Ex Parte Yu

Board of Patent Appeals and Interferences

Sep 16, 2010

11063764 (B.P.A.I. Sep. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FU-LAI YU
____________

Appeal 2010-000812
Application 11/063,764
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3, 5-10, 13-15, and 18-20. We have

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 2010-000812
Application 11/063,764

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jurisdiction pursuant to 35 U.S.C. § 6. Oral arguments were presented
September 01, 2010.
Appellant’s claimed invention is directed to a method and apparatus
for making an expandable honeycomb structure suitable for a window
covering. The process includes, in order, the steps of: (1) folding a ribbon
of material to form a preform, (2) supplying the perform to a cutter wherein
preform partial cutting or perforation is conducted to define a row member,
(3) continuous application of at least one adhesive line to the row member,
(4) separating the row member from the preform, (5) conveying the
separated row member including the adhesive to a stacker, and then (6)
stacking the row member with other row members (see independent claims 1
and 15). The apparatus includes equipment arranged for conducting such a
process (see independent claim 10). The Specification makes it clear that
perforation of the web comprises a partial cutting thereof (Spec. 4, ll. 19-22).
Claim 1 is reproduced below:
1. A method for making an expandable honeycomb
structure suitable for a window covering, the method
comprising:

providing a preform mode by folding a ribbon of material
to a cutter, wherein the cutter perforates the preform to define a
row member;

continuously applying at least one line of adhesive to the
row member at a point downstream of the cutter;

separating the row member from the preform after
applying the adhesive to the row member;

conveying the row member including the adhesive to a
stacker; and
Appeal 2010-000812
Application 11/063,764

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stacking the row member with other row members before
conveying a second row member to the stacker, and bonding
the row member with the other row members as the row
member is stacked.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Ruggles 5,441,592 Aug. 15, 1995
Palmer 6,527,895 B1 Mar. 4, 2003
Hull 2004/0194878 A1 Oct. 7, 2004

The Examiner maintains the following grounds of rejection:
Claims 1, 3, 5-8, 10, 13, 15, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ruggles in view of Hull. Claims 9, 14,
and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Ruggles in view of Hull and Palmer.
A principal issue before us is:
Has the Examiner reasonably established that one of ordinary skill in
the art would have been prompted to modify the honeycomb insulation
material manufacturing method and/or apparatus of Ruggles with the web
sectioning method taught by Hull to control registration in Ruggles and do
so in a manner that would result in Appellant’s claimed process and/or
apparatus?
We answer this question in the negative and we reverse both
rejections.
Ruggles is directed to a method and apparatus for making honeycomb
insulating material, such as may be useful as a window shade. Ruggles
discloses folding a web of material forming a flat tubular configuration
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(preform) and applying adhesive to the folded material. Cutting, stacking
and conveying steps are all involved in the process of forming such a
honeycomb product (see Fig. 3 and accompanying text of Ruggles).
Ruggles prefers severing a strip from the folded web in a cutting operation
after application of adhesive to a top of the tubular web (col. 3, ll. 8-13). In
a non-preferred arrangement, Ruggles discloses that the cutting step involves
severing a strip from the web before adhesive application to the severed strip
of the folded web (col. 3, ll. 8-27).
Hull discloses a method of furnishing individual sheets from a web
wherein a line of weakness comprising perforations and scores is provided
across a web length and, thereafter, a force is applied to separate an
individual sheet from the web at the line of weakness (Hull, paras. 0007-
0010). According to Hull, the perforated and scored web can maintain
registration when transferred to subsequent positions in the process and
thereafter separation of a discrete section may take place (paras. 0022, 0037,
and 0038). Hull does not teach applying adhesive to a perforated web prior
to separation of a sheet from the web.
Concerning the first stated obviousness rejection, the Examiner
acknowledges that Ruggles does not disclose a partial cutting (perforation)
step followed by applying continuous adhesive line(s) and with subsequent
separation of the partially severed row member carrying the adhesive line(s)
from the rest of the preform as claimed (Ans. 4).2

2 The Examiner applies the prior art to the claimed apparatus in a manner
corresponding to the Examiner’s application of the prior art to the claimed
method (Ans. 3-6).
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The Examiner relies on Hull for allegedly teaching Appellant’s
claimed perforation (partial cutting/separation) step performed on a web of
material followed by a final separation step along the partial cutting line so
as to minimize or prevent loss of registration (Ans. 4-6; Hull, paras. 0018-
0027). According to the Examiner:
It would have been obvious to one of ordinary skill in the
art [at the time of the invention] to have modified the method
and apparatus of Ruggles et al. for making honeycomb
insulating material for covering windows by providing each of
the row members by first perforating and scoring the preform
web then after applying the continuous bands of adhesive,
separating each row member by accelerating the row member,
as taught by Hull, Jr. et al., as an alternative to cut and place
systems and that is a simple yet effective method of controlling
the registration of raw materials in a continuous process that
minimizes the force required for final separation, which results
in registration being never lost.
Ans. 5.
However the Examiner’s explanation falls short in identifying a
persuasive rationale based on Hull’s teachings respecting registration issues
addressed in Hull’s method and system as a basis for modifying the
disparate honeycomb manufacturing system and method of Ruggles. As
Appellant argues, the Examiner has not pointed to where Ruggles teaches or
suggests, nor has the Examiner otherwise established, that the registration
issues Hull addresses were likewise a concern or problem in the apparatus
and method of forming Ruggles’ honeycomb insulation material (App. Br.
7-14; Reply Br. 7-9).
The Examiner’s speculation about the reach of Hull’s teachings does
not establish that one of ordinary skill in the art would have been led to
modify Ruggles’ method and apparatus based on the individual sheet
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Application 11/063,764

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formation techniques of Hull, much less doing so in a manner that would
have also prompted an adhesive application modification to Ruggles’
teachings – a modification that would have resulted in the claimed process
and apparatus wherein a continuous line of adhesive is applied to a row
member after perforation of a folded preform but before separation of the
row member from the preform (App. Br. 12-14).
In this regard and as noted above, Ruggles discloses severing a ribbon
or web of material after folding the web to yield a tubular preform and prior
to an adhesive application step as a non-preferred option. Ruggles prefers
adhesive application prior to cutting the web and the Examiner has not
established that Ruggles partially cuts the web. Hull is not particularly
directed to adhesive application methods to a web, and does not teach
processing a folded web and/or teach a particular adhesive application step
involving a perforated web that is conducted prior to separating an
individual sheet from the web.
The Examiner has not reasonably established that the perforation and
scoring technique of Hull would have been found to be applicable to the
processing of the tubular folded web of Ruggles by one of ordinary skill in
the art, a folded web form that is required to be treated with an adhesive line
for subsequent stacking of severed strips, as required in the manufacturing
method of Ruggles.
The Examiner additionally relies on Palmer for allegedly teaching
features related to limitations added by dependent claims 9, 14, and 20 in the
second stated rejection, not to address the aforementioned deficiencies in the
combination of Ruggles and Hull.
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Application 11/063,764

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On this record, we agree with Appellant that the Examiner’s rejections
appear to be premised on impermissible hindsight garnered from Appellant’s
Specification rather than the applied prior art teachings (App. Br. 5, 11-16;
Reply Br. 10-13).
CONCLUSION/ORDER
The Examiner’s decision to reject claims 1, 3, 5-8, 10, 13, 15, 18, and
19 under 35 U.S.C. § 103(a) as being unpatentable over Ruggles in view of
Hull; and to reject claims 9, 14, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Ruggles in view of Hull and Palmer is reversed.

REVERSED

kmm

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