Ex Parte Chauvet et al

Patent Trial and Appeal Board

Nov 17, 2016

13577107 (P.T.A.B. Nov. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/577,107 09/11/2012 Boris Chauvet
22850 7590 11/21/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
402791 US99PCT 1872
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
11/21/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte BORIS CHAUVET, FREDERIC MERTZ, and
ERIC MARTIN
Appeal2015-005163
Application 13/577,107
Technology Center 1700
Before MICHAEL P. COLAIANNI, DONNA M. PRAISS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134 from a rejection of claims
1-5, 7-9, and 14--21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 In our Opinion below, we refer to the Specification filed August 3, 2012
("Spec."), the Final Action mailed August 26, 2014 ("Final Act."), the
Appeal Brief filed November 26, 2014 ("App. Br."), and the Examiner's
Answer mailed February 6, 2015 ("Ans.").
2 Appellants identify the real party in interest as Saint-Gobain Emballage.
App. Br. 2.
Appeal2015-005163
Application 13/577,107
The claims are directed to methods for applying a liquid to a rim of a
container. Claim 1, reproduced below with disputed terms emphasized, is
illustrative of the claimed subject matter:
1. A method for applying a liquid to a rim of a container,
the method comprising:
contacting a rim of a container with a roller comprising a
liquid, thereby transferring the liquid to the rim of the
container,
wherein a surf ace of the roller comprises a tubular
warp or weft knit, and the knit comprises a yarn having a
metric number of between 11002 Nm and 11080 Nm,
wherein the container is a glass jar, a glass bottle, a glass
flask, or a glass decanter, and
wherein the liquid is an adhesion promoter or a heat-
sealing primer.
App. Br. Claims App'x i.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Nauta
Deyrup
Dembicki et al.
("Dembicki")
Graham et al.
("Graham")
Rounsley
Stanhope
Dil yard et al.
("Dil yard")
us 3,539,671
us 3,787,326
us 4,389,266
us 4,396,655
Nov. 10, 1970
Jan.22, 1974
June 21, 1983
Aug. 2, 1983
US 5,237,915 Aug. 24, 1993
US 2002/0065008 Al May 30, 2002
US 2008/0242524 Al Oct. 2, 2008
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Application 13/577,107
Sarah Veblen, Know Your Knits I Samplings of Weft Knit and Warp
Knit Fabrics, 97 Threads Magazine 59---63 (2008)
REJECTIONS
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. claims 1, 2, 4, 7-9, 14, 15, 18, 19, and 21 over Graham in view of
Dilyard, and Veblen relied upon as evidence for claim 2;
2. claims 1, 2, 4, 7-9, 14, 15, and 18-20 over Dembicki in view of
Dilyard as evidenced by Veblen and Deyrup;
3. claim 3 over Graham or Dembicki in the alternative, in view of
Dilyard and further in view of Veblen;
4. claim 5 over Graham or Dembicki in the alternative, in view of
Dilyard as applied to claim 4, and further in view of Stanhope;
5. claim 16 over Graham or Dembicki in the alternative, in view of
Dilyard as applied to claims 1 or 8, and further in view of
Rounsley;
6. claim 17 over Graham or Dembicki in the alternative, in view of
Dilyard as applied to claims 1 or 8, and further in view ofNauta.
Final Act. 2, 4, 6-9.
OPINION
Graham, Dembicki, or both in the alternative, in addition to Dilyard,
are applied against each of the claims on appeal. See generally Final Act.
The Examiner finds that Graham teaches a method of applying a
liquid to a rim of a container the method comprising, contacting a rim of a
container with a roller comprising a liquid, thereby transferring the liquid to
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the rim of the container which may be a glass bottle or jar. Final Act. 2-3.
Graham further teaches the liquid is an adhesion promoter or a heat-sealing
primer (such as silane compound or bonding agent such as ethylene acrylic
acid copolymer, polyethylene or hot melt adhesives). Id. at 3. Graham does
not explicitly teach wherein the surface of the roller comprises a tubular
warp or weft knit. Id.
The Examiner finds that Dembicki teaches a method of applying a
liquid to a rim of a container, the method comprising, contacting a rim of a
container with a roller comprising a liquid, thereby transferring the liquid to
the rim of the container, wherein the container may be a glass bottle or jar.
Final Act. 4--5. Dembicki further teaches the liquid is an adhesion promoter
(such as chromium complex). Id. at 5. Dembicki does not explicitly teach
wherein the surface of the roller comprises a tubular warp or weft knit.
Appellants do not challenge the Examiner's findings with respect to
Graham or Dembicki. See generally App. Br. Appellants note that "[ o ]ther
than being more specific to an adhesion primer, Dembicki does not appear to
be materially different from Graham." Id. at 4.
Appellants' challenge focuses on whether the Examiner erred in ( 1)
combining Dilyard with Graham or Dembicki and (2) finding that Dilyard's
disclosure regarding nonwoven materials applies to woven materials and
knits. App. Br. 5-15.
The Examiner finds that "Dilyard teaches a method of forming
coating roller covers/surfaces" wherein the "rollers include a tubular warp or
weft knit and provide a benefit in the roller art in that they are inexpensive,
re-usable and shed resistant." Final Act. 3, 5. According to the Examiner, it
would have been obvious to one of ordinary skill in the art at the time of
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invention to have incorporated the roller of Dilyard into the method of
Graham (or Dembicki) as such an incorporation would predictably result in
benefits based on expense, re-usability, and shed resistance. Id.
Appellants contend that the primary goal of Graham and Dembicki is
to provide a liquid-tight seal on the mouth portion of a container. App. Br.
5. According to Appellants, Dilyard teaches that knits and wovens are prone
to shedding, thus a person of ordinary skill in the art would not modify the
rubber roller of Graham or the generic roller of Dembicki to have a surface
of a tubular warp or weft knit, since shedding of the knit would likely
preclude the formation of a liquid tight seal between the mouth of their
containers and the sealing membrane. App. Br. 5---6. Appellants suggest
that the modification of primary references Graham or Dembicki with
secondary reference Dilyard would render the inventions of the primary
references unsatisfactory for their intended purpose because shedding would
preclude formation of a liquid-tight seal. Id. Therefore, there would be no
suggestion or motivation to make the proposed modification. Id. (citing In
re Gordon, 733 F.2d 900 (Fed. Cir. 1984); In re Hedges, 783 F.2d 1038
(Fed. Cir. 1986)).
The Examiner accurately responds that Appellants' reference to
shedding of knits and wovens is based on paragraph 4 of Dilyard, which is
directed to the state of the prior art, not to Dilyard's invention. Ans. 2. The
Examiner notes that Dilyard describes five embodiments that overcome the
problems of the prior art, and four of these embodiments may comprise knit
material. Id. (citing Dilyard i-fi-15---6.). According to the Examiner,
Appellants' position that Dilyard's inventive roller comprises a knit material
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that would lead to shedding is actually in direct opposition to what Dilyard
teaches. Ans. 2.
Four of Dilyard's brief descriptions of the five general embodiments
disclose a knit material in the outer or only layer discussed (see Dilyard i-f 6),
but only three of the more detailed descriptions of the general embodiments
disclose that a knit material may be used in the outer or only layer. See
Dilyard i-f 19 ("an outer layer of sliver knit, woven, or other material"); i-f 31
("a single or multi-ply knitted, woven, or non-woven flexible (elastic) or
semi-flexible (elastic) sleeve"); and i-f 34 ("a single or multi-ply knitted,
woven, or non-woven flexible and collapsible sleeve"). Nonetheless,
Dilyard unambiguously teaches use of knitted material for the roller cover of
the invention.
In addition, Dilyard' s teachings regarding knits are not limited to
sliver knits, as Appellants suggest. See App. Br. 9. Dilyard discloses
multiple kinds of knitted fabrics, including weft knit and warp knit. Dilyard
,-r 32.
With respect to the limitation "the knit comprises a yam having a
metric number of between 1/002 Nm and 1/080 Nm," the Examiner cites
paragraph 9 of Dilyard as support for the finding that the reference discloses
that "the fibers used can possess yam of various metric number (denier)
based on the intended application." Final Act. 3. The Examiner
acknowledges that Graham (or Dembicki) in view of Dilyard does not
explicitly teach a metric number between 1/002 and 1/080 Nm, but
determines that "it would have been obvious to one of ordinary skill in the
art at the time of invention to have incorporated a size within the claimed
range since '[W]here the general conditions of a claim are disclosed in the
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prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation."' Id. at 3--4, 5---6 (quoting In re Aller, 220 F .2d
454, 456 (CCPA 1955)). The Examiner finds that Dilyard discloses a
specific range, but teaches that "other ranges and values are possible," thus
establishes that the denier/metric number is recognized as a result effective
variable in the art. Ans. 4 (quoting Dilyard i-f 9).
Appellants dispute that the Examiner has established that the
denier/metric number is a result-effective variable for knits. App. Br. 11.
Appellants point out that the entirety of paragraph 9 of Dilyard relates to
non-woven materials, including the disclosure that exemplary non-woven
materials may have a denier of about 0.8 to 40. Id. at 8. According to
Appellants, the range of deniers disclosed in Dilyard corresponds to 1/225 to
1/11250 Nm, the unit of measure expressed in the claims, which range does
not overlap that of the claims. Id. at 8, 10, 14. In distinguishing Aller,
Appellants argue that Dilyard discloses a litany of selections and variables,
i.e., ordering of layers, the selection of fibers, woven or non-woven, and that
any one of 13 properties of nonwoven materials may be varied. Id. at 11.
Appellants further argue "[t]here is simply no teaching in Dilyard as to what
the denier of the nonwoven material would impact." Id. at 12. Appellants
assert that the disclosure of Dilyard is "an invitation to experiment with a
litany of variables related to nonwovens rather than knits and with no
indication that any one of the variables is unsuitable and that they can all be
anything under the sun." Id. at 14.
We agree with Appellants that the Examiner has not identified any
recognized result being optimized by varying the denier/metric number of
non-woven materials, as described in Dilyard, thus denier/metric number has
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not been shown to be a result-effective variable based on the record before
us. Additionally, the Examiner has not shown that varying the denier/metric
number of a non-woven fabric would have the same effect on a knit.
Because denier/metric number has not been shown to be a result-effective
variable, the Examiner also has not established that modifying the
denier/metric number disclosed by Dilyard for one material would have been
a matter of routine optimization for one of ordinary skill in the art with
respect to another material. See In re Antonie, 559 F .2d 618, 620 (CCP A
1977) (variable must be recognized as result-effective before routine
optimization applies).
On this record and for the above reasons, we reverse the Examiner's
rejection of independent claim 1. Because claims 2-5, 7-9, and 14--21
depend directly or indirectly from claim 1, we reverse the rejections of the
dependent claims for the same reasons.
DECISION
For the above reasons, the Examiner's rejection of claims 1-5, 7-9,
and 14--21 is REVERSED.
REVERSED
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