Ex Parte Buschur et al

Patent Trial and Appeal Board

Jun 14, 2017

12185477 (P.T.A.B. Jun. 14, 2017)

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.
12/185,477 08/04/2008 Patrick J. Buschur 11121 9410
27752 7590 06/16/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
LONEY, DONALD J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/16/2017 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK J. BUSCHUR and KEVIN BENSON McNEIL
Appeal 2016-006792
Application 12/185,477
Technology Center 1700
Before TERRY J. OWENS, MARK NAGUMO, and JANE E. INGLESE,
Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4—13, and 15—21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants’ claimed invention is generally directed to a multi-ply
fibrous structure and methods of making such a structure. Br. 2. Claim 1
illustrates the subject matter on appeal and is reproduced below:
1. A multi-ply fibrous structure comprising two or more
fibrous structure plies bonded to one another at one or more
embossments such that the multi-ply fibrous structure exhibits a
1 Appellants identify the real party in interest as The Procter & Gamble
Company. Appeal Brief filed March 16, 2015 (“Br.”), 1.
Appeal 2016-006792
Application 12/185,477
ratio of plybond strength to plybond area of the multi-ply
fibrous structure of greater than 100 g/inJ% plybond area.
Br. 11 (Claims Appendix).
The Examiner maintains the following rejections, set forth in the Final
Office Action entered October 16, 2014 (“Final Act.”), in the Answer
entered August 13, 2015 (“Ans.”):
I. Claims 1, 2, 9-13, 20, and 21 under 35 U.S.C. § 102(b) as
anticipated by, or alternatively, under 35 U.S.C. § 103(a) as unpatentable
over, Zoeller et al. (US 2003/0116291 Al, published June 26, 2003)
(“Zoeller”);
II. Claims 1, 2, 4—13, and 15—21 under 35 U.S.C. § 102(b) as
anticipated by Andersson et al. (WO 03/072344 Al, published September 4,
2003) (“Andersson”);
III. Claims 1, 2, 4—13, and 15—21 under 35 U.S.C. § 102(b) as
anticipated by Stelljes, JR. et al. (US 2006/0013998 Al, published January
19, 2006) (“Stelljes”);
IV. Claims 1, 2, 4—13, and 15—21 under 35 U.S.C. § 103(a) as
unpatentable over Houk et al. (US 5,158,523, issued October 27, 1992)
(“Houk”) in view of Pigneul et al. (US 4,978,565, issued December 18,
1990) (“Pigneul”); and
V. Claims 1,2, 4—13, and 15—21 provisionally rejected for
nonstatutory double patenting over claims 1, 11—13, and 22 of copending
patent application 12/468,394.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejection of
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claims 1, 9-12, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Zoeller, and rejection of claims 1, 2, 4—13, and 15—21 under 35 U.S.C.
§ 103(a) as unpatentable over Houk and Pigneul, for the reasons set forth in
the Final Action and the Answer. However, we reverse the Examiner’s
rejection of claims 1, 2, 9-13, 20, and 21 under 35 U.S.C. § 102(b) as
anticipated by Zoeller, the Examiner’s rejection of claims 2 and 13 under
35 U.S.C. § 103(a) as unpatentable over Zoeller, the Examiner’s rejection of
claims 1, 2, 4—13, and 15—21 under 35 U.S.C. § 102(b) as anticipated by
Andersson, and the Examiner’s rejection of claims 1, 2, 4—13, and 15—21
under 35 U.S.C. § 102(b) as anticipated by Stelljes. We summarily affirm
the Examiner’s provisional rejection of claims 1,2, 4—13, and 15—21 for
nonstatutory double patenting because Appellants do not contest this
rejection.
We add the following.
Rejection I
Claims 1, 9—12, 20, and 21
Appellants argue claims 1, 9—12, 20, and 21 as a group. Br. 2—5.
Therefore, for the purposes of this appeal, we select claim 1 as
representative, and decide the propriety of Rejection I based on claim 1
alone. 37 C.F.R. § 41.37(c)(l)(iv) (2014).
Zoeller discloses a method of autogenously plybonding at least two
plies 5', 5"2 of tissue paper that involves feeding the plies through a gap 2
between an ultrasonic horn 1 and an anvil roll 3 having protrusions 4 on its
surface, such as an embossing roll. Zoeller || 9, 30, 33, 40, Figs. 2, 3.
Zoeller discloses that the ultrasonic horn 1 covers the width of the anvil and
2 Reference numerals refer to Figures 2 and 3 of Zoeller.
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oscillates perpendicularly to the surface of the anvil 3 at gap 2. Zoeller
1130, 34. Zoeller further discloses use of a pressure force between the
ultrasonic horn and the tissue paper plies of from 50 to 700N. Zoeller 114.
Zoeller discloses distributing plybonds over the entire surface of tissue plies,
resulting in a plybonding zone covering the whole tissue paper. Zoeller
119. Zoeller also discloses plybonding tissue plies in narrow strips along
the plies’ outer sides, resulting in a plybonding zone consisting of only the
narrow strips. Id. Zoeller further discloses bonding tissue plies in thin strips
“by edge embossing.” Zoeller 170, Fig. 6.
The Examiner finds that the protrusions 4 in Zoeller’s roller 3 form
embossments in the bonded tissue plies. Final Act. 5. The Examiner finds
that bonds would inherently occur at some of the embossments when the
plybonding zone covers the entire surface of the tissue plies because
Zoeller’s Figure 2 illustrates that some of the protrusions 4 in the anvil 3
overlap with the horn 1. Final Act. 5—6. The Examiner further finds that
Zoeller’s Figure 6 illustrates bonded regions 14 comprising thin embossed
strips that at least partially overlap bond sites 11. Final Act. 5. The
Examiner concludes that in the absence of inherency, it would have been
obvious to one of ordinary skill in the art to bond Zoeller’s tissue plies along
at least some of the embossments formed by the protrusions 4 in Zoeller’s
anvil 3. Final Act. 6.
Zoeller discloses that a suitable bonding area is from 0.5 to 50%, most
preferably from 5% to 20%. Zoeller 112. Zoeller exemplifies ultrasonically
bonding two tissue plies utilizing a pressure force of 400 N, and discloses
that the resulting product exhibited a plybonding strength of 0.645 N/50 mm.
Zoeller 175. The Examiner finds that according to the computational
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method set forth in Appellants’ Specification, the ratio of plybond strength
to plybond area of the bonded tissue plies disclosed in Zoeller would be
0.645 g/in/0.005, or 129 g/in/% plybond area. Final Act. 5.
We first address the Examiner’s anticipation rejection, which we do
not sustain for at least the following reasons. To arrive at a ratio of plybond
strength to plybond area, the Examiner impermissibly selects plybond area
and plybond strength values from disclosures in Zoeller that are not directly
related to each other. In re Arkley, 455 F.2d 586, 587—88 (CCPA 1972)
(quoted with approval in Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075,
1083 (Fed. Cir. 2008)) (“[T]he [prior art] reference must clearly and
unequivocally disclose the claimed [invention] or direct those skilled in the
art to the [invention] without any need for picking, choosing, and combining
various disclosures not directly related to each other by the teachings of the
cited reference.”). We accordingly do not sustain the Examiner’s rejection
of claims 1, 2, 9-13, 20, and 21 under 35 U.S.C. § 102(b) as anticipated by
Zoeller.
However, we note that for the purposes of addressing the obviousness
rejection over Zoeller, “picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the cited
reference” is “entirely proper in the making of a [section] 103 [] obviousness
rejection.” Arkley, 455 F.2d at 587-88; In re Boe, 355 F.2d 961, 965 (CCPA
1966) (All of the disclosures in a prior art reference “must be evaluated for
what they fairly teach one of ordinary skill in the art.”).
Turning to the Examiner’s obviousness rejection over Zoeller,
Appellants argue that the plybond area values disclosed in paragraph 12 of
Zoeller have no correlation to the plybond strength value set forth in
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Zoeller’s Example 1. Appellants contend that the only area provided in
Example 1 of Zoeller is pressure area, which is 8.3%. Appellants assert that
the ratio of this pressure area to the plybond strength value given in
Example 1 is 77 g/in/%, which is outside the range recited in claim 1.
Appellants further argue that if pressure area of 8.3% is not synonymous
with plybond area, then Zoeller does not disclose any link between plybond
strength and plybond area, and it was therefore improper for the Examiner
“to tie the two values together in any way.” Br. 3.
We note initially that because Appellants do not dispute the
Examiner’s finding that Zoeller’s Example 1 discloses a plybond strength of
0.645 g/in, we accept this finding as fact. Br. 2—9.
One of ordinary skill in the art reasonably would have understood that
only a suitable plybonding area was utilized in the experiments of Zoeller’s
Example 1, and thus would have understood that a plybonding area of 0.5 to
50% was used in the ultrasonic plybonding process described in the
example. Accordingly, contrary to Appellants’ arguments, through nothing
more than ordinary skill and creativity, Zoeller’s disclosures reasonably
would have indicated to one of ordinary skill in the art that a relationship
exists between the suitable plybonding areas disclosed in paragraph 12 and
the plybonding strength disclosed in Example 1, because the skilled artisan
reasonably would have inferred that only a suitable plybonding area as
disclosed in Example 12 was utilized in the plybonding experiments of
Example 1. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for [an examiner] can take
account of the inferences and creative steps that a person of ordinary skill in
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the art would employ.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t
is proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”)
In addition, with respect to Appellants’ arguments regarding the
pressure area of 8.3% disclosed in Example 1 of Zoeller, as Appellants point
out, Zoeller does not indicate that the pressure area set forth in Example 1 is
synonymous with plybond area. However, assuming that this is the case,
and assuming that the ratio of plybond strength to plybond area for the tissue
sample of trial 2 of Example 1 is therefore 77 g/in/% (0.645 g/in/0.0083) as
Appellants assert, Zoeller’s broader disclosures reasonably would have
suggested tissue products having a plybond strength significantly greater
than that of the sample of trial 2 in Example 1, and thus would have
suggested tissue products having a significantly larger ratio of plybond
strength to plybond area than that calculated by Appellants. For example, as
seen from comparison of the plybond strength of the samples of trials 1 and
2 in Example 1 and trials 1—4 in Example 2, the faster the line or machine
speed, the greater the plybond strength. Zoeller H 75, 79. Zoeller broadly
discloses that suitable speeds can vary from 50 to 1800 m/s, while the line
speed utilized in trial 2 of Example 1 was only 300. Zoeller H 15, 75. In
addition, the ultrasonic frequency utilized in trial 2 of Example 1 was 35
kHz, but Zoeller broadly discloses suitable ultrasonic frequencies of 15 to 50
kHz. Zoeller H 11, 75. Furthermore, the pressure force utilized in trial 2 of
Example 1 was 400 N, but Zoeller broadly discloses that a pressure force of
50 to 700 N is suitable for Zoeller’s ultrasonic bonding method. Zoeller
14, 75. Accordingly, Zoeller’s disclosures as a whole reasonably would
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have suggested that a plybond strength significantly greater than 0.645 g/in
would be obtained by utilizing suitable line or machine speeds, ultrasonic
frequencies, and pressure forces within the broadly disclosed ranges, which
are greater than those used in trial 2 of Example 1. Accordingly, even if a
plybond area of 8.3% were utilized, Zoeller would have suggested achieving
a ratio of plybond strength to plybond area greater than 77 g/in/%, such as
greater than 100 g/in/% as recited in claim 1.
Accordingly, Appellants’ arguments are unpersuasive of reversible
error in the Examiner’s finding that Zoeller’s disclosures reasonably would
have suggested a ratio of plybond strength to plybond area as recited in
claim 1 to one of ordinary skill in the art at the time of Appellants’ invention
Appellants further argue that the Examiner errs in finding that Zoeller
inherently discloses, or would have suggested, bonds occurring at
embossments, which are tied to plybond strength and area values. Br. 3^4.
Appellants assert that Zoeller’s Example 1 “does not specify the existence of
a bond at an embossment, or an embossment at all.” Br. 3. Appellants
further contend that Zoeller teaches that embossments are optional and
Zoeller’s embossing roll “will not result in an embossment” because Zoeller
does not disclose using the embossing roll with a counter embossing roll.
Br. 4.
However, with respect to Example 1, Zoeller discloses that the tissue
plies were plybonded according to the pattern depicted in Figure 8, which
shows full surface bonding. Zoeller 175. As discussed above, Zoeller
discloses plybonding using an ultrasonic horn 1 that extends along the width
of an anvil 3 and oscillates perpendicularly to the surface of the anvil 3 at
gap 2. Figures 1 and 2 of Zoeller show that the ultrasonic horn is positioned
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directly above numerous protrusions 4 in the surface of the anvil 3 along its
width. As also discussed above, Zoeller discloses use of a pressure force
between the ultrasonic horn and the tissue paper plies of from 50 to 700N.
Based on these disclosures, one of ordinary skill in the art reasonably would
have understood that use of a counter embossing roll in Zoeller’s process to
emboss the tissue plies is unnecessary because Zoeller’s disclosures would
have suggested that the pressure force exerted by the ultrasonic horn on
tissue paper plies in areas where the plies rest against the protrusions 4 in the
anvil 3 would form embossments in these areas of the plies as they are
ultrasonically bonded by the horn. Accordingly, Zoeller’s disclosures
reasonably would have suggested that using a plybonding area of 0.5 to 50%
to ultrasonically bonding the full surface of tissue paper plies as described in
Example 1 would result in plybonding at one or more embossments, and
would impart a plybonding strength of 0.645 g/in, resulting in a ratio of
plybond strength to plybond area as recited in claim 1.
Therefore, on this record, the preponderance of the evidence supports
the Examiner’s conclusion of obviousness, and we accordingly sustain the
Examiner’s rejection of claims 1, 9-12, 20, and 21 under 35 U.S.C. § 103(a)
as unpatentable over Zoeller.
Claims 2 and 13
Claims 2 and 13 recite that two or more fibrous structure plies are
bonded to one another by an adhesive that bonds the two or more fibrous
structure plies together to form the multi-ply fibrous structure.
We reverse the Examiner’s rejection of claims 2 and 13 over Zoeller
because Zoeller discloses autogenously bonding tissue paper plies, and
explicitly defines “autogenously bonding” as “a bonding of surfaces without
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the use of adhesive or thermoplastic material.” Zoeller ]f]f 9, 40. The
Examiner does not provide any evidence or reasoning establishing that one
of ordinary skill would have modified Zoeller’s autogenous bonding method
to incorporate the use of an adhesive to bond the tissue plies.
Rejection II
Andersson discloses a method for producing a multi-ply web of
flexible material such as paper. Andersson 2,1. 30—3,1. 1. Andersson
discloses embossing the plies and introducing glue sites at the embossments
to laminate the plies together. Andersson 3,11. 6—13; 8,11. 16—23; 9,11. 4—
16; Figs. 2, 4. Andersson discloses that the glue sites cover 0.03—9% of the
total area of the flexible material (3,11. 6—13) and provide strong plybonding.
Andersson 9,11. 30-31.
Because Andersson and Appellants’ Specification both describe
strong plybonding (Spec. 9-10), the Examiner uses the plybond strength of
0.5 g/in recited in Appellants’ claim 9 to calculate that a plybonding area of
0.03% as disclosed in Andersson would result in a ratio of plybond strength
to plybond area of 166 g/in/% plybond area. Final Act. 6. However, the
Examiner does not identify any disclosure in Andersson of the plybond
strength of Andersson’s multi-ply web of flexible material. Accordingly, the
Examiner does not provide a sufficient factual basis to establish that strong
plybonding as disclosed in Andersson would result in a plybond strength as
recited in Appellants’ claim 9, yielding a ratio of plybond strength to
plybond area as recited in independent claims 1 and 12. We accordingly do
not sustain the Examiner’s rejection of claims 1, 2, 4—13, and 15—21 under
35 U.S.C. § 102(b) as anticipated by Andersson.
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Rejection III
Stelljes discloses an embossed multi-ply fibrous structure that exhibits
a plybond strength of at least about 4 g/in. Stelljes 7, 40. Stelljes
discloses that the “embossment sites are not adhesively bonded together.”
Stelljes 11 52, 54, 56; Figs. 1A, IB, 1C, 3.
The Examiner finds that Stelljes’ Figure 3 shows bonding at
embossments. Final Act. 6. However, the bonded, embossed structure
depicted in Stelljes’ Figure 3 is the same as the bonded, embossed structure
depicted in Stelljes’ Figure 1A, which Stelljes explicitly describes as
including embossments sites that are not adhesively bonded together.
Stelljes 1 52. Accordingly, the Examiner does not identify any disclosure in
Stelljes of bonding a multi-ply fibrous structure at one or more embossments
as required by independent claims 1 and 12. Therefore, we do not sustain
the Examiner’s rejection of claims 1,2, 4—13, and 15—21 under 35 U.S.C.
§ 102(b) as anticipated by Stelljes.
Rejection IV
Appellants argue claims 1, 2, 4—13, and 15—21 as a group. Br. 7—9.
Therefore, for the purposes of this appeal, we select claim 1 as
representative, and decide the propriety of Rejection IV based on claim 1
alone. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Houk discloses a method of emboss bonding multi-ply tissue products
that involves placing two or more cellulosic webs 64 of an article 50 in a nip
62 between first 20 and second 60 rolls. Houk col. 1,11. 7—8; col. 4,11. 41—
51. Houk discloses that the surface 22 of first roll 20 contains cavities 28,
and further discloses that the surface 66 of second roll 60 is impressionable.
Houk col. 4,11. 45 49. Houk discloses that pressure generated between the
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rolls 20, 60 causes the impressionable surface 66 of role 60 to deform and
fill the cavities 28 in the surface 22 of roll 20, which presses the webs 64
into the cavities 28 to create impressions 70 in the article 50, which define
the emboss area of the article 50. Houk col. 4,11. 45—54. Houk discloses
that the total area of the emboss bonds in a given article (bonding area)
determines the plybonding strength of the particular article. Houk col. 4,11.
8—18. Houk discloses the results of tests used to determine the plybond
strength of two-ply tissue samples having different emboss bonding patterns,
and Houk discloses that plybond strengths in excess of 10 g/in were
achieved using Houk’s inventive pattern. Houk col. 5,11. 3—68; Figs. 13, 14.
The Examiner finds that Houk does not disclose a plybond area of less
than 10%, and the Examiner relies on Pigneul for suggesting this feature.
Final Act. 7—8. Pigneul discloses a method for producing a laminated sheet
composed of at least two embossed plies bonded together at embossments in
the plies that point inward to the sheet. Pigneul Fig. 3; col. 2,11. 28—35;
claims 1 and 5. Pigneul discloses producing the laminated sheet by
embossing a first cellulosic sheet, depositing adhesive on the embossed
sections of the first sheet, embossing a second cellulosic sheet, and pressing
the embossments of both sheets together so that the sheets adhere at their
embossments via the adhesive on the first sheet. Pigneul col. 3,11. 31—68;
Fig. 1. Pigneul discloses that the total embossed surface covers from 5% to
20% of the laminated sheet. Pigneul col. 5,11. 18—20; claim 2. Pigneul
discloses that embossments covering less than 5% of a laminated sheet cause
the sheet to have insufficient thickness, while embossments covering more
than 20% of the sheet cause excessive rigidity, affecting the sheet’s softness.
Pigneul col. 5,11. 21—24.
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The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellants’ invention to emboss bond
5% to 20% of Houk’s multi-ply tissue in view of PigneuTs disclosure that
emboss bonding such an area of a multi-ply sheet was conventional in the art
at the time of Appellants’ invention. Final Act. 8; Ans. 10.
Appellants argue that one of ordinary skill in the art would not have
been motivated to combine the disclosures of Houk and Pigneul and would
not have had a reasonable expectation of success for the combination
because the references “teach two different ways of bonding.” Br. 7—9.
Appellants argue that Pigneul discloses bonding after embossing by joining
together opposing protrusions (embossments) that are not nested, while
Houk discloses bonding while embossing to produce nested embossments.
Br. 9. Appellants argue that the methods of Pigneul and Houk are mutually
exclusive, and one of ordinary skill in the art therefore would not have
combined teachings from the references. Appellants further argue that it is
unclear “what impact PigneuTs alleged plybond area disclosure would have
on Houk’s strength values, as the references’ processes are different.” Br. 9.
However, like Houk, Zoeller discloses a tissue product formed with
nested embossments, and Zoeller discloses that utilizing a bonding area of
5% to 20% increases the softness of the tissue product. Zoeller || 12, 30—
33, 38. Accordingly, Zoeller and Pigneul both indicate that utilizing a
bonding area of 5% to 20% advantageously provides a tissue product having
a soft feel, and, therefore, evidence that such a bonding area provides this
advantage in not only a non-nested tissue product as disclosed in Pigneul,
but also in a nested tissue product. Therefore, Appellants’ arguments that
one of ordinary skill in the art would not have combined the disclosures of
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Houk and Pigneul due to the different types of embossments disclosed in the
references (nested and non-nested) resulting from the different processes
used to prepare the tissue products is unpersuasive of reversible error in
view of the state of the art at the time of Appellants’ invention in which it
was known that the same bonding area would be advantageous for the tissue
products disclosed in both references.
Accordingly, the weight of the evidence on this record supports the
Examiner’s finding that Pigneul’s disclosure that covering less than 5% of a
multi-ply sheet with embossment bonds causes the sheet to have insufficient
thickness, while covering more than 20% of the sheet with embossment
bonds cause excessive rigidity and affects the sheet’s softness, reasonably
would have led one of ordinary skill in the art to emboss bond 5% to 20% of
Houk’s multi-ply tissue to avoid insufficient thickness and excessive
rigidity. One of ordinary skill in the art reasonably would have expected
that emboss bonding 5% to 20% of Houk’s multi-ply tissue as suggested by
Pigneul using Houk’s inventive embossing pattern would have successfully
imparted a plybond strength of greater than 10 g/in as disclosed in Houk,
resulting in a ratio of plybond strength to plybond area as recited in claim 1.
Moreover, further supporting the Examiner’s conclusion of
obviousness, Houk’s disclosure that the total area of the emboss bonds in a
given article (bonding area) determines the plybonding strength of the article
indicates that the plybonding area of an article is a result-effective variable.
In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A
recognition in the prior art that a property [or a result] is affected by the
variable is sufficient to find the variable result-effective.”). Therefore, one
of ordinary skill in the art would have been led to determine a suitable
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plybonding area to utilize in Houk’s emboss bonding process to achieve a
desired plybonding strength, and would have arrived at a suitable
plybonding area—such as an area that would result in a ratio of plybond
strength to plybond area as recited in claim 1—through nothing more than
routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(“[Djiscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.”).
Therefore, on this record, the preponderance of the evidence supports
the Examiner’s conclusion of obviousness, and we accordingly sustain the
Examiner’s rejection of 1, 2, 4—13, and 15—21 under 35 U.S.C. § 103(a) as
unpatentable over Houk in view of Pigneul.
Rejection V
Appellants do not contest the Examiner’s provisional rejection of
claims 1, 2, 4—13, and 15—21 for non-statutory double patenting over claims
1, 11—13, and 22 of copending patent application 12/468,394. Br. 9. We
accordingly summarily sustain this rejection. 37 C.F.R. § 41.37(c)(l)(iv);
see also Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed.
Nov. 2014) (“If a ground of rejection stated by the examiner is not addressed
in the appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.”).
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the Examiner’s rejection of claims 1, 9—12, 20, and 21
under 35 U.S.C. § 103(a) as unpatentable over Zoeller, rejection of claims 1,
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2, 4—13, and 15—21 under 35 U.S.C. § 103(a) as unpatentable over Houk and
Pigneul, and provisional rejection of claims 1, 2, 4—13, and 15—21 for
nonstatutory double patenting. We reverse the Examiner’s rejection of
claims 1, 2, 9—13, 20, and 21 under 35 U.S.C. § 102(b) as anticipated by
Zoeller, the Examiner’s rejection of claims 2 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Zoeller, the Examiner’s rejection of claims 1,
2, 4—13, and 15—21 under 35 U.S.C. § 102(b) as anticipated by Andersson,
and the Examiner’s rejection of claims 1, 2, 4—13, and 15—21 under
35 U.S.C. § 102(b) as anticipated by Stelljes.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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