Ex Parte Lieber

Board of Patent Appeals and Interferences

May 8, 2006

09952349 (B.P.A.I. May. 8, 2006)

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for publication and is not binding precedent of the Board.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 REINHARD LIEBER
____________

Appeal No. 2006-0774
Application No. 09/952,349
____________

ON BRIEF
____________

Before FRANKFORT, OWENS and NAPPI, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the examiner's final
rejection of claims 1 and 6 through 10. Claims 14 through 16,
the only other claims remaining in the application, stand
allowed. Claims 2 through 5 and 11 through 13 have been canceled.

Appellant’s invention relates to a method for winding a
continuously advancing yarn into a yarn package with an even mass
distribution of the yarn so as to obtain a uniform density
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package. More specifically, it is noted on page 4, lines 1-14,
of the specification that
The method of the present invention establishes a
relationship between the stroke modification function
and the mass distribution. In this connection, a mass
distribution of the yarn is predetermined on a
hypothetically wound, ideal yarn package. From the
hypothetically wound, ideal yarn package with a
predetermined mass distribution of the yarn, the stroke
modification function is determined from the
distribution of the reversal points on the
hypothetically wound, ideal yarn package. This stroke
modification function is used to produce the yarn
package being wound. The special advantage of the
invention lines in that it is possible to wind the end
regions of the yarn package with a defined mass
distribution of the yarn.

A further understanding of the invention can be derived from
a reading of independent claims 1 and 6, a copy of which appears
in the Appendix attached to appellant’s brief.

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The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Mayer et al. (Mayer) 6,065,712 May 23, 2000
Lieber et al. (Lieber) 6,283,401 Sep. 4, 2001

Claims 1 and 7 through 10 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Mayer.

Claims 1 and 6 through 10 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Lieber.

Rather than attempt to reiterate the examiner's commentary
with regard to the above-noted anticipation rejections and the
conflicting viewpoints advanced by appellant and the examiner
regarding those rejections, we make reference to the answer
(mailed January 29, 2004) for the examiner’s reasoning in support
of the rejections, and to appellant’s brief (filed November 10,
2003) for the arguments thereagainst.

OPINION
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In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.

With regard to both the rejection of claims 1 and 7 through
10 based on Mayer and the rejection of claims 1 and 6 through 10
based on Lieber, the only issue presented for our consideration
on appeal is whether the claimed methods reflected by appellant’s
independent claims 1 and 6 are “inherent” in the operation and
use of the respective apparatus described by Mayer and Lieber for
their intended purpose. It is by now well settled that to
establish inherency, the extrinsic evidence must make clear that
the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill in the art. Inherency
may not be established by probabilities or possibilities. The
mere fact that a certain result or characteristic may occur or be
present in the prior art is not sufficient to establish the
inherency of that result or characteristic. See, In re
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Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir.
1999).

While the desire in the yarn winding processes described in
both Mayer and Lieber is to obtain a stable package build, a
uniform package density, as well as satisfactory unwinding
characteristics during a later further processing step, neither
of the applied patents achieves their desired results by using a
method of winding exactly like that defined in appellant’s claims
on appeal. In the claimed invention, the stroke modification
function (Z) which is utilized to vary the length of the
transverse stroke of the traversing yarn guide (3) is determined
from a predetermined mass distribution (F) of the yarn on a
hypothetically wound ideal yarn package. As noted particularly
in claim 1, the mass distribution (F) of the yarn on the
hypothetically wound ideal yarn package is “computed by the steps
of predetermining a desired value of the mass distribution
(Fdesired) from predetermined winding parameters (E) and then
computing the mass distribution (F) while maintaining the limits
of the desired value of the mass distribution (Fdesired).” While
both Mayer and Lieber periodically alter the length of the
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transverse stroke of a yarn guide to modify the amount of yarn
deposited at the package edge regions adjacent the yarn guide
reversal points, neither Mayer nor Lieber describes using a
predetermined mass distribution (F) of the yarn on a
hypothetically wound ideal yarn package as the starting point to
determine a stroke modification function (Z), or the computation
of such a mass distribution (F) in the manner required in the
claims on appeal. Nor do we see that those aspects of
appellant’s claimed method are necessarily present in the
apparatus or processes disclosed in Mayer and Lieber.

Mayer specifically focuses on acceleration and/or
deceleration of the yarn guide over the reversal length so as to
modify the amount of yarn deposited in the package edge regions,
and expressly notes (col. 1, lines 47-51) that such corrected
yarn deposit takes place in the edge regions “irrespective of a
stroke modification and irrespective of the length of the
transverse stroke.” Lieber approaches the problem in an entirely
different way by relying on a modified stroke cycle that ensures
that the yarn reversal points are substantially evenly
distributed in the end regions of a cross-wound package. To that
end, Lieber notes in column 2, lines 57-62, that to obtain an as
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precise package buildup as possible, the actual diameter of the
package and the angular position may be continuously determined,
so that the traversing yarn guide drive is controlled by a
control device as a function of the comparison between the
position of the starting reversal point and the position of the
ending reversal point. Again, as we indicated above, neither
Mayer nor Lieber describes using a predetermined mass
distribution (F) of the yarn on a hypothetically wound ideal yarn
package as the starting point to determine a stroke modification
function (Z), or the computation of such a mass distribution (F)
in the manner required in the claims on appeal.

As for the examiner’s positions that the empirical
assumptions arrived at in Mayer and Lieber through trial and
error somehow equate to appellant’s computing of a mass
distribution on a hypothetically wound ideal yarn package, and
that a previously wound package in Mayer or Lieber can serve as a
“hypothetically wound ideal yarn package,” we find such
assertions to be without merit. A trial and error approach does
not equate to predetermined computation of a mass distribution
(F) of the yarn on a hypothetically wound ideal yarn package like
that described in appellant’s specification and required in the
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claims on appeal. Moreover, a prior yarn package wound in a
trial and error process would not be viewed by one of ordinary
skill in the art as the type of predetermined “hypothetically
wound ideal yarn package” used by appellant in carrying out the
processes of the present application.

Based on the foregoing, we conclude that the examiner has
not met his burden of establishing a prima facie case of
anticipation based on inherency with regard to either of the
Mayer or Lieber patents. Thus, we will not sustain the
examiner’s rejection of claims 1 and 7 through 10 under 35 U.S.C.
§ 102(b) as being anticipated by Mayer, or that of claims 1 and 6
through 10 under 35 U.S.C. § 102(e) as being anticipated by
Lieber. It follows that the decision of the examiner is
reversed.
REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
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)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )

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Address

Appeal No. 2006-0774
Application No. 09/952,349

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Alston & Bird, LLP
Bank of America Plaza
101 South Tryon Street, Suite 4000
Charlotte, NC 28280-4000

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