preparing Groundwood Pulp as Short
Fiber and Long Fiber Fractions, U.S. Patent 4,562,969 (1986).
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B. Claims 1, 7-10, 13, 14, 16-18, 23-26, 29, 30, 32-34, 39-42, 45,
46, 48 and 49 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Truog,11 Bae-Lee, Williams,
Smook, Casey, and Lindahl.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that Theisen has not presented arguments for the
separate patentability of any claims. All claims therefore stand or fall with
independent claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Rejection A in view of Hurst and other references
The Examiner finds that Hurst describes differential release tapes, but
that Hurst does not disclose or suggest applying an optical brightener to one
side of the tape. The Examiner finds that Hurst, Junghans, and the claimed
invention are “analogous as pertaining to differential release liners.”
(Ans. 6, ll. 1-2.) More particularly, the Examiner finds that Junghans
describes “a pack for double sided adhesive sheets comprising paper
sheetlike liners to cover the regions of pressure-sensitive adhesive that are to
be bonded.” (Id. at 5, ll. 1-3.) The Examiner finds further that the paper
liner sheets are coated with a silicone release coating (id. at ll. 4-5), and that
an additional UV-absorbing, UV-scattering, or UV-reflecting coating may
be applied to one or both sides of the sheet to protect the adhesive from

11 Keith L. Truog et al., Dry Paint Transfer Laminate for Use as Wall
Covering, U.S. Patent Application Publication 2004/0161568 A1
(19 August 2004), based on an application filed 9 June 2003.
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being damaged by exposure to ambient ultraviolet light (id. at ll. 5-10). The
remaining references are relied on to demonstrate that materials having the
properties of the recited optical brighteners were known as UV-absorbers
(Ans. 5, last three paras), and to demonstrate (Lindahl) that certain
properties of the web of fibers were known (Ans. 6).
Theisen acknowledges that Junghans describes UV-absorbing,
UV-scattering, or UV-reflecting coatings that “may be applied to one or both
sides of the paper support.” (Br. 13, ll. 2-3, quoting Junghans, col. 7,
ll. 41-42.) Theisen urges that Junghans prefers “symmetrical product
structures,” i.e., coated on both sides, for reasons associated with the
production process, such as “uniform absorption and release of moisture by
the papers during processing and in the applied state.” (Br. 13, ll. 2-6,
quoting Junghans, col. 7, ll. 44-48.) Theisen argues, however, that Junghans
“fail[s] to suggest modifying the differential release tape described by Hurst
to include an optical brightener on one side of the release liner, and not on
the other side of the release liner.” (Br. 13, ll. 7-10.) Moreover, in
Theisen’s view, “[o]ne would certainly expect that the mastic or adhesive
with the roll according to Hurst would not be exposed to UV radiation to the
same extent that the pack for adhesive sheets according to Junghans et al.
would be exposed to UV radiation.” (Id. at ll. 17-19.)
These arguments are not persuasive of harmful error in the
Examiner’s rejection. All teachings of a reference must be considered, not
merely the preferred embodiments. Merck & Co. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) (“the fact that a specific [embodiment] is
taught to be preferred is not controlling, since all disclosures of the prior art,
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including unpreferred embodiments, must be considered”) (internal quote
and citation omitted; square brackets original). Junghans teaches that UV-
absorbing compounds may be added to coatings on one side of release sheets
to help protect adhesives from degradation by UV radiation. The preference
for coating both sides does not negate this teaching. Moreover, to the extent
Theisen correctly argues that the routineer would have expected that the
adhesive rolls taught by Hurst would not be exposed to as much radiation as
flat adhesive sheets, it would seem that such persons would have expected,
reasonably, that the use of less UV-absorbing material—e.g., provided only
on one side of a separating release sheet, rather than on both sides—would
provide sufficient protection.
The remainder of Theisen’s arguments for patentability focus on
supposed differences between the optical brightener required by the
appealed claims and the UV-absorbers taught by Truong, Bae-Lee, and
Williams. Appellants appear to read non-recited limitations into the term
“optical brightener.” However, as recited in the claim and in
the 310 Specification, an “optical brightener absorbs ultraviolet light and
re-emits light in the blue region.” (Claim 1, Br. 23; cf. Spec. 9, ll. 8-10.)
Moreover, as the Examiner found (FR 5, 5th para.; Ans. 5, 4th para.),
Williams teaches that “[t]he thus obtained fluorescent agents, when
incorporated, . . . into paper or other wrapping material improve the
whiteness as well as protect the contents from the action of ultraviolet light”
(Williams col. 2, ll. 15-20; emphasis added). As the predecessor to our
reviewing court explained long ago, “[f]rom the standpoint of patent law, a
compound and all of its properties are inseparable; they are one and the same
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thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963). The substitution of
a substance having similar properties to another—here, the ability to absorb
UV radiation and to product coated materials from the damaging action of
the UV radiation—is a classic example of obviousness. The particular
teachings of Smook and Casey regarding the provision of optical brighteners
in the furnish—the slurry of fibers used to form the paper—do not “teach
away” from the combination proposed by the Examiner, as Junghans and
Williams suffice to teach where UV absorbers may be applied to a release
sheet similar to the differential release tape described by Hurst, and to what
effect.
Rejection B in view of Truog and other references
The Examiner finds, and Theisen does not dispute, that Truog
describes a dry paint transfer laminate 100, shown in Figure 1, below.

{Truog Fig. 1 shows a dry paint transfer laminate}
The laminate comprises a backing liner 132 (Truog 2 [0047]), which may
comprise paper (id. at 10 [0116]), covered on one side by matte release
coating layer 135, which is covered by dry paint film layer 110, which in
turn is covered by adhesive layer 120 (id. at [0047]). The other side of
backing liner 132 is covered by release layer 136, the lower surface 137 of
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which is adapted to contact the upper surface 122 of adhesive layer 120
when the laminate 100 is wound into a roll. (Id. at 2-3 [0047].) The
Examiner finds (Ans. 7, 1st para.), and Truog does not dispute, that release
layers 135 and 136, on opposite sides of backing liner 132, have different
release properties. Critically, the Examiner finds that, in some
embodiments, adhesive layer 120 can include ultraviolet light absorbers.
(Id. at 7, 2d para., citing Truog 9 [0113].)
The Examiner reasons that it would have been obvious to use
ultraviolet light absorbers, such as the diaminostilbene fluorescent agents
described by Williams, in adhesive layer 120 of the laminate described by
Truog. In this regard, the Examiner points out (FR 7, 1st full para.; Ans. 7,
2d para.), that the 310 Specification defines the term “provided over” as
defining a spatial relationship between two components in the following
words, “[w]hen one component is ‘provided over’ another, they may be
touching, immediately adjacent, or there may be other components disposed
between them.” Claim 1 does not impose any necessary spatial relationship
between the first release coating and the optical brightener. Thus, when
adhesive layer 120 comprises a blue fluorescing UV absorber such as the
one described by Williams, the dry paint transfer laminate 100 shown in
Figure 1 meets every limitation recited in claim 1.
Theisen’s argument (Br. 19) that Truog does not suggest the use of an
optical brightener is without merit, as the argument overlooks or
misapprehends the scope of “optical brighteners” recited in the claim. The
optical brighteners need not touch or be immediately adjacent to the paper,
and they need not “brighten” the paper as long as they are “provided over”
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the paper. The eventual discarding of the release liner (id.) is of no moment
because the paper product defined by claim 1 is not limited in a way that
prevents such a dissection. Theisen’s remaining arguments parallel the
already-rejected arguments raised against the teachings of the references
regarding the equivalence of UV-absorbers and optical brighteners.
In conclusion, we are not persuaded of harmful error in the
Examiner’s rejections.
C. Order
We AFFIRM the rejection of claims 1, 7-18, 23-34 and 39-49 under
35 U.S.C. § 103(a) in view of the combined teachings of Hurst, Junghans,
Bae-Lee, Williams, Smook, Casey, and Lindahl.
We AFFIRM the rejection of claims 1, 7-10, 13, 14, 16-18, 23-26, 29,
30, 32-34, 39-42, 45, 46, 48 and 49 under 35 U.S.C. § 103(a) in view of the
combined teachings of Truog, Bae-Lee, Williams, Smook, Casey, and
Lindahl.
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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