Ex parte LARSSON et al. - Page 7




                 Appeal No. 96-0354                                                                                       Page 7                        
                 Application No. 08/099,066                                                                                                             


                          improvement thereover.  Thus to use a thin jet of water                                                                       
                          instead of the solution taught by Peterson would have                                                                         
                          been prima facie obvious to one of ordinary skill in the                                                                      
                          art, and to use such jet cutters on the forming roll                                                                          
                          location would have been prima facie obvious, as this is                                                                      
                          where impermeable bands 30 are used, and especially since                                                                     
                          Miyamoto teaches the use of a water jet nozzle 10 on a                                                                        
                          roll to trim paper edges.  Miyamoto is seen to provide                                                                        
                          motivation to use known water trim nozzles against a                                                                          
                          roll.                                                                                                                         

                          The appellants argue (brief, pp. 6-10) that the subject                                                                       
                 matter of claims 1 and 8 would not have been suggested by the                                                                          
                 teachings of Peterson and Miyamoto.  We agree for the reasons                                                                          
                 set forth below.                                                                                                                       


                          We agree with the examiner that there is sufficient                                                                           
                 motivation in the combined teachings  of Peterson and Miyamoto   5                                                                     
                 to have suggested providing a twin wire former with a                                                                                  
                 downstream water jet cutter to trim the edges of the paper                                                                             
                 web.   However, we see no teaching or motivation in the6                                                                                                                              


                          5The test for obviousness is what the combined teachings                                                                      
                 of the references would have suggested to one of ordinary                                                                              
                 skill in the art.  See In re Young, 927 F.2d 588, 591, 18                                                                              
                 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d                                                                          
                 413, 425, 208 USPQ 871, 881 (CCPA 1981).                                                                                               
                          6This only results in a twin wire former that the                                                                             
                 appellants have admitted (specification, pp. 1-2) is known in                                                                          







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