Ex Parte Hill

Patent Trial and Appeal Board

Mar 29, 2013

11654335 (P.T.A.B. Mar. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/654,335 01/17/2007 Bruce R. Hill TRW(AP)7730 7129
26294 7590 03/29/2013
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
SINGH-PANDEY, ARTI R
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
03/29/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRUCE R. HILL
____________

Appeal 2012-002689
Application 11/654,335
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and
DONNA M. PRAISS, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventor (hereinafter “Appellant”)1 appeals under 35
U.S.C. § 134(a) from the Examiner’s final rejection of claims 1 through 26,
all of the claims pending in the above identified application.2 We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a laminated inflatable
vehicle occupant protection device for helping to protect an occupant of a

1 Appellant identifies the real party in interest as “TRW Vehicle Safety
Systems, Inc.” (See Appeal Brief filed June 8, 2011 (“App. Br.”) at 3.)
2 See App. Br. 5.

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vehicle.” (See Spec. 1, ll. 5-6.) Details of the appealed subject matter are
recited in illustrative claims 1, 23, and 24 reproduced below from the
“CLAIMS APPENDIX” in the Appeal Brief:
1. An inflatable vehicle occupant protection device comprising:
a one piece woven substrate that defines an inflatable volume of the
protection device, and permeability reducing layers applied to an outer
surface of the substrate, the permeability reducing layers comprising:
a first permeability reducing layer comprising an adhesive film
extrusion adhered to the outer surface of the substrate; and
a second permeability reducing layer applied over the adhesive
extrusion.

23. An inflatable vehicle occupant protection device comprising:
a one piece woven substrate that defines an inflatable volume of the
protection device, and permeability reducing layers applied to an outer
surface of the substrate, the permeability reducing layers comprising:
an adhesive film extrusion adhered to the outer surface of the
substrate; and
a pre-formed film laminated onto the adhesive film extrusion.

24. An inflatable vehicle occupant protection device comprising:
a one piece woven substrate that defines an inflatable volume of the
protection device, and permeability reducing layers applied to an outer
surface of the substrate, the permeability reducing layers comprising:
an adhesive film adhered to the outer surface of the substrate; and
a coating coated over the adhesive film.

(See App. Br. 29, 32, and 33 (Claims App’x).)(Emphasis added.)
Appellant seeks review of the Examiner’s rejection of claims 1
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through 26 under 35 U.S.C. § 103(a) as unpatentable over Viega ‘1233 in
view of Viega ‘5784 set forth in the Examiner’s Answer mailed September 1,
2011 (“Ans.”). (See App. Br. 9 and Reply Brief filed October 28, 2011
(“Reply Br.”) at 3.)
DISCUSSION5
Viega’578 teaches automotive protective devices such as inflatable air
bags or side air curtains, comprising laminated woven and non-woven
fabrics, including multi-layered woven textiles having preconfigured air
holding cavities (also known in the industry as one piece woven) “in which a
solid polymeric film is laminated to the outer surfaces thereof to make it air
tight to very high pressures for extended periods of time.” (Col. 5, ll. 6-13;
col. 1, ll. 35-42 .) In particular, Viega ‘578 teaches an inflatable automotive
protective device comprising a one piece woven substrate (10) that defines
an inflatable volume of the protection device and permeability reducing
layers (9, 11, and 12) applied to an outer surface of the substrate, wherein

3 US 6,770,578 B2 issued to Veiga on Aug. 3, 2004.
4 US 6,734,123 B2 issued to Veiga et al. on May 11, 2004.
5 The Examiner has identified US 2008/0014394 A1 published in the name
of Berger et al. on January 17, 2008 as “USPUB 2208/0014394” and relied
on it at page 12 of the Answer. We decline to consider this reference
because it is not relied upon in the statement of the rejection set forth in the
Answer. See In re Hoch, 428 F.2d 1341, 1342 n. 3 (CCPA 1970)(“Where a
reference is relied on to support a rejection, whether or not in a ‘minor
capacity,’ there would appear to be no excuse for not positively including
the reference in the statement of the rejection.”).

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the permeability reducing layers include an adhesive prime coat layer (9)
adhered to the outer surface of the substrate (10) and solid polymeric films
(11 and 12), such as polyamide, polyolefin, polyether, polyester,
polycarbonate or polyurethane material, applied over the adhesive prime
coat layer (9). (See Absract, col. 5, ll. 7-39, col. 6, ll. 3-27 and col. 10, l. 30
to col. 11, l. 8, together with Fig. 4.) The polymeric films (11 and 12) that
are laminated to the substrate over the adhesive prime coat layer (9),
according to column 4, lines 31-37, of Viega ‘578, are known to be applied
in the form of a liquid coating or a film as recited in claims 1, 23, and 24.
Viega ‘123 also teaches applying such polymeric films over the adhesive
prime coat layer adhered to a woven or nonwoven fabric substrate for use in
an air-holding vehicle occupant protection device in the form of a coating.
(col. 1, ll. 14-27 and col.2, ll. 21-28.) Both Viega ‘578 and ‘123, like
Appellant, employ polyether or polyester polyurethane as their adhesive
prime coat layer (Compare Viega ‘578, Abstract and col. 6, ll. 28-42 and
Viega ‘123, col. 2, ll. 50-63 with, for example, claims 5 and 14.),
Appellant contends that Viega ‘578 and ‘123 individually or in
combination do not teach or suggest applying their adhesive prime coat layer
in the form of the adhesive film extrusion that is extruded onto the substrate
as recited in claims 1, 23, and 24. (App. Br. 13-28.)
Thus, the dispositive question is: Would Viega ‘578 and ‘123
individually or in combination have taught or suggested applying their
adhesive prime coat layer in the form of the adhesive film extrusion that is
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extruded onto the substrate as recited in claims 1, 23, and 24 within the
meaning of 35 U.S.C. § 103? On this record, we answer this question in the
affirmative.
Notwithstanding Appellant’s arguments to the contrary, Viega ‘578 is
not limited to forming an adhesive layer with a liquid prime coat material.
(Col. 7, ll. 1-55.) Viega ‘578 teaches that a hot melt adhesive based on a
polyester or polyether-based polyurethane, together with a polycarbonate
polyurethane and isocyanate component, can be applied to the substrate in
the form of a melt at a melting or flowing temperature of about 280 oF to
400 ºF and at a pressure from about 40 to about 80 psi. (Col. 7, ll. 17-65.)
According to page 499 of Kirk-Othmer Encyclopedia of Chemical
Technology (“Kirk-Othmer”), 3rd Edition, Vol. 1, John Wiley & Sons, New
York (1978), such hot melt adhesive is normally applied or coated to a
substrate via using conventional “hot-melt adhesive applicators [which] are
really miniature thermostatically controlled extruders similar to those used to
extrude thermoplastics.”
Given the above circumstances, we concur with the Examiner that one
of ordinary skill in the art would have been led to provide polyether or
polyester polyurethane based adhesive layer in the form of a liquid coating
or extrusion, with a reasonable expectation of successfully sealing the fabric
substrate and binding the overlying polymeric film of the inflatable
automotive protective device taught by Viega’578, upon being subjected to
the high laminating temperature and pressure taught at column 10, lines 30-
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50 of Viega ‘578. In re Longi, 759 F.2d 887, 897 (Fed. Cir. 1985) (“[A]
reasonable expectation of success, not absolute predictability” supports a
conclusion of obviousness.)
This outcome is especially compelling in this situation since Viega
‘578 also teaches using an adhesive layer already formed on the polymeric
film to laminate the polymeric film on the substrate with the preformed
adhesive layer placed between the polymeric film and the substrate. (col. 6,
ll. 24-27 and col. 8, ll. 18-24.) The fact that the adhesive layer can be
applied in the form of a preformed layer or a liquid coating on the substrate
and is still useful for the purpose of sealing the fabric substrate and binding
the overlying polymeric film upon applying the high laminating temperature
and pressure, as taught in column 6, lines 28-42 and column 10, lines 30-50
of Viega ‘578, would have reasonably conveyed to one of ordinary skill in
the art that the adhesive layer conventionally formed by extrusion is
reasonably expected to provide the same function taught by Viega ‘578.
Longi, 759 F.2d at 897
Accordingly, based on the totality of record, including due
consideration of Appellants’ arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness
within the meaning of 35 U.S.C. § 103(a).

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SUMMARY
In view of the foregoing, the decision of the Examiner rejecting the
claims on appeal is affirmed.
However, we denominate our affirmance as including a new ground
of rejection pursuant to 37 C.F.R. § 41.50(b) because we rely on additional
facts and reasoning materially different from those set forth in the Answer.6
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

6 Claims 1 through 26 are now rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Viega ‘578, Viega ‘123 and
Kirk-Othmer.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED/37 C.F.R. § 41.50(B)

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