Ex Parte Inoue

Board of Patent Appeals and Interferences

Sep 7, 2007

10664628 (B.P.A.I. Sep. 7, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KENJI INOUE
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Appeal 2007-1525
Application 10/664,628
Technology Center 1700
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Decided: September 7, 2007
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 3, 5, and 7. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
Appeal 2007-1525
Application 10/664,628

2

Appellant claims a wet paper web transfer belt which comprises a wet
paper web side layer 11 having an elastic section 50 with fibers 20
protruding from the web-contacting surface of the elastic section, wherein
the average length of the protruding parts of the fibers is between 0.01 and
3 mm (Claim 1; Fig. 5).
Representative claim 1 reads as follows:
1. A wet paper web transfer belt for use in the press part of a
closed draw papermaking machine, comprising a base body, a wet paper
web side layer having an elastic section, said elastic section having a wet
paper web-contacting surface, and a machine side layer, said belt having
fibers, parts of which are embedded in said elastic section, and parts of
which protrude from said web-contacting surface, wherein the average
length of the protruding parts of said fibers is between 0.01 and 3 mm.
The references set forth below are relied upon by the Examiner as
evidence of obviousness:1
Lundström (Lundström ‘588) US 4,500,588 Feb. 19, 1985
Lundström (Lundström ‘643) US 4,529,643 Jul. 16, 1985
Valentine US 5,849,395 Dec. 15, 1998
Gstrein US 6,383,339 B1 May 7, 2002
Hagfors US 6,605,188 B2 Aug. 12, 2003

1 In the “Response to Argument” section of the Answer, the Examiner refers
to the Eklund Patent 5,298,124 of record as further supporting a conclusion
of obviousness (Answer 9). Because this patent is not included in the
Examiner’s statement of rejection, the Examiner should not have referred to
Eklund as supporting an obviousness conclusion. See In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). See also The
Manual of Patent Examining Procedure (MPEP) § 706.02(j) (8th ed., Rev. 5,
Aug. 2006). Therefore, we have not considered the Eklund patent in
assessing the merits of the Examiner’s § 103 rejection.
Appeal 2007-1525
Application 10/664,628

3
Claims 1 and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gstrein in view of Hagfors and further in view of either
Lundström ‘588 or Lundström ‘643 or alternatively over Hagsfors in view of
Lundström ‘588 or Lundström ‘643; and claims 3 and 7 are correspondingly
rejected over the aforementioned references and further in view of
Valentine.
The sole issue raised by this appeal is described by Appellant as
follows:
No separate argument is being made for the dependent
claims. All of the rejections depend on Hagfors, and the
dispositive issue in this case is whether or not Hagfors teaches
that the average length of the protruding parts of fibers
protruding from the web-contacting surface of an elastic section
should be between 0.01 and 3 mm.
(Appeal Br. 9).
Concerning this issue, the Examiner correctly finds that Hagfors
discloses grinding the surface of a fiber-containing polymer matrix to
thereby obtain a surface with fibers thereon having a certain micro-
roughness (Hagfors, col. 1, l. 57 - col. 2, l. 10) (Answer 7).
Appellant uses a corresponding technique of grinding the surface of a
fiber-containing elastic section to thereby obtain protruding fibers having an
average length within the here-claimed range (Specification 8, ¶ [0040] and
12, ¶ [0054]).
Appeal 2007-1525
Application 10/664,628

4
The Examiner also correctly finds that Hagfors discloses an average
surface roughness (Ra) of between 1 to 30 µm (i.e., 0.001 to 0.03 mm)
(Hagfors, col. 4, ll. 25-27) (Answer 7).
The Examiner believes that Hagfors’ above-disclosed range of
roughness values supports his belief that the protruding fibers of Patentee’s
transfer belt would possess an average length range which overlaps
Appellant’s claim 1 range (Answer 8).
In response, Appellant states that, if a random distribution of fiber
angles is assumed, the exposed lengths of Hagfors’ fibers would be in the
range from approximately 0.006 mm to approximately 0.017 mm and
concedes that this range overlaps the claim 1 range of 0.01 to 3.0 mm (Reply
Br. 2). According to Appellant, however, FIG. 1 of Hagfors shows that the
fiber angles do not have a uniform distribution but instead are all disposed
nearly parallel to the surface of the belt (Br. 2-3). These circumstances lead
Appellant to conclude that the average length of Hagfors’ exposed fibers is
outside the claim 1 range (Reply Br. 4).
Appellant’s interpretation of Hagfors is not well taken. For a number
of reasons, we consider the fiber disposition shown as parallel to the belt
surface in Patentee’s FIG. 1 to be a matter of draftman’s convenience rather
than an accurate showing of the fiber disposition. First, nowhere does
Hagfors’ Specification describe the fiber disposition as parallel to the belt
surface. Second, this Specification nowhere teaches any technique for
achieving this parallel disposition. Third, Hagfors expressly teaches that the
Appeal 2007-1525
Application 10/664,628

5
fibers in his polymer matrix can be mixed together in a suitable manner
whereby a suitable distribution of different fibers is produced (Hagfors, col.
2, ll. 41-45; col. 4, claim 3). In light of this teaching, it is reasonable to
believe that Hagfors’ fiber angles are randomly distributed which Appellant
concedes would yield a range of exposed fiber lengths overlapping the claim
1 range (Reply Br. 2).
For the above stated reasons, there is ample basis in fact which
reasonably supports the Examiner’s determination that the average length of
protruding fibers between 0.01 and 3 mm as required by claim 1 necessarily
flows from the teachings of Hagfors. See Ex parte Levy, 17 USPQ2d 1461,
1463-64 (BPAI 1990). This basis in fact includes: (1) the fact that the claim
1 range and Hagfors’ desired range of roughness values are both produced
from corresponding materials (i.e., fiber-containing polymer) and techniques
(i.e., grinding of the polymer surface to thereby expose the fibers contained
therein); and (2) the fact that Hagfors’ col. 2 teaching of mixing fibers would
yield a random distribution which Appellant concedes would produce a
range of fiber lengths which overlaps the claim 1 range (Reply Br. 2).
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, 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 his claimed product. Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under
Appeal 2007-1525
Application 10/664,628

6
35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and
its fairness is evidenced by the inability of the Patent and Trademark Office
to manufacture products or to obtain and compare prior art products. In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). See also
In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82-83 (CCPA 1975).
Because the transfer belt products defined by claim 1 and disclosed by
Hagfors appear to be identical and appear to be manufactured by identical
processes, it is appropriate to require Appellant to prove that Hagfors’
transfer belt does not necessarily and inherently contain the average length
range of claim 1. On this record, the Appellant has proffered no such proof.
Therefore, we sustain each of the § 103 rejections advanced by the Examiner
on this appeal.
The decision of the Examiner is affirmed.
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)(iv).
AFFIRMED

clj

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