Ex Parte Baggot et al

Board of Patent Appeals and Interferences

Apr 26, 2010

11173116 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte JAMES L. BAGGOT, TAMMY L. BAUM, PAUL K. PAULING,
GEOFFREY F. CARLOW, ALEXANDER F. GUNN, TIMOTHY D.
FERGUSON, DANIEL J. VANDERHEIDEN, ROGER E. WENDLER JR.,
and JAMES A. WOOD

Appellants
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Appeal 2010-001336
Application 11/173,116
Technology Center 1700
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Decided: 27 April 2010
_________________

Before SALLY GARDNER LANE, RICHARD E. SCHAFER, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/173,116

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I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of
Appellants’ claims 32-36 and 47-63. Appellants cancelled claims 1-31 and
37-46. (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Appellants’ application is directed to embossed, multi-ply paper
products such as toilet tissue and paper towels. (Spec. 1).
The Examiner relied on the following patents:
Name Number Date
Palmer 3,323,983 June 6, 1967
Esquivel 5,972,456 October 26, 1999
The Examiner rejected claims 32-36 and 47-63 under 35 U.S.C.
§ 103(a) over Esquivel and Palmer. Although Appellants provided a
separate section to address dependent claims 33-36, 47-53, and 54-63, they
do not present any arguments different from those asserted for independent
claim 32. Further, Appellants do not present separate arguments for
independent claim 32 and independent claim 53. Thus, we focus our review
on claim 32. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”).
II. FINDINGS OF FACT
1. Appellants’ claim 32 recites:
A multi-ply paper product comprising:
a first ply comprising pulp fibers;
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a second ply also comprising pulp fibers, the first ply
being positioned in an overlapping relationship with the second
ply;
rows of perforation spaced apart along the length of the
multi-ply paper product, each of the rows being substantially
perpendicular to the length of the paper product; and
bond areas attaching the first ply to the second ply, the
bond areas being located adjacent to and separate from the
perforations, the bond areas comprising areas where pulp
material from the first ply has been glassined together with pulp
material from the second ply.

(App. Br. 10, Claims App’x).
2. Appellants’ specification does not define the term “glassined,”
but explains that in an embodiment
the method includes the steps of arranging the plurality of pulp
fiber plies in an overlapping configuration. The plies are then
perforated to form separate sheets along the length of the plies.
According to the present invention, during perforation, the plies
are pressed and fused together adjacent the formed perforations
under a pressure sufficient to cause the plies to glassine and
fuse together.

(Spec. 3, ll. 21-26).
3. Esquivel teaches a toilet paper product having multiple plies,
wherein the layers are embossed to hold individual sheets together after they
have been torn, at “linear tearing portions,” or perforations, across the width
of the roll. (Esquivel col. 5, ll. 30-43).
4. Esquivel teaches that the embossing forms a “weak bond.”
(Esquivel col. 3, ll. 56-58, and col. 5, ll. 38-39).
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5. Esquivel explains that an objective of the invention is to
provide multi-ply toilet paper that holds together as a unit after it is torn
from the roll. (Esquivel abstract and col. 3, ll. 56-58).
6. Esquivel does not teach the specific strength of the bond created
by embossing and does not teach that the multiple layers are “glassinated
together.”
7. Palmer teaches an apparatus that bonds plies of paper to hold
them together as a unit. (Palmer col. 2, ll. 18-24).
8. Palmer teaches that a very high unit pressure is applied to the
surface of the plies of paper causing the fibers to interlock and “to be
reduced to a plastic, with the individual paper fibers losing their identity,
thereby knitting the plies together between these surfaces.” (Palmer col. 4,
ll. 22-29).
9. Appellants do not dispute that the plies of the tissue paper in
Palmer are “glassined together” due to the high pressures exerted.
III. ISSUE
Would those in the art have substituted the bonding taught in Palmer
for the embossing taught in Esquivel to obtain a multi-ply toilet tissue that
remains together as a single unit when torn from the roll?
IV. ANALYSIS
Esquivel teaches multi-ply toilet tissue, as claimed by Appellants (FF
1), that is embossed in a line on either side of perforations (“linear tearing
portions”) that allow units to be torn from the roll. (FF 3). Esquivel states
that the embossing is “weak” (FF 4), but does not provide any specific
strength of the bond formed between the plies and does not teach that they
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are “glassinated together” (FF 6). Esquivel teaches that the embossing
allows the multiply sheets to stay together as a unit after they have been torn
from the roll. (FF 5).
Palmer teaches bonding plies of paper together to hold them as a unit.
(FF 7). Palmer uses very high unit pressure applied to the surfaces of the
paper so that their fibers interlock and knit together. (FF 8). Appellants do
not dispute that this very high pressure “glassin[ates] together” the sheets of
paper, as claimed. (FF 9).
Those of ordinary skill in the art would have recognized that Palmer’s
bonding technique was an alternative to the embossing and joining technique
described by Esquivel. It would have been obvious to use the very high
pressure bonding technique of Palmer to insure that multiple sheets of a
multi-ply toilet paper stay together as a unit, as desired in Esquivel. See
KSR Int’l Co. v. Teleflex Inc, 550 U.S. 398, 419-20 (2007) (“One of the
ways in which a [claim’s] subject matter can be proved obvious is by noting
that there existed at the time of invention a known problem for which there
was an obvious solution encompassed by the . . . claims.”).
According to Appellants, Esquivel does not teach that the bonding
areas are located adjacent to and separate from perforations, as recited in
claim 32, but could be interpreted to teach that the bonds extend across the
line of perforations. (App. Br. 4-5). We disagree with Appellants’ reading
of Esquivel. Esquivel states that the embossing “forms a line on either side
of each of the plurality of linear tearing portions . . . .” (Esquivel col. 5, ll.
40-42) and does not teach that the embossing line crosses the line of
perforations. Figures 1 and 2 of Esquivel are reproduced below.

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Figures 1 and 2 depict a roll and a single unit, respectively, of a toilet paper
product. Although the elements of Figure 1 are not labeled, when we view
Figure 1 in view of the specification we understand the dashed lines to be
perforations and the lines located parallel, adjacent, and separate from the
dashed lines to be lines of embossing. This understanding is confirmed by
Figure 2, which depicts a single unit of toilet paper torn at the perforations,
but held together by the line of embossing. Although Appellants argue,
without evidence in support, that “[i]n order for individual sheets (or plies)
to be torn away, the embossing would need to be at the same location as the
perforation” (App. Br. 5), Figures 1 and 2 depict a paper product having the
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multiple plies, and rows of perforation, and adjacent, separate bond areas as
recited in Appellants’ claim 32.
Appellants also argue that those of skill in the art would not have
combined the teachings of Esquivel and Palmer because they teach away
from each other. (App. Br. 5-8). According to Appellants, Esquivel and
Palmer are directed to different types of paper and the equipment used in
Palmer would be inoperable because the embossing grooves are deeper than
the thickness of the toilet paper of Esquivel. (App. Br. 5-6). First,
Appellants do not provide any evidence that the toilet paper of Esquivel
would be damaged by the equipment used in Palmer, as they argue.
“Argument of counsel cannot take the place of evidence lacking in the
record.” Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977). Second, the
equipment in Palmer is not as limited as Appellants assert because while
exemplary dimensions are recited (see Palmer col. 2, ll. 45-46), Palmer does
not limit the apparatus to them. Instead, Palmer states that the dimension
“may be” as recited and that the embossing rolls “may be successfully used
with many different types of plied products for the embossing the plies
together” (id. col. 3, ll. 43-45). “Under the proper legal standard, a
reference will teach away when it suggests that the developments flowing
from its disclosures are unlikely to produce the objective of the applicant's
invention.” Syntex LLC v. Apotex, Inc. 407 F.3d 1371, 1380, 74 U.S.P.Q.2d
1823 (Fed. Cir. 2005). Palmer does not discourage those in the art from
using any size grooves or any specific type of paper or toilet paper. Thus,
Palmer does not teach away from the toilet paper of Esquivel. To the
contrary, the person of ordinary skill in the art would have recognized that
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Palmer’s technique provided a stronger bond between plies than Esquivel’s
weak embossment bond.
Appellants argue further that the bonding in Esquivel is limited to
weak bonding because Esquivel indicates that the plies of each separate unit
of multiply toilet paper can be torn away individually, making them
available as facial tissue. (App. Br. 7-8). Appellants assert that weak bonds
would allow for this feature. However, Esquivel explains that embossing
only at the ends allows for the feature, not the weakness of the bonds of the
embossing. (See Esquivel col. 3, ll. 59-61: “A further objective is to provide
a toilet paper product that is embossed only at the ends of the product,
allowing the user to tear out individual sheets of the product for use as facial
tissue.”). Appellants have not explained why using the stronger embossing
of Palmer would not allow the user to tear away individual sheets.
V. CONCLUSION
Appellants have not persuaded us that those of skill in the art would
not have combined the teachings of Esquivel and Palmer and considered the
claimed paper product to be obvious. Thus, the Examiner did not err in
rejecting claim 32, as well as claims 33-36 and 47-63, under 35 U.S.C.
§ 103(a).
VI. ORDER
Upon consideration of the record and for the reasons given, the
rejection of claims 32-36 and 47-63 under 35 U.S.C. § 103(a) over Esquivel
and Palmer is AFFIRMED.
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)(iv)(2007).
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AFFIRMED

Dority & Manning, P.A.
P.O. Box 1449
Greenville, SC 29602-1449