Baldwin, Geoffrey et al.

Patent Trials and Appeals Board

Dec 23, 2020

2019005315 (P.T.A.B. Dec. 23, 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.
12/220,153 07/22/2008 Geoffrey Baldwin 32338-0000 6203
69082 7590 12/23/2020
ULMER & BERNE, LLP
ATTN: DIANE BELL
600 VINE STREET
SUITE 2800
CINCINNATI, OH 45202-2409
EXAMINER
HORNING, JOEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
12/23/2020 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):
ipdocketing@ulmer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte GEOFFREY BALDWIN and BRIAN BALDWIN
__________

Appeal 2019-005315
Application 12/220,153
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 seeks review of an Examiner’s
decision finally rejecting claims 2, 3, 5–7, 9–11, 24, 27, 28, and 31–47. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Appellant discloses a method and system for continuously transferring a
web of material from a large roll to a smaller roll. Spec. 1. The method comprises

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Jumpstart
Consultants, Inc. Appeal Brief dated December 13, 2018 (“App. Br.”), at 1.
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the steps of, inter alia, continuously unwinding a web from a parent roll, printing
artwork on the web, winding the web around a core roll to form a child roll, and
cutting the web. See App. Br. 22, 24.
The Appellant discloses that webs for use in the invention include paper,
fabrics, films, felts, and scrims. Spec. 4. The invention is said to be especially
suitable for processing synthetic materials, such as thermoplastic materials which
are used as building wraps, synthetic roof underlayments, fence liners, tarps,
industrial wraps, insulation, and sheathing materials. Id.
The claims on appeal are directed to a method of continuously processing
building wrap material (claims 2, 3, 5–7, 9–11, 24, 27, 28, and 31–33) and a
method of continuously processing a synthetic roof underlayment material (claims
34–47). See App. Br. 21–26.
Representative claim 24 is reproduced below from the Claims Appendix to
the Appeal Brief.
24. A method of continuously processing building wrap material,
the method comprising:
continuously unwinding a building wrap material from a parent
roll;
while the building wrap material is being continuously
unwound from the parent roll, printing a first artwork on a first section
of the building wrap material by a combination of a digital printer and
a flexographic printer;
passing the first section of the building wrap material through
an accumulator to a rewinder loaded with a first core roll;
while the building wrap material is being continuously
unwound from the parent roll, winding the first section of the building
wrap material around the first core roll to form a first child roll of
building wrap material having the first artwork printed thereon;
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while the building wrap material is being continuously
unwound from the parent roll, cutting the building wrap material;
finally winding the first child roll;
while the building wrap material is being continuously
unwound from the parent roll, ejecting the first child roll;
while the building wrap material is being continuously
unwound from the parent roll, loading the rewinder with a second core
roll;
while the building wrap material is being continuously
unwound from the parent roll, printing a second artwork on a second
section of the building wrap material by the combination of the digital
printer and the flexographic printer, wherein the second artwork
differs from the first artwork, wherein the first section of the building
wrap material precedes the second section of the building wrap
material in a machine direction, as dispensed from the parent roll;
passing the second section of the building wrap material
through the accumulator to the rewinder loaded with the second core
roll;
winding the second section of the building wrap material
around the second core roll to form a second child roll of building
wrap material having the second artwork printed thereon;
cutting the building wrap material;
finally winding the second child roll; and
ejecting the second child roll.
App. Br. 22–23.
The Examiner maintains the following grounds of rejection on appeal:
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(1) claims 2, 3, 5–7, 11, 24, 27, 28, and 31–33 under 35 U.S.C. § 103(a)
as unpatentable over Tung-I2 in view of Ryan,3 Payne et al.,4 and Kambs et al.;5,6
(2) claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over Tung-I
in view of Ryan, Payne, and Kambs, further in view of Hannen;7
(3) claims 34–40 and 43–47 under 35 U.S.C. § 103(a) as unpatentable
over Tung-I in view of Ryan, Payne, Kambs, further in view of Cabrey;8 and
(4) claims 41 and 42 under 35 U.S.C. § 103(a) as unpatentable over
Tung-I in view of Ryan, Payne, Kambs, and Cabrey, further in view of Hannen.
B. DISCUSSION
1. Rejection (1)
The Examiner finds Tung-I discloses a process and system for forming rolls
of a web material. Final Act. 2.9 The Examiner finds the process includes the
steps of unwinding a web material from a large diameter parent roll (or log),
printing on a section of the web material, transferring the web material onto a first
core to produce a first smaller diameter child roll, cutting the web material, and
replacing the first child roll with a second core. Final Act. 2–3.

2 US 2007/0102562 A1, published May 10, 2007 (“Tung-I”).
3 US 4,374,576, issued February 22, 1983 (“Ryan”).
4 US 2007/0137769 A1, published June 21, 2007 (“Payne”).
5 US 2008/0004931 A1, published January 3, 2008 (“Kambs”).
6 Claim 30 was also included in the statement of the rejection. Final Office Action
dated June 15, 2018 (“Final Act.”), at 2. Claim 30, however, was cancelled in an
Amendment dated February 22, 2018. See App. Br. 8, n.1. The statement of the
rejection has been corrected to omit claim 30.
7 US 5,024,718, issued June 18, 1991 (“Hannen”).
8 US 6,706,225 B2, issued March 16, 2004 (“Cabrey”).
9 Final Office Action dated June 15, 2018.
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The Examiner finds Tung-I discloses that the web material may be “‘any
kinds of flexible materials that can be wound and processed into logs.’” Ans. 410
(citing Tung-I ¶ 24); see also Tung-I ¶ 24 (disclosing that “[t]he web of material
can be made of tissue paper or any kinds of flexible materials that can be wound
and processed into logs”). Nonetheless, the Examiner finds Tung-I does not
expressly disclose that the web material is a building wrap material as recited in
claim 24. Final Act. 7.
Similar to Tung-I, the Examiner finds Kambs discloses a process and system
for forming rolls of web material comprising the steps of unwinding a web material
from a large diameter parent roll, printing on a section of the web material,
winding the web material onto a core, and cutting the web material. Final Act. 6.
The Examiner finds Kambs discloses that the web material is a plastic web
material for use as a building wrap material. Final Act. 6, 7.
Kambs teaches that the disclosed building wrap material is flexible and can
be wound onto a core. Therefore, the Examiner concludes that it would have been
obvious to one of ordinary skill in the art to use Tung-I’s process to form rolls of
building wrap material as claimed.11 Final Act. 7; see also Tung-I ¶ 24 (disclosing
that “[t]he web of material can be made of . . . any kinds of flexible materials that
can be wound and processed into logs” (emphasis added)).

10 Examiner’s Answer dated May 21, 2019.
11 As for the remaining references relied on by the Examiner in the obviousness
rejection of claim 24, the Examiner finds Ryan teaches that running the web
continuously is desirable when changing rolls in order to avoid interruptions in the
process. Final Act. 3. The Examiner finds Payne teaches printing on
thermoplastic webs that are subsequently wound on a roll. Final Act. 5. On
appeal, the Appellant does not direct us to any error in the Examiner’s findings as
to Ryan or Payne or the Examiner’s reasons for combining the teachings of Ryan
and Payne with Tung-I in the obviousness rejection of claim 24.
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When forming the child rolls in Tung-I’s process, the Appellant argues that
the web material is cut by holding a portion of the web material against a winding
roller, whereby the web material is severed at a perforation line. App. Br. 13
(citing Shepherd Decl. ¶ 2012). The Appellant argues that “[o]ne of ordinary skill
in the art would have appreciated that all of the described materials processed by
the . . . apparatus of Tung-I have a low breaking strength, which allows them to be
severed using the described severing technique.” App. Br. 13 (citing Shepherd
Decl. ¶ 21); see also Shepherd Decl. ¶ 27 (stating that Tung-I’s severing technique
“is usable on web material having a low breaking strength and low elongation
properties”).
The Appellant argues that the claimed building wrap materials, on the other
hand, have a higher breaking strength than the materials capable of being
processed in Tung-I. App. Br. 14 (citing Shepherd Decl. ¶ 23); see also Shepherd
Decl. ¶ 28 (providing the average load at break and the average elongation for
toilet tissue, kitchen paper towel, and building wrap13,14). Due to the high
elongation properties of the building wrap material, the Appellant argues that the
building wrap material “stretch[es] until the material is ultimately deformed, as

12 Declaration of Christopher J. Shepherd dated February 21, 2018.
13 Each material tested, including the building wrap material, is said to have
included parallel perforation lines. Shepherd Decl. ¶ 28.
14 No data is provided for the synthetic roof underlayment materials recited in
claim 34. The Appellant, however, contends that “[a]s synthetic roof
underlayment materials are conventionally stronger than building wrap material,
one of ordinary skill in the art would expect the average load at break to be even
greater than the building wrap material.” App. Br. 16 (citing Shepherd Decl. ¶ 31).
The Appellant also contends that “the elongation properties of synthetic roof
underlayment materials typically remain consistent with the elongation properties
of building wrap materials.” Id.
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opposed to cleanly separating at a perforation in an aesthetically pleasing manner.”
App. Br. 15 (citing Shepherd Decl. ¶ 27). Therefore, the Appellant argues that
Tung-I’s process would not be effective for cutting a building wrap material. App.
Br. 14 (citing Shepherd Decl. ¶¶ 23, 25, 26).
The Appellant’s argument is not persuasive of reversible error. The
obviousness rejection on appeal is not based on Tung-I alone but rather is based on
Tung-I in combination with, inter alia, Kambs. See Final Act. 11 (explaining that
“the rejection is not reliant upon the specific cutting equipment employed by Tung-
I”). The Examiner finds, and the Appellant does not dispute, that Kambs discloses
a cutting station for effectively cutting a building wrap material.15 Final Act. 11;
Ans. 3, 4 (citing Kambs ¶ 30). When modifying Tung-I’s method as proposed, the
Examiner finds that it would have been within the level of ordinary skill in the art
to select the appropriate cutting equipment based on the particular web material
being processed. Ans. 5; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”).
The Appellant argues that any attempt to modify Tung-I’s apparatus to
accommodate the appropriate systems for cutting building wrap materials would
require “an extensive re-design” of the apparatus, as well as adjacent processes and
equipment. App. Br. 17 (citing Shepherd Decl. ¶ 37). According to the Appellant,
such modifications would “change the fundamental approach” of the operation of

15 The Examiner makes the additional finding that “a person of ordinary skill in the
art at the time of invention knew how to cut appellant’s specifically claimed
material.” Ans. 3. The Examiner’s finding appears to be consistent with the
Appellant’s Specification which does not disclose any details of the device used to
cut the building wrap material or the synthetic roof underlayment material. See
Spec. 6 (generally disclosing that rewinder 27 cuts the web).
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Tung-I’s apparatus. Id. Therefore, the Appellant argues that one of ordinary skill
in the art would not have been motivated to modify Tung-I’s apparatus to
accommodate a building wrap material as claimed. Id.
Significantly, neither the Appellant nor Mr. Shepherd explain, in any detail,
why replacing the severing station of Tung-I with the cutting station of Kambs
would require “an extensive re-design” and change the “fundamental” operation of
Tung-I’s apparatus. See App. Br. 17; see also In re Schulze, 346 F.2d 600, 602
(CCPA 1965) (“Argument in the brief does not take the place of evidence in the
record.”); In re Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973) (affidavits
reciting conclusions and few facts to buttress those conclusions fail in their
purpose).
Tung-I discloses that the different processing units (e.g., severing unit,
printing unit, etc.) may be “independently implemented in separate processing
stations.” Tung-I ¶ 55. Similarly, Kambs teaches that the cutting station is a
discrete unit that can be placed in sequence, for example, before a rolling station.
Kambs ¶ 30. Thus, consistent with the Examiner’s findings, we find there would
have been a reasonable expectation of successfully replacing Tung-I’s severing
station with Kambs’ cutting station in Tung-I’s apparatus when rolling and cutting
a building wrap material.
Based on the foregoing, a preponderance of the evidence of record supports
the Examiner’s conclusion of obviousness. Therefore, the obviousness rejection of
independent claim 24 and dependent claims 2, 3, 5–7, 11, 27, 28, and 31–33 based
on the combination of Tung-I, Ryan, Payne, and Kambs is sustained.16

16 The Appellant does not present arguments in support of the separate patentability
of any of claims 2, 3, 5–7, 11, 27, 28, and 31–33.
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2. Rejection (3)
Independent claim 34 is substantially the same as independent claim 24 with
the exception that the claimed web material is a synthetic roof underlayment
material, not a building wrap material as recited in claim 24. The Examiner finds
Kambs “does not particularly discuss roof underlayment material.”17 Final Act.
10. The Examiner, however, finds Cabrey discloses a synthetic plastic web
material that is formed into rolls and is useful both as a building wrap material and
a roof underlayment material. Id.
The Appellant does not direct us to any error in the Examiner’s findings as
to Cabrey. See App. Br. 19. Rather, the Appellant argues that “[n]otwithstanding
the applicability of Cabrey, the asserted combination of Tung-I, Ryan, Payne, and
Kambs is improper for the reasons [previously] presented.” App. Br. 19.
For the reasons discussed above, the combination of Tung-I, Ryan, Payne,
and Kambs is not improper. Therefore, the obviousness rejection of claims 34–40
and 43–47 based on the combination of Tung-I, Ryan, Payne, Kambs, and Cabrey
is sustained.
3. Rejections (2) and (4)
The Appellant does not present arguments in support of the separate
patentability of any of claims 9, 10, 41, and 42. Rather, the Appellant argues that
“Hannen does not overcome the shortcomings of Tung-I, Ryan, Payne, and Kambs
as applied to claim 24” and “Tung-I, Ryan, Payne, Kambs, and Cabrey as applied
to claim 34.” App. Br. 18, 19.

17 Kambs discloses that “the systems and method described herein can be utilized
for any of a variety of building materials including roofing underlayment and other
drainage plane materials.” Kambs ¶ 43.
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For the reasons discussed above, there are no deficiencies in the combination
of Tung-I, Ryan, Payne, and Kambs in the obviousness rejection of claim 24 or the
combination of Tung-I, Ryan, Payne, Kambs, and Cabrey in the obviousness
rejection of claim 34 that must be cured by Hannen. Therefore, the obviousness
rejection of claims 9 and 10 based on the combination of Tung-I, Ryan, Payne,
Kambs, and Hannen and the obviousness rejection of claims 41 and 42 based on
the combination of Tung-I, Ryan, Payne, Kambs, Cabrey, and Hannen are
sustained.
C. CONCLUSION
The Examiner’s decision is affirmed.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 3, 5–7, 11,
24, 27, 28,
31–33
103(a) Tung-I, Ryan,
Payne, Kambs
2, 3, 5–7, 11,
24, 27, 28,
31–33

9, 10 103(a) Tung-I, Ryan,
Payne, Kambs,
Hannen
9, 10
34–40, 43–47 103(a) Tung-I, Ryan,
Payne, Kambs,
Cabrey
34–40, 43–47
41, 42 103(a) Tung-I, Ryan,
Payne, Kambs,
Cabrey, Hannen
41, 42
Overall
Outcome
2, 3, 5–7, 9–
11, 24, 27,
28, 31–47

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).
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AFFIRMED