Ex Parte Steif

Board of Patent Appeals and Interferences

Jan 26, 2012

10856416 (B.P.A.I. Jan. 26, 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.
10/856,416 05/27/2004 Robert Steif 7542.222US01 2327
7590 01/27/2012
Merchant & Gould P.C.
P.O. Box 2903
Minneapolis, MN 55402-0903
EXAMINER
CORDRAY, DENNIS R
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
01/27/2012 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 ROBERT STEIF
__________

Appeal 2010-011713
Application 10/856,416
Technology Center 1700
____________

Before CATHERINE Q. TIMM, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011713
Application 10/856,416

2
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1-32 and 50-57. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We REVERSE.
Appellant’s invention is directed to a flame retardant single ply paper
product having a machine-glazed surface such that the paper has a
differential smoothness (Spec. 2: 2-10). Differential smoothness occurs
when one side of the paper has a smoothness different from the other side to
a degree sufficient so as to impart different characteristics to each side (id. at
2: 23-25).
Claim 1 is illustrative (emphasis added):
1. A single-ply paper product comprising:
a machine-glazed paper substrate comprising a web of
fibers and a sufficient amount of a flame retardant composition
to provide the paper substrate with a flame resistance allowing a
char length of less than 4.5 inches according to TAPPI T461;
the paper substrate comprising a first surface and a
second surface and having a differential smoothness between
the first surface and the second surface of at least about 70 SSU
according to TAPPI T538, wherein the differential smoothness
results from application of the paper substrate to a machine to
impart machine-glazed properties to the first surface so that the
first surface has a smoothness greater than 100 SSU according
to TAPPI T538 and is smoother than the second surface, and
wherein the flame retardant composition is applied to the
second surface and not to the first surface after application of
the paper substrate to the machine to impart machine-glazed
properties.
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Application 10/856,416

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Appellants appeal the following rejections:
1. Claims 1, 2, 8-12, 14-17, 23-27, 29-32, and 50-57 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Altman
(US 2004/0123966 A1 published July 1, 2004) in view of DiPietro
(US 3,650,820 issued Mar. 21, 1972) or Ko (US 4,746,403 issued
May 24, 1988) and further in view of Radwanski (US 6,153,544
issued Nov. 28, 2000) and Rush (US 3,288,632 issued Nov. 29, 1966)
as evidenced by Fillion (WO 03/078731 A2 published Sept. 25,
2003).
2. Claims 3, 4, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Altman in view of DiPietro or Ko and further in
view of Radwanski, Rush, and Clark (US 2,349,704 issued May 23,
1944).
3. Claims 5-7, and 20-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Altman in view of DiPietro or Ko and further in
view of Radwanski, Rush, and Ochi (US 2003/0051840 A1 published
Mar. 20, 2003).
4. Claims 12 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Altman in view of DiPietro or Ko and further in
view of Radwanski, Rush, and Herndon (US 5,151,225 issued Sept.
29, 1992).
5. Claims 13 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Altman in view of DiPietro or Ko and further in
view of Radwanski, Rush, and Robinson (US 4,212,675 issued July
15, 1980).

Appeal 2010-011713
Application 10/856,416

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REJECTION (1)
ISSUE
Did the Examiner reversibly err in finding Altman teaches the claimed
differential smoothness between a first surface and a second surface of at
least about 70 SSU according to TAPPI T538? We decide this issue in the
affirmative.

FINDINGS OF FACT AND ANALYSES
Appellant argues that Altman does not teach a paper substrate having
differential smoothness according to the claimed invention (App. Br. 12).
Appellant argues that Altman’s Table 1 data relied upon by the Examiner for
establishing that the claimed differential smoothness is taught by Altman
merely teaches the smoothness of one side of Altman’s basestock (id. at 13).
Appellant contends that Altman does not disclose the smoothness on the
other side of the basestock and Altman provides no indication of differential
smoothness or the desirability of providing a differential smoothness to the
basestock (id.). Appellant argues that one of ordinary skill would not have
known whether Altman’s paper exhibits a differential smoothness or even a
differential smoothness of at least about 70 Sheffield smoothness units
(SSU) as required by the claims (id. at 14).
The Examiner finds that Altman does not disclose that the paper has a
different smoothness on each side and shows no preference for treating one
side over the other (Ans. 13). The Examiner finds that one of ordinary skill
in the art would not have expected a significant difference in smoothness
between the two sides of the untreated paper and would have expected to
achieve the claimed smoothness differential in papers treated on only one
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Application 10/856,416

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side (id.). The Examiner contends that Appellant’s argument that the paper
has a different smoothness on each side is merely unsubstantiated attorney
argument (id.).
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).
The Examiner and Appellant agree that Altman only explicitly teaches
the change in smoothness (Delta in Altman’s Table 1) on a single side of the
paper. To overcome this deficiency, the Examiner solely bases the finding
that there would not have been a significant difference in smoothness
between the untreated first and second sides of the paper on Altman’s
silence regarding the roughness of the second side of the paper and Altman’s
lack of preference on which side of the paper is treated. The Examiner has
not provided any technical reasoning or objective evidence to satisfy the
initial burden of showing that Altman’s single-side treated paper inherently
has a differential smoothness between the first [treated] and second
[untreated] sides of the paper of at least about 70 SSU. Nor has the
Examiner come forward with evidence and argument explaining why such
papers would have been obvious. See In re Newell, 891 F.2d 899, 901 (Fed.
Cir. 1989) (“That which may be inherent is not necessarily known.
Obviousness cannot be predicated on what is unknown.”) (citing In re
Spormann, 363 F.2d 444, 448 (CCPA 1966)).
Because the Examiner’s rejection is based upon the unsupported and
speculative findings that Altman’s untreated paper has substantially the same
roughness on each side and the smoothing treatment only affects one side of
the paper, a prima facie case of obviousness with regard to the claimed
subject matter has not been established. The Examiner does not rely on any
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of the secondary references to cure this deficiency of Altman. Because the
Examiner failed to establish a prima facie case, the burden of proof was not
shifted to Appellant.
On this record and for the above reasons, we reverse all of the
Examiner’s § 103 rejections.

DECISION
The Examiner’s decision is reversed.

ORDER
REVERSED

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