Ex Parte Backfolk et al

Patent Trial and Appeal Board

Jun 1, 2018

13577114 (P.T.A.B. Jun. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/577,114 08/03/2012 Kaj Backfolk
24978 7590 06/05/2018
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
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.
1969.111409 1262
EXAMINER
SHAH,SAMIR
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/05/2018 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@ gbclaw. net
docket@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 KAJ BACKFOLK, ISTO HEISKANEN, and
NINA MIIKKI 1
Appeal2017-008464
Application 13/577,114
Technology Center 1700
Before ROMULO H. DELMENDO, MONTE T. SQUIRE, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is identified as Stora Enso OYJ, Appeal Brief
filed January 27, 2017 ("App. Br."), 1. In this decision, we also refer to the
Examiner's Answer of March 24, 2017 ("Ans."), and the Reply Brief of May
22, 2017 ("Reply Br.").
Appeal2017-008464
Application 13/577,114
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 1, 2, and 4--15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and reverse-in-part.
CLAIMED SUBJECT MATTER
The claims are directed to a surface treatment for coating paper or
other fibrous webs. Spec. 1: 5-7. 3 Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A surface treatment composition for paper, board or other
fibrous webs, which composition comprises:
particles which comprise an active material comprising a
salt of a multivalent metal, an acid, and a supporting material,
wherein the supporting material is adapted to release the
active material and the acid from the particles when subjected to
heat and/or a change in pH or when subjected to heat and
pressure.
App. Br. A-1 (Claims Appendix) (emphases added).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Geer
Mikami
Takegawa
us 4,020,210
us 4,717,638
us 5,336,582
Apr. 26, 1977
Jan. 5, 1988
Aug. 9, 1994
2 Non-Final Rejection of August 9, 2016 ("Act."). The record before us
shows multiple rejections previously issued including a non-final rejection
of March 12, 2015 and final rejection of August 19, 2015.
3 U.S. Patent Application No. 13/577,114 ("Spec."), Surface Treatment
Composition.
2
Appeal2017-008464
Application 13/577,114
Drummond
Tokiyoshi
Glittenberg
US 6,228,161 Bl May 8, 2001
US 2003/0059601 Al Mar. 27, 2003
US 2007 /0113997 Al May 24, 2007
Sigma Aldrich, Reference: Polymer Properties. The "Notice of References
Cited" of March 12, 2015 indicates this non-patent literature is dated 2015. 4
REJECTIONS
Claims 1, 2, 6, 9-11, 13-15 are rejected under 35 U.S.C. 103(a) (pre-
AIA) as being unpatentable over Geer and Glittenberg. Act. 2--4; Ans. 3. 5
Claim 5 is rejected under 35 U.S.C. 103(a) (pre-AIA) as being
unpatentable over Geer, Glittenberg, and Sigma Aldrich. Act. 3; Ans. 3. 6
Claim 4 is rejected under 35 U.S.C. 103(a) (pre-AIA) as being
unpatentable over Geer, Glittenberg, and Mikami. Act. 4; Ans. 5. 7
Claims 7 and 8 are rejected under 35 U.S.C. 103(a) (pre-AIA) as
being unpatentable over Geer, Glittenberg, and Takegawa. Act. 5. 8
Claim 12 is rejected under 35 U.S.C. 103(a) (pre-AIA) as being
unpatentable over Geer, Glittenberg, and Tokiyoshi and alternatively over
Geer, Drummond, and Tokiyoshi. Act. 6, 9; Ans. 6.
4 The Sigma Aldrich reference is properly used as extrinsic evidence of a
property of the composition. See App. Br. 15 (claim 5 stands and falls with
claim 1 ).
5 Rejection of claims 1, 2, 6, 9-11, 13-15 over Geer and Drummond has
been withdrawn. Ans. 2.
6 Rejection of claim 5 over Geer, Drummond, and Sigma Aldrich has been
withdrawn. Ans. 2.
7 Rejection of claim 4 over Geer, Drummond, and Mikami has been
withdrawn. Ans. 2.
8 Rejection of claims 7 and 8 over Geer, Drummond, and Takegawa have
been withdrawn. Ans. 2.
3
Appeal2017-008464
Application 13/577,114
Claim 1
OPINION
The dispositive issue on appeal is whether a "surface treatment
composition" which "comprises: particles which comprise an active material
comprising a salt of a multivalent metal, an acid ... "as recited in claim 19 is
limited such that it does not read on the composition that would have been
suggested by the prior art. See App. Br. 11, 14 (arguing that neither
"Glittenberg nor Geer discloses a coating composition including a particle
and acid that is held within the particle or otherwise part of the particle");
see also Reply Br. 3 ("the claim requires the particles comprise the acid"
which is "not the same as a coating composition that merely includes acid").
Although claim 1 requires the "surface treatment composition" that
comprises the "particles" to comprise an "active material comprising ... an
acid," we hold that the claim language is not so limited as to distinguish over
the composition that would have been suggested by the prior art.
The record before us shows that Geer undisputedly teaches a
microcapsule having "a nucleus" which may include calcium chloride (i.e., a
salt of a multivalent metal) and "a wall material" (i.e., a supporting
material). Compare Act. 3 (citing Geer 2:41-59) with App. Br. 13 (citing
similar portions in Geer). It is also undisputed that Glittenberg teaches
enhancing a paper coating composition with "pH regulators (e.g. sodium
hydroxide, sulfuric acid, hydrochloric acid, etc.)[.]" Compare Act. 3 (citing
Glittenberg i-f 37) with App. Br. 13 (citing the same and stating that
Glittenberg "lists hydrochloric acid as an additive to the coating
9 Claims 2, 4---6, 9-11, and 13-15 stand or fall with claim 1. App. Br. 15; 37
C.F.R. § 41.37(c)(l)(iv) (2013).
4
Appeal2017-008464
Application 13/577,114
composition"). Appellants further "do[] not dispute that the listing of
hydrochloric acid might motivate one of ordinary skill in the art to regulate
the pH of the coating composition that includes the particles and is applied
to paper." App. Br. 14. Based on these undisputed teachings and
Appellants' argument which is solely directed to a composition having "an
acid held within or otherwise part of the particles," (id.) we find that no
reversible error has been identified here because the combination of the acid
with the salt and the supporting material, as suggested by the references,
would result in a "surface treatment composition" which "comprises:
particles which comprise an active material comprising a salt of a
multivalent metal, an acid ... " as recited in claim 1.
Claims 7 and 8
Claim 7 depends from claim 6 - a dependent of claim 1 - and claim 6
additionally recites "wherein the particles comprise a core comprising the
active material, which core is encapsulated in a shell comprising the
supporting material." App. Br. A-2. Claim 7 additionally recites "wherein
the core comprises the active material and a binding material and wherein
the shell is made of the supporting material." Id. Claim 8, depending from
claim 7, additionally recites "wherein the binding material is selected from
the group consisting of waxes, polyethylene waxes, triglycerides, metal
soaps, or co-polymers and combinations thereof." Id.
Appellants do not dispute the Examiner's finding that Takegawa
teaches microcapsules having an outer shell and a core material which may
include additives such as waxes. Compare Act 5 (citing Takegawa 8:35--40)
with App. Br. 16. Appellants' sole argument is that the Examiner's
proposed combination "would be contrast to the teaching of Geer to have
5
Appeal2017-008464
Application 13/577,114
materials that are chemical inert." App. Br. 16. Neither claim 7 nor claim 8,
however, recites whether a material is chemically inert. Appellants'
argument, not based on the claim language, cannot identify reversible error
here.
Claim 12
Claim 12 depends from claim 1 and additionally recites "wherein the
particles further comprise at least one stabilizer." The Examiner determines
claim 12's subject matter would have been obvious based on Tokiyoshi's
teaching of a coated paper sheet having a "coating layer" that includes
stabilizers. Act. 6 (citing Tokiyoshi i-f 55), 9-10 (citing Tokiyoshi i-f 55 for
the rejection based on Geer, Drummond, and Tokiyoshi); see also Ans. 8
("Tokiyoshi discloses coated paper sheet comprising a coating layer
comprises a stabilizer .... ").
Because the record before us shows that the Examiner finds it would
have been obvious "to use the stabilizer ... in the coating of Geer to
stabilize the coating" (Act. 6) without explaining why a skilled artisan would
have found obvious "particles [that] comprise at least one stabilizer" as
recited in claim 12, we cannot sustain the rejection of claim 12 based on
Geer, Glittenberg, and Tokiyoshi. For the same reason, we cannot sustain
the rejection of claim 12 based on Geer, Drummond, and Tokiyoshi.
DECISION
The Examiner's rejections of claims 1, 2, 4--11, and 13-15 are
affirmed.
The Examiner's rejections of claim 12 are reversed.
6
Appeal2017-008464
Application 13/577,114
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART; REVERSED-IN-PART
7