Appeal No. 2005-0659
Application 09/799,134
acknowledge that certain paper machines are known which provide cross direction shrinkage
curve profiles (page 8, ll. 13-18), and that it is a practice of “[p]aper factories [to] establish a data
record for every produced roll” of the characteristics of that roll, which “data records serve as a
basis for further converting and also as investigational material in the event of customer
complaints,” and the characteristics can be determined to the extent of “each produced ‘square
meter’” (page 8, l.
Appellants further acknowledge in the specification German patent document
DE 199 18 399 A1 (page 4, ll. 3-10). Appellants state that in the process disclosed in this
document, characteristics of a paper web are determined from a roll thereof, and the so measured
characteristics are utilized in compensating the printing process by setting the drive control to
achieve uniform paper web profiles during printing (id.). Appellants made this document of
record in the information disclosure statement filed March 5, 2001 (Paper No. 2). We find no
translation of this document in the record.
It seems reasonable to us that if one of ordinary skill in the art would have known that a
manufacture data record of paper web characteristics, including cross direction shrinkage curve
profiles, which are obtained during manufacture is available for a roll of paper web and
apparently used “for further converting” of the paper web on the roll, and that paper web profiles
are useful information for controlling at least a part of a printing operation, it would have been
prima facie obvious for this person to have used the manufacturer’s data records for that
purpose. See, e.g., Dow Chem., supra; In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference
may be bodily
incorporated into the structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill in the art.”).
Accordingly, the examiner is required to take appropriate action consistent with current
examining practice and procedure to consider at least the disclosure in appellants’ specification
noted above as well as a translation of DE 199 18 399 A1, along with any other applicable prior
art the examiner deems appropriate, and determine whether a new ground or grounds of rejection
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