Ex Parte Singh

Patent Trial and Appeal Board

Mar 26, 2018

13554166 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/554, 166 07/20/2012
1726 7590 03/28/2018
INTERNATIONAL PAPER COMPANY
6400 Poplar A venue, Tower IV - 9th Floor
Legal Department: Intellectual Property
Memphis, TN 38197
FIRST NAMED INVENTOR
KAPIL M. SINGH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CSP-051626-US 5320
EXAMINER
CHOI, PETER Y
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
patents@ipaper.com
cynthia.bowling@ipaper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAPIL M. SINGH
Appeal2017-004274
Application 13/554, 166
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision rejecting claims 1, 3-5, 7-9, and 19-26. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
1 Our decision refers to the Specification (Spec.) filed July 20, 2012, the
Examiner's Final Office Action dated March 24, 2016, Appellant's Appeal
Brief (Appeal Br.) filed June 23, 2016, Appellant's Response to Notification
of Non-Compliant Appeal Brief (Response) filed August 31, 2016, the
Examiner's Answer (Ans.) dated November 23, 2016, and Appellant's
Reply Brief (Reply Br.) filed January 13, 2017.
2 According to Appellant, the real party in interest is the International Paper
Company. Appeal Br. 1.
Appeal2017-004274
Application 13/554, 166
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to thermally expandable crimped hollow fibers
for use in enhancing the bulk of lightweight papers and to paper substrates
including these fibers (Spec. i-f 1 ). Appellant discloses that, because the
amount of cellulose fibers, which tend to be expensive, determines the
density of paper, reducing the density of paper reduces its production cost
(id. i-f 2). Appellant further discloses one example of reducing density in a
paper substrate includes the use of thermally expandable microspheres to
replace a portion of the cellulose fibers (id. i-f 3). However, according to
Appellant, these microspheres have low retention in the paper substrate
during production of lightweight papers (id. i-f 4). On the other hand, when
using hollow fibers of the invention, these fibers become mechanically
entangled with the cellulose fibers thereby reducing or eliminating the
possibility of the hollow fibers escaping the paper substrate (id. i-f 6).
Claim 1, reproduced below from the corrected Claims Appendix of
the Appellant's Response to Notification of Non-Compliant Appeal Brief, is
illustrative of the subject matter on appeal. The limitation at issue is
italicized.
1. A thermally expandable crimped hollow fiber for enhancing the
bulk of a paper substrate comprising:
a plurality of thermally expandable portions each portion
containing therein at least one expandable substance; and
a plurality of crimped portions, wherein one of the
plurality of a crimped portions is positioned on opposing sides
of each of said thermally expandable portion to retain said
expandable substance within said thermally expandable portion,
and to interconnect adjacent thermally expandable portions;
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wherein said crimped portions comprise from about 5 0%
to about 7 5% of the length of the hollow fiber, and wherein said
thermally expandable portions comprise from about 50% to
about 25% of the length of the hollow fiber.
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
1. Claims 1, 3-5, 7-9, and 19-26 as unpatentable over Soane; 3
2. Claims 1, 3-5, 7-9, and 19-26 as unpatentable over Soane in
view of Tanaka; 4
3. Claims 19-26 as unpatentable over Soane in view of Swoboda; 5
and
4. Claims 19-26 as unpatentable over Soane in view of Tanaka
and Swoboda.
ANALYSIS
Rejection 1: Obviousness based on Soane
Appellant argues independent claim 1 and dependent claim 21
separately, but does not argue claims 3-5, 7-9, 19, 20, and 22-26 separately.
Accordingly, claims 3-5, 7-9, 19, 20, and 22-26 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
The Examiner finds, without dispute, Soane discloses a thermally
expandable crimped hollow fiber having a plurality of thermally expandable
3 US 2001/0014394 Al, published August 16, 2001.
4 US 6,455,156 B2, issued September 24, 2002.
5 US 6,919,111 B2, issued July 19, 2005.
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portions each containing an expandable substance and a plurality of crimped
portions, each crimped portion being positioned on opposite sides of an
expandable portion to retain the expandable substance within the expandable
portion and to interconnect adjacent expandable portions (Ans. 2-3, 9-10).
The Examiner further finds Soane discloses that these hollow fibers may be
mixed with matrix materials, including pulp fibers, so as to form, among
other things, paper or cardboard products (id. at 3). The Examiner
acknowledges Soane does not teach the percentages of crimped and
expandable portions recited in claim 1 (id. at 3, 10). 6 However, the
Examiner determines that the ordinary artisan would have reasonably
expected that the amount of expandable portions correlates to the desired
hollowness of the fiber and that crimping at regular intervals can be varied
and adjusted based on the desired hollowness and strength of the fiber (id. at
4 ). Therefore, the Examiner concludes it would have been obvious when
forming Soane' s paper products with these hollow fibers, to adjust the
amount of crimped and expandable portions along the fiber length within the
ranges recited in claim 1 in order to provide the desired hollowness and fiber
strength (id.).
Appellant argues that Soane fails to teach or suggest the recited
percentages of crimped and expandable portions of claim 1, that Soane
teaches away from the recited percentages, and that only through sheer
6 The Examiner also acknowledges that Soane fails to teach that the pulp
fibers include cellulose fibers, but finds that pulp fibers, especially for use in
paper products, are typically cellulose fibers (Ans. 4). Appellant does not
dispute the Examiner's findings or conclusion in this regard, which we,
therefore, accept as fact.
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serendipity or hindsight would the ordinary artisan following Soane' s
disclosure arrive at the recited percentages (Appeal Br. 3-9). Therefore, the
dispositive issue before us on appeal in this case is whether Appellant has
identified reversible error in the Examiner's determination that one of
ordinary skill in the art following Soane's disclosure would have adjusted
the percentages of crimped and expandable portions within the ranges
recited in claim 1 with a reasonable expectation of success. We answer this
question in the negative and, therefore, will sustain the Examiner's
obviousness rejection based on Soane.
Appellant contends that Soane teaches that the crimping should be
minimal and that one of ordinary skill in the art would not have arrived at
crimping 50-75% of the fiber length in view of this teaching (Appeal Br. 5).
Appellant asserts, in particular, that Soane' s teaching that the fiber "be
crimped only enough to seal off the internal propellant cavities from
each other" suggests such minimal crimping (id. at 5---6, quoting Soane i-f
39). As such, Appellant urges that the only way that the ordinary artisan
would arrive at the recited percentages of crimped and expandable portions
of claim 1 is through sheer serendipity or through improper hindsight
(Appeal Br. 7-9).
Appellant's arguments are not persuasive of reversible error.
Although Soane is silent as to the amount of crimped portions and the
amount of expandable portions along the length of the fiber, such silence
strongly suggests that the determination of these amounts was within the
ordinary skill in the art at the time of Soane' s disclosure. "[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation." In
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re Aller, 220 F.2d 454, 456 (CCPA 1955). Only if the "results of optimizing
a variable" are "unexpectedly good" can a patent be obtained for the claimed
range. In re Antonie, 559 F.2d 618, 620 (CCPA 1977); see also In re
Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997). "[D]iscovery of an optimum
value of a result effective variable in a known process is ordinarily within
the skill of the art." In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
Here, the Examiner finds that Soane teaches, in order to achieve
sufficient pressure with the fiber to expand the polymer wall, it may be
advantageous to crimp the fiber at regular intervals so as to create a fiber
having a series of propellant pockets or expandable portions that are sealed
off and independent from one another (Ans. 3, citing Soane i-f 39). In
addition, the Examiner determines that "[i]t is reasonable for one of ordinary
skill [in the art] to expect that the amount of cavities is related to the desired
hollowness of the fiber, and that the crimping at regular intervals can be
adjusted and varied based on the desired amount of cavities and the desired
strength of the fiber" (Ans. 4). The Examiner further finds that the amount
of crimping in Soane is directly related to the amount of expandable
substance trapped within each of the expandable portions (Ans. 10). Indeed,
Soane teaches that the aspect ratio, i.e., the ratio of the void inside the fiber
versus the fiber diameter, is a result whose variables may be optimized to
provide the desired aspect ratio (Soane i-fi-119, 25) and, due to the series of
gaseous interior voids, has a reduced true density (id. i-f 41 ). Therefore, a
preponderance of the evidence supports the Examiner's position that the
amount of crimping is a result-effective variable.
We note that Appellant neither argues nor presents any evidence that
the recited percentages for crimped and expandable portions yield results
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that are unexpectedly good nor otherwise establishes that these recited
percentages are critical.
Moreover, Appellant's argument that Soane teaches or suggests
minimal crimping misinterprets Soane's teaching in paragraph 39,
reproduced below.
In order to achieve sufficient pressure within the
fiber to expand the polymer walls, it may be advantageous
to pinch off the fiber at its ends so that the propellant is
effectively sealed inside the fiber. For this purpose the strand
may be pinched at each end after extrusion from the orifice,
either during or after solvent removal. Alternatively, the
strand may, at regular intervals, be crimped only enough to
seal off the internal propellant cavities from each other, but
not so much as to actually break the fiber. This would have
the effect of producing a fiber that has a series of propellant
pockets sealed off and independent from one another, while
the fiber remains a single, continuous strand.
Soane i-f 39.
In this paragraph, Soane teaches that sealing off opposing ends of the
fiber in order to achieve sufficient pressure within the fiber to expand its
polymer wall (Soane i-f 39, first sentence). One approach to doing so is to
pinch the fiber at each end (id., second sentence). Soane teaches that the
fibers "may be nominally continuous or may be chopped or pinched at
regular intervals to produce fibers of a desired length" (id. i-f 28). Thus,
when Soane pinches the fiber at each end, the fiber is chopped or cut to a
desired length while also sealing the end of the fiber.
Another approach Soane teaches for sealing opposing ends of the fiber
is to crimp the fiber at regular intervals "only enough to seal off the internal
propellant cavities from each other, but not so much to actually break the
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fiber" (id. i-f 39, third sentence). While Appellant contends that this sentence
suggests minimal amount of crimped portions, we disagree. In the context
of paragraph 39, it is clear that crimping only enough to seal off the cavities
from each other without breaking the fiber is intended to distinguish
crimping at regular intervals from pinching the fiber which would actually
chop or break the fiber to a desired length. Soane confirms that this reading
is the intended interpretation by further teaching that the effect of crimping
would be to produce a fiber having a series of propellant pockets sealed off
and independent from one another, while the fiber remains a single,
continuous strand" (id., fourth sentence).
Accordingly, we sustain the Examiner's obviousness rejection of
claim 1 based on Soane.
Claim 21
This claim depends from claim 20 which recites a paper comprising a
web including a plurality of cellulose fibers and a plurality of the hollow
fibers of claim 1, and further requires that the paper have a basis weight
from about 20 to about 200 gsm. The Examiner finds that though Soane
does not teach the basis weight of the disclosed paper product incorporating
hollow fibers, this paper product nonetheless necessarily has a basis weight
and that it was within the level of ordinary skill in the art to determine a
suitable basis weight (Ans. 5). The Examiner, therefore, concludes that it
would have been obvious to form Soane' s paper product and to adjust and
vary its basis weight within the range recited in claim 21 to achieve a
suitable paper product based on the intended application (id. at 5, 14--15).
Appellant argues that the Examiner's finding that determination of a
suitable basis weight was within the level of ordinary skill in the art is
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merely a conclusory statement without any factual support (Appeal Br. 10).
Appellant also contends that because Soane teaches nothing about the basis
weight of its paper products, Soane provides no guidance as to what the
basis weight should be adjusted to, much less adjusted within the recited
range (id.).
Appellant's arguments are not persuasive of reversible error. We first
note that the basis weight of paper is defined to be "[t]he weight, measured
in pounds, of 500 sheets of paper in that paper's basic sheet size."7 Because
the same paper may have different basic sheet sizes depending on the use,
the same paper may have different basis weights depending on the use. 8
Common basis weights of bond papers of up to about 54 lbs. equate to
metric or international paper weights of less than 200 g/m2 (gsm). 9 Thus,
the basis weight as recited in claim 21 includes metric paper weights of
typical bond papers. Although Soane does not discuss the basis weight or
the metric paper weight of the disclosed paper products incorporating the
thermally expandable hollow fibers, there is a reasonable expectation based
on Soane' s broad description that the basis weight would have been within
the level of ordinary skill in the art and that such would have been within the
ranges typically used for paper products. Appellant does not establish that
the range recited in claim 21 of 20-200 gsm is critical or provides any
unexpected result when incorporating the hollow fibers of claim 1 either by
7 https://www.thoughtco.com/basis-weight-in-typography-1078236, last
accessed on March 16, 2018; see also, https://www.merriam-
webster.com/dictionary/basis%20weight, last accessed on March 16, 2018.
8 http://www.oki.com/us/printing/ support/understanding-paper-
weight/index.html, last accessed on March 16, 2018.
9 See footnote 8 above.
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persuasive technical reasoning or evidentiary showing. Given Soane' s
teaching that the hollow fibers have reduced density, the ordinary artisan
would have reasonably expected that adding such fibers to a paper product
would reduce its basis weight and thereby its metric paper weight.
Therefore, a preponderance of the evidence supports the Examiner's position
that it would have been obvious to adjust the basis weight of the paper
product by adjusting the amount of hollow fiber incorporated therein to
achieve a desired metric paper weight within the range recited in claim 21.
Accordingly, we sustain the Examiner's obviousness rejection of
claim 21 based on Soane.
Rejections 2 and 4: Obviousness based on Soane and Tanaka
The Examiner rejects claims 1, 3-5, 7-9, and 19-26 over Soane in
view of Tanaka, and claims 19-26 over Soane in view of Tanaka and
Swoboda. Specifically, the Examiner relies on Tanaka as teaching hollow
fibers whose hollow ratio is 2---65%, more preferably 10---60%, wherein
higher hollow ratios lead to insufficient fiber strengths (Ans. 5---6). It is this
teaching of a hollow ratio that the Examiner relies on for suggesting the
amounts of expandable portions within the range of 50-7 5% as recited in
claim 1 (Ans. 16-18).
Appellant argues that the Examiner's reliance on Tanaka in this
fashion is misplaced because Tanaka's teaching of the fiber's hollow ratio
does not correlate to the recited percentage of crimped and expandable
portions of claim 1 (Appeal Br. 12-13). In particular, Appellant contends
that Tanaka's hollow ratio relates to the cross-sectional area of the fiber
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rather than the percentages of crimped versus expandable portions along the
length of the fiber (id.).
We agree. Although the Examiner finds that the hollowness of
Tanaka's fiber exists along its length, we note that Tanaka's hollow ratio
does not vary along the length of the fiber whereas Soane' s would vary
between crimped and expandable portions. As such, Tanaka's hollow ratio
does not provide any teaching or suggestion that the ordinary artisan would
reasonably expect to follow to arrive at the relative amounts of crimped and
expandable portions of Soane' s fiber. Thus, the Examiner's reliance on
Tanaka is erroneous. Because we have already determined that the ordinary
artisan would have arrived at the recited amounts of crimped and expandable
portions for Soane' s hollow fiber using routine experimentation and
optimization and are therefore sustaining the Examiner's obviousness
rejection of these claims without reliance on Tanaka, we hold here that the
Examiner's reliance on Tanaka is reversible error. Accordingly, we do not
sustain either of Rejections 2 or 4.
Rejection 3: Obviousness over Soane in view of Swoboda
The Examiner's findings, reasoning, and conclusions based on Soane
have been discussed above. Although we sustain the Examiner's
obviousness rejection of claims 19--26 based on Soane alone for the reasons
discussed above, the Examiner alternatively relies on Swoboda, finding
Swoboda teaches the use of expandable microspheres for bulk enhancing
paper products and that the metric paper weights may range from 16.3 to
about 65.1 gsm (Ans. 6-7). In addition, the Examiner finds Swoboda
teaches that the paper weight should be balanced against the lower strength
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and rigidity obtained with lighter weights (id. at 7). The Examiner further
finds Swoboda teaches that typical pulp fibers include cellulose fibers (id.).
As such, the Examiner concludes that it would have been obvious to use
cellulose pulp fibers in Soane' s paper product and to provide that product
with the basis weights taught in Swoboda as such were known and
conventional in the art as being suitable for similar paper products (id.).
Appellant relies on the arguments previously raised with regard to the
rejection of claim 1 over Soane (Appeal Br. 17), which we did not find
persuasive of reversible error as indicated above.
Appellant further argues that the Examiner's statement that the
ordinary artisan would have been motivated by the desire of forming a
conventional paper product to use cellulose fibers and basis weights within
the scope of claim 21 as predictably suitable for similar paper products is
merely conclusory without any factual support (Appeal Br. 18). Appellant
also attempts to distinguish Soane and Swoboda, asserting that Swoboda
teaches use of expandable microspheres, not hollow fibers as taught in
Soane (id. at 19).
These arguments are not persuasive of reversible error. As the
Examiner finds, both Soane and Swoboda teach forming similar paper
products using expandable materials to lighten or bulk-enhance the paper
(Ans. 18-19). The Examiner further notes, and Appellant does not dispute,
that paper products are generally known in the art to comprise cellulose
fibers (id. at 19). We also note that Appellant does not dispute that Swoboda
discloses production of papers with expandable materials having paper
weights within the range recited in claim 21. Indeed, Appellant's argument
that the Examiner's position is merely conclusory fails to address the
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specific findings or reasoning of the Examiner supporting the Examiner's
conclusion of obviousness.
Accordingly, we sustain the Examiner's obviousness rejection based
on Soane and Swoboda.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting, under 35
U.S.C. § 103(a), claims 1, 3-5, 7-9, and 19-26 as unpatentable over Soane
and claims 19-26 as unpatentable over Soane in view of Swoboda is
affirmed.
However, the rejections, under 35 U.S.C. § 103(a), of claims 1, 3-5,
7-9, and 19-26 as unpatentable over Soane in view of Tanaka, and of claims
19-26 as unpatentable over Soane in view of Tanaka and Swoboda are
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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