Ex Parte Trouve

Patent Trial and Appeal Board

Oct 21, 2016

13850859 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/850,859 03/26/2013
84331 7590 10/25/2016
MMWVIP,LLC
10 N JEFFERSON ST
SUITE 100
FREDERICK, MD 21701
FIRST NAMED INVENTOR
Claude TROUVE
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.
T9110-20031US01 1736
EXAMINER
ENGLISH, PATRICK NOLAND
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
10/25/2016 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):
docketing@mmwvlaw.com
cgmoore@mmwvlaw.com
dwoodward@mmwvlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLAUDE TROUVE
Appeal2015-003706
Application 13/850,859
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 13-27 of Application 13/850,859.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
BACKGROUND
The subject matter on appeal relates to a process for surface
treatmentof paper comprising the step of contacting the paper with an
1 Appellant identifies the real part in interest as Archroma Management
LLC. Br. 1.
Appeal2015-003706
Application 13/850,859
aqueous insolubilizer composition comprising glyoxal and at least one alkali
metal orthophosphate. Br. 7.
Representative claim 13 is reproduced below from the Claims
Appendix of the Appeal Brief:
13. A process for the surface treatment of paper or cardboard,
comprising the step of contacting the paper or cardboard with an
aqueous insolubilizer composition, wherein the aqueous
insolubilizer composition comprises glyoxal and at least one alkali
metal orthophosphate and wherein the pH of the aqueous
insolubilizer composition is below 7.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Jacobs et al.
("Jacobs")
Trouve
Akao
Funato et al.
("Funato")
us 3,615,185
us 5,395,440
us 5,401,562
US 2005/0191449 Al
THE REJECTIONS
Oct. 26, 1971
Mar. 7, 1995
Mar. 28, 1995
Sept. 1, 2005
1. Claims 13-20, 22-24, 26, and 27 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Trouve, Akao,
and Funato.
2. Claims 15-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Trouve, Akao, and Funato.
3. Claims 21and25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Trouve, Akao, Funato, and
Jacobs.
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Appeal2015-003706
Application 13/850,859
DISCUSSION
Trouve describes an aqueous composition for surface treatment of
paper and cardboard, in particular for offset printing, that provides improved
abrasion resistance without reducing whiteness. Trouve Abstract, 1 :37--42.
The Examiner finds that Trouve discloses every limitation of claims 13 and
14, the only independent claims, except for the presence of an alkali metal
orthophosphate. Ans. 2-3. Akao discloses additives blended into a paper
support for photosensitive materials "in order to prevent the occurrence of
static marks on photosensitive materials" (Akao 14:26-27), and includes
salts of sodium phosphate and potassium borate among a list of
"[p ]articularly preferable conductive inorganic compounds" for blending
into the paper. Id. at 14:4 7--48. Based on this disclosure, the Examiner
finds that Akao teaches "alkali metal phosphate salts, like sodium phosphate,
and borate salts are functionally equivalent: both are classes of inorganic
compounds that provide antistatic properties to paper when employed during
its manufacture." Ans. 12. The Examiner therefore determines that
substitution of the borate salt of Trouve with sodium phosphate would have
been obvious to a person of ordinary skill in the art because Akao recognizes
their equivalence in providing antistatic properties. Ans. 12.
The Examiner relies on Funato as evidence that it was known in the
art of offset printing that it was advantageous for paper to have antistatic
properties. Ans. 11; Funato i-f 40. Funato further discloses compositions for
the surface treatment of offset printing media that provide antistatic
properties. The Examiner reasons that because it was known that antistatic
compounds are advantageous in paper coating compositions (based on
Funato ), and sodium orthophosphate was a recognized equivalent to borate
salts in providing antistatic properties (based on Akao ), a person of ordinary
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Appeal2015-003706
Application 13/850,859
skill in the art would have had a reasonable expectation of success in
replacing alkali borate with sodium orthophosphate in Trouve's
composition, in order to achieve the benefit of antistatic properties. Ans. 17.
Appellant argues that the rejection of claims 13 and 14 does not
establish a prima facie case of obviousness because the Examiner used
hindsight to modify Trouve by substituting a compound from Akao, and
further that a person of ordinary skill in the art combining Trouve and Akao
would not have looked further to Funato because "Akao relates to a
completely different technique and to a completely different chemistry." Br.
12-13.
Appellant's argument is persuasive of reversible error. The Examiner
has the initial duty of supplying the requisite factual basis for obviousness
and may not "resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in [the] factual basis." In re Warner,
379 F.2d 1011, 1016-17 (CCPA 1967). Here, the Examiner has not
explained why a person of ordinary skill looking to provide antistatic
properties to Trouve' s printing media based upon Funato' s teaching that
such properties are desirable would have chosen to use Akao's antistatic
formulation, rather than the antistatic formulation described in Funato. In
the absence of such an explanation, we determine that the rejection was
based on impermissible hindsight.
Accordingly, we conclude that the Examiner has not established a
prima facie case of obviousness with respect to claims 13 and 14. Because
we find reversible error based on hindsight, we need not reach Appellant's
additional arguments for reversal. Further, we need not address the
dependent claims subject to the additional obviousness rejections, which do
not overcome the deficiency discussed above.
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Appeal2015-003706
Application 13/850,859
SUMMARY
We reverse the rejection of claims 13-27 as unpatentable under 35
U.S.C. § 103(a).
REVERSED
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