Ex Parte ¿smus et al

Patent Trial and Appeal BoardFeb 16, 2016

12663419 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/663,419 06/07/2010 Lars lsmus 26694 7590 02/18/2016 VENABLELLP P.O. BOX 34385 WASHINGTON, DC 20043-9998 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 43289-282860 3624 EXAMINER LEONG, NATHAN T ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 02/18/2016 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): PTOMail@Venable.com lahill@venable.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LARS ASMUS, LEENA KUNNAS, TARJA SINKKO, TUOMOP APPILA, and MARI OJANEN Appeal 2014-002684 Application 12/663419 Technology Center 1700 Before BRADLEY R. GARRIS, PETER F. KRATZ, and N. WHITNEY WILSON, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134, Appellants appeal from the Examiner's rejection under 35 U.S.C. Â§ 103(a) of claims 1, 5 and 6 as unpatentable over Wittosch et al. (US 6,548, 120 B 1, iss. Apr. 15, 2003) (hereinafter "Wittosch") in view of Haavisto et al. (WO 2005/095711 Al, pub. Oct. 13, 2005) (hereinafter "Haavisto"). (Ans. 2). We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appeal2014-002684 Application 12/663,419 Appellants claim a method for manufacturing paper comprising calendering or pressing a base paper with a presser roll against a machine glazed cylinder to obtain a base paper with a specific roughness, and coating the base paper with a barrier layer to obtain a paper with a water vapor permeability of no greater than 10 g/m2/24h (independent claim 1). The method further comprises, in a single coating procedure, forming an additional layer which comprises mineral particles and adhesive on one or both sides of the barrier layer (dependent claim 5). In addition, the method comprises calendering the coated paper (dependent claim 6). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A method for manufacturing paper, the method comprising: providing a base paper with a first side and a second side, treating at least the first side of the base paper to a roughness level of Bendtsen roughness from 30 to 500 ml/min by pressing the base paper with a presser roll against a smooth and hot surface of a machine glazed cylinder or by calendering the base paper, and providing the first side of the base paper with a barrier layer by a curtain coating method providing a plurality of layers so that a water vapour permeability of the paper is not greater than 10 g/m2/24h. We will sustain the Examiner's rejection for the reasons given in the Answer and below. In rejecting claim 1, the Examiner finds that Wittosch teaches a method for manufacturing a coated, water vapor resistant paper comprising 2 Appeal2014-002684 Application 12/663,419 coating a base paper with multiple coatings to form a barrier layer via a curtain coating method (Ans. 2). The Examiner also finds that Wittosch does not teach that the coated paper has the claimed water vapor permeability range of no greater than 10 g/m2/24hr (id.). Regarding this deficiency, the Examiner finds that Wittosch evinces the number of coating layers is a result effective variable affecting the barrier properties such as water vapor permeability (id. at 2-3). The Examiner concludes it would have been obvious to optimize the method of Wittosch depending on the desired use of the paper, thereby achieving a water vapor permeability within the claimed range (id.). The Examiner also finds that Wittosch is silent regarding calendering a base paper to the claimed Bendtsen roughness level (id. at 3). Regarding this deficiency, the Examiner finds that Haavisto teaches a method of making a coated paper by pre-treating the surface to a Bendtsen roughness of about 0-200 ml/min by calendering, \vhich overlaps the claimed range of 30-500 ml/min (id.). The Examiner concludes that it would have been obvious to roughen the surface of Wittosch's paper according to the method of Haavisto because Wittosch teaches the desirability of calendering paper prior to coating, and Haavisto teaches that a Bendtsen roughness within the disclosed range aids in the spreading of subsequent coatings on paper (id.). As for claim 5, the Examiner finds Wittosch teaches the paper can include an additional basecoat containing mineral fillers and other materials adhering to the basecoat (id. at 4). As for claim 6, the Examiner finds that Wittosch does not teach calendering a coated paper, but finds that Haavisto teaches calendering a coated paper as a finishing process (id.). The Examiner concludes it would 3 Appeal2014-002684 Application 12/663,419 have been obvious to calendar Wittosch's coated paper because Haavisto teaches that the finishing process smoothens and homogenizes the coating, which would be beneficial to the process of Wittosch because Haavisto teaches making printable paper (id.). Appellants contend that the cited references do not suggest the claimed method because "the lowest number from the broadest range of Wittosch [], 12.4 g/m2/24h, does not overlap at all with the claimed water vapor permeability" value (Reply Br. 2-3). Appellants' argument is not persuasive because it does not address the Examiner's finding that the number of coating layers is a result effective variable that affects the paper's water vapor permeability. "[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Further, contrary to Appellants' assertion, 0.8 g/100 in2/24h (i.e., 12.4 g/m2/24h) is not the lov,rest value of a discrete range disclosed in \Vittosch. Rather, \Vittosch states "[ t ]he water vapor transmission rates of the coated stocks are typically in the range of 0.8 to 7 g/100 sq.in./24h" (emphasis added, Wittosch, col. 5, 11. 47--49). Thus, Wittosch allows for coated water vapor transmission rates that fall outside of the range that would be considered typical. Appellants further contend that "reading the lowest number from the broadest range disclosed in the cited art ... is an unduly broad interpretation of the reference" and that the water vapor examples disclosed in Wittosch "are much higher than the lowest number from the broad range relied on" (Reply Br. 3). These arguments are likewise unpersuasive because the teachings of Wittosch are not limited to the disclosed "typical" water vapor transmission rates, or to specific examples disclosed therein. "It is well 4 Appeal2014-002684 Application 12/663,419 settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art." In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992). Appellants further contend that "Haavisto [] suggests a different technical field than the claimed invention" in that it "suggests printing paper ... and how to achieve better printing properties", whereas "the claimed invention ... addresses ... how to achieve better water vapor permeability properties for barrier papers" (Reply Br. 5). This argument lacks persuasive merit, however, because Haavisto discloses, and Appellants' claims recite, calendering a paper substrate prior to coating it. (Haavisto, col. 5, 1.15---col. 6, 1.11; independent claim 1 ). Further, Appellants' Specification indicates that paper manufactured by the inventive method not only acts as a protective barrier to external moisture, but also "advertises a brand [wherein] a fine appearance and printing create an image of a product of good quality", with one particular example possessing good printability properties (Spec. 1Â·1 (Ll ,. '7Â· 1Q_l0\ _._._._v _._~, 1._1_v _.__,,,}â€¢ Appellants further contend that the cited references do not suggest a method that can provide a barrier layer with a single coating step (Reply Br. 6-7). Appellants also contend that the coating layer produced on the paper according to the claimed method "has an unaltered thickness" (id. at 7). We find these arguments to be unpersuasive, however, because they are directed to subject matter that is not claimed. Specifically, the claims do not require the barrier layer to be prepared in a single step, or the coating to be any uniform thickness. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims.") 5 Appeal2014-002684 Application 12/663,419 Regarding claim 5, Appellants contend that neither Wittosch nor Haavisto suggests an adhesive. This contention is technically erroneous, and therefore unpersuasive, because Wittosch discloses that the coatings comprise a water-based dispersion of a polymer such as polyvinyl alcohol (Wittosch, col. 5, 11. 22-25). Polyvinyl alcohol is identified in Appellants' Specification as a preferred adhesive (Spec. 5: 17-20). That Wittosch fails to explicitly refer to polyvinyl alcohol as an adhesive is of no relevance because "[f]rom the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing." In re Papesch, 315 F.2d381, 391(CCPA1963). Regarding claim 6, Appellants contend that Haavisto "only suggests pre-calendering and not calendering a finished coated paper" (Reply Br. 8). However, this argument is also technically erroneous and therefore unpersuasive. Haavisto discloses that after a curtain coating process, the surface of the coated fibrous \~1eb is finished \~1ith an apparatus selected from six different types of calenders and a brush polisher (Haavisto, col. 5, 11. 29- 34). Thus, Appellants have not revealed error in the Examiner's obviousness conclusion, and for the reasons expressed by the Examiner and above, we sustain theÂ§ 103 rejection advanced in this appeal. The decision of the Examiner is AFFIRMED. 6 Appeal2014-002684 Application 12/663,419 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 7