Ex Parte Carr

Board of Patent Appeals and Interferences

Oct 30, 2009

10302789 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN S. CARR
____________

Appeal 2009-004001
Application 10/302,789
Technology Center 1700
____________

Decided: October 30, 2009
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and MARK NAGUMO,
Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
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Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-17, all of the pending claims. We have jurisdiction under 35
U.S.C. § 6.1
The claimed invention is directed to a screen employed for
separation of product using vibration energy. Representative claim 1 is
reproduced below.

1. A screen comprising

a first woven screen cloth having first metal threads;

a second woven screen cloth in juxtaposition with the first
woven screen cloth and having second metal threads;

material fusible below a temperature at which the first woven
screen cloth is heat affected fused to interlock the first woven
screen cloth and the second woven screen cloth at first space
locations encapsulating lengths of first metal threads not been
encapsulated;

a third woven screen cloth in planar juxtaposition with the
second woven screen cloth and having third metal threads and
knuckles on the third metal threads, the third metal threads
having a surface coating which is fusible below a temperature
at which the first and second woven screen cloths are heat
affected, the fusible surface coating being fused into the
second woven screen cloth at least at some of the knuckles of
the third woven screen cloth at second spaced locations other
than the first spaced locations, encapsulating short lengths of
second metal threads and not being fused into the first woven

1 In this decision we have considered Appellant’s arguments presented in
the Brief, filed June 13, 2007 and the Reply Brief filed September 22,
2008.
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screen cloth, the second woven screen cloth having finer mesh
than the third woven screen cloth.

Appellant appeals the Examiner's rejection of claims 1-6, 9-13, and 15-
17 under 35 U.S.C. § 102(b) or § 103(a) over Schulte, U.S. Patent
6,220,449 B1, issued April 24, 2001, as evidenced by Bakula, U.S. Patent
5,417,793, issued May 23, 1995;2 and claims 7, 8 and 14 under 35 U.S.C.
§ 103(a) over Schulte in view of Buckley, U.S. Patent 4,479,999, issued
October 30, 1984. (Ans. 3-8; App. Br. 5).
The issue before us is whether Appellant has shown that the
Examiner reversibly erred in rejecting the claims under 35 U.S.C. §§
102(b) and 103(a). We answer this question in the affirmative. Therefore,
WE REVERSE.3
The issue turns on whether Schulte necessarily describes a first
woven screen cloth and a second woven screen cloth in juxtaposition with
the first woven screen cloth that is fused to interlock the first woven screen
cloth at first spaced locations and a third woven screen cloth in
juxtaposition with the second woven screen cloth fused into the second
woven screen cloth at second spaced locations other than the first spaced
locations as required by independent claims 1, 9 and 16?

2 The Bakula reference was not included of the statement of the rejection
appearing in the Final Office Action. Appellant recognized that Bakula
was cited in the office action dated May 8, 2006. Appellant has responded
to the Examiner’s reliance on Bakula in the responsive Brief. (Reply Brief
2).
3 We find it sufficient to consider the broadest claims, independents claims
1, 9, and 16, in deciding this appeal.
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The Examiner bears the initial burden of presenting a prima facie
case of anticipation or obviousness. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
A claimed invention is anticipated under 35 U.S.C. § 102 when all
of the elements of the claimed invention are found in one reference. See
Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565,
1576 (Fed. Cir. 1991). The prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of the claim is described or
suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. Verdegaal Bros., Inc. v.
Union Oil of Cal., 814 F.2d 628, 631-632 (Fed. Cir. 1987).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted
with approval in KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The claimed invention is directed to a laminated screen including
three or more metal woven screen cloths in juxtaposition. The
specification states:
One of the outer screen cloths has a much coarser mesh than the
remaining screen cloths. The laminate of all but the coarsest
screen cloth has at least some of the threads in one screen cloth
including fusible material. This fusible material is fused to
encapsulate lengths of thread of at least all but the coarsest screen
cloth to bind these screen cloths together. The coarsest screen
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cloth has a surface coating which is also fusible. This fusible
surface material is fused into the most adjacent woven screen cloth
only. (Spec. [0007]).

Figure 1 of the present application is reproduced below:

Figure 1 depicts a first woven screen cloth (10) and a second woven
screen cloth (12) in juxtaposition with the first woven screen cloth that
is fused to interlock the first woven screen cloth at first spaced locations
(22) and a third woven screen cloth (26) in juxtaposition with the
second woven screen cloth fused into the second woven screen cloth at
second space locations (32) other than the first space locations. (See
Spec. [0022]-[0024[).

According to the Examiner, Schulte describes a screen for a
vibratory shaker. Specifically, the Examiner states
Schulte et al. disclose a screen for a vibratory shaker (Abstract).
The material comprises up to four layers of screening material of
varying mesh size (column 3, lines 55-62). The lower support
layer is made of a wire cloth that is provided with a coating
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material used to bond the first layer of screening material to it
(Figure ID). Schulte et al. fail to disclose that the fusible coating
from the support layer does not fuse into the upper layers of
screening material. However, Schulte et al. do teach that any two
adjacent layers may be bonded together rather than having the
screening layers being bonded to the support layer directly
(column 4, lines 8- 11). Additionally, Schulte et al. teach that
layers may be adhered using spray-on glue (column 4, lines 6-7).
It would have been obvious to a person having ordinary skill in the
art at the time of the invention to bond the screening layers
together with fusible material that is not from the coating of the
support layer in order to provide sufficient bonding between the
screen layers since Schulte et al. suggest such bonding methods to
one of ordinary skill in their disclosure. With regard to claim 9,
the three screens have varying mesh sizes corresponding to the
claimed configuration of relative fineness (column 3, lines 57-62).
Schulte et al. disclose that the screen assembly that is bonded to
the support layer may be a screen assembly disclosed in several
other incorporated entirely U.S. patents including U.S. Patent No.
5,417,793 to Bakula. (See Col. 4, lines 39-49). Bakula teaches a
screening material that comprises 3 layers of mesh screen that are
bonded using a perforated plastic (Figure 6). The course screen 27
would comprise Applicant's claimed second layer and the fine
screen 29 would comprise Applicant’s claimed first layer. The
plastic grid used to bond the screening layers in Bakula is heated
such that it permeates all three screen layers (column 4, lines 61-
64). Therefore, plastic grid would comprise Applicant's claimed
fusible material that encapsulates short lengths of the first metal
strands. The grid provides fusible surface portions on the
screening layers. (Ans. 3-4; emphasis added).

Appellants contend that the Examiner has not clearly accounted for
all of the elements of the claimed invention of claims 1, 9 and 16.
Specifically, Appellants state:
[T]he surface coating on the third screen cloth has the following
claimed features:
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• being fusible below a temperature at which the first and
second woven screen cloths are heat affected;
• being fused into the second woven screen cloth at second
spaced locations other than at the first spaced locations;
• not being fused into the first woven cloth; and
• encapsulating short lengths of metal threads in the
juxtaposed screen cloth.

See Claims 1, 9 and 16. These features result in providing a
screen in which the third woven screen cloth is selectively bound
to the second woven screen cloth and not to the first woven
screen cloth. The combination of these features is not found
expressly or inherently, in Schulte.
(App. Br. 6).

The Examiner has not adequately explained how Schulte’s screening
material meets the claim requirement that the third woven screen cloth is
selectively bound to the second woven screen cloth and not to the first
woven screen cloth. As set forth above, the Examiner acknowledges that
Schulte fails to disclose that the fusible coating from the support layer does
not fuse into the upper layers of screening material.
In order to overcome the lack of disclosure, the Examiner asserts
“Schulte et al. disclose that the screen assembly that is bonded to the
support layer may be a screen assembly disclosed in several other
incorporated entirely U.S. patents including U.S. Patent No. 5,417,793 to
Bakula.” It may be appropriate in some circumstances to cite the
incorporated references in support of a rejection under §102. However, the
Examiner must identify portions of the incorporated references which
establish that the missing feature in question is necessarily present in the
Schulte reference. The Examiner has failed to do so in the present case.
That is, the Examiner has failed to show that Bakula describes a screen
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assembly wherein the fusible coating from the support layer does not fuse
into the upper layers of screening material as required by the independent
claims. Indeed, according to the portion of Bakula cited by the Examiner,
quoted supra, the plastic grid is heated to permeate all the screen layers.
Consequently, the Examiner has not established that Schulte expressly or
inherently describes all the elements of the claimed invention as required
by §102. The possibility that the fusible coating from the support layer
might not fuse into the upper layers of screening material is not sufficient
to establish anticipation. It is well settled that in order for the Examiner to
establish a prima facie case of anticipation, each and every element of the
claimed invention, arranged as required by the claim, must be found in a
single prior art reference, either expressly or under the principles of
inherency. See generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997). As stated in In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)
(quoting Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)) (internal
citations omitted), “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.”
While the Examiner has indicated that the claims are also rejected
under §103, the Examiner has not explained why it would have been
obvious to a person of ordinary skill in the art to modify or incorporate in
Schulte a screen assembly wherein the fusible coating from the support
layer does not fuse into the upper layers of screening material as required
by the independent claims. In other words, the Examiner has not explained
why one of ordinary skill in the art would have been led to employ the
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missing feature in question in Schulte’s screen assembly within the
meaning of 35 U.S.C. §103.4
Under these circumstance, we cannot conclude that the Examiner
has met the minimum threshold of establishing anticipation under 35
U.S.C. §102 or obviousness under §103. Therefore, the rejections of
claims 1-6, 9-13, and 15-17 under 35 U.S.C. § 102(b) or § 103(a) and
claims 7, 8 and 14 under 35 U.S.C. § 103(a) are reversed.
ORDER
The decision of the Examiner rejecting claims 1-17 under 35 U.S.C.
§§ 102(b) and 103(a) are reversed.

REVERSED

kmm

CONNOLLY BOVE LODGE & HUTZ LLP
P.O. BOX 2207
WILMINGTON, DE 19899

4 The Examiner did not rely on the Buckley reference for describing a
screen assembly wherein the fusible coating from the support layer does
not fuse into the upper layers of screening material.