Ex Parte Salemi et al

Board of Patent Appeals and Interferences

Apr 19, 2010

10659089 (B.P.A.I. Apr. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ANTHONY S. SALEMI,
DANIEL J. MULVEY, and ANTHONY C. PAPPAGEORGE
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Appeal 2009-003779
Application 10/659,089
Technology Center 1700
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Decided:
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Before CHARLES F. WARREN, PETER F. KRATZ, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003779
Application 10/659,089

A. Introduction1
Anthony S. Salemi, Daniel J. Mulvey, and Anthony C. Pappageorge
(“Salemi”) timely appeal under 35 U.S.C. § 134(a) from the final rejection2
of claims 30-51 and 53-55, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to: (a) processes of making
“papers” comprising one or more water resistant layers and antimicrobial
layers (a polyethylene having silver zeolite), laminated to a “sheet” of
unspecified composition (independent claims 30-34, and 44); (b) to a
“paper” (independent claim 35) having a “base” of unspecified composition
to which are laminated one or more water resistant and antimicrobial layers;
and (c) to the use of such a paper (independent claim 51, which recites that
the sheet is made of paper). In certain embodiments (e.g., independent
process claims 33, 34, dependent claim 48; dependent paper claims 37, 38,
40-42), a paper layer is connected to the sheet or base. The various claims
recite various orderings of the recited layers. The papers are indented to
provide a texture that, for example, resists slippage, cushions for cutting, or
prevents liquid pooling. The papers are said to be useful for protecting
objects from biological contamination, e.g., on a wet countertop.

1 Application 10/659,089, Indented Antimicrobial Paper and a Process for
Making and Using the Same, filed 10 September 2003. The specification is
referred to as the “089 Specification,” and is cited as “Spec.” The real party
in interest is listed as MicrobeGuard Corp. (Appeal Brief, filed 17 March
2008 (“Br.”), 1.)
2 Office action mailed 26 October 2007 (“Final Rejection”; cited as “FR”).
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Application 10/659,089

Representative Claim 30 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
30. A process for making a paper, the process comprising the
steps of:
providing a sheet having a first side and a second side
wherein the second side is in a position opposite to the
first side
wherein the sheet is substantially flat and forms a plane;
connecting a water resistant layer to the first side of the sheet;
scoring the water resistant layer;
connecting a first antimicrobial layer to the water resistant
layer
wherein the water resistant layer is located between the
antimicrobial layer and the sheet
wherein the first antimicrobial layer is made from
polyethylene having silver zeolite;
connecting a second antimicrobial layer to the second side of
the sheet wherein
the second antimicrobial layer is made from polyethylene
having silver zeolite; and
providing a plurality of depressions uniformly spaced across
the first side of the sheet.
(Br., Claims App., 1; paragraphing and indentation added.)
The Examiner has maintained the following grounds of rejection:3
A. Claims 30-48 stand rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Santelli,4 Trogolo,5 Nakamura,6 and
Otten.7

3 Examiner’s Answer mailed 4 June 2008. (“Ans.”). All rejections based on
35 U.S.C. §§ 112(1) and (2) have been withdrawn. (Ans. 7.)
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Application 10/659,089

B. Claims 49-51 and 53-55 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Santelli, Trogolo, Nakamura,
Otten, and Weder.8
The Examiner relies on Santelli for teachings of a general paper
laminated to a plastic film having a biocide associated with the laminate; on
Trogolo for teachings of antibiotic linear low density polyethylene films
containing silver zeolite as a coating for various substrates [including
medical articles, paper, etc.] and, essentially cumulatively, on Nakamura
(which describes an antimicrobial polyethylene silver zeolite sheet as a
lining for the inner surface of a bottle cap); and on Otten, for teachings of
grooved or channeled multiple layer absorbent, cut-resistant sheets with an
antibacterial agent cover layer and liquid impervious backing layer. The
Examiner acknowledges that the order of laminating is not described by
Santelli (FR 9; Ans. 9-10), but argues that a number of laminate orders are
specifically described (including paper-plastic, paper-plastic-paper, paper-
plastic-plastic-paper, paper plastic-paper-plastic), and that varying the order

4 Thomas Robert Santelli, Biocide Containing Laminate as Tape or
Packaging Material, U.S. Patent Application Publication
US 2004/0071902 A1, 15 April 2004, based on an application
filed 1 October 2002.
5 Jeffrey A. Trogolo and John E. Barry, Antibiotic Hydrophilic Polymer
Coating, U.S. Patent 6,436,422 B1 (20 August 2002).
6 Kenji Nakamura, Container Assembly Provided With Antibacterial Agent
Against Slow-Leak Bacteria, U.S. Patent 6,179,141 B1 (2001).
7 Geneva Gail Otten et al., Absorbent Sheet Material Having Cut-Resistant
Layer and Method for Making the Same, U.S. Patent 6,274,232 B1 (2001).
8 Donald E. Weder, Method of Using a Floral Wrapper Utilizing a
Breathable Packaging Material, U.S. Patent 5,921,062 (1999).
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Appeal 2009-003779
Application 10/659,089

of layers would have been obvious, absent evidence of new or unexpected
results. (FR 9; Ans. 10.) As for the use of polyethylene containing silver
zeolite as the antimicrobial layer, the Examiner argues that it would have
been obvious to use the layers as taught by Trogolo or Nakamura; and that
indentation or grooves would have been obvious to allow for drainage of
liquids or to facilitate disposal, as taught by Otten (FR 10-11; Ans. 11-12).
Similarly, the Examiner relies on Weder for the disclosure of shredding an
antimicrobial paper (claim 49), for dividing a paper into plural sheets
(claim 50), and for various ways of protecting an object against
contamination by placing the object on the sheet, wrapping, or enclosing the
object by the sheet (claims 51 and 53-55). (FR 12-14; Ans. 12-14.)
Salemi argues that the references do not, individually or in
combination, teach or suggest the subject matter recited in each of the
independent claims. More particularly, with respect to claims 30 and 31,
Salemi argues that none of the references “discloses a plastic-paper-plastic-
plastic laminate.” (Br. 26, ll. 3-4, 14-15; 26, l. 24 to 27, l. 1; 33, ll. 6-7;
Reply9 5, ll. 7-8.) Although each argument for patentability of the
independent claims is presented in a separate paragraph, the arguments
amount to a recitation of the limitations of each claim and a denial that the
limitations are taught or suggested. Similarly, Salemi denies that there
would have been any reason or suggestion to combine the references.
(Br. 31.) In Salemi’s words, even if “all elements perform their ordained
and expected functions,” “[t]he test [for obviousness] is whether the
invention as a whole, in light of the teachings of the references in their

9 Reply Brief, filed 7 August 2008. (“Reply”).
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Appeal 2009-003779
Application 10/659,089

entireties, would have been obvious to one of ordinary skill in the art at the
time the invention was made.” (Br. para. bridging 30-31.) Salemi does not,
however, identify specific findings of the Examiner regarding the references
as error; nor does Salemi explain why specific reasons offered by the
Examiner for combining the references are incorrect or improper. Finally,
Salemi does not, in its Principal Brief on Appeal, argue patentability based
on unexpected results or other “secondary considerations.”
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
As the Appellant, Salemi bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders,
129 S.Ct. 1696, 1706 (2009) (citations omitted) (“Lower court cases make
clear that courts have correlated review of ordinary administrative
proceedings to appellate review of civil cases in this respect. . . . . [T]he
party seeking reversal normally must explain why the erroneous ruling
caused harm.”) See also, In re Chapman, 595 F.3d 1330, 1338 (Fed.
Cir. 2010) (discussing the role of harmless error in appeals from decisions of
the Board of Patent Appeals and Interferences (“Board”)). Arguments not
timely made have been waived. 37 C.F.R. § 41.37(c)(1)(vii) (second
sentence); see also In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (an
argument not first raised in the brief to the Board is waived on appeal).
To rebut a prima facie case of obviousness, it is not enough for an
appellant to simply agree with the Examiner that no single reference teaches
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Application 10/659,089

all the required limitations, and to deny that the combinations of teachings
are inadequate. Such an “argument” amounts to an invitation to the Board to
make findings in the first instance regarding the teachings of the references,
to weigh those findings against the findings of the Examiner, and to decide
all further factual inferences and legal conclusions in favor of the appellant.
We decline to accept such invitations, as our role is review of the arguments
of record, not independent examination of the claimed invention.
In the present case, the Examiner has acknowledged the differences
between the teachings of the individual references and the claimed processes
of making laminated papers, laminated papers, and processes of using the
laminated papers. (FR 8-9.) The Examiner has also offered an explanation
of why connecting the various different layers to one another in different
orders than the orders expressly disclosed by Santelli would have been
obvious. (Id.) While we do not find the caselaw cited by the Examiner to be
directly on point,10 the underlying rationale that undergirds the rejection is
reasonably understandable and persuasive. That is, the prior art of record
indicates that persons having ordinary skill in the art understood the
functions of absorptive paper layers, water resistive layers, and antimicrobial
layers, and the level of ordinary creativity and skill was such that they could
and did vary the order of layers to obtain laminated papers having expected
properties. Thus, the claimed invention involves a highly predictable art and
purposeful, sophisticated artisans. Under such circumstances, the Supreme

10 The processes at issue in Ex parte Rubin, 128 USPQ 440 (BPA 1959) and
in In re Burhans, 154 F.2d 690 (CCPA 1946), appear to lead to identical
products, whereas the products are distinct in Salami’s appealed claims.
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Court explained recently, “a court must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). In the present appeal, however, Salemi has not come forward with
evidence of unexpected results or of other so-called “secondary
considerations” indicative of nonobviousness of providing different orders
of layers known to be used in laminated paper sheets.
As for the combinations of teachings, using a known material for its
known function to perform that same function is a classical instance of
obviousness. Salemi has not come forward with any credible evidence, nor
has Salemi offered any credible argument, explaining why it would not have
been obvious to use the polyethylene films containing silver zeolite
described by Trogolo or Nakamura as layers in the antimicrobial paper
laminates described by Santelli. Nor has Salemi come forward with credible
evidence or argument indicating why providing grooves, as taught by Otten,
or shredding the laminated papers, or wrapping objects with the papers to
protect them from contamination, as taught by Weder, would have been
beyond the level or ordinary skill in the art to apply to other laminated
papers.
We conclude that Salemi has failed to carry its burden of proving
harmful error in the Examiner’s rejections.
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Application 10/659,089

D. Order
We AFFIRM the rejection of claims 30-48 under 35 U.S.C. § 103(a)
in view of the combined teachings of Santelli, Trogolo, Nakamura, and
Otten.
We AFFIRM the rejection of claims 49-51 and 53-55 under
35 U.S.C. § 103(a) in view of the combined teachings of Santelli, Trogolo,
Nakamura, Otten, and Weder.
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

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