Ex Parte Lilburn

Board of Patent Appeals and Interferences

Sep 26, 2005

10050167 (B.P.A.I. Sep. 26, 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today was not written for publication and is not binding
precedent of the Board.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
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Ex parte ANDREW LILBURN
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Appeal No. 2005-1766
Application 10/050,167
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HEARD: September 15, 2005
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Before GARRIS, WARREN and TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, including
the opposing views of the examiner, in the answer, and appellant, in the brief and reply brief, and
based on our review, find that we cannot sustain the grounds of rejection advanced on appeal:
appealed claims 1 through 6, 18 and 31 under 35 U.S.C. § 103(a) as being unpatentable over
Lilburn (answer, page 3); appealed claims 7 through 17, 19 through 30 and 32 under 35 U.S.C.
§ 103(a) as being unpatentable over Lilburn as applied to claim 1, and further in view of Lewis,
with or without Justus and Ely, Sr. (answer, pages 3-4); and appealed claim 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Lilburn as applied to claim 1, and further in view of Bossen
(answer, page 4).1,

1 Appealed claims 1 through 33 are all of the claims in the application upon entry of the
amendment filed May 3, 2004 (see answer, page 2). See the appendix to the brief.
Appeal No. 2005-1766
Application 10/050,167
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The dispositive issue in this appeal is whether the terms in the claim language “detecting
conductivity of the wet web entering the wet end section,” considered in the context of the
preambular language “monitoring dewatering in a wet end section of a web production machine”
and the language in the limitation “determining a water balance from the measured quantities,
which is indicative of dewatering in the wet end,” of appealed claim 1 when given the broadest
reasonable interpretation in their ordinary usage as they would be understood by one of ordinary
skill in the art in light of the written description in the specification, including the drawings, as
interpreted by this person, 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), must be interpreted as “detecting conductivity of the wet web entering the
wet end section, not the conductivity of the wet web in the wet end section, as apparently
interpreted by the Examiner,” as framed by appellant (reply brief, page 2; original emphasis).
We determine that one of ordinary skill in this art would consider the language “a wet
end section of a web production machine” in the context of any web production machine as
described in the specification, to mean monitoring a whole section of the “wet end” of that
machine, such as the press section, and not with respect to a part of a section, such as the nip of a
set of press rolls in the press section. Indeed, we find no disclosure in the written description
from which it can even reasonably be inferred that the determination of a water balance is based
on less than the whole of a wet end section being monitored, which requires detecting the
conductivity of the wet web prior to its entry into the section. See specification, e.g., [0002],
[0017], [0034], [0036], [0038], [0046], [0047], and [0056]. Accordingly, we are of the view that
the claim language “detecting conductivity of the wet web entering the wet end section” must be
given its plain meaning of detecting the conductivity of the wet web before it enters a whole wet
end section being monitored.
In applying Lilburn to the appealed claims, the examiner relies on the determination of a
water balance by a method which includes determining the wet web conductivity by
measurement or calculation after it passes through a roller nip in the press section of a paper
machine, arguing that the reference teaches “using the wet web conductivity of the web coming
into the press using measured or calculated values from the previous nip” which is “equivalent
Appeal No. 2005-1766
Application 10/050,167
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to measuring the conductivity of the web into the nip as the conductivity does not change as the
web passes directly from one nip to the next” (answer, page 5; original emphasis). The examiner
further takes the position that “the use of the various calculations into and out of the nip to
determine the water balance of the press would have been routine calculations to one of ordinary
skill in the art” (id.).
We agree with appellant that “in Lilburn, because conductivity of the web is measured
from the previous nips, which are already within the wet section, the initial conductivity
measurement is not until after the first press” and is “the conductivity of the wet web in the wet
end section” (brief, page 10, original emphasis deleted; reply brief, page 2). Indeed, Lilburn
would have disclosed to one of ordinary skill in the art that the initial determination of
conductivity involves “measuring the electrical conductivity of the water entering a press section
means entrained in one or more press felts,” this step being illustrated by electrical conductivity
sensors 21,22 positioned against the respective felts in the drawing, and provides the basis for
“Wet Web conductivity measured or calculated from previous press nip” (page 4, ll. 18-19, page
5, ll. 3-5, page 6, ll. 19-21, page 7, l. 12, and abstract).
Thus, while Lilburn provides evidence in support of the examiner’s position, that position
does not apply Lilburn to each and every limitation of the invention encompassed by appealed
claim 1 as we have interpreted this claim above. See, e.g., In re Geerdes, 491 F.2d 1260,
1262-63, 180 USPQ 789, 791-92 (CCPA 1974) (In considering grounds of rejection under
35 U.S.C. §§ 103 and 112, “every limitation in the claim must be given effect rather than
considering one in isolation from the others.”). To the extent that the examiner takes the position
that it would have been obvious to determine the conductivity of the wet web as it enters the
press section, we fail to find in the answer a scientific explanation for this determination based
on the disclosure of Lilburn as well as a showing establishing the motivation leading one of
ordinary skill in the art to modify the teachings of Lilburn do so. See generally, In re Rouffet,
149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998)\ (“hindsight” is inferred when the
specific understanding or principal within the knowledge of one of ordinary skill in the art
leading to the modification of the prior art in order to arrive at appellant’s claimed invention has
not been explained); B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582,
37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When obviousness is based on a particular prior art
Appeal No. 2005-1766
Application 10/050,167
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reference, there must be a showing of a suggestion or motivation to modify the teachings of that
reference. [Citation omitted.] This suggestion or motivation need not be expressly stated.
[Citation omitted.]”). We do not find evidence supporting the examiner’s position in the other
applied references.
Thus, on this record, we find that the examiner has not established a prima facie case of
obviousness based on Lilburn alone or as combined with the other applied references, and
therefore, we reverse the grounds of rejection advanced on appeal.
The examiner’s decision is reversed.

Reversed

Appeal No. 2005-1766
Application 10/050,167
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BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CATHERINE TIMM )
Administrative Patent Judge )

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