Ex Parte Allen et al

Patent Trial and Appeal BoardSep 17, 2012

11496131 (P.T.A.B. Sep. 17, 2012)

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. 11/496,131 07/31/2006 Kyle Solomon Allen 64049214US01 4291 23556 7590 09/17/2012 KIMBERLY-CLARK WORLDWIDE, INC. Tara Pohlkotte 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER TRUONG, THANH K ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 09/17/2012 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KYLE SOLOMON ALLEN and DAVID ARTHUR TREFETHREN ____________________ Appeal 2010-005329 Application 11/496,131 Technology Center 3700 ____________________ Before: NEAL E. ABRAMS, CHARLES N. GREENHUT, and REMY J. VANOPHEM, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005329 Application 11/496,131 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 7, 8, and 11-20. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a method and apparatus for folding a web. Claim 7, reproduced below, is illustrative of the claimed subject matter: 7. A method for folding a web, comprising: providing a web to a first conveyor wherein the web includes a series of cut outs which define a series of bridging portions located between the cut outs, passing the web about a folding wheel to define a folded edge wherein the folded edge extends through the series of cut outs in the machine direction, transferring the web to a second conveyor, folding the web about a folding bar to maintain the folded edge wherein the folding bar extends in the machine direction and spans at least one cut out and contemporaneously contacts at least two bridging portions. REJECTION Claims 7, 8, and 11-20 are rejected under 35 U.S.C. § 102(b) as being anticipated by Umebayashi (US 2002/0174930 A1, pub. Nov. 28, 2002). Ans. 3. OPINION Appellants correctly point out that the rejections should be reversed because it was unreasonable for the Examiner to interpret passing Umebayashi’s web about guide bars 51 in the twisting section 50 as the claimed step of “passing the web about a folding wheel to define a folded edge.” This step is required by each of the independent claims involved in Appeal 2010-005329 Application 11/496,131 3 this appeal, claims 7 and 16. Umebayashi’s web is already folded by the time it passes bars 51. Cf. Umebayashi Fig. 1 and App. Fig. 3. Thus, even if it were reasonable to interpret these bars as a “wheel,” passing the Umebayashi’s web about them does not “define the folded edge” since the web is already folded. The bars do not appear to have anything to do with folding. Thus, we cannot agree that one of ordinary skill in the art would understand the phrase “passing the web about a folding wheel to define a folded edge” to include passing a web about Umebayashi’s bars. App. Br. 4- 5. Appellants also correctly point out that language of claims 7 and 16 calling for the folding edge to be defined and maintained implies a specific order to the steps. App. Br. 5; see Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1370 (Fed. Cir. 2003) (Discussing Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323 (Fed. Cir. 2001) (test for determining if the steps of a method claim that do not otherwise recite an order, must nonetheless be performed in a particular sequence.)); see also In re Gleizer, 356 Fed.Appx. 415, 419 (Fed. Cir. Dec. 15, 2009) (non-precedential) (Even where claims are given their broadest reasonable interpretation before the PTO, method claims may implicitly necessitate the performance of steps in a specific order.) (Citing Interactive Gift). The edge must be defined when the web is passed about the folding wheel before it can be maintained when the web is folded about the folding bar. App. Br. 5. Thus, it was also unreasonable for the Examiner to interpret passing Umebayashi’s web about folding sail 1 as the claimed step of “passing the web about a folding bar” because in Umebayashi the web is folded about folding sail 1 before it is passed about the guide bars 51 (interpreted by the Examiner as the claimed “folding wheel”). App. Br. 5. Appeal 2010-005329 Application 11/496,131 4 Accordingly, the Examiner’s rejection cannot be sustained. DECISION The Examiner’s rejection of claims 7, 8, and 11-20 is reversed. REVERSED hh