Ex Parte Noelle

Board of Patent Appeals and Interferences

Feb 23, 2010

10980964 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FREDERIC NOELLE
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Appeal 2009-003040
Application 10/980,964
Technology Center 1700
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Decided: February 24, 2010
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Before BRADLEY R. GARRIS, CHUNK K. PAK, and
TERRY J. OWENS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 7, 9-12, 14-17, and 19-25. We have jurisdiction
under 35 U.S.C. § 6.
We REVERSE.
Appeal 2009-003040
Application 10/980,964

Appellant claims a nonwoven comprising entangled filiform elements
having free ends and patterned parts embossed on the surface of the
nonwoven, wherein the free ends of the filiform elements project from the
patterned parts over a length of less than 1 mm and the number of projecting
free ends is less than 10/5mm2 (claims 7, 16, 21).
Representative claim 21 reads as follows:
21. A nonwoven comprising entangled filiform elements having
free ends, the nonwoven includes an upper surface intermediate embossed
patterned projecting parts that extend from the upper surface, the patterned
projecting parts have flat upper faces except for projecting free ends of the
filiform elements, and the projecting free ends of the filiform elements
extend from the flat upper faces of the patterned parts over a length of less
than 1 mm and the number of free ends projecting from the flat faces is less
than 10/5mm2.
The reference set forth below is relied upon by the Examiner as
evidence of obviousness:
Austin 5,026,587 Jun. 25, 1991
The Examiner rejects all appealed claims under 35 U.S.C. § 103(a) as
being unpatentable over Austin.
The dispositive issue in this appeal relates to the Examiner’s
following obviousness position:
With regard to the limitations regarding the number of the
ends and the length of the ends and the thickness of the
fabric, while Austin does not disclose these parameters,
Austin teaches that the structure having the buds and the
projecting fibers results in a fabric having good
absorption, wiping and wicking characteristics. See col. 6,
lines 1-46. Therefore, it would have been obvious to one
of ordinary skill in the art at the time the invention was
made to have . . . optimized the length, number and
thickness of the fabric through the process of routine
experimentation in order to arrive at a fabric having the
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Application 10/980,964

desired absorbency, wiping and wicking characteristics.
Further, it is noted that the instant claims recite an upper
limit for the number of [projecting free] ends of filiform
elements [but] does not positively require any [projecting
free ends of] filiform elements.

(Ans. para. bridging 3-4).
This obviousness position is not well taken.
As an initial matter, the Examiner has erred in finding that “the instant
claims recite an upper limit for the number of [projecting free] ends of
filiform elements [but] does not positively require any [projecting free ends
of] filiform elements” (id.). As correctly argued by Appellant, each of
appealed independent claims 7, 16, and 21 positively recites the presence of
projecting free ends of filiform elements (Reply Br. 2-4). Indeed, Appellant
correctly points out that independent claim 16 expressly recites “the number
of these [projecting free] ends is one or more” (id. at 4). Significantly, the
Examiner has not rebutted these arguments by Appellant with any
reasonable specificity in the record of this appeal.
Alternatively, the Examiner has taken the position that, even if the
appealed claims require the presence of projecting free ends having the
length and number recited in the claims, it would have been obvious to
optimize the length and number of the projecting free ends “in order to
arrive at a fabric having the desired absorbency, wiping and wicking
characteristics” (Ans. para. bridging 3-4).
We agree with Appellant, however, that Austin contains no teaching
or suggestion of projecting free ends and that the Examiner’s contrary
finding is conclusory (App. Br. 12). Our study of the Austin teachings
identified by the Examiner reveals no support for the Examiner’s finding
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Application 10/980,964

that Austin’s nonwoven has the projecting free ends claimed by Appellant.
Correspondingly, these identified teachings reveal no support for the
Examiner’s belief that “Austin teaches . . . the projecting fibers result[] in a
fabric having good absorption, wiping and wicking characteristics” (Ans.
para. bridging 3-4). It follows that we also agree with Appellant that
“Austin does not use projecting fibers to achieve the desired absorbency,
wiping and wicking characteristics” (App. Br. para. bridging 13-14) and
correspondingly that “optimization [of Austin’s nonwoven] would not be
concerned with varying the number of fibers projecting from the
bud/cluster” (id. at 14).
In short, Austin contains no teaching or suggestion that the nonwoven
disclosed therein has the projecting free ends claimed by Appellant and
concomitantly contains no teaching or suggestion that such projecting free
ends were recognized by Austin as a result effective variable. It is well
established that an artisan would not have found it obvious to optimize a
parameter which was not recognized as being a result effective variable. In
re Antonie, 559 F.2d 618, 620 (CCPA 1977). For this reason, the
Examiner’s above-quoted conclusion of obviousness is incorrect.
Under the circumstances recounted above, the § 103 rejection of all
appealed claims as being unpatentable over Austin cannot be sustained.
The decision of the Examiner is reversed.

REVERSED

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