Ex Parte Baker et al

Patent Trial and Appeal BoardJun 30, 2016

12873359 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/873,359 09/01/2010 3624 7590 07/05/2016 VOLPE AND KOENIG, P.C. UNITED PLAZA 30 SOUTH 17TH STREET, 18th Floor PHILADELPHIA, PA 19103 FIRST NAMED INVENTOR Samuel M. Baker 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 ATTORNEY DOCKET NO. CONFIRMATION NO. AJF-2.206.2US 5168 EXAMINER HUANG, CHENG YUAN ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 07/05/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): eoffice@volpe-koenig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAMUEL M. BAKER, REX BARRETT, BUD J. CHASE, BRUCE W. JANDA, IAN GERALD LANG, DIETMAR WIRTZ, and LARRY ANDERSON 1 Appeal2015-001658 Application 12/873,359 Technology Center 1700 Before CHUNG K. PAK, JEFFREY W. ABRAHAM, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. Â§ 134 from the Examiner's final rejection of claims 15-18, 20, and 22. We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b). We reverse. 1 According to the Appeal Brief, the Real Party in Interest is AstenJ ohnson, Inc. App. Br. 3. Appeal2015-001658 Application 12/873,359 BACKGROUND Appellants' claimed invention relates to the "in situ application of contaminant resistant coatings to papermaking fabrics, and papermaking fabrics so coated." Spec. i-f 5. Independent claim 15 is the only independent claim on appeal, and is reproduced below: 15. A papermaking fabric comprising a paper side surface and a machine side surface, and at least one of a hydrophobic or oleophobic nanoparticle containing contaminant resistant coating bonded to at least the paper side surface of the fabric, the nanoparticle containing contaminant resistant coating consists essentially of: water as a base and (a) an adhesion promoter, (b) a nanoparticulate material comprised of organic nanoparticles, and ( c) a fluorocarbon polymer; and the paper side surface of the papermaking fabric exhibits a Relative Contamination Resistance ratio which is determined by measuring a peel force required to remove a tape from a sample and an uncoated fabric control and then forming a ratio of those values, in a range from 3 to 14. App. Br. 17 (Claims Appendix) (paragraphing added). REJECTIONS The Examiner maintains, and Appellants appeal, the following rejections: 2 Appeal2015-001658 Application 12/873,359 1. Claim 15 under 35 U.S.C. Â§ 102(b) as anticipated by, or in the alternative, under 35 U.S.C. Â§ 103(a) as unpatentable over Biichsel.2 2. Claims 16 and 22 as unpatentable under 35 U.S.C. Â§ 103(a) over Biichsel in view of Kasemann; 3 3. Claim 17 as unpatentable under 35 U.S.C. Â§ 103(a) over Biichsel in view of Brown;4 4. Claims 18 and 20 as unpatentable under 35 U.S.C. Â§ 103(a) over Biichsel in view of Hagi;5 and 5. Claims 15-18, 20, and 22 as unpatentable under 35 U.S.C. Â§ 103(a) over Biichsel in view of Kasemann, Brown, and Hagi. OPINION Claim 15 recites, inter alia, a "papermaking fabric comprising a paper side surface and a machine side surface," wherein "the paper side surface of the papermaking fabric exhibits a Relative Contamination Resistance Ratio ... in a range from 3 to 14." App. Br. 17 (Claims Appendix). The Examiner finds that Biichsel teaches a fabric (a paper or paper- like material) inherently comprising a paper side surface and a machine side surface. Final Act. 3. The Examiner further finds that "papermaking," "paper" side, and "machine" side in claim 15 depict the intended use of the claimed fabric, and that the intended use "does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use." Id. at 3--4. 2 Biichsel et al., US 6,712,932 B2, issued Mar. 30, 2004. 3 Kasemann, US 6,482,525 Bl, issued Nov. 19, 2002. 4 Brown, US 2005/0003203 Al, published Jan. 6, 2005. 5 Hagi et al., US 6, 132,920, issued Oct. 17, 2000. 3 Appeal2015-001658 Application 12/873,359 Appellants argue that "the term 'papermaking fabric' recites an essential structural limitation and the term is absolutely necessary to give meaning to the claims." App. Br. 12. Appellants contend that a person of ordinary skill in the art would have understood that "papermaking fabric" has a specific definition and structure, namely a fabric used to produce paper or a paper-like product, not a paper or paper-like material itself. Id. at 9. Similarly, according to Appellants, the term "paper side surface" of the papermaking fabric has a specific meaning, namely the side of the fabric that supports the paper being formed. Id. at 11. In support of its arguments, Appellants direct us to paragraph 6 of the Specification, which states: Papermaking fabrics are used in connection with papermaking machines to both form an embryonic web of paper from a pulp slurry and to carry it through various dewatering and drying processes to form various types of paper products. The papermaking fabrics are generally in the form of a fine mesh, which can be of various configurations depending on the position in the papermaking machine, and may include additional layers ofbatt, for example in certain press and dryer fabrics. Spec. i-f 6; App. Br. 9. Appellants contend that the Examiner erred in determining that Biichsel discloses a "papermaking fabric" because Biichsel discloses a paper product that is being formed on the papermaking fabric as opposed to the papermaking fabric itself. Id. at 13. We are persuaded by Appellants arguments. In the context of Appellants claims, we find that the term "papermaking fabric" refers to a particular component used in connection 4 Appeal2015-001658 Application 12/873,359 with a papermaking machine to make a paper product. Specifically, it must have a structure capable of supporting the initial pulp slurry used to form a web of paper, and carrying the web through various dewatering and drying processes of the papermaking machine. Spec. i-f 6. This is consistent with the claim's recitation of a "paper side surface," i.e., the side of the papermaking fabric that supports the pulp slurry/web of paper, and a "machine side surface," i.e., the side of the papermaking fabric exposed to the drive mechanisms of the paper making machine. E.g., id. i-fi-133, 57, Figs. 1, 3a, 3b, 4. In view of this, we find that the term "papermaking fabric" is "not merely a statement describing the invention's intended field of use. Instead, [it is] intimately meshed with the ensuing language in the claim." Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). Moreover, Appellants clearly rely on this to distinguish the claimed invention over the prior art. See Catalina Mktg. Int 'l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) ("[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention."). Additionally, the evidence of record suggests that the term "papermaking fabric" results in a structural difference between the claimed invention and the prior art. In re Otto, 312 F.2d 937, 938 (CCPA 1963). For example, as Appellants point out, Biichsel discloses a paper or paper- like product that is formed using a papermaking machine, whereas the claimed invention is directed to a component of the machine itself that is 5 Appeal2015-001658 Application 12/873,359 used to make the paper product. App. Br. 13; Biichsel, 3: 13-23. Consistent with this, the Specification refers to the papermaking fabric as a component that is "installed in place on the papermaking machine" and is in place when the machine is "in operation but not making paper." Spec. i-f 13. And Applicants' statement that they "unaware of any paper or paper-like material that is formed by a papermaking process on a papermaking fabric in a papermaking machine that itself is then capable of being used as a papermaking fabric" (Reply Br. 5) serves as a further indication of structural differences between the claimed invention and the prior art. We further agree with the Appellants that "[t]here has also been no showing by the Examiner that the paper product of Buchsel could be remotely capable of performing the 'intended use' of being a papermaking fabric." Reply Br. 4 (emphasis omitted); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In view of the foregoing, we find that "papermaking fabric" is "necessary to give life, meaning, and vitality" to the claim, and is therefore a structural limitation, not simply an intended use. Pitney Bowes, 182 F.3d at 1305. Because the Examiner fails to demonstrate adequately that Biichsel or any of the other cited prior art references disclose a "papermaking fiber" as recited in the claims, we reverse the Examiner's rejections. CONCLUSION The Examiner's rejections of claims 15-18, 20, and 22 are reversed. REVERSED 6