Ex parte Beierlorzer et al.

Board of Patent Appeals and Interferences

Mar 19, 1998

08153491 (B.P.A.I. Mar. 19, 1998)

Application for patent filed November 17, 1993. 1
According to appellant, the application is a continuation of
Application 07/861,225, filed March 31, 1992, now abandoned.
Although the record indicates that the amendment filed2
concurrently with appellant’s main brief (Paper No. 30) has been
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 50
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte EDWIN P. BEIERLORZER
________________
Appeal No. 95-4375
Application 08/153,4911
________________
HEARD: MARCH 4, 1998
________________
Before McCandlish, Senior Administrative Patent Judge, Meister
and STAAB, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision in an appeal from the final rejection of
claims 18-25 and 28-36, all the claims in the application. 2
Appeal No. 95-4375
Application 08/153,491
entered (see the supplemental examiner’s answer (Paper No. 34)),
this amendment has not yet been clerically entered. This manner
should be corrected upon return of the present application to the
examiner.
Although not expressly stated, it is presumed that these3
claims are now considered by the examiner to be directed to
allowable subject matter in that they are no longer subject to
any grounds of rejection.
-2-
Subsequent to the final rejection, the examiner has reconsidered
his position and withdrawn the rejections of claims 21-24 (answer
(Paper No. 31), page 5), claims 31, 33 and 34 (answer, page 6),
and claims 20 and 28 (supplemental answer, page 1). 3
Accordingly, only the rejections of claims 18, 19, 25, 29, 30,
32, 35 and 36 remain before us for review.
Appellant’s invention pertains to an apparatus for (claims
18, 19 and 35) and a method of (claims 25, 29, 30, 32 and 36)
producing, from a substantially continuous web of paper, a paper
product comprising a plurality of sequentially folded strips of
paper. An understanding of the invention can be derived from a
reading of exemplary apparatus claim 18 and exemplary method
claim 25, copies of which appear in the appendix to appellant’s
main brief.
In rejecting the claims under 35 U.S.C. § 103, the examiner
relied upon the references listed below:
Appeal No. 95-4375
Application 08/153,491
-3-
Parker 5,088,972 Feb. 18, 1992

Parker 5,173,352 Dec. 22, 1992
(filed Jun. 14, 1990)
Pollux Trust 666,225 Feb. 6, 1952
(Swiss Patent)
Claims 18, 19, 25, 29, 30 and 32 stand rejected under
35 U.S.C. § 103 as being unpatentable over Parker ‘352 in view of
Pollux Trust.
Claims 18, 19, 25, 29, 30, 32, 35 and 36 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Parker ‘972 in
view of Pollux Trust.
The Parker references represent appellant’s prior art
jumping off point. Each of the Parker references discloses an
apparatus and method wherein sequentially folded strips of paper
are produced from a substantially continuous web of paper by
restricting the forward advancement of a plurality of strips of
paper in such a manner that the natural resilience of the paper
produces substantially uniform adjacent opposite folds. The
examiner concedes that neither of the Parker references discloses
“a moistening device which moistens the withdrawn section of
paper thereby forming a moistened section of paper,” as called
for in independent apparatus claim 18, or the step of “moistening
the withdrawn section of paper to form a moistened section of
Appeal No. 95-4375
Application 08/153,491
-4-
paper,” as called for in independent method claim 25.
Pollux Trust pertains to an apparatus for producing an
article composed of superimposed layers of smooth and embossed
paper bonded together to form a laminated cushion pad. In the
apparatus of Pollux Trust, paper rolls 2 and 4 supply stock paper
to moistening devices 8 and 10 where the paper webs 5 and 7 are
moistened. The webs 5 and 7 then pass through embossing
mechanisms 13 and 14 where they are embossed with a pattern.
Simultaneously, paper roll 3 supplies stock paper to a gumming
mechanism 16 where the paper web 6 is gummed on both sides. The
webs 5-7 are brought together at the location of roller 17. This
three layer construction is then fed into stamping machine 20
along with webs 21 and 22, the latter webs being gummed on their
inwardly facing sides by gumming mechanisms 16 and 16 prior to1 2
entry into the stamping machine. The five layer construction
that emerges from the stamping machine is cut into finished
cushion pads 27 by cutters 25 and 26.1
In rejecting the appealed claims, the examiner has taken the
position that it would have been obvious to one of ordinary skill
in the art to moisten the withdrawn strips in either of the
Parker references “because it enables more rapid working of the
paper and helps durably set the form to be imparted as taught by
Appeal No. 95-4375
Application 08/153,491
-5-
Pollux Trust” (final rejection, page 2). While acknowledging
that Pollux Trust does not disclose that a moistening step would
be beneficial in a method like that of the Parker references, the
examiner contends that
this point has no bearing on the application or the
reasons why one of ordinary skill in the art would be
motivated by the combination or Pollux and Parker to
apply moisture to a sheet of paper. Pollux does
disclose that applying moisture to a paper sheet would
be helpful in the deformation of a paper sheet. Thus,
the combination of Parker and Pollux would motivate one
of ordinary skill in the art to apply moisture to a
sheet of paper “in order to make the subsequent
embossing durable and by this means to obtain the
conditions for a rapid working.” (page 3, lines 64-67
of Pollux). Furthermore, Pollux is considered
analogous art in that it deals with the same type of
problem that the appellant’s invention addresses, i.e.,
increasing the workability of the paper in a paper
deforming device and increasing the durability of the
folded/embossed area . . . . [answer, pages 4-5]
While we appreciate the examiner’s position, we do not agree
that it would have been obvious, in view of Pollux Trust, to
modify either of the Parker references in the manner proposed.
In essence, we consider that the subject matter of Pollux Trust
is too far-removed from that of the Parker references to have
suggested modifying the latter in the manner proposed by the
examiner. Although both the Parker references and Pollux Trust
broadly deal with deforming paper material, the Pollux Trust
apparatus utilizes positive forming devices (i.e., embossing mold
Appeal No. 95-4375
Application 08/153,491
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or die mechanisms 13, 14) having surfaces corresponding to the
intended shape of the final product to impart a shape to the
paper webs 5 and 7. A device of this sort is simply not present
in the Parker references, where, in contrast, the folding of the
paper strip is accomplished solely by restricting the forward
advancement of the strips in the discharge chute. The examiner
seemingly ignores these differences in structure and operation
between the primary references and Pollux Trust which point away
from their combination by shifting to a higher level of
commonality, namely, that the ultimate goals of each are to
deform paper. These broadly defined ultimate goals do not
justify the examiner’s proposed modification of the primary
references. In this regard, it is not at all clear that the
moistening devices of Pollux Trust, which are for the purpose of
“mak[ing] the subsequent embossing durable” (Pollux Trust, page
3, line 65; emphasis added) would be of any benefit whatsoever in
the paper forming apparatus and method of the Parker references.
In our view, the only suggestion for combining the disparate
teachings of the Parker references and Pollux Trust in the manner
proposed by the examiner stems from hindsight knowledge derived
from appellant’s own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C.
Appeal No. 95-4375
Application 08/153,491
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§ 103 is, of course, impermissible. See, for example, W. L. Gore
and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983). It follows that we cannot
sustain the examiner’s rejection.
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 95-4375
Application 08/153,491
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Don W. Bulson
Renner Otto Boisselle & Skylar
1621 Euclid Avenue, 19th Floor
Cleveland, OH 44115