Ex Parte Song et al

Patent Trial and Appeal Board

Nov 26, 2014

12001319 (P.T.A.B. Nov. 26, 2014)

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.
12/001,319 12/11/2007 Jay Chen Song PCP-039039-US 2985
1726 7590 11/26/2014
INTERNATIONAL PAPER COMPANY
6283 TRI-RIDGE BOULEVARD
LOVELAND, OH 45140
EXAMINER
SHAH, SAMIR
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
11/26/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAY CHEN SONG, SEN YANG,
LARRY HOLLMAIER, MICHAEL KOENIG,
YAOLIANG HONG, KRISHNA M. PAMIDIMUKKALA,
MICHAEL RENFRO and BENJAMIN T. LIGUZINSKI
____________________

Appeal 2013-000229
Application 12/001,319
Technology Center 1700
____________________

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

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 13 through 16, 18 through 20, 22, 39, and 40. We
have jurisdiction under 35 U.S.C. § 6(b).

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Application 12/001,319

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The claims are directed to an article comprising a paper web. App.
Br. 1. Claim 13 illustrates the subject matter on appeal and is reproduced
below:

13. An article comprising:

a paper web having first and second surfaces; and

a paper surface size coating on at least one of the first
and second surfaces;

wherein the paper surface size coating provides a paper
surface size loading on each surface on which the paper surface
size coating is present is in an amount from about 0.5 to about 4
gsm;

wherein the paper surface size coating comprises:

an acicular calcium carbonate paper pigment
having an aspect ratio in the range of from about 2 to
about 12 and a low particulate surface area, in terms of a
BET specific surface area, of less than about 20 msg;

a paper starch binder which comprises a natural
starch, modified starch, a cationic starch, an amphoteric
starch, a starch phosphate, a starch ether, a
hydroxyalkylated starch, or a combination thereof; and

a paper co-binder;

wherein the starch binder comprises from about 40
to about 95% by weight of the total combined weight of
the starch binder and the co-binder;

wherein the co-binder comprises from about 5 to
about 60% by weight of the total combined weight of the
starch binder and the co-binder; and
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wherein the pigment to starch binder/co-binder
weight ratio is in the range of from about 0.75 to about 3.

The Examiner relied on the following references1 in rejecting the
appealed subject matter:
Shibazaki US 4,244,933 Jan. 13, 1981
Bleakley US 5,833,747 Nov. 10, 1998
Bobsein US 6,547,929 B2 Apr. 15, 2003
Song US 2005/0260428 Al Nov. 24, 2005

Appellants (see Appeal Brief, generally) request review of the
following rejections from the Examiner’s Final Office Action:
I. Claims 13–16, 18–20, and 22 rejected under 35 U.S.C. § 103(a)
as unpatentable over Bleakley, Shibazaki, and Bobsein.

II. Claims 39 and 40 rejected under 35 U.S.C. § 103(a) as
unpatentable over Bleakley, Shibazaki, Bobsein, and Song.

1 The Examiner acknowledges that U.S. Patent Publication US 20100016478
A1 to Andreas Brockmeyer, Roland Ettl, and Rainer Dyllick-Brenzinger
(Brockmeyer), published January 21, 2010, was erroneously included in the
rejection statements. Ans. 4. Accordingly, the Brockmeyer reference will
not be considered in our review of the appealed rejections.
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OPINION

Prior Art Rejections under 35 U.S.C. § 103(a)2
The dispositive issue on appeal is: Did the Examiner err in
determining that the combined teachings of Bleakley, Shibazaki, and
Bobsein would have led one skilled in the art to an article comprising a
paper web having coating loadings of about 0.5 to about 4 gsm and acicular
calcium carbonate pigments with a specific surface area of less than about
20 msg as required by the subject matter of independent claim 13?
After review of the respective positions provided by Appellants and
the Examiner, we answer in the negative and AFFIRM for the reasons
presented by the Examiner.
The Examiner found Bleakley discloses a paper article coated with
composition comprising precipitated acicular calcium carbonate having an
aspect ratio of at least 3:1, paper starch binder (corn starch adhesive), paper
co-binder (latex), wherein the starch binder and the co-binder are present in
amounts that meet the claimed ranges for these components, and wherein the
pigment to starch binder/co-binder weight ratio is 2.5. Final Act. 2-3;
Bleakley col. 1, ll. 62-65, col. 4, ll. 50-51; Table 2. The Examiner found
Bleakley does not disclose an acicular calcium carbonate having a low
specific surface area or the coating loading on the surface of paper as

2 Appellants present arguments only for independent claim 13. See Appeal
Brief, generally. Dependent claims 14–16, 18–20, and 22 are not separately
argued. Id. at 4 (footnote 21). Accordingly, we limit our discussion to
independent claim 13. Further, in addressing the separate rejection under 35
U.S.C. § 103(a) of dependent claims 39 and 40, Appellants rely on the
arguments presented when discussing independent claim 13. Id. at 16-18.
Accordingly, dependent claims 14–16, 18–20, 22, 39, and 40 stand or fall
together with independent claim 13.
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required by the subject matter of independent claim 13. Final Act. 3. The
Examiner found Shibazaki discloses acicular calcium carbonate pigments
having a specific surface area of 5-15 m2/g or 8-20 m2/g useful as pigments
for paper because of their ability to absorb oil and high rigidity. Final Act.
3; Shibazaki Tables 2 and 4, Abstract; col. 4, ll. 23-24, col. 7, ll. 20-25; col.
9, ll. 17-23. The Examiner found it would have been obvious to one of
ordinary skill in the art to replace the calcium carbonate of Bleakley with
Shibazaki’s calcium carbonate for their highly amenable absorption of oil
and high rigidity. Final Act. 3. With respect to the coating loadings, the
Examiner found Bobsein discloses paper having a coating containing
calcium carbonate at coating weights of 0.01 to 5 g/m2 to provide a light
weight coating composition that improves gloss. Final Act. 3; Bobsein col.
2, ll. 65-67, col. 5, ll. 25-27, 36, and col. 6, ll. 15-17. The Examiner found it
would have been obvious to one of ordinary skill in the art to use the coating
loadings of Bobsein for Bleakley’s coating in view of the benefits disclosed
by Bobsein. Final Act. 3-4.
Appellants argue Bleakley implicitly teaches away from the claimed
lower surface loadings of from about 0.5 to about 4 gsm by disclosing higher
surface loadings of 5 gsm or above for the coatings in Examples 2-5. App.
Br. 5.
We are unpersuaded by this argument and agree with the Examiner’s
reasoning that Bleakley is not limited to paper coating loadings exemplified
in Examples 2-5. Ans. 4-5. Appellants acknowledge the coating loadings of
Bleakley’s Examples 2-5 are preferred embodiments. App. Br. 11. It is well
settled that a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art, including non-
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preferred embodiments. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (“all disclosures of the prior art, including
unpreferred embodiments, must be considered”) (quoting In re Lamberti,
545 F.2d 747, 750 (CCPA 1976)). The disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA
1971). Appellants have not directed us to any section of Bleakley or any
other evidence that would lead one skilled in the art to exclude the use of
paper coating loadings at levels below those exemplified by Bleakley.
Further, the Examiner relied on the disclosure of Bobsein to teach paper
products having the claimed coating loadings. Final Act. 3; Bobsein col. 5,
ll. 25-27. Appellants have not adequately explained why one skilled in the
art would not use the paper coating loadings of Bobsein in the paper product
of Bleakley given that Bobsein is directed to paper coatings using similar
pigments that improve the gloss of paper products. Final Act. 3; Bobsein
col. 2, ll. 65-67, col. 5, ll. 25-27, 36, and col. 6, ll. 15-17.
With respect to the acicular calcium carbonate pigments having a
specific surface area of less than about 20 msg, Appellants argue one skilled
in the art would not use Shibazaki’s acicular calcium carbonate because
Shibazaki does not disclose surface loadings for any coatings. App. Br. 6-7.
Appellants further argue a modification of the Bleakley coated papers based
on the teachings of Shibazaki would impermissibly “‘change the principle of
operation’ of the Bleakley coated paper.” Id. at 7.
We are also unpersuaded by these arguments. The Examiner relied on
Bobsein, not Shibazaki, to meet the claimed limitation for the coating
surface loading. Final Act. 3; Bobsein col. 2, ll. 65-67, col. 5, ll. 25-27, 36,
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col. 6, ll. 15-17. The Examiner relied on Shibazaki to teach acicular calcium
carbonate pigments having the claimed specific surface area. Final Act. 3;
Shibazaki Tables 2 and 4, Abstract; col. 4, ll. 23-24, col. 7, ll. 20-25; col. 9,
ll. 17-23. Appellants do not dispute this finding based on Shibazaki. See
Appeal Brief, generally.
While Appellants allege that lower coating loadings would alter
Bleakley’s principle of operation (id. at 7), Appellants have not provided an
adequate analysis or directed us to evidence in support of this assertion.
“Argument of counsel cannot take the place of evidence lacking in the
record.” Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Further,
Appellants basis for this allegation is the combined teachings of Bleakley
and Shibazaki. App. Br. 7. As noted above, the Examiner relied on Bobsein
to meet the claimed coating loadings. Final Act. 3; Bobsein col. 2, ll. 65-67,
col. 5, ll. 25-27, 36, col. 6, ll. 15-17. Appellants have not shown that using
the lower coating loadings of Bobsein would change the principle of
operation of Blakeley’s paper products.
Moreover, both Bleakley and Bobsein are directed to using pigments
having similar diameters. Bleakley col. 4, ll. 25-33; Bobsein col. 5, ll. 30-
39. Given this similarity in pigment particle diameters, a person of ordinary
skill in the art would have reasonably expected that the coating loadings of
Bobsein would have been suitable for the paper products of Bleakley to
provide the desirable characteristic of improved gloss. Bobsein col. 2, ll.
65–67.
Accordingly, we affirm the Examiner’s prior art rejections of claims
13–16, 18–20, 22, 39, and 40 under 35 U.S.C. § 103(a) for the reasons
presented by the Examiner and given above.
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Application 12/001,319

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ORDER
The Examiner’s prior art rejections of claims 13–16, 18–20, 22, 39,
and 40 under 35 U.S.C. § 103(a) are affirmed.

TIME PERIOD
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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