Ex Parte Leigraf et al

Board of Patent Appeals and Interferences

Jul 25, 2012

10587617 (B.P.A.I. Jul. 25, 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.
10/587,617 07/27/2006 Reinhard Leigraf VOI0368.US 9960
41863 7590 07/25/2012
TAYLOR IP, P.C.
P.O. Box 560
142. S Main Street
Avilla, IN 46710
EXAMINER
TRAN, BINH X
ART UNIT PAPER NUMBER
1713
MAIL DATE DELIVERY MODE
07/25/2012 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 REINHARD LEIGRAF, SUSANNE BERGER
and BERND GUELDENBERG
____________

Appeal 2011-005750
Application 10/587,617
Technology Center 1700
____________

Before TERRY J. OWENS, JEFFREY T. SMITH and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005750
Application 10/587,617

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 26 through 30, 32 through 38 and 52. We have jurisdiction under
35 U.S.C. § 6.
Appellants’ claimed invention relates to a method for the production
of a wood-free coated, matt or semi-matt paper web. App. Br. 7. Claim 26
is illustrative:
26. A method for the production of a wood-free coated, matt
or semi-matt paper web, comprising the steps of:
precalendering the paper web using at least one apparatus
for precalendering;
coating at least one side of the paper web by using at
least one apparatus for applying one of a liquid and pasty
application medium; and
drying the paper web using at least one apparatus for
drying the paper web, the method thereby creating the wood-
free coated paper web with a roughness level expressed in µm
PPS (Parker Print Surf) and a gloss value expressed in %
TAPPI 75° (Specular Gloss of Paper and Paperboard at 75°),
said roughness level and said gloss value in combination having
values that lie within a triangularly shaped region defined by a
first point, a second point, and a third point, said first point
being 0.8 µm roughness level and 3% gloss value, said second
point being 0.8 µm roughness level and 35% gloss value, said
third point being 3.9 µm roughness level and 3% gloss value.
The Examiner relied on the following references in rejecting the
appealed subject matter:

Johnson US 2002/0117277 A1 August 29, 2002
Bobsein US 2003/0178165 A1 September 25, 2003
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Application 10/587,617

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Korhonen WO 02/103109 A1 December 27, 2002

Appellants request review of the following rejections (App. Br. 9)
from the Examiner’s final office action:
1. Claims 26-29, 32-34 and 37 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Korhonen and Bobsein.
2. Claims 30, 35, 36, 38 and 52 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Korhonen, Bobsein and Johnson.

OPINION
The prior art rejections
The dispositive issue for all the rejections on appeal is: Did the
Examiner err in determining that the combination of Korhonen and Bobsein
would have led one skilled in the art to a method for the production of a
wood-free coated, matt or semi-matt paper web having the roughness level
and gloss value relationship as required by the subject matter of independent
claims 26 and 52? 1, 2
After thorough review of the respective positions provided by
Appellants and the Examiner, we REVERSE for the reasons presented by
the Appellants and add the following.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot

1 We will limit our discussion to independent claim 26.
2 A discussion of the Johnson reference applied to the rejection of
independent claim 52 is unnecessary for disposition of the present appeal.
The Examiner relied upon this reference to describe features of claims 30,
35, 36, 38 and 52 not related to the dispositive issue.
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Application 10/587,617

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be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” 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 found that Korhonen discloses a method for the
production of a wood-free coated, matt or semi-matt paper web similar to
Appellants’, including making paper webs with roughness levels within
Appellants’ claimed range of roughness levels. Ans. 3-4. The Examiner
also found that Korhonen does not disclose the roughness level and gloss
value combination relationship as required by the subject matter of
independent claim 26. Id. at 4. The Examiner additionally found that
Bobsein discloses paper webs having gloss values within Appellants’
claimed range of gloss values. Id. The Examiner concluded that it would
have been obvious to a skilled artisan to obtain the optimum gloss value for
a paper web through routine experimentation based on the combined
teachings of Korhonen and Bobsein. Id. at 4-5.
We agree with the Appellants that the Examiner failed to establish a
prima facie case of obviousness. App. Br. 12. As correctly argued by
Appellants (id. at 11-12), the Examiner has not adequately explained how
one skilled in the art would have combined the respective teachings of
Korhonen’s roughness levels and Bobsein’s gloss values to arrive to the
roughness level and gloss value relationship required by the subject matter
of independent claim 26. The Examiner has not established that the methods
of Korhonen and Bobsein are the same or similar to the claimed method.
Moreover, the Examiner has not established that the gloss values and
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roughness levels of Bobsein always fall within the scope of the claimed
invention.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing a prima facie case of obviousness
under 35 U.S.C. § 103(a). The Examiner additionally relied on Johnson in a
separate rejection to meet respective limitations of dependent claims 30, 35,
36, 38 and independent claim 52. Johnson does not overcome the
deficiencies of Korhonen and Bobsein discussed above. Accordingly, we
reverse this rejection as well for the reasons given above.

ORDER
The rejection of claims 26-29, 32-34 and 37 under 35 U.S.C. § 103(a)
as unpatentable over Korhonen and Bobsein is reversed.
The rejection of claims 30, 35, 36, 38 and 52 under 35 U.S.C. § 103(a)
as unpatentable over Korhonen, Bobsein and Johnson is reversed.

REVERSED
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