Ex Parte Bacon et al

Board of Patent Appeals and Interferences

Jun 12, 2012

11459079 (B.P.A.I. Jun. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HARRIS J. BACON and MATTHEW MEISTER
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Appeal 2011-000780
Application 11/459,079
Technology Center 1700
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Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and LINDA M.
GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-000780
Application 11/459,079

2
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 8 and 10-22 under 35 U.S.C. §103(a) as unpatentable over
Ferguson (US 5,895,556, issued Apr. 20, 1999) in view of ISRI (Scrap
Specifications Circular 2003:Paper Stock (Inst. of Scrap Recycling Indus., Inc.
2003)) and Smook (Gary A. Smook, Handbook for Pulp and Paper Technologists
209-214, 228-229, 266, and 273-275 (Angus Wilde Pubs. 2d ed. 1992)), and as
evidenced by Ishibashi (US 5,880,077, issued Mar. 9, 1999). 2, 3 We have
jurisdiction under 35 U.S.C. § 6(b).
Appellants’ arguments are directed to limitations common to independent
claims 8 and 16. (See App. Br. 8-10.) The remaining dependent claims, i.e.,
claims 10-15 and 17-22, stand or fall with claims 8 and 16. (See Ans. 11.) For
reference, claim 8 is reproduced below from the Claims Appendix to the Appeal
Brief:
8. A process for making a recycled paper product for conversion into
redemption tickets usable in automated ticket dispensers and counters employing
sensor systems operating in the near-infrared (NIR) range of about 700-1100 nm
wavelength, comprising the steps of:

(a) repulping a mixture of printed recycled papers including printed solid
bleached sulfate plate stock, printed manifold white ledger, and printed

1 Final Office Action mailed Feb. 4, 2010 (“Final”).
2 The Examiner has withdrawn the final rejection of claims 8 and 10-22 under 35
U.S.C. § 112, first paragraph. (Examiner’s Answer mailed Aug. 25, 2010
(“Ans.”), 3.)
3 Appeal Brief filed Jun. 17, 2010 (“App. Br.”), 6-7. Appellants have not listed the
separate rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Ferguson, ISRI, and Smook, as applied to claim 8, and further in view of Hubbe
(US 5,958,180, issued Sep. 28, 1999) (see Ans. 10-11) in the Grounds of
Rejection to be Reviewed on Appeal (see App. Br. 6-7).
Appeal 2011-000780
Application 11/459,079

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groundwood paper, to produce a pulp, the printed recycled papers being printed
with inks that contain infrared-absorbing components, wherein the printed recycled
papers printed with the inks that contain the infrared-absorbing components are
included in the pulp in proportions effective to impart to the recycled paper product
a predetermined level of opacity in the NIR range;

(b) adding starch to the pulp;

(c) hydrating and softening the fibers of the pulp under elevated temperature
conditions;

(d) forming a wet web out of the pulp from step (c);

(e) dewatering and pressing the wet web in a press section;

(f) drying the web on a series of heated drying cylinders; and

(g) soft-nip calendering the dried web;

wherein the process is carried out such that the infrared-absorbing
components of the inks remain in the dried web so as to impart to the recycled
paper product the predetermined level of opacity in the NIR range.

The issue in this appeal is: did the Examiner reversibly err in determining
the applied prior art teaches or suggests a process for making “a recycled paper
product” (claim 8) or “a white ticket stock” (claim 16) “wherein the process is
carried out such that the infrared-absorbing components of the inks remain in the
dried web so as to impart to the [paper product or stock] the predetermined level of
opacity in the NIR range” (claims 8 and 16)?
We answer this question in the negative, and AFFIRM for the reasons
expressed in the Answer (see Ans. 3-17).
Appellants do not dispute the Examiner’s findings that the combined
teachings of Ferguson, ISRI and Smook disclose or suggest a process comprising
steps (a)-(g) as recited in claims 8 and 16. (See App. Br. 9; Ans. 12-13 (“The
Appeal 2011-000780
Application 11/459,079

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combination of FERGUSSON with ISRI (and SMOOK) has not been argued by
the appellant”).) In this regard, we further note Appellants have not raised any
arguments regarding the Examiner’s proposed motivation for modifying
Ferguson’s process based on the teachings of ISRI and Smook. (See generally,
App. Br. 10.) Appellants do not dispute the Examiner’s findings that (1) Ferguson
“attempts to retain high levels of ink on the recycled paper” (Ans. 8), (2) Ishibashi
provides evidence that “recycled paper with a higher residual ink content has a
higher ERIC (Effective residual ink concentration) number and higher Near-
infrared (NIR) absorption” (Ans. 11-12), and (3) “a paper with higher absorbency
will be more opaque” (Ans. 12). (See generally, App. Br. 8-10; cf. Rep. Br.4 3
(“The Ferguson/Isri/Smook process produces a recycled paper with some
arbitrary and uncontrolled infrared opacity.”).)
Appellants argue “the Ferguson/Isri/Smook process does not include each
and every claim limitation, because it lacks the key aspect of including printed
recycled papers in proportions effective to impart to the recycled paper product a
predetermined level of opacity in the NIR range.” (Rep. Br. 3.) However,
Appellants have not directed us to, nor do we find, any description in the
Specification as to the scope of the term “predetermined level.” (Cf. Rep. Br. 1-2
(“‘[P]redetermined’ must be understood in the context of the present application as
meaning that the level of infrared opacity is controlled to be a particular (target)
level, through inclusion of appropriate proportions of printed recycled papers in the
pulp.”); Ans. 13 (“The term ‘predetermined level of opacity in the NIR range’ is
not linked in the claim to any specific opacity level.”).) As such, it was reasonable
for the Examiner to find that the proposed combination would result in a process in
which “the infrared-absorbing components of the inks remain in the dried web so

4 Reply Brief filed Oct. 6, 2010.
Appeal 2011-000780
Application 11/459,079

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as to impart to the [paper product or stock] the predetermined level of opacity in
the NIR range” as recited in claims 8 and 16. (See generally, App. Br. 7-8 and
Ans. 135; cf. Ans. 14 (“[A]ppellant [has not] argued or presented any evidence that
the teachings/facts of ISHIBASHI and knowledge of the person of ordinary skill is
erroneous.”).)
Where the Examiner establishes a reasonable assertion of inherency and
thereby evinces that a claimed process appears to be identical to a process
disclosed by the prior art and/or that the products claimed by the applicant and
disclosed in the prior art appear to be the same, the burden is properly shifted to the
Appellants to show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977).
Appellants have not provided persuasive evidence that the Examiner’s
proposed combination of Ferguson, ISRI and Smook would not have resulted in a
process for making “a recycled paper product” (claim 8) or “a white ticket stock”
(claim 16) “wherein the process is carried out such that the infrared-absorbing
components of the inks remain in the dried web so as to impart to the [paper
product or stock] the predetermined level of opacity in the NIR range” (claims 8
and 16). See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (noting that
argument by counsel cannot take the place of evidence). Absent such evidence, we

5 (“[I]f substantially the same process is performed on substantially the same
starting materials th[en] substantially the same results will be the result. . . . The
person of ordinary skill in the art would expect that maintaining inks within the
pulp as disclosed by FERGUSSON that a predetermined level of at least ‘some’
additional near-IR absorbency would be achieved as compared [to] recycled pulp
with ink removed. A predetermined level of opacity higher than the same pulp or
paper without ink would also be determined by the artisan of ordinary skill.”)

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Application 11/459,079

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are not convinced of error on the part of the Examiner in rejecting claims 8 and 10-
22.
We sustain both grounds of rejection under 35 U.S.C. § 103(a) (see supra p.
2 and n.3). The Examiner’s decision to reject claims 8 and 10-22 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)(1).
AFFIRMED

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