Ex Parte Hansen et al

Patent Trial and Appeal Board

Sep 22, 2017

12345215 (P.T.A.B. Sep. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/345,215 12/29/2008 Robert A. Hansen 127507-06302 7442
141216 7590 09/26/2017
McCarter & English, LLP / Albany International
245 Park Avenue
27 th Floor
New York, NY 10167
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT A. HANSEN, BJORN RYDIN, and
GLENN KORNETT1
Appeal 2016-008654
Application 12/345,215
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal the Examiner’s decision to finally reject claims 1,
3-5, 9-12, 15-20, and 22-25. We have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify “Albany International Corp.” as the real party in
interest. Appeal Br. 2.
2 In our Decision, we refer to the Specification filed December 29, 2008
(“Spec.”); Final Office Action mailed December 31, 2015 (“Final Act.”);
Advisory Action mailed April 3, 2015 (“1st Adv. Act.”); Advisory Action
mailed May 7, 2015 (“2nd Adv. Act.”); Appeal Brief filed May 26, 2016
(“App. Br.”); Examiner’s Answer to the Appeal Brief mailed July 26, 2016
(“Ans.”); and Reply Brief filed September 19, 2016 (“Reply Br.”).
Appeal 2016-008654
Application 12/345,215
We AFFIRM-IN-PART.
The Claimed Invention
Appellants’ disclosure relates to a compressible/resilient structure for
various uses such as, for example, athletic shoes, regular shoes, boots, floor
carpets, carpet pads, sports floors, etc. Spec. 1. According to Appellants,
the structure has a high degree of both compressibility under an applied
normal load and excellent recovery (resiliency or spring back) upon removal
of that load. Abstract; Spec. 2.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix of the Appeal Brief (Appeal
Br. 22) (key disputed claim language italicized and bolded):
1. A compressible resilient pad, the pad having an original
thickness and includes a structure comprising:
a plurality of parallel warp yams;
a plurality of parallel shute yams;
wherein either or both of shute yams or warp yams are
comprised of an axially elastomeric material,
wherein the structure is a laminated structure comprising:
a first layer of the parallel yams mnning in either the warp
or the shute direction;
a second layer of the parallel yams on one side of the first
layer, the second layer’s yams mnning in the warp or shute
direction different from that of the first layer and comprising the
elastomeric yams; and
a third layer of the parallel yams on the opposite side of the
second layer as the first layer and mnning in the same direction
as those of the first layer,
wherein the parallel yams of the third layer are aligned such
that the parallel yams of the third layer nest between the parallel
yams of the first layer without interfering with one another to
2
Appeal 2016-008654
Application 12/345,215
allow the structure to compact to form a planar structure in a
through thickness direction when the pad is under a pressure
load;
wherein the elastomeric yams are elastic in their through
thickness direction and length or axial direction such that under
the pressure load the elastomeric yams stretch and compress to
conform to the nesting and, the structure springs back to
substantially the original thickness after removal of the
pressure load.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Fontana US 4,328,840
(hereinafter “Fontana ’840”)
Fontana US 4,328,841
(hereinafter “Fontana ’841”)
Crook US 4,555,440
Westhead US 4,870,998
Cederblad et al, US 6,391,420 B1
(hereinafter “Cederblad”)
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claim 15 is rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
inventor, or for pre-AIA the applicant regards as the invention (“Rejection
1”). Ans. 3; Final Act. 2.
May 11, 1982
May 11, 1982
Nov. 26, 1985
Oct. 3, 1989
May 21, 2002
3
Appeal 2016-008654
Application 12/345,215
2. Claims 1, 3-5, 9-12, 15-20, and 22-25 are rejected under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Fontana ’840 (“Rejection 2”). Ans. 4; Final Act. 3
3. Claims 1, 3-5, 9-12, 15-20, and 22-25 are rejected under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Fontana ’841 (“Rejection 3”). Ans. 7; Final Act. 6
4. Claims 1, 3-5, 9-12, 15-20, and 22-25 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Fontana ’840 as applied to
claims 1, 3-5, 9-12, 15-20, and 22-25 above, and further in view of
Cederblad (“Rejection 4”). Ans. 9; Final Act. 8.
5. Claims 1, 3-5, 9-12, 15-20, and 22-25 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Fontana ’841 as applied to
claims 1, 3-5, 9-12, 15-20, and 22-25 above, and further in view of
Cederblad (“Rejection 5”). Ans. 9; Final Act. 8.
6. Claims 1, 3-5, 9-12, 15-20, and 22-25 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Crook in view of Westhead
(“Rejection 6”). Ans. 10; Final Act. 9.
OPINION
Rejection 1
Appellants do not dispute the Examiner’s § 112 rejection of claim 15
for indefiniteness (Rejection 1). Ans. 3; Final Act. 2; Appeal Br. 4-5.
Accordingly, because the Examiner’s Rejection 1 has not been
withdrawn and is not disputed by Appellants, we summarily affirm this
rejection. Cf. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008); Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an
4
Appeal 2016-008654
Application 12/345,215
appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection”) (cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)).
Rejection 2
The Examiner determines that Fontana ’840 discloses all of the
limitations of claim 1 and anticipates the claim, or in the alternative would
have rendered claim 1 obvious. Ans. 4-5.
Regarding the “laminated structure” limitation of claim 1, the
Examiner finds that the structure Fontana ’840 discloses is a laminate, i.e.,
“multilayered structure” comprising first, second, and third layers of parallel
yams. Ans. 4 (citing Fontana ’840, Fig. 1, col. 2,11. 14-31, col. 4,11. 4-19).
Appellants argue that the Examiner’s rejection of claim 1 should be
reversed because Fontana ’840 does not teach or suggest a “laminated
structure” as required by the claim.
We agree with Appellants’ argument. To serve as an anticipatory
reference, “the reference must disclose each and every element of the
claimed invention.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). On
the record before us, we are not persuaded that the Examiner has established
by a preponderance of the evidence that Fontana ’840 discloses a laminated
stmcture.
As Appellants correctly point out (App. Br. 3), claim 1 recites that the
claimed “stmcture is a laminated stmcture” comprising a first layer, second
layer, and third layer of parallel yams. The Specification further discloses
that the laminated stmcture can include “two woven layers with an
5
Appeal 2016-008654
Application 12/345,215
elastomeric layer there between.” Spec. 5,11. 9-12. Figure 10A of the
Specification also depicts the claimed laminated structure with the
elastomeric yam 40 and functional yams 20, 30 laminated between two
fabrics. Spec. 12,11. 1—4, Fig. 10A.
The Examiner, however, does not provide an adequate technical
explanation or direct us to sufficient evidence that Fontana ’840 discloses a
“laminated structure,” as required by the claim. The portions of Fontana
’840 upon which the Examiner relies do not teach or suggest a laminated
stmcture. See col. 2,11. 14-32 (disclosing the “fabric weave” of Figure 1
with warp comprising mbber threads and weft comprising wool threads),
col. 4,11. 4-19 (disclosing that “instead of mbber threads, threads of other
elastomeric material may be used”), Fig. 1 (depicting a “double side fabric”
stmcture).
Rather, as Appellants note (App. Br. 6, 7), the cited portions of
Fontana ’840 upon which the Examiner relies are directed to and merely
describe woven stmctures resulting from interlacing warp fibers and weft
fibers in a weave pattern where the interlocking fibers hold the fabric
together. Indeed, the Fontana ’840 reference itself describes the stmcture it
discloses as a “double side fabric” (Fontana ’840, Abstract, col. 1,11. 1-9)
and teaches that the fabric “can be easily manufactured on looms of known
type” (id. at col. 1,11. 29-31). There is no teaching, suggestion, or even
mention in Fontana ’840 of the fabric being a laminated stmcture, as
claimed.
For the reasons provided by Appellants at pages 5-8 of the Appeal
Brief and pages 3-5 of the Reply Brief and in light of the Specification’s
disclosure regarding “laminate stmcture” (Spec. 5,11. 9-12, Spec. 12,11. 1—4,
6
Appeal 2016-008654
Application 12/345,215
Fig. 10A), we are not persuaded by a preponderance of the evidence that a
person of ordinary skill in the art would have understood the prior art’s
woven structure as corresponding to Appellants’ claimed laminate structure.
The Examiner’s discussion at pages 15-19 of the Answer, without more,
does not sufficiently address Appellants’ principal argument that Fontana
’840 merely discloses a woven structure— and does not teach or suggest a
laminated structure.
We, therefore, cannot sustain the Examiner’s rejection because
Fontana ’840 does not disclose or suggest all of the limitations of claim 1.
Because claims 3-5, 9-12, 16-20, and 22-25 each depends from
claim 1, we also cannot sustain the Examiner’s rejection of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 1, 3-5, 9-
12, 16-20, and 22-25 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as obvious over Fontana ’840.
Rejection 3
Because the Examiner’s Rejection 3 is based on the Fontana ’841
reference, the Fontana ’841 reference’s disclosure is similar to the disclosure
of the Fontana ’840 reference (compare Fontana ’841, Fig. 1, col. 1,1. 66-
col. 2,1. 12 to Fontana ’840, Fig. 1, col. 2,11. 14-32), and the Examiner’s
analysis for Rejection 3 rests on principally the same flawed findings and
conclusions as Rejection 2 (