10462965 (B.P.A.I. Jan. 30, 2009)

Ex Parte Vinson et al

Board of Patent Appeals and InterferencesJan 30, 2009

10462965 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KENNETH DOUGLAS VINSON, JONATHAN ANDREW FICKE, KHOSROW PARIZ MOHAMMADI, ROBERT MICHAEL BOURBON, and PAUL JOSEPH COFFARO ____________ Appeal 2008-6089 Application 10/462,965 Technology Center 1700 ____________ Decided: January 30, 2009 ____________ Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and LINDA M. GAUDETTE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1-16, the only claims pending in the Application. (Appeal Brief filed July 23, 2007 (“Br”), Status of Claims.) We have jurisdiction under 35 U.S.C. § 6(b).1 We AFFIRM. 1 An oral hearing was held on January 14, 2009. Appeal 2008-6089 Application 10/462,965 Claim 1 is illustrative of the invention and is reproduced below: 1. A method for treating a fibrous structure in need of treatment, the method comprising the steps of: a. providing a transfer surface comprising a treating composition comprising a chemical additive, wherein the treating composition is releasably associated with the transfer surface; b. providing a fibrous structure; c. contacting the fibrous structure with the transfer surface such that the chemical additive is transferred to the fibrous structure, wherein a speed differential exists between the transfer surface and the fibrous structure. The Examiner relies on the following prior art references to show unpatentability: Ficke 6,126,784 Oct. 3, 2000 Bakken 6,949,166 B2 Sep. 27, 2005 Appellants request review of the sole ground of rejection: claims 1-16 under 35 U.S.C. § 103(a) as unpatentable over Ficke in view of Bakken.2 Appellants do not present specific arguments directed to any of dependent claims 2-16 (see App. Br. 4, last sentence). Accordingly, we decide the appeal on the basis of independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2006). ISSUE Have Appellants shown reversible error in the Examiner’s determination that Ficke inherently discloses a speed differential as claimed? 2 The Examiner has withdrawn the final rejection of claims 1-16 under 35 U.S.C. § 103(a) as unpatentable over Ficke in view of Drew. (Answer mailed October 31, 2007 (“Ans.”) 2.) 2 Appeal 2008-6089 Application 10/462,965 We answer this question in the negative for essentially those reasons stated in the Examiner’s Answer, and further explained below. FINDINGS OF FACT 1. The Examiner finds that Ficke teaches a process in which a chemical additive is deposited on a first side of a fibrous web (Ans. 3). (See Ficke, col. 29, ll. 8-9.) The Examiner further finds that Ficke discloses winding the fibrous web into a roll such that the chemical additive is transferred from the first side of the fibrous web (i.e., “a transfer surface” as recited in appealed claim 1) to the second side of the fibrous web (i.e., “a fibrous structure” as recited in appealed claim 1). (Ans. 3.) (See Ficke, col. 32, ll. 1-9.) 2. The Examiner concedes that Ficke does not explicitly teach Appellants’ claimed “speed differential” (claim 1), but notes “Ficke et al. teach that when the web is being wound into the roll, shearing forces exist” (Ans. 5). (See Ficke, col. 32, ll. 26-31.) The Examiner thus contends that a speed differential inherently exists in Ficke’s method, based on Bakken’s disclosure that “shear forces are created by a surface speed differential” (Ans. 5). (See Bakken, col. 5, l. 65- col. 6, l. 3.) 3. Appellants argue that “[i]t is impossible for a speed differential to exist in Ficke’s process since the transfer surface and its web are one in the same.” (App. Br. 4.) However, Appellants concede that “Bakken sees a speed differential between the surfaces of the fibrous structure” (App. Br. 4), and Appellants have not provided evidence to refute the Examiner’s finding (see Ans. 7) that a similar speed 3 Appeal 2008-6089 Application 10/462,965 differential would inherently exist between the surfaces of Ficke’s web (see App. Br. in its entirety). 4. Appellants further contend that “the Examiner has incorrectly concluded that the shear forces created in Ficke’s process MUST result from a speed differential between a transfer surface and its web” (App. Br. 3), noting that “[s]hear forces can exist in the absence of a speed differential between a transfer surface and a web” (App. Br. 3-4.) 5. Appellants have not identified any evidence of record which supports their contention that the shear forces existing in Ficke are due to something other than a speed differential (see App. Br. in its entirety). PRINCIPLES OF LAW “[W]hen the prior art evidence reasonably allows the PTO to conclude that a claimed feature is present in the prior art, the evidence ‘compels such a conclusion if the applicant produces no evidence or argument to rebut it.’” In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004) (quoting In re Spada, 911 F.2d at 708 n.3 (Fed. Cir. 1990)). “[A]ttorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997). ANALYSIS The relied-upon prior art supports the Examiner’s determination that a speed differential, as recited in the appealed claims, is inherently present in Ficke’s process (see FF 1, 2). The burden was thus shifted to Appellants to establish the contrary. Appellants’ arguments alone (see FF 3-5), however, 4 Appeal 2008-6089 Application 10/462,965 do not constitute the type of persuasive evidence required to meet this burden. CONCLUSION Appellants have not identified reversible error in the Examiner’s finding that Ficke inherently discloses a speed differential as claimed. We determine that a preponderance of the evidence favors the Examiner’s conclusion of obviousness. Therefore, we sustain the rejection of claims 1- 16 under 35 U.S.C. § 103(a) as unpatentable over Ficke in view of Bakken. 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 tc/cam THE PROCTER & GAMBLE COMPANY GLOBAL LEGAL DEPARTMENT-IP SYCAMORE BUILDING - 4TH FLOOR 299 EAST SIXTH STREET CINCINNATI, OH 45202 5