Ex Parte McNeil

Board of Patent Appeals and Interferences

Mar 12, 2002

08787893 (B.P.A.I. Mar. 12, 2002)

1 Attendance at the oral hearing set for Wednesday, October
24, 2001 was waived by appellant (Paper No. 38).
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for publication and is not binding precedent of the Board.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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEVIN B. McNEIL
____________
Appeal No. 1999-0233
Application No. 08/787,893
____________
ON BRIEF1
____________
Before COHEN, NASE, and BAHR, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 2
through 8. These claims constitute all of the claims remaining
in the application.
Appellant’s invention pertains to a core wound paper
product. A basic understanding of the invention can be derived
Appeal No. 1999-0233
Application No. 08/787,893
2
from a reading of exemplary claim 2, a copy of which appears in
the APPENDIX to the main brief (Paper No. 25).
As evidence of obviousness, the examiner has applied the
document specified below:
Matsumoto et al 5,390,599 Feb. 21, 1995
(Matsumoto)
The following rejection is before us for review.
Claims 2 through 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Matsumoto.
The full text of the examiner’s rejection and response to
the argument presented by appellant appears in the answer (Paper
No. 26), while the complete statement of appellant’s argument can
be found in the main and reply briefs (Paper Nos. 25, 28, and
35).
Appeal No. 1999-0233
Application No. 08/787,893
2 We have perceived a number of informalities in the claims
which we focus upon in a remand to the examiner, infra.
3 In our evaluation of the applied prior art, we have
considered all of the disclosure of the specified document for
what it would have fairly taught one of ordinary skill in the
art. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the inferences
which one skilled in the art would reasonably have been expected
to draw from the disclosure. See In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
3

OPINION
In reaching our conclusion on the obviousness issue raised
in this appeal, this panel of the board has carefully considered
appellant’s specification and claims,2 the applied teaching,3 and
the respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determination which
follows.
We do not sustain the examiner’s rejection of appellant’s
claims.
Appeal No. 1999-0233
Application No. 08/787,893
4
Independent claim 2 is drawn to a core wound paper product
comprising, inter alia, a sheet wound about the core, with the
sheet having a principal direction and a length of at least 500
inches in the principal direction, spaced apart indicia disposed
throughout the principal direction, lines of termination disposed
throughout the principal direction, with the lines of termination
being registered with the indicia, and with the registration
varying less than about ± 0.125 inches in the principal direction
throughout the length of the sheet.
The examiner views the Matsumoto document as teaching a core
wound paper product, and determines that registration of
repeating indicia and lines of termination constitutes an obvious
design choice, with experimentation yielding an optimum operating
location (answer, page 3).
Contrary to the examiner’s finding, we do not discern a core
wound paper product within the Matsumoto teaching; in particular,
a core wound paper product with a sheet wound about a core and
having a length of at least 500 inches. As pointed out by
appellant (main brief, page 3), Matsumoto envisions printed
sheets, labels, and forms. The Matsumoto printed sheet product,
Appeal No. 1999-0233
Application No. 08/787,893
5
which is indicated to be cut with high accuracy (column 6, lines
1 and 2), is stacked one upon the other in the piling section 48
(Fig. 1). Since a core wound paper product, as now claimed,
would not have been suggested by the Matsumoto patent, the
rejection cannot be sustained.
REMAND TO THE EXAMINER
We remand this application to the examiner to fully consider
each of the following matters.
1. The underlying disclosure should be assessed to determine if
descriptive support (literal or implicit) exists for the process
limitation in claim 2 reciting indicia and lines of termination
being “simultaneously impartable”, as required by 35 U.S.C.
§ 112, first paragraph.
2. The preamble portion (a “sheet”) of each of claims 3 through
8, line 1, is inconsistent with parent claim 2, line 1, setting
forth a “core wound paper product.”
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Application No. 08/787,893
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3. In claim 7, line 1 “spaced relationship” should obviously be
“registration” for conformity with the language of parent claim
2.
4. Appellant acknowledges as admitted prior art a core wound
paper product over 700 inches, where registration between indicia
and lines of termination is a recognized consideration
(specification, page 2). Further, acceptable registration error
of about 0.125 is recognized. The examiner should determine
whether it would have been obvious to one having ordinary skill
in the art to provide for a registration error of about 0.125 for
a core wound paper product, remembering that a product and not a
process is being claimed.
In summary, this panel of the board has not sustained the
rejection of appellant’s claims. Additionally, we have remanded
the application to the examiner.
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Application No. 08/787,893
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The decision of the examiner is reversed.
REVERSED AND REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
ICC:pgg
Appeal No. 1999-0233
Application No. 08/787,893
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Larry L. Huston
Procter & Gamble Company
Winton Hill Technical Center
6100 Center Hill Avenue
Cincinnati, OH 45224