Ex Parte Tompkins et al

Board of Patent Appeals and Interferences

Jul 20, 2012

11726561 (B.P.A.I. Jul. 20, 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.
11/726,561 03/22/2007 Grant Edward Tompkins IV 10764 8788
27752 7590 07/20/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
HUG, JOHN ERIC
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
07/20/2012 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 GRANT EDWARD TOMPKINS IV,
REBECCA HOWLAND SPITZER, and WARD WILLIAM OSTENDORF
____________

Appeal 2011-006798
Application 11/726,561
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-11
directed to a papermaking belt having a three dimensional surface pattern.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
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Application 11/726,561

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1. A papermaking belt for making a fibrous structure product having a
machine direction, a cross machine direction orthogonal and co-planar
thereto, and a Z-direction mutually orthogonal to both the machine and cross
machine directions comprising:

a framework, the framework comprising:

a structure formed by a first layer wherein the first layer comprises a
plurality of deflection conduits that correspond to a resultant image
and extend in the Z-direction, the resultant image being the product of
at least one image modification algorithm;

wherein at least one of the image modification algorithms is a
beta image modification algorithm, the beta image modification
algorithm being a three dimensional image modification
algorithm; and

a reinforcing element;

wherein the framework comprises a three-dimensional beta image
modification algorithm pattern.

The Examiner relies upon the following as evidence of unpatentability
(Ans. 3):1
Johnson US 4,514,345 Apr. 30, 1985

THE REJECTION
Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as obvious over
Johnson.

1 Our analysis makes reference to the Examiner’s Answer mailed
December 13, 2010 (“Ans.”) and the Appeal Brief filed October 4, 2010
(“App. Br.”).
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Application 11/726,561

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ISSUE
The following dispositive issue arises: Does the Examiner err in
concluding that the claimed invention would have been obvious over
Johnson because only aesthetic differences, if any, distinguish the
papermaking belt of claim 1 from the papermaking belt of Johnson?
We answer the question in the negative and AFFIRM. We find no
reversible error in the Examiner’s fact finding and application of law.
Therefore, we adopt the fact findings and responses to argument presented in
the Answer and add the following analysis primarily for emphasis.

ANALYSIS
(with Findings of Fact and Principles of Law)
Claims 1 is the only independent claim at issue. The Appellants argue
claims 1-11 as a group. App. Br. 3-4. We select claim 1 as representative of
the group. Claims 2-11 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
The Examiner finds that Johnson describes a papermaking belt
comprising a resin framework with a pattern and a reinforcing element,
noting that “[t]he only apparent difference between the claimed papermaking
belt and that disclosed by Johnson is that the framework of the claimed belt
comprises a three dimensional beta image modification algorithm pattern.”
Ans. 4. The Examiner further finds, however, that this limitation
“constitutes a pattern that is merely created in a different manner than that of
Johnson, resulting in only an aesthetic difference between the two belts.” Id.
Thus, in the Examiner’s view, the algorithm pattern specified in claim 1
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Application 11/726,561

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“does not impart any substantial structural or functional differences to the
belt” that distinguish it from the belt of Johnson. Id. at 4-5.
The Appellants disagree and contend that the claimed algorithm
pattern confers an “improved visual experience” for consumers that “goes
beyond mere aesthetic differences, and provides a beneficial functional
improvement over prior patterns of papermaking belts.” App. Br. 4.
Specifically, the Appellants argue that “consumers ‘perceive the use of such
three dimensional effects as denoting a product or good that is
technologically advanced, in addition to providing an interesting visual
experience to the consumer.’” Id. (quoting Spec. 1:26-28). Thus, according
to the Appellants, “there is a consumer demand for absorbent paper products
that not only have improved aesthetics, but also improved functional
benefits.” Id. (citing Spec. 1:12). The Appellants contend that the claimed
“invention delivers just such a functional benefit by its structure that delivers
a perceived technological advancement through its visual effect.” Id.
The Examiner responds that the Appellants have “not described or
demonstrated any of these improved functional benefits.” Ans. 5.
Specifically, beyond stating “that the present invention delivers a perceived
technological advancement through its visual effect,” the Appellants provide
no objective evidence “that the present invention goes beyond aesthetic
differences.” Id. at 5-6. We agree with the Examiner that “[f]eatures
relating only to ornamentation which have no mechanical function cannot be
relied upon to patentably distinguish the claimed invention from the prior
art.” Id. at 4 (citing In re Seid, 161 F.2d 229 (CCPA 1947)). We further
agree with the Examiner that the Appellants fail to point out any “structural
or functional differences between the claimed belt and the prior art belt”
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sufficient to establish the patentability of claim 1 over Johnson. Id. at 6; cf.
In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the product was made by a
different process.”) (citations omitted).
For the above reasons, we affirm the rejections of claims 1-11.

CONCLUSION
We affirm the rejections of claims 1-11.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED
tc