Ex parte Rajala et al.

Board of Patent Appeals and Interferences

Jun 12, 1998

08452747 (B.P.A.I. Jun. 12, 1998)

Application for patent filed May 30, 1995. According to1
the appellants, the application is a division of Application
No. 08/382,109, filed January 31, 1995, now U.S. Patent No.
5,552,007.
Independent claim 68 and dependent claim 70 were amended2
subsequent to the final rejection. As a result of those
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GREGORY J. RAJALA, GERALD L. RABE,
PAUL M. NIEMI and DONALD J. HOLEWINSKI
____________
Appeal No. 97-3065
Application No. 08/452,7471
____________
ON BRIEF
____________
Before MEISTER, McQUADE, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 68, 70, 71, 73 to 76, 79, 83 and 96 to 98,
which are all of the claims pending in this application.2
Appeal No. 97-3065
Application No. 08/452,747
amendments, the examiner withdrew the rejection under 35
U.S.C. § 112, second paragraph.
We REVERSE and enter new rejections pursuant to 37 CFR
§ 1.196(b).
Appeal No. 97-3065 Page 3
Application No. 08/452,747
This reference was cited by the appellants in their3
Information Disclosure Statement (Paper No. 3) and a copy is
of record in the application file. While this reference is
undated, we take the appellants submission of the reference
and their discussion of coatings from Plasma Coatings Inc.
(specification, page 12, lines 30-36) as an admission that the
reference is prior art to their invention.
BACKGROUND
The appellants' invention relates to an apparatus for
transporting a continuous web. An understanding of the
invention can be derived from a reading of exemplary claim 68,
which appears in the appendix to the appellants' brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Beaudoin et al. (Beaudoin) 4,925,520 May 15,
1990
An additional reference of record relied on by this panel
of the Board is:3
On Site Technical Data Sheet: 900 Release/Traction Series,
Plasma Coatings, Inc. (Plasma)
Reference made of record by this panel of the Board is:
Appeal No. 97-3065 Page 4
Application No. 08/452,747
Ales et al. (Ales) 4,726,873 Feb. 23,
1988
Claims 68, 70, 71, 73 to 76, 79, 83 and 96 to 98 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Beaudoin.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the examiner's answer (Paper
No. 12, mailed March 31, 1997) for the examiner's complete
reasoning in support of the rejection, and to the appellants'
brief (Paper No. 11, filed March 3, 1997) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art reference, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
Appeal No. 97-3065 Page 5
Application No. 08/452,747
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 68, 70, 71, 73
to 76, 79, 83 and 96 to 98 under 35 U.S.C. § 103. Our
reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
Appeal No. 97-3065 Page 6
Application No. 08/452,747
to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections
based on § 103 must rest on a factual basis with these facts
being interpreted without hindsight reconstruction of the
invention from the prior art. The examiner may not, because
of doubt that the invention is patentable, resort to
speculation, unfounded assumption or hindsight reconstruction
to supply deficiencies in the factual basis for the rejection.
See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
With this as background, we analyze the prior art applied
by the examiner in the rejection of the claims on appeal.
Beaudoin discloses an apparatus for applying an elastic
waistband transversely of a longitudinally moving web. Figure
3 shows the general arrangement of the parts of the apparatus
for
applying elastic waistbands transversely of a moving web. The
principal components of the elastic waistband applicator are a
Appeal No. 97-3065 Page 7
Application No. 08/452,747
vacuum roll or drum 20, an elastic segment transfer device 21,
a backup member in the form of an elastomer coated transfer
roll 22, a segment pressing element 23 and a knife roll 24
near the top of the drawing. A ribbon of elastic material 14A
is fed onto the periphery of vacuum drum 20. The knife roll
24 rotates with the periphery of vacuum drum 20 and uses the
drum as an anvil for cutting individual segments 14 from
elastic ribbon 14A. The segments are carried rotationally on
vacuum drum 20 until they reach a lowermost position where
they are picked off of the vacuum drum 20 by segment transfer
means 21 which stretches the segments and transfers them to
sheet 13 which runs over transfer roll 22 which serves as a
backup member for the sheet or web when an elastic ribbon
segment is being pressed onto it. Roll 22
is provided with a silicone rubber cylindrical sleeve 35 which
inhibits slipping between sheet 13 and the roll 22 and
provides resiliency for pressing the segment on the sheet.
Figures 11-13 show another implementation of the
stretch-while-rotating concept in which the elastic segment
stretching and transferring device 21 is shown isolated from
Appeal No. 97-3065 Page 8
Application No. 08/452,747
the diaper fabricating machine but it will be understood that
it will be positioned between vacuum drum 20 and sheet 13
which overlays backup roll 22 as previously described with
respect to Figure 3. Referring to Figure 11, the transfer
device comprises a rotor generally designated by the numeral
125. A pair of grippers 126 and 127 are mounted in rotor 125.
Gripper 126 is fixed in the rotor. Gripper 127 is slidable
axially. As shown in Figure 13, there is another pair of
grippers 128 and 129 diametrically opposite on the rotor from
grippers 126 and 127. Gripper 128 is fixed in the rotor and
gripper 129 is reciprocable axially relative to fixed gripper
128. The grippers are provided with a plurality of vacuum
ports 130 and 136. The grippers have a plurality of rather
sharp elements such as pins 132 and 138 adjacent the vacuum
ports to supplement the gripping force on the elastic segment
which force is created by the vacuum ports. The operation of
the transfer device of Figures 11-13 will now be briefly
described. In Figure 13, the rotor is at a rotational
position wherein stationary gripper 126 and its cooperating
movable gripper 127 are both engaged with an unstretched
elastic segment and are about to strip the segment 14 from
Appeal No. 97-3065 Page 9
Application No. 08/452,747
vacuum drum 20 due to rotation of the rotor. As the rotor
continues to rotate, the gripper 127 is separated from gripper
126 causing the elastic segment 14 to be stretched. When the
grippers arrive in the
position in which grippers 128 and 129 are presently shown,
elastic segment 14 is stretched to its desired limit and is
overlaying sheet 13 to which it is applied by the grippers.

Claim 68 recites an apparatus for transporting a
continuous web comprising, inter alia, a first rotary
transport device and a second rotary transport device disposed
in working relationship with the first rotary transport
device. The first rotary transport device has a first outer
working surface having a first set of protuberances thereon.
The second rotary transport device has a second outer working
surface having a second set of protuberances thereon. The
first and second outer working surfaces are aligned with each
other at a locust of closest approach.
The examiner determined (answer, page 4) that
Appeal No. 97-3065 Page 10
Application No. 08/452,747
[c]laims 68, 70, 71, 73-76, 79, 83, and 96-98 differ from
Beaudoin et al in that the claims set forth the use of
two rotary transport devices in order to convey the
elastic web. Beaudoin et al teach the conveyance of an
elastic web via two rotary transport devices, one of
which comprising the limitations of the rotary transport
device as set forth in claim 68.
The examiner then concluded (answer, page 5) that
[i]t would have been obvious to one of ordinary skill in
the art to replace the vacuum drum with another transport
device (125) as taught by Beaudoin et al, in order to
engage the elastic web on both sides to ensure that the
web width tension is maintained as it travels from one
roller to another.
The appellants argue (brief, pages 7-9) that Beaudoin
does not teach or suggest the claimed invention and that the
examiner has used impermissible hindsight to derive the
claimed invention. We agree. We see no motivation in the
applied prior art of why one skilled in the art would have
modified the device of Beaudoin to make the modifications
necessary to arrive at the claimed invention. There is no
need for the vacuum drum 20 of Beaudoin to have thereon a
means for stretching the segments 14 as in his rotor 125 since
the segments on vacuum drum 20 are maintained in an
unstretched state. Thus, the examiner has failed to meet the
Appeal No. 97-3065 Page 11
Application No. 08/452,747
Note In re Rijckaert, supra; In re Lintner, supra; and4
In re Fine, supra.
In re Fine, supra; In re Warner, supra.5
initial burden of presenting a prima facie case of
obviousness. Thus, we cannot sustain the examiner's4
rejection of claims 68, 70, 71, 73 to 76, 79, 83 and 96 to 98
under 35 U.S.C. § 103.5
New grounds of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection.
35 U.S.C. § 112, first paragraph
Claim 98 is rejected under 35 U.S.C. § 112, first
paragraph, as the specification, as originally filed, does not
provide support for the invention as is now claimed.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
Appeal No. 97-3065 Page 12
Application No. 08/452,747
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983).
Claim 98 recites that "said first and second substrate is
primarily a metallic coating applied to said first and second
rotary transport devices using a high temperature application
process."
The original disclosure provides no description as to the
composition of the substrate 44. However, the original
disclosure does describe (page 12, lines 30-33) that the
coating 48 is applied as a generally metallic composition, by
plasma or other high temperature application process. Thus,
the disclosure of the application as originally filed would
not have reasonably conveyed to the artisan that the inventor
had possession at that time of the later claimed subject
matter (i.e., that the "substrate" is primarily a metallic
Appeal No. 97-3065 Page 13
Application No. 08/452,747
This rejection would be overcome by amending "substrate6
is" in claim 98 to be --outer working surfaces are--.
Claim 98 has been included in this rejection based upon7
our belief that the appellants will amend claim 98 as proposed
above to overcome the 35 U.S.C. § 112, first paragraph,
rejection.
coating applied to the first and second rotary transport
devices using a high temperature application process).6
35 U.S.C. § 103
Claims 68, 70, 71, 73 to 76, 79, 83 and 96 to 98 are7
rejected under 35 U.S.C. § 103 as being unpatentable over Ales
in view of Plasma.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Moreover, in
evaluating such references it is proper to take into account
not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be
Appeal No. 97-3065 Page 14
Application No. 08/452,747
expected to draw therefrom. In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
Ales discloses an apparatus for applying contoured
elastic to a substrate. The operation of the apparatus 70
will be described with reference to Figures 4, 5 and 6. A
backing sheet for a garment is supplied from source 76 as
sheet 100. Sheet 100 is fed to the forming drum 102. Forming
drum 102 is preferably provided with a vacuum source such that
the web 100 is securely adhered thereto by the vacuum being
drawn through a series of holes in the outer surface 104 of
the drum. Instead
of vacuum, Ales teaches that it is possible to hold the web in
place by needles piercing the material at the edge or by a
tenter frame. The web 100 adhered to drum 102 then passes
beneath the first pin applicator roll 78 to which is fed in a
straight line two strips of stretched self-adhering elastic
106 and 108. These strips of elastic are applied to the rim
78 below rollers 110 and 112 and are formed in rings around
pins 114 by cutting and adhering devices 116 and 118. When
the rings of elastic 120
Appeal No. 97-3065 Page 15
Application No. 08/452,747
pass through the nip 122 the pins 114 are retracted, and the
elastic 120 is adhered to web 100. The web 100 bearing ring
120 is then moved as drum 102 rotates beneath the second pin
drum roll 80. In a similar manner pin drum roll 80 applies
two strips of self-adhering elastic 124 and 126 to the drum 80
where it is applied around pins 128 with sealing together of
the strips 124 and 126 by the nipping/cutting apparatus 130
and 132. Rings of elastic 134 are formed which at nip 136 are
transferred to sheet 100. The rotation of the product-forming
drum 102 then brings the web bearing the double ring of
elastics 134 and 120 to the point of application of sheet 90
that covers the exposed self-adhering elastic so that the web
may be handled. The composite then is formed as the sheet 90
is adhered to the exposed elastic adhesives by contoured
pressure rollers 148 and 150. The elasticized composite is
removed by being drawn over roller 152 and brought to the die
cutters 192 composed of rolls 154 and 156. These cutting
rolls remove the portion within elastic loops or bands 120 and
134 to leave hole 158. The composite then may be cut into
blanks for immediate conversion to articles or may be rolled
for later conversion.

Appeal No. 97-3065 Page 16
Application No. 08/452,747
Plasma discloses a coating material that provides wear
resistance, excellent release and excellent web tracking
properties. Plasma teaches that their coating is used to
replace "cured fluorocarbons, silicone coatings/tapes, Teflon®
tape/sleeve, rubber coverings and chrome plating." Plasma
also discloses that their coating can be applied to laminator
rolls, oven rolls and idler rolls.
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Ales and the claims
under appeal, it is our opinion that the only difference is
that the outer working surfaces of drum 102 and roller 152 do
not have the claimed protuberances thereon.
In our opinion, it would have been obvious to one of
ordinary skill in the art at the time the invention was made
to have coated the outer working surfaces of drum 102 and
Appeal No. 97-3065 Page 17
Application No. 08/452,747
roller 152 of Ales with a coating as taught by Plasma to
provide wear resistance, excellent release and excellent web
tracking properties. We note that while Plasma does not
specifically set forth that the coatings provide protuberances
(claim 68), the release agent (claims 70, 71, 73 and 96), or
that the coating is metallic (claim 98), it is our view based
upon the appellants' admissions made on pages 12-13 of the
specification, that these limitations are inherently met by
the coatings disclosed by Plasma. With regard to the claimed
amount of shrinkage permitted (claims 75, 76 and 79, it is our
determination that such limitations are also inherently met by
the above-noted modification of Ales.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 68, 70, 71, 73 to 76, 79, 83 and 96 to 98 under 35
U.S.C. § 103 is reversed and new rejections of claim 98 under
35 U.S.C. § 112, first paragraph, and claims 68, 70, 71, 73 to
76, 79, 83 and 96 to 98 under 35 U.S.C. § 103 have been added
pursuant to provisions of 37 CFR § 1.196(b).
Appeal No. 97-3065 Page 18
Application No. 08/452,747
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, "A new ground of rejection shall not
be considered final for purposes of judicial review."

37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 97-3065 Page 19
Application No. 08/452,747
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-3065 Page 20
Application No. 08/452,747
DONALD L. TRAUT
KIMBERLY CLARK CORPORATION
PATENT DEPARTMENT
401 NORTH LAKE STREET
NEENAH, WI 54956
APPEAL NO. 97-3065 - JUDGE NASE
APPLICATION NO. 08/452,747
APJ NASE
APJ McQUADE
APJ MEISTER
DECISION: REVERSED;
37 CFR § 1.196(b)
Prepared By: Delores A. Lowe
DRAFT TYPED: 09 Jun 98
FINAL TYPED: