Ex Parte Scherb et al

Patent Trial and Appeal Board

Oct 31, 2012

11491740 (P.T.A.B. Oct. 31, 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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/491,740 07/24/2006 Thomas Thoroe Scherb VOI0284.CON 6438
41863 7590 11/01/2012
TAYLOR IP, P.C.
P.O. Box 560
142. S Main Street
Avilla, IN 46710
EXAMINER
LU, JIPING
ART UNIT PAPER NUMBER
3743
MAIL DATE DELIVERY MODE
11/01/2012 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 THOMAS THOROE SCHERB
and HARALD SCHMIDT-HEBBEL
____________

Appeal 2010-002738
Application 11/491,740
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-5, 7-10, 12-18, 35-46, 51, and 52. Claims
6, 11, 19-34, and 47-50 have been cancelled. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2010-002738
Application 11/491,740

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REJECTIONS
The following Examiner’s rejections are before us for review.
Claims 1-5, 7-10, 12-18, 35-46, 51, and 52 are rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
Claims 1-5, 7-10, 12-18, 35-46, 51, and 52 are rejected under 35
U.S.C. § 112, second paragraph, as indefinite for failing to particularly point
out and distinctly claim the subject matter which Appellants regard as the
invention.1
Claims 1-5, 7-10, 12-16, and 41-46 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kimura (US 5,985,073, iss. Nov. 16, 1999).
Claims 17, 18, 35-40, 51, and 52 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kimura in view of Bryand (US 3,139,375, iss.
June 30, 1964).
Claims 1-5, 7-10, 12-18, 35-46, 51, and 52 are rejected under 35
U.S.C. § 103(a) as unpatentable over Bryand in view of Rulon-Miller (US
3,122,505, iss. Feb. 25, 1964).

CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal. Claim 1, reproduced
below, is representative of the subject matter on appeal.

1 The Examiner’s rejection of claims 4 and 36 under 35 U.S.C. § 112,
second paragraph, regarding the lack of a lower limit in the claims is
withdrawn. Ans. 2, 11. See also Final Rej. 3.
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1. A throughflow cylinder for drying a fiber
web in a throughflow drying unit, said throughflow
cylinder being comprised of fiber-reinforced
plastic, wherein said fiber-reinforced plastic
includes at least one fiber layer selected to provide
a coefficient of thermal expansion for said fiber-
reinforced plastic smaller than a coefficient of
thermal expansion for steel at approximately
300o C, said fiber-reinforced plastic includes a
plurality of fibers, greater than approximately 30%
of said plurality of fibers are substantially oriented
in a peripheral direction.

OPINION
Enablement
The Examiner determines that:
In the original [S]pecification, nowhere does the
applicant mention or disclose the exact material
composition of the “fiber-reinforced plastic
includes at least one fiber layer selected to provide
a coefficient of thermal expansion smaller than a
thermal expansion for steel at about 300°C”. The
applicant failed to disclose sufficient information
regarding the material composition which provides
a coefficient of thermal expansion smaller than a
thermal expansion for steel at about 300°C to
permit the person skilled in the art to make and use
the claimed composition without undue
experimentation.
Ans. 3 (emphasis added). More specifically, the Examiner determines that
the original Specification fails to explain variables such that a person skilled
in the art could make and use the claimed material without undue
experimentation; the first variable being the composition of the material, and
the second variable being the orientation of the fibers in the material. See
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Ans. 7-9. Concerning the first variable, the Examiner reasons that “‘steel’ is
a commonly known iron alloy with carbon contents (usually between 0.2%
and 2.1 % by weight) depending on the grade.” Ans. 8. The Examiner also
determines that the Appellant “did not provide any examples, guidance,
suggestion or explanation in the original specification to make the claimed
‘fiber-reinforced plastic . . . .’” Id.
When rejecting a claim for lack of enablement, the USPTO bears an
initial burden of setting forth a reasonable explanation as to why the
Examiner believes that the scope of protection provided by the claim is not
adequately enabled. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993).
To evaluate whether a disclosure would require undue experimentation, the
Federal Circuit has adopted the following factors to be considered:
(1) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence of working examples;
(4) The nature of the invention;
(5) The state of the prior art;
(6) The relative skill of those in the art;
(7) The level of predictability in the art; and
(8) The breadth of the claims.
In re Wands, 858 F.2d at 737.
The Appellants correctly contend that “providing of an upper limit for
the coefficient of thermal expansion for the fiber/plastic layer and providing
an example of the fiber type to be included in the layer precludes the need
for undue experimentation.” Reply Br. 3. The Appellants assert, and the
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Examiner does not appear to disagree, that “the coefficient of thermal
expansion of steel is known and is easily obtainable.” Reply Br. 2; see also
Ans. 7-10. Additionally, the Appellants correctly point out that the
Specification at page 2 offers the example of a carbon fiber-reinforced
plastic. App. Br. 9, Reply Br. 2-3. Furthermore, the Specification also
states at page 2, “[t]he material of the fiber-reinforced plastic can in
particular contain glass fibers, aramide fibers and/or preferably carbon
fibers.” See also Spec. 2, ll. 11-20 (discussing the coefficient of thermal
expansion of the fiber-reinforced plastic is lower than that of steel at
approximately 300°C and the orientation of the carbon fiber-reinforced
plastic fibers being in the peripheral direction). As such, the Appellants’
disclosure, considering the level of ordinary skill in the art as of the date of
the Appellant’s application, would have enabled a person of such skill to
make and use the Appellants’ invention without undue experimentation. See
In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982).
Thus, the rejection of claims 1-5, 7-10, 12-18, 35-46, 51, and 52 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement is not sustained.

Indefiniteness
The Examiner determines that “smaller than a coefficient of thermal
expansion for steel at approximately 300°C,” as recited by claim 1, is
indefinite because “every grade of steel[] will have a different coefficient of
thermal expansion depending on the different percentage of carbon
contents.” Ans. 10-11 (citing Ex parte Brummer, 12 USPQ2d 1653 (BPAI
1989) (“[a] claim is rendered indefinite by reference to an object that is
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variable.”)). However, in Brummer, the limitation “said front and rear
wheels so spaced as to give a wheelbase that is between 58 percent and 75
percent of the height of the rider that the bicycle was designed for” was
indefinite because it called for a relationship between the wheelbase of a
bicycle and something that lacked a known standard - the standard a
designer used to size a bicycle to a rider. See Brummer at 1655. The
holding in Brummer is not instructive for “smaller than a coefficient of
thermal expansion for steel at approximately 300°C” as recited in claim 1
because the coefficient of thermal expansion of steel is a known standard.
The Appellants contend that “[t]he Examiner has indicated that every
grade of steel has a different coefficient of thermal expansion, which is an
admission by the Examiner that these are known values” and the recitation
of claim 1 that “. . . smaller than a coefficient of thermal expansion for steel
at approximately 300°C” is directed to “a coefficient of thermal expansion,
which is less than known values.” Reply Br. 3. In other words, the
limitation is not indefinite merely because steel has different grades; the
limitation is just broad. See In re Johnson, 558 F.2d 1008, 1016 n.17
(CCPA 1977) (Merely that a claim is broad does not mean that it is
indefinite.) Accordingly, we agree with the Appellants that “the most
restrictive limit would be the smallest coefficient of thermal expansion of
steel.” Reply Br. 3.
Thus, the rejection of claims 1-5, 7-10, 12-18, 35-46, 51, and 52 under
35 U.S.C. § 112, second paragraph, as indefinite is not sustained.

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Obviousness over Kimura and Kimura in view of Bryand
Claim 1 recites that the claimed throughflow cylinder is “comprised of
fiber-reinforced plastic, . . . said fiber-reinforced plastic includes a plurality
of fibers, greater than approximately 30% of said plurality of fibers are
substantially oriented in a peripheral direction.” App. Br., Claims
Appendix (emphasis added). It is notable that the Specification at page 8,
line 13, states, “[i]n Fig. 3, the height of webs 38 extending in the peripheral
direction is given as hu.” In Figure 3, the peripheral direction is depicted as
perpendicular to the axial direction X. See Spec. 7, ll. 12-13, and fig. 2.
The Examiner finds that Kimura’s “fiber-reinforced plastic including
aramide fibers, carbon fiber layer and webs shown by Kimura patent is same
as the broadly claimed fibers ‘greater than approximately 30% of said
plurality of fibers is substantially in a peripheral direction.’” Ans. 12, 14;
see Ans. 4-5. This finding establishes that the Examiner understands
Kimura to disclose a fiber-reinforced plastic being oriented in a peripheral
direction.
The Appellants contend that Kimura does not “indicate that there is an
orientation of carbon fibers in a peripheral direction in the plastic material.”
App Br. 13. The Appellants assert that Kimura’s only disclosure with
respect to the orientation of fibers is directed to the laminating direction of
the plastic composite material, which the Appellants contend “is
substantially perpendicular to the peripheral direction.” Id. We agree. As
such, the Examiner’s finding that Kimura discloses fibers in a peripheral
direction is not adequately supported.
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Additionally, the Examiner determines that:
the claimed percentage of the plurality of fibers
oriented in a peripheral direction and the diameter
of the cylinder, it would have been an obvious
matter of design choice to design the cylinder with
any desired percentage of fibers oriented in a
peripheral direction and to design the cylinder with
any desired diameter in order to obtain optimum
result, since applicant has not disclosed that the
claimed percentage and diameter solve any stated
problem in a new or unexpected way or is for any
particular purpose which is unobvious to one of
ordinary skill in the art and it appears that the
claimed feature does not distinguish the invention
over similar features in the prior art since, the
cylinder of Kimura et al. will perform the
invention as claimed by the applicant with the
cylinder having any kind of the percentage of fiber
oriented in a peripheral direction and any kind of
diameter. The applicant should also note that a
change in the size of a prior art component is a
design consideration which is generally recognized
as being within the level of ordinary skill in the art.
In re Rose, 105 USPQ 237 (CCPA 1955).
Ans. 5 (emphasis added); see also Ans. 13, 14. The Examiner’s added
reasoning does not explain how the orientation of fibers is in a peripheral
direction. The Examiner would first have to explain how Kimura’s fibers
are in a peripheral direction to then modify the orientation of the fibers to be
in the claimed range, i.e., greater than the claimed percentage. As such, the
Examiner has not articulated adequate reasoning with rationale underpinning
as to why one of ordinary skill in the art would have modified Kimura’s
teachings to result in the claimed subject matter. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require]
some articulated reasoning with some rational underpinning to support the
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legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)).
For the reasons provided above the rejection of claims 1-5, 7-10, 12-
16, and 41-46 under 35 U.S.C. § 103(a) as unpatentable over Kimura is not
sustained.
The Examiner’s rejection based on Kimura in combination with
Bryand relies on the same unsubstantiated finding that Kimura discloses a
fiber-reinforced plastic being oriented in a peripheral direction. See also
Ans. 5-6. As such, we cannot sustain the rejection of claims 17, 18, 35-40,
51, and 52 under 35 U.S.C. § 103(a) as unpatentable over Kimura in view of
Bryand.

Obviousness over Bryand in view of Rulon-Miller
Claim 1 recites that the claimed throughflow cylinder is “comprised of
fiber-reinforced plastic, wherein said fiber-reinforced plastic includes at least
one fiber layer selected to provide a coefficient of thermal expansion for said
fiber-reinforced plastic smaller than a coefficient of thermal expansion for
steel at approximately 300o C.” App. Br., Claims Appendix.
The Examiner finds Bryand’s arcurate frame section 82 and
honeycomb type openwork 30 correspond to claim 1’s throughflow cylinder
and jacket. Ans. 6, Bryand, col. 1, l. 71 and col. 3, l. 30. The Examiner also
finds that Bryand’s throughflow cylinder 82 and jacket 30 “can be made of
either stainless steel or synthetic plastic, such as ‘Teflon[®] combined with
other materials,’” (Ans. 6; see Bryand, col. 3, ll. 65-72), but that “Bryand
does not define the ‘Teflon[®] combined with other materials’ to be a fiber-
reinforced plastic.” Ans. 6. However, “Rulon-Miller et al. teach[] that
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Teflon® is known to be reinforced with glass fibers, which are heat resistant
to at least 600 degrees F, to increase its wear resistance and its load bearing
abilities.” Ans. 6. Lastly, the Examiner concludes that,
[a]s Rulon-Miller et al. teach[] that Teflon[®]
reinforced with glass fibers lead to an increased
wear resistance and load bearing abilities, it would
have been obvious to one of ordinary skill in the
art to use Teflon[®] reinforced with glass fibers as
the “Teflon[®] combined with other materials”
taught by Bryant.
Ans. 6-7.
The Appellants assert that the coefficient of thermal expansion of
Teflon®, Teflon® when filled 25% with glass fibers, and Teflon® when
carbon filled at a level of 25% is “is nearly a magnitude higher than that of
steel.” App. Br. 16. The Appellants correctly contend that “[t]he Examiner
does not explain how the known characteristics of Teflon® and glass fibers
can be modified to result in Appellants invention, which claims that the
coefficient of thermal expansion is less than that of steel.” Id.
In response, the Examiner determines that:
Rulon-Miller et al. teach[] that Teflon[®] is known
to be reinforced with glass fibers with heat
resistance to at least 600 degrees F, to increase its
wear resistance and its load bearing abilities. As
Rulon-Miller et al. teach[] that Teflon[®]
reinforced with glass fibers lead to an increased
wear resistance and load bearing abilities, it is the
[E]xaminer’s position that it would have been
obvious to one skilled in the art to use Teflon[®]
reinforced with glass fibers as the “Teflon[®]
combined with other materials” taught by Bryand.
Ans. 18, see also Ans. 16-18. The Examiner’s response lacks any
explanation that reasonably articulates how the combined teachings of
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Bryand and Rulon-Miller would have resulted in a throughflow cylinder
“comprised of fiber-reinforced plastic, wherein said fiber-reinforced plastic
includes at least one fiber layer selected to provide a coefficient of thermal
expansion for said fiber-reinforced plastic smaller than a coefficient of
thermal expansion for steel at approximately 300o C.” App. Br., Claims
Appendix.
It is notable that the Examiner further modifies the combined
teachings of the Bryand and Rulon-Miller for claims 7-10, 14-16, 41, 51,
and 52. Ans. 7. The Examiner determines that “it would have been obvious
to one of ordinary skill in the art to modify the cylinder taught by Bryand, as
modified by Rulon-Miller, with the ranges presently claimed since it has
been held that where the general conditions of a claim are disclosed in the
prior art, discovering the optimum or workable ranges involves only routine
skill in the art. In re Aller, [220 F.2d 454 (CCPA 1955)].” Id. In this case,
the Examiner’s further modification does not remedy Examiner’s conclusion
of obviousness with respect to claim 1 because the additional reasoning does
not include sufficient findings concerning the general conditions of a claim
being disclosed in the prior art. More specifically, Rulon-Miller’s teaching
that “Teflon[®] is known to be reinforced with glass fibers with heat
resistance to at least 600 degrees F, to increase its wear resistance and its
load bearing abilities” does not establish the general condition of the claim,
i.e., having a throughflow cylinder comprising a fiber-reinforced plastic
“includ[ing] at least one fiber layer selected to provide a coefficient of
thermal expansion for said fiber-reinforced plastic smaller than a coefficient
of thermal expansion for steel at approximately 300o C.”
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As such, we are constrained to reverse the Examiner’s rejection of
obviousness of claim 1, and its dependent claims 2-5, 7-10, 12-18, 35-46,
51, and 52.

DECISION
We REVERSE the rejections of claims 1-5, 7-10, 12-18, 35-46, 51,
and 52.

REVERSED

mls