Ex Parte Boutilier et al

Board of Patent Appeals and Interferences

Aug 30, 2012

11415728 (B.P.A.I. Aug. 30, 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.
11/415,728 05/02/2006 Glenn David Boutilier 8881MD 7026
27752 7590 08/31/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
ZHAO, XIAO SI
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
08/31/2012 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 GLENN DAVID BOUTILIER, LINDA EVERS-SMITH,
JEFFREY SCOTT LEDFORD, TIMOTHY JUDE LORENZ,
MICHAEL GOMER STELLJES, JR., JOHN WILLIAM TOUSSANT,
PAUL DENNIS TROKHAN, ANDREW JULIAN WNUK,
PAUL ANTHONY ZAFFIRO, and DEAN ARTHUR ZIMMERMAN
__________

Appeal 2011-002862
Application 11/415,728
Technology Center 1700
____________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002862
Application 11/415,728

2
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-6, 8, and 9. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellants’ invention is directed to processes for using patterned
elements suitable for embossing and applying adhesive to a sheet of web
material (Spec. 1: 10-12).
Claim 1 is illustrative:
1. A high speed embossing and adhesive printing
process, said process comprising the steps of:
(a) supplying a first embossing roll whose surface
comprises a material and having a first embossing pattern
disposed thereon, wherein said first embossing roll is engaged
with a second embossing roll, said second embossing roll
having a second embossing pattern disposed thereon, said first
embossing pattern and said second embossing pattern being
complementary, wherein said material of the first embossing
roll comprises a polymer and has a Shore A hardness of greater
than about 70, and has a critical surface energy of less than
about 30 dynes/cm;
(b) applying said adhesive to said first embossing roll;
and
(c) passing a substrate of sheet material between said first
and second embossing rolls to simultaneously emboss said
substrate thereby forming a pattern of valleys and land areas
and apply said adhesive to said substrate, such that said
adhesive forms an adhesive pattern on said valleys between said
land areas.
Appeal 2011-002862
Application 11/415,728

3
Appellants appeal the following rejections:
1. Claims 1-3, 6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McGuire (US 6,193,918 B1 issued Feb. 27, 2001)
in view of Butters (US 5,997,456 issued Dec. 7, 1999).
2. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McGuire in view of Butters and Janes
(US 5,471,291 issued Nov. 28, 1995).

Appellants’ arguments focus on claims 1 and 4 (App. Br. 3-5).

ISSUES
1. Did the Examiner reversibly err in determining the combined
teachings of McGuire and Butters disclose the same roller material as
disclosed by Appellants such that the burden shifted to Appellants to
show that Butters’ materials do not inherently possess the claimed
hardness and surface energy as recited in claim 1? We decide this
issue in the negative.
2. Did the Examiner reversibly err in determining that Janes does not
teach away from using a critical surface energy reducer with a roller
material as required by claim 4? We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
Issue (1)
Appellants do not dispute the Examiner’s reason for combining
Butters’ roller coating material with McGuire’s roller (App. Br. 3-4; Reply
Br. 3). Rather, Appellants argue that the Examiner has not established that
Appeal 2011-002862
Application 11/415,728

4
Butters’ roller material inherently possesses the claimed hardness and
critical surface energy (App. Br. 3-4; Reply Br. 3).
The Examiner finds that Butters teaches the same material for the
roller coating as disclosed by Appellants such that Butters’ material would
have reasonably been expected to have the same Shore A hardness of greater
than about 70 (Ans. 4-5).
Having fully considered Appellants’ argument and the Examiner’s
findings, we find that the preponderance of the evidence favors the
Examiner’s conclusion of obviousness. Appellants’ argument fails to
recognize that once the Examiner finds prior art teaching an embossing roll
coating material that is identical to the embossing roll materials claimed and
disclosed by Appellants, the burden shifts to Appellants to establish that the
prior art roll material does not have the same properties as Appellants’
claimed material. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellants’ mere argument that the Examiner has not established inherency
does not satisfy the burden.
While Appellants argue that not all silicone-epoxy compounds will
have the property (Reply Br. 3), this argument does not address the
Examiner’s finding that Butters’ composition possesses the claimed
hardness property.
For these reasons and on this record, we affirm the Examiner’s § 103
rejection over McGuire in view of Butters.

Appeal 2011-002862
Application 11/415,728

5
Issue (2)
Appellants argue that Janes teaches away from the combination of
silicone material and a surface energy reducer in an application where
abrasion resistance is desired (App. Br. 4).
The Examiner finds that Janes teaches using low surface energy
resins, such as fluorocarbon, and mineral oil as surface energy reducing
material (Ans. 6, 8).
Appellants contend that Janes’ teaching to use a fluorocarbon alone as
the surface energy reducer teaches away from combining the fluorocarbon
with another material such as silicone (Reply Br. 4).
The preponderance of the evidence favors the Examiner’s conclusion
of obviousness. While Janes does not teach that silicone with mineral oil
reduces the physical properties of the coating, we note that Janes teaches that
the film roll may be made of silicone, with a preference for fluorocarbon
(Janes, col. 4, ll. 50-57). We understand Janes as teaching one skilled in the
art that there is preference for using fluorocarbon as low surface energy
resins, but that other resins, such as silicone, may be used with mineral oil or
other surface energy reducing material where the physical properties of such
other resin materials are appropriate. Janes’ preference for fluorocarbon
material alone does not constitute a teaching away from the combination
with other materials, such as silicone with a surface energy reducer, where
the properties of silicone with a surface energy reducer are appropriate. In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use.”).
Appeal 2011-002862
Application 11/415,728

6
Based on this record, we affirm the Examiner’s § 103 rejection over
McGuire in view of Butters and Janes.

DECISION
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.

ORDER
AFFIRMED

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