Ex Parte Gstrein et al

Board of Patent Appeals and Interferences

Mar 26, 2012

12211880 (B.P.A.I. Mar. 26, 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.
12/211,880 09/17/2008 Hippolit Gstrein 5689-287IPCT 9306
20792 7590 03/27/2012
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
MUROMOTO JR, ROBERT H
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
03/27/2012 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 HIPPOLIT GSTREIN and KLAUS HAIDEN
____________

Appeal 2010-005761
Application 12/211,880
Technology Center 3700
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Hippolit Gstrein and Klaus Haiden (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision to reject claims 1-22 under 35
U.S.C. § 103(a) as unpatentable over Jackson1 (WO 93/01350, published
Jan. 21, 1993) and Schroder (US 5,343,896, issued Sep. 6, 1994).
Appellants present additional evidence in the Declaration of Hippolit
Gstrein2 (hereafter the “Gstrein Declaration”) filed under 37 C.F.R. § 1.132
on May 11, 2007. We have jurisdiction over this appeal under 35 U.S.C.
§ 6.

THE INVENTION
Appellants’ invention relates to a papermaker’s press felt including a
base fabric having a set of top machine direction (MD) yarns, a set of bottom
MD yarns, a set of intermediate MD yarns positioned below the top MD
yarns and above the bottom MD yarns, and a set of cross machine direction
(CMD) yarns interwoven with the top MD yarns and the bottom MD yarns.
Spec. 3, para. [0009] and figs. 11-13.
Claims 1 and 11 are illustrative of the claimed invention and read as
follows:
1. A papermaker’s press felt, comprising:
a base fabric, comprising:

1 Throughout the Appeal Brief, Appellants refer to the Jackson reference as
JWI. See Br. 1. The Examiner refers to the Jackson reference as JWI and
by the publication number (i.e., WO 93/01350). See Ans. 2-3. To maintain
consistency, we shall refer to the Jackson reference as JWI throughout the
opinion.
2 The Declarant, Hippolit Gstrein, is also a co-inventor in the instant
application.

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a set of top machine direction (MD) yarns;
a set of bottom MD yarns;
a set of cross machine direction (CMD) yarns interwoven with
the top MD yarns and the bottom MD yarns;
the top MD yarns, bottom MD yarns, and CMD yarns being
interwoven in a series of repeat units in which each top MD yarn
forms a long MD paper side float above certain consecutive ones of
the set of CMD yarns, the long floats passing over eleven CMD yarns;
the press felt further comprising at least one batt layer attached
to the base fabric.

11. A papermaker’s press felt, comprising:
a base fabric, comprising:
a set of top round machine direction (MD) yarns;
a set of round intermediate MD yarns;
a set of round bottom MD yarns;
a set of upper cross machine direction (CMD) yarns interwoven
with the top MD yarns and the intermediate MD yarns; and
a set of lower CMD yarns interwoven with the intermediate
MD yarns and the bottom MD yarns;
the top MD yarns, intermediate MD yarns, bottom MD yarns,
upper CMD yarns and lower CMD yarns being interwoven in a series
of repeat units in which each top MD yarn forms a long MD paper
side float above certain consecutive ones of the top CMD yarns;
the press felt further comprising at least one batt layer needled
to the base fabric;
wherein the bottom MD yarns are not vertically stacked beneath
the top MD yarns.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
Claims 1-10
Each of independent claims 1 and 6 requires that each top MD yarn
form a long MD paper side float above certain consecutive ones of a set of
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CMD yarns, wherein the long MD floats pass over eleven CMD yarns. Br.,
Claims Appendix. Appellants argue that the Examiner has failed to establish
a prima facie case of obviousness based on the combined teachings of JWI
and Schroder. Br. 4-6.
First, Appellants argue that the press felt disclosed in JWI has paper
side MD floats that pass over only 7 CMD yarns (see Br. 5) and Schroder
fails to teach or suggest that including an 11-yarn paper side MD float in a
press felt would provide an improved balance of marking and fiber support
(see Br. 6).
At the outset, we are not persuaded by Appellants’ arguments because
Appellants appear to attack the teachings of JWI and Schroder individually,
rather than the combination of JWI and Schroder. See In re Merck & Co,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner found, and we agree, that JWI discloses all the
limitations of independent claims 1 and 6 except long MD floats passing
over eleven CMD yarns. Ans. 3-5. The Examiner then takes the position
that variations in the length of the long MD float are well known in the art of
papermaking fabrics and as evidence points to the teachings of Schroder to
show that the length of the long MD float is an obvious variant in the
production of papermaking fabrics depending on the desired weave pattern.
Ans. 5. See also Schroder, col. 5, ll. 18-22. In this case, since both JWI and
Schroder disclose a papermaker’s fabric including long MD floats and CMD
yarns (see Schroder, figs. 1 and 14), we find that the disclosure of Schroder
would have reasonably suggested to a person of ordinary skill in the art of
papermaking fabrics that the length of the MD float varies depending on the
desired weave pattern. As such, modifying the long MD floats of JWI to
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pass over eleven CMD yarns (i.e., a desired weave pattern), would involve
only ordinary creativity, and would not have been uniquely challenging to a
person of ordinary skill in the art. See, e.g., KSR Int’l. Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) ("a person of ordinary skill has good reason to
pursue the known options within his or her technical grasp"). Consequently,
we agree with the Examiner that that it would have been obvious to one of
ordinary skill in the art to modify the length of the MD float of JWI to pass
over eleven CMD yarns (i.e., a desired weave pattern) of a papermaker’s
fabric, because modifying the length of the MD float is “an obvious variant
and common practice in the art of papermaker’s fabric production.” Id.
Accordingly, we find that the Examiner has provided a reason with rational
underpinning to support the conclusion of obviousness.
With respect to the Gstrein Declaration, we note that paragraphs 5
through 7 appear to show the advantages of a fabric, such as Appellants’,
having long MD floats passing over eleven CMD yarns. Such advantages
include “improving the marking of the sheet and” providing “greater
support” and “added stability.” See e.g., Gstrein Declaration, paras. 5 and 6.
Although we appreciate that Appellants’ fabric presents certain advantages
over prior press felts with woven fabrics, nonetheless, the Gstrein
Declaration does not refer to any teachings of JWI and Schroder with respect
to a fabric having long MD floats passing over eleven CMD yarns. In other
words, the Gstrein Declaration does not provide any persuasive evidence
why it would not have been obvious to a person of ordinary skill in the art to
modify the length of the MD float of JWI to pass over eleven CMD yarns
(i.e., a desired weave pattern) of a papermaker’s fabric as proposed by the
Examiner.
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After reviewing all of the evidence before us, including the totality of
Appellant’s evidence, it is our conclusion that, on balance, the evidence of
obviousness discussed above outweighs the evidence of nonobviousness
submitted by Appellants and, accordingly, the subject matter of independent
claims 1 and 6 would have been obvious to one of ordinary skill in the art
within the meaning of 35 U.S.C. § 103(a) at the time Appellant’s invention
was made.
In conclusion, for the foregoing reasons, the rejection of independent
claims 1 and 6 as unpatentable over JWI and Schroder is sustained.
Appellants do not argue the rejection of dependent claims 2-5 and 7-10
separate from independent claims 1 and 6. Br. 4-8. As such, the rejection of
claims 2-5 and 7-10 over the combined teachings of JWI and Schroder is
likewise sustained.

Claims 11-22
Each of independent claims 11 and 22 requires a set of round top and
bottom MD yarns. Br., Claims Appendix. The Examiner takes the position
that because JWI discloses the use of other cross sections for monofilament
MD yarns (i.e., warps) and “generic monofilaments are understood to be
circular in cross section,” JWI teaches or renders obvious a set of round top
and bottom MD yarns. Ans. 4.
At the outset, although we agree with the Examiner that JWI discloses
that “[w]arp yarns which are not flattened monofilaments can be included,”
JWI also states that “this is not recommended” because “[t]he dewatering
capabilities of the fabric will likely be impaired, and the risk of paper
marking enhanced.” JWI, p. 14, ll. 18-21. The Examiner has not provided
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any factual evidence to show why a person of ordinary skill in the art would
have specifically chosen a monofilament having a round/circular cross
section, as opposed to a monofilament having any other possible cross
section. Further, the Examiner does not explain why it would have been
obvious to modify the flattened monofilament papermaker’s fabric of JWI to
include round/circular cross section monofilaments, particularly when such a
modification could impair the dewatering capabilities of the fabric and
increase the risk of paper marking. See JWI, p. 14, ll. 18-21. Furthermore,
JWI at no point discloses or suggests replacing all flattened monofilaments
with other shaped monofilaments, but merely that other shapes of
monofilaments “can be included.” Id. at 19. Therefore, the Examiner’s
legal conclusion of obviousness is not supported by facts, and thus, cannot
stand.3 See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that
“[t]he legal conclusion of obviousness must be supported by facts. Where
the legal conclusion is not supported by facts it cannot stand.”)
Accordingly, the rejection of independent claim 11 and its respective
dependent claims 12-21 and independent claim 22 as unpatentable over JWI
and Schroder cannot be sustained.

3 The Gstrein Declaration describes the prior art (paras. 3-4 and 8-10), the
instant invention paras. 5-7), and the teachings of JWI and Schroder (para.
11). The Gstrein Declaration tries to show that in contrast to the
papermaker’s press felt of independent claims 11 and 22, the fabrics of JWI
and Schroeder have a “vertical stacked configuration of the flattened yarns.”
Gstrein Declaration , para. 11. However, since we have determined that the
Examiner’s legal conclusion of obviousness of independent claims 11 and
22 is not supported by facts, we do not need to reach the evidence of the
Gstrein Declaration.
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SUMMARY
The decision of the Examiner is affirmed as to claims 1-10 and
reversed as to claims 11-22.
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-IN-PART

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