Ex Parte Kien et al

Board of Patent Appeals and Interferences

Nov 10, 2010

11147695 (B.P.A.I. Nov. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte KATHRYN CHRISTIAN KIEN,
MICHAEL SCOTT PRODOEHL,
WARD WILLIAM OSTENDORF,
ROBERT STANLEY AMPULSKI,
and OSMAN POLAT
________________

Appeal 2010-000904
Application 11/147,695
Technology Center 1700
________________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-000904
Application 11/147,695

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-19, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a web material having protrusions with an
aspect ratio of about 1 to about 5.2 Claim 1 is illustrative:
1. A three-dimensional web material having a
machine direction and a cross-machine direction orthogonal and
coplanar with said machine direction, said material having a
first side and a second side, wherein said first side comprises at
least one region having a plurality of spaced three-dimensional
protrusions extending outwardly from said first side, said
protrusions forming an amorphous pattern of elongate two-
dimensional geometrical shapes having an aspect ratio of from
about 1 to about 5, a longitudinal axis having an angle of from
about -10 degrees to about +10 degrees relative to said cross-
machine direction, said protrusions having a statistically-
controlled degree of randomness.
The Reference
McGuire 5,965,235 Oct. 12, 1999
The Rejection
Claims 1-19 stand rejected under 35 U.S.C. § 103 over McGuire.
OPINION
We affirm the rejection.
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that McGuire would have rendered prima facie obvious, to

2 The Appellants state that the aspect ratio is the width-to-height ratio in a
single dimension within the plane of the web material (Spec. 3:11-12).
2
Appeal 2010-000904
Application 11/147,695

one of ordinary skill in the art, protrusions having an aspect ratio of about 1
to about 5?
Findings of Fact
McGuire discloses “three-dimensional sheet materials having a
plurality of three-dimensional protrusions extending outwardly from at least
one side of the material which form an amorphous pattern” (col. 1, ll. 10-
13). Buckling strengths of the individual panel segments which define each
facet along the perimeter of a protrusion may be increased “by decreasing
the width of the panel for a constant height (i.e., decreasing the aspect ratio)”
(col. 9, ll. 8-10, 16-19).
Analysis
The Appellants argue that McGuire defines “amorphous” as “a pattern
which exhibits no readily perceptible organization, regularity, or orientation
of constituent elements” (col. 5, ll. 9-11) (Br. 3).
The Appellants’ definition of amorphous states that the pattern “may
exhibit a perceptible orientation” (Spec. 4:5-7). The statement that the
pattern “may” exhibit a perceptible orientation indicates that, as in
McGuire’s pattern, there can be no perceptible orientation.
The Appellants argue that McGuire provides for an adhesive within
individual wells between protrusions which, if the protrusions were oriented
and, therefore, necessarily nested, would attach to a succeeding convolution
of a roll (Br. 3).
That argument is not persuasive because McGuire uses an adhesive
only in an embodiment wherein an adhesive-containing sheet is desired
(col. 17, ll. 39-52).
3
Appeal 2010-000904
Application 11/147,695

The Appellants argue that “Appellant requires the geometrical
protrusions to indeed have an aspect ratio greater than 1” (Reply Br. 2).
That argument is not correct because the aspect ratio, as set forth in
both of the Appellants’ independent claims (1 and 16), can be “about 1”.
The Appellants argue that “McGuire requires the protrusions to have
no orientation (i.e., have no aspect ration [sic, ratio])” (Reply Br. 2) and that
“McGuire clearly requires protrusions having no perceptible aspect ratio”
(Reply Br. 3).
Contrary to the Appellants’ argument, McGuire teaches that the aspect
ratio is a result effective variable with respect to buckling strength of the
individual panels of the protrusions (col. 9, ll. 16-31). Optimizing that result
effective variable to obtain the desired buckling strength, including a low
buckling strength corresponding to a high aspect ratio such as an aspect ratio
up to about 5, would require no more than routine experimentation and,
therefore, would have been prima facie obvious to one of ordinary skill in
the art. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220
F.2d 454, 456 (CCPA 1955). Moreover, the Appellants’ claim 1 requires
only at least one region where protrusions have an aspect ratio of about 1 to
about 5, and such a region is shown in McGuire’s figures, e.g., the top left
corners of Figures 2 and 4. Those figures further would have fairly
suggested, to one of ordinary skill in the art, a pattern having a region
wherein the protrusions have an aspect ratio of at least 1, such as about 1 to
about 5.
The Appellants argue that the Appellants have found that their
elongate protrusions provide surprising benefits (Br. 4-5; Reply Br. 3).
4
Appeal 2010-000904
Application 11/147,695

This argument is not well taken because the Appellants have not
provided a side-by-side comparison of the claimed invention with the closest
prior art which is commensurate in scope with the claims, and explained
why the results would have been unexpected by one of ordinary skill in the
art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Grasselli, 713 F.2d
731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980); In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972). The Appellants have provided mere
attorney argument, and arguments of counsel cannot take the place of
evidence. See De Blauwe, 736 F.2d at 705; In re Payne, 606 F.2d 303, 315
(CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Conclusion of Law
The Appellants have not indicated reversible error in the Examiner’s
determination that McGuire would have rendered prima facie obvious, to
one of ordinary skill in the art, protrusions having an aspect ratio of about 1
to about 5.
DECISION/ORDER
The rejection of claims 1-19 under 35 U.S.C. § 103 over McGuire is
affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

5
Appeal 2010-000904
Application 11/147,695

bar

THE PROCTER & GAMBLE COMPANY
GLOBAL LEGAL DEPARTMENT - IP
SYCAMORE BUILDING - 4TH FLOOR
299 EAST SIXTH STREET
CINCINNATI, OH 45202
6