Ex Parte Grecksch et al

Board of Patent Appeals and Interferences

Mar 20, 2009

10215147 (B.P.A.I. Mar. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HANS GRECKSCH, HEINZ-DIETER GÖBBELS, and
MANFRED LAßMANN
____________

Appeal 2008-2342
Application 10/215,147
Technology Center 3600
____________

Decided: March 20, 2009
____________

Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Hans Grecksch et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 7-14, which are the only claims
pending in the application. We have jurisdiction over this appeal under 35
U.S.C. § 6 (2002).
This is the second appeal in this application. In the Decision in the
first appeal (2004-2115), the panel1 affirmed the rejection of claims 1-6
under 35 U.S.C. § 103(a) as being unpatentable over Kamp and Paweletz.
Appellants subsequently canceled claims 1-6, and added claims 7-14.
Independent claim 7 is narrower in many respects as compared with
canceled claim 1.

The Invention
Appellants’ claimed invention is directed to an open-end rotor
spinning machine having at least two similar work stations. Specification,
para. [0002]. The spinning machine has “numerous individual drives at the
individual work stations wherein the individual drives can be controlled in a
defined manner by a work-station computer.” Id.
Claim 7, reproduced below, is the only independent claim involved in
this appeal, and is representative of the claimed subject matter.
7. An open-end rotor spinning machine having at
least two work stations, wherein each respective
work station comprises a respective plurality of
components mounted as an integral part of the
respective work station in dedicated operative

1 Judges Frankfort and McQuade have subsequently retired from the Board
of Patent Appeals and Interferences.
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relationship with only the respective work station
to be fully self-sufficient for maintaining an
established regular yarn spinning and winding
operation and for repair of yarn breaks and re-start
of regular spinning and winding operation after
repairing yarn breaks, without intervention of a
traveling service unit external to the work stations
to assist in repairing yarn breaks or in restarting
spinning and winding operation thereafter, each
said work station respectively comprising as said
dedicated components:
a separate respective open-end spinning
device for manufacturing a yarn,
a separate respective individual drive motor
for driving the open-end spinning device,
a separate respective winding device for
winding the yarn onto a cheese,
a separate respective individual drive motor
for driving the winding device,
a separate respective yarn traversing device
for the defined placement of the yarn onto the
cheese for producing the cheese,
a separate respective individual drive motor
for driving the yarn traversing device,
a separate respective spinning piecing
member for opening a broken yarn end to be
prepared for repairing a yarn break prior to
restarting spinning and winding operation,
a separate respective individual drive for
driving the spinning piecing member,
a pivotably supported, vacuum-chargeable
suction nozzle for locating a broken yarn end for
repair of the broken yarn end and restarting
spinning and winding operation,
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a separate respective individual drive motor
for driving the suction nozzle, a separate respective
yarn withdrawal device for withdrawing yarn from
the open-end spinning device,
a separate respective individual drive motor
for driving the yarn withdrawal device, and a
separate respective workstation computer for
individually regulating each said drive motor
independently of each other said drive in a defined
manner for processing the yarn of the workstation,
a plurality of the individual drives, including
the drive for the winding device and the drive for
the yarn withdrawal device, being operable under
regulation of the workstation computer in reverse
operation relative to regular spinning and winding
operation for eliminating a yarn break and
restarting the workstation after a yarn break,
wherein each respective work station is
simultaneously operable for repairing yarn breaks.

The Rejection
Appellants seek review of the Examiner’s rejection of claims 7-14
under 35 U.S.C. § 103(a) as being unpatentable over Kamp (US 4,041,684,
issued Aug. 16, 1977) and Paweletz (US 6,412,266 B2, issued Jul. 2, 2002).

SUMMARY OF DECISION
We AFFIRM, and enter a new rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008).
ISSUES
Appellants have not presented any separate arguments for claims 8-14
apart from claim 7. Accordingly, claims 8-14 stand or fall with
representative claim 7.
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The Examiner found that Kamp discloses all of the limitations of
claim 7, with the exception of the drives of the pivoting suction nozzle,
winding device, yarn traversing device, and yarn withdrawal device each
having an individual motor capable of reversible operation and connected to
a workstation computer for controlling the individual motors in a defined
manner. Answer 3-4. The Examiner determined it would have been
obvious to modify the workstation of Kamp to include individual motors to
drive the individual components as suggested by Paweletz in order to avoid
mechanical gear arrangements of a centrally driven spinning machine and
the repair costs and large start-up momentum associated therewith, improved
precision in the drive and correlation of the operation of the rotational
elements of the workstation, and the advantage of having one power control
center for the work station drives for precise drive of individual rotational
elements of the spinning machine. Answer 4-5.
Appellants submitted a Declaration by Dr. William Oxenham
(“Oxenham Declaration”) in support of their arguments that the subject
matter of claim 1 would not have been obvious in view of the combined
teachings of Kamp and Paweletz. Appellants argued in their Appeal Brief
that the Examiner has not given the Oxenham Declaration proper
consideration. Appeal Br. 7-8.
Appellants argued that Kamp discloses the suction nozzle means,
means for reverse driving the yarn winding device, and the yarn preparation
and piecing components necessary for splicing together the broken yarn as
part of a traveling device, and not part of any individual spinning station, as
called for in claim 7. Appeal Br. 10. According to Appellants, Kamp
teaches away from locating these components and functions of the traveling
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device at each spinning station, because it is more economical to provide a
common traveling joining or piecing device for several spinning stations.
Appeal Br. 11. According to Appellants, the most that would have been
obvious from a combined reading of Kamp and Paweletz is to provide
individual drives as part of a spinning station according to the teachings of
Paweletz, but to continue to provide a traveling service unit, such as that of
Kamp, for repair of yarn breakages. Appeal Br. 12.
Therefore, the first issue in this appeal is whether Appellants have
demonstrated the Examiner erred in determining the subject matter of claim
7 would have been obvious from the combined teachings of Kamp and
Paweletz. This issue turns in part on whether Kamp teaches providing the
components and functions of the joining and piecing device 24 as an integral
part of each spinning machine work station, as urged by the Examiner, or in
fact teaches away from such an arrangement, as urged by Appellants. This
issue also turns on whether one of ordinary skill in the art would have been
prompted to provide individual, reversible drives for the spinning, winding,
and yarn preparation and piecing components of each work station in
Kamp’s spinning machine.
Another issue in this appeal is whether Appellants’ Specification as
originally filed provides written description support for the subject matter of
Appellants’ claims as required by the first paragraph of 35 U.S.C. § 112.

FACTS PERTINENT TO THE ISSUES
1. The Examiner found that Kamp discloses a winding device (take-up
roll 20 and coil holder 21); a yarn withdrawal device (withdrawal
roller 16); a yarn traversing device (reciprocating thread guide 19) for
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producing a cheese (coil 22); a pivotably supported suction nozzle
(suction tube 38 widening to suction nozzle 39); and a spinning
piecing member (withdrawal tube 15), as called for in claim 7.
Answer 3. Appellants have not disputed these findings. We thus
adopt these findings in reaching our decision. Kamp further discloses
a spinning device (spinning chamber with a non-illustrated rotor).
Kamp, col. 3, ll. 30-31; col. 7, ll. 30-31.
2. Kamp’s pivotable suction tube 38, with suction nozzle 39, and
reversal device 47 comprising reversing roller 48 for reversing the
winding direction of take-up coil 22 are included as part of device 24.
Kamp, col. 3, l. 40 to col. 4, l. 3; col. 5, ll. 55-62.
3. Kamp teaches that the device 24 “can be located at every spinning
station of the spinning machine. It is more economical, however, to
provide a common traveling joining or piecing device for several
spinning stations.” Kamp, col. 2, ll. 51-55. We find this is an
explicit teaching of two embodiments, a first wherein the components
of the device 24 are included as an integral part of each spinning
station (work station) and a second wherein a common traveling
joining or piecing device is provided for several spinning stations.
4. Kamp does not explicitly teach how the spinning rotor of the spinning
chamber is driven, but does teach control of the start-up of the rotor
rotation from within the spinning station 11 (work station) via switch
118. Kamp, col. 7, ll. 30-32.
5. Kamp does not explicitly teach independent drives for each of the
components referred to in Fact 1.
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6. Paweletz teaches that in conventional spinning machines, the rotating
elements which follow the feed drum in the direction of the band
movement, such as the rotor, for example, are centrally driven by
motors provided on an end of the spinning machine, thereby requiring
electrically-controlled, mechanical gear drives to achieve the
necessary synchronization of, for example, the feed roll, withdrawal
roll, and spool roll. Paweletz, col. 1, ll. 18-25. Such gear drives
require substantial maintenance and present a relatively large startup
momentum. Paweletz, col. 1, ll. 28-34.
7. Paweletz seeks to overcome the drawbacks of gear drives referred to
in Fact 6 by providing additional independent drives, in particular, for
the withdrawal roll, spool roll, and waxing roll. Paweletz, col. 1, ll.
46-55.
8. According to Paweletz, since the rotational ratios of the individual
drives of each spinning station can be specified, an optimized
correlation in synchronization, operational life, and rotational speed is
assured. Paweletz, col. 1, ll. 55-58.
9. Paweletz further teaches that the provision of individual drives offers
the additional advantages of avoiding damage-prone gear drive
constructions, presenting a very low degree of nominal torque, and
avoiding startup delays. Paweletz, col. 1, l. 58 to col. 2, l. 4.
10. Paweletz teaches use of stepping motors as the drives because they
possess only very few parts devoid of gear drives, which are
susceptible to wear and tear, have relatively small inertia, can be
accelerated quickly, can be brought up to speed on a continuous basis,
and can be driven in reverse. Paweletz, col. 2, l. 62 to col. 3, l. 7.
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11. According to Paweletz, the precision of individual stepping motors for
the various components “permits running the spinning station as a
‘stand alone machine’ with the corresponding demands for a high
degree of precision.” Paweletz, col. 3, ll. 32-34.
12. Paweletz’s teachings of the advantages of providing individual
stepping motor drives for the components of each spinning station
would have provided ample motivation to a person of ordinary skill in
the art to provide individual stepping motor drives for the components
of each of Kamp’s spinning stations to attain those same advantages.
13. Paweletz discloses that the rotor 4 of the spinning device rotates by
means of a central drive for all rotors of the spinning machine.
Paweletz, col. 4, ll. 21-23.
14. On the basis of the credentials set forth on pages 1-2 of the Oxenham
Declaration, we find that Dr. Oxenham (Declarant) is an expert in the
field of yarn manufacture.
15. The Oxenham Declaration presents no credentials of Declarant as an
expert in intellectual property or, in particular, the standard for
obviousness under 35 U.S.C. § 103. Accordingly, we do not credit
Declarant as an expert on the standard of obviousness under 35 U.S.C.
§ 103.
16. The Oxenham Declaration points out that the use of individual drives
for various components of each work station, as required in claim 7,
permits each work station to operate essentially as an independent
spinning station and enables a particular drive on one station to
operate at a different speed from the same drive on an adjacent work
station. Oxenham Decl. 5. This, in turn, permits the user to spin
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several yarns on one machine and opens up the potential for more
flexibility with regard to lot size. Id.
17. Declarant opines that the idea of individual piecing units on each
spinning station, rather than on a traveling unit servicing many
different spinning stations in a spinning machine, would not have
been obvious at the time Appellants’ invention was made. Oxenham
Decl. 6.
18. Declarant states that the use of a central drive for driving the rotor 4 of
all of the spinning stations, as disclosed by Paweletz, precludes each
spinning station from being self-sufficient. Oxenham Decl. 7.
19. Declarant states that Appellants’ invention is for a machine in which
the various spinning stations can produce yarns which are deliberately
different, while the combination of Kamp and Paweletz results in a
spinning machine which yields yarns which are ideally the same.
Oxenham Decl. 8.
20. Declarant opines that Appellants’ invention, in particular including a
piecing unit at each spinning station and individual drives for each of
the components, would not have been obvious at the time it was made
because it would have been cost prohibitive. Oxenham Decl. 8.
According to Declarant, relatively recent changes in the textile
industry have dictated that in order to be viable, many spinning
machines must be capable of producing relatively small lots with
rapid turn around. Id. Declarant states that the ability to
simultaneously spin different yarns on one spinning machine is a new
development aimed at capturing that small lot market that would not
have been predicted at the time Appellants’ invention was made. Id.
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21. Declarant points out that recently the trend has been toward longer
machines with centralized drives, and states that, even as an expert in
the field, he was surprised by Appellants’ invention of a spinning
machine providing individual drives to each component. Oxenham
Decl. 9.
22. Declarant states that the placement of a piecing unit as taught by
Kamp at every spinning station would render the machine almost
unusable since the piecing unit would block access to rotors and other
spinning components, rendering manual intervention for maintenance
extremely difficult. Oxenham Decl. 9-10. According to Declarant, by
contrast, Appellants’ invention is a system in which the piecing unit is
integrated into the spinning position so that access to components is
unimpeded. Oxenham Decl. 10.
23. We find no disclosure in Appellants’ Specification as originally filed
that the spinning device, winding device, yarn traversing device,
spinning piecing member, suction nozzle, and yarn withdrawal device
are mounted as an integral part of the respective work station in
dedicated operative relationship with only the respective work station
to be fully self-sufficient.
24. We find no disclosure in Appellants’ Specification as originally filed
that the components of the work stations operate without intervention
of a traveling service unit external to the work stations.
25. Appellants’ Specification discloses a work station 1 comprising “as is
known and, therefore, only schematically shown, an open-end spinnng
device 2 and a winding device 3.” Specification, para. [0025]. The
workstation computer 25 controls braking of the spinning device 2 of
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that work station and associated winding device 3 to a standstill.
Specification, para. [0033]. Appellants’ Specification does not
disclose an individual drive for each spinning device of each work
station. Rather, Appellants’ Specification discloses only a
conventional spinning device. As pointed out by Paweletz (Fact 6), in
conventional spinning machines, the rotating elements which follow
the feed drum in the direction of the band movement, such as the
rotor, for example, are centrally driven by motors provided on an end
of the spinning machine.
26. We find no disclosure in Appellants’ Specification of a separate
individual drive for driving the spinning piece member 16.

PRINCIPLES OF LAW
Appellants’ Burden
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Obviousness
Section 103 forbids issuance of a patent
when “the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to a
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person having ordinary skill in the art to which
said subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1734
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. 398 at ___, 127 S. Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”).
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
___, 127 S. Ct. at 1741.
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
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Id. at ___, 127 S. Ct. at 1740. We must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions. Id.
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” Id. at ___, 127 S. Ct. at 1742. To support a conclusion of
obviousness, all of the features of the secondary reference need not be bodily
incorporated into the primary reference. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). Moreover, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984).
In determining whether the subject matter of a claim is obvious,
“neither the particular motivation nor the avowed purpose of the [applicant]
controls. What matters is the objective reach of the claim.” KSR, 550 U.S.
at ___, 127 S. Ct. at 1741-42. If the claim extends to what is obvious, it is
unpatentable under § 103. “One of the ways in which [claimed] subject
matter can be proved obvious is by noting that there existed at the time of
invention a known problem for which there was an obvious solution
encompassed by the [claims].” Id. at ___, 127 S. Ct. at 1742.
[O]bviousness must be determined in light of all
the facts, and there is no rule that a single
reference that teaches away will mandate a finding
of nonobviousness. Likewise, a given course of
action often has simultaneous advantages and
disadvantages, and this does not necessarily
obviate motivation to combine. See [Winner Int'l
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8
(Fed. Cir. 2000)] (“The fact that the motivating
benefit comes at the expense of another benefit,
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however, should not nullify its use as a basis to
modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both
lost and gained, should be weighed against one
another.”). Where the prior art contains
“apparently conflicting” teachings (i.e., where
some references teach the combination and others
teach away from it) each reference must be
considered “for its power to suggest solutions to an
artisan of ordinary skill.... consider[ing] the degree
to which one reference might accurately discredit
another.” In re Young, 927 F.2d 588, 591
(Fed.Cir.1991).
Medichem, S.A. v. Rolabo, S.L.¸437 F.3d 1157, 1165 (Fed. Cir. 2006).
Absent a showing of long-felt need or the failure of others, the mere
passage of time without the claimed invention is not evidence of
nonobviousness. Iron Grip Barbell Company, Inc. v. USA Sports, Inc., 392
F.3d 1317, 1324-25 (Fed. Cir. 2004).
Written Description Requirement
35 U.S.C. § 112, first paragraph, requires a
“written description of the invention” which is
separate and distinct from the enablement
requirement. The purpose of the “written
description” requirement is broader than to merely
explain how to “make and use”; the applicant must
also convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, he or she
was in possession of the invention. The invention
is, for purposes of the “written description”
inquiry, whatever is now claimed.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). It is
also well settled that the question of whether a modification is an obvious
variant of that which is originally disclosed is irrelevant insofar as the
written description requirement is concerned. See, e.g., Lockwood v.
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American Airlines Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997) and In re
Wohnsiedler, 315 F.2d 934, 937 (CCPA 1963).

ANALYSIS
Obviousness
As noted in our findings above, Kamp discloses all elements of claim
7 with the exception of separate individual drives for each of the winding
device (take-up roll 20 and coil holder 21); yarn withdrawal device
(withdrawal roller 16); yarn traversing device (reciprocating thread guide
19) for producing a cheese (coil 22); pivotably supported suction nozzle
(suction tube 38 widening to suction nozzle 39); and spinning piecing
member (withdrawal tube 15). In particular, as noted above, we find that
Kamp explicitly teaches two embodiments, a first wherein the components
of the device 24 are included as an integral part of each spinning station
(work station) and a second wherein a common traveling joining or piecing
device is provided for several spinning stations. That Kamp points out that
the embodiment wherein the components of device 24 are provided in a
common joining or piecing device which travels to service multiple spinning
stations is more economical is not a teaching away from providing the
components as an integral part of each spinning station. A reference is not
limited to its preferred embodiment, but must be evaluated for all of its
teachings, including its teachings of non-preferred embodiments. In re
Burckel, 592 F.2d 1175, 1179 (CCPA 1979). That there may be trade-offs,
such as the disadvantage of a less economical arrangement versus the
advantage of simultaneous operation at multiple stations, associated with the
design decision to provide dedicated joining or piecing equipment at every
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spinning station rather than provide a traveling unit does not negate Kamp’s
explicit teaching of such an embodiment.
Appellants argued that the fact that no one within the textile industry
has even attempted Appellants’ invention, much less implemented it, in spite
of advances in technology over the ensuing 28 years since the issuance of
Kamp, indicates that Appellants’ invention would not have been obvious.
Appeal Br. 12. This argument is not persuasive. As noted above, absent a
showing of long-felt need or the failure of others, the mere passage of time
without the claimed invention is not evidence of nonobviousness. Iron Grip
Barbell. The mere age of the references is not persuasive of the
unobviousness of the combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and failed to solve
the problem. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977); In re Neal,
481 F.2d 1346, 1347 (CCPA 1973); In re McGuire, 416 F.2d 1322, 1327
(CCPA 1969).
As noted above, we find that Paweletz’s teachings of the advantages
of providing individual stepping motor drives for components of each
spinning station to permit operation of each spinning station as a “stand
alone machine” would have prompted a person of ordinary skill in the art to
provide individual stepping motor drives for each of the components of each
spinning station of Kamp to attain those same advantages, namely, an
optimized correlation in synchronization, operational life, and rotational
speed; elimination of damage-prone gear drive constructions that result in
startup delays; and capability of reverse operation. While Paweletz does not
explicitly teach a separate individual drive for every component of the
spinning station, such as the rotor of the spinning device, for example,
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Paweletz provides an incentive to do so, namely, to provide a fully stand
alone spinning station. We are reminded that while there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at ___, 127 S. Ct. at
1741. A person of ordinary skill in the art exercising only ordinary
creativity would have immediately appreciated that without a separate
individual drive for each rotor of each spinning station, the spinning station
cannot truly operate as a stand alone machine or avoid the pitfalls of lengthy
powertrains with associated gear drives, and would have been prompted to
apply Paweletz’s teachings to any or all of the components of each spinning
station.
For the above reasons, we conclude that the Examiner’s combination
of the teachings of Kamp and Paweletz establishes a prima facie case of
obviousness of the subject matter of claim 7. As pointed out above, we must
now consider the evidence of secondary considerations, in the form of the
Oxenham Declaration, en route to the ultimate determination of obviousness
or nonobviousness of the claimed subject matter. Accordingly, we consider
anew the issue of obviousness under 35 U.S.C. § 103, carefully evaluating
and weighing both the evidence relied upon by the examiner and the
evidence provided by Appellants. See In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984) and Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538
(Fed. Cir. 1983).
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As pointed out in our findings above, the credentials set forth on
pages 1-2 of the Oxenham Declaration amply establish that Declarant is an
expert in the field of yarn production, but do not establish that Declarant is
an expert in the field of intellectual property, or obviousness under 35
U.S.C. § 103, in particular. An expert’s opinion on the legal conclusion of
obviousness is neither necessary nor controlling. Avia Group Intern., Inc. v.
L.A. Gear Inc., Calif., 853 F.2d 1557, 1564 (Fed. Cir. 1988). Furthermore,
obviousness is an objective standard based on a hypothetical person of
ordinary skill in the art. Declarant’s subjective impression of obviousness or
whether he ever considered a spinning machine providing individual drives
to each component, or individual piecing units on each spinning station,
rather than on a traveling unit servicing many different spinning stations in a
spinning machine, is immaterial to the obviousness determination. See, e.g.,
Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir.
1985).
Declarant points out that providing individual drives for every
component of each spinning station, as called for in claim 7, advantageously
offers flexibility to produce deliberately different yarns on the various
spinning stations. While this may be accurate, this is simply a predictable
result of providing individual drives. Moreover, the record does not clearly
support Declarant’s assertion that this flexibility to produce different yarns
on the various spinning stations is not possible on a spinning machine
wherein the rotors of all spinning devices are driven by a common drive.
The individual and independent operation of each spinning device can be
afforded with the use of differential gearing, clutches, and switches. In fact,
as noted in our findings above, Kamp explicitly teaches control of the start-
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up of the rotor rotation from within the spinning station 11 (work station) via
switch 118.
Declarant’s opinion that Appellants’ claimed invention, including a
piecing unit at each spinning station and individual drives for each of the
components, would not have been obvious at the time of Appellants’
invention because it would have been cost prohibitive at that time is entitled
to little, if any, weight, for the reasons discussed above. Simply that benefits
may come at the expense of another benefit does not obviate the clear
teachings in the art. While Kamp recognized that providing dedicated
joining or piecing equipment at every spinning station was less economical
than providing a common traveling joining or piecing device, in disclosing
that embodiment, Kamp clearly also appreciated that in some circumstances
the less economical approach might nonetheless be the desired approach.
That market conditions at the time of Appellants’ invention may not have
been such that the less economical approach of providing separate, dedicated
drives and joining or piecing components on each spinning machine would
have been the preferred approach, as implied by Declarant, does not negate
the clear teachings by Kamp and Paweletz of the benefits of doing so, where
desired.
Finally, Declarant’s assertion that the placement of a piecing unit as
taught by Kamp at every spinning station would render the machine almost
unusable since the piecing unit would block access to rotors and other
spinning components, rendering manual intervention for maintenance
extremely difficult, does not take into account the fact that a person of
ordinary skill in the art is also a person of ordinary creativity, not an
automaton. As noted above, obviousness does not require that the teachings
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of one reference be bodily incorporated into another without independent
judgment on the part of the artisan. There is no evidence in this record
showing that integration of the joining or piecing components of Kamp’s
device 24 into each spinning station without blocking access to rotors or
other spinning equipment would have been beyond the technical grasp of a
person of ordinary skill in the art.
After reviewing all of the evidence before us, it is our conclusion that,
on balance, the evidence of nonobviousness fails to outweigh the evidence
of obviousness discussed above and, accordingly, the subject matter of claim
7 would have been obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103 at the time Appellant's invention was made. See
Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997).
Written Description – New Ground of Rejection
Subsequent to the Decision in the first appeal (2004-2115), Appellants
added claims 7-14, which include several limitations not described in
Appellants’ application as originally filed. For example, as noted in our
findings above, Appellants’ application as originally filed contains no
disclosure of the following features of claim 7:
• the spinning device, winding device, yarn traversing device,
spinning piecing member, suction nozzle, and yarn withdrawal
device being mounted as an integral part of the respective work
station in dedicated operative relationship with only the
respective work station to be fully self-sufficient;
• the components of the work stations operating without
intervention of a traveling service unit external to the work
stations;
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• an individual drive for each spinning device of each work
station; and
• a separate individual drive for driving the spinning piece
member.
Appellants’ Specification does not convey with reasonable clarity to
those skilled in the art that, as of the filing date of the present application,
Appellants were in possession of the invention as now claimed. Therefore,
pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 7-14
under 35 U.S.C. § 112, first paragraph, as containing subject matter which
was not described in Appellants’ Specification so as to convey to those of
ordinary skill in the art that Appellants were in possession of the claimed
invention at the time the application was filed.

CONCLUSIONS OF LAW
Appellants have not demonstrated the Examiner erred in determining
the subject matter of claim 7 would have been obvious from the combined
teachings of Kamp and Paweletz.
Appellants’ Specification as originally filed fails to provide written
description support for the subject matter of Appellants’ claims as required
by the first paragraph of 35 U.S.C. § 112.

DECISION
The Examiner’s decision is affirmed, and a new rejection of claims 7-
14 under 35 U.S.C. § 112, first paragraph, is entered pursuant to 37 C.F.R.
§ 41.50(b).
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23
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
“[a]ppellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, 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 Appellants, 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 proceeding 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. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
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Application 10/215,147

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case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED; 37 C.F.R. § 41.50(b)

ewh

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