SCA HYGIENE PRODUCTS AB

Patent Trials and Appeals Board

Sep 2, 2020

2019005194 (P.T.A.B. Sep. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/438,443 04/24/2015 Bjorn LARSSON 1018798-000805 6352
105718 7590 09/02/2020
ESSITY HYGIENE AND HEALTH AKTIEBOLAG
c/o Buchanan Ingersoll & Rooney, PC
1737 King Street, Suite 500
Alexandria, VA 22314
EXAMINER
DONG, LIANG
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
09/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BJORN LARSSON, PER MOLLER, DAVID SAHLIN, and
LARS THOREN
Appeal 2019-005194
Application 14/438,443
Technology Center 3700
Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 5–24. We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R.
§ 41.47 was held on August 18, 2020.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Essity
Hygiene and Health AB. Appeal Br. 2.
Appeal 2019-005194
Application 14/438,443
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CLAIMED SUBJECT MATTER
The claims are directed to “a separation unit for separating a
perforated web material such as paper towels, tissue paper, or nonwoven
material along perforation lines.” Spec. 1:3–5. Claim 1, reproduced below,
is illustrative of the claimed subject matter.
1. A separation unit for separating a web material along
preformed lines of weakness, said separation unit having a
width direction and comprising
at least a first roller having a rotational axis extending in
said width direction and a web width extending in said width
direction, and
at least a second roller having a rotational axis extending
parallel with said rotational axis of said first roller and a web
width extending in said width direction, said rotational axis
of said second roller being positioned at a distance from said
rotational axis of said first roller, said distance extending in a
direction perpendicular to said width direction,
wherein each of said first and said second rollers is
provided with at least one protrusion element extending
perpendicularly from said axes,
wherein each of said protrusion elements has a maximum
width in said width direction, a maximum radial extension from
said rotational axes, an inner portion adjacent to said rotational
axes, and an outer portion remote from said rotational axes,
wherein said outer portions of said protrusion elements
on said first roller are arranged in a staggered relationship with
said outer portions of said protrusion elements on said
second roller,
wherein said outer portions of said protrusion elements
on said first roller are partially overlapping with said outer
portions of said protrusion elements on said second roller with
a radial overlap length, thus forming an undulating passage for
a web material between said rollers,
wherein said distance between said rotational axes of said
first and said second rollers is adjustable, enabling said radial
overlap length in said undulating passage to be variable,
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wherein a biasing means arranged with said first and
second rollers enables an automatic adjustment of said distance
between said rotational axes of said first and said
second rollers, and
wherein the separation unit is configured such that the
preformed lines of weakness will rupture in the separation unit
to separate a sheet of web material,
wherein said first roller is movably suspended,
perpendicularly to said first rotational axis, and wherein said
biasing means is arranged to bias said first roller towards said
second roller,
wherein the separation unit further comprises a cradle,
said cradle being pivotably suspended to pivot about a pivot
axis substantially parallel with said rotational axes,
wherein said first roller is suspended in said cradle.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ko US 2004/0041330 A1 Mar. 4, 2004
Kling US 2007/0236110 A1 Oct. 11, 2007
Hjort US 2013/0105614 A1 May 2, 2013
REJECTIONS
Claim 10 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 1, 2, 5–17, 19, 20, 23, and 24 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Ko and Hjort.
Claims 18, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ko, Hjort, and Kling.
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OPINION
Indefiniteness
The basis of the Examiner’s rejection under 35 U.S.C. § 112, second
paragraph, is that “[t]he term ‘about’ in claim 10 is a relative term which
renders the claim indefinite.” Non-Final Act. 4. According to the Examiner,
“[t]he term ‘about’ is not defined by the claim, the [S]pecification does not
provide a standard for ascertaining the requisite degree, and one of ordinary
skill in the art would not be reasonably apprised of the scope of the
invention.” Id. at 4–5.
Appellant’s Specification discloses that “the stopper device may be
movable between at least two fixed positions to define at least two
corresponding end positions for the first roller.” Spec. 7:1–2. The
Specification additionally discloses that
in a fixed position of the stopper device, the radial overlap
length may be approx. 6 mm, or approx. 7 mm, or approx.
8 mm in a respective end position of the first roller. In this
manner a nip formed between the first and second rollers may
be set for a particular web material such that a sheet of web
material may be separated from a perforated web material in the
separation unit.
Spec. 7:7–11. Based on this disclosure, a person skilled in the art would
understand that the stopper device is movable to three fixed positions, a first
of which sets the radial overlap length in a respective end position of the
first roller (when the cradle is biased against the stopper device) at
approximately 6 mm, a second of which sets the radial overlap length in the
end position at approximately 7 mm, and a third of which sets the radial
overlap length in the end position at approximately 8 mm. The radial
overlap length of “about 6 mm” recited in claim 10 appears to pertain to the
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stopper device placed in the first position described in the Specification,
namely, the one that sets the radial overlap length to approximately 6 mm.
Although consistency in terminology throughout the Specification and
claims would certainly be preferable, for purposes of our review of the
indefiniteness rejection before us, we understand the term “about” in claim
10 to be synonymous with “approx.” used in the Specification.
The term “about” is a term of degree. It is well established that when
a “word of degree” is used, the patent application must provide a standard
for measuring that degree. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d
1325, 1332 (Fed. Cir. 2010) (quoting Seattle Box Co., Inc. v. Indus. Crating
& Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)). The definiteness of a
term of degree is problematic if its baseline for comparison is unclear to
those of ordinary skill in the art. Liberty Ammunition, Inc. v. United States,
835 F.3d 1388, 1395 (Fed. Cir. 2016).
We especially take caution when presented with terms of
degree following the Supreme Court’s decision in Nautilus, Inc.
v. Biosig Instruments, Inc., [572 U.S. 898], 134 S.Ct. 2120, 189
L.Ed.2d 37 (2014), which instructs that a claim must “inform
those skilled in the art about the scope of the invention with
reasonable certainty” to meet the definiteness requirement of 35
U.S.C. § 112, ¶ 2, id. at 2129. While our post-Nautilus cases
indicate that terms of degree are not “inherently indefinite” in
light of the Supreme Court’s decision, we have recognized that
claims having terms of degree will fail for indefiniteness unless
they “provide objective boundaries for those of skill in the art”
when read in light of the specification and the prosecution
history.
Id. at 1395–96 (citing Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1370–71 (Fed. Cir. 2014)).
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Moreover, for applications pending before the United States Patent
and Trademark Office (USPTO), a claim is properly rejected as indefinite
under 35 U.S.C. § 112, second paragraph, if, after applying the broadest
reasonable interpretation in light of the specification, the metes and bounds
of a claim are not clear because the claim “contains words or phrases whose
meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir.
2014) (per curiam) (approving, for pre-issuance claims, the standard from
MPEP § 2173.05(e)); see also Ex parte McAward, Appeal 2015-006416,
2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the
approach for assessing indefiniteness approved by the Federal Circuit in
Packard).
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter
the applicant fails to provide a satisfactory response, the
USPTO can properly reject the claim as failing to meet the
statutory requirements of § 112(b) [i.e., the successor to 35
U.S.C. § 112, second paragraph]).
Packard, 751 F.3d at 1311.
In the context of the phrase “about 6 mm,” the ordinary and
customary meaning of the term “about” is near or almost. However, this is
not sufficiently helpful to provide an objective boundary for the scope of this
claim limitation. When considered in light of the aforementioned disclosure
on page 7 of Appellant’s Specification, one possible interpretation of “about
6 mm” is 6 mm, plus or minus reasonable manufacturing tolerances when
fabricating the components of the separation unit.
Appellant offers a different interpretation of “about 6 mm.” See
Appeal Br. 8. In particular, in light of the disclosure of three possible
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overlap lengths (approximately 6 mm, or approximately 7 mm, or
approximately 8 mm) in the Specification, Appellant asserts that “‘about 6
mm’ is provided with one significant figure and may be distinguished from 7
mm. Thus, any radius of 5.50 to 6.49 (which round to 6) would be ‘about 6
mm.’” Id.
The Examiner does not agree with Appellant’s significant figure
analysis. See Ans. 3–4. According to the Examiner, “‘about 6 mm’ (as
stated in the claim) does not directly translate to the range of 5.50 to 6.49
mm” and, “[a]t most, the [paragraph on page 7 of the Specification, quoted
above,] discloses that approx. 6 mm is not the same as approx. 7 or 8 mm, as
they are indicated separately.” Id. at 4. The Examiner states that other
interpretations of “about 6 mm” are possible, including the possibility that
“this only provides an upper limit to the approx. 6 mm” or that “[t]he range
in question could also be limited to 5.99mm to 6.1 mm,” which “leads to
confusion as to the scope of this limitation.” Id. The Examiner concludes
that “[b]ecause the objective boundaries of ‘about 6 mm’ are not taught in
the specification, therefore such phrasing is considered to be indefinite.” Id.
Given the different plausible interpretations of “about 6 mm”
discussed above, and the absence of any guidance in Appellant’s
Specification that provides objective boundaries to those of ordinary skill in
the art, the Examiner’s position that the metes and bounds of “about 6 mm”
is not clear is well-grounded, and Appellant does not apprise us of error in
that determination. Accordingly, we sustain the rejection of claim 10 under
35 U.S.C. § 112, second paragraph as indefinite.
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Obviousness—Ko and Hjort
In contesting the rejection based on Ko in view of Hjort, Appellant
presents arguments without specific reference to any particular claim. See
Appeal Br. 9–15. Thus, we decide the appeal of the rejection of claims 1, 2,
5–17, 19, 20, 23, and 24 as unpatentable over Ko and Hjort on the basis of
claim 1. The remaining claims 2, 5–17, 19, 20, 23, and 24 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a
single claim to decide the appeal as to a single ground of rejection of a group
of claims argued together).
The Examiner finds that Ko discloses a separator having most of the
features of claim 1, including, in pertinent part, a first roller (separating
roller 156) and a second roller (feeding roller 154), but that
Ko fails to teach wherein each of said first and said second
rollers is provided with at least one protrusion element, wherein
each of said protrusion elements has a maximum width in said
width direction[,] a maximum radial extension from said
rotational axes, an inner portion adjacent to said rotational axes,
and an outer portion remote from said rotational [axes,] wherein
said outer portions of said protrusion elements on said first
roller are arranged in a staggered relationship with said outer
portions on said second roller, and wherein said outer portions[]
of said protrusion elements on said first roller are partially
overlapping with said outer portions of said protrusion elements
on said second roller, with a radial overlap length (as required
by claim 1); said protrusion elements are disc elements (as
required by claim 15).
Non-Final Act. 5–7 (boldface omitted).2

2 Ko’s separating rollers 156 appear to be protrusion elements protruding
radially outwardly from smaller diameter rotation shaft 162, in a direction
perpendicular to the rotational axis of rotation shaft 162, much like
Appellant’s protrusion elements 4 protrude radially outwardly from the
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The Examiner finds that Hjort teaches rollers (drive roller 26 and
engaging roller 28) for feeding a material, wherein the rollers are provided
with at least one protrusion element (the rubber material on the outer edge of
the roller). Non-Final Act. 7–8 (citing Hjort, Figs. 1–4; ¶ 35); see id. at 8
(providing an annotated reproduction of Hjort’s Figure 3 to point out inner
and outer portions of the protrusion elements). The Examiner finds that “the
purpose of the outer portion is for better grip of the sheet material.” Id.
(citing Hjort ¶ 40).
According to the Examiner, “Ko and Hjort are both rollers for
conveying sheet material, and a teaching of an outer grip for a roller will be
equally applicable in both areas.” Non-Final Act. 8. The Examiner thus
determines it would have been obvious “to modify the device of Ko to
incorporate the teaching of Hjort and add at least one protrusion of the outer
portion to any of the rollers” because “[d]oing so . . . would allow the rollers
to better grip . . . the material.” Id. at 9.
Appellant argues that “Ko does not teach or suggest that the
separation unit is configured such that the preformed lines of weakness will
rupture in the separation unit to separate a sheet of web material.” Appeal

smaller diameter portion of first roller 2 (the element that resembles an
elongate shaft, much like Ko’s rotation shaft 162, identified as first roller 2
in Appellant’s Figures 1a, 1b). Compare Ko, Fig. 10, with Appellant’s Figs.
1a, 1b. Similarly, Ko’s feeding roller 154 has larger diameter portions (i.e.,
protrusion elements) protruding from smaller diameter portions, much like
Appellant’s protrusion elements 4 protruding from second roller 3.
Compare Ko, Fig. 10, with Appellant’s Figs. 1a, 1b. Moreover, Ko’s
protruding separating rollers 156 are arranged in a staggered relationship
with the larger diameter portions of Ko’s feeding roller 154. See Ko, Fig.
10. Thus, although our analysis in reviewing the Examiner’s rejection is
based on the Examiner’s findings, we note that Ko appears to disclose a
separation unit comprising all of the structure recited in claim 1.
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Br. 9. This argument does not identify error in the Examiner’s rejection. As
the Examiner points out, claim 1 does not positively recite a web of material
with a preformed line of weakness. Ans. 4.
Claim 1 recites “wherein the separation unit is configured such that
the preformed lines of weakness will rupture in the separation unit to
separate a sheet of web material.” Claims App. ii. The Examiner finds that
the only structures required for rupturing preformed lines of weakness of
web material are the sets of overlapping rollers and a biasing means
applying a biasing force for moving the rollers close to each other. Ans. 4–5
(citing Spec. 4:9–5:6).3 Appellant does not dispute this finding. See
generally Reply Br. The Examiner further finds that “the modified device of
Ko in view of Hjort teaches” this structure. Ans. 5. Indeed, consistent with
the Examiner’s findings, Ko’s separation unit includes sets of overlapping
rollers and a biasing means and, thus, comprises the structure the Examiner
identifies as being required for rupturing preformed lines of weakness of
web material. See Non-Final Act. 5–7; Ko, Figs. 10–11.
The Examiner additionally points out, correctly, that “[i]nclusion of
the material or article worked upon by a structure being claimed does not
impart patentability to the claims.” Ans. 5 (quoting In re Otto, 312
F.2d 937, 940 (CCPA 1963)). Thus, even if the web of material with
preformed lines of weakness were positively recited, such recitation would
not impart patentability to the claimed apparatus.
Appellant argues that “the principle of operation [of] the Ko device is
to release friction along the plane of two dispensed sheets,” which,

3 The Examiner cites to paragraphs of the publication of the present
application (US 2015/0297042 A1).
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according to Appellant, “requires enough tension to release the friction, but
yet light enough tension that the sheets can slide past one another.” Appeal
Br. 13. In contrast, Appellant argues, Hjort teaches “creating such a great
friction in the nip that the paper in the nip can be grasped and torn.” Id.
Appellant contends that “there is no reason why one skilled in the art would
seek to modify the stack of media/paper feeder of Ko to grasp the
media/paper so tight that it can be torn.” Id.
Appellant’s argument is not persuasive. As the Examiner points out,
Ko’s separation unit (separating rollers 156 and feeding roller 154) and
Hjort’s separation unit (engaging roller 28 and drive roller 26) both use
friction force to grasp and feed media. Ans. 6; see Ko ¶¶ 108–110; Hjort
¶¶ 35, 37, 40. Ko recognizes that the proper level of friction force applied
by separating roller 156 to the media depends on the type of media,
including the thickness of the media. Ko ¶ 110. Ko also recognizes that the
friction force is determined in part by the biasing force applied to separating
roller 156 by tension spring 224. Id. ¶¶ 108–110. Although Ko is silent as
to the effect that the outer surface of separating roller 156 has on the friction
force applied to the media, a person having ordinary skill in the art would
readily appreciate that the surface of separating roller 156 determines in part
the coefficient of friction between separating roller 156 and the media. Hjort
expressly addresses this issue and teaches providing a material having a high
coefficient of friction, such as “a rubber or rubberlike material,” on
rollers 26, 28 to ensure that the rotation of drive roller 26 will be transferred
to the media (roll 3). Hjort ¶ 35. A person having ordinary skill in the art,
understanding that friction is needed between Ko’s separating roller 156 and
the media in order to discharge the media, would have appreciated that
Hjort’s teaching to provide a material having a high coefficient of friction on
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the outer surface of rollers 26, 28 to transfer the rotation of the rollers to the
media would be similarly applicable to the outer surface of Ko’s separating
roller 156 and feeding roller 154.
The Examiner additionally points out that Ko does not limit its
teachings to any one type of media, and finds that “one having ordinary skill
in the art would recognize that increased friction on the rollers to better grip
the material may be needed, if the material being used in Ko requires more
friction for the rollers to function as intended.” Ans. 6. Thus, according to
the Examiner, “one would look to the teaching provided by Hjort to add a
gripping material to Ko’s rollers to increase the friction on the roller as
needed by the end user.” Id. Appellant does not apprise us of error in the
Examiner’s findings and reasoning in this regard. The Examiner does not
propose that the friction, as determined by the level of biasing force
provided by tension spring 224 as well as by the coefficient of friction of
rollers 156 and 154, be increased to a level that would result in tearing the
media sheets handled by Ko.
In a related line of argument, Appellant contends that “the
arrangement of Hjort, which is configured to grasp paper tight enough to
allow tearing, would completely destroy the ability for the sheets [to] slide
[past] one another in the Ko sheet feeding device.” Appeal Br. 14. Thus,
Appellant argues that “the proposed modification of Ko would change the
principle of operation of the Ko sheet feeding device, as well as change the
basic principle under which the Ko sheet feeding device was designed to
operate.” Id.
The Examiner responds by observing that “Appellant appears to be
arguing a particular action of the dispensing device of Ko that is not actually
stated in the Ko reference.” Ans. 6. Like the Examiner, we do not find any
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explicit discussion in Ko regarding sheets of media sliding past one another
in Ko’s sheet feeding device. As the Examiner points out, “Ko teaches that
the friction of the roller effects the dispensing of material, and that the
amount of friction is changed to find the optimum state.” Id. (citing Ko
¶¶ 110–111). Thus, the Examiner determines that “applying Hjort does not
destroy Ko’s function, but is actually required by Ko in order for Ko to
function at its optimum state.” Id.
As is evident from our discussion above of the teachings of Ko and
Hjort regarding the role of friction in feeding sheet media, and the
parameters (biasing force and coefficient of friction) that affect the friction
force acting on the sheet media, the Examiner’s characterization of Ko is
accurate. For the reasons set forth above, we do not agree with Appellant
that modifying Ko as proposed by the Examiner in view of Hjort would
change the basic principle of operation of Ko’s separation unit or destroy its
functionality.
Appellant submits that “[t]he Examiner’s Answer has indirectly
admitted that because Ko would only keep enough friction to operate as a
sheet-by-sheet feeder unit then Ko, modified in view of Hjort, would still not
be a grasping device unit, and would not be a rupturing-preformed-lines-of
weakness-type of unit.” Reply Br. 7–8. To the extent that Appellant is
arguing that Ko’s separation unit, even modified in view of Hjort, would be
unable to generate and apply sufficient separating force to media transferred
to the nip between rollers 154 and 156 to satisfy the claim limitation
regarding rupturing of preformed lines of weakness, this is not a persuasive
argument. As already acknowledged, Ko does not disclose dispensing
media by rupturing preformed lines of weakness in a web of the media. Ko
does, however, use friction to transfer a rotation force of separating
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roller 156 to the media to effectively grasp and separate the media from
feeding roller 154. As evidenced by Hjort, such a force is capable of
rupturing a web of material at preformed lines of weakness when such
preformed lines of weakness are present in the media. The force required to
rupture preformed lines of weakness to separate a web material along the
preformed lines of weakness depends on, among other things, the
characteristics of the web material, the characteristics of the preformed lines
of weakness, and the direction along which the force is applied to the
material. Appellant’s claim 1 does not specify the characteristics of the web
or the lines of weakness and, thus, does not distinguish the claimed
separation unit from Ko’s separation unit.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1 as unpatentable over Ko and Hjort. Accordingly, we
sustain the rejection of claim 1, as well as claims 2, 5–17, 19, 20, 23, and 24,
which fall with claim 1, as unpatentable over Ko and Hjort.
Obviousness—Ko, Hjort, and Kling
In contesting the rejection of claims 18, 21, and 22 under
35 U.S.C. § 103(a), Appellant argues only that “Kling does not remedy the
above-noted deficiencies of Ko and Hjort.” Appeal Br. 15. For the above
reasons, Appellant’s arguments do not apprise us of error in the rejection of
claim 1 as unpatentable over Ko and Hjort and, likewise, fail to apprise us of
error in the rejection of claims 18, 21, and 22 as unpatentable over Ko,
Hjort, and Kling, which we, thus, sustain.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
10 112,
second
paragraph
Indefiniteness 10
1, 2, 5–17,
19, 20, 23,
24
103(a) Ko, Hjort 1, 2, 5–17,
19, 20, 23,
24

18, 21, 22 103(a) Ko, Hjort, Kling 18, 21, 22
Overall
Outcome
1, 2, 5–24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED