Ex Parte Petri

Patent Trial and Appeal BoardAug 10, 2017

13054817 (P.T.A.B. Aug. 10, 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. 13/054,817 01/19/2011 Stefano Petri 73816RCE 9970 23872 7590 08/11/2017 MCGLEW & TUTTLE, PC P.O. BOX 9227 SCARBOROUGH STATION SCARBOROUGH, NY 10510-9227 EXAMINER BLADES, JOHN A ART UNIT PAPER NUMBER 1746 MAIL DATE DELIVERY MODE 08/11/2017 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 STEFANO PETRI ____________ Appeal 2016-001212 Application 13/054,8171 Technology Center 1700 ____________ Before KAREN M. HASTINGS, JENNIFER R. GUPTA, and JANE E. INGLESE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1–20 under 35 U.S.C. § 103(a) as unpatentable over either one of Saarvali et al., (US 2007/0003736 A1, published Jan. 4, 2007), or Andersson et al., (US 2003/0198788 A1, published Oct. 23, 2003). An oral hearing was held on August 3, 2017. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 FUTURA S.P.A is stated to be the real party in interest (App. Br. 1). Appeal 2016-001212 Application 13/054,817 2 Appellant’s invention is illustrated by independent claim 1, reproduced below (emphasis added to highlight key disputed limitations): 1. A device for coupling two or more paper webs or plies by gluing, the device comprising: a gluing means for applying glue to a paper ply; and a pressure means located downstream of said gluing means for pressing more paper plies onto each other to form a coupling of said paper plies, wherein said gluing means comprises at least one body provided with corresponding body reliefs which apply the glue on predetermined gluing zones or areas of at least one of said paper plies advancing along a predetermined direction and said pressure means comprises a presser located downstream of said gluing means with respect to said predetermined direction and said presser is provided with corresponding presser reliefs which exert, on said paper plies, a localized pressure on pressure zones or areas only partially interfering with said gluing zones or areas, so that the glue passes through the glued ply only in correspondence of said pressure areas or zones, wherein a shape and disposition of said body reliefs of the gluing means are different from one or more of a shape and disposition of said presser reliefs of the presser such that said pressure areas interfere only partially with said gluing areas, wherein said pressure areas are partially external to said gluing areas and said pressure areas are partially internal to said gluing areas, each of said gluing areas having a gluing area shape, each of said pressure areas having a pressure area shape, said pressure area shape being different from said gluing area shape. Appellant presents substantially the same arguments for independent claims 1, 7, and 18. See App. Br., Reply Br., generally. Furthermore, while Appellant separately addresses many of the claims, these arguments are Appeal 2016-001212 Application 13/054,817 3 redundant (see e.g., Ans. 9 (the Examiner points out that the arguments for each claim are essentially the same)). Accordingly, we select independent claim 1 as representative of the claimed subject matter before us on appeal. OPINION We have reviewed each of Appellant’s arguments for patentability. However, Appellant has not shown error in the Examiner’s determination that the claimed subject matter is unpatentable. Accordingly, we sustain the Examiner’s prior art rejections for the reasons explained in the Answer, and we add the following primarily for emphasis. Appellant principally argues that neither one of Saarvali or Andersson explicitly teaches or suggests the partial interference of the gluing areas with the pressure areas as claimed, and that the Examiner has misconstrued paragraph 59 of Saarvali as well as paragraph 39 of Andersson (e.g., App. Br. 12, 13, 30–31)2. Appellant further contends that the claimed “partial overlap . . . provides a completely different ornamental effect when compared with the completely overlapping pressure areas and gluing areas of Saarvali” (Reply Br. 3) or Andersson (App. Br. 32). These arguments are not persuasive of error in the Examiner’s rejection. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged 2 As the Examiner correctly points out, Andersson “contains much of the same teachings as Saarvali does (these references have common inventorship & subject matter).” (Ans. 9, 10). Appeal 2016-001212 Application 13/054,817 4 claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992). As the Examiner aptly points out, both references teach various options for the glue shapes/areas and the possible overlap with the pressing area (e.g., Ans. 8, 9). Indeed, the Examiner points out that Andersson explicitly teaches an option wherein only some glue is pressed to achieve an aesthetic effect (Andersson ¶ 55), and also explains how Fig. 5 of Andersson further implies an arrangement wherein only a portion of the glue is overlapped (Ans. 10)3. The Examiner’s de facto position that it would have been within the ordinary creativity of one of ordinary skill in the art to use any combination of overlap of glue area and pressing areas via a difference in the shapes and disposition of the glue body reliefs from the presser reliefs is reasonable. Further, Appellant has not asserted that the proposed modification of either reference would have been beyond the capabilities of a person of ordinary skill in the art. Absent such an assertion, we “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” and find a person of ordinary skill in the art would have overcome any difficulties within their level of skill. KSR, 550 U.S. at 3 The mislabeling of the glue areas 17 on Fig. 5 is considered harmless error, as Andersson explicitly states that Fig. 5 shows “glue sites 27” (Andersson ¶ 61). Appeal 2016-001212 Application 13/054,817 5 418; see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” as well as routine steps, that an ordinary artisan would employ)). Appellant’s argument that the claimed arrangement provides for a different ornamental effect than either of Saarvali or Andersson is unpersuasive, since Appellants have not shown that the recited partial overlap patentably distinguishes the claimed tissue product from the product suggested by either of the applied references. Any arrangement that overlaps to any extent still functions to provide tissue ply bonding. Ornamental effects cannot be relied upon as a patentable difference. See In re Seid, 161 F.2d 229, 231 (CCPA 1947) (matters relating to ornamentation only, which have no mechanical function, cannot be relied upon to patentably distinguish the claimed invention from the prior art); see also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding that a claimed feature “would be an obvious matter of design choice within the skill of the art” when it solves no stated problem and presents no unexpected result over the disclosed alternatives). Accordingly, we affirm the Examiner’s prior art rejections of claims 1–20 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and given above. Appeal 2016-001212 Application 13/054,817 6 ORDER The Examiner’s decision 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