Ex Parte Scherb et al

Board of Patent Appeals and Interferences

Nov 3, 2006

10743461 (B.P.A.I. Nov. 3, 2006)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte THOMAS THOROE SCHERB and HARALD SCHMIDT-HEBBEL
___________

Appeal No. 2006-2066
Application No. 10/743,461
Technology Center 1700
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HEARD: October 17, 2006
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Before OWENS, WALTZ, and GAUDETTE, Administrative Patent Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1-33, which are
all of the pending claims.
THE INVENTION
The appellants claim a machine for manufacturing a fiber
material web, particularly tissue paper or a hygienic paper web.
Claim 1 is illustrative:
1. A machine for the manufacture of a fiber material web,
comprising:
a shoe pressing unit;
Appeal Number: 2006-2066
Application Number: 10/743,461
a cylinder comprising a Yankee drying cylinder, said shoe
pressing unit and said cylinder being arranged to form at least
one press nip;
a water absorbent carrier band;
a water-impermeable pressing band, wherein said water
absorbent carrier band and said water-impermeable pressing band
are guided through said at least one press nip, and the fiber
material web is adapted to pass through said at least one press
nip with said water absorbent carrier band and said water-
impermeable pressing band; and
said at least one press nip has a length in a web travel
direction greater than approximately 80 mm,
wherein said shoe press unit, said cylinder, said water
absorbent carrier band and said water-impermeable pressing band
are structured and arranged so that a pressure profile which
results over the press nip length has a maximum pressing
pressure which is less than or equal to approximately 2 MPa, and
wherein said shoe press unit, said cylinder, said water
absorbent carrier band and said water-impermeable pressing band
are structured and arranged for the formation of one of a tissue
paper and a hygienic paper web.

THE REFERENCES
Tapio et al. (Tapio) 4,139,410 Feb. 13, 1979
Sauer 5,019,211 May 28, 1991
Laapotti 5,043,046 Aug. 27, 1991
Bluhm et al. (Bluhm) 5,556,511 Sep. 17, 1996
Edwards et al. (Edwards) 6,248,210 Jun. 19, 2001
THE REJECTIONS
The claims stand rejected as follows: claims 1-4, 7-21
and 24-32 under 35 U.S.C. § 102(e) as anticipated by Edwards;
claims 5 and 6 under 35 U.S.C. § 103 as obvious over Edwards in
view of Laapotti; claims 22 and 23 under 35 U.S.C. § 103 as
obvious over Edwards in view of Bluhm and Tapio; and claim 33
under 35 U.S.C. § 103 as obvious over Edwards in view of Sauer.

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Appeal Number: 2006-2066
Application Number: 10/743,461
OPINION
We reverse the aforementioned rejections, enter a new
rejection of claim 1 under 37 CFR § 41.50(b), and remand the
application to the examiner to address the other claims.
We need to discuss only the examiner’s rejection of the
sole independent claim, i.e., claim 1. The examiner does not
rely upon any of the other references for a disclosure or
suggestion of subject matter in that claim. Claim 1 requires at
least one press nip between a shoe pressing unit and a Yankee
drying cylinder, wherein the at least one press nip has a length
in a web travel direction greater than approximately 80 mm
(3.15 inches) and has a pressure profile over its length having
a maximum pressing pressure less than or equal to approximately
2 MPa.
Edwards discloses a shoe pressing unit in combination with
a transfer cylinder that can be a Yankee cylinder (col. 15,
lines 59-64; col. 16, lines 26-27) having between them a press
nip wherein “[t]he shoe element length can be less than about
7 inches but is more preferably less than about 3 inches”
(col. 16, lines 43-45) and “the peak pressure in the shoe press
is preferably greater than about 2000 kN/m2 [2 MPa]” (col. 17,
lines 1-3).
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Appeal Number: 2006-2066
Application Number: 10/743,461
The examiner has the initial burden of establishing a prima
facie case of anticipation by pointing out where all of the
claim limitations appear in a single reference. See In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990);
In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir.
1986).
The examiner points out that Edwards’ figure 3 shows a nip
load of about 1.5 MPa for a 120 mm typical shoe, and figure 12
discloses cold Yankee cylinder solids for a 120 mm conventional
shoe (answer, page 5). Thus, the examiner argues, Edwards
discloses each element of the claimed invention (answer,
pages 5-6).
Edwards’ disclosure that the counter roll in a conventional
shoe press is small compared to a Yankee dryer (col. 5,
lines 58-60) indicates that the counter roll used with the
typical shoe in figure 3 is not a Yankee cylinder. The counter
roll used with the 120 mm conventional shoe in figure 12 is a
Yankee cylinder, but Edwards does not disclose the maximum
pressing pressure the combination is capable of providing.
Thus, to arrive at the claimed invention, one must pick, in
combination with the conventional 120 mm shoe, the nip load from
figure 3 and the Yankee cylinder from figure 12. For the
claimed invention to be anticipated, the reference must lead one
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Appeal Number: 2006-2066
Application Number: 10/743,461
of ordinary skill in the art to the recited combination of
elements “without any need for picking, choosing, and combining
various disclosures not directly related to each other by the
teachings of the cited reference.” In re Arkley, 455 F.2d 586,
587, 172 USPQ 524, 526 (CCPA 1972). Because the examiner’s
rationale requires such picking and choosing, the examiner has
not carried the burden of establishing a prima facie case of
anticipation of the claimed invention by Edwards.
Nor has the examiner explained why the combination of shoe
press, Yankee cylinder, press nip length and maximum pressing
pressure would have been fairly suggested to one of ordinary
skill in the art by Edwards. Thus, with respect to the
dependent claims rejected over Edwards in combination with other
references, the examiner has not established a prima facie case
of obviousness.
We therefore reverse the examiner’s rejections under
35 U.S.C. §§ 102(e) and 103.
New ground of rejection
Under the provisions of 37 CFR § 41.50(b) we enter the
following new rejection.
Claim 1 is rejected under 35 U.S.C. § 103 as being
unpatentable over Edwards.
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Appeal Number: 2006-2066
Application Number: 10/743,461
Edwards discloses a shoe pressing unit in combination with
a counter roller that can be a Yankee cylinder that form a nip
between them through which a fiber material web passes (col. 15,
lines 59-64; col. 16, lines 26-27; figure 12). The fiber
material web passed through the nip can be on a combination of a
water absorbent carrier band and water-impermeable pressing band
(col. 3, lines 57-59; col. 11, lines 40-42). The shoe element
length can be less than about 7 inches (col. 16, lines 43-45).
That range overlaps the appellants’ recited range of greater
than approximately 80 mm (3.15 inches). The peak pressure in
the shoe press preferably is greater than about 2 MPa (col. 17,
lines 1-3). Because greater than about 2 MPa is a preferred
peak pressure, the reference would have fairly suggested, to one
of ordinary skill in the art, a pressure somewhat outside the
preferred range, such as about 2 MPa, which falls within the
appellants’ recited range. Edwards would have fairly suggested,
to one of ordinary skill in the art, use of the full ranges
disclosed, including the portions which overlap those of the
appellants. See In re Malagari, 499 F.2d 1297, 1303, 182 USPQ
549, 553 (CCPA 1974).
The appellants argue that Edwards “provides no teaching or
suggestion for operation below the disclosed minimum peak
pressure of 2000 kN/m2” (reply brief, page 3). That argument is
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Appeal Number: 2006-2066
Application Number: 10/743,461
not persuasive even if it is correct, because a peak pressure of
2000 kN/m2 (2 MPa) falls within the appellants’ recited range of
less than or equal to approximately 2 MPa.
The appellants argue that Edwards would not have enabled
one of ordinary skill in the art to make the claimed machine
without undue experimentation (reply brief, pages 3-5). The
appellants provide no evidence or reasoning in support of that
argument, and there is no apparent reason why one of ordinary
skill in the art would not have been able, through no more than
routine experimentation, to use the full range of Edwards’ press
nip lengths and maximum pressing pressures.
We therefore conclude that the machine claimed in the
appellants’ claim 1 would have been obvious to one of ordinary
skill in the art over Edwards.
Remand
We remand the application to the examiner to address on the
record whether the machine claimed in the appellants’ claims 2-
33 would have been prima facie obvious to one of ordinary skill
in the art over Edwards, alone or in combination with the
additional references applied in the examiner’s rejections
and/or other prior art.

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Appeal Number: 2006-2066
Application Number: 10/743,461
DECISION
The rejections of claims 1-4, 7-21 and 24-32 under
35 U.S.C. § 102(e) over Edwards, claims 5 and 6 under
35 U.S.C. § 103 over Edwards in view of Laapotti, claims 22
and 23 under 35 U.S.C. § 103 over Edwards in view of Bluhm and
Tapio, and claim 33 under 35 U.S.C. § 103 over Edwards in view
of Sauer, are reversed. A new rejection of claim 1 has been
entered under 37 CFR § 41.50(b), and the application is remanded
to the examiner to address claims 2-33.
This decision contains a new ground of rejection pursuant
to 37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed.
Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)). 37 CFR § 41.50(b) provides "[a] new
ground of rejection pursuant to this paragraph shall not be
considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner.
. . .
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Appeal Number: 2006-2066
Application Number: 10/743,461

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record. . . .
REVERSED and REMANDED, 37 CFR § 41.50(b)

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA M. GAUDETTE )
Administrative Patent Judge )

TJO/jrg

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Appeal Number: 2006-2066
Application Number: 10/743,461
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191

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