Ex Parte Gelli et al

Board of Patent Appeals and Interferences

May 29, 2012

10566629 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/566,629 03/09/2006 Mauro Gelli 6672/PCT 7215
6858 7590 05/29/2012
BREINER & BREINER, L.L.C.
115 NORTH HENRY STREET
ALEXANDRIA, VA 22314
EXAMINER
MUSSER, BARBARA J
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
05/29/2012 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 MAURO GELLI, GUIDO FINOCCKI’, and VALTER DI NARDO
____________

Appeal 2011-008532
Application 10/566,629
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and KAREN M.
HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 44, 45, 51through 62, 64, and 91, all of the claims
pending in the above-identified application.1 We have jurisdiction under 35
U.S.C. § 6.

1 See Appeal Brief (“App. Br.”) filed October 18, 2010, 2, together with
Response to Notification of Non-Compliant Appeal Brief filed November
18, 2010, 1-3; Examiner’s Answer (“Ans.”) filed December 22, 2010, 2.
Appeal 2011-008532
Application 10/566,629

2
STATEMENT OF THE CASE
Details of the appealed subject matter are recited in representative
claims 44 and 91which are reproduced below:
44. A method to produce an embossed web material, comprising at least
two plies coupled to each other by gluing, including the following steps:

embossing a first ply to produce thereon a first series of protuberances
forming an embossed background pattern; applying ink to at least some of
the protuberances of said first series to form a colored pattern; subsequently
further embossing said first ply to produce thereon a second series of
protuberances of a greater height and lesser density with respect to the
protuberances of the first series and defining a decorative motif; applying a
glue to at least some of the protuberances of said second series of
protuberances; making a second ply adhere to the first ply by means of said
glue.

91. A method to produce an embossed web material, comprising at least
two plies coupled to each other by gluing, including the following steps:

embossing a first ply to produce thereon a first series of protuberances
forming an embossed background pattern; applying ink to at least some of
the protuberances of said first series to form a colored pattern; subsequently
further embossing said first ply to produce thereon a second series of
protuberances of a greater height and lesser density with respect to the
protuberances of the first series and defining a decorative motif; applying a
glue to at least some of the protuberances of said second series of
protuberances; making a second ply adhere to the first ply by means of said
glue; wherein the protuberances of the first series have an average density
ranging from 20 to 100 protuberances/cm2; and wherein said glue is colored.
In support of unpatentability of the appealed subject matter, the
Examiner relies upon the following evidence (Ans. 3):
Ruppel US 5,339,730 Aug. 23, 1994
Biagiotti WO 99/44814 Sep. 10, 1999
Appeal 2011-008532
Application 10/566,629

3
Appellants seek review of the Examiner’s rejection of claims 44, 45,
51 through 62, 64, and 912 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of Biagiotti and Ruppel. (See App. Br. 5.)

DISCUSSION
Appellants do not dispute the Examiner’s finding that:
Biagiotti discloses forming an embossed laminate by
making protuberances on a first web which form a background
pattern, making second protuberances on the first
web which have greater height and less density than the first
pattern (Figure 7), applying glue to the second protuberances,
and joining it to a second web.(Figure 6) Biagiotti
discloses coloring can be applied by coloring the adhesive.(Pg.
5, ll.. 30-31) [(Compare Ans. 3 with App. Br. 6; see also
Biagiotti, p. 3, ll. 13-22.)]

Nor do Appellants dispute the Examiner’s finding that Biagiotti discloses the
background embossing has a density of 10-100 per square centimeter as
required by claim 91. (Compare Ans. 4 with App. Br. 7-21.) The Examiner
acknowledges at page 3 of the Answer that Biagiotti does not disclose
applying ink to at least some of the first set of protuberances to form a
colored pattern.

2 Appellants have presented substantive arguments directed to only the
limitations of claims 44 and 91. (See App. Br. 5-21 and Reply Brief (“Reply
Br.”) filed February 22, 2011, 1-7.) Therefore, for purposes of this appeal,
we select claims 44 and 91 and decide the propriety of the Examiner’s
§ 103(a) rejection based on these claims alone consistent with 37 C.F.R.
§ 41.37(c)(1)(vii).

Appeal 2011-008532
Application 10/566,629

4
To remedy this deficiency, the Examiner further relies upon the
disclosure of Ruppel. (See Ans. 3-4.) Appellants contend that the collective
teachings of Biagiotti and Ruppel would not have led one of ordinary skill in
the art to print on at least some of the first set of protuberances on the
interior side of the first web of the laminate taught by Biagiotti to provide a
desired ink pattern on the interior side thereof. (See App. Br. 7-21.)
Thus, the dispositive question is: Has the Examiner reversibly erred
in determining that the collective teachings of Biagiotti and Ruppel would
have led one of ordinary skill in the art to print an ink patter on at least some
of the first set of protuberances on the interior side of the first web of the
laminate taught by Biagiotti within the meaning of 35 U.S.C. § 103? On
this record, we answer this question in the negative.
There is no dispute that Ruppel teaches “embossing a pattern and then
printing on the protuberances formed by embossing so that the ink pattern is
on the interior [surface] of the laminate[,] instead of coloring the adhesive
[used on the protuberances] since this [technique] allows more choice in the
ink used.” (Compare Ans. 3-4 with App. Br. 7-21; See also Ruppel, col. 1,
ll. 22-46.) Appellants acknowledge at page 7 of the Appeal Brief that
Ruppel, like Biagiotti, teaches embossing first and second plies prior to
joining such plies. (Compare Biagiotti, p. 5, ll. 10-20 with App. Br. 7.)
Further, Appellants acknowledge that Ruppel and Biagiotti teach that
coloring and gluing can be on two separate plies or a single ply. (See App.
Br. 6-7.) Ruppel, like Biagiotti, identifies its plies as tissue plies and teaches
using them as paper products, such as kitchen paper, toilet paper and paper
tissues. (Compare Ruppel, col. 1, ll. 6-10 and 67 with Biagiotti, pp. 1 and
Appeal 2011-008532
Application 10/566,629

5
9.) Moreover, Biagiotti teaches forming an ornamental motif via coloring
protuberances. (See, e.g., pp. 2 and 5.)
Given the advantage of coloring protuberances, without using the
glue, with a large number of color choices to provide a desired decorative
motif, we concur with the Examiner that one of ordinary skill in the art
would have been led to print an ink pattern on at least some of the first set of
protuberances, where no glue is present, on the interior side of the first web
of the laminate taught by Biagiotti, with a reasonable expectation of
successfully employing any desired colors to form the desired decorative
motif discussed in Biagiotti.
Appellants’ arguments at pages 7 through 17 of the Appeal Brief are
not well taken for the reasons well stated by the Examiner at pages 3 through
8 of the Answer. As correctly found by the Examiner at pages 3 through 8
of the Answer, the collective teachings of Biagiotti and Ruppel would have
led one of ordinary skill in the art to apply or print desired ink color and/or
an ink pattern on protuberances, especially those which are not subject to
gluing, such as some of the first set of protuberances embossed on the
interior surface of the first web taught by Biagiotti, with a reasonable
expectation of successfully employing unlimited colors to form a desired
colored decorative motif as discussed in Biagiotti. Although Ruppel
teaches some advantage of synchronizing between the printing pattern and
the embossing pattern procedures as indicated by Appellants, Biagiotti also
discloses the formation of a colored pattern subsequent to embossing to form
colored protuberances as indicated supra. In other words, the collective
teachings of Biagiotti and Ruppel would not have precluded one of ordinary
skill in the art from employing the printing procedure after or at the same
Appeal 2011-008532
Application 10/566,629

6
time as embossing consistent with the teaching of either Biagiotti or Ruppel
to provide a desired ink color pattern to protuberances.
In reaching this determination, we note that the reason for combining
the teachings of Biagiotti and Ruppel need not be identical to that
contemplated by applicants to establish a prima facie case of obviousness so
long as there is a reason to apply ink on at least some of the first set of
protuberances embossed on the interior surface of the first web of the
laminate taught by Biagiotti. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992) ("As long as some [reason,] motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor.")
Appellants separately argue that the collective teachings of Biagiotti
and Ruppel would not have suggested applying or printing ink on at least
some of the first set of protuberances and employing colored glue to at least
some of the second series of protuberances as required by claim 91. (See
App. Br. 17-21.) However, we are not persuaded by this argument. As
indicated supra, the collective teachings of Biagiotti and Ruppel would have
led one of ordinary skill in the art to apply or print desired ink color and/or a
pattern on protuberances, especially those which are not subject to gluing,
such as some of the first set of protuberances embossed on the interior
surface of the first web taught by Biagiotti, with a reasonable expectation of
successfully employing unlimited colors to form a desired colored
decorative motif based on the colored protuberances discussed in Biagiotti.
Moreover, Biagiotti and Ruppel do not teach away from applying colored
glue to at least some of the second set of protuberances. In particular,
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Application 10/566,629

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Biagiotti teaches the possibility of applying colored glue to at least some of
the second set of protuberances as indicated supra even though Ruppel
indicates that the choice of color to be used may be limited. Thus, we
concur with the Examiner that the collective teachings of Biagiotti and
Ruppel would have suggested applying or printing ink on at least some of
the first set of protuberances and employing colored glue to at least some of
the second series of protuberances as required by claim 91.
Accordingly, based on the record established on appeal,
including due consideration of the arguments and evidence advanced
by the Examiner and Appellants, we determine that the preponderance
of evidence weighs most heavily in favor of obviousness within the
meaning of 35 U.S.C. § 103(a).
ORDER
Upon consideration of the record, and for the reasons given, it is:
ORDERED that the decision of the Examiner to reject claims 44, 45,
51 through 62, 64, and 91 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Biagiotti and Ruppel is AFFIRMED; and,
FURTHER ORDERED that 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).
AFFIRMED

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