Appeal No. 2005-1766
Application 10/050,167
to measuring the conductivity of the web into the nip as the conductivity does not change as the
web passes directly from one nip to the next” (answer, page 5; original emphasis). The examiner
further takes the position that “the use of the various calculations into and out of the nip to
determine the water balance of the press would have been routine calculations to one of ordinary
skill in the art” (id.).
We agree with appellant that “in Lilburn, because conductivity of the web is measured
from the previous nips, which are already within the wet section, the initial conductivity
measurement is not until after the first press” and is “the conductivity of the wet web in the wet
end section” (brief, page 10, original emphasis deleted; reply brief, page 2). Indeed, Lilburn
would have disclosed to one of ordinary skill in the art that the initial determination of
conductivity involves “measuring the electrical conductivity of the water entering a press section
means entrained in one or more press felts,” this step being illustrated by electrical conductivity
sensors 21,22 positioned against the respective felts in the drawing, and provides the basis for
“Wet Web conductivity measured or calculated from previous press nip” (page 4, ll. 18-19, page
5, ll. 3-5, page 6, ll. 19-21, page 7, l. 12, and abstract).
Thus, while Lilburn provides evidence in support of the examiner’s position, that position
does not apply Lilburn to each and every limitation of the invention encompassed by appealed
claim 1 as we have interpreted this claim above. See, e.g., In re Geerdes, 491 F.2d 1260,
1262-63, 180 USPQ 789, 791-92 (CCPA 1974) (In considering grounds of rejection under
35 U.S.C. §§ 103 and 112, “every limitation in the claim must be given effect rather than
considering one in isolation from the others.”). To the extent that the examiner takes the position
that it would have been obvious to determine the conductivity of the wet web as it enters the
press section, we fail to find in the answer a scientific explanation for this determination based
on the disclosure of Lilburn as well as a showing establishing the motivation leading one of
ordinary skill in the art to modify the teachings of Lilburn do so. See generally, In re Rouffet,
149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998)\ (“hindsight” is inferred when the
specific understanding or principal within the knowledge of one of ordinary skill in the art
leading to the modification of the prior art in order to arrive at appellant’s claimed invention has
not been explained); B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582,
37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When obviousness is based on a particular prior art
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