Risto H. Jokinen et al.

Patent Trials and Appeals Board

Mar 10, 2020

14233915 - (D) (P.T.A.B. Mar. 10, 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.
14/233,915 04/18/2014 Risto H. Jokinen BGG0113US 7093
23413 7590 03/10/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
EFTA, ALEX B
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
03/10/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RISTO H. JOKINEN, JORMA HENTTONEN, JAN-ERIK
FORSSTROM, SAMPO PYNNÖNEN, and KAI HEINONEN
Appeal 2019-002118
Application 14/233,915
Technology Center 1700

Before BEVERLY A. FRANKLIN, CHRISTOPHER L. OGDEN, and
LILAN REN, Administrative Patent Judges.

REN, 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 28, 29, and 31–38. See Final Act. 8, 11,
12, 16. We have jurisdiction 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 the real party in interest as “UPM RAFLATAC
OY.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
“This invention relates to a label laminate. In addition, this invention
relates to a method for manufacturing a label laminate. The invention further
relates to a system for manufacturing a label laminate.” Spec. 1:6–8. Claim
28, reproduced below, is illustrative of the claimed subject matter:
28. A method for manufacturing a pressure sensitive label
laminate, the method comprising:
forming at least one water based adhesive layer on a metal
belt,
drying said at least one water based adhesive layer at least
partially by heating the metal belt,
unwinding a first material layer, wherein the first material
layer comprises at least one plastic film layer,
unwinding a second material layer, attaching said at least
one dried water based adhesive layer to the surface of the first
material layer,
laminating the first material layer comprising the dried at
least one water based adhesive layer together with the second
material layer in order to form the pressure sensitive label
laminate;
wherein the first material layer or the second material layer
is a release liner comprising at least one backing material layer,
which is coated with at least one release coating layer comprising
silicone.
Claims Appendix (Appeal Br. 33).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Smith
Duncan
Pagendarm 777
Pagendarm
US 6,312,777 B1
US 4,582,736
FR 1598777
US 4,886,564
Nov. 6, 2001
Apr. 15, 1986
July 6, 1970
Dec. 12, 1989

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REJECTIONS
Claims 28, 31, 32, and 34–38 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Smith in view of Pagendarm. Final Act.
8.
Claims 28, 31, 32, and 34–38 are alternatively rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Pagendarm 777 in view of
Pagendarm and Smith. Final Act. 12.
Claims 29 and 33 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Smith in view of Pagendarm and Duncan. Final Act.
11.
Claims 29 and 33 are alternatively rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Pagendarm 777 in view of Pagendarm,
Smith, and Duncan. Final Act. 16.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”)). After having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that reversible error has been identified,
and we affirm the Examiner’s § 103 rejections for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
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Rejection Over Smith & Pagendarm
In rejecting claim 28 over Smith and Pagendarm, the Examiner finds
that Smith teaches or suggests all the recited steps except using a metal belt
to at least partially dry a water based adhesive layer. Final Act. 8–9 (citing
various portions of Smith). The Examiner in turn relies on Pagendarm for
the teaching. Id. at 9. The Examiner provides a rationale in support of the
determination of obviousness. Id. at 9–10 (citing Smith and explaining why
a skilled artisan would have found the method recited in claim 28 obvious).
On appeal, Appellant does not address much of the Examiner’s fact
findings in support of the rejection. For example, the Examiner finds and
Appellant does not refute that Smith teaches a method for making a label
that includes a water-based pressure sensitive adhesive that is dried on a belt.
Compare Final Act. 8 (citing various portions of Smith including Abstract,
2:20–37, 2:50–65, 1:5–15, 2:50–65), with Appeal Br. 4 (citing Smith 3:61–
63 and acknowledging that Smith “relates to pressure sensitive label
laminates and discloses a release sheet, which is coated with a modified
pressure sensitive adhesive”), and id. at 5–20 (acknowledging that Smith
teaches the use of a belt and arguing without addressing the Examiner’s
findings). The Examiner finds and Appellant does not refute that Smith
discloses the recited face layer and the recited release layer. Compare Final
Act. 9, 10 (citing Smith 4:44–68, 5:1–5, 6:10–20, 6:45–65), with Appeal Br.
5 (acknowledging that Smith forms “an endless belt of release liner” which
may have certain advantages). Appellant also acknowledges that Pagendarm
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teaches “an adhesive tape”2 (Appeal Br. 6) and a metal core belt. Appeal Br.
11–12.
Appellant instead argues that the Examiner reversibly erred in
rejecting claim 283 based on Smith and Pagendarm because “the skilled
person would not have been motivated to combine the references as
suggested by the Examiner. Appeal Br. 20 (summarizing arguments raised in
the Appeal Brief).
We are not persuaded by Appellant’s arguments for the following
reasons. From the outset, to prevail in an appeal to this Board, Appellant
must adequately explain or identify reversible error in the Examiner’s §
103(a) rejections. See 37 C.F.R. § 41.37(c)(1) (iv) (2012); see also Jung, 637
at 1365. By statute, this Board functions as a board of review, not a de novo
examination tribunal. 35 U.S.C. § 6(b) (“The [board] shall . . . review
adverse decisions of examiners upon applications for patents . . . .”).
In this case, Appellant does not address the Examiner’s rationale for
the rejection over Smith and Pagendarm. Compare id. at 3–21,4 with Final
Act. 10 (explaining that it would have been obvious “to use an endless belt
having a metal core as the belt of SMITH et al. which is heated to dry the

2 Appellant does not structurally distinguish the prior art adhesive tape from
the recited pressure sensitive laminate. Appeal Br. 6. The Specification
broadly provides, “the term ‘label laminate’ 1 refers to so called pressure
sensitive label laminates and self-adhesive label laminates.” Spec. 7:11–12.
3 Appellant does not separately argue for the rejection of claims 31, 32, and
34–38 over Smith in view of Pagendarm 564. See Appeal Br. 21. We select
claim 28 as representative for this rejection. See 37 C.F.R. § 41.37(c)(1)(iv).
4 Appellant addresses part of the rationale in combining Pagendarm 777,
Pagendarm, and Smith which is similar to the rationale in combining Smith
and Pagendarm. Appeal Br. 26. We address this argument in the part of the
opinion for the rejection of claim 28 over Pagendarm 777, Pagendarm, and
Smith.
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adhesive thereon, as taught by PAGENDARM et al. such that a more
compact apparatus with relatively lower costs can be used and to reduce the
likelihood of charring or otherwise affecting the quality and appearance of
the layers”); see Ans. 11–505; see also KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (the Examiner must show “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness”)).
Appellant instead raises various arguments that Smith and Pagendarm
solve problems different from those to which the Specification refers.
Appeal Br. 5–10. For example, Appellant argues that Smith and Pagendarm
relate to “different technical areas” and “different technical challenges.” Id.
at 5, 9. These arguments are unpersuasive because it is well-established that
[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. . . . [A]ny need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.

KSR, 550 U.S. at 419–20.
Appellant also argues that the combined prior art “would have led to a
more complex solution.” Appeal Br. 5–10 (emphasis removed); see also id.
at 14 (arguing that a skilled artisan would not have had the need to modify
the particular embodiment disclosed in Smith), 17–18 (arguing that a skilled
artisan would not have been motivated “to create complexity in the solution
provided by Smith”). We are not persuaded by these arguments as “[i]f a
person of ordinary skill in the art can implement a predictable variation [of a

5 No Reply Brief was filed.
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known work], § 103 likely bars its patentability.” KSR, 550 U.S. at 417. We
further note that these arguments that a skilled artisan would have
considered the Examiner’s proposed combination more complex and thus
unnecessary (Appeal Br. 14) are not supported by evidence. “Attorneys’
argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d
1574, 1581 (Fed. Cir. 1989).
Appellant’s arguments are also unpersuasive because the arguments
are not based on the Examiner’s factual findings in support of the rejection.
For example, Appellant argues that Smith does not teach or suggest a recited
“metal belt.” Appeal Br. 4, 5, 8, 10, 12, 15, 16. The Examiner’s rejection,
however, is based on the finding that Pagendarm teaches “a metal cored
belt.” Final Act. 9 (citing Pagendarm 4:10–30, Fig. 1). Appellant in fact
acknowledges that Pagendarm “comprises a belt . . . having a flexible iron
core.” Appeal Br. 12. As another example, Appellant argues that “the skilled
person would not have any reasons to modify Smith because Smith does not
face any problems related to applying adhesives” (Appeal Br. 9) which does
not address the rationale that the Examiner provides in support of the
rejection. See Final Act. 9–10. As yet another example, Appellant argues
that Pagendarm does not teach or suggest the recited release liner (Appeal
Br. 6) without addressing the Examiner’s finding that Smith teaches this
limitation. See Final Act. 10 (citing Smith 4:44–68, 5:1–5, 6:10–20, 6:45–
65).
Moreover, we note that Appellant’s arguments attack the references
individually, rather than considering what the combined references would
have suggested to the person of ordinary skill in the art. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
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Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981)). Moreover, all of the features of the secondary
reference need not be bodily incorporated into the primary reference and the
skilled artisan is not compelled to blindly follow the teaching of one prior art
reference over the other without the exercise of independent judgment. See
Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
For example, Appellant argues that Smith teaches a temperature of 115 ℃
for drying the adhesive whereas Pagendarm teaches a lower temperature of
70 to 90 ℃ for heating the belt on which the adhesive may be placed and
therefore a skilled artisan would not have made the substitution. Appeal Br.
17. As the Examiner points out, and Appellant does not dispute, “[c]hanging
the temperatures based on the materials being evaporated is readily obvious
to one having ordinary skill.” Ans. 49. As with Appellant’s other similar
arguments, such arguments are unpersuasive because a “person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR, 550
U.S. at 421.
Appellant’s arguments are unpersuasive also because they are not
based on the limitations recited in method claim 28. For example, Appellant
argues that Pagendarm is distinguishable from claim 28 because “[i]n the
claimed solution, there is a heated metal belt having rather large air space
around the belt, therefore the evaporating rate of the water to be removed
may be improved” (Appeal Br. 8) which are not limitations recited in claim
28. As another example, Appellant argues that claim 28 requires “a substrate
to be coated with an adhesive layer is a first material layer of a pressure
sensitive label laminate” (Appeal Br. 7) which is not recited in claim 28.
Other similar examples of such unpersuasive argument include Appellant’s
distinction that, “the adhesive is never dried prior to attaching the adhesive
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to the first material layer of the label laminate” in Smith (Appeal Br. 11)
(emphasis removed) which is not a limitation recited in claim 28.
Appellant’s arguments that the combined references “would have
provided a different product” (Appeal Br. 6, 18) and that the references do
not teach certain features of “the claimed product” (id. at 10, 13, 14) are not
persuasive because the arguments do not structurally distinguish the prior art
pressure sensitive label laminate from that recited in claim 28. See, e.g.,
Appeal Br. 7–18. Appellant acknowledges that “Smith relates to pressure
sensitive label laminates.” Id. at 4. Appellant does not argue that the recited
step “to form the pressure sensitive label laminate” has a structural
requirement for the pressure sensitive label laminate. Id. at 7–18. The
Specification likewise broadly provides that “the term ‘label laminate’ 1
refers to so called pressure sensitive label laminates and self-adhesive label
laminates” without particular attributes or parameters. Spec. 7:11–12. The
Specification provides only that the structure of such a label laminate
“comprises two layers which are laminated together.” Id. at 7:12.
Appellant’s argument does not structurally distinguish the prior art pressure
sensitive label from that recited and is therefore unpersuasive of
patentability.
We have considered the remaining arguments and found them
unpersuasive for similar reasons including the lack of supporting evidence.
For example, Appellant argues, without evidence, that a skilled artisan
“would not apply water based adhesives to a first material layer comprising
at least one plastic layer, because it would create complexity that no person
of ordinary skill in the art would aim for.” Appeal Br. 15–16. As additional
examples, Appellant argues, without evidentiary support, that “plastic
together with water based adhesives create complexity that no person of
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ordinary skill in the art would aim for” and that “a person of ordinary skill in
the art would not use water based adhesives with plastic.” Id. at 17, 18. Such
attorney’s argument is not persuasive as it “is no substitute for evidence.”
Johnston, 885 F.2d at 1581.
We further note that Appellant’s discussion of the references lacks
pinpoint cites in various places. For example, Appellant asserts that
“[a]ccording to Smith, the belt is a release sheet and it can only be used with
linerless label” without providing a pinpoint cite to the reference. Appeal Br.
12. Appellant’s assertion that “Smith states that the endless belt solution
cannot be combined with a release layer” (id. at 13) likewise lacks a pinpoint
cite to the record. Our rules require that an Appeal Brief include
“arguments” that “shall explain why the examiner erred.” 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant’s assertions, without referring to specific
supporting passages in Smith, is insufficient to explain why the Examiner
reversibly erred.
Appellant lastly argues that claim 28 results in unexpectedly
beneficial properties. Appeal Br. 21. “[A] party asserting unexpected results
as evidence of nonobviousness has the burden of proving that the results are
unexpected.” In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997). In this
case, Appellant’s assertion of unexpected results is unsupported by evidence
(see Appeal Br. 21) and is therefore unpersuasive.
Appellant’s argument with regard to the rejection of claims 29 and
33 based on Smith, Pagendarm, and Duncan argues only that “Duncan does
not cure the deficiencies” of Smith and Pagendarm. Appeal Br. 21. The
rejection of claims 29 and 33 based on Smith, Pagendarm, and Duncan is
accordingly affirmed for the reasons provided with regard to claim 28 supra.
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Rejection Over Pagendarm 777, Pagendarm, & Smith
In rejecting claim 28 over Pagendarm 777, Pagendarm, and Smith, the
Examiner finds that Smith teaches both water-soluble and solvent-soluble
pressure sensitive adhesives as well as the recited first material layer and
second material layer. Final Act. 12–14 (citing various portions of Smith).
The Examiner finds that Pagendarm teaches using a metal belt to partially
heat a water-soluble solvent. Id. at 12–13. The Examiner cites Pagendarm
777 for the remaining recited steps. Id. at 13. The Examiner provides a
rationale in support of the determination of obviousness. Id. at 13–14 (citing
various portions of the references including Pagendarm 777, Pagendarm, and
Smith in support of the rationale).
Appellant’s arguments with regard to the rejection of claim 286 over
Pagendarm 777, Pagendarm, and Smith are similar to those raised for the
rejection of claim 28 over Smith and Pagendarm. Compare Appeal Br. 4,
with Appeal Br. 22. More specifically, Appellant again raises arguments
without addressing the Examiner’s fact findings. For example, Appellant
argues that Pagendarm 777 does not mention water-based adhesives (Appeal
Br. 25) which is unpersuasive because the Examiner’s rejection is based on
Smith’s teaching of such an adhesive. Final Act. 12–13. As noted earlier,
this type of argument is also unpersuasive because it attacks the references
individually rather than addressing the Examiner’s findings based on the
prior art as a whole. See also Appeal Br. 28 (arguing that “Pagendarm ’777

6 Appellant does not separately argue for the rejection of claims 31, 32, and
34–38 over Pagendarm 777 in view of Pagendarm and Smith. See Appeal
Br. 31. We select claim 28 as representative for this rejection. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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and Pagendarm ’564 lack the pressure sensitive label laminates” which does
not address the Examiner’s fact findings).
Similar to the rejection over Smith and Pagendarm, for the rejection of
claim 28 over Pagendarm 777, Pagendarm, and Smith, Appellant does not
address the Examiner’s rationale that a skilled artisan would have combined
the references for the “release properties” taught in Smith and certain
decorative effects. Compare Final Act. 14, with Appeal Br. 22–30. Appellant
also does not identify error in the Examiner’s rationale that the combined
teachings would have resulted in a more compact apparatus to carry out the
recited process with a lower cost. See Appeal Br. 26. Appellant instead
argues that the stated advantages of compactness in Pagendarm “is not a
claimed feature of the present application” and therefore “cannot be a
motivation” to combine. Id. As noted earlier, “any need or problem known
in the field of endeavor at the time of invention and addressed by the patent
can provide a reason for combining the elements in the manner claimed.”
KSR, 550 U.S. at 419–420. Appellant’s argument that claim 28 does not
require certain features of Pagendarm 777 and Pagendarm (Appeal Br. 27) is
not persuasive because it likewise does not address the Examiner’s rationale.
In any event, claim 28 is an open-ended claim and does not exclude these
features.
Appellant’s other arguments here are unpersuasive for similar reasons
as provided with regard to the rejection of claim 28 over Smith and
Pagendarm. For example, Appellant’s argument regarding the different
temperatures used in Smith and Pagendarm (Appeal Br. 24) has been
addressed supra as unpersuasive. As another example, Appellant argues that
Pagendarm 777 does not mention pressure sensitive label laminates (Appeal
Br. 22) and water-based adhesives (id. at 25) which is not persuasive
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because the Examiner cites Smith for these teachings. Final Act. 12. Such
arguments are unpersuasive also because it attacks the references
individually.
Appellant’s argument that “the belt would only complicate the known
solution in the case of pressure sensitive label laminates” (Appeal Br. 27) is
unpersuasive as “[i]f a person of ordinary skill in the art can implement a
predictable variation [of a known work], § 103 likely bars its patentability.”
KSR, 550 at 417. We further note that these arguments that a skilled artisan
would have considered the Examiner’s proposed combination more complex
(Appeal Br. 27) are not supported by evidence.
Appellant’s argument that Pagendarm 777 is non-analogous art is
unpersuasive (Appeal Br. 22) because it does not apply the two criteria for
determining whether prior art is analogous which are “(1) whether the art is
from the same field of endeavor, regardless of the problem addressed, and
(2) if the reference is not within the field of the inventor’s endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved.” In re Clay, 966 F.2d 656, 658–59 (Fed. Cir.
1992). Appellant’s argument is unpersuasive also because it does not refute
the Examiner’s finding that all references are analogous as they are in the
same field of endeavor of manufacturing labels, tapes, and adhesives.
Compare Appeal Br. 22, with Ans. 52.
Appellant’s unelaborated argument that Pagendarm 777 is silent with
regard to a metal belt does not show that it teaches away from the recited
metal belt because Appellant has not shown that Pagendarm 777 “suggests
that the developments flowing from its disclosures are unlikely to produce
the objective of the applicant’s invention.” Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations omitted).
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We have considered the remaining arguments and found them
unpersuasive for similar reasons including the lack of supporting evidence.
For example, Appellant argues, without evidence, that a skilled artisan
“seeking to improve a method of manufacturing pressure sensitive label
laminates is highly unlikely to select Pagendarm ‘777 as a starting point”
(Appeal Br. 22) and that the Examiner’s proposed combination “would be
too complex for a person of ordinary skilled in the art to aim for” (id. at 25)
is speculative and unpersuasive. “Attorneys’ argument is no substitute for
evidence.” Johnston, 885 F.2d at 1581.
Appellant’s argument with regard to the rejection of claims 29 and 33
based on Pagendarm 777, Pagendarm, Smith, and Duncan argues only that
“Duncan does not cure the deficiencies” of the references cited for
independent claim 28. Appeal Br. 31. The rejection of claims 29 and 33
based on Pagendarm 777, Pagendarm, Smith, and Duncan is accordingly
affirmed for the reasons provided with regard to claim 28 supra.
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
28, 31, 32,
34–38
103(a) Smith, Pagendarm 28, 31, 32,
34–38

29, 33 103(a) Smith, Pagendarm,
Duncan
29, 33
29, 33 103(a) Pagendarm 777,
Pagendarm, Smith,
Duncan
29, 33
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
28, 31, 32,
34–38
103(a) Pagendarm 777,
Pagendarm, Smith
28, 31, 32,
34–38

Overall
Outcome
28, 29, 31–
38

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED