Ex Parte FitzPatrick

Board of Patent Appeals and Interferences

Oct 31, 2011

10612196 (B.P.A.I. Oct. 31, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KEITH FITZPATRICK
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Appeal 2010-006797
Application 10/612,196
Technology Center 1700
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Before BRADLEY R. GARRIS, JEFFREY T. SMITH
and BEVERLY A. FRANKLIN, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006797
Application 10/612,196

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 13 and 32 through 40. We have jurisdiction under
35 U.S.C. § 6.
Appellant’s invention is directed to a substrate useful for making an
endless belt for papermaking machine applications. App. Br. 6. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below:
1. A substrate useful for making an endless belt in a
papermaking machine application comprising:
a plurality of individual preformed layers and a
polymeric coating or impregnating material or rubber material
that is part of each of said individual preformed layers,
wherein each individual preformed layer is a textile layer
coated/impregnated with resin or the rubber material, and
at least one layer of which contains a matrix of
reinforcing components.
The Examiner relied on the following references in rejecting the
appealed subject matter:
FitzPatrick US 5,753,085 May 19, 1998
Davenport et al. EP 0 960 975 A2 December 1, 1999

Appellant, App. Br. 7, requests review of the following rejections
from the Examiner’s final office action:
1. Claims 1-11, 13 and 32-40 stand rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over FitzPatrick.
2. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over FitzPatrick and Davenport.
Appeal 2010-006797
Application 10/612,196

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OPINION
Rejections of Claims 1-11, 13 and 32-40 over FitzPatrick
The dispositive issue on appeal for this rejection is: Did the Examiner
err in determining that FitzPatrick describes the Appellant’s multilayered
substrate as required by the subject matter of independent claims 1 and 32? 1
After thorough review of the respective positions provided by
Appellant and the Examiner, we answer this question in the negative and
AFFIRM.
The Examiner found that FitzPatrick discloses a substrate for making
press belt for papermaking machines that is identical or slightly different
from the substrate as required by the subject matter of independent claim 1.
Specifically, the Examiner found that FitzPatrick discloses a long nip press
belt for a papermaking machine comprising a textile substrate comprising a
plurality of individual layers coated on both sides and impregnated with a
polymeric resin. Ans. 3-4.
Appellant argues that FitzPatrick does not teach the claimed
multilayered substrate. App. Br. 13. Specifically, Appellant argues that
FitzPatrick does not teach a substrate made from a plurality of preformed
textile layers coated or impregnated with a resin or rubber material. Id.
Appellant further argues that Fitzpatrick first arranges the fibrous layers and
then coats the fibrous layers with a resin. Id. at 14.

1 We note that Appellant relies on the same arguments to address the
patentability of both independent claims 1 and 32. App. Br. 8, 13. For the
purposes of this decision, we limit our discussion to independent claim 1.
We also note that Appellant has not argued the dependent claims separately.
Accordingly, claims not argued separately will stand or fall together with
their respective independent claim.
Appeal 2010-006797
Application 10/612,196

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We are unpersuaded by Appellant’s arguments and agree with the
Examiner’s reasoning. It is a well known proposition that process steps in a
product claim are limiting to the extent they further define the structure of
the product. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). When a
claimed product reasonably appears to be substantially the same as a product
disclosed by the prior art, the burden is on the applicant to prove that the
prior art product does not necessarily or inherently possess characteristics
attributed to the claimed product. In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990). The Examiner correctly noted that
Figure 6 of FitzPatrick teaches a multilayer substrate meeting the
Appellant’s substrate as described by the subject matter of independent
claim 1. Ans. 5.
Appellant relies on the Declaration under 37 C.F.R. § 1.132 by
Francis L. Davenport (Declaration)2 to present statements of facts by an
expert in the field as evidence in support of the above noted arguments
(App. Br. 18-19). We agree with the Examiner’s reasoning that the
Declaration is insufficient to show that the substrate of FitzPatrick and
Appellant’s substrate as described by the subject matter of independent
claim 1 are different. Ans. 6. Appellant has failed to direct us to evidence to
support the assertion that the currently claimed product-by-process
limitations necessarily result in a product that is patentably distinct from the
product of FitzPatrick. We also agree with the Examiner that Appellant’s
arguments and statements in the Declaration are not commensurate with the

2 We note that Appellant argues that the Examiner did not properly consider
the Declaration. App. Br. 16. However, Appellant cited to the Declaration
throughout the Brief. In responding to the Brief, we find that the Examiner
considered the Declaration and found it unpersuasive. Ans. 6.
Appeal 2010-006797
Application 10/612,196

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scope of the claims. Id. As correctly noted by the Examiner, independent
claim 1 does not require fairly complete lamination between adjacent layers,
at nearly 100 percent coverage. Id. On this record, Appellant has not
adequately refuted the Examiner’s determination that FitzPatrick’s substrate
is identical or slightly different from Appellant’s substrate as described in
the subject matter of independent claim 1. Moreover, FitzPatrick clearly
discloses providing a polymeric coating on both sides of the substrate that
impregnates the fibrous layers. FitzPatrick, col. 3, ll. 61-63; col. 5, ll. 48-49.
Figure 6 of FitzPatrick shows both fibrous layers 48 coated on both sides
with the polymeric material 50.
Accordingly, we sustain the Examiner’s rejection of claims 1-11, 13
and 32-40 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as obvious over FitzPatrick.
Rejection of Claim 12 under 35 U.S.C. § 103(a)
We note that Appellant relies on the arguments presented against
claims 1 and 32 in addressing the rejection of claim 12 under 35 U.S.C.
§ 103(a) as unpatentable over FitzPatrick and Davenport. Accordingly, we
will also sustain this rejection for the reasons given above.
ORDER
The rejection of claims 1-11, 13 and 32-40 under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over FitzPatrick is affirmed.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over FitzPatrick and Davenport is affirmed.

Appeal 2010-006797
Application 10/612,196

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TIME PERIOD
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).

AFFIRMED

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