Ex Parte Wieck

Board of Patent Appeals and Interferences

May 26, 2010

10239257 (B.P.A.I. May. 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 ANDREAS WIECK
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Appeal 2009-013595
Application 10/239,257
Technology Center 1700
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Decided: May 26, 2010
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 26-31. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 31 is representative of the subject matter on appeal and is set
forth below:

31. A method of making a shaped part, said method comprising:
Appeal 2009-013595
Application 10/239,257

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a) providing a combination, wherein said combination consists
of:

i) a lining material comprising:

(1) a paper carrier having a top side and a bottom side, the
paper carrier having a density of from 1.1 to 1.25 g/cm3;

(2) a polymer coating on the top side or bottom side of the
paper carrier, or polymer coatings on both the top side and the
bottom side of the paper carrier; and

(3) an antiadhesive layer applied to said polymer coating or
polymer coatings; and

ii) a double-sided adhesive tape applied to said lining material; and

b) punching die cuts from said combination in a kiss-cutting
operation.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stahl US 4,405,401 Sep 20, 1983
Tokunaga US 6,218,006 B1 Apr. 17, 2001
Bilodeau US 6,235,363 B1 May 22, 2001
Chen US 6,521,309 B1 Feb. 18, 2003

www.paperonweb.com/density.htm

THE REJECTION(S)

1. Claim 31 is rejected under 35 U.S.C. § 103(a) as being obvious over
Bilodeau, as evidenced by Typical Density of Some Papers
(www.paperonweb.com), in view of Stahl and Chen.
Comment [KH1]: To be consistent
with italics used in 2. below
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Application 10/239,257

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2. Claims 28-30 are rejected under 35 U.S.C. § 103(a) as being obvious
over Bilodeau, Typical Density of Some Papers, Stahl, Chen, and further in
view of Tokunaga.
ISSUE, PRINCIPLES OF LAW, and ANALYSIS
As an initial matter, we confine our discussion to appealed claim 31,
which contains claim limitations representative of the arguments made by
Appellant, pursuant to 37 C.F.R. § 41.37(c)(1)(vii). We also focus on the
reference of Bilodeau based upon Appellant’s arguments, and accordingly
address both rejections together.
Appellant asserts that the correct interpretation of claim 31 excludes
Bilodeau's barrier layer and polymer-coated paper above it. In other words,
Appellant asserts that only components i) and ii) of claim 31 are permitted in
the punching operation. Br. 8. Hence, the issue is whether Appellant’s
interpretation of claim 31 is correct? We do not agree with this
interpretation for the following reason.
Claim 31 recites, in line 1, “said method comprising” which indicates
that the claim is open-ended and allows for additional steps. Invitrogen
Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003). As such,
we do not agree with Appellant’s interpretation that Bilodeau’s barrier layer
and polymer-coated paper above it (see Figure 1 of Bilodeau) are excluded
by claim 31. In this context, we agree with the Examiner’s conclusion on
pages 6-7 of the Answer.
In view of the above, we affirm each of the rejections.
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DECISION
Each rejection 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)(1)(v).
AFFIRMED

Pl initial:
sld

Briscoe, Kurt G.
Norris McLaughlin & Marcus, PA
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