Ex Parte McGuire

Board of Patent Appeals and Interferences

Feb 24, 2009

11274983 (B.P.A.I. Feb. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHERI L. MCGUIRE
____________

Appeal 2008-5938
Application 11/274,983
Technology Center 1700
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Decided:1 February 24, 2009
____________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5938
Application 11/274,983

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 12, which are all of the claims
pending in the above-identified application. We have jurisdiction pursuant
to 35 U.S.C. § 6.
The subject matter on appeal is directed to “a lightweight, high loft
nonwoven fabric in which properties in the machine direction and cross
direction such as resiliency (measured in terms of improved loft), and
improved tensile strength are more uniform” (Spec. 1). According to pages
1 and 2 of the Specification:
High loft nonwoven fabrics are used in a wide variety of
applications, for example, in indoor and outdoor furniture,
bedding such as mattresses, and quilting . . . .

High loft, nonwoven fabrics are principally formed of a
polyester blend having a low melt binder. The low melt binder
is either a bicomponent fiber, or a low melting fiber having a
lower melting temperature than the polyester fiber, or a latex
resin applied to the fibers, either as a spray or a powder.

Two principle characteristics of high loft nonwoven
fabrics are product resiliency and tensile strength . . . .

The above lightweight, high loft nonwoven fabric is said to be produced
from carding, cross-lapping, and drafting batted natural and/or synthetic
fibers having low melt or bicomponent fibers (Spec. 8-9). The cross-lapping
involves applying the carded web back and forth to "a predetermined
number of layers . . . in cross direction to build-up the web to a desired
weight and thickness and to provide tensile strength in the cross direction”
(Spec. 9). The drafting involves pulling “the web or+ batt in the machine
direction to better balance the properties with the cross direction” (id.).
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Application 11/274,983

According to Appellant (Spec. 7), the “light-weight fabric is considered to
be fabric having a weight of < 2.0 oz/ft2 and more preferably having a
weight in the range of 0.25 oz/ft2 to 1.8 oz/ft2.” Details of the appealed
subject matter are recited in representative independent claims 1 and 6
reproduced from the Claims Appendix to the Appeal Brief as follows2:
1. A drafted nonwoven high loft batt, comprising: a mixture of
natural and/or synthetic fibers bound with low melt binder fibers of low melt
fibers or bicomponent fibers, wherein said low melt binder fibers are no
more than about 30 wt. % of said batt; said batt having between 2 and 10
cross-lapped layers, said batt being between about 0.25 oz/ft2 to 2.0 oz/ft2
and a tensile strength in a machine direction that is at least 50 percent of the
tensile strength in a cross direction.

6. The drafted nonwoven high loft batt of claim 1, having a loft
recovery of at least 90% under a load of 10 lbs. per sq. ft, for a duration of 2
minutes.

As evidence of unpatentability of the appealed subject matter, the
Examiner has proffered the following prior art reference:
Rivera US 7,047,606 B2 May 23, 20063
(Filed Mar. 27, 2003)

The Examiner has rejected claims 1 through 12 under 35 U.S.C. § 103
as unpatentable over the disclosure of Rivera.

2 To the extent that Appellant has presented substantive arguments for
separate patentability of any individual claims on appeal, we will address
them separately consistent with 37 C.F.R. § 41.37(c)(1)(vii) (2005).

3 Rivera incorporates by reference U.S. Patent 5,475,903 issued to Collins on
Dec. 19, 2005. Appellant also refers to this patent at pages 4 and 5 of the
Specification.
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Appeal 2008-5938
Application 11/274,983

Appellant appeals from the Examiner’s decision rejecting claims 1
through 12 under 35 U.S.C. § 103(a).

RELEVANT FACTUAL FINDINGS (FF)
The Factual Findings set forth below are supported by a
preponderance of the evidence of record:
1. Rivera teaches manufacturing a durable nonwoven fabric embodying
a fibrous matrix produced from natural and/or synthetic fibers having the
same or different compositions, preferably “layers including a first fibrous
matrix blend of 85%, 1.2 dpf polyester . . . and 15%, 2.0 dpf low melt
bicomponent fiber…” (col. 6, ll. 44-52).
2. Rivera teaches (co. 5, ll. 30-41) that:
The fibrous matrix is preferably carded and cross-lapped to
form a fibrous batt, designated F. In a current embodiment, the
fibrous batt comprises 100% cross-lap fibers, that is, all of the
fibers of the web have been formed by cross-lapping a carded
web so that the fibers are oriented at an angle relative to the
machine direction of the resultant web. U.S. Pat. No.
5,475,903, hereby incorporated by reference, illustrates a web
drafting apparatus.
A support layer of scrim is then placed in face to face to
face juxtaposition with a first fibrous web and hydroentangled
to form precursor web P.

3. Rivera incorporates by reference of U.S. Patent 5,474,903 (Collins)
which, like Rivera, teaches carding, cross-lapping, drafting, and
hydroentangling synthetic fibers, such as polyester, to produce a relatively
“light” fabric having comparable tensile strengths in the machine and cross
directions (Collins, col. 1, l. 60 to col. 2, l. 9).
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Application 11/274,983

4. U.S. Pat. No. 5,474,903 (Collins) indicates that cross-lapping and
drafting are used to impart desired strengths to cross and machine directions
respectively (id.).
5. Appellant acknowledges that U.S. Pat. No. 5,474,903 (Collins), which
is incorporated by reference in Rivera, describes a carded, cross-lapped,
drafted, and hydroentangled nonwoven fabric having comparable strength in
the machine and cross direction (Spec. 4-5).
6. Appellant does not dispute the Examiner’s finding that cross-lapping a
carded web, by definition, means lapping the carded web back and forth to
produce a predetermined number of layers, namely at least two layers, in
cross direction (Compare Ans. 2 with App. Br. 4-10 and Reply Br. 1-5 )
7. Rivera teaches that its nonwoven fabrics are used in a wide variety of
applications, including, but not limited to, protective wear for medical and
industrial uses, protective covers for vehicles, and covers for equipment and
furniture (col. 7, ll. 12-42).
PRINCIPLES OF LAW

In making a patentability determination, analysis must begin with the
question, “what is the invention claimed?” since “[c]laim interpretation, . . .
will normally control the remainder of the decisional process.” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987).
During examination, claims terms must be given their broadest reasonable
construction consistent with the specification. In re Icon Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)(“[T]he PTO must give claims
their broadest reasonable construction consistent with the specification. . . .
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Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”).
The burden is on the Appellant to show reversible error in the
appealed rejections. “[W]hen the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (citing In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986);
see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977). “‘[T]he PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. . . . Whether
the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie
obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of
proof is the same . . . [footnote omitted].’” In re Fitzgerald, 619 F.2d 67, 70
(CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if any. Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966). As stated in KSR Int’l Co., v.
Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007):
[A]nalysis [of whether the subject matter of a claim would have
been prima facie obvious] need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.

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In considering the teachings of a prior art reference, one must take into
account the reference’s incorporation by reference of another patent.
Ultradent Prods., Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 1067-69
(Fed. Cir. 1997).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 127 S. Ct. at
1741 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”). The
common knowledge attributable to one of ordinary skill in the art includes
what was admittedly known in the art by Appellants at the time of the
invention. See In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The
admitted prior art in applicant’s Specification may be used in determining
the patentability of a claimed invention.); see also In re Davis, 305 F.2d 501,
503 (CCPA 1962).
As our reviewing court stated in In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003):
In cases involving overlapping ranges, we and our
predecessor court have consistently held that even
a slight overlap in range establishes a prima facie
case of obviousness . . . . We have also held that
a prima facie case of obviousness exists when the
claimed range and the prior art range do not
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overlap but are close enough such that one skilled
in the art would have expected them to have the
same properties. Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).

“[D]iscovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276
(CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955)(“[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.”).
ISSUES, ANALYSES AND CONCLUSIONS OF LAW
CLAIMS 1 THROUGH 5 AND 7 THROUGH 12
As correctly found by the Examiner, Rivera teaches a nonwoven
fabric preferably produced from hydroentangling a carded, cross-lapped,
and drafted fibrous batt containing polyester (synthetic fibers) and 15% of
low-melt bicomponent fibers (corresponding to the claimed amount of low
melt fibers or bicomponent fibers) (FF 1 and 2). This nonwoven fibrous
batt, as explained by Collins (U.S. Patent 5,474,903 which is incorporated
by reference in Rivera), is relatively “light” and has comparable tensile
strengths in the machine and cross directions (FF 3-5). Rivera’s
“comparable tensile strengths in the machine and cross directions’
correspond to or is embraced by the limitation “tensile strength in a machine
direction that is at least 50 percent of the tensile strength in a cross direction
(emphasis added)” recited in claim 1 (id.).
Appellant contends that Rivera does not specifically mention its
carded, cross-lapped, and drafted fibrous batt as having between 2 to 10
cross-lapped layers, as having a weight of 0.25 oz/ft2 to 2.0 oz/ft2, and as
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having a “high loft” characteristic (App. Br. 4-8 and Reply Br. 1-4). Thus,
the dispositive question raised is: Would Rivera have taught or suggested
forming a “high loft” carded, cross-lapped, and drafted fibrous batt having 2
to 10 cross-lapped layers and a weight of 0.25 oz/ft2 to 2.0 oz/ft2 within the
meaning of 35 U.S.C. § 103(a)? On this record, we answer this question in
the affirmative.
First, as recognized by Appellant, Rivera does not specifically
mention the claimed number of cross-lapped layers (between 2 to 10 cross-
lapped layers). However, Rivera, like Appellant, preferably requires cross-
lapping a carded fibrous batt. Cross-lapping, by definition, requires forming
a predetermined number of cross-lapped layers equal to or greater than two,
which are inclusive of the claimed number of layers. More importantly,
Rivera teaches cross-lapping and drafting a carded fibrous batt to obtain
tensile strengths in machine and cross directions corresponding to the
claimed tensile strengths in the same directions. Since the number of cross-
lapped layers and drafting determine the tensile strengths in cross and
machine directions, it is reasonable for the Examiner to believe that River’s
carded, cross-lapped and drafted fibrous batt has the number of cross-lapped
layers, which is identical to or substantially identical to those claimed within
the meaning of 35 U.S.C. § 103.
In any event, it can be inferred from Rivera that the number of cross-
lapped layers to be used is dependent on the desired tensile strength in cross
direction and/or the desired end utilities or applications. In other words, the
number of cross-lapped layers is a known result effective variable for given
end utilities or applications and/or for the desired tensile strength in cross
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Application 11/274,983

direction. It follows that the determination of the optimum number of cross-
lapped layers, such as the claimed number of cross-lapped layers, for the
desired end application or the desired tensile strength in cross direction is
well within the ambit of one of ordinary skill in the art within the meaning of
35 U.S.C. § 103.
Second, as also recognized by Appellants, Rivera does not specifically
mention its carded, cross-lapped and drafted fibrous batt as having a “high
loft” characteristic. However, consistent with Appellant's description of
“high loft” at pages 1 and 2 of the Specification, Rivera teaches carding,
cross-lapping, and drafting its fibrous batt having the claimed amounts of
synthetic and low-melt bicomponent fibers for various end usages or
applications. Thus, it is reasonable for the Examiner to believe that Rivera’s
carded, cross-lapped, and drafted fibrous batt has a “high loft” characteristic
as defined in the Specification.
To the extent that the term “high loft” is reflective a height
corresponding to the number of cross-lapped layers employed, Rivera, as
indicated above, teaches the number of cross-lapped layers inclusive of the
claimed number of cross-lapped layers. Moreover, it can be inferred from
Rivera that the number of cross-lapped layers to be employed (which
determines the loft of the batt) is a recognized result effective variable as it
is dependent on the desired tensile strength in cross direction and/or the
desired end utilities or applications. Therefore, it is well within the ambit of
one of ordinary skill in the art to provide a “high loft” characteristic to
Rivera’s fibrous batt via providing the optimum number of cross-lapped
layers, such as the claimed number of cross-lapped layers, for given end
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utilities or applications and/or for the desired tensile strength in cross
direction within the meaning of 35 U.S.C. § 103
Finally, as argued by Appellant, Rivera does not mention its carded,
cross-lapped, and drafted fibrous batt as having the claimed specific light
weight. However, Rivera, as explained by Collins (the incorporated
reference), is directed to forming a light weight fabric formed from carding,
cross-lapping, and drafting a fibrous batt having the claimed synthetic and
low-melt bicomponent fibers. Thus, Rivera, as a whole, either necessarily
teaches or would have suggested to one of ordinary skill in the art to form
light weight batts, inclusive of those having the claimed light weights, within
the meaning of 35 U.S.C. § 103(a). This is especially true in this situation
since the number of cross-lapped layers (which determines the weight of the
batt) and the weight of the batt itself are result effective variables as they are
dependent on the desired end usages or applications.
Accordingly, based on the totality of the record, including due
consideration of Appellant's arguments, we hold that the preponderance of
evidence weighs most heavily in favor of obviousness regarding the subject
matter recited in claims 1 through 5 and 7 through 12 within the meaning of
35 U.S.C. § 103(a).
CLAIM 6
Appellant contends that Rivera does not teach or would have
suggested the claimed functional limitation “a loft recovery of at least 90%
under a load of 10 lb per sq. ft, for a duration of 2 minutes” recited in claim
6. Thus, the dispositive question raised is: Has the Examiner provided a
reasonable basis to find that Rivera’s carded, cross-lapped, and drafted
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fibrous batt possesses the functionally defined property recited in claim 6 or
that the claimed functionally defined property would have naturally followed
from Rivera’s suggestion of forming a carded, cross-lapped, and drafted
fibrous batt? On this record, we answer this question in the affirmative.
As indicated supra, Rivera teaches a nonwoven fabric preferably
produced from hydroentangling a carded, cross-lapped, and drafted fibrous
batt containing polyester (synthetic fibers) and 15% of low-melt
bicomponent fibers (corresponding to the claimed amount of low melt fibers
or bicomponent fibers) (FF 1 and 2). This nonwoven fibrous batt, as
explained by Collins (U.S. Patent 5,474,903 which is incorporated by
reference in Rivera), is relatively “light” and has comparable tensile
strengths in the machine and cross directions. From this disclosure of
Rivera, one of ordinary skill in the art can infer that Rivera forms the same
or substantially the same high loft fibrous batt having the claimed number of
cross-lapped layers since its comparable tensile strengths in the machine and
cross directions corresponding to the claimed tensile strengths are dependent
on the number of cross-lapped layers and drafting used as explained by both
Appellant and Collins. Thus, the Examiner has a reasonable basis to believe
that Rivera’s carded, cross-lapped, drafted fibrous batt containing polyester
(synthetic fibers) and 15% of low-melt bicomponent fibers and having the
claimed tensile strengths in cross and machine directions possesses the
claimed functional property.
In any event, the claimed functionally defined property would have
naturally followed from the suggestion of Rivera to form its carded, cross-
lapped and drafted fibrous batt in an optimum manner as indicated supra.
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This is especially true in this case since the carded, cross-lapped and drafted
fibrous batt suggested by Rivera and its properties are inseparable.
Accordingly, based on the totality of the record, including due
consideration of Appellant's arguments, we hold that the preponderance of
evidence weighs most heavily in favor of obviousness regarding the subject
matter recited in claim 6 within the meaning of 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner 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).
AFFIRMED

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CLEMENTS BERNARD MILLER
1901 ROXBOROUGH ROAD
SUITE 300
CHARLOTTE, NC 28211
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