Ex Parte FITZPATRICK

Patent Trial and Appeal Board

Jul 23, 2018

13342656 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/342,656 01/03/2012
141216 7590 07/25/2018
McCarter & English, LLP / Albany International
Worldwide Plaza, 825 Eighth Ave.,
31st Floor
New York, NY 10019
FIRST NAMED INVENTOR
Keith FITZPATRICK
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.
127510-00403 1226
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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):
NY docket@mccarter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte KEITH FITZPATRICK
Appeal2018-003396
Application 13/342,656 1
Technology Center 1700
Before BRADLEY R. GARRIS, JEFFREY T. SMITH
and BEYERL YA. FRANKLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
1 Albany International Corp, according to the Appeal Brief, is the real party
in interest. See App. Br. 1.
Appeal2018-003396
Application 13/342,656
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 14, 15, 17, 18 and 20-31. We have jurisdiction under 35 U.S.C. § 6.
Appellant's invention is directed to a method of making a substrate
useful as an endless belt for papermaking machine applications. App. Br. 1.
Claim 14 is illustrative of the subject matter on appeal and is reproduced
below:
14. A method of making a substrate of an endless belt to be
used in papermaking applications, comprising the steps of:
a. coating or impregnating a substantial surface area of
each of a plurality of individual textile layers of a reinforcing
textile material wherein each textile layer is singularly and
individually coated with a polymeric resin to form a plurality of
individual preformed coated or impregnated textile layers,
wherein the reinforcing textile material is for providing stability
in a machine direction (MD) or a cross-machine direction (CD)
of the endless belt;
b. wherein said coated or impregnated textile layer
comprises a monofilament, multifilament, continuous fine
filament, or staple fiber;
c. after said resin coating has solidified, combining at least
two of the individual preformed coated or impregnated textile
layers to form a structure for a belt of a papermaking machine;
and
d. processing the structure to form a laminate; and
e. forming or incorporating the laminate into the endless
belt to be used in the papermaking application,
wherein at least one of the individual preformed coated or
impregnated textile layers is constructed as:
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Application 13/342,656
a woven fabric of a simple or complex single or multi layer
weave including yams comprising a polymeric resin material,
a non-woven MD or CD matrix of continuous filaments,
a spiral-link,
a non-woven MD or CD yam array,
a non-woven knitted material,
a non woven sheet of fibers, an extruded mesh, or
any combination thereof.
The following rejections are presented for our review.
I. Claims 14, 15, 17, 18, 20-23 and 25-31 are rejected under 35 U.S.C.
§ 112 first paragraph, as failing to comply with the written description
requirement.
II. Claims 14, 15, 17, 18and20-31 arerejectedunder35U.S.C. § 103(a)as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over FitzPatrick (US 5,753,085, May 19, 1998).
III. Claims 14, 15, 17, 18 and 20-31 are rejected under 35 U.S.C. § 103(a)
as obvious over FitzPatrick in view of Williams (US 3,998,986, Dec. 21,
1976).
OPINION
Rejection under 35 USC§ 112,first paragraph
(written description)
We AFFIRM.
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph, is whether the disclosure of
the application as originally filed reasonably conveys to the artisan that the
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inventor had possession at that time of the later claimed subject matter. In re
Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The Examiner bears the
initial burden of establishing that the original application disclosure as a
whole would not have reasonably conveyed to those skilled in the art that the
inventors had possession of the claimed subject matter at the time the instant
application was filed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane); In re Alton, 76 F.3d 1168, 1172, 1175-76
(Fed. Cir. 1996) ( citing In re Wertheim, 541 F .2d 257, 262-64 (CCP A
1976)); In re Wright, 866 F.2d 422,425 (Fed. Cir. 1989).
The Examiner determines the original application disclosure as filed
does not reasonably convey to those skilled in the art that the inventors had
possession of coating or impregnating individual textile layers, and after said
resin coating has solidified, combining at least two of the individual
preformed coated or impregnated textile layers. The Examiner specifically
states:
In the amendment filed 4/13/2016, claims 14 and 25 were
amended to include new matter. The claims were amended so that the
layers are combined after the coating is "solidified." The "solidified"
limitation is referring to curing because the specification discloses that
curing results in a solid (page 4, line 22) and in the Examiner initiated
interview conducted on 10/31/2017, Applicant's representatives
indicated that the claimed "solidified" limitation is referring to the
curing disclosed in the specification.
The specification is silent regarding coating or impregnating
individual textile layers, and after said resin coating has solidified
( cured), combining at least two of the individual preformed coated or
impregnated textile layers. Rather, the specification discloses that first
the layers are coated or impregnated, next the layers are combined to
form the substrate, and "then" the substrate is cured (page 5, lines 20-
24).
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(Ans. 8) ( emphasis omitted).
Appellant argues a person of ordinary skilled in the art would
appreciate that the Specification (particularly page 8, lines 5-7) allows for
solidification of the coated or impregnated individual textile layers before
combining the individual substrate layers into a finished product as required
by claims 14 and 25. (Reply Br. 5-6). Appellant argues U.S. Patent No.
5,753,085 is evidence that the individual layers can be solidified by
describing by grinding and buffing in after each textile substrate layer has
been coated or impregnated. (Reply Br. 5---6). Appellant argues the instant
application incorporates, U.S. Patent No. 5,753,085 by reference when
discussing the individual layers of the papermaking belt product and not the
combined layers of the papermaking belt. (Reply Br. 6). Appellant
additionally cites U.S. Patent No. 6,455,448 as evidence to establish the
specification supports a claim where solidification of a coated or
impregnated individual textile substrate layer occurs before being combined
as required by claims 14 and 25. (Reply Br. 9).
Appellant's arguments and evidence lack persuasive merit. We agree
with the Examiner that the present record indicates the Specification
discloses that the layers are first coated or impregnated, second the layers are
combined to form the substrate, and third the formed substrate is cured. The
Specification specifically states that a superior product is obtained by the
method of:
first coating or impregnating the individual components/layers
of the textile fabric substrate with a polymeric resin, combining
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the coated or impregnated components/layers to form the
substrate and then curing the substrate to form the belt.
(Spec. 5, 11. 20-24).
The method described above is different from the method argued by
Appellant in that the individual layers are not disclosed to be solidified prior
to joining with another solidified substrate. In fact, the Specification
discloses the individual layers are first coated/impregnated with a polymer
resin and then combined to form the substrate. (Spec. 8, 11. 5-8). The
additional evidence relied upon by Appellant does not indicate that
Appellant's invention contemplated forming the individual layers by
solidified prior to joining with another cured/solidified substrate. Appellant
has failed to direct us to portions of the Specification that describes
specialized treatment of the individual layers, such as grinding and buffing,
occurs prior to joining to another layer where such treatment previously
occurred. The Specification cites FitzPatrick, U.S. patent 5,753,085, for
describing the coating/impregnating of the layers of the textile substrate.
This description in the Specification does not indicate the references relied
on for describing forming the individual layers and solidification of the
individual layers prior to forming the substrate. In fact, this is supported by
Appellant when addressing the prior art rejection over FitzPatrick.
Appellant states "FitzPatrick does not disclose a method requiring that each
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layer of a multi-layered textile is singularly and individually coated and then
combined to form a belt substrate."
(App. Br. 5).
Accordingly, we sustain the rejection under 35 U.S.C. § 112, first paragraph,
for the reasons presented by the Examiner and given above.
Rejection of Claims 14, 15, 17, 18 and 20-31 over FitzPatrick2
The Examiner found that FitzPatrick discloses a process for making a
substrate for making press belt for papermaking machines. The Examiner
specifically states:
FitzPatrick discloses a method of making an endless
papermaking belt comprising impregnating a plurality of
reinforcing textile material layers with polymer resin, completely
coating both sides (two textile layers) of the belt with polymer
resin, and processing the structure to form a laminate that
inherently provides stability in the MD or CD of the endless belt
(see entire document including the Figures, column 1, lines 6-11,
column 3, line 57 through column 4, line 15, and column 5, lines
25-58).
(Final Act. 2).
The Examiner acknowledges that FitzPatrick does not specifically
disclose impregnating and/or coating the individual textile layers of the
reinforcing textile material with a polymeric resin prior to combining the
layers. However, the Examiner contends that the selection of any order of
performing process steps is prima facie obvious in the absence of new or
unexpected results. (Final Act. 3).
2 Appellant limits the arguments to independent claims 14, 24, and 25.
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Appellant argues that FitzPatrick does not disclose a method requiring
that each layer of a multi-layered textile is singularly and individually coated
solidified and then combined to form a belt structure as required by
independent claims 14, 24 and 25. (App. Br. 5). Appellant argues that
FitzPatrick's Figure 5 establishes that the entire layer textile structure is
coated as one entity. (App. Br. 5). Appellant argues the claimed invention
is not simply a reversal of steps from FitzPatrick or an obvious deviation of
steps from FitzPatrick. (App. Br. 8).
Claims 14 and 25
We agree with Appellant that the claimed invention is more than the
reversal of the process steps from FitzPatrick. As discussed above, when
addressing the written description rejection, FitzPatrick describes the entire
layer textile structure is coated as one entity. This description does not
indicate that individual layers are formed as solidified prior to joining as
required by independent claims 14 and 25.
Accordingly, we reverse the Examiner's rejection of claims 14, 15,
17, 18, 20-23 and 25-31 under 35 U.S.C. § 103(a) as obvious over
FitzPatrick.
Claim 24
We sustain the rejection of claim 24. Contrary to Appellant's
arguments, independent claim 24 does not require solidification of the
individual layers prior to joining. FitzPatrick discloses a process for forming
a belt for a papermaking machine comprising a textile substrate comprising a
plurality of individual layers coated on both sides and impregnated with a
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polymeric resin. (FitzPatrick col. 5, 11. 38--49; Fig. 6). A person of ordinary
skill in the art would have recognized from the process of FitzPatrick the
coating or impregnating the individual components/layers of the textile
fabric substrate with a polymeric resin, combining the coated or impregnated
components/layers to form the substrate and then curing the substrate to
form the belt.
Appellant contends that the present record establishes "the claimed
invention possesses unexpected results and belt superiority over earlier
methodologies, and is not rendered obvious by FitzPatrick." (App. Br. 9--10;
citing Spec. 5, 11. 16-24).
We do not find these arguments convincing because they are not
supported by persuasive evidence. See In re Geisler, 116 F.3d 1465, 1471
(Fed. Cir. 1997) ( argument by counsel cannot take the place of evidence).
Appellant has pointed to a narrative in the Specification as the evidence in
support of unexpected results. (App. Br. 9).
Having reviewed the cited portion of the Specification, we conclude
that the narrative describing process steps is not reasonably commensurate in
scope with the degree of protection sought by the claimed subject matter of
claim 24. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Tiffin, 448 F.2d 791, 792 (CCPA 1971). It is well settled that "objective
evidence of nonobviousness must be commensurate in scope with the
claims." In re Lindner, 457 F.2d 506, 508 (CCPA 1972); In re Dill, 604
F.2d 1356, 1361 (CCPA 1979) ("The evidence presented to rebut a prima
facie case of obviousness must be commensurate in scope with the claims to
which it pertains."). Appellant has not directed us to objective evidence that
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exemplifies the unexpected results are obtained by the process of claim 24 or
the description in the Specification.
Accordingly, we sustain the Examiner's rejection of claim 24 under
35 U.S.C. § 103(a) as obvious over FitzPatrick.
Rejection of Claims 14, 15, 17, 18 and 20-31 over FitzPatrick and Williams
The Examiner found Williams discloses the laminate structure is
formed by impregnating or coating individual reinforcing textile layers,
combining the preformed coated and impregnated textile layers, and
processing (i.e. curing) the structure to form a laminate. (Ans. 9; Williams
col. 6, 1. 39- col. 7, 1. 35). As stated above, the Examiner found FitzPatrick
discloses a method of making an endless papermaking belt comprising
impregnating a plurality of reinforcing textile material layers with polymer
resin. (Final Act. 2).
Appellant argues the Examiner's rejection is in error because: first,
Williams is non-analogous art; second, the Examiner's rejection is premised
on hindsight for combining the teachings of Williams and FitzPatrick; and
third, Williams (like FitzPatrick) does not disclose impregnating or coating
each individual textile substrate layer, solidifying each layer per claims 14
and 25, and then combining each layer. (Reply Br. 12-36).
Contrary to Appellant's arguments, Williams is analogous art.
Appellant states "[a] person of ordinary skill in the art would understand that
a papermaking belt of the pending claims is a type of conveyor belt." (App.
Br. 13). As acknowledged by Appellant in the Reply Brief, Williams is
generally concerned with conveyor belts constructed as a laminate. (Reply
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Br. 16; Williams col. 1, 11. 3-5.). Consequently, Williams is reasonably
pertinent to the problems associated with conveyor belts.
We do not agree with Appellant that the Examiner's rejection is
premised on hindsight for combining the teachings of Williams and
FitzPatrick. A person of ordinary skill in the art would have reasonably
expected that known techniques, such as described by Williams, for forming
a conveyor belt would have been suitable for forming a conveyor belt for
papermaking processes. The teachings of Williams would have been
especially relevant in the formation of conveyor belt that is formed from
multilayer structures. Accordingly, we are of the opinion that, prima facie,
one of ordinary skill in this art routinely following the combined teachings
of FitzPatrick and Williams would have reasonably arrived at the claimed
method of making a substrate of an endless belt for use in papermaking
applications without recourse to Appellant's Specification. See, e.g., KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398,416 (2007) ("[W]hen a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result"); In re Siebentritt, 372 F.2d
566, 567---68 (CCPA 1967) (express suggestion to interchange methods
which achieve the same or similar results is not necessary to establish
obviousness); see also In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006);
In re O'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988) ("For obviousness
under§ 103, all that is required is a reasonable expectation of success."
(Citations omitted)); In re Keller, 642 F.2d 413,425 (CCPA 1981) ("[T]he
test [ for obviousness] is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.")
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Claims 14 and 25
Appellant argues neither FitzPatrick nor Williams discloses
impregnating or coating each individual textile substrate layer, solidifying
each layer per claims 14 and 25, and then combining each layer. (Reply Br.
24--29).
We agree with Appellant that disclosure of Williams does not describe
solidifying the individual layers and subsequently combining each layer as
required by claims 14 and 25. Specifically, Williams discloses impregnating
and or coating the individual layers combining the layers and subsequently
solidification. (Williams col. 6, 1. 39 - col. 7, 1. 35). The claimed invention
is more than the reversal of the process steps from FitzPatrick. As discussed
above, we determine that FitzPatrick describes the entire layer textile
structure is coated as one entity. Consequently, neither FitzPatrick nor
Williams describes individual layers are formed as solidified prior to joining
as required by independent claims 14 and 25.
Accordingly, we reverse the Examiner's rejection of claims 14, 15,
17, 18, 20-23 and 25-31 under 35 U.S.C. § 103(a) as obvious over the
combination of FitzPatrick and Williams.
Claim 24
We sustain the rejection of claim 24. Appellant relies on the same
arguments that were presented when addressing the rejection over
FitzPatrick alone. (Reply Br. 29). As stated above, contrary to Appellant's
arguments, independent claim 24 does not require solidification of the
individual layers prior to joining. Consequently, we sustain the rejection of
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claim 24 for the reasons set forth above and those presented by the
Examiner.
ORDER
The rejection of claims 14, 15, 17, 18, 20-23 and 25-31 under 35
U.S.C. § 112 first paragraph, as failing to comply with the written
description requirement is affirmed.
The rejection of claims 14, 15, 17, 18, 20-23 and 25-31 under 35
U.S.C. § 103(a) as obvious over FitzPatrick is reversed.
The rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable
over FitzPatrick is affirmed.
The rejection of claims 14, 15, 17, 18, 20-23 and 25-31 under 35
U.S.C. § 103(a) as obvious over FitzPatrick and Williams is reversed.
The rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable
over FitzPatrick and Williams is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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