Ex Parte Kewin

Board of Patent Appeals and Interferences

Sep 24, 2008

10986116 (B.P.A.I. Sep. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DANIEL D. KEWIN
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Appeal 2008-4027
Application 10/986,116
Technology Center 1700
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Decided: September 24, 2008
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1, 3, and 4. Claims
5-8 have been withdrawn from consideration. Claim 1 is illustrative:
1. A method of refurbishing a used hollow cylindrical core member
of paper board material for a roll of paper or other sheet material, including:

removing a predetermined thickness of paperboard material from the
outer surface of the core member to reduce the outside diameter thereof by
an amount in the range of from about 0.002 to about 0.01 inches, and
Appeal 2008-4027
Application 10/986,116

securing a layer of paper with a thickness in the range of from about
0.002 to about 0.005 inches around the core member of reduced diameter
and causing axially extending edges of the paper layer to overlap.

The Examiner relies upon the following references as evidence of
obviousness:
Qiu 5,505,395 Apr. 9, 1996
Lynch 6,051,092 Apr. 18, 2000
Appellant's claims invention is directed to a method of refurbishing a
hollow, cylindrical core member made of paperboard material that carriers a
roll of paper thereon. The method entails removing a predetermined
thickness of paperboard material from the outer surface of the core to reduce
its outside diameter in the range of from about 0.002 to about 0.01 inches. A
layer of paper having a thickness in the range of from about 0.002 to about
0.005 inches is secured around the refurbished core.
Appealed claims 1, 3, and 4 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lynch in view of Qiu.
Appellant states that "[i]t is agreed that claims 3 and 4 can be grouped
with claim 1" (Br. 4, first sentence). Accordingly, all the appealed claims
stand or fall together with claim 1.
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we are in complete agreement with the Examiner's
reasoned analysis and application of the prior art, as well as his cogent and
thorough disposition of the arguments raised by Appellant. Accordingly, we
will sustain the Examiner's rejections for the reasons set forth in the Answer,
which we incorporate herein, and we add the following for emphasis only.
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Appeal 2008-4027
Application 10/986,116

There is no dispute that Lynch, like Appellant, discloses a method of
refurbishing a used hollow cylindrical core member of material, like
paperboard, that is used to support a roll of paper thereon. It is Appellant's
contention that Lynch discloses as a preferred embodiment a diameter
reduction of the core of 0.025 inches, which is outside the claimed range
having a maximum point of 0.01 inches. Also, Appellant points out that
"[t]he finishing web of liner board [of Lynch] will thus have a thickness of
0.0125 inches," which is greater than the upper limit of the claimed range of
about 0.005 inches.
We agree with the Examiner that Appellant's argument is unavailing
for the patentability of the appealed claims. It is well settled that the claim
language "about" permits some variance from the recited value and,
therefore, encompasses values above and below the stated value. In the
present case, we fully concur with the Examiner that there is no patentable
distinction between the recited reduction in outside diameter of the
refurbished core member, "about 0.01 inches," and the preferred amount of
core reduction disclosed by Lynch, namely, 0.025 inches. The difference in
magnitude in the two values is merely 0.015 inches. Likewise, we perceive
no patentable distinction between the claimed paper thickness of "about
0.005 inches" and Lynch's preferred value of 0.0125 inches, a difference of
only 0.0075 inches. Consequently, it is our opinion that the Examiner
properly determined that the appealed claims embrace within their scope the
preferred values disclosed by Lynch for the amount of reduction in outside
diameter of the core and thickness for the paper secured to the core.
Moreover, we agree with the Examiner that the dimensions disclosed by
Lynch are only exemplary and that "[t]he predetermined thickness removed
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Appeal 2008-4027
Application 10/986,116

is simply a function of removing the portions of the used core material that
are damaged" (Column. 1, lines 42-45 and Column. 2, lines 3-6)" (Ans. 3).
We also agree with the Examiner that Qiu evidences that "spirally
wound layers of paperboard have a conventional thickness of as little as
0.003 inches" (Ans. 4, first sentence). As such, we agree with the Examiner
that when the refurbishing method of Lynch is used to remove only one ply
of damaged core material, a reduction in core diameter of 0.006 inches
would result, which value falls directly within the claimed ranged.
As a final point, we note that Appellant bases no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the inference of obviousness established by the applied
prior art.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner's decision rejecting the appealed claims 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)(effective
Sept. 13, 2004).
AFFIRMED

cam

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Appeal 2008-4027
Application 10/986,116

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