Stora Enso OYJ

Patent Trials and Appeals Board

Mar 28, 2022

2021001965 (P.T.A.B. Mar. 28, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 15/125,616 09/13/2016 Nina Miikki 1969.124763 6324 24978 7590 03/28/2022 GREER, BURNS & CRAIN, LTD 300 S. WACKER DR. SUITE 2500 CHICAGO, IL 60606 EXAMINER MELLOTT, JAMES M ART UNIT PAPER NUMBER 1759 NOTIFICATION DATE DELIVERY MODE 03/28/2022 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): docket@gbclaw.net ptomail@gbclaw.net verify@gbclaw.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NINA MIIKKI, PETRI SIRVIÖ, and KAJ BACKFOLK Appeal 2021-001965 Application 15/125,616 Technology Center 1700 Before MICHAEL P. COLAIANNI, LILAN REN, and MERRELL C. CASHION, JR., Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3-7, 9, 13, 15, 16, and 18-23. See Non-Final Act. 3, 13. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “STORA ENSO OYJ.” Appeal Br. 2. Appeal 2021-001965 Application 15/125,616 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of manufacturing a packaging material comprising the steps of: - providing a paperboard substrate, comprising cellulosic fibres, treating at least one surface of said substrate with a binder and with a metal salt or combination of metal salts, wherein a total amount of metal salts applied to the surface is in the range of 0.01 g/m2 to 1 g/m2, wherein the metal salt is selected from the group consisting of calcium chloride, aluminium chloride, magnesium chloride, magnesium bromide, calcium bromide, calcium nitrate, magnesium nitrate, magnesium acetate, barium acetate, or combinations thereof, wherein the binder comprises polydiallyldimethylammonium chloride (polyDADMAC) in combination with at least one co-binder selected from microfibrillated cellulose (MFC), or starch, - printing at least a part of said treated surface with ink, and - applying at least one polymer layer on said printed surface, wherein adhesion of the treated surface to the at least one polymer layer is greater than adhesion of the treated surface to the at least one polymer layer when the binder is polydiallyldimethylammonium chloride (polyDADMAC) alone. Claims Appendix (Appeal Br. 23). REFERENCES The Examiner’s rejections rely on the following prior art references: Name Reference Date Schmidt US 2015/0140237 A1 May 21, 2015 Gotou US 2013/0176369 A1 July 11, 2013 Akao US 5,401,562 Mar. 28, 1995 Wakata US 2002/0064633 A1 May 30, 2002 Kaieda US 2004/0027436 A1 Feb. 12, 2004 Saito US 2013/0278690 A1 Oct. 24, 2013 Appeal 2021-001965 Application 15/125,616 3 REJECTIONS The Examiner maintains the following rejections: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 3-7, 13, 16, 18-21, 23 103 Schmidt, Gotou, Akao, Wakata 152 103 Schmidt, Gotou, Akao, Wakata, Saito 9, 22 103 Schmidt, Gotou, Akao, Wakata, Kaieda OPINION We review the appealed rejections for error based upon the issues Appellant identifies and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”). After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are persuaded that Appellant has identified reversible error, and we reverse the Examiner’s rejections. Claim 1 The dispositive issue before us whether Schmidt teaches or suggests a method of applying to a paper packaging surface a “total amount of metal salts . . . in the range of 0.01 g/m2 to 1 g/m2” as recited in claim 1. The Examiner agrees with Appellant that Schmidt describes a range of the metal salts concentration of between 2 g/m2 and 57 g/m2. Compare Ans. 5, with 2 In the Examiner’s Answer, the Examiner withdrew a previous rejection of claim 15 and entered a new ground of rejection of claim 15. Ans. 4-5. Appeal 2021-001965 Application 15/125,616 4 Appeal Br. 15. The Examiner, however, finds that reducing the prior art metal salts concentration to the recited range is within the ordinary skill which can be accomplished by routine optimization. Non-Final Act. 5; Ans. 5-6 (finding that a skilled artisan “would have readily recognized that the concentration of the pigment is optimizable to obtain a desired opacity, hue, etc.”). Appellant, on the other hand, argues that although “higher amounts of the metal salts are needed to achieve the desired effect on print quality . . . , the increased amount may cause saturation, which gives rise to precipitation of the salt into crystals” which negatively affects print quality. Appeal Br. 19-20 (citing Spec. 2:27-3:19). Appellant argues that a skilled artisan would therefore have no reason to reduce the minimum metal salts concentration taught in Schmidt. Id. at 20. We are persuaded that reversible error has been identified. The Examiner does not provide any evidentiary support for the finding that a skilled artisan “would have readily recognized that the concentration of the pigment is optimizable to obtain a desired opacity, hue, etc.” See Ans. 5-6. The Examiner does not adequately explain why a skilled artisan would reduce the minimum prior art metal salts concentration for any purported optimization. The rejection of claim 1 is reversed. For the same reason, the rejection of claim 16 which requires the same metal salts range is reversed. The rejection of all dependent claims is reversed. CONCLUSION The Examiner’s rejections are reversed. Appeal 2021-001965 Application 15/125,616 5 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-7, 13, 16, 18-21, 23 103 Schmidt, Gotou, Akao, Wakata 1, 3-7, 13, 16, 18-21, 23 15 103 Schmidt, Gotou, Akao, Wakata, Saito 15 9, 22 103 Schmidt, Gotou, Akao, Wakata, Kaieda 9, 22 Overall Outcome 1, 3-7, 9, 13, 15, 16, 18-23 REVERSED