11473555 (B.P.A.I. Apr. 29, 2011)

Ex Parte Byrne

Board of Patent Appeals and InterferencesApr 29, 2011

11473555 (B.P.A.I. Apr. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte THOMAS TIMOTHY BYRNE ________________ Appeal 2010-006413 Application 11/473,555 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and CATHERINE Q. TIMM, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims a process for sealing the tail of a wound web. Claim 1 is illustrative: 1. A process for sealing the tail of a convolutely wound web material, the process comprising the steps of: Appeal 2010-006413 Application 11/473,555 2 providing said convolutely wound web material having a tail portion connectively associated thereto; disposing said tail portion away from an immediately subjacent convolution of said convolutely wound web material; disposing a fluid upon said immediately subjacent convolution; and, fixably and removeably disposing said tail portion of said convolutely wound web material upon said fluid disposed upon said immediately subjacent convolution. The References Sanders 3,064,862 Nov. 20, 1962 De Gelleke 3,134,553 May 26, 1964 Pullins 3,408,984 Nov. 5, 1968 Hartbauer 4,026,752 May 31, 1977 McConnel 4,343,259 Aug. 10, 1982 Biagiotti (EP ‘929) EP 0 481 929 A1 Apr. 22, 1992 Gunn 6,932,870 B2 Aug. 23, 2005 Gambini 2006/0086860 A1 Apr. 27, 2006 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1- 3, 9, 10 and 16 over EP ‘929 in view of Gunn and optionally Pullins, claims 1-10, 16 and 17 over EP ‘929 in view of Gunn and optionally Pullins, further in view of Hartbauer, McConnel and optionally Sanders, claims 11- 15 and 18-20 over EP ‘929 in view of Gunn and optionally Pullins, further in view of Hartbauer, McConnel, optionally Sanders, and Gambini, and claims 18-20 over EP ‘929 in view of Gunn and optionally Pullins, further in view of Hartbauer, McConnel, optionally Sanders, and De Gelleke. OPINION We reverse the rejections. Appeal 2010-006413 Application 11/473,555 3 Issue Has the Appellant indicated reversible error in the Examiner’s determination that the applied prior art would have rendered prima facie obvious, to one of ordinary skill in the art, sealing the tail of a wound web using fluid from a closed-loop recirculation system? Findings of Fact EP ‘929 applies glue to the tail of a wound web by passing the tail over a dispenser’s upwardly oriented slit through which glue from a reservoir overflows (col. 1, ll. 1-3, 40-42; Fig. 4). The glue overflow is recovered in a tank and returned to the reservoir (col. 2, ll. 37-40; Figs. 6, 7). Gunn pumps adhesive through supply tubes onto a rotating core on which a web is to be wound (col. 2, ll. 8-10; col. 6, ll. 1-3). The pumps can be operated continuously by using valves to divert the adhesive flow through a recirculation line to a tank on the suction side of the pumps when the flow of adhesive to the supply tubes is not desired (col. 7, ll. 53-65). Analysis The Examiner argues that Gunn’s recirculation system is a closed- loop system which “would have been useful in the system of EP ‘929 as it would have avoided exposure of the adhesive to the outside environment while allowing for a constant volume and pressure for the supply of the adhesive to the dispenser” (Ans. 4-5) and “would have been viewed as an alternative recirculation system for adhesive in a core wrapping operation which essentially performed the same function as that of EP ‘929” (Ans. 4). The Examiner argues that “where, as here, two equivalents are interchangeable for their desired function, an express suggestion of the Appeal 2010-006413 Application 11/473,555 4 desirability of the substitution of one for the other is not needed to render such substitution obvious” (Ans. 13). The Appellants argue that “[t]he Examiner provides no clue how the ‘useful’ recirculation of Gunn could be used with the system of EP ‘929 other than a conclusory statement to that end” (Br. 7). EP ‘929 applies adhesive to the tail of a wound web (col. 1, ll. 1-2) whereas Gunn applies glue to the core on which the web is to be wound (col. 2, ll. 9-10). Regarding sealing the tail, Gunn discloses (col. 5, ll. 24- 32): After paper web 11 is wound onto the mandrel, it can then be further indexed by turret 12 into a “tail seal position”, which is the position occupied by mandrel 20 as shown in FIG. 2. At the “tail seal position”, the unattached portions of paper web 11 can be sealed to the roll of paper via a sealing device (not shown). In some embodiments, for example, the sealing device can be configured to apply glue or some other adhesive to the paper web such that the tail can be sealed thereto. Gunn does not disclose that Gunn’s system can be used to seal the tail but, rather, discloses that the tail can be sealed by “a sealing device (not shown)” which “can be configured to apply glue or some other adhesive to the paper web”. Thus, Gunn appears to indicate that, contrary to the Examiner’s argument, devices for sealing the core and tail are not interchangeable equivalents. The Examiner has not provided evidence supporting the Examiner’s assertion of equivalents but, rather, has merely provided a conclusory statement to that effect. As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), “‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the Appeal 2010-006413 Application 11/473,555 5 legal conclusion of obviousness’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner has not provided the required articulated reasoning with rational underpinning.1 DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1-3, 9, 10 and 16 over EP ‘929 in view of Gunn and optionally Pullins, claims 1-10, 16 and 17 over EP ‘929 in view of Gunn and optionally Pullins, further in view of Hartbauer, McConnel and optionally Sanders, claims 11-15 and 18-20 over EP ‘929 in view of Gunn and optionally Pullins, further in view of Hartbauer, McConnel, optionally Sanders, and Gambini, and claims 18-20 over EP ‘929 in view of Gunn and optionally Pullins, further in view of Hartbauer, McConnel, optionally Sanders, and De Gelleke are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED tc 1 The Examiner does not rely upon the additional applied references for any disclosure which remedies the above-discussed deficiency in EP ‘929 and Gunn (Ans. 6-11).