Ex Parte Bloembergen et al

Patent Trial and Appeal Board

Jan 13, 2017

10476428 (P.T.A.B. Jan. 13, 2017)

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.
10/476,428 07/15/2004 Steven Bloembergen PAT 92218W-2 4394
42534 7590 01/18/2017
RORDFN T ADNFR OFRVATS T T P
EXAMINER
1300-100 QUEEN ST SCHATZ, CHRISTOPHER T
OTTAWA, ON KIP 1J9
CANADA ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
01/18/2017 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):
ipinfo@blg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN BLOEMBERGEN, FRANS HAPPEN, and
MARINELLA VAN LEEUWEN
Appeal 2015-005309
Application 10/476,428
Technology Center 1700
Before DONNA M. PRAISS, CHRISTOPHER L. OGDEN, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 7, 9, 13, and 14 of
Application 10/476,428 under 35 U.S.C. § 103(a) as obvious. Final Act.
(April 22, 2014). Appellants1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 EcoSynthetix Ltd., is identified as the real party in interest. Appeal Br. 3.
Appeal 2015-005309
Application 10/476,428
STATEMENT OF THE CASE
The Examiner finally rejected claims 3,4, 11, and 25 as indefinite,
claims 3 and 4 for improper dependency, and claims 1, 3—5, 7, 9, and 11—15
as obvious. Final Act. 2—5. On August 15, 2014, Appellants submitted an
amendment seeking to cancel claims 3 and 4 and amend claims 5, 11, 12,
and 15. By Advisory Action dated August 28, 2014, the Examiner declined
to enter the August 15, 2014 amendments.
On October 22, 2014, Appellants filed their first Appeal Brief. This
brief included a Claims Appendix that listed claims 1, 5, 7, 9, and 11—15.
On this same date, Appellants submitted certain amendments to the claims.
These amendments were not entered by the Examiner. See Advisory Action
dated October 31, 2014.
On November 20, 2014, Appellants submitted an amendment
cancelling claims 3, 4, 5, 11, 12, and 15. On the same date, they filed a
second Appeal Brief. This brief included a Claims Appendix that listed only
claims 1, 7, 9, 13, and 14. In the Answer to the Appeal Brief, the Examiner
indicated that the rejections relating to claims 3, 4, 5, 11, 15, and 25 were
withdrawn in view of the cancellation of such claims by the Appellants.
Answer 2—3 (indicating that the Examiner does not maintain the rejection of
claim 5), 4 (listing withdrawn rejections).
BACKGROUND
The present application generally relates to a process for producing
corrugated board using a starch nanoparticle adhesive.
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Application 10/476,428
Claim 1 is representative of the pending claims and is reproduced
below:
1. A process for producing corrugated board, comprising a
step of applying a latex adhesive to a corrugated medium
wherein the latex adhesive comprises, when applied to the
corrugated medium, starch nanoparticles having a size of less
than 1000 nanometers which were obtained by plasticizing
starch using shear forces in in [sic] an extruder and reacting the
plasticized starch with a crosslinking agent in the extruder.
Appeal Br. 11 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejection:
Claims 1, 7, 9, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
obvious over Grimm (US 2,236,056, iss. Mar. 25, 1941) (“Grimm”) in view
of Giezen et al. (WO 00/69916, pub. Nov. 23, 2000) (“Giezen”). Final Act.
3.
DISCUSSION
The Examiner rejected the claims at issue over the combined
teachings of Grimm and Giezen. The Examiner finds that Grimm broadly
discloses a method of applying a starch adhesive to a corrugated board.
Final Act. 4; Grimm 1. The Examiner also finds that Giezen teaches starch
nanoparticles formed as described in claim 1. Final Act. 4. Giezen provides
that such starch particles may be used in various applications including as
“an adhesive or an adhesive additive (tackifier).” Giezen 113. Giezen also
provides that the disclosed starch nanoparticles may be used “in the paper­
making and packaging industry (paper and cardboard surface treatment,
gloss etc.).” Id. The Examiner relies upon such disclosures to find that
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Application 10/476,428
Giezen teaches a starch that “can be used as an adhesive in cardboard.”
Final Act. 4.
Appellants quote the same paragraph of Giezen and conclude that it
teaches to use starch nanoparticles with paper products as barriers rather
than adhesives. Appeal Br. 6—7; Reply Br. 2. According to Appellants,
Giezen “does not disclose the use of such adhesives for corrugated board.”
Appeal Br. 7.
Appellants further argue that it would not have been obvious to use
the starch particles taught by Giezen as an adhesive in a corrugation process
because, at the time the application was filed, a typical corrugating adhesive
contained a major portion of uncooked slurry starches which “only become
adhesive when they are cooked to their gel point and become dissolved.” Id.
(citing Spec. 18). In support, Appellants quote from an inventor
declaration that asserts, inter alia, that “[t]he ‘holy grail’ of the corrugating
industry for many years has been to have a cold-set adhesive system such
that the corrugating process can be conducted at lower temperatures.”
Affidavit of Steven Bloembergen, filed August 4, 2009. That is, Appellants
assert that a person of ordinary skill would have used a heat activated starch
adhesive rather than some other type.
Appellants, however, do not explain why other types of adhesive are
not suitable. Nor do they articulate what alternative adhesives were known
for use in corrugation. Dr. Bloembergen’s statement that granular starch
based adhesive “is still the dominant technology for corrugated board
manufacturing,” Appeal Br. 7 (citing Bloembergen Aff. 17), suggests other
adhesives were in use but does not indicate their identity or attributes.
The Examiner’s findings that the starch nanoparticles of Giezen were
known for use as adhesives and known to adhere to paper products, at least
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Application 10/476,428
as surface treatments, are undisputed. In opposition, Appellants assert only
that heat activated granular starch based adhesive was the “dominant”
adhesive technology for corrugated board. Appeal Br. 8. Absent an
articulation as to why a person of ordinary skill in the art would not have
regarded the adhesive of Giezen as suitable for corrugation, the Board is
unable to find reversible error in the Examiner’s finding that such a person
would have been motivated to combine the known adhesive of Giezen with
the known process of Grimm.
Appellants include a separate heading in their brief for claim 7.
Appeal Br. 9. Under such heading, Appellants quote the language of claim 7
and then provide quotes from the disclosure of Giezen. This is insufficient
to state an issue for appeal. See 37 C.F.R. § 41.37(c)(iv) (requiring, for each
argument, “the basis therefor, with citations of the statutes, regulations,
authorities, and parts of the record relied on” and further requiring that the
“arguments shall explain why the examiner erred as to each ground of
rejection”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). To
the extent Appellants do state a separate ground for appeal of claim 7, we
find that they have failed to show reversible error in the Examiner’s finding
that Giezen teaches an exemplary composition having a dry solid content
falling within the range of claim 7. Answer 6 (citing Giezen 118). As
explained by the Examiner, one gram of water has a volume of one cubic
centimeter. Answer 6. Giezen describes a mixture of 20 grams of starch
granules with 80 grams of water. Giezen 118. The described 80 grams of
water corresponds to 80 milliliters (80 cm3) of water, thus, the appropriate
weight to volume (w/v) percentage can be derived.
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CONCLUSION
The Examiner’s rejection of claims 1, 7, 9, 13, and 14 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).
AFFIRMED
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