Ex Parte Papsdorf

Board of Patent Appeals and Interferences

Feb 9, 2011

09905274 (B.P.A.I. Feb. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/905,274 07/13/2001 Clifford Theodore Papsdorf 8609 2737
27752 7590 02/10/2011
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
02/10/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLIFFORD THEODORE PAPSDORF
____________

Appeal 2009-009844
Application 09/905,274
Technology Center 3700
____________

Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009844
Application 09/905,274

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STATEMENT OF THE CASE
Clifford Theodore Papsdorf (Appellant) appeals under 35 U.S.C. §
134 from the Examiner’s decision finally rejecting under 35 U.S.C. § 103(a)
claims 1-9, 13-19, 21-23, and 25-27 as unpatentable over Tipper (US
3,348,458, issued Oct. 24, 1967 and McConnell (US 775,495, issued Nov.
22, 1904)2 and claims 10-12 and 24 as unpatentable over Tipper,
McConnell, and Benedict (US 2,314,757, issued Mar. 23, 1943). Claim 20
has been withdrawn. We have jurisdiction over this appeal under 35 U.S.C.
§ 6.

THE INVENTION
Appellant’s invention relates to an inline apparatus for pleating a web.
Spec. 1, l. 4 and fig. 1.
Claims 1 is representative of the claimed invention and reads as
follows:
1. A web pleating apparatus having a mutually orthogonal
machine direction, a cross machine direction and a Z-direction, the
apparatus comprising:

2 For purposes of this appeal, claims 7-9 will be considered as being
rejected over the combined teachings of Tipper and McConnell. In the
Examiner’s Answer, claims 7-9 and 19 are rejected over the combined
teachings of Tipper, McConnell, and Appellants’ Admitted Prior Art
(hereafter “AAPA”). Ans. 6. However, in the body of the rejection, the
Examiner never refers to AAPA and does not indicate which portion of
Appellant’s Specification constitutes AAPA. Furthermore, we note that in
the Final Rejection, mailed Jul. 7, 2006, the Examiner did not include AAPA
to reject claims 7-9 and 19. Hence, we shall not consider AAPA as prior art
for the purpose of rejecting claims 7-9 and 19 under 35 U.S.C. § 103(a). As
such, we do not find that the Examiner made a new ground of rejection of
claims 7-9 and 19 for the first time in the Answer without following the
proper procedures for doing so. See MPEP § 1207.03.
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a first series of elongate spaced protuberances converging in the
cross-machine direction;
a second series of elongate spaced protuberances converging in
the cross-machine direction;
a drive element disposed to form a friction nip with the first
series of elongate spaced protuberances;
wherein said first series of protuberances and said second series
of protuberances interleave in the Z-direction; and,
said first series and said second series of interleaved
protuberances being capable of folding a pleatable web into a
generally pleated pattern of machine direction pleats upon contact of
said web relative to said first and second series of protuberances.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Each of independent claims 1, 14, 21, and 25 requires a drive element
forming a “friction nip” with a first series of elongate spaced protuberances.
The Examiner found that Tipper discloses all the limitations of independent
claims 1, 14, 21, and 25 with the exception of a “drive element [that] is
disposed to form a friction nip with the first series of elongate spaced
protuberances.” Ans. 4. Pointing to column 3, lines 24-26 and Figures 1-3
of McConnell, the Examiner further found that driven rollers 8 form a
friction nip with the first row of spaced protuberances 5. Ans. 4, see also
Ans. 8. The Examiner concluded that it would have been obvious for a
person of ordinary skill in the art to modify the pleating apparatus of Tipper
with the friction nip of McConnell “in order to feed and draw the web
through the machine without danger of breaking or tearing the web.” Ans.
4. In other words, as far as we understand, the Examiner is proposing to
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Application 09/905,274

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position the driven rollers 8 of McConnell downstream of the protuberances
36, 37 (ridges) of Tipper. See also Ans. 8; Reply Br. 4.
Although a proposed combination of teachings does not necessarily
require that the structure taught by one of the references be bodily
incorporated into the structure of the other reference, we fail to see how or in
what manner Tipper is proposed to be modified to include the driven rollers
8 of McConnell, a modification asserted by the Examiner as something that
would have been obvious to a person of ordinary skill in the art. In this case,
we find that in Tipper, the ridges 36, 37 (first and second series of
protuberances) are arranged in a convergent manner to form a pleated
tubular casing 48. Tipper, col. 2, ll. 45-46 and fig. 5. However, in contrast,
in McConnell, the corrugating rollers 5 (protuberances) are arranged in a
divergent manner, i.e., a V-shape, to form a flat, pleated (corrugated) sheet.
McConnell, p. 1, ll. 9-11 and fig.1. We agree with Appellant that the
Examiner’s proposed configuration would result only in contact of the
driven rollers and the crests of the formed pleats. See Reply Br. 4. As such,
we do not see how the driven rollers in the Examiner’s proposed
configuration would be able to “feed and draw the web through the
machine,” as the Examiner opines.
Although McConnell discloses that it was known in the art to use
driven rollers 8 to draw a corrugated, flat sheet through the apparatus, we
find the Examiner’s rejection insufficient to explain what in the prior art
would have prompted a person having ordinary skill in the art to use the
driven rollers of McConnell to draw the pleated tubular casing 48 of Tipper
through Tipper’s apparatus. The Examiner has not provided any findings
that either Tipper or McConnell recognized a problem with the technique
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used in Tipper to draw the pleated tubular casing through Tipper’s
apparatus. Absent hindsight, we fail to see why one having ordinary skill in
the art would have been led by the teachings of McConnell to modify the
pleating apparatus of Tipper in the manner claimed.
In conclusion, for the foregoing reasons, the rejection of independent
claims 1, 14, 21, and 25, and their respective dependent claims 2-9, 13, 15-
19, 22, 23, 26, and 27 under 35 U.S.C. § 103(a) as unpatentable over Tipper
and McConnell cannot be sustained. See In re Fine, 837 F.2d 1071, 1076
(Fed. Cir. 1988) (If an independent claim is nonobvious under 35 U.S.C. §
103, then any claim dependent therefrom is nonobvious).
With respect to the rejection of claims 10-12 and 24, the addition of
Benedict does not remedy the deficiencies of Tipper and McConnell as
described above. Therefore, the rejection of claims 10-12 and 24 under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of Tipper,
McConnell, and Benedict likewise cannot be sustained.

SUMMARY
The decision of the Examiner to reject claims 1-19 and 21-27 is
reversed.

REVERSED

Appeal 2009-009844
Application 09/905,274

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mls

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