Ex Parte Maddaleni et al

Patent Trial and Appeal Board

Nov 21, 2012

10589007 (P.T.A.B. Nov. 21, 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

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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
461610/589,007 08/10/2006 Romano Maddaleni 6760IPCT
6858 7590 1112112012 EXAMINER
BREINER & BREINER, L.L.C.

115 NORTH HENRY STREET
BELL, WILLIAM P
ALEXANDRIA, VA 22314
ART UNIT
1745
MAIL DATE DELIVERY MODE
1lI2112012 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 Fabio Perini S.p.A.
(Inventors: Romano Maddaleni and Mauro Gelli)
____________________

Appeal 2011-010170
Application 10/589,007
Technology Center 1700
____________________

Before RICHARD E. SCHAFER, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010170
Application 10/589,007

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Fabio Perini S.p.A. (Applicant) appeals an Examiner’s decisions rejecting
Claims 41-54 and 83-85. 35 U.S.C. §§ 6(b) and 134(a). An oral hearing was held
on November 8, 2012. We affirm.
The Claimed Subject Matter
Applicant’s invention relates to an apparatus for producing a multi-ply
embossed sheet material such as paper towels. The apparatus has a central
impression cylinder in contact with three or more pressure rollers. The central
cylinder separately provides embossed areas on each ply when the ply moves
between the nip of the impression cylinder and a pressure roller. The three
pressure rollers are arranged around the circumference of the impression cylinder.
The apparatus includes at least three paths which feed the three plies to the three
nips between each pressure roller and the central embossing roller. The apparatus
also includes at least one glue unit located between two adjacent pressure rollers to
apply adhesive to one of the plies. In one variation of the invention, two glue units
are located between adjacent pressure rollers with both gluing units applying the
adhesive to the same ply.
Claims 41 and 83 exemplify the invention:
41. An embossing and laminating device for producing an
embossed web material with a plurality of plies glued to one
another comprising:
- a central embossing cylinder having a plurality of
protuberances;
- at least three pressure rollers disposed along a periphery
of said central embossing cylinder, said at least three pressure
rollers each having a yielding surface, and cooperate with said
central embossing cylinder;
- at least three paths to feed one or more plies between
the central embossing cylinder and each of said at least three
pressure rollers;
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- at least a first gluing unit disposed between two
consecutive pressure rollers of said at least three pressure
rollers and cooperating with said central embossing cylinder;
wherein said at least three paths include at least a first
path for feeding at least a first ply into a first embossing nip
between the central embossing cylinder and a first one of said at
least three pressure rollers, a second path for feeding at least a
second ply into a second embossing nip between the central
embossing cylinder and a second one of said at least three
pressure rollers, and a third path for feeding at, least a third ply
into a third embossing nip between the central embossing
cylinder and a third one of said at least three pressure rollers.

83. An embossing and laminating device for producing an
embossed web material with a plurality of plies glued to one
another, including:
- a central embossing cylinder having a plurality of
protuberances; at least a first pressure roller, a second pressure
roller and a third pressure roller disposed in sequence along a
periphery of said central embossing cylinder, said first pressure
roller, said second pressure roller and said third pressure roller
each having a yielding surface and cooperating with said central
embossing cylinder,
- at least a first path for feeding at least a first ply into a
first embossing nip between the central embossing cylinder and
said first pressure roller, a second path for feeding at least a
second ply into a second embossing nip between the central
embossing cylinder and said second pressure roller, a third path
for feeding at least a third ply into a third embossing nip
between the central embossing cylinder and said third pressure
roller;
- at least a first gluing unit and a second gluing unit
disposed between the first pressure roller and the second
pressure roller, to apply glue on embossing protrusions formed
on said first ply by the first pressure roller and the central
embossing roller.
Claims Appendix, 1-2 and 4-5.
Appeal 2011-010170
Application 10/589,007

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Rejections
In the Answer, the Examiner maintained two grounds of rejection:
1. Claims 41-54, 84, and 85 under 35 U.S.C. § 103(a) over the combined
teachings of Biagiotti1 and Saarvali2 (Answer, 4-11) and
2. Claim 83 under 35 U.S.C. § 103(a) over the combined teachings of
Biagiotti, Saarvali, and Chen3 (Answer, 11-14).
Analysis
Claims 41-54, 84, and 85
Biagiotti discloses an apparatus for making embossed multi-ply web
material. Biagiotti teaches a number of different embodiments. Some of the
embodiments include feeding two plies in two paths (e.g., Fig.5, paths V1 and V2)
with each ply fed into the nip of a pressure roller arranged on the periphery of
central impression cylinder 3 (e.g., Fig. 5, pressure rollers 5 and 7). Biagiotti also
teaches adding a third ply using an arrangement having two impression cylinders
and two pressure rollers. Biagiotti, Figure 3, paths V1, V2, and V3, impression
cylinders 101 and 103 and pressure rollers 105 and 107. Biagiotti’s apparatus also
includes a gluing unit 9 located between the pressure rollers. Biagiotti, Fig. 5.
Applicant’s Claim 41 requires at least three paths, each feeding a ply to the
nip of one of three pressure rollers arranged around the periphery of a central
impression cylinder. The Examiner found that the difference between Biagiotti’s
described apparatus and the subject matter of Claim 41 resided in the inclusion of a
third ply and path fed into the nip between the central embossing cylinder and a

1 International Patent Application Publication WO 99/44814.
2 International Patent Application Publication WO 03/086744.
3 U.S. Patent 5,990,377.
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Application 10/589,007

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third pressure roller. Answer, 5. Applicant has not contested the Examiner’s
finding.
Saarvali teaches producing multi-ply web material having at least three plies.
Saarvali, 2:37 – 3:1. The reference teaches feeding three separate plies by three
separate paths (Fig. 1, items 1, 7, and 16) to the nips between central impression
cylinder 11 and pattern and gluing/lamination rollers 9, 18, 5 and 14 arranged
around the periphery of a central impression cylinder, 11. Saarvali, Fig. 1.
One having ordinary skill in the art would have recognized that using an
additional path to feed a third ply to central impression cylinder would have been
an alternative way to add a third ply to Biagiotti’s web material. It would,
therefore, have been obvious to add a third path feeding a third ply directly to
Biagiotti’s central impression cylinder. Since it is desirable to separately emboss
the plies to provide a final product having increased softness and thickness
(Biagiotti, 1:15-20), it would have been obvious to add an additional pressure
roller to the periphery of the central impression cylinder to separately emboss the
third ply.
Applicant argues that the gluing device described by Saarvali “is not taught
or suggested as being suitable for use for embossing, and in fact, teaches just the
opposite.” Brief, 15-17.
We do not find this argument persuasive. The Examiner did not rely on
Saarvali to teach the addition of Saarvali’s specific type of rollers or glue stations
to Biagiotti’s device. Rather, the Examiner relied upon Saarvali for teaching the
more general concept that an additional ply may be added by using a third path and
corresponding additional pressure roller around the periphery of a single central
impression cylinder. Answer, 6, 16.
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We affirm Examiner’s decision rejection Claim 41. Since Applicant has not
separately argued that the subject matter of Claims 42-54, 84, and 85, the decision
rejection those claims is also affirmed.
Claim 83
Claim 83 requires that first and second gluing units be disposed between the
a first pressure roller and the second pressure roller. In rejecting Claim 83, the
Examiner added the Chen reference to the combination of Biagiotti and Saarvali.
Chen describes making multi-ply web materials. The plies may be bonded with an
adhesive. Chen, 37:6-11. Chen also teaches that multiple applications of materials,
including colored adhesives, may be made to a single ply surface to achieve
desired properties and visual appearance. Chen, 36: 59-63. The Examiner
concluded that it would have been obvious to include a second gluing unit to
provide for multiple applications of colored adhesives. Answer, 16.
Applicant argues that Chen does not cure the purported deficiencies of the
combined teachings of Biagiotti and Saarvali. Brief, 19. Applicant also argues
that, even if it is conceded that Chen suggests multiple gluing units, Chen does not
suggest providing multiple glue units onto one central embossing roller. Reply
Brief, 5. Lastly, Applicant notes (Brief 19) that Claim 83 does not require the
inclusion of a colored adhesive and Chen, therefore apparently adds nothing
relevant to the claimed subject matter. Brief, 19.
As to Applicant’s first contention, we explained above why the inclusion of
an additional ply, path and pressure roller would have been obvious from the
combined teachings of Biagiotti and Saarvali.
With respect to the second, the reason for modifying Biagiotti’s device and
using multiple gluing units flows directly from Chen’s teaching that multiple
applications of colored adhesive may be applied to a single surface to obtain the
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desired properties and appearance. In order to apply multiple adhesives to the
same ply, it would have been obvious to include a second gluing unit adjacent
Biagiotti’s gluing unit.
Lastly, we disagree that Chen is irrelevant to the Examiner’s rejection of
Claim 83 because that claim does not require the application of a colored adhesive.
What is most relevant to the rejection is that Claim 83 does not exclude the use of
multiple colored adhesives. A claim is unpatentable if it encompasses an
unpatentable embodiment. See In re Landgraf, 436 F.2d 1046, 1050 (CCPA1971);
In re Muchmore, 433 F.2d 824, 826 (CCPA 1970) (Claims that read on patentable
as well as unpatentable subject matter are unpatentable.) Thus, the Chen reference
is relevant to the patentability of Claim 83 notwithstanding its silence on the use of
colored adhesives.
We affirm the rejection of Claim 83.
DECISION
The Examiner’s decisions rejecting Claims 41-54 and 83 -85 are affirmed.
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)(iv).

AFFIRMED

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