Ex Parte Herman et al

Board of Patent Appeals and Interferences

Feb 27, 2012

10898637 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY HERMAN,
DAVID A. BECK, and THOMAS THOROE SCHERB
____________

Appeal 2010-002055
Application 10/898,637
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, GAY ANN SPAHN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jeffrey Herman et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-28, 30, 33-35, 40, 41, 46-
59, 61-70, and 175-179. Appellants cancelled claims 29, 31, 32, and 60.
The Examiner withdrew claims 36-39, 42-45, 71-174, 180 and 181 from
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consideration. Appellants’ representative presented oral argument on
February 14, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The claimed subject matter is directed to a method for manufacturing
a fiber web, such as a web of tissue or hygiene material, having a three-
dimensional surface structure. Spec. 1. Claim 1, reproduced below, with
italics added, is illustrative of the subject matter on appeal.
1. A method for manufacturing a fiber
web having a three-dimensional surface structure,
comprising:
pressing the fiber web at a dry content of
less than approximately 35% onto an imprinting
fabric by a suction element arranged on a surface
of the imprinting fabric remote from the fiber web
to produce a first pressure field to suck the fiber
web into a surface structure of the imprinting
fabric, thereby imprinting the web;
guiding the fiber web through at least one
other pressure field to at least one of dewater and
dry the fiber web; and
guiding a clothing, the imprinting fabric, and
the fiber web located between the clothing and the
imprinting fabric over at least one suction roll,
such that the clothing is in contact with the at least
one suction roll.

App. Br. 31.
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THE REJECTIONS
The following Examiner’s rejections are before us for review.1
1. Claims 176-179 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Rej. 6.
2. Claim 178 is rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention. Ans. 3.
3. Claims 1-12, 15-18, 22-28, 30, 33, 41, 46-54, 57, 58, 61-66 and
175 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ampulski
(US 6,051,105, iss. Apr. 18, 2000) and Hulit (US 4,309,246, iss. Jan. 5,
1982). Ans. 4-9.
4. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sanford (US 3,301,746, iss. Jan. 31, 1967) and Hulit.
Ans. 9-10.
5. Claims 19, 20, and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ampulski, Hulit, and Tietz (US 6,235,160 B1, iss. May
22, 2001). Ans. 10-11.
6. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Ampulski, Hulit, and Edwards (US 6,458,248 B1, iss. Oct. 1, 2002).
Ans. 11.

1 The Examiner withdrew two rejections set forth in the Final Office Action
mailed December 21, 2997, as follows: claims 1-35, 40, 41, and 46-70
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement (Final Rej. 5-6); and claims 176-179 under 35
U.S.C. § 103(a) as unpatentable over Ampulski and Beck (Final Rej. 15-16).
See Ans. 2. It is presumed that claims 55, 56, 59, 69, and 70 are objected to
as dependent upon a rejected base claim. See Reply Br. 2.
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7. Claims 34, 35, 67, and 68 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Ampulski, Hulit, and Webster (US 4,675,079, iss. Jun.
23, 1987). Ans. 12.
8. Claims 176-179 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ampulski and Webster. Ans. 12-13.

OPINION
Lack of written description under 35 U.S.C. § 112, first paragraph
Independent claim 176 recites a method for manufacturing a fiber web
having a three dimensional surface structure including three steps. App. Br.
59. The first and second steps of claim 176 are substantially identical to the
first and second steps of independent claim 1, except that claim 1’s first step
of “pressing” is changed to “suctioning” in claim 176. The third step of
claim 176 is similar to the third step of claim 1, except that instead of
guiding the clothing, the imprinting fabric, and the fiber web over at least
one suction roll, they are guided over “at least one alternate drying
apparatus.” In addition, the third step of claim 176 differs from the third
step of claim 1 by calling for the at least one alternate drying apparatus to
comprise “a counter device comprising an open surface, wherein the
clothing contacts the open surface of the counter device.”
The Examiner finds that claim 176 recites “a counter device in
combination with presses a suctioning and a guiding step [sic] which was
not described in the specification in such a way as to reasonably convey to
one skilled in the relevant art that the inventor(s), at the time the application
was filed, had possession of the claimed invention.” Final Rej. 6.
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Appellants contend that the second full paragraph on page 15 of the
originally filed Specification provides express support for the features
recited in claim 176. App. Br. 13.
We agree with Appellants. The Examiner appears to be concerned
that claim 176’s counter device was not described in the Specification as
being associated with a suctioning step and a guiding step. However, the
second full paragraph on page 15 of the Specification describes the counter
device as being associated with a clothing arrangement and a suction device.
Further, that paragraph also describes “[a] method in accordance with the
invention for manufacturing a fiber web . . . which can be used alone or in
combination with one of more of the above described methods . . .” Since
methods previously described in the Specification include pressing or
suctioning and guiding steps (see Spec. 3-4), we determine claim 176 to be
supported by the originally filed Specification. Accordingly, we do not
sustain the Examiner’s rejection of claims 176-179 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Indefiniteness under 35 U.S.C. § 112, second paragraph
Claim 178 depends from claim 176 and recites that “said at least one
suction roll forms part of a gas press.” App. Br. 60.
The Examiner determines that the limitation of “said at least one
suction roll” in claim 178 is indefinite for lacking antecedent basis in claim
176, because claim 176 does not recite “at least one suction roll.” Ans. 3.
Appellants argue that “it is apparent that the at least one suction roll
recited in the claims refers [to] the alternate drying apparatus, and the claim
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would be understood in this manner by one ordinarily skilled in the art.”
App. Br. 14.
We agree with the Examiner. Claim 176 recites that “at least one
alternate drying apparatus comprising a counter device comprising an open
surface, wherein the clothing contacts the open surface of the counter
device.” App. Br. 59. The Specification describes “a method . . . for
manufacturing a fiber web . . . characterized in that water is driven out of the
fiber web by way of a displacement dewatering process” and which uses a
clothing arrangement “followed by an open surface of a counter device.”
Spec. 15. The third embodiment shown in Figure 3 uses a displacement
dewatering device in the form of a displacement press 56 “to drive out water
by way of gas pressure” and this embodiment differs from the first and
second embodiments shown in Figures 1 and 2, respectively, in that a roll
arrangement 60-66 defining a pressure space 58 is used in place of the
dewatering apparatus 34 having a large suction roll 38. Spec. 25. Thus, we
are not persuaded by Appellants’ argument since a person of ordinary skill
in the art would understand the at least one alternate drying apparatus recited
in claim 176 is a displacement press, not a suction roll. Accordingly, we
sustain the Examiner’s rejection of claim 178 under 35 U.S.C. § 112, second
paragraph as being indefinite.
Obviousness based on Ampulski and Hulit
Claims 1-12, 15-18, 27, 28, 30, 33, 34, and 41
Appellants argue claims 1-12, 15-18, 27, 28, 30, 33, 34, and 41 as a
group. See App. Br. 15-17. We select independent claim 1 as representative
and claims 2-12, 15-18, 27, 28, 30, 33, 34, and 41 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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The Examiner finds that Ampulski discloses the first and second steps
of independent claim 1, but fails to disclose the third step. Ans. 4, 6. The
Examiner also finds that Hulit discloses the third step of independent claim
1. Ans. 7. The Examiner concludes that it would have been obvious to
modify the method of Ampulski to include the step of Hulit “for the purpose
reducing energy usage and thus saving money.” Ans. 8.
Appellants contend that Ampulski discloses an apparatus to imprint or
emboss a web through mechanical compression, not through suction as
recited in independent claim 1, because Ampulski discloses the imprinting of
the web occurs by pressure at nip 300 which does not include a suction roll.
App. Br. 15. We are not persuaded by Appellants’ contention. The first step
of claim 1 requires that the imprinting be performed by a suction element.
Ampulski discloses a suction element in the form of a vacuum box 126. See
Fig. 1. Ampulski also discloses that the web 120 is vacuum transferred from
the forming member 11 to the imprinting member 219 by the vacuum box
126 and the vacuum permits deflection of the fibers into the deflection
conduit portions 230 of the imprinting member 219. Col.8, ll. 65-67 and col.
9, ll. 10-13. Thus, we must construe whether the claimed “imprinting”
encompasses the deflection of the fibers as described in Ampulski.
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). In this case, Appellants’ Specification does not expressly define the
term “imprinting” or otherwise indicate that this term is used in a manner
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other than its ordinary and customary meaning. Therefore, in determining
the ordinary and customary meaning of “imprinting” as viewed by a person
of ordinary skill in the art, it is appropriate to consult a general dictionary
definition for guidance. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348
(Fed. Cir. 2010). The ordinary and customary meaning of “imprint” is “to
mark by pressure.”2 One of ordinary skill in the art would understand the
imprinting of Ampulski’s web to require a marking by pressure. We
determine that the deflection of the fibers into the deflection conduit portions
230 of the imprinting member 219 via the web 120 being pressed or sucked
by the vacuum box 126 constitutes a marking (i.e., the deflection of the
fibers) by pressure (i.e., the force applied by the vacuum box) and thus,
satisfies the ordinary and customary meaning of the claim term “imprinting.”
While acknowledging that Ampulski discloses some deflection of the
web by the vacuum box 126, Appellants argue that this deflection does not
imprint the web, because Ampulski discloses that the “intermediate web
120A is shown having a generally uniform thickness . . . upstream of the
compression nip 300 to indicate that a portion of the intermediate web 120A
has been deflected into the imprinting member 219 without locally
densifying or compacting the intermediate web 120A upstream of the
compression nip 300.” Reply Br. 2, 3 (citing to Ampulski, col. 9, ll. 20-27).
We are not persuaded by this argument because while Ampulski may
imprint the web even further at the compression nip 300 by making the web
non-uniform and densified or compacted, this does not preclude that

2 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED, ©
1993 Merriam-Webster, Incorporated. (Last accessed at http://lionreference.
chadwyck.com on February 19, 2012).

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imprinting occurs when the web is deflected by the vacuum box 126. In
other words, to imprint or mark by pressure does not require that the web be
non-uniform and densified or compacted.
Appellants contend that “as AMPULSKI does not even arguably
disclose a suction roll, there is no arguable disclosure for modifying
AMPULSKI to replace the identified roll with the suction roll of HULIT, as
asserted by the Examiner.” App. Br. 16. We are not persuaded by
Appellants’ contention. There does not need to be any “disclosure” in
Ampulski to replace the press roll 362 with Hulit’s vacuum roll 24 as this
appears to be a simple substitution of one known element for another. See
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416-417 (2007) (The simple
substitution of one known element for another generally will be obvious
unless the substitution would have been beyond the level of ordinary skill in
the art, or the results of the substitution would not have been predictable by
one of ordinary skill in the art).
Appellants also contend that Hulit is arranged to remove water
squeezed out of the web, but there is no disclosure that Hulit includes an
element arranged to physically alter the web in the manner of the imprinting
through mechanical compression of the web performed by Ampulski. App.
Br. 16. We are not persuaded by Appellants’ argument because the
Examiner found that the imprinting is done by Ampulski’s vacuum box 126
and therefore, it is not required that Hulit’s vacuum roll 24 perform
imprinting.
Appellants also contend that there is “no disclosure that the suction
roll of HULIT produces a first pressure field to suck the fiber web into a
surface structure of the imprinting fabric, so as to imprint the fabric, as
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recited in at least independent claim 1.” App. Br. 16. We are not persuaded
by Appellants’ contention. Claim 1 recites that the suction element presses
or sucks the web onto the imprinting fabric to imprint the web, i.e., it is not
the suction roll that performs the imprinting. The Examiner found that
Ampulski’s vacuum box 126 constitutes the suction element that produces
the pressure field to suck the web onto the imprinting member 219 and cause
deflection of the web into the deflection conduits 230 to imprint the web.
Thus, the fact that Hulit’s suction roll does not perform imprinting is not
material.
To the extent Appellants are arguing there is no reasonable
expectation of success in the Examiner’s proposed combination (App. Br.
16), this argument is not persuasive. Absolute predictability that the
substitution will be successful is not required. See In re O'Farrell 853 F.2d
894, 903-904 (Fed. Cir. 1988). Hulit is cited by the Examiner to
demonstrate suction rolls are known in the art and the known advantages
that result from using those suction rolls. Ans. 7. Appellants have not
suggested any reason why the Examiner erred by concluding that it would
have been obvious to one of ordinary skill in the art to incorporate these
known suction rolls into the known device of Ampulski in order to
predictably provide the known advantages of these suction rolls. Appellants
have also not suggested any reason why one of ordinary skill in the art
would not have had a reasonable expectation of success that the suction roll
of Hulit could be incorporated into Ampulski’s device.
Finally, Appellants also contend that “the Examiner has not identified
any disclosure in the applied art that provides any articulated reasoning or
rationale for combining the various elements identified by the Examiner into
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a single system.” App. Br. 17. We disagree. The examiner must articulate
some “reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006).
This reasoning must show that “there was an apparent reason to combine the
known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007). The apparent reason need not appear in one or more
of the references on which the examiner relies. However, here the
Examiner’s articulated reason, i.e., to reduce energy usage and save money,
is from one of the references, because Hulit advocates the use of suction
rolls in order to avoid using through-drying techniques which use up
inordinate amounts of diminishing natural resources such as natural gas. See
Hulit, col. 2, ll. 10-16.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over
Ampulski and Hulit, and claims 2-12, 15-18, 27, 28, 30, 33, 34, and 41 fall
with claim 1.
Claims 46-54, 57, 58, 61-66, and 175
With respect to each of claims 46, 47, 48, 51, 53, 57, and 175,
Appellants merely repeat the claim language and state that no combination
of Ampulski and Hulit can render unpatentable the subject matter thereof.
See App. Br. 18-20. These arguments are not persuasive of the patentability
of claims 46-54, 57, 58, 61-66, and 175. See In re Lovin, 652 F.3d 1349
(Fed. Cir. 2011) (Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art).
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Obviousness based on Sanford and Hulit
The Examiner found that Sanford discloses the subject matter of
claims 13 and 14, but fails to disclose the step of “guiding a clothing, the
imprinting fabric, and the fiber web located between the clothing and the
imprinting fabric over at least one suction roll, such that the clothing is in
contact with the at least one suction roll,” but that this step is disclosed by
Hulit. Ans. 9-10. The Examiner concludes that it would have been obvious
to modify the method of Ampulski to include the step of Hulit “for the
purpose reducing energy usage and thus saving money.” Ans. 10.
Appellants contend that “while SANFORD discloses suction, this
suction is provided to remove water and/or transfer the sheet, not to form the
knuckles, or imprint the fabric.” Reply Br. 5. We are not persuaded by
Appellants’ contention. As discussed above with respect to independent
claim 1, the ordinary and customary meaning of “imprint” is “to mark by
pressure.” Sanford’s Example I describes the transfer of the web onto the
imprinting fabric by a vacuum box thereby comforming the web to the mesh
pattern and forming small depressions. Col. 9, ll. 58-71. Similar to the
deflection of Ampulski’s web, Sanford’s forming of the small depressions
by the vacuum box constitutes a marking by pressure in order to satisfy the
ordinary and customary meaning of imprinting. Accordingly, we sustain the
Examiner’s rejection of claims 13 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Sanford and Hulit.
Obviousness based on Ampulski, Hulit, and Tietz
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify the method resulting from the combination
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of Ampulski and Hulit by the teachings of Tietz “for the purpose of applying
pressure to the dry web.” Ans. 10-11.
Appellants contend that because Tietz does not disclose an imprinting
fabric and because the Examiner has not identified disclosure in Ampulski,
Hulit, and Tietz that provides any articulated reasoning or rationale for
combining the references, the Examiner has failed to support the rejection
under 35 U.S.C. § 103(a). App. Br. 23-24.
We disagree. It is not required that Tietz disclose an imprinting fabric
in order to combine the teachings thereof with Ampulski and Hulit. Also, as
discussed with respect to independent claim 1, the apparent reason to
combine need not appear in one or more of the references on which the
examiner relies. Since the Examiner’s articulated reasoning appears to have
a rational basis, we sustain the Examiner’s rejection of claims 19, 20, and 40
under 35 U.S.C. § 103(a) as unpatentable over Ampulski, Hulit, and Tietz.
Obviousness based on Ampulski, Hulit, and Edwards
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify the method resulting from the combination
of Ampulski and Hulit by the teachings of Edwards “for the purpose of
applying pressure to the dry web.” Ans. 11.
Appellants contend that because Edwards does not disclose an
imprinting fabric and because the Examiner has not identified disclosure in
Ampulski, Hulit, and Edwards that provides any articulated reasoning or
rationale for combining the references, the Examiner has failed to support
the rejection under 35 U.S.C. § 103(a). App. Br. 24-26.
For the same reasons as discussed above with respect to the
“Obviousness of Ampulski, Hulit, and Tietz,” we sustain the Examiner’s
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rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over
Ampulski, Hulit, and Edwards.
Obviousness based on Ampulski, Hulit, and Webster
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify the method resulting from the combination
of Ampulski and Hulit by the teachings of Webster “for the purpose of
applying pressure to the dry web.” Ans. 12.
Initially, we note that Appellants discussion of the rejection of claims
34, 35, 67, and 68 mistakenly refers to the tertiary reference as “Graf”;
however, we assume that this is a typographical error and Appellants meant
to refer to the correct reference name of Webster. See App. Br. 26-27.
Appellants contend that because Webster does not disclose an imprinting
fabric and because the Examiner has not identified disclosure in Ampulski,
Hulit, and Webster that provides any articulated reasoning or rationale for
combining those references, the Examiner has failed to support the rejection
under 35 U.S.C. § 103(a). App. Br. 26-27.
For the same reasons as discussed above with respect to the
“Obviousness of Ampulski, Hulit, and Tietz,” we sustain the Examiner’s
rejection of claims 34, 35, 67, and 68 under 35 U.S.C. § 103(a) as
unpatentable over Ampulski, Hulit, and Webster.
Obviousness based on Ampulski and Webster
The Examiner found that Ampulski discloses the method of
manufacturing the fiber web substantially as claimed in independent claim
176 and that Webster discloses an alternate drying apparatus 17 including a
counter device 15 having an open surface, wherein the clothing contacts the
open surface of the counter device. Ans. 12. The Examiner concludes that it
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would have been obvious to one of ordinary skill in the art to substitute the
drying apparatus of Webster for the drying apparatus of Ampulski to obtain
a predictable result. Ans. 12-13.
Appellants present no arguments of error regarding this rejection. See
App. Br. 11-19 and Reply Br. 2-6.
Thus, we summarily sustain this rejection. See In re Berger, 279 F.3d
975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in
sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
applicant failed to contest the rejection on appeal).

DECISION
We affirm the Examiner’s rejections of claims 1-28, 30, 33-35, 40, 41,
46-59, 61-70, and 175-179.
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

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