Ex Parte Naumann

Patent Trial and Appeal Board

Jun 27, 2017

12375596 (P.T.A.B. Jun. 27, 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.
12/375,596 08/14/2009 Harry Naumann 09-013 9153
24124 7590 06/29/2017
ROHAN MATHFRS
EXAMINER
PO BOX 449 PIERCE, JEREMY R
PORTLAND, ME 04112-0449
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
06/29/2017 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):
peter @ bohanmathers .com
PMM@BOHANMATHERS.COM
jj oyce @ bohanmathers. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARRY NAUMANN1
Appeal 2016-005850
Application 12/375,596
Technology Center 1700
Before CHUNG K. PAK, CATHERINE Q. TIMM, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellant appeals the Examiner’s decision finally rejecting claims 16,
17, 19, 20, 22—25, and 27—31, which constitute all the claims pending in this
application. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
1 Appellant identifies “BNP Brinkmann GmbH & Co., KG” as the real party
in interest. App. Br. 3.
2 In our Decision, we refer to the English translation of the Specification
filed August 14, 2009 (“Spec.”); the Final Office Action appealed from,
dated June 15, 2015 (“Final Act.”); the Appeal Brief dated November 3,
2015 (“App. Br.”); and the Examiner’s Answer to the Appeal Brief dated
April 1, 2016 (“Ans.”).
Appeal 2016-005850
Application 12/375,596
The Claimed Invention
Appellant’s disclosure relates to a textile sealing membrane that
serves to seal out liquids. Spec. 12. Claim 16 is illustrative of the claimed
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief (App. Br. 10) (key disputed claim language italicized
and bolded):
16. A sealing membrane for sealing liquids, the
membrane comprising:
a textile sealing layer consisting of fibers,
wherein at least a portion of the fibers are moisture­
absorbing fibers that are swellable and which, when
swollen, provide a swell pressure that serves to create a
seal that prevents the passage of liquids through the
textile sealing layer, and wherein a portion of the textile
sealing layer is constructed of fusion fibers, at least a
portion of which is thermally fused.
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
The References
Scheubel
Stevenson et al.,
(hereinafter “Stevenson”)
Beutler et al.,
(hereinafter “Beutler”)
US 5,575,112
US 5,877,096
EP1396573 Al
Nov. 19, 1996
Mar. 2, 1999
Mar. 10, 2004
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Application 12/375,596
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claim 31 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Beutler3 (“Rejection 1”). Final Act. 3; Ans. 2.
2. Claims 16, 17, 19, 20, 22—25, and 27—29 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Beutler in view of
Stevenson (“Rejection 2”). Final Act. 4; Ans. 3.
3. Claim 30 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Beutler in view of Stevenson as applied to claim 16
above, and further in view of Scheubel (“Rejection 3”). Final Act. 6; Ans. 5.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own. We
highlight and address specific findings and arguments for emphasis.
Rejection 2
In response to the Examiner’s Rejection 2, Appellant presents
substantive argument for the patentability of independent claim 16 only.
App. Br. 9. We, therefore, select claim 16 as representative and the
3 With respect to the Beutler reference, the Examiner’s rejections each refers
to the English translation of the reference provided with the Office Action
dated May 15, 2014.
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Application 12/375,596
remaining claims on appeal stand or fall with claim 16. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner determines that the combination of Beutler and
Stevenson suggests a textile structure satisfying all of the limitations of
claim 16 and would have rendered claim 16 obvious. Ans. 3^4.
The Examiner finds that Beutler teaches the majority of the limitations
of claim 16, but that the reference does not teach that a portion of the textile
sealing layer is constructed of fusion fibers, at least a portion of which is
thermally fused. Ans. 3^4 (citing Beutler || 1, 27, 29, 50, 55). The
Examiner, however, relies on Stevenson for teaching this limitation. Id. at 4.
In particular, the Examiner finds that Stevenson relates to geocomposite
materials comprising a nonwoven fabric textile structure and teaches that
fusible fibers can be included in the nonwoven fabric structure and that,
upon melting to thermally fuse the fibers, provide the fabric with improved
resistance to sagging. Id. at 4 (citing Stevenson, Abstract, col. 3,11. 29-67).
Based on the above findings, the Examiner concludes that it would
have been obvious to a person having ordinary skill in the art at the time of
the invention to have provided the textile sealing layer of Beutler with
fusible fibers, at least a portion of which are fused, in order to provide a
fabric with improved resistance to sagging, as taught to be well-known by
Stevenson. Ans. 4.
The Examiner further concludes that it would have been obvious to a
person having ordinary skill in the art to have provided the moisture­
absorbing fibers of Beutler in combination with the fusible fibers of
Stevenson to the exclusion of other materials because Beutler discloses that
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Application 12/375,596
the presence of other materials, such as superabsorbents, are optional and not
mandated in the textile structure. Id. at 4.
Appellant argues that the Examiner’s rejection of claim 16 should be
reversed because it is based on an improper interpretation of the term
“moisture-absorbing fibers” and that Beutler does not disclose a “textile
sealing layer consisting of fibers, those fibers including moisture-absorbing
fibers that are swellable,” as recited in the claim. App. Br. 7—9. In
particular, Appellant contends that the Examiner misinterprets the term
“moisture-absorbing fibers that are swellable” to include Beutler’s non­
moisture-absorbing fibers that are coated with a swellable material. Id. at 7.
Appellant further contends that paragraph 6 of the Specification
defines the term “moisture-absorbing fibers” to mean “swelling fibers that
enable a high absorption of water, thus resulting in intense swelling to
thereby create a high swell pressure” and discloses “lyocell fibers” as a well-
known example of moisture-absorbing or swellable fibers. App. Br. 7.
Relying on the Affidavit of Frank Heimbecher,4 Appellant argues that
a person of ordinary skill in the art would have understood that a coated
fiber does not have the same inherent properties or characteristics as an
uncoated fiber. App. Br. 7, 8. In particular, Appellant contends that there
are inherent differences between an uncoated swellable fiber and a fiber
coated with a swellable material and an uncoated swellable fiber provides
certain advantages over a fiber that is coated. Id. at 8.
4 Affidavit of Frank Heimbecher (“Heimbecher Aff”) dated February 25,
2015.
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Application 12/375,596
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner’s analysis and determination that the combination of Beutler and
Stevenson suggests all of the limitations of claim 16, including “moisture­
absorbing fibers that are swellable,” and would have rendered the claim
obvious. Beutler || 1, 27, 29, 50, 55; Stevenson, Abstract, col. 3,11. 29-67.
We also determine that the Examiner properly construed the term
“moisture-absorbing fibers that are swellable” to include fibers coated with a
moisture-absorbing swellable material, i.e., coated fibers, and the
construction constitutes the broadest reasonable interpretation in light of the
Specification and the language of the claims. In re Am. Acad. Of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
As the Examiner explains (Ans. 6), claim 16 recites “a textile sealing
layer consisting of fibers, wherein at least a portion of the fibers are
moisture-absorbing fibers that are swellable.” App. Br. 10 (Claims App’x).
The claim does not preclude the fibers from being coated fibers. The claim
merely requires that (a) the textile sealing layer consist of fibers and (b) a
portion of the fibers are moisture-absorbing and swellable fibers. The
moisture—absorbing and swellable fibers, as recited in the claim, embrace the
moisture-absorbing and swellable finished fibers (coated fibers) taught by
Beutler. As the Examiner determines (Ans. 3, 4, 6, 7), the coated fiber
Beutler discloses satisfies each of these requirements. See Beutler || 1, 27,
50, 51. In particular, as the Examiner finds (Ans. 3), Beutler discloses a
textile structure made of coated fibers that have portions capable of
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Application 12/375,596
absorbing moisture and swelling when contacted with water. Beutler || 1,
27.
The Examiner’s interpretation of the claim language to include coated
fibers is also consistent with the Specification. In particular, as the
Examiner finds (Ans. 7), the definition of the term “moisture-absorbing
fibers” at paragraph 6 of the Specification does not preclude coated fibers
and is actually consistent with the Examiner’s findings and interpretation of
the claim. That is, the fibers “enable a high absorption of water, thus
resulting in intense swelling to thereby create a high swell pressure.” Spec. 1
6.
Appellant’s argument regarding “lyocell fibers” (App. Br. 7) is not
persuasive of reversible error because the Specification discloses lyocell
fibers only as an example of a moisture-absorbing fiber. Neither the plain
language of the claims nor the definition in the Specification limits the
recited fibers to the lyocell fibers exemplified in the Specification.
Construing claim terms consistent with the Specification does not mean that
limitations or embodiments from the Specification are to be read into the
claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also
Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 867 (Fed. Cir. 1985)
(“Generally, particular limitations or embodiments appearing in the
specification will not be read into the claims.”)
We do not find the Heimbecher Affidavit persuasive because it rests
mainly on arguments and is unsupported by sufficient evidence in the
record. See Heimbecher Aff. || 20-34; see also In re Am. Acad, of Sci.
Tech. Ctr., 367 F.3d at 1368 (“[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
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Application 12/375,596
discounting the opinions expressed in the declarations.” (citations omitted));
In re Etter, 756 F.2d 852, 860 (Fed. Cir. 1985) (en banc) (opinion affidavit
asserting the reference disclosed obsolete technology was correctly
characterized by the board “as merely representing opinion[] unsupported by
facts and thus entitled to little or no weight” (citations omitted)); Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir.
1985) (“Lack of factual support for expert opinion going to factual
determinations, however, may render the testimony of little probative value
in a validity determination.”).
In particular, the affidavit does not provide any experimental results
or cite to any verifiable sources as the bases for Heimbecher’s opinions and
disagreement with the Examiner’s analysis and factual findings. Moreover,
as the Examiner correctly points out (Ans. 8), the affidavit also focuses on
alleged advantages and properties of uncoated fibers related to homogeneity,
delamination, and drapability—none of which are recited in or required by
the claims to exclude the coated fibers taught by Beutler from the claims.
Van Geuns, 988 F.2d at 1184.
Accordingly, we affirm the Examiner’s rejection of claims 16, 17, 19,
20, 22—25, and 27—29 under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Beutler and Stevenson.
Rejections 1 and 3
Appellant does not present any additional substantive arguments in
response to the Examiner’s Rejections 1 and 3, stated above. Rather,
Appellant apparently intends to rely on the same arguments presented above
in response to the Examiner’s Rejection 2 regarding the Beutler reference.
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Application 12/375,596
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 2, we affirm the Examiner’s Rejections 1 and 3.
DECISION/ORDER
The Examiner’s rejections of claims 16, 17, 19, 20, 22—25, and 27—31
are affirmed.
It is ordered that the Examiner’s decision is affirmed.
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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