11711495 (B.P.A.I. May. 2, 2012)

Ex Parte Deka

Board of Patent Appeals and InterferencesMay 2, 2012

11711495 (B.P.A.I. May. 2, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/711,495 02/27/2007 Ganesh C. Deka NPI-60 (0003) 5258 22827 7590 05/02/2012 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER CHRISS, JENNIFER A ART UNIT PAPER NUMBER 1786 MAIL DATE DELIVERY MODE 05/02/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte GANESH C. DEKA ________________ Appeal 2010-010752 Application 11/711,495 Technology Center 1700 ________________ Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 40-58, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims a medical packaging substrate. Claim 40 is illustrative: Appeal 2010-010752 Application 11/711,495 2 40. A medical packaging substrate comprising an impregnated fibrous web having a Gurley porosity of from about 10 to about 120 seconds per 100 cubic centimeters and a pH modifier within the impregnated fibrous web such that the impregnated fibrous web has a pH of about 7.0 or more, wherein the pH modifier comprises sodium carbonate, sodium bicarbonate, or mixtures thereof, and wherein the impregnated fibrous web is formed from a cellulosic fibrous material used to form a fibrous web that is then saturated with the pH modifier and thereafter impregnated with a binder composition. The References Bean 2002/0090474 A1 Jul. 11, 2002 Goodrow 2007/0012412 A1 Jan. 18, 2007 The Rejections The claims stand rejected as follows: claims 40-45 and 48-55 under 35 U.S.C. § 102(e) over Goodrow, and claims 46, 47, and 56-58 under 35 U.S.C. § 103 over Goodrow in view of Bean. OPINION We affirm the rejections. Rejection under 35 U.S.C. § 102(e) The Appellant argues only independent claim 40 and its dependent claim 52 (Br. 5-10). We therefore limit our discussion to those claims. Claims 41-45, 48-51, and 53-55 stand or fall with claim 40 from which they directly or indirectly depend. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Claim 40 is in product-by-process form. The patentability of a claim in product-by-process form is determined based on the product itself, not on the method of making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. Appeal 2010-010752 Application 11/711,495 3 1985) (“If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.”). Whether a rejection is under 35 U.S.C. §102 or §103, when the Appellants’ product and that of the prior art appear to be identical or substantially identical, the burden shifts to the Appellants to provide evidence that the prior art product does not necessarily or inherently possess the relied-upon characteristics of the Appellants’ claimed product. See In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745 (CCPA 1974). The reason is that the Patent and Trademark Office is not able to manufacture and compare products. See Best, 562 F.2d at 1255; In re Brown, 459 F.2d 531, 535 (CCPA 1972). The Appellant argues, based upon Samples 2-4 in the Appellant’s Specification, that adding a pH modifier to a formed web rather than adding a pH modifier to the fiber suspension used to form the web results in a web having a lower Gurley porosity and more consistent peel strength (Br. 6-7). Those samples do not distinguish the claimed substrate (including the substrate claimed in claim 52 which requires that “the cellulosic fibrous material is formed from a fiber suspension in a pulper, the fiber suspension being substantially free from a pH modifier”) over Goodrow’s substrate because the Sample 3 and 4 Gurley porosities (14.8-28.7 sec/100 cm3) are within Goodrow’s range of about 5-50 sec/100 cm3 (¶ 0048) and the Appellant has not established that the Appellant’s claimed substrate’s peel strength differs from that of Goodrow’s substrate. Moreover, the relied- upon data is not commensurate in scope with the claims. Appeal 2010-010752 Application 11/711,495 4 The Appellant argues that Goodrow does not disclose a medical packaging substrate or even include the terms “medical” or “packaging” (Br. 8-9). Like the Appellant’s substrate, Goodrow’s substrate can be a resin-impregnated cellulosic fiber web having a Gurley porosity of about 10-120 sec/100 cm3 and can include a pH-adjusting agent, which can be sodium carbonate, and have a pH of about 7 or more (¶¶ 0007, 0025, 0041, 0044, 0048-49). Hence it appears, prima facie, that like the Appellant’s substrate, Goodrow’s substrate is capable of functioning as a medical packaging substrate. The Appellant has not carried the burden of providing evidence to the contrary. Thus, we are not persuaded of reversible error in the rejection under 35 U.S.C. § 102(e). Rejection under 35 U.S.C. § 103 The Appellant argues that Bean’s ammonia is highly volatile and would substantially evaporate from the saturated web (Br. 13). That argument is not well taken because it is merely unsupported attorney argument, and arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, the argument does not address Bean’s other bases for pH adjustment (¶¶ 0068, 0079). The Appellant argues that Bean does not disclose saturating a formed web with sodium carbonate or sodium bicarbonate (Br. 14). Bean adds sodium carbonate or sodium bicarbonate to adjust the pH of the fiber suspension used to form the web rather than adding it to the Appeal 2010-010752 Application 11/711,495 5 formed web (¶ 0079).1 The Appellant has not established that adding the sodium carbonate or sodium carbonate to the formed web rather than to the fiber suspension used to make the web distinguishes the claimed substrate over that of Goodrow, as discussed above regarding the rejection under 35 U.S.C. § 102(e), or that of Bean. Hence, we are not convinced of reversible error in the rejection under 35 U.S.C. § 103. DECISION/ORDER The rejections of claims 40-45 and 48-55 under 35 U.S.C. § 102(e) over Goodrow and claims 46, 47, and 56-58 under 35 U.S.C. § 103 over Goodrow in view of Bean are affirmed. It is ordered that the Examiner’s decision 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 cam 1 Bean discloses medical packaging which can comprise a resin-impregnated cellulosic fiber substrate having a pH above 7 and a Gurley porosity below about 120 sec/100 cm3 (¶¶ 0008, 0043, 0068, 0071, 0079, 0084-85, 0095, 0119).