Ex Parte Scherb et al

Board of Patent Appeals and Interferences

Jan 26, 2009

10299781 (B.P.A.I. Jan. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS THOROE SCHERB
and LUIZ CARLOS DA SILVA
____________

Appeal 2008-4402
Application 10/299,781
Technology Center 1700
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Decided: January 26, 2009
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Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Primary Examiner’s rejection
of claims 1-25.1 Although the rejection appealed is from a non-final

1 Appellants indicated that claims 26-57 and 59-76 have been withdrawn
from consideration and that the subject matter of claim 77 has been indicated
as containing allowable subject matter. (App. Br. 5).

Appeal No. 2008-4402
Application 10/299,781

rejection, we have jurisdiction under 35 U.S.C. §§ 6 and 134 since the
claims on appeal have been twice presented and rejected. See Ex parte
Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1998).2
Appellants’ invention relates to a process for producing a fibrous web
such as a tissue or hygienic product. (Spec. [002]). Independent claim 1 is
reproduced below:
1. A process of producing a fibrous web in an apparatus that includes at
least one nip formed between a smooth roll and at least one opposing
element, a felt and an embossing belt, the process comprising:

guiding the fibrous web and the felt through the at least one press nip
formed between the smooth roll and the at least one opposing element;

passing the fiber web, in an unsupported manner, over a free draw from
the smooth roll onto an embossing belt; and

sucking the fibrous web into a surface structure of the embossing belt.

Claims 1-25 stand rejected as follows:
A) Claims 1-4 and 7-25 rejected under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative under 35 U.S.C. § 103(a) as obvious over
Hostetler, U.S. Patent No. 4,356,059 patented October 26, 1982.
B) Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hostetler .

2 In rendering this decision, we have considered the Appellants’ arguments
presented in the Appeal Brief dated July 13, 2007 and the Reply Brief dated
December 12, 2007. An Oral Hearing for this Appeal was held on
November 5, 2008.
Appeal 2008-4402
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3

We have thoroughly reviewed each of Appellants’ arguments for
patentability.3 However, we are in complete agreement with the Examiner
that the claimed subject matter is not patentable within the meaning of §§
102 and 103 in view of the applied prior art. Accordingly, we will sustain
the Examiner’s rejections.
Appellants contend that Hostetler does not disclose embossing
through suction, but merely employs a suction roll as an expedient to assist
in transferring the web onto the embossing belt. (Br. 10). Regarding claim
5, Appellants contend that Hostetler does describe the “free draw” distance
and does not support the § 103 rejection. (Br. 23).
The issue presented is: did Appellants identify reversible error in the
Examiner’s rejection of claim 1 under § 102 and claim 5 under § 103? We
answer these questions in the negative. The first issue turns on whether the
Examiner has made out a prima facie case sufficient to shift the burden of
proof to Appellants to show that Hostetler does not describe, either explicitly
or inherently, sucking the fibrous web on to a surface structure of the
embossing belt as specified in claim 1. The second issue is whether a person

3 We select claim 1 as representative of the first group of rejected claims.
Appellants have asserted that several claims are allowable for the same
reason as the independent claim and further because of the additional
features of the dependent claim. The mere identification of the additional
features of the dependent claims, when the Examiner has determined that the
reference discloses or suggests these limitations, is not a separate argument
and does not show error. 37C.F.R. § 41.37(c)(1)(vii). Thus, we select claim
1 as representative of the first group of rejected claims and claim 5 as
representative of the second group of claims. As indicated below, we have
considered all separate arguments for patentability of the rejected claims.
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4
of ordinary skill in the art would have selected a “free draw” distance that
falls within the scope of the invention specified in claim 5.
OPINION
We determine the following Findings of Fact (FF) from the record
presented in this appeal:
(1) Appellants acknowledge that Hostetler discloses a suction
roll (32) can be utilized for transferring the web into
contact with the imprinting (embossing) fabric (30) loop.
(Hostetler 2, ll. 43-57; App. Br. 10).
(2) The Specification does not provide a specific definition for
the phrase “free draw.” However, it appears from the
discussion in the present Specification that the “free draw”
refers to the distance between the smooth roll and the
embossing belt from which the fibrous web travels in an
unsupported manner during the transfer from the smooth
roll onto an embossing belt. Specifically, the Specification
states “[t]he process includes guiding the fibrous web and
the felt through the at least one press nip formed between
the smooth roll and the at least one opposing element, and
passing the fiber web, in an unsupported manner, over a
free draw from the smooth roll onto an embossing belt.”
(Spec. [0028]).
(3) The Specification discloses the distance of the free draw
should be provided so as to have stable guidance during
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5
the transfer from the smooth roll to the embossing belt.
(Spec. [0006]).
Anticipation under 35 U.S.C. § 102 requires that a prior art reference
sufficiently describe the claimed invention to have placed the invention in
the possession of the public. See Minnesota Mining & Mfg. Co. v. Johnson
& Johnson Orthopaedics, Inc., 976 F.2d 1559, 1572 (Fed. Cir. 1992).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966). “[A]nalysis [of whether the
subject matter of a claim is obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l. Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1740-41 (2007), see also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006)
(“The motivation need not be found in the references sought to be combined,
but may be found in any number of sources, including common knowledge,
the prior art as a whole, or the nature of the problem itself.”); In re Bozek,
416 F.2d 1385, 1390 (CCPA 1969) (“Having established that this knowledge
was in the art, the examiner could then properly rely, as put forth by the
solicitor, on a conclusion of obviousness ‘from common knowledge and
common sense of the person of ordinary skill in the art without any specific
hint or suggestion in a particular reference.’”).
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6
Where the Examiner establishes a reasonable belief that the property
or characteristic recited in the claims would have been inherent to the
product or process, the burden of proof shifts to Appellants to show that this
characteristic or property is not possessed by the prior art. See In re Best,
562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990).
Applying the preceding legal principles to the Factual Findings (FF)
in the record of this appeal, we determine that the Examiner has established
a prima facie case of anticipation and obviousness. The Examiner has
established (FF 1) that Hostetler describes a suction roll (32) can be utilized
for transferring the web into contact with the imprinting (embossing) fabric
(30) loop. Appellants have acknowledged this teaching in the Hostetler
reference. Thus, the present record establishes that Hostetler necessarily
describes a process of producing a fibrous web in an apparatus that includes
a suction roll for transferring the fibrous web into contact with an imprinting
fabric.
Appellants argue that “HOSTETLER does not disclose embossing
through suction, but merely employs a suction roll as an expedient to assist
in transferring the web onto the embossing belt.” (Br. 10). The claimed
invention does not require embossing through suction. Rather claim 1
specifies that sucking is utilized for transferring the fibrous web into the
surface structure of the embossing belt. In any event, Appellants have not
directed us to objective evidence that establishes that Hostetler does not
achieve some embossing upon transferring of the web on to the embossing
belt. It is noted that the claimed invention does not provide a degree of
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embossing that is achieved when transferring the fibrous web. Where the
Examiner establishes a reasonable belief that the property or characteristic
recited in the claims would have been inherent to the product or process of
the prior art, the burden of proof shifts to Appellants to show that this
characteristic or property is not possessed by the prior art. See In re Best,
In re Spada, supra. Appellants have failed to provide evidence that
establishes that Hostetler does not have the claimed characteristics.
In view of our determination that the Examiner correctly rejected
claim 1 under 35 U.S.C. § 102, the rejection under § 103 also is correct.
In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (“[E]vidence establishing
lack of all novelty in the claimed invention necessarily evidences
obviousness.”).
Regarding the rejection of claims 5 and 6 under 35 U.S.C. § 103(a),
we affirm these rejections advanced by the Examiner. The Examiner
properly concluded that the subject matter of claim 5 would have been
obvious to a person of ordinary skill in the art. As set forth above, FF (2),
the Specification does not provide a specific definition for the phrase “free
draw.” However, it appears from the discussion in the present Specification
that the “free draw” refers to the distance between the smooth roll and the
embossing belt from which the fibrous web travels in an unsupported
manner during the transfer from the smooth roll onto an embossing belt.
There is no dispute that the apparatus of Hostetler comprises a “free draw”
between the smooth roll and the embossing belt from which the fibrous web
travels in an unsupported manner during the transfer from the smooth roll
onto an embossing belt. A person of ordinary skill in the art would have
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understood that efficient operation of the fibrous web producing apparatus
would have required the forming web to have smooth transitions between
the various components of the apparatus. The Specification (FF (3))
acknowledges that the distance of the free draw should be provided so as to
have stable guidance during the transfer from the smooth roll to the
embossing belt.
It is an axiomatic that where patentability is predicated upon a change
in a condition or configuration of a prior art element, such as a change in
free draw distance of the fibrous web producing apparatus, the burden is on
the Appellants to establish by objective evidence that the change is critical,
i.e., it leads to a new, unexpected result. In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). In the
present case, Appellants have not established on this record that the free
draw within the scope of the appealed claim achieves a new, unexpected
result regarding the continuous production of a fibrous web. As such,
Appellants have not rebutted the prima facie case of obviousness established
by the Examiner.
For the foregoing reasons and those stated in the Answer, we affirm
all grounds of rejection presented in this appeal.
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Application 10/299,781

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ORDER
The rejections of claims 1-25 are 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)(1)(iv).
AFFIRMED

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