Ex Parte Monnerie et al

Board of Patent Appeals and Interferences

Nov 29, 2010

10142512 (B.P.A.I. Nov. 29, 2010)

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.
10/142,512 05/09/2002 Jean-Louis Monnerie 930020-2001 9751
20999 7590 11/29/2010
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
EXAMINER
AFTERGUT, JEFF H
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
11/29/2010 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 JEAN-LOUIS MONNERIE and
PASCAL DEBYSER
____________

Appeal 2010-009698
Application 10/142,512
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1
Appellants request rehearing of our Decision of August 26, 2010. In
that Decision, we sustained the rejections of record.

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 2010-009698
Application 10/142,512

2

We have reconsidered our decision of August 26, 2010, in light of
Appellants’ comments in the Request for Rehearing, and Appellants have
not convinced us of error therein.
First, Appellants assert that the Board failed to “meaningfully
consider” the Levine Declaration. Req. for Rhg., A-2-A-4. To the contrary,
we fully considered the Levine Declaration in making our determinations in
our Decision, which is self-evident in our Decision.
Second, Appellants argue that the Board makes a new ground of
rejection, and assert that the Board presented a new rationale by stating that
Appellants should have pointed to evidence "that limits the use of net-
conveyor to only processes where the structure that is formed on the belt is
already formed." Appellants argue that this was not presented by the
Examiner and would not reasonably be expected from the non-Declaration
evidence. Appellants then present new evidence, for the first time, in an
effort to show that ordinary skilled artisans do not regard net-conveyors as
forming fabrics or consider them interchangeable, and they are not used as
such. Req. for Rhg., A-2, A-5-A-11.
We are not persuaded that we made a new grounds of rejection. It is
clear that the Examiner’s position includes that the industrial fabric of
Yamada can be useful in the process of Gauthier. We discuss this position
on pages 5-6 of our Decision. As such, our statement made in the paragraph
bridging pages 6-7 of our Decision does not constitute a new grounds as it
does not in any way change the basic thrust of the Examiner’s rejection. See
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In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976); see also In re Noznick,
391 F.2d 946, 949 (CCPA 1968) (no new ground of rejection made when
“explaining to appellants why their arguments were ineffective to overcome
the rejection made by the examiner”).
Because we are not convinced of making a new ground of rejection,
we note that arguments not raised in the Briefs before the Board and
evidence not previously relied upon in the Brief and any Reply Briefs are not
permitted in a Request for Rehearing. 37 C.F.R. § 41.52(a)(1)(2008). We
therefore have not considered Appellants’ arguments/evidence pertaining to
their position that ordinary skilled artisans do not regard net-conveyors as
forming fabrics or consider them interchangeable, and they are not used as
such. Req. for Rhg., A-2, A-5-A-11.
Third, Appellants argue that the Board's conclusion, that Gauthier
does not limit the shape of the yarn, amounts to a suggestion that any yarn
can be used, and is in error, and Appellants assert that the Board’s
conclusion overlooks the evidence of record presented in this case. Req. for
Rhg., A-2, A-10. Appellants argue that the Board substituted its own
findings. Req. for Rhg., A-10-A11. We disagree. It is implicit in the
Examiner’s position that Gauthier does not limit the shape of the yarn
because the Examiner then relies upon Yamada for a specific teaching of a
particular yarn shape with the understanding that such a shape is not
excluded by Gauthier since Gauthier does not limit the yarn shape. Hence,
we stand by our statement made in the paragraph bridging pages 4-5 of our
Decision, and also our reference to In re Dailey, made on page 5 of the
Decision.
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Appellants then state that they “did not contest that any shape yarn
could or could not be used in a forming fabric. Rather, the selection of a
specific yarn shape for a forming fabric is not obvious.” Req. for Rhg., A-
11. This is exactly the issue we considered in our Decision, and we
concluded, based upon a review of the record in its entirety, that Appellants
did not convince us that the Examiner erred in making his rejections.
Fourth, Appellants argue that the Board misapprehended and
overestimated the scope of the Examiner's understanding of the Gauthier and
Yamada references. Req. for Rhg.. A-2, A-11-14. Appellants assert that the
Examiner does not give any reason or rationale for why a belt for accepting
a wet cellulosic slurry would “be useful” as a belt for dry air-entrained fibers
on a fabric drawn through by a vacuum. Req. for Rhg., A-12. To the
contrary, the Examiner provided an explanation on page 15 of the Answer,
which we discussed on pages 5-6 of our Decision.
Appellants then assert that the Board failed to consider the evidence
of record in adopting the Examiner’s rationale on page 15 of the Answer,
and quote from pages 39-40 of their Brief. Req. for Rhg., A-12-13. The
quotation discusses the differences between a process for papermaking and a
process for making nonwovens. As discussed in our Decision on page 6, we
stated:
“[T]he Examiner appreciates differences between the context in
which the belts of Yamada are described versus the context in
which the belt of Gauthier is described, but correctly recognizes
that both are directed to belts made of yarn used to make a
structure (belt) that material is formed upon, and correctly
concludes that one skilled in the art would have reasonably
expected that Yamada's belts would have been useful in the
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process of Gauthier. Obviousness does not require absolute
predictability, but a reasonable expectation of success. In re
Clinton, 527 F.2d 1226, 1228-1229 (CCPA 1976).
While Appellants rely upon evidence that discusses differences
between papermaking and making nonwovens, they have not convinced us
that the skilled artisan would not have reasonably expected the industrial
fabric of Yamada to be useful in the process of Gauthier for the reasons
expressed in our Decision and by the Examiner. Aside from this, Appellants
have not convinced us of error in our position that it has been generally held
that changes in shape of a known element (yarn of forming fabric being the
known element) are obvious. In re Dailey, 357 F.2d 669, 676 (CCPA 1966).
Fifth, Appellants assert that the Board erred in demanding
comparisons of "the closest prior art" for "unexpected results." Req. for
Rhg., A-2, A-14, A-15, A-16. Appellants argue that the Examiner never
questioned that the claimed fabric lacked the claimed advantages.
Appellants also argue that they do not contend that if Gauthier’s forming
fabric were altered to include flat filaments that it would not have the
claimed advantages. Req. for Rhg., A-14. None of these statements by
Appellants relieve Appellants from their burden to show why comparative
data establishes unexpected results. See In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). The Examiner discussed this burden on pages 20-22 of the
Answer.
Appellants allege that the Examiner and the Board failed to consider
the claimed invention as a whole when taking the position that flat filaments
inherently reduce air disturbance, and discuss inherency law at length. Req.
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for Rhg., A-15-A-16. However, a more exact representation of the
Examiner’s position is set forth on page 6 of the Answer, reproduced below:
The reference discloses all the limitations of a claim except a
property or function, and the Office cannot determine whether
or not the reference inherently possesses properties which
anticipate or render obvious the claimed invention but has basis
for shifting the burden of proof to appellant, see In re
Fitzgerald, 205 USPQ 594. It would have been obvious to one
of ordinary skill in the art at the time the invention was made to
employ the industrial fabrics of Japanese Patent 10-60736 in the
operation of forming a nonwoven with a device for forming the
nonwovens as the use of such industrial fabrics as forming
fabrics in the formation of a nonwoven was known per se as
taught by Canadian Patent '520.
As made evident from the above quote from the Answer, the
Examiner’s position is one of obviousness. Under such circumstances, it is
appropriate for Appellants to present a showing of unexpected results in an
effort to rebut a prima facie case of obviousness. See In re Freeman, 474
F.2d 1318, 1324 (CCPA 1973) (in order for a showing of “unexpected
results” to be probative evidence of non-obviousness, the applicant must
establish that the difference between the results obtained through the
claimed invention and those of the prior art would not have been expected
by one skilled in the art at the time of invention).
In conclusion, based on the foregoing, Appellants’ Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making any change therein.

DENIED

Appeal 2010-009698
Application 10/142,512

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cam

FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE – 10TH FLOOR
NEW YORK, NY 10151