Ex Parte Mullally et al

Board of Patent Appeals and Interferences

Sep 15, 2010

11020932 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CRISTINA ASENSIO MULLALLY,
ANDREW PETER BAKKEN, MARK ALAN BURAZIN, and
ROBERT EUGENE KRAUTKRAMER
________________

Appeal 2009-014802
Application 11/020,932
Technology Center 1700
________________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
TERRY J. OWENS, 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.

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6, 8-31 and 33-49, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim methods for making a woven papermaking
fabric, an air laid web and a tissue sheet. Claim 1 is illustrative:
1. A method of making a tissue sheet comprising:

(a) depositing an aqueous suspension of papermaking
fibers onto a forming fabric, thereby forming a wet tissue web;

(b) transferring the wet tissue web to a woven
papermaking fabric having a sheet-contacting textured woven
background surface, said woven background surface being the
overall predominant surface of the fabric and which contains a
woven highlight area surrounding a design element; and

(c) drying the wet tissue web.

The References
Rogers Des. 427,472 Jul. 4, 2000
Kuehn D465,094 S Nov. 5, 2002
Sears 6,620,293 B2 Sep. 16, 2003
Kramer 2004/0126601 A1 Jul. 1, 2004
Burazin 6,821,385 B2 Nov. 23, 2004
The Rejections
The claims stand rejected as follows: claims 1-6, 8-22, 25-31 and 33-
49 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
Appellants regard as the invention; claims 1, 2, 5, 6, 9, 12, 13, 16, 19, 25-27,
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30, 31, 34, 37, 40, 43, 47 and 49 under 35 U.S.C. § 102(b) or, in the
alternative, under 35 U.S.C. § 103 over Kramer; claims 2-6, 9, 13-18, 20,
27-31, 38-42 and 44 under 35 U.S.C. § 103 over Kramer in view of Rogers
and Kuehn; claims 10, 11, 21, 35, 36 and 45 under 35 U.S.C. § 103 over
Kramer in view of Burazin; claims 23 and 24 under 35 U.S.C. § 103 over
Kramer in view of Sears; and claim 22 under 35 U.S.C. § 102(b) or, in the
alternative, under 35 U.S.C. § 103 over Rogers or Kuehn.
OPINION
We reverse the rejections under 35 U.S.C. § 112, second paragraph
and under 35 U.S.C. § 102(b) over Kramer and affirm the other rejections.
Rejection under35 U.S.C. § 112, second paragraph
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that the Appellants’ claim term “predominant” renders the
claims indefinite?
Analysis
“[T]he indefiniteness inquiry asks whether the claims ‘circumscribe a
particular area with a reasonable degree of precision and particularity.’”
Marley Mouldings Ltd. v. Mikron Industries, Inc., 417 F.3d 1356, 1359 (Fed.
Cir. 2005), quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
The Examiner argues, regarding the Appellants’ claim term
“predominant”, that “the specification does not provide a standard for
ascertaining the requisite degree” (Ans. 3) and that “[i]t is unclear how much
of the surface must be composed of ‘textured woven background surface’ to
meet this claim [1, 12 or 25].” See id.
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The Appellants argue that “the term ‘predominant’, as used in
Appellants’ specification and claims, is intended to be interpreted in
accordance [with] the ordinary dictionary definition of the term, meaning
that the textured background surface is the most common surface” (Br. 4).2
“The words of the claims themselves define the scope of the
invention, and are given their ordinary and customary meaning, unless the
patentee has chosen to use terms in some other manner.” Allen Engineering
Corp. v. Bartell Industries, Inc., 299 F.3d 1336, 1344 (Fed. Cir. 2002).
The Examiner does not argue that “predominant”, as used by the
Appellants, has a meaning different from its ordinary and customary
meaning, which is “[m]ost common or conspicuous: PREVALENT < the
predominant geometric pattern in a design>.”3 Regarding the Examiner’s
argument that “[i]t is unclear how much of the surface must be composed of
‘textured woven background surface’” for it to be the predominant surface
(Ans. 3), according to the ordinary and customary meaning of
“predominant” it must be the most common or conspicuous surface.
Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that the Appellants’ claim term “predominant” renders the
claims indefinite.

2 The pages of the Appellants’ Brief are not numbered. The Brief page
numbers herein have been provided by the Board.
3 Webster’s II New Riverside Dictionary 927 (Riverside 1984).
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Rejection under 35 U.S.C. § 102(b) over Kramer
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Kramer discloses a papermaking fabric having a woven
background surface which is the overall predominant surface of the fabric
and contains a woven highlight area?
Findings of Fact
Kramer discloses a papermaking belt comprising a base fabric, which
can be woven, having a polymeric resin deposited thereon in droplets having
an average diameter of at least 10 microns in a desired thickness to form a
precise predetermined pattern to be imparted onto products formed on the
belt (¶¶ 0014, 0023). The pattern may form outlines or other representations
of familiar objects such as clouds, flowers, swans or leaves, or of company
logos (¶¶ 0035, 0037; Fig. 6). Alternately the pattern may be straight,
curved or zigzag lines (¶ 0036; Fig. 5).
Analysis
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
The Appellants argue that the overall predominant surface of
Kramer’s Figure 6 (relied upon by the Examiner in the final rejection mailed
Dec. 5, 2007, pp. 4-5) is a smooth polymeric resin coating, not a woven
background surface (Br. 5).
The Examiner argues that the most common surface element in
Kramer’s Fig. 6 is discrete passages 82 of textured background surface
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material because there are at least 25 of them and no other element appears
to be that common on the surface (Ans. 11).
If the Examiner’s argument were correct the Appellants’ overall
predominant surface requirement could be met by 25 tiny dots in one spot on
the surface. The Examiner has not established that the discrete passages (82)
are the predominant surface, i.e., most common or conspicuous surface,
merely because there are more of them than any other element.
The Examiner argues that the Appellants’ overall predominant surface
requirement can be met by the combination of the discrete passages (82) and
the smooth polymer surrounding them in Kramer’s Figure 6 (Ans. 12).
That argument is not well taken because the Appellants’ overall
predominant surface must be woven and Kramer’s smooth polymer is not
woven.
The Examiner argues that the combination of the upper and lower
surfaces in Kramer’s Figure 6 meets the Appellants’ overall predominant
woven background surface requirement because the entire lower surface of
Kramer’s fabric is woven and free of the polymer coating (Ans. 12).
That argument is not persuasive because the Appellants’ claims
rejected under 35 U.S.C. § 102(b) require that the predominant woven
background surface is a sheet-contacting surface, and Kramer’s lower
surface is not part of the sheet-contacting surface. Moreover, the lower
surface is not part of the surface containing a woven highlight area as
required by those claims.
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Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that Kramer discloses a papermaking fabric having a woven
background surface which is the overall predominant surface of the fabric
and contains a woven highlight area.
Rejections of claims 1, 2, 5, 6, 9, 12, 13, 16, 19, 25-27, 30, 31, 34, 37,
40, 43, 47 and 49 under 35 U.S.C. § 103 over Kramer and claims
2-6, 9, 13-18, 20, 27-31, 38-42 and 44 under 35 U.S.C. § 103
over Kramer in view of Rogers and Kuehn
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Kramer would have rendered prima facie obvious, to one
of ordinary skill in the art, a papermaking fabric having a woven background
surface which is the overall predominant surface of the fabric and contains a
woven highlight area surrounding a design element?
Analysis
The Appellants argue that a papermaking fabric with a textured woven
background surface and highlighted design elements would not have been
obvious over Kramer (Br. 6).
The Examiner points out that Kramer’s Figures 4-6 show various
degrees of exposure of the underlying fabric and argues that it would have
been obvious to one or ordinary skill in the art to use varying amounts of
polymer to create different designs (Ans. 12-13).
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In
making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
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employ.” KSR, 550 U.S. at 418. Kramer’s disclosures that the woven
background surface can be the overall predominant surface of the fabric
(Figs. 4 and 5) and can contain a highlight area surrounding a design
element (Fig. 6, letter “A” surrounded by a woven highlight area having a
larger grid size (different texture) than the woven background surface visible
through the discrete passages (82)) would have led one of ordinary skill in
the art, through no more than ordinary creativity, to combinations of woven
background surface, highlight areas and design elements including those
wherein the woven background surface is the overall predominant surface
and contains a design element surrounded by a highlight area.
Conclusion of Law
The Appellants have not indicated reversible error in the Examiner’s
determination that Kramer would have rendered prima facie obvious, to one
of ordinary skill in the art, a papermaking fabric having a woven background
surface which is the overall predominant surface of the fabric and contains a
woven highlight area surrounding a design element.
Rejection of claims 10, 11, 21, 35, 36 and 45 under
35 U.S.C. § 103 over Kramer in view of Burazin
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, replacing Kramer’s polymeric
resin with Burazin’s foam?

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Findings of Fact
Kramer applies the polymeric resin as droplets having an average
particle diameter of at least 10 microns using a piezojet array and partially
sets the polymeric resin either during its fall as drops or after it lands on the
substrate to prevent the polymeric resin from flowing and to maintain
control over the polymeric resin to ensure its deposition in the desired
pattern (¶¶ 0014, 0042).
Burazin discloses a tissue product made from a papermaking fabric
having multiple raised elements (108) that can have different cross sectional
shapes and can be extruded or applied as a foam (col. 28, ll. 42-46; col. 29,
ll. 9-11). The papermaking fabric can include additional topographical
elements (col. 30, ll. 25-33).
Analysis
The Appellants argue that it would not have been obvious to extrude
Burazin’s foam onto Kramer’s fabric surface because Kramer teaches that
the polymeric resin is applied using a piezojet array to deposit very small
droplets of polymer in a very controlled manner and Burazin’s process
would not provide the precision required by Kramer (Br. 8).
Burazin teaches that the raised elements provide a visually distinct
wet tissue web (col. 30, ll. 25-29). The Appellants’ argument that Burazin’s
technique would not provide the precision required by Kramer is
unsupported by evidence. Arguments of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); 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).
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Conclusion of Law
The Appellants have not indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, replacing Kramer’s polymeric
resin with Burazin’s foam.
Rejection of claims 23 and 24 under 35 U.S.C. § 103
over Kramer in view of Sears
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, using Kramer’s papermaking
fabric to form an air laid web?
Findings of Fact
Sears discloses that air laid techniques generally are used to form
absorbent products and that wet laid processes also may be used (col. 7,
ll. 15-20).
Analysis
The Appellants argue that Kramer’s Figure 6 belt would not have
sufficient permeability for air laying since the vast majority of the surface is
plugged by the polymeric resin and is impermeable to air and water (Br. 6).
The Appellants argue that Kramer’s fabric formed by attaching one or more
layers of a staple fiber batt to a base substrate also does not have sufficient
air permeability for air laying (Br. 6-7).
Kramer’s disclosure is not limited to the two embodiments relied upon
by the Appellants. Kramer also indicates that the majority of the fabric can
be the woven background surface (Figs. 4, 5). Hence we are not persuaded
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that the applied prior art would not have fairly suggested, to one of ordinary
skill in the art, a fabric having sufficient permeability for air laying.
Conclusion of Law
The Appellants have not indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, using Kramer’s papermaking
fabric to form an air laid web.
Rejection of claim 22 under 35 U.S.C. § 102(b)
or § 103 over Rogers or Kuehn
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that either Rogers of Kuehn discloses, or would have rendered
prima facie obvious, to one of ordinary skill in the art, a tissue sheet made by
the methods of the Appellants’ claim 1 or 12?4
Findings of Fact
Rogers and Kuehn are design patents. Rogers discloses a towel
having the design shown in the figures, and Kuehn discloses an embossed
paper product shown in the sole figure.
Analysis
The Appellants argue that “the product of claim 22 is not obvious
from the products of the cited references, which teach nothing about
different highlight areas having a different texture than the balance of the
surface (Br. 7).

4 Claim 22 is not rejected over the reference (Kramer) applied in the
rejection of claims 1 and 12.
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The Examiner points out what the Examiner considers to be the
highlight areas (Ans. 14). The Appellants have not explained why those
areas are not highlight areas, i.e., areas having a texture that is substantially
different in character than the surrounding background surface area or
having no texture (Spec. 3:19-23).
Conclusion of Law
The Appellants have not indicated reversible error in the Examiner’s
determination that either Rogers of Kuehn discloses, or would have rendered
prima facie obvious, to one of ordinary skill in the art, a tissue sheet made by
the methods of the Appellants’ claim 1 or 12.
DECISION/ORDER
The rejections of claims 1-6, 8-22, 25-31 and 33-49 under
35 U.S.C. § 112, second paragraph, and claims 1, 2, 5, 6, 9, 12, 13, 16, 19,
25-27, 30, 31, 34, 37, 40, 43, 47 and 49 under 35 U.S.C. § 102(b) over
Kramer are reversed. The rejections of claims 1, 2, 5, 6, 9, 12, 13, 16, 19,
25-27, 30, 31, 34, 37, 40, 43, 47 and 49 under 35 U.S.C. § 103 over Kramer,
claims 2-6, 9, 13-18, 20, 27-31, 38-42 and 44 under 35 U.S.C. § 103 over
Kramer in view of Rogers and Kuehn, claims 10, 11, 21, 35, 36 and 45
under 35 U.S.C. § 103 over Kramer in view of Burazin, claims 23 and 24
under 35 U.S.C. § 103 over Kramer in view of Sears, and claim 22 under
35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103 over Rogers
or Kuehn are affirmed.
It is ordered that the Examiner’s decision is affirmed-in-part.
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-IN-PART
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kmm

KIMBERLY-CLARK WORLDWIDE, INC.
TARA POHLKOTTE
2300 WINCHESTER RD.
NEENAH, WI 54956