Ex Parte Shimalla

Board of Patent Appeals and Interferences

Mar 19, 2003

09442442 (B.P.A.I. Mar. 19, 2003)

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for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHARLES JAMES SHIMALLA
____________
Appeal No. 2002-2298
Application No. 09/442,442
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 44 to
47, which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2002-2298
Application No. 09/442,442
Page 2
BACKGROUND
The appellant's invention relates to an apertured web of material having
improved aperture formation (specification, p. 1). A copy of the independent claims
under appeal is set forth in the opinion section below.
Claims 44 to 47 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
or, in the alternative, under 35 U.S.C. § 103 as obvious over U.S. Patent No. 5,567,376
to Turi et al. (Turi).
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the answer
(Paper No. 11, mailed April 8, 2002) for the examiner's complete reasoning in support
of the rejection, and to the brief (Paper No. 10, filed January 14, 2002) and reply brief
(Paper No. 12, filed June 17, 2002) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the Turi patent, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations which follow.
Appeal No. 2002-2298
Application No. 09/442,442
Page 3
The claimed subject matter
Claims 44 and 46, the independent claims on appeal, read as follows:
44. An apertured web made by the process comprising the steps of
providing an apparatus comprising:
(1) a support structure having at least one outwardly facing support
surface;
(2) a forming member mounted on said support structure and
having a mounting surface on one side facing toward said one support
surface of said support structure and having a web-engaging forming
surface on the other side, said web-engaging forming surface including
recesses, said forming member defining drain holes extending from said
recesses through said forming member to said mounting surface, at least
one of said drain holes extending at least partly over said one support
surface of said support structure; and
(3) a porous structure that is disposed between said support
structure and said forming member mounting surface and that defines at
least one open area which is located at least partly between said one
support surface and said one drain hole and which extends laterally
beyond said one support surface to accommodate fluid flow from said one
drain hole past said one support surface;
supporting a starting web of material on said web-engaging forming
surface;
directing fluid against said starting web to cause portions of said starting
web to be deformed into said recesses and to cause the formation of apertures
through said starting web to define said apertured web as said fluid flows through
said apertures;
draining at least some of said fluid at least (a) through said one drain hole,
(b) through said one open area, and (c) past said one support surface; and
removing said apertured web from said forming surface, wherein said apertured
web has a reduced number of incompletely formed apertures relative to an
apertured web made using a corresponding apparatus comprising said support
structure and said forming member but not said porous structure.
46. An apertured web made by the process comprising the steps of
providing an apparatus comprising:
(1) a support structure having at least one outwardly facing support
surface;
Appeal No. 2002-2298
Application No. 09/442,442
Page 4
(2) a forming member mounted on said support structure and
having a mounting surface on one side facing toward said one support
surface of said support structure and having a web-engaging forming
surface on the other side, said web-engaging forming surface including
recesses, said forming member defining drain holes extending from said
recesses through said forming member to said mounting surface, so that
at least one of said drain holes faces said one support surface of said
support structure, at least one of said drain holes extending at least partly
over said one support surface of said support structure; and
(3) a porous structure that is disposed between said support
structure and said forming member mounting surface and that defines at
least one curved surface which faces said one drain hole and which is
located between said one drain hole and said one support surface;
supporting a starting web of material on said web-engaging forming
surface;
directing fluid against said starting web to cause portions of said starting
web to be deformed into said recesses and to cause the formation of apertures
through said starting web to define said apertured web as said fluid flows through
said apertures;
draining at least some of said fluid at least (a) through said one drain hole,
(b) alongside said curved surface, and (c) past said one support surface; and
removing said apertured web from said forming surface, wherein said apertured
web has a reduced number of incompletely formed apertures relative to an
apertured web made using a corresponding apparatus comprising said support
structure and said forming member but not said porous structure.
The examiner's rejection
In the rejection before us in this appeal (answer, pp. 4-5), the examiner
ascertained that Turi discloses in Figure 16 a fabric that is placed on a belt, which is
passed multiple times under a manifold with water jets to perforate the film, with a
vacuum source under the belt in the area of the manifold (column 7, lines 15-20). It
was unclear to the examiner why any of the holes of the moving belt would be blocked
Appeal No. 2002-2298
Application No. 09/442,442
Page 5
to prevent fluid flow and reduce perforation over the course of multiple passes under
the water jet manifold. The examiner then concluded that the film product is taken as
having no reduction in formation of the apertures. Next, the examiner stated that if the
above disclosure is not taken as an anticipation, the examiner takes the position that "it
would have been obvious to one of ordinary skill in the art based on the above analysis
that there is no reduction in aperture formation with the process of Figure 16." Lastly,
the examiner declared that "[n]o weight is given to applicant's process limitations as
long as a similar product is taken as being produced by the process cited in [Turi]."
The appellant's argument
The appellant argues (brief, pp. 3-5; reply brief, pp. 1-2) that there is no evidence
that the apparatus shown in Figure 16 of Turi would produce an apertured web as set
forth in the claims under appeal (i.e., an apertured web having a reduced number of
incompletely formed apertures relative to an apertured web made using a
corresponding apparatus comprising a support structure and a forming member but
without a porous structure in between).
Our position
We will not sustain the rejection of claims 44 to 47 under 35 U.S.C. § 102(b) or,
in the alternative, under 35 U.S.C. § 103.
Appeal No. 2002-2298
Application No. 09/442,442
Page 6
In our view, the claims under appeal are not drawn to just any apertured web and
that the claims under appeal are not necessarily anticipated by an apertured web
having only completely formed apertures therein. In that regard, the claims under
appeal are drawn to an apertured web having a reduced number of incompletely
formed apertures relative to an apertured web made using a corresponding apparatus
comprising a support structure and a forming member but without a porous structure in
between. Thus, the claimed apertured web must have a reduced number of
incompletely formed apertures when compared to an apertured web made using a
support structure and a forming member but without a porous structure in between. To
determine if a prior art apertured web anticipates the claimed subject matter, the prior
art apertured web must be compared to see if it has a reduced number of incompletely
formed apertures when compared to an apertured web made using a support structure
and a forming member but without a porous structure in between. Thus, the product-
by-process limitation set forth in the claims does affect the product itself (i.e., the
claimed apertured web) and therefore can impart patentability to the product. See In re
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (Even though
product-by-process claims are limited by and defined by the process, determination of
patentability is based on the product itself. The patentability of a product does not
depend on its method of production. If the product in the product-by-process claim is
the same as or obvious from a product of the prior art, the claim is unpatentable even
Appeal No. 2002-2298
Application No. 09/442,442
Page 7
though the prior product was made by a different process.). See also Atlantic
Thermoplastics Co. v. Faytex Corp., 970 F.2d 834, 8443-47, 23 USPQ2d 1481, 1488-
91 (Fed. Cir. 1992).
In our view, the appellant has not been provided with a rationale supporting a
conclusion that the claimed product appears to be the same or similar to that of the
prior art, although produced by a different process. In that regard, the examiner has not
established that the apertured web produced by Turi would have a reduced number of
incompletely formed apertures when compared to an apertured web made using a
support structure and a forming member but without a porous structure in between. In
fact, since Turi does not have a porous structure in between the support structure (i.e.,
conveyor belt 62) and the forming member (i.e., backing member 64), the apertured
web produced by Turi would have the same number of incompletely formed apertures,
not a reduced number of incompletely formed apertures as set forth in the claims under
appeal.
For the reasons set forth above, the decision of the examiner to reject claims 44
to 47 under 35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103 is reversed.
Appeal No. 2002-2298
Application No. 09/442,442
Page 8
CONCLUSION
To summarize, the decision of the examiner to reject claims 44 to 47 under
35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2002-2298
Application No. 09/442,442
Page 9
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