Ex parte Laapotti

Board of Patent Appeals and Interferences

May 31, 2001

08559496 (B.P.A.I. May. 31, 2001)

We note that both the final rejection (Paper No. 13) and the Notice of Appeal1
(Paper No. 14) erroneously indicate that they apply to claims 1-51. However, claims 36-38
had been canceled prior to that point (see Paper No. 7).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JORMA LAAPOTTI
____________
Appeal No. 1999-1398
Application No. 08/559,496
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-35 and
39-51, which are all of the claims pending in this application.1
We AFFIRM-IN-PART.
Appeal No. 1999-1398 Page 2
Application No. 08/559,496
Patent and Trademark Office translations enclosed.2
BACKGROUND
The appellant's invention relates to a press section of a paper making machine. An
understanding of the invention can be derived from a reading of exemplary claim 43, which
appears in the appendix to the appellant's Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Dorfel 3,861,996 Jan. 21, 1975
Ely et al. (Ely) 4,075,056 Feb. 21, 1978
Rempel et al. (Rempel) 4,086,131 Apr. 25, 1978
Schmitt et al. (Schmitt) 4,257,844 Mar. 24, 1981
Wicks et al. (Wicks) 4,483,745 Nov. 20, 1984
Laapotti 4,551,205 Nov. 5, 1985
Pajula et al. (Pajula) 5,389,205 Feb. 14, 1995
European Patent Application 0 289 477 Nov. 2, 1988
(EP ‘477)
German Gebrachsmuster 9206340 Sep. 24, 19922
(G ‘340)
German Patent Specification 43 21 404 Sep. 1, 19942
(DE ‘404)
Claims 1-16, 24, 33 and 39-51 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Schmitt in view of Wicks, if necessary with DE ‘404 or G ‘340, also
further in view of Dorfel or Ely or Rempel.
Appeal No. 1999-1398 Page 3
Application No. 08/559,496
Claims 17-23, 34 and 35 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Schmitt in view of Wicks, if necessary with DE ‘404 or G ‘340, also
further in view of Dorfel or Ely or Rempel, and EP ‘477.
Claims 25-29 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Schmitt in view of Wicks, if necessary with DE ‘404 or G ‘340, also further in view of Dorfel
or Ely or Rempel, and Pajula.
Claims 14 and 30-32 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Schmitt in view of Wicks, if necessary with DE ‘404 or G ‘340, also further in view of
Dorfel or Ely or Rempel, and Laapotti.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the Answer (Paper
No. 16) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 15) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
Appeal No. 1999-1398 Page 4
Application No. 08/559,496
At the outset, we point out that the appellant has not grouped the claims in
accordance with the manner in which the rejections were applied, and has provided
arguments with respect to only a few of the claims. We have, however, carefully
considered all of the arguments, and have treated those claims whose patentability has not
been separately argued before the Board as standing or falling with the claims from which
they depend. See In re Nielson, 816 F.2d 1567, 1571, 2 USPQ2d 1525, 1527 (Fed. Cir.
1987).
All of the rejections are under 35 U.S.C. § 103, and the guidance provided to us by
our reviewing court for evaluating such rejections is as follows: The initial burden of
establishing a basis for denying patentability to a claimed invention rests upon the
examiner. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). The question under 35 U.S.C. §103 is not merely what the references expressly
teach but what they would have suggested to one of ordinary skill in the art at the time the
invention was made. See Merck & Co. v. Biotech Labs., Inc. 874 F.2d 804, 10 USPQ2d
1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989) and In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). While there must be some suggestion or motivation
for one of ordinary skill in the art to combine the teachings of references, it is not necessary
that such be found within the four corners of the references themselves; a conclusion of
obviousness may be made from common knowledge and common sense of the person of
Appeal No. 1999-1398 Page 5
Application No. 08/559,496
ordinary skill in the art without any specific hint or suggestion in a particular reference. See
In re Bozak, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Insofar as the
references themselves are concerned, we are bound to consider the disclosure of each for
what it fairly teaches one of ordinary skill in the art, including not only the specific teachings,
but also the inferences which one of ordinary skill in the art would reasonably have been
expected to draw therefrom. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510
(CCPA 1966) and In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
Independent claim 43 is the broadest claim before us, and it stands rejected as
being unpatentable over the teachings of seven references, some of which are considered
as alternatives. The primary reference is Schmitt, and the examiner is of the view that
Schmitt discloses all of the subject matter recited in claim 43 except that the first nip
downstream of the first transfer means (N-101 in Figure 2) is not an extended nip, and the
next roll downstream of the first nip (117 in Figure 2) is a suction roll that has no pressure
roll opposite it to create the claimed pressure nip. The examiner points out that Wicks
teaches it was known in the prior art at the time of the appellant’s invention to utilize
conventional roll nips and extended roll nips as alternatives, and concludes that one of
ordinary skill in the art therefore would have found it obvious to replace the conventional roll
nips disclosed by Schmitt with extended roll nips, in view of the teachings of Wicks. In this
regard, the examiner further cites, “if necessary,” DE ‘404 and G ‘340 as examples of the
Appeal No. 1999-1398 Page 6
Application No. 08/559,496
use in the art of extended nips in both the first and second roll locations. As for the missing
pressure roll opposite Schmitt’s suction roll, the examiner is of the view that adding such a
roll would have been obvious in view of the teachings of Dorfel, Ely or Rempel, suggestion
being found in the known advantage that more press nips provide more dewatering.
These two features are the only two differences argued by the appellant.
We agree with the examiner that the subject matter of claim 43 would have been
obvious to one of ordinary skill in the art in view of the combined teachings of the applied
references. Wicks is directed to press sections for papermaking machines, and with
regard to the substitution of extended nip presses for nip presses, makes the following
statement in column 2, lines 51-58:
While the presses shown as N and N-1 are illustrated
as conventional roll presses, extended nip presses may be
employed, and the same advantages of the use of the
impervious belt occurs. Extended nip presses, as will be
recognized by those versed in the art, are presses utilizing
elongate press nips where the pressing pressure may be
obtained such as from a dynamic layer of hydraulic liquid.
This is a very explicit teaching that it was known in the art at the time of the appellant’s
invention to employ extended nip presses in place of conventional nip presses. In addition,
from our perspective, it is implicit in the foregoing statement that one of ordinary skill in the
art would have recognized the advantages of using an extended nip press in place of a
conventional nip press, for in an obviousness assessment, skill is presumed on the part of
Appeal No. 1999-1398 Page 7
Application No. 08/559,496
the artisan, rather than the lack thereof. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771,
774 (Fed. Cir. 1985). This conclusion is buttressed by evidence of the conventionality of
using extended nip presses in papermaking machines in general and, in particular, in
several press nips in the same apparatus, as shown, for example, in Figure 2 of DE ‘404
and in Figure 5 of G ‘340.
We are not persuaded otherwise by the appellant’s argument that the examiner has
made no showing that suggestion to make such a change is provided by the prior art
(Brief, page 8 and 9). As we explained above, it is our view that one of ordinary skill in the
art would have found ample suggestion for such a modification to the system of Schmitt in
the explicit teachings of the references, taken in conjunction with the skill that should be
accorded to the artisan. In this regard, the appellant has not presented evidence to rebut
the examiner’s position, but has merely offered argument and conclusionary statements,
which do not constitute evidence of nonobviousness. See In re deBlauwe, 736 F.2d 699,
705, 222 USPQ 191, 196 (Fed. Cir. 1984).
With regard to the use of pressure rolls opposite suction rolls, the appellant has
correctly pointed out that Schmitt states that “suction rolls are incapable of withstanding
high nip pressures, are costly to produce and operate and are not well suited for high-
speed operations” (column 1, lines 42-45), that “[s]uction rolls are only used in the instant
press arrangements to effect positive sheet or web transfer” (column 3, lines 44-46), and
Appeal No. 1999-1398 Page 8
Application No. 08/559,496
that “by eliminating suction rolls and their auxiliary equipment, a substantial savings is
realized in capital outlay and in operating costs” (column 5, lines 51-54). However, we do
not agree with the appellant that these statements compel the conclusion that it would not
have been obvious to install another roll opposite suction roll 117 in the Schmitt system to
create a pressure nip in that location.
It is clear from Schmitt that prior art press arrangements included the use of suction
rolls in nips with pressure rolls for dewatering (column 1, lines 40-41, 48-49 and 54-55). In
fact, it is a novel feature of the Schmitt invention to process wide webs at high operating
speeds while achieving the high water removal “normally associated with heavily loaded
suction press nips” (column 2, lines 45-50). Such use also is documented in Dorfel, Ely
and Rempel. It also is interesting, in this regard, to note that notwithstanding Schmitt’s
comments quoted above, the system disclosed in Figure 2 utilizes a suction roll (117) that
is in “a nip-defining relation with the plain-surfaced press roll 119 . . . the suction transfer
roll 117 is lightly nipped against the surface of the plain-surfaced press roll 119 and
prevents blowing or the like thereby insuring more positive web or sheet control” (column 8,
lines 32-36). Therefore, in our view, consideration of the entire Schmitt specification leads
to the conclusion that Schmitt does not instruct the artisan that suction rolls cannot at all be
used in nips with smooth rolls, but that they have disadvantages in certain situations, which
do not include the slow web speeds and low pressures mentioned by Schmitt as being
Appeal No. 1999-1398 Page 9
Application No. 08/559,496
present in the prior art, or when “lightly nipped” against the surface of a smooth roll for web
control at high speeds, as expressly taught by Schmitt. A “lightly nipped” pair of rolls
would, in our view, necessarily provide some pressure in the nip in order to accomplish the
stated purpose of providing additional web control and, no doubt, also would perform
some amount of dewatering.
All that is required by the appellant’s claim 43 is that there be a first roll nip that is
downstream of the first extended nip and upstream from the first separating means “for
applying pressure across the width of the paper web.” The claim does not require the
pressure or the web speed to be “high.” It therefore is our conclusion that one of ordinary
skill in the art would have found it obvious to utilize suction rolls in nips with pressure rolls in
arrangements such as that including Schmitt’s roll 117 in low speed and low pressure
operations, in view of the description of the prior art provided by Schmitt and the evidence
provided in the three secondary references, and in “lightly nipped” relationships even at
high speeds, in view of Schmitt’s own disclosure.
It therefore is our conclusion that the combined teachings of the applied references
would have suggested to one of ordinary skill in the art both of the disputed modifications
of the Schmitt system, and thus they establish a prima facie case of obviousness with
regard to the subject matter of claim 43. This being the case, we will sustain the rejection
Appeal No. 1999-1398 Page 10
Application No. 08/559,496
of claim 43. We also will sustain the rejection of dependent claims 44-47, the separate
patentability of which have not been argued before the Board.
As for claim 48, which requires that a second nip be formed in the suction means, in
response to the appellant’s argument, it is our view that this limitation would be the inherent
result of adding a press roll nip at Schmitt’s suction roll 117, for roll 119 is disclosed as
forming a nip with the same suction roll 117. The rejection of claim 48 is sustained.
Independent claim 1 stands rejected on the same basis as claim 43. The
arguments raised by the appellant are the same as those set out against the rejection of
claim 43, with emphasis on the fact that claim 1 requires a second extended nip, which
also is not taught by the applied references. With regard to claim 43, we concluded that it
would have been obvious to utilize extended nip rolls in place of conventional nip rolls in
view of the teachings of Wicks, DE ‘404 and G ‘340. That reasoning is equally applicable
with regard to claim 1, and we will sustain the rejection. We also will sustain the rejection
of dependent claims 2-16, 24, 33 and 39-42, which were not separately argued before the
Board.
The appellant has argued that the teachings of the references applied against claim
49, which depends from claim 1 through claim 16, fail to render the subject matter of the
claim obvious. Claim 49 states that the hose roll further comprises a second press shoe
and the second extended nip is formed between the center roll and the second press shoe
Appeal No. 1999-1398 Page 11
Application No. 08/559,496
of the hose roll. We agree with the appellant that neither Schmitt nor the other references
disclose or teach such structure, and we fail to perceive any suggestion which would have
motivated one of ordinary skill in the art to alter the Schmitt system in such a fashion. The
rejection of claim 49 and claims 50 and 51, which depend therefrom, is not sustained.
Claims 17-23, 34 and 35, all of which are dependent from claim 1, stand rejected
as being unpatentable over the references applied against claim 1, taken further in view of
EO ‘477. The appellant has not challenged the examiner’s position with regard to this
rejection, and therefore we will sustain it.
Likewise, the appellant has not taken issue with the rejection of claims 25-29 on the
basis of the references applied against claim 1, taken further with Pajula, and we will
sustain this rejection, also.
Finally, the examiner has rejected claims 14 and 30-32 as being unpatentable over
the references applied against claim 1, taken further with Laapotti. Again, the appellant
has chosen to allow the examiner’s conclusion to stand uncontroverted, and we shall
sustain this rejection.
SUMMARY
The rejection of claims 1-16, 24, 33 and 39-48 as being unpatentable over Schmitt
in view of Wicks, if necessary with DE ‘404 or G ‘340, also further in view of Dorfel or Ely
or Rempel, is sustained.
Appeal No. 1999-1398 Page 12
Application No. 08/559,496
The rejection of claims 49-51 as being unpatentable over Schmitt in view of Wicks,
if necessary with DE ‘404 or G ‘340, also further in view of Dorfel or Ely or Rempel, is not
sustained.
The rejection of claims 17-23, 34 and 35 as being unpatentable over Schmitt in
view of Wicks, if necessary with DE ‘404 or G ‘340, also further in view of Dorfel or Ely or
Rempel, and EP ‘477, is sustained.
The rejection of claims 25-29 as being unpatentable over Schmitt in view of Wicks,
if necessary with DE ‘404 or G ‘340, also further in view of Dorfel or Ely or Rempel, and
Pajula, is sustained.
The rejection of claims 14 and 30-32 as being unpatentable over Schmitt in view of
Wicks, if necessary with DE ‘404 or G ‘340, also further in view of Dorfel or Ely or Rempel,
and Laapotti, is sustained.
The decision of the examiner is affirmed-in-part.
Appeal No. 1999-1398 Page 13
Application No. 08/559,496
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
NEA:lbg
Appeal No. 1999-1398 Page 14
Application No. 08/559,496
MICHAEL C. STUART
COHEN, PONANI, LIEBERMAN AND PAVANE
551 FIFTH AVENUE SUITE 1210
NEW YORK , NY 10176
APPEAL NO. 1999-1398 - JUDGE ABRAMS
APPLICATION NO. 08/559,496
APJ ABRAMS
APJ FRANKFORT
APJ STAAB
DECISION: AFFIRMED-IN-PART
Prepared By:
DRAFT TYPED: 20 May 02
FINAL TYPED: