Ex Parte Ward

Board of Patent Appeals and Interferences

Feb 26, 2010

10278190 (B.P.A.I. Feb. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CALVIN B. WARD
______________

Appeal 2009-015066
Application 10/278,190
Technology Center 1700
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Decided: February 26, 2010
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Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 9-18 in the Office Action mailed March
17, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2008).
We reverse the decision of the Primary Examiner.
Claim 9 illustrates Appellant’s invention of a method for protecting an
exposed surface, and is representative of the claims on appeal:
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9. A method for protecting an exposed surface:
providing a water-impermeable electrostatically charged sheet having
a top and bottom surface;
providing an absorbent layer having top and bottom surfaces, said
bottom surface of said absorbent layer being in contact with said top surface
of said electrostatically charged sheet; and
placing said bottom surface of said electrostatically charged sheet in
contact with said exposed surface, wherein said bottom surface of said
electrostatically charged sheet comprising an electrostatic charge sufficient
to secure said electrostatically charged sheet to said exposed surface and said
absorbent layer is adhesively bonded to said electrostatically charged sheet.
The Examiner relies upon the evidence in these references (Ans. 3): 1
Schelhorn US 3,342,613 Sep. 19, 1967
Lake US 3,409,199 Nov. 5, 1968
Whillock US 3,972,467 Aug. 3, 1976
Rubino US 4,992,121 Feb. 12, 1991
Rose US 5,019,422 May 28, 1991
Isohata US 5,789,076 Aug. 4, 1998
Milani US 5,807,366 Sep. 15, 1998
Tanner US 6,162,961 Dec. 19, 2000
Gröne WO 98/12126 Mar. 26,1998
Appellant requests review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner (App. Br. 2-3):
claims 9, 10, and 17 over Schelhorn in view of Whillock (Ans. 4);
claim 11 over Schelhorn in view of Whillock, further in view of Gröne (Ans.
5);
claims 13 and 14 over Schelhorn in view of Whillock, further in view of
Tanner (Ans. 6);
claims 9, 10, 13, and 17 over Rubino in view of Rose (Ans. 7);

1 We consider the Appeal Brief filed May 21, 2009, the Examiner’s Answer
mailed March 17, 2008, and the Reply Brief filed December 9, 2008.
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claims 11, 12, and 14 over Rubino in view of Rose, further in view of Milani
(Ans. 9);
claims 9-11, and 16-18 over Isohata in view of Schelhorn and Whillock
(Ans. 10);
claim 11 over Isohata in view of Schelhorn and Whillock, further in view of
Gröne (Ans. 12);
claim 15 over Isohata in view of Schelhorn and Whillock, further in view of
Lake (Ans. 13); and
claim 12 over Isohata in view of Schelhorn and Whillock, further in view of
Gröne and further in view of Milani (Ans. 14).
Opinion
We considered the totality of the record in light of Appellant’s
arguments with respect to representative independent claim 9 and the claims
dependent thereon in the grounds of rejection advanced on Appeal. See,
e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“‘On appeal to the
Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.’”) (quoting In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)); In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is submitted by
the applicant in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration to
persuasiveness of argument.”) (citing, inter alia, In re Spada, 911 F.2d 705,
707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellant’s arguments in the Briefs establish
that the evidence in the totality of the record weighs in favor of the
nonobviousness of the claimed method for protecting an exposed surface
encompassed by claim 9 and the other claims.
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As an initial matter, we interpret the plain language of claim 9 to
require that one surface of the water-impermeable electrostatically charged
sheet is adhesively bonded to the absorbent layer, and the other surface of
the water-impermeable electrostatically charged sheet has sufficient
electrostatic charge to secure the sheet to the exposed surface to be
protected.
Claims 9-11, 13, 14, and 17: Schelhorn and Whillock
We agree with Appellant that, contrary to the Examiner’s finding,
Schelhorn would have disclosed to one of ordinary skill in this art that it is
absorbent layer 12 of the blanket wrapper for poultry which is in surface-to-
surface contact with the poultry, and not water-impermeable layer 10 which
is the polymer film outer layer of the wrapper. Schelhorn, e.g., col. 1, ll. 38-
45 and 52-60, col. 1, l. 71 to col. 2, l. 21, and Figs. 1 and 2; App. Br. 5 and
8; Ans. 4 and 15-16. We further find that Schelhorn would have disclosed
that water-impermeable polymer film layer 10 is “electrostatically treated . .
. on one surface to improve the adhesive bonding characteristics of that
surface” which is bonded by waterproof adhesive 14 to absorbent material
12. Schelhorn, e.g., col. 2, ll. 52-60, col. 1, l. 71 to col. 2, l. 2, col. 2, ll. 25-
27, and Fig. 2. We find Whillock would have disclosed to one of ordinary
skill in the art that in paperboard laminate 10, nylon film 14 has one surface
coated with adhesion primer and the other surface electrostatically treated to
assure adhesion to adjoining polyolefin films 13, 15. Whillock, e.g., col. 4,
ll. 22-30, and Fig. 1. As Appellant points out, “[n]o electrostatically charged
layer is present at any external surface of [Whillock’s] laminate.” App. Br.
5. The Examiner does not dispute Appellant’s finding. Ans. 15-16.
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On this record, we agree with Appellant’s position that Schelhorn
would not have led one of ordinary skill in this art to apply water-
impermeable film 10 of the wrapper to the surface of poultry. App. Br. 8;
see Ans. 15-16. We also agree with Appellant that each of Whillock and
Schelhorn electrostatically treat the surface of a film to adhere that film
surface to another layer of an article. Thus, the combined teachings of
Schelhorn and Whillock would not have led one of ordinary skill in this art
to electrostatically charge the exposed surface of the water-impermeable
film of Schelhorn’s article and then apply that film surface to the surface of
poultry. App. Br. 9; see Ans. 16. On this record, even if combined
teachings of Schelhorn and Whillock would have led one of ordinary skill in
this art to electrostatically treat the exposed film surface of Schelhorn’s
wrapper, the electrostatic charge would be imparted to the surface of the film
to the extent that the film would adhere to another film layer, as taught by
Schelhorn and by Whillock, would likely dissipate when placed next to wet
poultry, and thus not satisfy the limitations of claim 9, as Appellant
contends. App. Br. 9; see Ans. 16.
As Appellant points out, Gröne and Tanner do not provide evidence
which when combined with Schelhorn and Whillock would have led one of
ordinary skill in this art to the claimed method encompassed by claim 9.
App. Br. 9-11.
Accordingly, we reverse the grounds of rejection of claims 9-11, 13,
14, and 17 under 35 U.S.C. § 103(a) over the combined teachings of
Schelhorn and Whillock alone and as further combined with Gröne and with
Tanner.
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Claims 9-14 and 17: Rubino and Rose
There is no dispute that Rubino’s electrostatically charged, void
containing foam sheets electrostatically adhere a display item to a surface, is
not water-impermeable. Ans. 8; App. Br. 6. Rubino, e.g., col. 2, ll. 35-68,
col. 3, ll. 21-68, col. 4, ll. 1-11, and col. 5, ll. 39-45. We find Rubino would
have disclosed that the electrostatic charge is imparted to the foam sheet by
rubbing the sheet with different materials. Rubino, e.g., col. 2, ll. 35-42.
There is also no dispute that Rose discloses introducing a water repellent
composition into a foam followed by drying and curing at elevated
temperature to obtain a water-impermeable foam. Ans. 8; App. Br. 6. Rose,
e.g., abstract, col. 1, l. 66 to col. 2, l. 13, col. 3, ll. 29-36, and
col. 4, ll. 10-15.
Appellant submits that there is no reasonable expectation that
Rubino’s foam as combined with Rose’s water repellant composition and
cured could be electrostatically charged as required by Rubino. App. Br. 12-
13. The Examiner contends that Appellant’s arguments are unsupported.
Ans. 19-20.
The difficulty we have with the Examiner’s position is that, as
Appellant points out, the combination of Rubino and Rose as applied by the
Examiner results in a cured water-impermeable foam sheet that is different
from the foam sheet Rubino electrostatically charges to hold a display to a
surface. The Examiner has not established that the cured water-impermeable
foam sheet can be electrostatically charged by Rubino’s process to the extent
that it is useful for Rubino’s purpose. Thus, on this record, the Examiner’s
position has been rebutted by Appellant’s arguments that the combined
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teachings of Rubino and Rose would not have led one of ordinary skill in
this art to the claimed method encompassed by claim 9. See, e.g., KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (“It can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.”); Kahn, 441 F.3d at 988; Rouffet, 149 F.3d at 1358 (“hindsight” is
inferred when the specific understanding or principal within the knowledge
of one of ordinary skill in the art leading to the modification of the prior art
in order to arrive at appellant’s claimed invention has not been explained).
We further agree with Appellant that Milani does not provide
evidence which when combined with Rubino and Rose would have led one
of ordinary skill in this art to the claimed method encompassed by claim 9.
App. Br. 13-14.
Accordingly, we reverse the grounds of rejection of claims 9-14 and
17 under 35 U.S.C. § 103(a) over the combined teachings of Rubino and
Rose alone and as further combined with Milani.
Claims 9-12 and 14-18: Isohata, Schelhorn, and Whillock
We agree with Appellant that Isohata would have disclosed to one of
ordinary skill in this art liquid-absorbing sheet 1 which has liquid-
semipermeable film 6 having pores 7, liquid-absorbing material 4, and
liquid-permeable film 5, and is used to absorb liquid from stored foods,
wherein the liquid-semipermeable film 6 is positioned against the food item.
App. Br. 7. Isohata, e.g., abstract, col. 2, l. 13 to col. 3, l. 43, col. 4, ll. 6-33,
col. 6, l. 60 to col. 7, l. 5, and Fig. 1.
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We further find that Isohata would have disclosed to one of ordinary
skill in this art in illustrative Example 3, a comparison of liquid–absorbent
sheet samples D-G, wherein sample D has a liquid-semipermeable film 6
with pores 7 in contact with food and a liquid impermeable film was used in
place of liquid-permeable film 5 on the other side of the sheet. Isohata
col. 10, l. 39 to col. 11, l. 6, and Table 3. Isohata discloses that it can be
concluded from the results of the drip tests reported for the comparative
samples in Table 4 that “the function of the liquid-semipermeable film is
confirmed.” Isohata, col. 11, ll. 57-58.
On this record, we agree with Appellant that the evidence in Isohata
does not support the Examiner’s finding that Isohata’s comparative sample
G teaches that liquid-permeable film 5 can be replaced by a liquid-
impermeable sheet. App. Br. 15; Ans. 11.
Thus, the issue with respect to the grounds of rejection based on the
combined teachings of Isohata, Schelhorn, and Whillock is whether one of
ordinary skill in this art would have modified Isohata’s absorbent article
disclosed in comparative sample G by electrostatically treating the liquid-
impermeable layer thereof as taught by Schelhorn and Whillock in order to
arrive at the claimed method encompassed by claim 9. Ans. 12 and 20-21;
App. Br. 16.
We agree with Appellant’s position that the combined teachings of
Isohata, Schelhorn, and Whillock would not have led to the claimed method
because, as we discussed above, the combined teachings of Schelhorn and
Whillock would not have led one of ordinary skill in this art to
electrostatically charge the water-impermeable film of Isohata’s comparative
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sample G absorbent article and then apply that electrostatically charged film
surface to a surface other than another film layer. See above pp. 4-5.
As Appellant points out, Lake and Milani do not provide evidence
which when combined with Isohata, Schelhorn, and Whillock would have
led one of ordinary skill in this art to the claimed method encompassed by
claim 9. App. Br. 17-18.
Accordingly, we reverse the grounds of rejection of claims 9-12 and
14-18 under 35 U.S.C. § 103(a) over the combined teachings of Isohata,
Schelhorn, and Whillock alone and as further combined with Lake and with
Milani.
The Primary Examiner’s decision is reversed.

REVERSED

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