Ex parte BURGESS et al.

Board of Patent Appeals and Interferences

Sep 9, 1998

08397408 (B.P.A.I. Sep. 9, 1998)

Application for patent filed March 2, 1995. 1
1
Paper No. 17
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte WILLIAM H. BURGESS
and
JOHN P. THELMAN
______________
Appeal No. 97-4161
Application 08/397,4081
_______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and MCQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.

Appeal No. 97-4161
Application 08/397,408
The final rejection, the Brief and the Examiner’s Answer erroneously2
state in some places that claims 1 and 3-20 have been finally rejected.
However, claim 12 was canceled in Paper 8.
2
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1, 3-11 and 13-20, which constitute
all of the claims remaining of record in the application. 2
The appellants’ invention is directed to a method and
apparatus for embossing a pattern on an absorbent paper
product. The subject matter before us on appeal is
illustrated by reference to claims 1 and 11, which can be
found in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Scherf 860,697 July 23, 1907
Thomas 3,868,205 Feb. 25, 1975
Schulz 4,376,671 Mar. 15, 1983
Bauernfeind (`728) 4,483,728 Nov. 20, 1984
Burt 4,671,983 June 9,
1987
Bauernfeind (`967) 4,759,967 July 26, 1988
Burgess et al. (Burgess) 4,921,034 May 1, 1990
The admitted prior art found at page 5, lines 28-31 and page
6, lines 19-22 of the appellants’ specification.
Appeal No. 97-4161
Application 08/397,408
3
THE REJECTIONS
The following rejections stand under 35 U.S.C. § 103:
(1) Claims 1, 3, 4, 11, 13 and 14 on the basis of Bauernfeind
‘728.
(2) Claims 1, 3, 4, 11, 13 and 14 on the basis of Bauernfeind
‘728 and Burgess, Bauernfeind ‘967, Schulz, Thomas,
Burt or Scherf.
(3) Claims 1, 4-10, 11 and 14-20 on the basis of Bauernfeind
‘728 and the appellants’ admitted prior art
(specification, page 5, lines 28-31 and page 6, lines 19-
22).
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellants are set forth
in the Brief.
OPINION
In rejections under 35 U.S.C. § 103, the examiner bears
the initial burden of presenting a prima facie case of
obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993)), which is established when the
teachings of the prior art itself would appear to have
Appeal No. 97-4161
Application 08/397,408
4
suggested the claimed subject matter to one of ordinary skill
in the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993)). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a
reason why one of ordinary skill in the art would have been
led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte
Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Inter. 1985). To
this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
The appellants begin the explanation of their invention
by pointing out that it is common to emboss an absorbent paper
base sheet in order to increase its bulk, improve absorbency
and roll building characteristics, and to create an attractive
pattern. One of the problems which accompanies this, they
Appeal No. 97-4161
Application 08/397,408
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state, is bursting of the pillow areas creating by the
embossing due to the stress of the embossing process. The
invention seeks to solve this problem by providing an initial
step in which a relatively fine preparatory base pattern of
pin-like displacements is embossed onto the web, which is
followed by placing a second embossed pattern onto the web,
such that the second pattern defines pillow-like areas. As
manifested in both the method and the apparatus claims, the
first pattern contains 35-400 displacements per square inch,
and each of the pillow-like areas contains from 1 to 100 of
the pin-like displacements.
The first rejection set forth by the examiner is that
independent claims 1 and 11 are unpatentable in view of
Bauernfeind ‘728, which discloses a system for making a multi
layer embossed roll product in which each of two webs is
provided with a first embossing pattern, after which glue is
applied to at least one web prior to the webs being joined
together by a marrying roll. The marrying roll impresses a
different pattern than the first embossing, the result of
which is that the webs are joined at irregular points. This,
according to the patent, results in a more bulky product. See
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Application 08/397,408
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column 4 and Figure 8; compare Figures 6 and 7. One of the
marrying roll patterns (Figures 4 and 9) is described as
“raised dots” which “have a substantial open area between each
. . . [so that] there is sufficient space for the sheet to
pucker slightly without causing unacceptable creasing of the
web” (column 3, line 32 et seq.). The density of the dot
pattern is described in terms of the surface area of the
marrying roller, in the broad sense between 0 and 100%, with
the preferred degree being 10-40% (column 3, lines 60-67).
The diameter of each dot is not stated, with the only clue
being the fact that the lamination of the plies to one another
is dependent upon the total area that these dots contact the
webs, with more than 40% contact causing unnecessary
debulking, while less than 10% fails to provide adequate
lamination (column 4, lines 1-6). It is clear that in the
Bauernfeind system the “dot” embossing step must occur
subsequent to the other embossing step, in that it is the
“dot” step that causes the webs to be laminated together in
the manner which constitutes the thrust of the invention.
Our understanding of this rejection is that the required
“pillow-like areas” comprise the areas 32 in Figure 9 of
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Application 08/397,408
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Bauernfeind and the “pin-like displacements” comprise areas
94. Apparently conceding that the reference fails to disclose
or teach the claimed “35 to 400 pin-like displacements per
inch” and that the pillow-like areas contain “from 1 to 100 of
the pin-like displacements,” the examiner takes the position
that these values would have been discoverable by the exercise
of routine skill in the art (Answer, page 4).
A major difference between the claimed subject matter and
that taught by the reference is that the sequence of steps is
reversed. In independent claim 1, the second step is “passing
the absorbent web having the preparatory base pattern
impressed in step (a) [the pin-like pattern] through a second
pair of embossing rollers” (emphasis added), that is, the
“pin-like” embossing must come first. In contradistinction,
in the reference, the pattern which the examiner has
designated to be pin-like must be applied after the other
embossing pattern, or else the inventive method will not be
operative. In independent claim 11, a first pair of rollers
impresses a “preparatory base pattern” on the web, and second
rollers impress a second pattern which defines areas in which
a specified range of the pin-like displacements of the first
Appeal No. 97-4161
Application 08/397,408
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pattern is captured. The arrangement is not taught by the
reference, for there the rolls must be so arranged as to
create the pillow-like areas first.
In addition, the appellants have explained that by first
impressing a “relatively fine preparatory base pattern” upon
the web, a “stretchability” is created which allows the pillow
pattern then to be impressed without the danger of bursting
(specification, pages 3 and 4). In furtherance of this, they
have gone on to state that the number of pin-like depressions
which optimally will accomplish this is 35-400 per square inch
(page 5), providing that there at least one of these pin-like
depressions is present in each pillow-like area
(specification, page 7). Even if one considers areas 32 of
Bauernfeind ‘728 to be the required “pillow-like” areas, there
is no teaching in the reference that there be at least one
pin-like displacement in each, nor would such a requirement
appear to have any function or bearing upon the invention set
forth in the patent. We therefore
cannot agree with the examiner that the numerical requirements
would have been obvious to the artisan from the teachings of
the reference.
Appeal No. 97-4161
Application 08/397,408
See, for example, Merriam Webster’s Collegiate Dictionary, Tenth3
Edition, 1996, page 882.
9
Finally, we do not agree with the examiner that the
“dots” disclosed in Bauernfeind ‘728, which are for the
purpose of pressing the plies together over such an area that
they are adequately laminated, qualify as being “pin-like
displacements” as required by the claims. The preparatory
pattern is defined in the specification as being “relatively
fine” (pages 3, 4) “pin like projections” (page 5), numbering
between 35 and 400 to the square inch of web (page 5), which
indicates that each is of small cross-sectional area. This is
confirmed by the drawings (Figures 6 and 7). Moreover, the
common definition of “pin” is a small and pointed object3
which, as shown in Figures 4 and 9 of the reference, the “dot”
is not.
For the reasons set forth above, it is our view that
Bauernfeind ‘728 fails to establish a prima facie case of
obviousness with respect to the subject matter recited in
independent claims 1 and 11. This being the case, we will not
sustain this rejection.
Claims 1 and 11 also stand rejected as being unpatentable
Appeal No. 97-4161
Application 08/397,408
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over Bauernfeind ‘728 in view of any one of six secondary
references. Even considering that each of these references
teaches embossing a material with a plurality of “pin-like”
displacements, the mere fact that the prior art structure
could be modified in the manner proposed by the examiner does
not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we
fail to perceive any teaching, suggestion or incentive which
would have led one of ordinary skill in the art to modify
Bauernfeind ‘728 by replacing the “dot” displacements with a
continuous pattern of “pin-like” displacements, for to do so
would cause the two webs to be bonded together in a manner
which nullifies the inventive concept (see column 4, line 49
et seq.). This, in our view, would have acted as a
disincentive to the artisan to combine the references in the
manner set forth by the examiner, and thus the required prima
facie case of obviousness is not established. We, therefore,
will not sustain this rejection.
The third rejection of the two independent claims is that
Appeal No. 97-4161
Application 08/397,408
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they would have been obvious on the basis of Bauernfeind ‘728
in view the prior art admitted by the appellants in the
specification at page 5, lines 28-31 and page 6, lines 19-22.
The primary reference has been discussed above. The prior art
admitted by the appellants at these two locations in their
specification has to do with the materials from which the
rollers have been made, and does not alleviate the several
problems pointed out above with regard to Bauernfeind ‘728.
Again, a prima facie case of obviousness is lacking as to the
two independent claims, and we cannot sustain this rejection.
It follows, of course, that if the rejections of the
independent claims cannot be sustained, neither can those of
the claims which depend from them.
Appeal No. 97-4161
Application 08/397,408
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SUMMARY
None of the three rejections is sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )

Appeal No. 97-4161
Application 08/397,408
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Gregory E. Croft
Kimberly-Clark Corp.
401 North Lake Street
Neenah, WI 54957-0349
NEA/cam