David A. Dellinger et al.

Patent Trials and Appeals Board

Sep 26, 2019

13740025 - (D) (P.T.A.B. Sep. 26, 2019)

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.
13/740,025 01/11/2013 David A. Dellinger 27074.0002 - Chamness 7674
47608 7590 09/26/2019
Brown, Winick, Graves, Gross, Baskerville
and Schoenebaum, P.L.C
666 Grand Ave
Suite 2000
Des Moines, IA 50309
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
IP@brownwinick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID A. DELLINGER, ELIE HELOU JR.,
DREW V. SPEER, and DWIGHT W. SCHWARK
____________________

Appeal 2018-008556
Application 13/740,025
Technology Center 1700
____________________

Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
September 14, 2017 decision rejecting claims 1–6, 8–12, and 24 (“Non-Final
Act.”).2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Chamness Biodegradables, LLC, as
the real party in interest (Appeal Br. 2).
2 Claims 13–23 and 25 were previously withdrawn from consideration.
Appeal 2018-008556
Application 13/740,025

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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a moisture barrier coating that is
biodegradable and compostable, which are said to increase moisture
resistance and provide non-stick or release characteristics when applied to
biodegradable and compostable disposable food packaging and food service
items (Abstract). The coating includes a cellulose ester, a shellac, and a
rosin (id.). Claims 1 and 24 are representative of the invention and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A coating on a substrate comprising:
a cellulose ester of 40-65%,
a shellac of 25-45%; and
a rosin of 10-20%, wherein the cellulose ester comprises
cellulose acetate propionate, cellulose acetate butyrate,
cellulose acetate, or nitrocellulose.

24. A coating for application to a substrate comprising a
cellulose ester of 40-65%, a shellac of 25-45%, a rosin of 10-
20%, and a solvent, and optionally a wax, a plasticizer, or a
release agent, wherein the cellulose ester comprises cellulose
acetate propionate, cellulose acetate butyrate, cellulose acetate,
or nitrocellulose, and the solvent comprises methyl acetate,
ethyl acetate, propyl acetate, butyl acetate, ethanol, propanol,
acetone, water, or hydrocarbons.

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Application 13/740,025

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REJECTIONS
1. Claims 1, 2, 9–12, and 24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Dellinger3 in view of Ando4 and Nakano.5
2. Claims 3–6 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dellinger in view of Ando and Nakano, and further in
view of Battersby. 6
Claims 13, 14, 18, 19, 21–23, and 25 were rejected on the grounds
of non-statutory obviousness-type double patenting over claims 1–16 and
19–28 of US Patent No. 8,563,140. Because the claims subject to the
obviousness-type double patenting rejection have been withdrawn from
consideration (see Non-Final Act. 1), we believe that this rejection is not
appealed, which is consistent with Appellant’s Appeal Brief which does
not address the obviousness-type double patenting rejection, and the
“Grounds of Rejection to be Reviewed on Appeal” section of the Reply
Brief, which does not list the obviousness-type double patenting rejection.

DISCUSSION
Appellant does not argue any of the claims separately (see, e.g.,
Appeal Br. 20, 22, and 25). Accordingly, we focus our analysis on the

3 Dellinger et al., US 2010/0203348 A1, published August 12, 2010.
4 Ando et al., JP 07-010148 A, published January 13, 1995. Because Ando
is in Japanese, Appellant and the Examiner (and the Board) rely on the
translation of record.
5 Nakano et al., JP 2004142426 A, published May 20, 2004. Because
Nakano is in Japanese, Appellant and the Examiner (and the Board) rely on
the translation of record.
6 Battersby et al., WO 2011/025858 A1, published March 3, 2011.
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Application 13/740,025

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rejection of claim 1 over Dellinger in view of Ando and Nakano. The
remaining claims stand or fall with claim 1.
The Examiner finds that Dellinger discloses a moisture resistant
coating comprising a cellulose ester7, a wax, a plasticizer, and a rosin (Non-
Final Act. 4, citing Dellinger, ¶¶ 23, 29, 32, and claim 1). The Examiner
further finds that Dellinger discloses in one embodiment a coating
comprising 65% of a cellulose ester and 20% of a rosin, each a value falling
within the claimed ranges (Non-Final Act. 4, citing Dellinger, p. 5, Table 1,
Sample 6).
The Examiner also finds that Dellinger does not teach that its coating
contains a shellac, but that Ando discloses a water-proof and biodegradable
resin layer which comprises shellac and a natural rosin (Non-Final Act. 4–5,
citing Ando, Abstract, ¶ 8). The Examiner determines that it would have
been obvious to incorporate Ando’s shellac into Dellinger’s coating to
improve its waterproofness and biodegradability (Non-Final Act. 5).
With respect to the limitation that shellac is present in an amount of
25–45%, the Examiner finds that Nakano discloses a biodegradable water-
proofing layer comprising a shellac resin, a hardener, a wax, a cellulose
derivative, a filler, a plasticizer and a water repellant (Non-Final Act. 5,
citing Nakano, Abstract, ¶¶ 8, 9). The Examiner further finds that Nakano
teaches that the shellac resin is present in an amount from 23 wt% to
95.6 wt% (Non-Final Act. 5–6). The Examiner determines that in light of

7 In particular, the Examiner finds that Dellinger discloses the use of
cellulose acetate, which is one of the cellulose esters recited in claim 1
(Non-Final Act. 4, citing Dellinger, claim 2).
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the overlap in the range of shellac in Nakano and the coating of claim 1, the
claimed amount of 25%–45% would have been obvious.
Appellant makes several arguments urging reversal of the rejection.
First, Appellant argues that because the specific examples in Dellinger relied
on by the Examiner as showing the use of 65% cellulose acetate also
includes 15% of other components (in addition to rosin), the maximum
amount of shellac which could be added in to the composition is less than
the claimed 25%–40% (Appeal Br. 15). This argument is not persuasive
because, as found by the Examiner, the specific example cited in the
rejection is only used to show the presence of 65% cellulose ester (Ans. 10).
The Examiner also finds that Dellinger specifically teaches the presence of
0–50% of rosin, a range which overlaps with, and therefore renders obvious
– the claimed range of 10%–20% rosin (Ans. 10). It is axiomatic that a
reference may be used for all it teaches, and is not limited to the teachings of
specific examples.
Appellant also argues that Nakano does not teach the use of shellac,
but only the use of a shellac resin derivative (Appeal Br. 17–18). This
argument is not persuasive because the Examiner relies on Ando for the
suggestion to include shellac in Dellinger’s composition (Ans. 11).
Appellant further argues that because all of Nakano’s examples show
the use of a shellac derivative in amounts greater than 50%, it cannot suggest
the claimed range of 25%–45% and, in fact, teaches away from such a range
(Appeal Br. 18–19). This argument is not persuasive because, inter alia, the
Examiner’s findings that Nakano’s disclosure teaches a range of 23 wt% to
95.6 wt% were not challenged by Appellant. Appellant merely argued that
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Nakano’s disclosed range was so broad that it could not have rendered the
claim range obvious (Appeal Br. 19). This argument is not persuasive.
“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). A prima
facie case of obviousness exists in situations where the claimed ranges
overlap the ranges disclosed by the prior art. See In re Geisler, 116 F.3d
1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990).
Appellant also seeks to rely on data in the Specification to show that
the claimed amounts of the components produces unexpected advantages
(Appeal Br. 20). This showing is not persuasive because, inter alia, the
showing is not commensurate in scope with the claims. It is well settled that
Appellant has the burden of showing unexpected results. In re Freeman,
474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). Such burden requires Appellant to proffer factual evidence
that actually shows unexpected results relative to the closest prior art, see In
re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is
reasonably commensurate in scope with the protection sought by the claim
on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764,
786 (CCPA 1972). The extent of the showing relied upon by Appellant
must reasonably support the entire scope of the claims at issue. See In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). As explained by the
Examiner (Ans. 12), the data relied on by Appellant is limited to a specific
cellulose ester, a specific shellac and rosin, but claims are not limited to that
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Application 13/740,025

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specific shellac or cellulose ester. Hence, the showing is not commensurate
in scope with the claims and is not persuasive of patentability.
Appellant also argues that the use of the three claimed components
produces synergistic results as compared to the individual components,
which could not have been predicted from the prior art (Appeal Br. 21–23).
This argument is not persuasive because, although the Cobb8 values of
compositions falling within the scope of the claims are lower than the Cobb
values of the individual components, Appellant has not adequately
demonstrated through factual evidence that the effects are synergistic, rather
than merely additive. In addition, the data is not commensurate in scope
with the claims (because, as discussed above, data relied on by Appellant is
limited to a specific cellulose ester, a specific shellac and rosin, but claims
are not limited to that specific shellac or cellulose ester) and, thus, does not
show the criticality of the claimed ranges.
Accordingly, the preponderance of the evidence of record supports the
obviousness rejections.

CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 2, 9–12, and 24 § 103(a)
Dellinger, Ando, and
Nakano
1, 2, 9–12, and
24

8 A Cobb test is a standard test to measure water absorption of paper and
paperboard (Spec. ¶ 33).
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Application 13/740,025

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Claims
Rejected
Basis Affirmed Reversed
3–6 and 8 § 103(a)
Dellinger, Ando,
Nakano, and
Battersby
3–6 and 8
Overall Outcome 1–6, 8–12, and
24

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