Ex Parte Carla et al

Patent Trial and Appeal Board

Jun 12, 2017

12877530 (P.T.A.B. Jun. 12, 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.
12/877,530 09/08/2010 Vito Carla CM3427MQ 3334
27752 7590 06/14/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
RIVERA, WILLIAM ARAUZ
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
06/14/2017 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 VITO CARLA and HAUKE WIECHMANN
Appeal 2016-001195
Application 12/877,530
Technology Center 3600
Before HUNG H. BUI, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—6, 8—10, and 12—23. Claims 7 and 11 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as The Procter & Gamble
Company. App. Br. 1.
Appeal 2016-001195
Application 12/877,530
Introduction
Appellants state “[t]he invention refers to a peel off device for
unwinding a web of material from a stock or forming roll, especially for
high speed unwinding a web of a thin polymer film or the like.” Spec. 1:3—
4.
Claim 1 is representative:
1. A peel off device for unwinding a web of material
from a stock roll, said device comprising:
(a) a base associated to the roll,
(b) a linear guiding device mounted on the base,
(c) an idler support linearly guided on the base in a
direction towards the roll, and
(d) a first idler and a second idler for the web to be
unwound,
(e) a position tracking system for the position of the idler
support, wherein
the first and second idlers are mounted offset with respect
to each other on the idler support to provide for a meandering
path of the web between the first and second idlers,
the axes of rotation of the first and second idlers are
parallel to the bearing axis of the roll, and
the first idler is pushed towards the roll so that a contact
force is maintained between the first idler and a surface of the
roll while the web is peeled off the roll;
wherein the angle between the tangent of the surface of
the roll at the point of contact with the first idler and the line
passing through the centers of the first and second idlers is from
about 330° to about 350°.
App. Br. 9 (Claims App’x).
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Appeal 2016-001195
Application 12/877,530
Examiner’s Rejections & References
(1) Claims 1—5, 9—10, 12—17, 19, 20, and 23 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Moller et al. (US 5,988,557; Nov.
23, 1999; “Moller”). Final Act. 2-5.
(2) Claims 8, 18, and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Moller and Lindsey (US 7,344,105 B2; Mar. 18, 2008).
Final Act. 5.
ANALYSIS
Appellants argue claims 1—5, 8—10, 12—18, 19, and 20 together as a
group (App. Br. 3—6), from which we select claim 1 as representative (see 37
C.F.R. § 41.37(c)(l)(iv)). Appellants also collectively argue claims 19, 20,
22, and 23, from which we select claim 19 as representative. App. Br. 6.
Appellants also separately argue claim 6 and provide no separate substantive
arguments for claim 21. Id. at 7.
Claim 1
In rejecting claim 1, the Examiner finds Moller’s “Method and
Apparatus for the Winding up of a Paper Web to Form a Roll” (title) teaches
or suggests all recited limitations “except for the unwinding. However, it
would have been obvious to one of ordinary skill in the art that if the
material can be wound, then it can also be unwound.” Final Act. 2—3 (citing
Moller Figs. 1—9). Regarding the angular limitation, the Examiner finds:
Moller teaches the angle being about 310 degrees and not
from about 330 to 350 degrees. However, it would have been
an obvious matter of design choice, as determined through
routine experimentation and optimization, to dimension the
angle between the tangent of the surface of the roll at the point
of contact with the first and second idlers of Moller as specified
. . . because one of ordinary skill would have been expected to
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Appeal 2016-001195
Application 12/877,530
have routinely experimented to determine the optimum
dimensions for a particular use.
Final Act. 4.
Appellants argue the Examiner errs because the rejection “is simply a
combination of assumptions / conclusory statements” and “has failed to
provide evidence which as a whole establishes a prima facie case of
obviousness.” App. Br. 5, 6. These arguments do not persuade us. As the
Federal Circuit has clarified,
“the prima facie case is merely a procedural device that enables
an appropriate shift of the burden of production.” Hyatt v.
Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). See also In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Patent and
Trademark Office (“PTO”) satisfies its initial burden of
production by “adequately explaining] the shortcomings it
perceives so that the applicant is properly notified and able to
respond.” Hyatt, 492 F.3d at 1370. In other words, the PTO
carries its procedural burden of establishing a prima facie case
when its rejection satisfies 35 U.S.C. § 132, in “notifying] the
applicant . . . [by] stating the reasons for [its] rejection, or
objection or requirement, together with such information and
references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” 35 U.S.C.
§ 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original).
We find the Examiner’s rejection fairly identifies how Moller teaches
or suggests all limitations of the claimed “peel off device” and explains the
rejection in sufficient detail so Appellants may assess the propriety and
respond. Final Act. 2-4; Ans. 2-4. We also agree with the Examiner there
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Application 12/877,530
is no unobvious distinction between claim 1 and the prior art structure
illustrated in Moller’s Figure 1. See id.
To the extent the Examiner’s finding that use of Moller’s structure for
peeling off rather than winding up was conclusory, the Examiner rectifies
this by further finding that Hendrix, U.S. Patent No. 6,216,976 Bl, teaches
it was known to use the same structure for both winding or unwinding a web
of material from a roll. See Ans. 3 (citing Hendrix Abstract, 1:11—20, 3:33—
35). Appellants do not rebut this finding. Accordingly, we find, by a
preponderance of the evidence, the Examiner articulates reasoning with a
rational underpinning sufficient to support the conclusion of obviousness. In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR Inti Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (quoting Kahn).
Appellants also argue the Examiner errs because using Moller’s
apparatus for peeling off would “modify the principle operation of Moller”
and “render it unsatisfactory for its intended purpose.” App. Br. 5. These
arguments are conclusory and do not persuade us. Appellants provide no
persuasive explanation as to what principle of operation changes when using
the same structure for winding a web onto a roll rather than unwinding it.
As discussed above, Hendrix teaches it was a known principle of operation
to provide a single structure that may perform both. Appellants in essence
make a “teaching away” argument, see, e.g., Tec Air, Inc. v. Denso Mfg.
Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999) (if a combination of
“references ‘would produce a seemingly inoperative device,’ then they teach
away”) and In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) (finding a use of a
device that would render it inoperable effectively teaches away from that
use).
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Application 12/877,530
A teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Silence by itself is not a teaching away. Appellants
provide no persuasive evidence or argument that Moller’s silence regarding
possible use of its structure for unwinding rather than winding implies it
would be inoperable or unsatisfactory for such a use.
Accordingly, we sustain the Examiner’s rejection of claims 1—5, 8—10,
12-18, 19, and 20.
Claim 19
Claim 19 is a “method for unwinding a web of material from a stock
roll” that corresponds to the device of claim 1. See App. Br. 11 (Claims
App ’x). The Examiner finds the claimed method would have been obvious
because it inherently results from the use of device of claim 1, which itself is
obvious in view of Moller. Final Act. 4. Appellants argue the Examiner errs
because claimed method for unwinding is not inherent in Moller’s teaching
of a device and method for winding. App. Br. 6.
Appellants do not persuade us of Examiner error. The rejection does
not find Moller’s teaching of a device and method for winding inherently
teaches claim 19’s method for unwinding. Rather, it is that an obvious
variation of Moller’s teaching, i.e., claim 1, inherently teaches the method of
claim 19. Appellants’ argument does not address how or why the obvious
variation of Moller that teaches claim 1 does not also inherently teach the
method of claim 19. We agree with the Examiner that it does.2
2 We note claim 19 requires “pushing the first idler . . . while the web is
peeled off the roll” and the Examiner’s Answer states that in claim 19, “[a]t
no point in time is there a positive method step for unwinding the web of
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Application 12/877,530
Accordingly, we sustain the Examiner’s rejection of claims 19, 20, 22,
and 23.
Claim 6
Claim 6 depends from claim 1, and requires “wherein the contact
force between the first idler and the surface of the roll has a value of from
between about 2 N and about 5 N in a direction towards the roll.” App. Br.
10 (Claims App’x). The Examiner finds this contact force “would have been
an obvious matter of design choice, as determined through routine
experimentation and optimization . . . because one of ordinary skill would
have been expected to have routinely experimented to determine the
optimum dimensions for a particular use.” Final Act. 5. Appellants argue
the Examiner errs because
[t]he Office has made no finding that “the contact force
between the first idler and the surface of the roll has a value of
from between about 2 N and about 5 N in a direction towards
the roll” as recited, in part, in claim 6, is a result-effective
variable.
App. Br. 7 (citing MPEP § 2142).
This argument is unpersuasive. To the extent it is necessary to make a
finding that the recited contact force between the first idler and the surface
of the roll is a result-effective variable, the Examiner’s rejection is a prima
facie finding, for which Appellants offer no rebuttal evidence or argument.
Although the Examiner finds no specific teaching of the specific force range
of claim 6, we agree with the Examiner’s finding that Moller “teaches how
material.” Ans. 5. Appellants do not explain how or why the Examiner errs
in this statement, and this statement does not negate the rejection’s essential
finding that claim 1 inherently teaches claim 19. We do not rely on this
statement by the Examiner.
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Application 12/877,530
the tension can be regulated and how the line pressure between the press
drum and the paper roll can be set at any desired value.” Ans. 5 (citing
Moller 4:40-46).
Appellants’ conclusory challenge of the rejection of claim 6 does not
persuade us the Examiner errs in finding “it would have been obvious matter
of design choice for one of ordinary skill in the art to determine the optimum
dimensions for a particular use.” Id.', see KSR, 550 U.S. at 421 (“[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton,”
and a solution to a problem “is likely the product not of innovation but of
ordinary skill and common sense” when there is “a design need” and
“predictable solutions”).
Accordingly, we sustain the rejection of claim 6.
DECISION
For the above reasons, we AFFIRM the rejection of claims 1—6, 8—10,
and 12-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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