Ex Parte Giacometti

Patent Trial and Appeal Board

Dec 27, 2012

10552360 (P.T.A.B. Dec. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/552,360 06/16/2006 Claudio Giacometti 71975RCE 7251
23872 7590 12/27/2012
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
TOLIN, MICHAEL A
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
12/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CLAUDIO GIACOMETTI
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Appeal 2011-010186
Application 10/552,360
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
GEORGE C. BEST, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010186
Application 10/552,360

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 2, 4 through 14, 19 through 24, and 35 through 38. We have
jurisdiction under 35 U.S.C. § 6.
Appellant’s claimed invention relates to a method of producing a
perforated web. App. Br. 3. Claim 1 is illustrative:
1. A method to produce a perforated web material, the
method comprising the steps of:
providing a first roller and a second roller, said first roller and
said second roller defining a nip;
preheating a web material to form a preheated web material,
said web material being preheated prior to contacting said first
roller and said second roller, said preheated web material
having a preheated temperature, said preheated temperature
being greater than an ambient temperature;
feeding said preheated web material to an entrance of said nip
without contacting said second roller;
feeding said preheated web material through said nip;
rotating said first roller and said second roller in opposite
directions and pressing said first roller against said second
roller during said feeding of said preheated web material, said
first roller being provided with protuberances for perforation,
said protuberances contacting a surface of said second roller
without penetrating said surface of said second roller, wherein
said first roller and said second roller rotate with a different
peripheral speed to each other.
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The Examiner relied on the following references in rejecting the
appealed subject matter:

Pike US 5,382,400 Jan. 17, 1995
Majors US 5,704,101 Jan. 6, 1998
Giacometti US 5,709,829 Jan. 20, 1998
Cruise US 5,874,159 Feb. 23, 1999
Schulz US 5,913,997 June 22, 1999
Dettmer WO 99/25911 A1 May 27, 1999

Appellant requests review of the following rejections (App. Br. 14-15)
from the Examiner’s final office action:
1. Claims 1, 5, 19, 23 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Giacometti and either Schulz or Cruise.
2. Claims 2, 4 and 38 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Giacometti, Schulz or Cruise, and Majors.
3. Claims 6 and 10-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Giacometti, Schulz or Cruise, and Dettmer.
4. Claims 7-9, 20-22, 35 and 36 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Giacometti, Schulz or Cruise, Dettmer, and Pike.
5. Claim 37 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Giacometti, Schulz or Cruise, Dettmer, Pike, and Majors.

OPINION
The prior art rejections
The dispositive issue for all the rejections on appeal is: Did the
Examiner err in determining that the combination of Giacometti and either
Schulz or Cruise would have led one skilled in the art to a method of
producing a perforated web material comprising the step of preheating the
Appeal 2011-010186
Application 10/552,360

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web material prior to contacting a first roller and a second roller as required
by the subject matter of independent claims 1, 35, 36, and 38? 1
After thorough review of the respective positions provided by
Appellant and the Examiner, we answer this question in the negative and
AFFIRM for the reasons presented by the Examiner. We add the following.
The Examiner found that Giacometti discloses a method of
perforating a web by feeding a web material into a nip between a patterned
roller and a smooth roller and perforating the web material by rotating the
rollers at different speeds in opposite directions. App. Br. 4. The Examiner
also found that Giacometti does not disclose preheating web material prior to
contacting the rollers. Id. The Examiner found that Schulz and Cruise teach
that it was generally known to preheat a web prior to undergoing
thermomechanical treatments. Ans. 4-5. The Examiner found that it would
have been obvious to one of ordinary skill in the art to modify the method of
Giacometti to incorporate a preheating step to optimize the thermo-
mechanical process and increase the manufacturing speed. Id.
Appellant argues that Giacometti does not provide any teaching or
suggestion that would direct a person of ordinary skill in the art toward the
advantages of preheating a web material in a perforating process. App. Br.
17. Appellant further argues that both Schulz and Cruise are only concerned
with heating a web material in bonding operations and do not recognize the
advantages associated with preheating a web prior to perforation. Id. at 18.
We are unpersuaded by Appellant’s arguments. We agree with the
Examiner that it would have been obvious to one of ordinary skill in the art

1 We will limit our discussion to independent claim 1. Claims argued
separately will be addressed separately.
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to modify Giacometti’s method of perforating web material by incorporating
the preheating step prior to contact with the first and second rollers. Ans.
14-15. As pointed out by the Examiner, one skilled in the art would have
recognized that preheating the web material before performing a thermo-
mechanical treatment would lead to increased manufacturing speeds (Cruise)
and improved uniformity of the thermomechanical treatment (Schulz). Id.
A person of ordinary skill in the art would have reasonably expected that
performing Giacometti’s method of perforating web material including
preheating the web material prior to feeding the web material into the nip of
a first and second roller would also provide the above-mentioned benefits.
In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness
under § 103, all that is required is a reasonable expectation of success.”).
Appellant additionally argues that Schulz and Cruise disclose
processes wherein it is essential that the rollers rotate at the same rotational
speed while the present invention and the teachings of Giacometti require
that the rollers rotate at different speeds. App. Br. 17. However, Appellant
has not directed us to any portion of Schulz and Cruise that support this
contention. Ans. 16.
We note Appellant’s arguments with respect to claims 5, 19. 23, and
24 are substantially the same as the arguments addressed above. We direct
Appellant’s attention to our prior discussion as well as the discussion
provided by the Examiner.
Accordingly, we sustain the Examiner’s rejection of claims 1, 5, 19,
23, and 24 under 35 U.S.C. § 103(a) as obvious over Giacometti, Schulz and
Cruise for the reasons given above.
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In addressing the separate rejections of claims 2, 4, 6-14, 20-22, and
35-38, Appellant again relies principally on the arguments presented when
discussing Giacometti, Schulz, and Cruise. See App. Br. generally. These
arguments have been addressed above. Accordingly, we limit our discussion
of these rejections to arguments not previously addressed.
With respect to claims 2, 4 and 38, The Examiner relied on the
reference to Majors to teach a patterned roller with protuberances having
dimensions similar to the patterned roller claimed by Appellant. Ans. at 6.
Appellant argues that one skilled in the art would not be directed to the
teaching of Majors in modifying Giacometti because Majors, unlike
Giacometti, Majors teaches the smooth roller rotating faster than the
patterned roller. App. Br. 25.
We are unpersuaded by this argument and agree with the Examiner
that Majors describes a typical patterned roller. Ans. 6, 19. A person of
ordinary skill in the art would have been capable of adapting Majors’
patterned roller for use in the perforation process of Giacometti given that
Majors is also directed to a method of perforating web material. Majors col.
1, ll. 5-7. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art); In re Bozek, 416
F.2d 1385, 1390 (CCPA 1969). Appellant has not adequately explained why
one skilled in the art could not use the patterned roller of Majors in the
process of Giacometti.
Appellant argues that Giacometti does not teach the speed
relationships required by the subject matter of claims 12-14. App. Br. 32-
34. We are unpersuaded and agree with the Examiner that Giacometti
provides sufficient guidance to one skilled in the art to vary the various
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speed relationships to suit a particular base material. Ans. 8. Appellant has
not directed us to any evidence that the claimed speed relationships result in
any unexpected results over the method of Giacometti. Id. at 21. Appellant
has not adequately distinguished the claimed method from the method of
Giacometti.
With respect to claims 7-9, 20-22, 35, and 36, the Examiner further
relied on the reference to Pike to teach in-line production of web materials.
Ans. 9. Appellant argues that Pike does not provide any teaching that or
suggestion that the fabric is subjected to further processing. We have
considered Appellant’s arguments (App. Br. 35-46). These arguments are
not persuasive because they do not address the reasons for which the
Examiner relied on Pike.
Accordingly, we affirm the separate rejections of claims 2, 4, 6-14,
20-22, and 35-38 under 35 U.S.C. § 103(a) for the reasons given above and
by the Examiner.

ORDER
The rejection of claims 1, 5, 19, 23, and 24 under 35 U.S.C. § 103(a)
as unpatentable over Giacometti and either Schulz or Cruise is affirmed.
The rejection of claims 2, 4 and 38 under 35 U.S.C. § 103(a) as
unpatentable over Giacometti, Schulz or Cruise, and Majors is affirmed.
The rejection of claims 6 and 10-14 under 35 U.S.C. § 103(a) as
unpatentable over Giacometti, Schulz or Cruise, and Dettmer is affirmed.
The rejection of claims 7-9, 20-22, 35 and 36 under 35 U.S.C.
§ 103(a) as unpatentable over Giacometti, Schulz or Cruise, Dettmer, and
Pike is affirmed.
Appeal 2011-010186
Application 10/552,360

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The rejection of claim 37 under 35 U.S.C. § 103(a) as unpatentable
over Giacometti, Schulz or Cruise, Dettmer, Pike, and Majors is affirmed.

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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