Ex Parte Gusky et al

Board of Patent Appeals and Interferences

Mar 31, 2009

10887732 (B.P.A.I. Mar. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT IRVING GUSKY, JUHA P. KEMPPINEN, STEVEN
GERALD SUKOWATEY and KEVIN CHRISTOPHER
____________

Appeal 2009-1335
Application 10/887,732
Technology Center 1700
____________

Decided:1 March 31, 2009
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-1335
Application 10/887,732
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-15 and 27. We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to an air laid substrate
comprising a web of cellulosic fibers with at least one textured surface
characterized by the functional capability of casting a shadow that is greater
than 10 percent (percent shadow area).
Claim 1 is illustrative and reproduced below:
1. An air laid substrate comprising:
cellulosic fibers formed into a web by at least one air laid former;
the substrate having two opposing surfaces and wherein at least one
of the opposing surfaces comprises a textured surface; and
the at least one textured surface has a Percent Shadow Area greater
than about 10 percent.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Pietreniak 4,127,637 Nov. 28, 1978
Win 5,667,635 Sep. 16, 1997
Ostendorf US 6,602,577 B1 Aug. 05, 2003

The Examiner maintains the following rejections:
I. Claims 1-11, and 15 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Pietreniak.
II. Claims 12-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pietreniak in view of Win.
III. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pietreniak in view of Ostendorf.
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Application 10/887,732
We affirm the stated rejections for reasons set forth in the Answer as
further explained below.
Appellants argue all of the commonly rejected claims as a group and
argue for the patentability of separately rejected claims 12-14 and 27, on the
basis of arguments made against the Examiner’s rejection of claim 1. Thus,
we select claim 1 as the representative claim for the first stated rejection on
which claim we shall primarily focus in rendering our decision in this
appeal.

PRINCIPAL ISSUES
Have Appellants identified reversible error in the Examiner’s
anticipation and/or obviousness rejections by establishing that the Examiner
has no reasonable basis for the belief that the texture-surface containing air
laid substrate described or suggested by Pietreniak would not implicitly or
obviously possess a Percent Shadow Area of greater than about 10 percent
and/or by furnishing evidence that conclusively shows that an air laid
substrate made by the method taught or suggested by Pietreniak would not
have possessed the claimed Percent Shadow Area.

Summary Disposition
We answer these questions in the negative and we affirm the
Examiner’s rejections.

PRINCIPLES OF LAW
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).
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Application 10/887,732
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); accord Glaxo Inc. v.
Novopharm, Ltd., 52 F.3d 1043, 1047 (Fed. Cir. 1995). However,
anticipation by a prior art reference does not require that the reference
recognize either the inventive concept of the claimed subject matter or the
inherent properties that may be possessed by the prior art reference. See
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 633 (Fed. Cir.
1987).
Anticipation under this section is a factual determination. See In re
Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing In re
Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
Where the claimed and prior art products are seemingly identical, the
Patent and Trademark Office can require an applicant to prove that the prior
art products do not necessarily or inherently possess the characteristics of the
claimed product. See In re Best, 562 F.2d 1252, 1254-55 (CPPA 1977). The
fairness of so allocating the burden of proof is evinced by the inability of the
Patent and Trademark Office to obtain and compare such products. Id.
Moreover, “[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting patent claims.”
In re Schreiber, 128 F.3d at 1478. “Yet, choosing to define an element
functionally, i.e., by what it does, [or can do,] carries with it a risk.” Id. As
our reviewing court stated in Schreiber, 128 F.3d at 1478 quoting In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971):
[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority
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Application 10/887,732
to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristic relied
on.

“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 person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
A person of ordinary skill is also a person of ordinary creativity, not
an automaton. KSR, 127 S. Ct. at 1742. One of ordinary skill in the art is
presumed to have skills apart from what the prior art references expressly
disclose. See In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985).
The question under 35 U.S.C. § 103 is not merely what the references
teach but what they would have suggested to one of ordinary skill in the art
at the time the invention was made. All disclosures of the prior art must be
considered. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).
During examination, claim terms must be given “their broadest
reasonable construction consistent with the specification.” In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007). In this regard,
the claims are accorded the broadest reasonable interpretation consistent
with the Specification as they would have been understood by one of
ordinary skill in the art. See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir.
1995).

REJECTION I.
Claim Construction- Representative Claim 1
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Application 10/887,732
Claim 1 requires that an “at least one textured surface [of an air-laid
substrate comprising a web of cellulosic fibers] has a percent Shadow Area
greater than about 10 percent.” Claim 1 does not contain any explicit
limitation on how the shadow area is measured by specifying a particular
shadow area measuring technique.
In the “Detailed Description” section of the Specification, it is stated
that: “[t]he inventors have discovered that a specific combination of process
parameters are needed to form a textured air laid web, which has superior
texture as measured by the Percent Shadow area test herein later described”
(Spec. 7, ll. 21-23). However, the “Detailed Description” section of the
Specification also provides that the discussion and exemplary embodiments
detailed therein are not to be construed as limiting (Spec., para. bridging 2-
3).
Moreover in the “Test Methods” section of the Specification, the
Specification provides that “[t]he percent shadow area determines the size of
the shadow area as a percent of the surface area of an embossed substrate
when illuminated by light at a predetermined angle” without requiring that a
particular angle of incident light must be used for the test (Spec. 22, ll. 14-
15). In this regard, one test method presented in the latter section of the
Specification indicates how a substrate sample should be prepared, should be
adhered to a flat glass plate, should be handled, and should be hit with
illumination at a 30 degree angle, without actually requiring that the
particular procedures set forth must be strictly adhered to (Spec. 22-30).
The Specification states that:
Without wishing to be bound by theory, the Percent
Shadow Area is believed to be influenced by at least two
factors. The first factor is the Percent Bond Area. As more of
the surface is embossed, more shadows will be generated. The
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Application 10/887,732
second factor is the depth of the resulting embossing in the
textured substrate. As the embossing depth increases, more
shadow areas will be formed. Visualize walking down a city
street with lots of skyscrapers late in the afternoon as the sun is
setting versus walking down a city street with only single story
buildings at the same time of day. The first factor is a function
of the embossing pattern chosen, while the second factor is to
some degree a measure of the efficiency or success of
generating deeper embossed patterns in the textured substrate.
Spec. 29-30
Consequently, we determine that claim 1 requires a percent shadow
area greater than about 10 percent as determined by any method of casting a
shadow and measuring percent shadow area, such as by a method as set forth
in the Specification or by any other available method, while using incident
light at any given angle capable of casting a shadow on a textured surface.
This claim interpretation is consistent with PTO
administrative/jurisprudential standard of giving the claim terms their
broadest reasonable construction as they would be understood by one of
ordinary skill in the art when the claims are read in light of the Specification
and without incorporation of limitations from the Specification into the
claims. Also, see the last sentence of the Specification prior to the claims
section (Spec. 23).

ADDITIONAL RELEVANT FINDINGS OF FACT AND ANALYSIS
Appellants acknowledge that Pietreniak “discloses a dry-formed web
that is embossed, has a permanent binder applied to stabilize the embossing
pattern, and then is print-creped from a creping surface with a creping doctor
blade” (App. Br. 5).
Appellants further acknowledge that Pietreniak “teaches that the
densified regions of the web (embossments) cover from about 15% to about
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Application 10/887,732
40% of the planer area of the web” (id.; Ans. 3; Pietreniak, col. 6, ll. 28-46).
In this regard, Pietreniak discloses that densified regions of the web have a
density of about 0.150 to 0.200 grams per cubic centimeter whereas high loft
web regions are of a density of no more than about 0.100 grams per cubic
centimeter (col. 6, ll. 28-46).
The Examiner has indisputably found that “Pietreniak discloses an air
laid web which may comprise 100% cellulosic pulp fibers” (Ans. 2;
Pietreniak, col. 4, ll. 7-26, col. 7, ll. 2-31). See generally App. Br. While
Pietreniak indicates that creping is beset with an inclination to remove at
least some of the embossed pattern, Pietreniak discloses that “the embossed
pattern is, in most instances, clearly visible in the completed sheet 27 of this
invention” (col. 8, ll. 65-67). In this regard, Pietreniak describes a
preferred embodiment wherein “a fine crepe pattern 24 will be associated
with creped surfaces associated with the high-loft areas 12, and a coarser,
undulating pattern 26 will be associated with creped surfaces associated with
the compressed areas 14” (col. 9, ll. 16-20; Figs. 3-5). Moreover, Pietreniak
discloses controlling the creping of the dry-formed web to yield nonwoven
sheets “that may possess any one of a number of different textures ….” (col.
3, ll. 41-48).
Given the above and for reasons further set forth in the Answer, the
Examiner has furnished a reasonable factual inference in asserting that the
textured surfaced product substrate (embossed cellulosic sheet) of Pietreniak
would be reasonably expected to cast a shadow that would be expected to
provide for a Percent Shadow Area greater than 10 percent. This is
particularly so given that representative claim 1 does not require a particular
incident angle and/or specified technique for measuring Percent Shadow
Area under a given set of shadow test conditions for reasons set forth above.
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Thus, the Examiner has presented a reasonable factual basis in the
description of Pietreniak sufficient to establish prima facie anticipation of
the representative claim 1 subject matter by Pietreniak and to thereby shift
the burden of production to Appellants to establish otherwise.
Appellants have not satisfied this burden of production, on this record.
Appellants may be correct that a correspondence in percent bond area
between the cellulosic products described by Pietreniak and the
representative claim 1 product (as evidenced by dependent claim 5) may not
be enough, by itself, to expect a Percent Shadow Area for the products
described by Pietreniak to substantially correspond to that claimed to
establish anticipation by Pietreniak assuming claim 1 were limited to a
percent shadow area determined in accordance with particularly exemplified
test conditions according to the Specification (App. Br. 6-9). However,
claim 1 is not so limited as we noted above.
Moreover, even if claim 1 were so limited, we note that Pietreniak not
only describes a product corresponding to the claimed product in percent
bond area but also describes a product that is air laid, made of cellulosic
materials, and that includes an embossed or textured surface, as called for in
representative claim 1. These facts coupled with further disclosure in
Pietreniak, including particular incorporated by reference methods and
apparatus, for air laying the web, embossing the web, adjusting the moisture
level of the web, adding binder to the web, and achieving specified basis
weights and spaced apart densified and high loft areas of specified densities,
appear to undercut Appellants’ contention to the effect that there are not
sufficient technical details disclosed by Pietreniak to furnish comparison
examples (App. Br. 8; see generally Pietreniak). Thus, the Specification
data is not persuasive because Appellants have not demonstrated that
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Application 10/887,732
representative claim 1 is limited to the test conditions and the products
tested, and the Appellants have not established that the comparison samples
are representative of Pietreniak (Spec. 14-21).
Concerning the Examiner’s alternative obviousness rejection of
representative claim 1 over Pietreniak, we note that anticipation is the
epitome of obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA
1974). Moreover, we agree with the Examiner that Pietreniak would have
led one of ordinary skill in the art to select appropriate conditions for
forming the embossed air-laid sheet disclosed or suggested therein with a
desired texture (both aesthetically and/or functionally) for typical household
utilities, such as wipes, that would have resulted in a product having the
claimed Percent Shadow Area (Ans. 5; Pietreniak, col. 1, ll. 36-42).
Rejections II and III
Appellants’ arguments with respect to the Examiner’s separate
obviousness rejection of claims 12-14 over the combination of Pietreniak
and Win, and the separate obviousness rejection of claim 27 over the
combination of Pietreniak and Ostendorf are based on the same limitations
and arguments made against the Examiner’s rejection of claim 1. As such,
we are not persuaded of reversible error in the Examiner’s second and third
stated rejections by repetition of these arguments for the reasons expressed
above.

CONCLUSION
Appellants have not identified reversible error in the Examiner’s
anticipation and/or obviousness rejection of claim 1 and the other
obviousness rejections because: (1) Appellants have not shown that the
Examiner has no reasonable basis for the belief that the texture-surface
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Application 10/887,732
containing air laid substrate described or suggested by Pietreniak would not
implicitly or obviously possess a Percent Shadow Area of greater than about
10 percent; and (2) Appellants have not furnished evidence that
conclusively shows that an air laid substrate made by the method taught or
suggested by Pietreniak would not have possessed the claimed Percent
Shadow Area.

ORDER
The decision of the Examiner to reject claims 1-11 and 15 under 35
U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as obvious over Pietreniak; to reject claims 12-14 under 35
U.S.C. § 103(a) as being unpatentable over Pietreniak in view of Win; and to
reject claim 27 under 35 U.S.C. § 103(a) as being unpatentable over
Pietreniak in view of Ostendorf is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(v).

AFFIRMED

tc

KIMBERLY-CLARK WORLDWIDE, INC.
CATHERINE E. WOLF
401 NORTH LAKE STREET
NEENAH, WI 54956

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