Ex Parte Prodoehl et al

Board of Patent Appeals and Interferences

Apr 29, 2009

10782029 (B.P.A.I. Apr. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte MICHAEL SCOTT PRODOEHL
and KENNETH DOUGLAS VINSON
______________

Appeal 2009-0854
Application 10/782,029
Technology Center 1700
_______________

Decided: 1 April 29, 2009
_______________

Before CHARLES F. WARREN, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 2, 4, 6, 10 through 14, 16, 17, 19, 21,

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the “Decided” date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0854
Application 10/782,029
22, and 25 through 30 in the Office Action mailed October 30, 2006.
35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2007).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a single or multi-ply
sanitary tissue product and is representative of the claims on appeal:
1. A single- or multi-ply sanitary tissue product having a basis weight
of from about 10 g/m2 to about 120 g/m2, wherein the sanitary tissue product
comprises a differential density fibrous structure comprising low fiber
density pillow regions and high fiber density knuckle regions and a
structural aspect ratio of greater than 1.5 wherein the fibrous structure
exhibits a modulus to tensile strength ratio as defined below:
ARD90M < 15
ARD90T
wherein ARD90M is the modulus measured perpendicular to the direction the
structural aspect ratio is measured; and ARD90T is the tensile strength
measured perpendicular to the direction the structural aspect ratio is
measured.
The Examiner relies upon the evidence in these references (Ans. 3): 2
Trokhan US 4,637,859 Jan. 20, 1987
Phan US 6,328,850 B1 Dec. 11, 2001
Appellants request review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1, 2, 4, 6, 10 through
12, 16, 17, 19, 21, 22, 25 through 27, and 30 over Trokhan;3 and claims 13,
14, 28, and 29 over Trokhan, as applied to the above claims, further in view
of Phan. App. Br. 3; Ans. 3 and 4.

2 We consider the Appeal Brief filed July 5, 2007, and the Examiner’s
Answer mailed October 15, 2007.
3 The Examiner withdrew the ground of rejection of these claims under
35 U.S.C. § 102(b), which is a separate ground of rejection. See, e.g., In re
Spada, 911 F.2d 705, 707 n.3 (Fed. Cir. 1990).
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Application 10/782,029
Appellants separately group the claims in the first ground of rejection.
App. Br. 3. However, Appellants rely on separate arguments only for claims
1, 2, and 10 through 12, and claims 16, 17, 25 through 27, and 30.
Appellants apply the same arguments to the other groups of claims
addressed in this ground and note the difference in scope of the same
limitation in each group. App. Br. 3 and 4-6. Appellants rely on the same
arguments based on Trokhan advanced with respect to the first ground of
rejection with respect to each of the claim groupings in the second ground of
rejection. App. Br. 3 and 6-7; see also Ans. 6. Thus, we decide this appeal
based on independent claims 1 and 16. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Issue
The dispositive issue in this appeal is whether Appellants have shown
that the evidence in Trokhan does not support the Examiner’s conclusion of
prima facie obviousness.
Claim Interpretation
In order to consider the issue raised in this appeal, we first interpret
independent claims 1 and 16 by giving the terms thereof the broadest
reasonable interpretation in their ordinary usage in context as they would be
understood by one of ordinary skill in the art in light of the written
description in the Specification unless another meaning is intended by
Appellants as established therein, and without reading into the claim any
disclosed limitation or particular embodiment. See, e.g., In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and cases cited
therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
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We determine claim 1 specifies, in pertinent part, as illustrated by the
embodiments depicted in Specification Figures 1 and 2a-b, a tissue product
comprising at least a differential density fibrous structure comprising at least
low fiber density pillow regions A and B and high fiber density knuckle
regions C, and a structural aspect ratio of greater than 1.5.
With respect to the manner in which the “structural aspect ratio” is
determined, we find Appellants disclose in the Specification:
“Aspect Ratio” as used herein means a ratio of length to width
within discontinuous regions of the differential density
structures of the present invention. More specifically, the
“Structural Aspect Ratio” is determined by averaging the aspect
ratio of all of the individual discontinuous regions within a
repeating unit, wherein the direction in which the structural
aspect ratio is measured is selected in order to achieve a
maximum in its absolute value.
Spec. 4:30-34. Specification Figure 1 illustrates a pattern in which “low
density shape types ‘A’ and ‘B’ [are] dispersed within a continuous, high
density field ‘C’.” Spec. 10:20-23. The “aspect ratio” calculated in parallel
directions “X” and in parallel directions “orthogonal to X” is illustrated in
Specification Figures 2a-b. Spec. 10:24 to 11:13. “[T]he structural aspect
ratio is determined by repeating this calculation for each ‘X,’ trying every
direction 180º around the structure, until a maximum is found,” which
“maximum is the structural aspect ratio and its direction is the structural
aspect ratio direction.” Spec. 11:14-16. The aspect ratio can be calculated
in this manner from the means used “to impart the structural features to the
product. Spec. 11:20-22.
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Application 10/782,029
Thus, we determine claim 1 specifies the largest structural aspect ratio
of the discontinuous regions, whether low fiber density pillow regions A and
B or high fiber density knuckle regions C must be greater than 1.5.
We determine that claim 16 specifies, in pertinent part, a tissue
product comprising at least a differential density fibrous structure having at
least an average fiber length, L of less than 2 mm, and further comprising at
least low fiber density pillow regions A and B and high fiber density knuckle
regions C and “a maximum stretch of less than about 15%” in any direction.
The fibrous structure of claim 1 exhibits the specified modulus to
tensile strength ratio, wherein the modulus and the tensile strength are
measured perpendicular to the direction the structural aspect ratio is
measured. The fibrous structure of claim 16 exhibits the specified modulus
to tensile strength ratio, wherein the modulus and the tensile strength are
measured in the direction of maximum stretch. Neither claims 1 and 16 nor
the Specification specify the shape or dimensions for the pillow and knuckle
regions or the fibers used to form the paper products. See generally Spec.
Appellants characterize the claimed tissue products as having
a fibrous structure. . . [which] exhibits a high tensile strength
and surprisingly a low modulus. The low modulus of the
fibrous structures of the present invention provides the fibrous
structures with a softness that is greater than conventional
fibrous structures and/or higher tensile strength fibrous
structures with a softness that is equal to or greater than the
softness of conventional fibrous structures.
Spec. 2:5-9.

Findings of Fact
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Application 10/782,029
We find Trokhan would have disclosed to one of ordinary skill in this
art, as illustrated by, among other things, deflection plate embodiments
depicted in Figures 2 and 10, a method of making a tissue product having a
differential density fibrous structure having low density “domes,” formed by
deflection conduits 22, and a “high density network region,” formed by
continuous network surface 23 of deflector member 19. Trokhan, e.g.,
col. 1, l. 63 to col. 2, l. 16, col. 2, ll. 25-47, col. 6, ll. 3-10, col. 7,
ll. 1-13 and 37-68, col. 8, ll. 5-68, and col. 18, l. 34 to col. 21, l. 18.
Appellants admit that processes for making pattern densified fibrous
structures as claimed are well known as exemplified by, among other things,
Trokhan. Spec. 8:14-21.
Trokhan discloses that in the “preferred geometry” of openings 29 of
conduits 22 that are separated by network surface 23 in the pattern illustrated
in Figure 10, opening 29 has point-to-point height “f’ and width between
flats “e.” In an especially preferred embodiment for use with northern
softwood Kraft [(NSK)] furnishes,” “e” is 1.27 mm and “f” is
1.62 mm. Trokhan col. 8, ll. 12-37.
Appellants determine an aspect ratio of 1.28 for conduits 22 of
Trokhan Figure 10 using the “formula: dimension f/dimension e.” App. Br.
4. The Examiner does not dispute the calculation. See generally Ans.
Trokhan discloses it is the relationship of the geometries of openings
29 of conduits 22 and of network surface 23 as well as the interaction
between these patterns of deflection member 19 and various fiber
parameters, “including length, shape, and orientation in the embryonic web”
that is deflected by deflection member 19, which influence the properties of
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Application 10/782,029
the paper products prepared by the process, which exhibit, among other
things, good softness. Trokhan, e.g., col. 1, l. 63 to col. 2, l. 16, col. 9,
l. 37 to col. 10, l. 64, col. 18, ll. 38-60, and col. 19, ll. 23-66.
Trokhan’s illustrative Example uses NSK fibers with the deflection
member illustrated in Figure 10, to prepare four paper products exhibiting
maximum stretch of 30, 34, 35, and 32 percent, respectively, in the machine
direction. Trokhan col. 21, l. 34 to col. 22, l. 2, and Tables I-III.
A discussion of Phan is not necessary to our decision.4
Discussion
We considered the record as a whole in light of Appellants’ arguments
with respect to the teachings of Trokhan. The Examiner does not disagree
with Appellants’ argument that the embodiment illustrated by Trokhan’s
Figure 10 has the aspect ratio 1.28, and thus does not meet this limitation in
claim 1.5 App. Br. 4-5, 5, and 7; Ans. 5. The Examiner further does not
disagree with Appellants’ argument that the maximum stretch exhibited by
Trokhan’s four embodiments illustrated in the Example does not meet this
limitation in claim 16. App. Br. 5 and 6; Ans. 5-6.

4 We have not considered United States Patent 6,177,370, which is not of
record, and the Horn publication, of record, cited by the Examiner to show
fact. Ans. 3. In this respect, we note Appellants admit that it is known the
over/under for short and long paper making fibers is 1.5 mm, with NSK
fibers representative of the latter. Spec. 12:3-19.
5 We determine Appellants’ method of calculation does not reflect the
method disclosed in the Specification for determining the structural aspect
ratio as claimed. See above pp. 4 and 6. We have not undertaken
calculations in accordance with the disclosed method since the same is not
necessary to our decision.
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Thus, while the Examiner agrees with Appellants that on this record, it
does not appear these paper product embodiments of Trokhan anticipate the
claimed paper products encompassed by claims 1 and 16, the Examiner
points out that these claims are also rejected under § 103(a). Ans. 5-6; see
above note 3. In this respect, the Examiner points to the similarities between
the claimed paper products and the teachings of Trokhan. The Examiner
further points out that Trokhan teaches the properties of the paper products
can be “controlled by varying the pattern and surface geometry of the
[deflection] member on which the tissue is produced” which would have led
one of ordinary skill in this art to optimize properties by selecting
appropriate pattern and geometries by routine experimentation. Ans. 3-6.
Appellants submit that Trokhan fails to teach or suggest a structural aspect
ratio or a maximum stretch other than that exhibited in the disclosed
embodiments. App. Br. 4-7.
On this record, we agree with the Examiner. Appellants have not
have shown that the evidence in Trokhan does not support the Examiner’s
conclusion of obviousness. Contrary to Appellants’ arguments, Trokhan’s
teachings are not limited to the preferred embodiments based on the
deflection member illustrated in Trokhan’s Figure 10. See, e.g., Merck v.
Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“But in a section 103
inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’”) (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976). Indeed, there is no disclosure in Trokhan limiting the
aspect ratio or the maximum stretch to the values reported in these
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embodiments. Thus, we are of the view that one of ordinary skill in this art
routinely following the teachings of Trokhan with respect to the formation of
the deflection member and the use of fibers, such as NSK, therewith would
have reasonably arrived at paper products having softness properties falling
within claims 1 and 16 even though Trokhan does not describe such
properties using modulus to tensile strength ratios calculated as specified in
claims 1 and 16. See, e.g., In re Skoner, 517 F.2d 947, 950-51 (CCPA 1975)
(“Appellants have chosen to describe their invention in terms of certain
physical characteristics . . . Merely choosing to describe their invention in
this manner does not render patentable their method which is clearly obvious
in view of [the reference].” (citation omitted)).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Trokhan
alone and as combined with Phan, with Appellants’ countervailing evidence
of and argument for nonobviousness and conclude, by a preponderance of
the evidence and weight of argument, that the claimed invention
encompassed by appealed claims 1, 2, 4, 6, 10 through 14, 16, 17, 19, 21, 22,
and 25 through 30 would have been obvious as a matter of law under 35
U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.

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Appeal 2009-0854
Application 10/782,029
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)(v).
AFFIRMED

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