Ex Parte Giacometti

Patent Trial and Appeal BoardDec 27, 2012

10552360 (P.T.A.B. Dec. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/552,360 06/16/2006 Claudio Giacometti 71975RCE 7251 23872 7590 12/27/2012 MCGLEW & TUTTLE, PC P.O. BOX 9227 SCARBOROUGH STATION SCARBOROUGH, NY 10510-9227 EXAMINER TOLIN, MICHAEL A ART UNIT PAPER NUMBER 1745 MAIL DATE DELIVERY MODE 12/27/2012 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 CLAUDIO GIACOMETTI ____________ Appeal 2011-010186 Application 10/552,360 Technology Center 1700 ____________ Before CHUNG K. PAK, JEFFREY T. SMITH, and GEORGE C. BEST, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010186 Application 10/552,360 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1, 2, 4 through 14, 19 through 24, and 35 through 38. We have jurisdiction under 35 U.S.C. § 6. Appellant’s claimed invention relates to a method of producing a perforated web. App. Br. 3. Claim 1 is illustrative: 1. A method to produce a perforated web material, the method comprising the steps of: providing a first roller and a second roller, said first roller and said second roller defining a nip; preheating a web material to form a preheated web material, said web material being preheated prior to contacting said first roller and said second roller, said preheated web material having a preheated temperature, said preheated temperature being greater than an ambient temperature; feeding said preheated web material to an entrance of said nip without contacting said second roller; feeding said preheated web material through said nip; rotating said first roller and said second roller in opposite directions and pressing said first roller against said second roller during said feeding of said preheated web material, said first roller being provided with protuberances for perforation, said protuberances contacting a surface of said second roller without penetrating said surface of said second roller, wherein said first roller and said second roller rotate with a different peripheral speed to each other. Appeal 2011-010186 Application 10/552,360 3 The Examiner relied on the following references in rejecting the appealed subject matter: Pike US 5,382,400 Jan. 17, 1995 Majors US 5,704,101 Jan. 6, 1998 Giacometti US 5,709,829 Jan. 20, 1998 Cruise US 5,874,159 Feb. 23, 1999 Schulz US 5,913,997 June 22, 1999 Dettmer WO 99/25911 A1 May 27, 1999 Appellant requests review of the following rejections (App. Br. 14-15) from the Examiner’s final office action: 1. Claims 1, 5, 19, 23 and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Giacometti and either Schulz or Cruise. 2. Claims 2, 4 and 38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Giacometti, Schulz or Cruise, and Majors. 3. Claims 6 and 10-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Giacometti, Schulz or Cruise, and Dettmer. 4. Claims 7-9, 20-22, 35 and 36 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Giacometti, Schulz or Cruise, Dettmer, and Pike. 5. Claim 37 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Giacometti, Schulz or Cruise, Dettmer, Pike, and Majors. OPINION The prior art rejections The dispositive issue for all the rejections on appeal is: Did the Examiner err in determining that the combination of Giacometti and either Schulz or Cruise would have led one skilled in the art to a method of producing a perforated web material comprising the step of preheating the Appeal 2011-010186 Application 10/552,360 4 web material prior to contacting a first roller and a second roller as required by the subject matter of independent claims 1, 35, 36, and 38? 1 After thorough review of the respective positions provided by Appellant and the Examiner, we answer this question in the negative and AFFIRM for the reasons presented by the Examiner. We add the following. The Examiner found that Giacometti discloses a method of perforating a web by feeding a web material into a nip between a patterned roller and a smooth roller and perforating the web material by rotating the rollers at different speeds in opposite directions. App. Br. 4. The Examiner also found that Giacometti does not disclose preheating web material prior to contacting the rollers. Id. The Examiner found that Schulz and Cruise teach that it was generally known to preheat a web prior to undergoing thermomechanical treatments. Ans. 4-5. The Examiner found that it would have been obvious to one of ordinary skill in the art to modify the method of Giacometti to incorporate a preheating step to optimize the thermo- mechanical process and increase the manufacturing speed. Id. Appellant argues that Giacometti does not provide any teaching or suggestion that would direct a person of ordinary skill in the art toward the advantages of preheating a web material in a perforating process. App. Br. 17. Appellant further argues that both Schulz and Cruise are only concerned with heating a web material in bonding operations and do not recognize the advantages associated with preheating a web prior to perforation. Id. at 18. We are unpersuaded by Appellant’s arguments. We agree with the Examiner that it would have been obvious to one of ordinary skill in the art 1 We will limit our discussion to independent claim 1. Claims argued separately will be addressed separately. Appeal 2011-010186 Application 10/552,360 5 to modify Giacometti’s method of perforating web material by incorporating the preheating step prior to contact with the first and second rollers. Ans. 14-15. As pointed out by the Examiner, one skilled in the art would have recognized that preheating the web material before performing a thermo- mechanical treatment would lead to increased manufacturing speeds (Cruise) and improved uniformity of the thermomechanical treatment (Schulz). Id. A person of ordinary skill in the art would have reasonably expected that performing Giacometti’s method of perforating web material including preheating the web material prior to feeding the web material into the nip of a first and second roller would also provide the above-mentioned benefits. In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.”). Appellant additionally argues that Schulz and Cruise disclose processes wherein it is essential that the rollers rotate at the same rotational speed while the present invention and the teachings of Giacometti require that the rollers rotate at different speeds. App. Br. 17. However, Appellant has not directed us to any portion of Schulz and Cruise that support this contention. Ans. 16. We note Appellant’s arguments with respect to claims 5, 19. 23, and 24 are substantially the same as the arguments addressed above. We direct Appellant’s attention to our prior discussion as well as the discussion provided by the Examiner. Accordingly, we sustain the Examiner’s rejection of claims 1, 5, 19, 23, and 24 under 35 U.S.C. § 103(a) as obvious over Giacometti, Schulz and Cruise for the reasons given above. Appeal 2011-010186 Application 10/552,360 6 In addressing the separate rejections of claims 2, 4, 6-14, 20-22, and 35-38, Appellant again relies principally on the arguments presented when discussing Giacometti, Schulz, and Cruise. See App. Br. generally. These arguments have been addressed above. Accordingly, we limit our discussion of these rejections to arguments not previously addressed. With respect to claims 2, 4 and 38, The Examiner relied on the reference to Majors to teach a patterned roller with protuberances having dimensions similar to the patterned roller claimed by Appellant. Ans. at 6. Appellant argues that one skilled in the art would not be directed to the teaching of Majors in modifying Giacometti because Majors, unlike Giacometti, Majors teaches the smooth roller rotating faster than the patterned roller. App. Br. 25. We are unpersuaded by this argument and agree with the Examiner that Majors describes a typical patterned roller. Ans. 6, 19. A person of ordinary skill in the art would have been capable of adapting Majors’ patterned roller for use in the perforation process of Giacometti given that Majors is also directed to a method of perforating web material. Majors col. 1, ll. 5-7. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Appellant has not adequately explained why one skilled in the art could not use the patterned roller of Majors in the process of Giacometti. Appellant argues that Giacometti does not teach the speed relationships required by the subject matter of claims 12-14. App. Br. 32- 34. We are unpersuaded and agree with the Examiner that Giacometti provides sufficient guidance to one skilled in the art to vary the various Appeal 2011-010186 Application 10/552,360 7 speed relationships to suit a particular base material. Ans. 8. Appellant has not directed us to any evidence that the claimed speed relationships result in any unexpected results over the method of Giacometti. Id. at 21. Appellant has not adequately distinguished the claimed method from the method of Giacometti. With respect to claims 7-9, 20-22, 35, and 36, the Examiner further relied on the reference to Pike to teach in-line production of web materials. Ans. 9. Appellant argues that Pike does not provide any teaching that or suggestion that the fabric is subjected to further processing. We have considered Appellant’s arguments (App. Br. 35-46). These arguments are not persuasive because they do not address the reasons for which the Examiner relied on Pike. Accordingly, we affirm the separate rejections of claims 2, 4, 6-14, 20-22, and 35-38 under 35 U.S.C. § 103(a) for the reasons given above and by the Examiner. ORDER The rejection of claims 1, 5, 19, 23, and 24 under 35 U.S.C. § 103(a) as unpatentable over Giacometti and either Schulz or Cruise is affirmed. The rejection of claims 2, 4 and 38 under 35 U.S.C. § 103(a) as unpatentable over Giacometti, Schulz or Cruise, and Majors is affirmed. The rejection of claims 6 and 10-14 under 35 U.S.C. § 103(a) as unpatentable over Giacometti, Schulz or Cruise, and Dettmer is affirmed. The rejection of claims 7-9, 20-22, 35 and 36 under 35 U.S.C. § 103(a) as unpatentable over Giacometti, Schulz or Cruise, Dettmer, and Pike is affirmed. Appeal 2011-010186 Application 10/552,360 8 The rejection of claim 37 under 35 U.S.C. § 103(a) as unpatentable over Giacometti, Schulz or Cruise, Dettmer, Pike, and Majors is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED bar