Ex Parte Kriebel et al

Board of Patent Appeals and Interferences

May 16, 2005

09832873 (B.P.A.I. May. 16, 2005)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ALMUT KRIEBEL, VOLKER NIGGL,
ERICH PETERS, ROLAND RAUCH and JOSEF SCHNEID
______________

Appeal No. 2004-2284
Application 09/832,873
_______________

HEARD: April 21, 2005
_______________

Before KIMLIN, WARREN and PAWLIKOWSKI, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally
rejecting claims 1 through 16.
Claim 1 illustrates appellants’ invention and is representative of the claims on appeal:
1. A process for dispersing fibrous paper stock comprising:
delivering an aqueous fibrous paper stock;
pressing some water out of the aqueous fibrous paper stock to form a highly consistent
coarse fibrous paper stock;
loosening and distributing the highly consistent stock by introducing the highly
consistent coarse fibrous stock into an effective area of a mallet roll having circulating mallets
extending from a rotating shaft which cooperate with fixed peripheral impact sections, thereby
breaking up the highly consistent coarse fibrous stock passing between the mallets and fixed
peripheral impact sections;
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Application 09/832,873
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transporting the loosened and distributed highly consistent fibrous paper stock into a
dispersing machine;
dispersing the transported loosened and distributed highly consistent fibrous paper stock
in the dispersing machine.
The references relied on by the examiner are:
Davenport 6,045,070 Apr. 4, 2000

Riquet 1.239.047 Jul. 11, 1960
(French Patent)
Aktiebolag 2 364 289 Apr. 7, 1978
(published French Patent Application)
Egenes et al. (Egenes) WO 96/18769 Jun. 20, 1996
(published World Intellectual Property Organization Application)
Kriebel et al. (Kriebel ‘653) 197 12 653 Oct. 1, 1998
(German Offenlegungsschrift)
The examiner also relies on the following reference “as an equivalent translation” of
Kriebel ‘653 (answer, pages 3 and 4; see also final rejection, mailed October 21, 2002, page 5),
which appellants do not dispute in the reply brief:
Kriebel et al. (Kriebel ‘573) 6,250,573 Jun. 26, 2001
(filed Mar. 24, 1998)
The examiner has advanced the following grounds of rejection on appeal:1
claims 1, 5 through 7 and 13 through 16 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Egenes in view of Riquet2 with or without Aktiebolag3 (answer, pages 4);
claims 2 through 4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Egenes in
view of Riquet with or without Aktiebolag as applied to claim 1, and further in view of Kriebel
‘6534 (answer, pages 4-5); and
claims 8 through 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Egenes
in view of Riquet with or without Aktiebolag as applied to claim 1, and further in view of
Davenport with or without Kriebel ‘653 (answer, page 5).

1 The examiner withdrew the ground of rejection under 35 U.S.C. § 112, second paragraph, in
the answer (page 2).
2 We refer in our decision to the translation of Riquet prepared by the Translation Branch of the
Scientific and Technical Information Center (STIC) of the USPTO in August 2003 (PTO
2003-4806).
3 We have considered the translation of Aktiebolag prepared by the Translation Branch of the
STIC of the USPTO in August 2003 (PTO 2003-4808).
4 We refer in our decision to Kriebel ‘573 because the examiner relies thereon as a translation of
Kriebel ‘653.
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Appellants state that “each of claims 1-16 are separately patentable for the reasons set
forth hereinbelow” (brief, page 5). With respect to the first ground of rejection, appellants
present substantive arguments for claim 1 and for each of the groupings claims 6 and 7 and
claims 13 through 16, but merely note the “additional features” of claim 5 (brief, pages 17-18).
With respect to the second and third grounds of rejection, appellants present general arguments
and merely note the additional features of each of claims 2 through 4 and of claims 8 through 12
(id., pages 19-20 and 22).
We select one claim for consideration in each ground of rejection unless appellants
provide reasons why an additional claim or additional claims in a ground of rejection is/are
separately patentable. We point out that the controlling rule cautions that “[m]erely pointing out
differences in what the claims cover is not an argument as to why the claims are separately
patentable.” Thus, we decide this appeal based on appealed claims 1, 2, 6, 8 and 13 as
representative of the grounds of rejection and of groups of claims where appellants submit
substantive arguments for separate patentability. 37 CFR § 1.192(c)(7) (2002); see In re
McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (“See 37 CFR
1.192(c)(7) (2001). If the brief fails to meet either requirement, the Board is free to select a
single claim for each group of claims subject to a common ground of rejection as representative
of all claims in that group and to decide the appeal of the rejection based solely on the selected
representative claim.”); see also 37 CFR § 41.37(c)(1)(vii) (effective September 13, 2004; 69
Fed. Reg. 49960 (August 12, 2004); 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer and to the brief and reply brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner that, prima facie, the claimed
process of dispersing fibrous paper stock encompassed by appealed claims 1, 6 and 13 would
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have been obvious over the combined teachings of Egenes, Riquet and Aktiebolag 5 to one of
ordinary skill in this art at the time the claimed invention was made.
As an initial matter, we find that when the claim terms are given their broadest
reasonable interpretation in light of the written description in the specification as interpreted by
one of ordinary skill in the art, and without reading into the claims any limitation or particular
embodiment disclosed in the specification, see, e.g., In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989), the plain language of appealed independent claim 1 specifies a process for
dispersing fibrous paper stock comprising at least the specified steps. In the second step, the
term “fibrous paper stock” would have been understood by one of ordinary skill in this art to
mean “fibrous stock made from recycled paper” (specification, page 1, [0002]). The step of
pressing “some” water, regardless of amount, from such stock can be done by any means that
would thicken the stock to any extent in a consistent manner. We note that dependent claim 6
modifies claim 1 by specifying that “a worm extruder assists in the pressing of water out of the . .
. stock,” which language includes “pressing” by any means assisted by a worm extruder.
The third step of the process of claim 1 specifies that the “mallet roll” must have a
rotating shaft with objects extending therefrom which act as “mallets” that can “cooperate with
fixed peripheral impact sections,”including “radially oriented staffs” (specification, page 7,
[0031]), with respect to “loosening and distributing the highly consistent stock” by “breaking up
the . . . stock” so it will pass “between the mallets and fixed peripheral impact sections.” The
condition of the “broken up” stock at this point includes “the stock flow to the dispersing
machine becomes very even” as described in the specification (pages 2-3, [0007]). The fifth and
last specified step of this claim specifies “dispersing . . . loosened and distributed . . . stock in the
dispersing machine” wherein this processing can include “creating very fibrous crumbs”
(specification, page 3, [0007]).
The transitional term “comprising” opens the claimed processes encompassed by claim 1
to include steps, elements and materials in addition to those specified. See In re Baxter, 656
F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as one of the monomers in

5 A discussion of Aktiebolag is not necessary to our decision. See In re Kronig, 539 F.2d 1300,
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the reaction is propylene, any other monomer may be present, because the term ‘comprises’
permits the inclusion of other steps, elements, or materials.”). For example, steam or hot water
as well as bleach and other chemicals can be applied to the stock in the mallet roll and/or in the
dispersing machine (specification, e.g., page 3, [0007]). Claim 13 specifies that the stock is
transferred from the mallet roll to the central area of the dispersing machine via a screw
conveyor by dropping it into the screw conveyor. The transitional term “comprising” would
permit the inclusion of other means for this purpose in addition to the screw conveyor.
Turning now to the application of prior art to the claimed invention encompassed by
claims 1, 6 and 13, we find that Egenes would have disclosed to one of ordinary skill in this art6
“a device for processing particulate material,” described as “especially wood fibre pulp and more
specifically pulp containing recycle paper,” wherein “a very good mixing of steam and
particulate material can be obtained so that the pulp is heated evenly,” and “[t]he pulp particles
are reduced in size in that a rapidly rotating grinder is used to mix pulp and steam” (page 1,
ll. 3-10 and 33-37, and page 2, ll. 1-17). Egenes discloses two embodiments, in the second of
which
the first disc disperser can function as a predisperser where impurities are dispersed
whilst the pulp is relatively cold, which will be advantageous for certain printer’s inks,
such as laser and Xerox, whereas the second disc disperser will function as a main
disperser whilst the pulp is hot, which will be advantageous in the case of impurities
such as so-called stickies and so forth [Page 2, l. 34, to page 3, l. 3.]
Egenes describes FIG. 3 as including screw press 18 as “a dewatering zone where the
pulp is dewatered . . . [and] the pulp passes to the first disc dispenser 1” (page 4, ll. 24-28). We
note here with respect to claim 6, that a “worm extruder” is a well known form of “screw press,”
and appellants admit that it is known in the art to use “worm extruders” to “press out” fibrous
stock suspensions, and that a worm extruder has a “conveyer screw” (specification, page 2,
[0003]). See In re Nomiya, 509 F.2d 566, 570-71, 571 n.5, 184 USPQ 607, 611, 611 n.4 (CCPA

1302-04, 190 USPQ 425, 426-28 (CCPA 1976).
6 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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1975) With respect to the second embodiment, disc disperser 1 is “used as a predisperser,” and
the disperser 8 is the “main disperser” that functions as a rapidly rotating grinder, wherein steam
is introduced into main disperser 8 and can be introduced into predisperser 1 as well (page 4, ll.
9-11, and page 5, ll. 1-6 and 13-1). We note here with respect to claim 13, that the stock moves
from predisperser 1 by dropping it into screw feeder or conveyor 7 which drops it into screw
feeder 9 that introduces the stock centrally to main disperser 8. Egenes teaches that in the
disclosed device, it is “possible to admix chemicals which bleach the pulp and/or improve the
actual dispersion of the impurity particles in the pulp” (page 2, ll. 31-32, and page 5, ll. 8-11).
The examiner finds, and we agree, that the claimed process of dispersing paper stock
made from recycled paper encompassed by claims 1, 6 and 13, as we have interpreted these
claims above, differs from the process of dispersing particulate material containing recycled
paper taught by Egenes in that the prior art process uses a disc disperser 1 instead of a mallet roll
as defined in claim 1, as a predisperser. The examiner determines that prima facie, the combined
teachings of Egenes and Riquet would have suggested to one of ordinary skill in this art to
substitute the mallet roll shown in Riquet Fig. 1 for the disc predisperser 1 of Egenes in the
reasonable expectation that Riquet’s mallet roll would perform the same functions of
predispersing the paper stock and mixing bleach therein as does Egenes’ disc predisperser
(answer, pages 3-4). The examiner further points out that Riquet additionally discloses the disc
disperser of Riquet Fig. 3 (id.).
We find that Riquet acknowledges that it was known in the art “to remove fibers from old
paper and paper pulps by treating them with hot water or vapor in a pulper for drying and
mixing, and to subsequently bleach the paper pulp (pages 1-2). Riquet teaches that the mixing
and bleaching functions can be combined by using, among others, a horizontal pulper shown in
Riquet Fig. 1 which is described as a cylindrical housing 1 with stationary hooks 4 and a rotating
shaft 2 that has “a series of blades or hooks 3,” wherein “the assembly of movable and fixed
hooks pulps and dries the old papers in order to transform them into a type of paste,” which is
released “to the next stage” of the process by outlet 6 (pages 3-4). We find that one of ordinary
skill in this art would have inferred that the “paste” is a viscous dispersion of paper stock solids
in a liquid. The apparatus provides for the supply of hot water or vapor and bleach through line
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7 (page 4). Riquet further teaches the disc pulper shown in Fig. 3 thereof that has “blades which
allow for better pulping of the paste” (page 5).
We thus find that, prima facie, the combined teachings of Egenes and Riquet provide
substantial evidence in support of the examiner’s position. Both the disc predisperser 1 of the
second embodiment of Egenes and the mallet roll of Riquet Fig. 1 are taught to be used to
process pulps containing recycled paper by mixing the paper pulp stock to disperse the
particulate material to form a dispersion or paste, to which bleach can be add. In this respect,
neither apparatus is disclosed to provide the grinding action to form smaller particles as
disclosed for the main disc disperser 8 of Egenes and the blade equipped disc pulper of Riquet
Fig. 3.
Therefore, prima facie, one of ordinary skill in this art would have reasonably
interchanged the disc predisperser 1 of the second embodiment of Egenes with the mallet roll of
Riquet Fig. 1, in the expectation of obtaining the same or similar result. Accordingly, one of
ordinary skill in this art routinely following the combined teachings of Egenes and Riquet would
have arrived at the claimed invention encompassed by claims 1, 6 and 13 without resort to
appellants’ specification. See In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531-32 (Fed. Cir. 1988) (“The consistent criterion for determination of obviousness is whether
the prior art would have suggested to one of ordinary skill in the art that [the claimed process]
should be carried out and would have a reasonable likelihood of success, viewed in light of the
prior art. [Citations omitted.] Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.”); In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881-82 (CCPA 1981)(“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the primary reference; nor
is it that the claimed invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have suggested to those
of ordinary skill in the art.”); In re Siebentritt, 372 F.2d 566, 567-68, 152 USPQ 618, 619
(CCPA 1967) (express suggestion to interchange methods which achieve the same or similar
results is not necessary to establish obviousness); see also In re O’Farrell, 853 F.2d 894, 903-04,
7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“Obviousness does not require absolute
predictability of success. . . . There is always at least a possibility of unexpected results, that
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would then provide an objective basis for showing that the invention, although apparently
obvious, was in law nonobvious. [Citations omitted.] For obviousness under § 103, all that is
required is a reasonable expectation of success. [Citations omitted.]”).
Accordingly, in view of the examiner’s prima facie case of obviousness, we again
evaluate all of the evidence of obviousness and nonobviousness based on the record as a whole,
giving due consideration to the weight of appellants’ arguments in the brief and reply brief. See
generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Appellants’ contention that disc disperser 1 of Egenes is a grinder and thus the main
disperser (brief, e.g., pages 7-8; reply brief, e.g., pages 2-4), is directed to the first embodiment
of this reference wherein that is so, but does not address the relied on second embodiment where
Egenes discloses that disc disperser 1 is a pre-disperser and disc disperser 8 is the grinder. In
this respect, appellants’ arguments that one of ordinary skill would not have used the apparatus
of Riquet Fig. 1, described as a “kneading” device used to “knead/mix stock,” to “replace
grinder 1” of Egenes (brief, pages 8 and 9-13) also falls.
Appellants submit that the pulper of Riquet Fig. 1 is not a mallet roll, contending that
“[w]hile structurally similar, the kneading devices (as well as the disperser) of [Riquet] are
structured to knead the stock suspension, i.e., to massage or mix the stock, whereas a mallet roll,
as disclosed in the instant application, is directed to breaking up or apart a plug of highly
consistent stock,” and that the prior art device “is intended to operate on different material and in
a distinct manner from the mallet roll recited in at least independent claim 1” (brief, pages 9 and
16). We do not agree.
The “mallet roll” is defined by claim 1 as we have interpreted that claim (see above p. 4).
We find that the pulper of Riquet Fig. 1 meets all of the claim limitations, including the presence
of objects extending from the rotating shaft which can act as “mallets” and stationary objects
attached to the cylinder housing which can act as “peripheral impacts sections,” which two sets
of objects “cooperate” to break-up or disperse the stock when the stock passes therebetween,
forming a dispersion or paste of particulate stock which would evenly flow. Indeed, we find no
claim limitation in claims 1, 6 (brief, page 17) and 13 which specifies “a plug of highly
consistent stock” with respect to “fibrous paper stock” or “highly consistent coarse fibrous
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stock,” and we find no basis in the claim language or in the written description in the
specification to read such language into the claims. See Morris, supra; Zletz, supra. Thus,
appellants’ arguments in these respects are not persuasive. See In re Self, 671 F.2d 1344,
1348-49, 213 USPQ 1, 5 (CCPA 1982). We further find it of interest that the structure of the
pulper illustrated in Riquet Fig. 1 is remarkably similar to the structure of the “mallet roll”
illustrated in specification Fig. 3.
We also find no limitation in claim 13 requiring “adding steam to the material in the
dispersing device” (brief, page 17). To the extent this limitation appears in claim 16 (id.), we
pointed out above that Egenes provides for the introduction of steam in disc predisperser 1 and
main disc disperser 8, as does Riquet in the horizontal pulper of Fig. 1 thereof.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Egenes, Riquet and
Aktiebolag with appellants’ countervailing evidence of and argument for nonobviousness and
conclude that the claimed invention encompassed by appealed claims 1, 5 through 7 and 13
through 16 would have been obvious as a matter of law under 35 U.S.C. § 103(a).
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner that, prima facie, the claimed
process of dispersing fibrous paper stock encompassed by appealed claim 2 would have been
obvious over the combined teachings of Egenes, Riquet, Aktiebolag7 and Kriebel ‘653 to one of
ordinary skill in this art at the time the claimed invention was made.
The examiner points out that Kriebel ‘653 discloses that disc dispersers, such as that of
disc disperser 8 of the second embodiment of Egenes, “conventionally have several lines of teeth
on the surface of the discs to help disperse the paper stock” (answer, page 5), as required by
claim 2. We find such disclosure in col. 3, ll. 10-25, and disperse zone 9 of Fig. 1 as described at
col. 4, l. 63, to col. 5, l. 5, of Kriebel ‘573 (see above note 4).
Accordingly, in view of the examiner’s prima facie case of obviousness, we again
evaluate all of the evidence of obviousness and nonobviousness based on the record as a whole,

7 A discussion of Aktiebolag is not necessary to our decision. See Kronig, supra.
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giving due consideration to the weight of appellants’ arguments in the brief. See generally,
Oetiker, supra; Piasecki, supra.
We considered above appellants’ arguments with respect to the combined teachings of
Egenes, Riquet and Aktiebolag (brief, pages 18-19), and Kriebel ‘653 is not relied on in such
respects. We find no argument advanced by appellants which establishes that Kriebel ‘653 does
not provide the teachings relied on by the examiner (see brief, pages 19-20).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Egenes, Riquet,
Aktiebolag and Kriebel ‘653 with appellants’ countervailing evidence of and argument for
nonobviousness and conclude that the claimed invention encompassed by appealed claims
2 through 4 would have been obvious as a matter of law under 35 U.S.C. § 103(a).
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner that, prima facie, the claimed
process of dispersing fibrous paper stock encompassed by appealed claim 8 would have been
obvious over the combined teachings of Egenes, Riquet, Aktiebolag, Davenport and Kriebel
‘6538 to one of ordinary skill in this art at the time the claimed invention was made.
Claim 8 further limits claim 1 by specifying “rotating the mallets at a circumferential
speed in a range between about 1 to 5 m/s.” The examiner finds that Davenport discloses at col.
14, l. 5, to col. 15, l. 14, “using a mallet roller (Figure 8(62)) to predisperse and shred paper
stock pieces less than 6 inches (152 mm) prior to a disc disperser and teaches that the mallet
roller reduces the energy needed to disperse paper stock” (answer, page 5). We note in this
respect the teachings at col. 5, ll. 6-7 and 13-15, and col. 6, ll. 58-67, of Davenport. On this
evidentiary basis, the examiner concludes that “[i]t would have been obvious to use a slower
speed of rotation for the predisperser of . . . [Egenes] as Davenport teaches that the mallet saves
energy over predispersing machines” (answer, page 5).
We find that the disclosure in Davenport would have reasonably suggested to one of
ordinary skill in this art that the process parameters are result effective variables. Thus, as the
examiner points out, prima facie, this person would have arrived at a workable or optimum range
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for any and all of these variables. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
(CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine experimentation.”).
Accordingly, in view of the examiner’s prima facie case of obviousness, we again
evaluate all of the evidence of obviousness and nonobviousness based on the record as a whole,
giving due consideration to the weight of appellants’ arguments in the brief. See generally,
Oetiker, supra; Piasecki, supra.
We considered above appellants’ arguments with respect to the combined teachings of
Egenes, Riquet and Aktiebolag (brief, pages 21-22), and Davenport and Kriebel ‘653 are not
relied on in such respects. We find no argument which establishes that Davenport does not
provide the teachings relied on by the examiner (see brief, pages 21-22).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Egenes, Riquet,
Aktiebolag, Davenport and Kriebel ‘653 with appellants’ countervailing evidence of and
argument for nonobviousness and conclude that the claimed invention encompassed by appealed
claims 8 through 12 would have been obvious as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.

8 A discussion of Aktiebolag and Kriebel ‘653 is not necessary to our decision. See Kronig,
supra.
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No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv) (effective September 13, 2004; 69 Fed. Reg. 49960
(August 12, 2004); 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
AFFIRMED

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

Appeal No. 2004-2284
Application 09/832,873
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Greenblum & Bernstein, P.L.C.
1950 Roland Clarke Place
Reston, VA 20191