SOREMARTEC S.A.

Patent Trials and Appeals Board

Jun 2, 2020

2019005074 (P.T.A.B. Jun. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
14/651,797 06/12/2015 Igor ROMANO 3144-118 1541
6449 7590 06/02/2020
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14TH STREET, N.W.
SUITE 800
WASHINGTON, DC 20005
EXAMINER
RODRIGUEZ, MICHAEL P
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
PTO-PAT-Email@rfem.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IGOR ROMANO
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Appeal 2019-005074
Application 14/651,797
Technology Center 1700
____________

Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

1 In this Decision, we refer to the Specification filed June 12, 2015
(“Spec.”); Final Office Action dated May 30, 2018 (“Final Act.”); Advisory
Action dated Oct. 22, 2018 (“Advisory Act.”); Appeal Brief filed Dec. 6,
2018, as corrected Jan. 24, 2019 (“Appeal Br.”); Examiner’s Answer dated
Apr. 30, 2019 (“Ans.”); and Reply Brief filed June 13, 2019 (“Reply Brief”).
Appeal 2019-005074
Application 14/651,797

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Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 3, 5–12, and 20–22.3 We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on May 21, 2020.4
We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to a process for making a sheet for packaging
foodstuff products. Spec. 1:1–6; Abstract. Claim 1 illustrates the subject
matter on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief:
1. A process for making a package of a foodstuff
product comprising the steps of:
- providing a sheet material having a first side and a
second side opposite to one another; and
- providing on said first side a surface structure
having an array of formations in relief such as to determine
on said material a visual and tactile effect of roughness;
wherein said step of providing said array of
formations in relief comprises application on said first side
of a discontinuous coating and/or a coating having a
variable thickness that forms said array of formations in
relief, said coating being constituted of a paint containing
mineral fillers, constituted by quartz and/or mica and/or
silica, and in that it comprises a step in which said sheet

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Soremartec SA as the real party in
interest. Appeal Br. 2.
3 Claims 2, 4, 13, 16, and 18 are cancelled and claims 14, 15, 17, 19, and 23
are withdrawn. Appeal Br. 3.
4 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
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material with said coating applied thereon is subjected to
an operation of thermoforming, so as to undergo plastic
deformation and assume the desired shape of the package
or of a part of the package, or of heat-sealing, so as to close
hermetically the foodstuff product inside it.
Appeal Br. 14 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Milano US 2008/0199570 A1 Aug. 21, 2008
Weiss et al. (“Weiss”) US 2011/0000802 A1 Jan. 6, 2011
Glydon US 2011/0278370 A1 Nov. 17, 2011
Toft et al. (“Toft”) US 2012/0117921 A1 May 17, 2012
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1, 3, 5–8, 10–12, and 20–22 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Weiss in view of Glydon and
Milano (“Rejection 1”). Ans. 3–4.
2. Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Weiss in view of Glydon and Milano as applied to claim
6, and further in view of Toft (“Rejection 2”). Id. at 5.
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OPINION
Rejection 1
The Examiner rejects claims 1, 3, 5–8, 10–12, and 20–22 under
§ 103(a) as obvious over the combination of Weiss, Glydon, and Milano.
Ans. 3–4.
The Examiner determines that the combination of Weiss, Glydon, and
Milano suggests a method satisfying the steps of claim 1 and concludes the
combination would have rendered the claim obvious. Ans. 3–4. Regarding
the “mineral fillers, constituted by quartz and/or mica and/or silica”
recitation of claim 1, the Examiner relies principally on Glydon for teaching
that limitation of the claim. Id. at 3. The Examiner finds that Glydon is
directed to the manufacture of packaging materials for consumable goods
and teaches rotogravure application of coating materials having silica in
order to confer aroma and flavor properties to the packaging to improve
product appeal. Id. at 3–4 (citing Glydon, Abstract, ¶¶ 2, 3, 26,
48,105–107). In particular, paragraph 105 of Glydon teaches an
embodiment wherein “the flavoring agent may be adsorbed onto silicas.”
Based on Glydon’s teachings, the Examiner concludes
[i]t would have been obvious to one of ordinary skill in the
art at the time of the invention to have employed the
method of Weiss in the manufacture of confectionery
product packaging, with the inclusion of silica in the
coating material, in order to obtain packaged consumer
goods with improved product appeal, as taught by Glydon.
Id. at 4.
Appellant argues the Examiner’s rejection should be reversed because
one of ordinary skill in the art would not have combined the teachings of
Weiss and Glydon to arrive at the claimed invention. Appeal Br. 4 (“The
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combination of Weiss and Glydon is improper and does not teach the
claimed invention”); see also Reply Br. 5 (“The combination relies on
hindsight using the present disclosure as a roadmap, and is therefore
improper.”). In particular, Appellant argues one of ordinary skill in the art
would not have modified Weiss’s tinted varnish coating to include Glydon’s
flavoring agent adsorbed onto silicas to serve as a mineral filler in a paint, as
claimed. Appeal Br. 8 (arguing “silica with flavoring agents adsorbed onto
it does not make such silica a mineral filler in a paint”).
The weight of the evidence supports Appellant’s argument. The
Examiner has not established by a preponderance of the evidence of record
that one of ordinary skill in the art would have combined the teachings of the
cited art to arrive at Appellant’s claimed invention and would have had a
reasonable expectation of success in doing so. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) (holding that the examiner bears the initial burden of
establishing a prima facie case of obviousness).
The Examiner does not direct us to persuasive evidence or provide an
adequate technical explanation to evince why one of ordinary skill would
have modified Weiss’s tinted varnish coating on the outer surface of its
cigarette packaging to include Glydon’s flavoring agent adsorbed onto
silicas as a mineral filler in paint. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (requiring “reasoning with some rational underpinning
to support the legal conclusion of obviousness”) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)). Although paragraph 105 of Glydon
describes a flavoring agent adsorbed onto silicas, there is no teaching or
suggestion of such flavoring agents being suitable or used as “mineral
fillers” in paint, as recited in the claim.
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The Examiner also does not direct us to any teaching or suggestion in
the prior art regarding the technical feasibility of Weiss’s tinted varnish
coating being modified to include a flavoring agent adsorbed onto silicas or
adequately explain why one of ordinary skill in the art would have had a
reasonable expectation of success in making such modification. Although
Glydon discusses adding flavoring agents to confer aroma and flavor
properties to its packaging to improve product appeal (Glydon ¶¶ 2, 3, 26), a
preponderance of the evidence does not establish that modifying Weiss’s
tinted varnish coating to include Glydon’s flavoring agents adsorbed onto
silicas would be technically feasible and, even if feasible, whether such
modification would negatively affect the structure and physical properties of
Weiss’s packaging or be detrimental to the packaging’s product appeal. For
example, the Examiner does not direct us to any teaching or suggestion in
the prior art or provide any meaningful discussion as to how modifying
Weiss’s tinted varnish coating to include a flavoring agent adsorbed onto
silicas would affect the tactile properties of Weiss’s coating, which is an
attribute Weiss teaches is required for its packaging. See Weiss ¶¶ 2, 4–6.
Similarly, as Appellant suggests (Appeal Br. 8), the Examiner also does not
adequately address or discuss how modifying Weiss’s coating’s composition
to include flavoring agents adsorbed onto silicas would affect the pattern of
raised features formed by applying Weiss’s tinted varnish to the outer
surface of the packaging which is an integral attribute of Weiss’s tactile
coating. See Weiss ¶¶ 7, 10, 12, 14, Fig. 1.
Thus, on the record before us, we are not persuaded that a
preponderance of the evidence supports the Examiner’s conclusion that it
would have been obvious to one of ordinary skill in the art to have combined
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the teachings of Weiss and Glydon to arrive at the “mineral fillers,
constituted by quartz and/or mica and/or silica” recitation of the claim.
Accordingly, we reverse the Examiner’s rejection of claims 1, 3, 5–8,
10–12, and 20–22 under pre-AIA 35 U.S.C. § 103(a) as obvious over the
combination of Weiss, Glydon, and Milano.
Rejection 2
The Examiner’s rejects claim 9 under 35 U.S.C. § 103(a) as obvious
over the combination of Weiss, Glydon, Milano, and Toft. Ans. 5. The
foregoing deficiencies, however, in the Examiner’s analysis and conclusion
regarding Rejection 1 and the combination of Weiss and Glydon are not
remedied by the Examiner’s findings regarding the additional reference or
combination of references cited in support of the second ground of rejection.
Accordingly, for principally the same reasons discussed above in
reversing the Examiner’s Rejection 1, we reverse the Examiner’s rejection of
claim 9 under 35 U.S.C. § 103(a) as obvious over the combination of Weiss,
Glydon, Milano, and Toft.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–8,
10–12,
20–22
103(a) Weiss, Glydon,
Milano
1, 3, 5–8,
10–12,
20–22
9 103(a) Weiss, Glydon,
Milano, Toft
9
Overall
Outcome
1, 3, 5–12,
20–22

REVERSED