WIPEBOOK CORP.

Patent Trials and Appeals Board

Sep 21, 2021

2021002846 (P.T.A.B. Sep. 21, 2021)

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.
14/498,904 09/26/2014 Francois BOUCHARD 50720-1 6556
51590 7590 09/21/2021
NEXUS LAW GROUP LLP
Suite 2000 - 777 Hornby Street
VANCOUVER, BRITISH COLUMBIA V6Z 1S4
CANADA
EXAMINER
KORB, JENNIFER LUANN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/21/2021 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):
mail@nexuslaw.ca
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCOIS BOUCHARD and THOMAS SYCHTERZ
Appeal 2021-002846
Application 14/498,904
Technology Center 3700
Before STEFAN STAICOVICI, JILL D. HILL, and
MICHAEL L. WOODS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–36. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Wipebook Corp. as the real party in interest.
Appeal Br. 3.
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BACKGROUND
Claims 21 and 28 are independent. Claim 21, reproduced below,
illustrates the claimed subject matter, with disputed limitations italicized:
21. A workbook for repeated use comprising:
a cover;
a plurality of pages disposed within the cover;
a binding coupling the cover and the plurality of pages,
each one of the plurality of pages having a substrate with first
and second surfaces;
a non-UV curable water-based film layer having a satin
finish disposed one of the first and second surfaces; and
a first UV film on the water-based film layer, the first UV
film having a gloss finish and providing a surface suitable for
writing with a dry erasable pen and allowing erasure of the
writing.
REFERENCES
Name Reference Date
Ohbayashi US 6,436,515 B1 Aug. 20, 2002
Gustafson US 2006/0024463 A1 Feb. 2, 2006
Yamazaki US 2011/0117330 A1 May 19, 2011
Di Carlo US 8,257,086 B1 Sept. 4, 2012
Summit http://web.archive.org/web/20130317021327/
http://summitprintingpro.com/resources/pa
ger-coatings.html
Mar. 17, 2013
REJECTIONS
I. Claims 21–36 stand rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final Act. 2.
II. Claims 21, 26, 27, and 35 stand rejected under 35 U.S.C. § 103
as unpatentable over Di Carlo, Gustafson, and Ohbayashi. Final Act. 3.
III. Claims 28, 33, 34, and 36 stand rejected under 35 U.S.C. § 103
as unpatentable over Gustafson and Ohbayashi. Final Act. 7.
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IV. Claims 22–24 stand rejected under 35 U.S.C. § 103 as
unpatentable over Di Carlo, Gustafson, Ohbayashi, and Yamazaki. Final
Act. 10.
V. Claims 29–31 stands rejected under 35 U.S.C. § 103 as
unpatentable over Gustafson, Ohbayashi, and Yamazaki. Final Act. 10.
VI. Claim 25 stands stand rejected under 35 U.S.C. § 103 as
unpatentable over Di Carlo, Gustafson, Ohbayashi, Yamazaki, and Summit.
Final Act. 12.
VII. Claim 32 stands rejected under 35 U.S.C. § 103 as unpatentable
over Gustafson, Ohbayashi, Yamazaki, and Summit. Final Act. 12.
ANALYSIS
Rejection I – Written Description
The Examiner finds that the original disclosure does not support the
recitation of “a non-UV-curable water-based film layer.” Final Act. 2.
According to the Examiner, although Appellant’s Specification states that
“[t]he paper substrate 24 was coated on both surfaces with a water-based
film 26” (Spec. ¶ 14), “[t]he water-based film is not precluded from being a
UV-curable water-based film.” Final Act. 3.
Appellant contends that its writing surface 32 is prepared by applying
two UV film layers 28 and 30 to at least one surface of the water-based film
26. Appeal Br. 12–13 (citing Spec. ¶ 14). Appellant further contends that
its Specification “clearly differentiates between simple, or conventional,
water-based coatings and separate UV curable coatings that are water
based,” referring to “the base coating as a water-based coating, while
teaching that another coating may be a UV-curable water-based coating.”
Id. at 13.
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The Examiner disagrees, finding that Appellant’s Specification
nowhere limits its “water-based film 26 . . . to non-UV-curable water-based
films.” Ans. 13. Further, the Examiner reasons, Appellant specifically
referred to layers 28 and 30 as UV films, indicating that Appellant would
have limited film layer 26 to non-UV-curable water based films had such a
definition been intended. Id. at 14.
The Examiner has the better argument. Appellant’s discussion of the
layers on its substrate is addressed in Paragraph 14 of its Specification,
which states that:
The paper substrate 24 was coated on both surfaces with
a water-based film 26, that is the substrate was a coated paper.
The water-based film had a satin finish. The writing surface 32
was prepared by applying two layers 28 and 30 to at least one
surface of the water-based film 26. The layers 28 and 30 were
UV films. In one example the layer 28 is a water-based UV
film and the layer 30 is another UV film having a gloss finish.
This single sentence identifying a water-based film coating on paper
(substrate) does not possess sufficient detail that a skilled artisan can
reasonably conclude that the inventor had possession of “a non-UV curable
water-based film layer,” particularly given that one of the UV film layers 28
is also disclosed to be water-based. The mere absence of “UV”
categorization for some of the disclosed water-based film layers is not a
basis for excluding UV curability. Further, Appellant’s Specification does
not describe any reason why one would exclude UV curability. See
Santarus, Inc. v. Par Pharm, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
Appellant relies on an Affidavit of Anthony Zara, an Account
Executive with a commercial printing company, as evidence to support a
skilled artisan’s understanding upon reading Appellant’s disclosure. Mr.
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Zara declares that he interprets the structure in Appellant’s Specification
“referred to as the ‘water-based file 26’ as a water-based film that goes on
press rather than a post-press operation; hence, as a non-UV water based
film.” Zara Affidavit ¶ 6. Mr. Zara also declares that “[r]eference to an
aqueous or water based film in the printing and paper industry would have
been widely understood, as of the filing date of the instant application, to
mean a film that is applied in-line in the printing process on the same
printing press” (id. ¶ 7), which Appellant explains is “in contrast to a UV
film that is an off-press process which . . . involves a separate process in
which the UV-curable film is applied to the [dried] paper and then cured
using ultraviolet light” (Appeal Br. 13).
The Examiner responds that the Zara Affidavit is untimely, having
been filed after the final Office Action and without “good and sufficient
reasons why [it] . . . is necessary and was not earlier presented in compliance
with 37 CFR 1.116(e).” Ans. 14 (emphases omitted). The Examiner
disagrees that good cause is established by Appellant’s statement that “‘[a]n
affidavit was not filed earlier in the prosecution because the [Appellant]
attempted to resolve the issue in argument, which it believed to be
persuasive.’” Ans. 14. Further, the Examiner contends, even if the Affidavit
was timely, “it has little probative value” because it is the opinion “of an
account executive, not a printing expert,” and is “not factually supported in
any way,” making it “weak evidence as to whether or not the term ‘water-
based film’ inherently excludes UV-curable water-based films.” Id. at 15.
Again, the Examiner has the better argument, even without delving
into whether Mr. Zara is a skilled artisan, or the contradiction between (1)
Mr. Zara stating that water-based film is understood to be non-UV and (2)
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Appellant’s Specification disclosing that its layer 28 is a water-based UV
film. Submission of evidence after a final action and prior to appeal is
governed by 37 C.F.R. § 1.116, which states that “[a]n affidavit or other
evidence submitted after a final rejection . . . [and] on the same date of filing
an appeal . . . may be admitted upon a showing of good and sufficient
reasons why the affidavit or other evidence is necessary and was not earlier
presented.” Like the Examiner, we do not consider a belief in the
sufficiency of that arguments alone to establish good cause for Appellant’s
delay in filing the Mr. Zara’s Affidavit.
For the reasons disclosed above, we are not persuaded by Appellant’s
arguments, and we sustain Rejection I.
Rejections II – VII
Independent claims 21 and 28 each recite, inter alia, “a non-UV
curable water-based film layer having a satin finish disposed” on a surface
of the substrate.
In making Rejections II through VII, the Examiner relies on
Ohbayashi’s disclosure of an inkjet recording sheet substrate having a satin
finish provided by an aqueous coating/solution as the claimed non-UV
curable water-based film layer. See Final Act. 5, 8 (citing Ohbayashi,
Example 1, 11:40 – 12:14). Ohbayashi, however, is silent regarding UV
curability (or lack thereof) of its semi-matte aqueous coating. For this
reason, the Examiner has not established that the applied prior art teaches or
suggests a non-UV curable water-based film layer having a satin finish
disposed on a surface of the substrate. Lacking such a teaching or
suggestion in the applied prior art, the applied prior art does not render
independent claims 21 and 28 unpatentable. Claims 22–27 and 35 depend
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directly or indirectly from claim 21. Claims 29–34 and 36 depend directly
or indirectly from claim 28. The Examiner has, therefore, not established
the obviousness of the dependent claims for the same reason. We do not
sustain Rejections II–VII.

DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–36 112(a) Written Description 21–36
21, 26, 27,
35
103 Di Carlo, Gustafson,
Ohbayashi
21, 26, 27,
35
28, 33, 34,
36
103 Gustafson,
Ohbayashi
28, 33, 34,
36
22–24 103 Di Carlo, Gustafson,
Ohbayashi,
Yamazaki
22–24
29–31 103 Gustafson,
Ohbayashi,
Yamazaki
29–31
25 103 Di Carlo, Gustafson,
Ohbayashi,
Yamazaki, Summit
25
32 103 Gustafson,
Ohbayashi,
Yamazaki, Summit
32
Overall
Outcome
21–36

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED