Appeal No. 2005-0659
Application 09/799,134
claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Shakespeare and
Wood as applied to claims 1 and 18 above and further in view of Spurr et al. (Spurr) (answer,
pages 11-12). 1,2
We refer to the answer and to the brief and reply brief for a complete exposition of the
respective positions advanced by the examiner and appellants.
We agree with appellants’ positions expressed in the brief and reply brief, and add the
following for emphasis.
The dispositive issue in this appeal is whether one of ordinary skill in this art would have
found in Shakespeare the teachings and inferences establishing that the information involving
process measurements of the paper web taken by measurement devices situated after cross
machine direction (CD) moisture actuators in the paper web manufacturing process is used in
subsequent processing of the paper web such as, e.g., printing.3 Indeed, evidence of such use of
process information in Shakespeare is necessary with respect to the grounds of rejection on
appeal because when the terms of representative appealed claim 1, on which all other appealed
claims depend, are given the broadest reasonable interpretation in light of the written description
in the specification as it would be interpreted by one of ordinary skill in this art, see In re Morris,
127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), the plain language thereof comprises at least
the specified four steps, of which the steps pertinent here are (1) determining information
regarding the paper during manufacturing thereof, (2) transmitting this information for use in a
paper converting process of, among others, printing, and (3) compensating the converting
process based on this information.
We find as a matter of fact that Shakespeare would have disclosed the use of
1 Appealed claims 1 through 29 are all of the claims in the application. See the appendix to the
brief.
2 The examiner withdrew the ground of rejection under 35 U.S.C. § 103(a) over Wood (answer,
page 2).
3 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
- 2 -
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007