Ex Parte Hada et alDownload PDFPatent Trial and Appeal BoardDec 30, 201613183584 (P.T.A.B. Dec. 30, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 13/183,584 07/15/2011 Frank Stephen Hada 64759939US01 8641 23556 7590 12/30/2016 KIMBERLY-CLARK WORLDWIDE, INC. Patent Docketing 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER CHOI, STEPHEN ART UNIT PAPER NUMBER 3724 MAIL DATE DELIVERY MODE 12/30/2016 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 FRANK STEPHEN HADA, JAMES LEO BAGGOT, MATTHEW ROBERT WILSON, ROBERT EUGENE KRAUTKRAMER, and KYLE ANDREW KRAUTKRAMER ____________ Appeal 2015-002829 Application 13/183,584 Technology Center 3700 ____________ Before SUSAN L. C. MITCHELL, BRANDON J. WARNER, and AMANDA F. WIEKER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Frank Stephen Hada et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 15–21 and 23. Br. 1. Claims 1–14, 22, and 24–28 have been withdrawn from consideration. Adv. Act. 1; see also id. at 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Kimberly-Clark Worldwide, Inc. Br. 1. Appeal 2015-002829 Application 13/183,584 2 CLAIMED SUBJECT MATTER Appellants’ disclosed invention relates to a web cut-off system that is capable of breaking a moving web, to be used in the manufacture of a rolled product. See, e.g., Spec., p. 2, ll. 25–26. Claim 15, reproduced below, is the sole independent claim appealed and is representative of the subject matter on appeal. 15. A web cut-off system comprising: a conveying surface selected from the group consisting of a bedroll, a vacuum roll, a vacuum conveyor and a conveyor belt, over which a moving web having at least one line of weakness is conveyed; a web cut-off roll rotatably mounted opposing the conveying surface; a web cut-off assembly disposed on the web cut-off roll, the web cut-off assembly comprising a first arm with a first web gripping surface and a second arm with a second web gripping surface, the first web gripping surface contacting the web at a first contact point and a second arm with a second web gripping surface contacting the web at a second contact point, the first contact point and the second contact point in a first spaced apart relationship, wherein the at least one line of weakness is located between the first contact point and second contact point; and wherein the first contact point and the second contact point are moveable from the first spaced apart relationship to a second spaced apart relationship causing a break in the web along the line of weakness. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Vossen US 3,999,694 Dec. 28, 1976 Yamaguchi US 5,335,869 Aug. 9, 1994 Appeal 2015-002829 Application 13/183,584 3 REJECTION The following rejection is before us for review:2 Claims 15–21 and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yamaguchi and Vossen. Final Act. 2–3. ANALYSIS Appellants argue against the rejection of claims 15–21 and 23 together as a group. See Br. 2–5. We select independent claim 15 as representative of the issues that Appellants present in the appeal of this rejection, with claims 16–21 and 23 standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determined that a combination of teachings from Yamaguchi and Vossen renders obvious the subject matter recited in claim 15. Final Act. 2–3. In particular, the Examiner found that Yamaguchi teaches most of the structural elements of a web cut-off system as claimed, but with a different type of web severing device. Id. at 2. However, the Examiner also found that Vossen teaches a web severing device as claimed, specifically including first and second arms with respective gripping surfaces. Id. at 2–3 (citing Vossen, Figs. 5, 6). The Examiner concluded that, given the teachings of the prior art, it would have been obvious to one of ordinary skill in the art at the time of the invention to employ the web severing device of Vossen on the web cut-off 2 We note that a rejection of claim 15 under 35 U.S.C. § 102(b) as anticipated by Babcock (US 3,957,186, issued May 18, 1976) has been withdrawn by the Examiner and thus is not before us for review as part of the instant appeal. Adv. Act. 1; Ans. 4. Appeal 2015-002829 Application 13/183,584 4 system of Yamaguchi “to prevent breaking of the web at [a] wrong location or incomplete breaking.” Final Act. 3. In the Answer, the Examiner clarifies that, because Yamaguchi’s web severing device already has gripping members that press on the web,3 the proposed combination is simply to substitute the structure of Vossen’s arms with gripping surfaces on Yamaguchi’s system “as an alternative means” that would “function in the same manner” to press on and stretch the web. Ans. 4. The Examiner also explains that the substitution of these known structures could have been accomplished “by known methods with no change in their respective functions,” such that the proposed combination would yield “nothing more than predictable results to one of ordinary skill in the art at the time of the invention.” Id. at 5. Appellants argue that the reason for combining the teachings of Yamaguchi and Vossen “hinges on a solution to a problem not recognized by the prior art.” Br. 3. However, as the Examiner correctly notes, the reason to modify a reference may often prompt a person of ordinary skill in the art to do what the inventor has done, but for a different purpose or to solve a different problem; it is not necessary that the prior art suggest the modification to achieve the same advantage or result discovered by an applicant. See Ans. 5; In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Moreover, we note that where a claim recites “a structure already known in the prior art that is altered by the mere substitution of one element 3 The Examiner cites to Yamaguchi’s Figures 5 and 6 for showing gripping members, which we understand to be web pressers 15 that are shown pressing on the web in these figures. See Yamaguchi, Figs. 5, 6; see also id. at col. 5, ll. 32–37; col. 6, ll. 37–42 (describing operation of these elements). Appeal 2015-002829 Application 13/183,584 5 [(Vossen’s first and second arms with respective gripping surfaces)] for another [(Yamaguchi’s gripping members)] known in the field, the combination must do more than yield a predictable result [(pressing on a separation portion of the web for breaking at a particular location)].” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (internal citation omitted); see Ans. 4–5. Appellants do not provide any factual evidence or persuasive technical reasoning to explain why the proposed combination would yield anything other than a result that would have been predictable to one of ordinary skill in the art. Although Appellants state that “the claimed invention is not simply a combination of elements found in the prior art,” they do not identify—nor do we discern—anything that claim 15 would require other than the elements that the Examiner found in the prior art. Appellants also assert that the combination of teachings relied on in the rejection is no more than impermissible hindsight. Br. 4–5. This assertion is not persuasive because Appellants do not identify any knowledge that the Examiner relied upon that was gleaned only from Appellants’ disclosure and that was not otherwise within the level of ordinary skill at the time of the invention. See Ans. 4–5; In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (so long as a conclusion of obviousness is based on a reconstruction that “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from [Appellants’] disclosure, such a reconstruction is proper”). After careful consideration of all the evidence, Appellants’ arguments do not apprise us of error in the Examiner’s findings or reasoning for the conclusion of obviousness with respect to claim 15. Accordingly, we sustain Appeal 2015-002829 Application 13/183,584 6 the rejection of claim 15, and of claims 16–21 and 23 falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over Yamaguchi and Vossen. DECISION We AFFIRM the Examiner’s decision rejecting claims 15–21 and 23 under 35 U.S.C. § 103(a) as being unpatentable over Yamaguchi and Vossen. 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). AFFIRMED Copy with citationCopy as parenthetical citation