AHLSTROM-MUNKSJ¿ OYJ

Patent Trials and Appeals Board

Mar 2, 2020

14773778 - (D) (P.T.A.B. Mar. 2, 2020)

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.
14/773,778 09/09/2015 Francois Toubeau GPK-5764-14 9316
23117 7590 03/02/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCOIS TOUBEAU and GILLES VETTER
Appeal 2020-000389
Application 14/773,778
Technology Center 1700
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
SHELDON M. McGEE, Administrative Patent Judges.
FRANKLIN, 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 1–6 and 16–28. 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(a). Appellant identifies the real party in interest as
Ahlstrom-Munksjö Oyj. Appeal Br. 3.
Appeal 2020-000389
Application 14/773,778

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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A fibrous substrate comprising, by dry weight
compared to the weight of the substrate,
a) between 39.9 and 87.9% natural fibers refined to
between 50 and 95 °SR;
b) between 12 and 60% nanofibrillar polysaccharide
having a diameter or thickness between 5 and 100 nanometers,
and a length less than 1 micrometer;
c) between 0.1 and 4 % of at least one retention agent;
and
d) less than 10% ash content; wherein
a ratio between a thickness of the substrate, expressed in
micrometers, and a weight per unit of surface area of the
substrate, expressed in grams per square meter, is less than
1.4 μm/(g/m2).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kress US 1,633,787 June 28, 1927
Marx US 5,203,491 Apr. 20, 1993
Mora US 5,387,319 Feb. 7, 1995
Laleg US 2012/0080156 A1 Apr. 5, 2012
Laine WO 2010/125247 A2 Nov. 4, 2010

REJECTIONS
1. Claim 27 is rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement.

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2. Claims 1–6, 16, and 18–28 are rejected under 35 U.S.C. § 103 as
being unpatentable over Laleg in view Laine and Mora.
3. Claims 16 and 20–24 are rejected under 35 U.S.C. § 103 as being
unpatentable over Laleg in view of Laine and Mora, and further in view of
Kress.
4. Claims 17 and 21–24 are rejected under 35 U.S.C. § 103 as being
unpatentable over Laleg in view of Laine and Mora, and further in view of
Marx.
OPINION
Upon consideration of the evidence and each of the respective
positions set forth by each party, we find that the preponderance of evidence
supports Appellant’s position in the record. We thus reverse the Examiner’s
decision to reject the appealed claims for the reasons provided by Appellant
in the Appeal Brief and Reply Brief, and add the following for emphasis.

Rejection 1
Any analysis of whether a particular claim is supported by the
disclosure in an application requires a determination of whether that
disclosure, when filed, contained sufficient information regarding the subject
matter of the claims as to enable one skilled in the pertinent art to make and
use the claimed invention. The standard for determining whether the
specification meets the enablement requirement is whether the
experimentation needed to practice the invention is undue or unreasonable.
See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). There are many
factors to be considered when determining whether there is sufficient
evidence to support a determination that a disclosure does not satisfy the
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enablement requirement and whether any necessary experimentation is
“undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure.
Id.
Appellant argues that the enablement rejection does not apply the
Wands factors. Appeal Br. 6. Reply Br. 3. The Examiner does discuss
certain examples in the Specification (Final Act. 2–3), but this is not
sufficient to reach a conclusion of non-enablement. It is improper to
conclude that a disclosure is not enabling based on an analysis of only one of
the above factors while ignoring one or more of the others. The Examiner’s
analysis must consider all the evidence related to each of these factors, and
any conclusion of non-enablement must be based on the evidence as a
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whole. See Wands, 858 F.2d at 740 (“Considering all of the factors, we
conclude that it would not require undue experimenation to obtain antibodies
needed to practice the claimed invention.” (emphasis added)). We thus
reverse Rejection 1 on this basis.
Rejections 2–4
We agree with Appellant that the Examiner misapprehends the
teachings of Laleg for the reasons stated on page 14 of the Appeal Brief and
on pages 8–11 of the Reply Brief. Therein, Appellant states, inter alia, that
Laleg specifically instructs persons having ordinary skill in the art that the
super-filled sheet papers (of the kind of his disclosure) have low density,
with specific densities ranging between 0.5–0.7g/cm3 (which converts to
bulk values of from 1.43–2.0, and this conversion is not disputed by the
Examiner in the record). Laleg, ¶ 8. Based upon this teaching, Appellant
states that Laleg does not teach or suggest bulk values of < 1.4 as required
by Appellant’s claims. Appellant states that, rather, a person having
ordinary skill in the art would understand that Laleg teaches the opposite,
bulk values > 1.43, e.g., as noted in the general description found in ¶ 8 of
Laleg, and as confirmed in Tables 2c and 2d.2 Reply Br. 9.
On the other hand, the Examiner believes the aforementioned teaching
in ¶ 8 of Laleg is merely establishing the state of the art, for the reasons

2 Tables 2c and 2d of Laleg include “bulk” values. There is no dispute in the
record that these bulk values are synonymous with the bulk values according
to Appellant’s Specification in terms of what “bulk” means. Spec. ¶ [0027].
On page 7 of the Reply Brief, Appellant notes that the recited thickness/basis
weight ratio is called “bulk”.
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stated in the paragraph bridging pages 19–20 of the Answer. The Examiner
refers to Laleg ¶ 55 (Ans. 21) which discusses “basis weight” ranges for the
sheets––a separate parameter than “bulk”. See Laleg ¶ 7.
However, as stated by Appellant, Appellant’s understanding of
Laleg’s teachings in ¶ 8 is confirmed by Tables 2c and 2d of Laleg. Appeal
Br. 14. In response, the Examiner believes that the data in these tables are
not the full scope of Laleg for the reasons stated on pages 18–19 of the
Answer. However, the Examiner does not adequately explain why one
would have been motivated to have modified Laleg to arrive at a bulk value
of less than 1.4 when Laleg specifically teaches bulk values greater than
1.43.3 We add that the Examiner does not direct us to evidence in the record
(see Answer generally) that the differences in the values between that taught
in Laleg versus that claimed are not meaningful or that one skilled in the art
would know to discard the limits set by Laleg, especially in light of
Appellants’ position to the contrary. In re Patel, 566 Fed. Appx. 1005, 1010
(Fed. Cir. 2014) (nonprecedential) (“When differences clearly exist and
there is no evidence that they are either not meaningful or one of skill in the
art would know to discard the limits set by the prior art, proximity alone is
not enough to establish a prima facie case of obviousness.”).

3 On pages 9–10 of the Answer, the Examiner alternatively states that it
would have been obvious to have adjusted this ratio to within the claimed
ratio to achieve a desired tensile strength. However, as mentioned supra,
Laleg expressly teaches bulk values of greater than 1.43. The Examiner’s
alternative theory fails because “the prior art does not teach that a broader
range [of density] would be appropriate.” In re Patel, 566 Fed Appx. 1005,
1009 (Fed. Cir. 2014) (nonprecedential).
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In view of the above, we reverse Rejections 2–4 (the additional
references applied in Rejections 3 and 4 do not cure the deficiencies of the
applied art of Rejection 2, discussed, supra).
CONCLUSION
We reverse the Examiner’s decision.
DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Reversed Affirmed
27 112(a) Enablement 27
1–6, 16, 18–
28
103 Laleg, Laine, Mora 1–6, 16, 18–
28

16, 20–24 103 Laleg, Laine,
Mora, Kress
16, 20–24
17, 21–24 103 Laleg, Laine,
Mora, Marx
17, 21–24
Overall
Outcome
1–6, 16–28

REVERSED