2020006500 (P.T.A.B. Oct. 4, 2021)

VOITH PATENT GMBH

Patent Trials and Appeals BoardOct 4, 2021

2020006500 (P.T.A.B. Oct. 4, 2021)

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. 14/905,379 01/15/2016 UWE KOECKRITZ VP-18226 6145 24131 7590 10/04/2021 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, FL 33022-2480 EXAMINER TATESURE, VINCENT ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 10/04/2021 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): docket@patentusa.com office@patentusa.com vrahimis@patentusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte UWE KOECKRITZ, JUERGEN ABRAHAM, and WAN ZETI ZAFINA WAN AHMAD NATHRI __________ Appeal 2020-006500 Application 14/905,379 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and GEORGE C. BEST, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision finally rejecting claims 22, 23, 25–27, 29–31, 33–36, and 38.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Voith Patent GmbH. Appeal Brief dated February 7, 2020 (“Appeal Br.”), at 1. 2 Claims 32, 37, and 39–42 are also pending but have been withdrawn from consideration. Appeal 2020-006500 Application 14/905,379 2 We REVERSE and enter a new ground of rejection under 37 C.F.R. § 41.50(b). The claimed subject matter is directed to a clothing for use in a machine for producing a fibrous web, such as a paper or cardboard web. Spec. 1, ll. 2–4. The Appellant discloses that in a paper or cardboard machine, clothings perform various tasks, including dewatering a fibrous web. Spec. 1, ll. 9–12. The Appellant discloses: Initial dewatering is handled by forming wires in the forming section; in the pressing section the fibrous web is guided on press felts through roller gaps, so as to further extract water contained in the fibrous web; and in the drying section conveying through the machine and further drying of the fibrous web is performed while being facilitated by a drying wire. Spec. 1, ll. 12–19. The Appellant discloses that drying wires are usually configured in the form of planar textile structures and may be composed of woven fabrics made from yarns that intersect in a substantially perpendicular manner. Spec. 1, ll. 20–26. The Appellant discloses that known drying wires have a tendency to fray and, as a result, the planar textile structure unravels. Spec. 1, ll. 27–31. An object of the Appellant’s invention is to eliminate fraying or unravelling of the planar textile structure by calendering the edges of the structure. Spec. 2, ll. 1–5, 11–15. Calendering, however, is said to reduce the permeability at those peripheral edges. Spec. 4, ll. 6–10. Thus, in one aspect of the Appellant’s invention, a calendered peripheral region may be perforated to match the permeability of that region with the permeability of the planar textile structure outside the calendered peripheral region. Spec. 3, ll. 16–20. Appeal 2020-006500 Application 14/905,379 3 Independent claim 22 is reproduced below from the Claims Appendix to the Appeal Brief. The limitations at issue are emphasized. 22. A clothing for a machine for producing a fibrous web, the clothing comprising: a planar textile structure formed of yarns which intersect substantially perpendicularly and which are substantially oriented in a machine direction and in a cross-machine direction; said planar textile structure having two edges oriented in the machine direction and two edges oriented in the cross-machine direction; seam elements configured to join said planar textile structure in the machine to form an endless belt, said seam elements being disposed at said edges that are oriented in the cross-machine direction and formed by, or connected to, said yarns that are oriented in the machine direction; said planar textile structure having the characteristics of having been calendered by introducing energy only in peripheral regions which extend along said edges that are oriented in the machine direction and/or along said edges that are oriented in the machine cross direction, wherein the yarns oriented in the machine direction are welded in the peripheral regions to the yarns oriented in the cross- machine direction and/or are form-fittingly interconnected at intersection points thereof, wherein those regions of said planar structure that have been calendered have a permeability that is reduced relative to those regions that have not been calendered and wherein the peripheral regions that extend along said edges that are oriented in the cross-machine direction have a permeability that is matched to the permeability of those regions that have not be [sic] calendered and the matched permeability is due to having been post- perforated while the peripheral regions that extend along said edges that are oriented in the machine direction have the reduced permeability due to having been calendered but not having been post- perforated. Appeal Br. 13–14. Appeal 2020-006500 Application 14/905,379 4 The Examiner maintains the following grounds of rejection on appeal: (1) claims 22, 26, 27, 29, 31, 33–36, and 38 under 35 U.S.C. § 103 as unpatentable over Nilsson3 in view of Bella4 and Straub;5 and (2) claims 23, 25, and 30 under 35 U.S.C. § 103 as unpatentable over Nilsson in view of Bella and Straub, further in view of Denton.6 B. DISCUSSION 1. New ground of rejection Claims 22, 23, 25–27, 29–31, 33–36, and 38 are rejected under 35 U.S.C. § 112(b) as failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Claim 22 recites that the planar textile structure has “the characteristics of having been calendered by introducing energy only in peripheral regions which extend along said edges that are oriented in the machine direction and/or along said edges that are oriented in the machine cross direction.” Appeal Br. 13 (emphasis added). The Examiner correctly interprets this portion of claim 22 as reciting three possible alternatives, i.e., (1) the machine cross direction (CMD) edges are calendered (and the machine direction (MD) edges are not calendered); 3 US 2004/0154148 A1, to Nilsson et al., published August 12, 2004 (“Nilsson”). 4 US 8,172,986 B2, to Bella, issued May 8, 2012 (“Bella”). 5 DE 102011002498 A1, to Straub et al., filed January 11, 2011 (“Straub”). The Examiner relies on US 8,784,615 B2, to Straub et al., issued July 22, 2014, “as an English language equivalent.” Final Office Action dated October 18, 2019 (“Final Act.”), at 3. The Appellant does not object. 6 US 5,888,915, to Denton et al., issued March 30, 1999 (“Denton”). Appeal 2020-006500 Application 14/905,379 5 (2) the MD edges are calendered (and the CMD edges are not calendered); and (3) both the CMD edges and the MD edges are calendered. Ans. 3.7 The Appellant argues that “[t]he expression and/or does not mean that the CMD edges or the MD edges are calendered.” Appeal Br. 5. Rather, the Appellant urges that “[t]he remainder of the claim renders it entirely clear that ‘and’ is the only reasonable, logical interpretation as concerns the CMD edges.” Appeal Br. 5 (emphasis added); see also id. (arguing that the “or” portion of “and/or” only allows for the interpretation that the machine direction (MD) edges might not have been calendered). To illustrate, the Appellant directs our attention to the following limitation recited in claim 22: wherein the peripheral regions that extend along said edges that are oriented in the cross-machine direction [CMD] have a permeability that is matched to the permeability of those regions that have not be [sic] calendered and the matched permeability is due to having been post-perforated while the peripheral regions that extend along said edges that are oriented in the machine direction [MD] have the reduced permeability due to having been calendered but not having been post-perforated. Appeal Br. 13–14; see also Appeal Br. 4. The Appellant argues that the phrase “the ‘matched permeability is due to having been post-perforated’[8] [in the “wherein” clause reproduced above] 7 Examiner’s Answer dated June 12, 2020. 8 According to the Appellant, “[t]he term ‘post’ simply refers to the fact that the perforation is performed after the calendering.” Appeal Br. 7 (emphasis omitted). Appeal 2020-006500 Application 14/905,379 6 necessarily requires that the CMD edges must have had a reduced permeability” and thus “the CMD edges must have been calendered.”9 Appeal Br. 5. In arguing that “the expression ‘and/or’ can only be interpreted as ‘and,’” the Appellant invites us to ignore the word “or” in claim 22. Appeal Br. 5; see also Ans. 3 (finding that “Merriam-webster.com defines ‘and/or’ as ‘used as a function word to indicate that two words or expressions are to be taken together or individually’”). We decline the Appellant’s invitation. The discussion in In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) is instructive in this case. In Wilson, the Court explained that the Board erroneously chose to ignore claim language it considered indefinite rather than rejecting the claims as indefinite. Id. The Court stated that “[a]ll words in a claim must be considered in judging the patentability of that claim against the prior art. If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious—the claim becomes indefinite.” Id. In this case, it is unclear whether the “wherein” clause reproduced above requires the peripheral regions of the planar textile structure in the machine cross direction (CMD) to be calendered or as the Examiner concludes, the phrase “and/or” permits those peripheral regions to be uncalendered. See Final Act. 5 (concluding that the “wherein” clause is interpreted as “‘when’ the machine-cross direction [CMD] peripheral region is calendered, ‘then’ the calendered region comprises the limitations of matched permeability”); Ans. 4 (explaining that “in light of the alternative claim language of ‘and/or,’ both the limitations [in the “wherein” clause] drawn to the calendered CMD and calendered MD edges are 9 We note that in the same “wherein” clause, claim 22 recites that the edges oriented in the machine direction (MD) are also calendered. Appeal 2020-006500 Application 14/905,379 7 conditional”). Therefore, we conclude that independent claim 22 is indefinite under 35 U.S.C. § 112(b). Dependent claims 23, 25–27, 29–31, 33–36, and 38 are indefinite by virtue of their dependence on independent claim 22. 37 C.F.R. § 1.75(c) (“Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim.”). 2. Obviousness rejections The Examiner finds Nilsson discloses a papermaking fabric in the form of an endless belt. Final Act. 3. The Examiner finds Nilsson discloses that the fabric may be calendered on only the MD edges of the fabric. Final Act. 3. The Examiner concludes that “[s]ince a calendered cross-machine direction [CMD] peripheral region is not required to meet the limitations of the claim, the prior art combination appears to render obvious the claimed invention.” Final Act. 5. As discussed above, it is unclear whether claim 22 includes a planar textile structure having uncalendered peripheral regions in the CMD. Therefore, we decline to engage in assumptions as to the scope of claim 22 in considering whether the Appellant has identified a reversible error in the obviousness rejections on appeal. For that reason, the obviousness rejections of claims 22, 23, 25–27, 29– 31, 33–36, and 38 are not sustained. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing obviousness rejection because it was based on speculation as to the meaning of claim terms and assumptions as to claim scope). It should be understood that our decision is based solely on the indefiniteness of claim 22 and not on the merits of the obviousness rejections on appeal. C. DECISION The Examiner’s decision is reversed. Additionally, a new ground of rejection under 37 C.F.R. § 41.50(b) is entered. In summary: Appeal 2020-006500 Application 14/905,379 8 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed10 New Ground 22, 26, 27, 29, 31, 33–36, 38 103 Nilsson, Bella, Straub 22, 26, 27, 29, 31, 33– 36, 38 23, 25, 30 Nilsson, Bella, Straub, Denton 23, 25, 30 22, 23, 25–27, 29–31, 33–36, 38 112(b) Indefiniteness 22, 23, 25–27, 29–31, 33–36, 38 Overall Outcome 22, 23, 25– 27, 29–31, 33–36, 38 22, 23, 25–27, 29–31, 33–36, 38 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides, “A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record. . . . 10 As explained above, our reversal of the obviousness rejections on appeal is based solely on the indefiniteness of the claimed subject matter and not on the merits of the obviousness rejections. Appeal 2020-006500 Application 14/905,379 9 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). REVERSED; 37 C.F.R. § 41.50(b)