Ex Parte Shibata

Patent Trial and Appeal Board

Oct 2, 2017

13740544 (P.T.A.B. Oct. 2, 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.
13/740,544 01/14/2013 Fumio Shibata 20130029A 4681
513 7590 10/04/2017
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
EXAMINER
VINEIS, FRANK J
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
10/04/2017 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):
ddalecki@wenderoth.com
eoa@ wenderoth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FUMIO SHIBATA
Appeal 2017-000610
Application 13/740,5441
Technology Center 1700
Before BRADLEY R. GARRIS, BRIAN D. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants are Inamyama Textile Inc., identified as the real party in
interest, and inventor Fumio Shibata. Appeal Br. 2.
2 In our Decision, we refer to the Specification filed January 14, 2013
(“Spec.”); the Final Action mailed September 25, 2015 (“Final Act.”); the
Appeal Brief filed March 16, 2016 (“Appeal Br.”); the Examiner’s Answer
mailed August 11, 2016 (“Ans.”); and the Reply Brief filed October 5, 2016
(“Reply Br.”).
Appeal 2017-000610
Application 13/740,544
The claims are directed to water-repellant, low air-permeable high-
density woven fabric. Claim 1, reproduced below with disputed limitations
italicized, is illustrative of the claimed subject matter:
1. A water-repellant, low air-permeable high-density woven
fabric obtained by applying a water-repellent treatment to a
woven fabric comprising hydrophobic, high twisted
multifilament yarns with a twist coefficient of10000 to 25000 in
a proportion of 50% or more of the surface area of the woven
fabric,
wherein each of the hydrophobic, high twisted
multifilament yams has a thickness of 30 to 150 denier,
wherein each of the hydrophobic, high twisted
multifilament yams comprises a multitude of single yams and
each single yam has a thickness of 0.1 to 3.5 denier,
wherein the water-repellant low air-permeable high-
density woven fabric has an air-permeability of 50 cc/cm2/sec
or less, and a total cover factor of2000 or more, and
wherein the total cover factor is determined based on
picks/inch and denier.
Appeal Br. 22 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Shibata et al. US 4,548,848 Oct. 22, 1985
(“Shibata II”)
Shibata et al. US 5,215,816 June 1, 1993
(“Shibata”)
Kotra et al., Nonwoven Fabrics Polyester Fibers, (April 2004)
http://www.engr.utk.edu/mse/Textiles/Polyester%20fiber.htm (last
visited November 7, 2014) (“Kotra”).
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Application 13/740,544
REJECTIONS
The Examiner maintains and Appellants seek review of the following
rejections under 35 U.S.C. § 103(a): (1) claims 1—6 over Shibata as
evidenced by Kotra; and (2) claims 1—6 over Shibata in view of Shibata II as
evidenced by Kotra. Final Act. 2 and 5.
OPINION
Appellants argue the claims as a group. Appeal Br. 9. We select sole
independent claim 1 as representative of the group. 37 C.F.R.
§ 41.37(c)(l)(iv).
Rejection over Shibata as evidenced by Kotra
The Examiner finds that Shibata teaches a combined (intermingled) or
twisted yam comprising low and high shrinkage filaments used as
continuous polyester filaments. Final Act. 3 (citing Shibata 3:35—40). The
Examiner further finds that Shibata teaches when the yam is twisted, the
number of twists is 1,500 t/m or less, preferably 300-600 t/m with a yam
denier of about 110. Id. (citing Shibata 4:14—19). The Examiner finds the
t/m values disclosed in Shibata are “equivalent to a twist factor of less than
about 26,000,”3 which the Examiner finds is within the claimed range of
twist coefficients. Id. Twist coefficient is calculated in the Specification as
the number of twists per meter multiplied by the square root of the denier.
Spec. 9:25—26.
3 It appears that the Examiner meant “twist coefficient” as stated in claim 1,
rather than “twist factor.” The formula provided in the Specification yields a
twist coefficient of 15,732 for 1,500 t/m with a yam denier of 110.
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Application 13/740,544
The Examiner also finds that Shibata teaches twisted yams having
denier of 50-300 are used for both warp and weft, with a conductive
filament, having denier of about 27 arranged at appropriate intervals, such as
every 0.5—3 cm and exemplifies one conductive filament for every 26 warp
yams. Final Act. 3 (citing Shibata 2:47-61; 4:14-19; and Examples 1-3).
The Examiner determines that more than 50% of the surface area of the
fabric would be the twisted yams used as warp and weft. Id.
Appellants contend that if fabric made with Shibata’s combined
(intermingled) filament yam or twisted yam comprised of continuous low-
shrinkage filaments and continuous high-shrinkage filaments is subjected to
shrinkage, the low-shrinkage filaments form loops on the fabric surface
which prevent penetration of body fluid or blood. Appeal Br. 13. Id. (citing
Shibata 3:35 46). Appellants argue that the yams in Shibata should not
contain high twisted yams because, if such woven fabric is subjected to a
twist setting treatment, loops cannot be formed and the resulting fabric
“would be unfavorable in the activity of repelling body fluid of blood.” Id.
Appellants also argue that high twisted yams are not mentioned or used in
any of the examples in Shibata. Id. at 15. Appellants contend that use of
high twisted monofilament yams in the claimed invention is contrary to
accepted wisdom. Id. at 16, 19 (citing August 21, 2015 Declaration of
Fumio Shibata (“Declaration B” or “Deck B”).
According to Appellants, only a minimum amount of twisted yams
are contained in the fabric of Shibata “to avoid the occurrence of problems
during the weaving step, etc., and for developing an external appearance
thereof.” Id. at 12. Appellants also argue that only a very small amount of
electro-conductive yams are twisted together with the substrate yams and
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Application 13/740,544
thus, a very large percentage of the yards in Shibata woven fabric is not
highly twisted. Because, Appellants argue, the Shibata woven fabric
contains a very small amount of a highly twisted electro-conductive yam, it
fails to satisfy the requirement of claim 1 that the woven fabric comprises
the high twisted monofilament yams “in a proportion of 50% or more of the
surface area of the woven fabric.” Id. at 19.
Appellants’ arguments are unpersuasive. We consider the prior art for
all that it teaches and suggests. Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (“[I]n a section 103 inquiry ... all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”). The question under section 103 is not merely what the
references teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made; all disclosures of the prior art
must be considered. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976); see
also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.”).
Appellants challenge the Examiner’s findings but fail to identify
evidence of record to support the challenge. For example, Appellants do not
point to any passage in Shibata that supports Appellants’ contentions that the
fabric “should not contain high twisted yams”—in contrast to the
Examiner’s identification of Shibata’s disclosure of high twisted
multifilament yams. See Appeal Br. 13. We view some of Appellants’
arguments as directed to Shibata “teaching away” from the claimed
invention: a fabric made from high twisted monofilament yams “would be
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Application 13/740,544
unfavorable in the activity of repelling body fluid or blood” (id.); high
twisted yams are not mentioned or used in any of the examples in Shibata
(id. at 15); the fabric of Shibata would have decreased water repellency
during use and/or during washing (id. at 12); and only a minimum amount of
twisted yams are contained in the fabric of Shibata (id.). None of these
arguments are persuasive, as they fail to address and/or are irrelevant to the
disclosures of Shibata on which the Examiner relies.
Appellants provide no evidence in support of the argument that only
“a minimum amount of twisted yams are contained in the fabric of Shibata.”
See id. at 12. Moreover, Appellants’ argument that only a very small
amount of electro-conductive yams are twisted together with substrate yams
in Shibata, and therefore Shibata fails to satisfy claim 1 ’s requirement that
the woven fabric comprises the high twisted monofilament yams “in a
proportion of 50% or more of the surface area of the woven fabric” (id. at
19) is unpersuasive because the Examiner does not rely on the electro-
conductive yam for the finding that the limitation is disclosed by Shibata
(see Final Act. 3).
Appellants also contend that the use of high twisted multifilament
yams in the claimed invention is contrary to accepted wisdom. Appeal Br.
19 (citing item B of Decl. B). However, the declaration states that the
claimed invention, not use of high twisted multifilament yams, is against
conventional wisdom. Decl. B 7. The evidence does not support the
contention. Appellants repeatedly argue that it is the combination of
features in claim 1 that is critical. Appeal Br. 11, 12, 13, 17, 20.
In addition, the evidence of the declaration must be weighed against
the totality of the prior art, in this case a patent that discloses use of high
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twisted multifilament yams. See In re Hedges, 783 F.2d 1038, 1041 (Fed.
Cir. 1986). We do not find Declaration B persuasive of reversible error in
the Examiner’s finding that Shibata discloses use of high twist yam.
Appellants contend that Kotra fails to provide evidence that polyester
yams have water repellency. Appeal Br. 16. Claim 1 requires that high
twisted multifilament yarn be hydrophobic, and that the woven fabric be
water repellent. Appellants’ argument regarding Kotra is therefore
irrelevant to the patentability of claim 1.
The Examiner finds that Shibata does not teach the cover factor of
claim 1. Final Act. 2-4. Claim 1 requires a total cover factor of 2000 or
more. Appeal Br. 22 (Claims App’x). The Examiner determines that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to optimize the cover factor because it is not inventive to discover
the optimum or workable ranges by routine experimentation. Final Act. 4.
Appellants do not dispute the Examiner’s findings or obviousness
determination regarding the cover factor.
On the record before us the Examiner establishes that claim 1 is prima
facie obvious over Shibata as evidenced by Kotra.
Rejection over Shibata in view of Shibata II as evidenced by Kotra
In the alternative, the Examiner finds that Shibata II teaches a cover
factor of 1,400 to 3,400. Final Act. 6. The Examiner finds that Shibata II
teaches that a cover factor of less than 1,400 exhibits unsatisfactory water-
repellency and greater than 3,400 exhibits undesirable stiffness. Id. The
Examiner determines that one of ordinary skill in the art would have been
motivated to provide a weave with a cover factor of 2000 or more, as
claimed, based on a balancing of water repellency and softness of the end
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fabric. Id. at 7. The Examiner reasons that the skilled artisan would have
combined the cover factor of Shibata II with the teachings of Shibata with a
reasonable expectation of success as both references are directed to woven
fabrics with low air permeability and water repellency, both are formed from
fine denier monofilaments, and both are formed using yams with a denier of
about 75. Id. (citing Shibata 2:47—61 and Example 3; Shibata II Example 1).
Appellants do not dispute the Examiner’s findings or obviousness
determination regarding the cover factor.
The Examiner makes a prima facie case of obviousness of claim 1
over Shibata in view of Shibata II as evidenced by Kotra.
Unexpected Results
An applicant has the burden of establishing “superior,” “surprising,”
and unexpected results. In re Geisler, 116 F.3d 1465, 1469-1470 (Fed. Cir.
1997) (whether evidence shows unexpected results is a question of fact and
party asserting unexpected results has the burden of proving that the results
are unexpected). An examination for unexpected results is a factual,
evidentiary inquiry. In re Inland Steel, 265 F.3d 1354, 1366 (Fed. Cir.
2001).
Appellants argue that the claimed invention exhibits unexpected
results over the closest prior art, Shibata and Shibata II. Appeal Br. 10.
Appellants present evidence in the form of the March 5, 2015 Declaration of
Fumio Shibata (“Declaration A” or “Decl. A”). Id. at 11. The declaration
provides the results of mb resistant water repellency on four samples of
fabric, described as “Fabric of Shibata,” “Fabric of Example 3 of Shibata II,”
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Application 13/740,544
“Fabric of Example 1 of the present specification,” and “Fabric of an
additional example representing the claimed invention.” Decl. A 4—6.
The Examiner finds that the evidence in the declaration is insufficient
to establish unexpected results because (1) it fails to fairly compare the
invention with the prior art; (2) the claims are not commensurate in scope
with the evidence presented; and (3) the results reported are not truly
unexpected in light of contemporaneous art. Ans. 11—12.
As to the first issue, the fabric samples have not had water-repellent
treatment applied, as required by claim 1 and disclosed in Shibata. In
addition, the sample described as “Fabric of Example 1 of the present
specification” differs in several variables from the fabric described in
Example 1 of the Specification, (id. at 12—13), and Appellants fail to offer
any explanation for the differences. Furthermore, the fabric in Example 3 of
Shibata II is “scoured, relaxed, dried, pre-heat set, dyed, dried, water-
repellent treated, dried and heat set” (Shibata II col. 7,11. 44-46), but
Appellants do not indicate whether the fabric tested identified as “Fabric of
Example 3 of Shibata II” has undergone all of these processes other than
treatment with water repellent, which Appellants acknowledge is lacking.
Reply Br. 2.
We agree that comparing an interim product of claim 1 (fabric without
water repellent treatment) with fabrics also having no water repellent
treatment does not fairly compare the claimed invention with the prior art.
See Ans. 14. Appellants provide no evidence regarding what effect water
repellency treatment would have had on the rub resistant water repellency of
the samples tested.
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Nor are the claims commensurate in scope with the evidence proffered
of unexpected results. Appellants provide results of testing on only one
sample each alleged to be representative of Shibata and Shibata II. Appeal
Br. 11 (citing Decl. A). Those results are compared with only two samples
of fabric described as fabric of the claimed invention. Id. The fabrics of the
prior art differ in multiple ways (e.g., denier of warp and weft, number of
twists/meter, number of yams, thickness of a single yam, cover factor) from
the samples alleged to be representative of the claimed invention, yet
Appellants fail to address the effect of these variables on the mb-resistant
water repellency of the fabrics tested. See Final Act. 15—16. Furthermore,
claim 1 allows ranges for the twist coefficient of high twisted multifilament
yams (10,000 to 25,000), the thickness of the high twisted multifilament
yam (30 to 150 denier), and the thickness of single yams (0.1 to 3.5 denier),
but the two samples alleged to compare the prior art with the claimed
invention have identical deniers for the warp and weft, identical number of
single yams in both the warp and weft, and identical thickness of the single
yams in both the warp and weft. Decl. A 4—5.
While an applicant need not show every property is unexpected, an
applicant must show that whatever property they are asserting to be
unexpected is unexpected throughout the claimed ranges, but not outside the
critical ranges. See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003); In
re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005); In re Hill, 284 F.2d 955,
958—59 (CCPA 1960). Appellants contend that the combination of features
in claim 1 is critical. Appeal Br. 11—13, 17, and 20. However, Appellants
do not establish that the other fabrics within the ambit of claim 1 also have
the unexpected property while the fabrics outside the critical ranges do not
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have the unexpected property. See In re Hill, 284 F.2d at 959 (single
comparison was insufficient to establish patentability over the reference; “[a]
sufficient number of tests at various temperatures should have been
presented to clearly show the criticality of the range at which the alleged
unobvious results were obtained.”). While data from which a person of
ordinary skill in the art could ascertain a trend in the exemplified data could
be extended to cover the full scope of the claim {In re Kollman, 595 F.2d 48,
58 (CCPA 1979)), no data disclosing a trend is presented by Appellants.
There is “no adequate basis for reasonably concluding that the great number
and variety of compositions included in the claims would behave in the same
manner as the tested composition,” In re Lindner, 457 F,2d 506, 509
(CCPA 1972) (Evidence of nonobviousness consisted of compari ng a single
composition within the broad scope of the claims with the prior art.).
Appellants’ evidence of unexpected results is not commensurate with the
scope of claim 1.
Finally, the results reported are not truly unexpected in light of
Mhetre. Ans. 17. The Examiner notes that the bulk of the March Shibata
Declaration is directed to the effect that twist coefficient has on the ability of
the fabric to absorb water. Id. (citing Decl. A 7). The Examiner finds that
Mhetre establishes the level of twist is known to influence the absorbency of
the yam, with less twist resulting in more absorbance. Id. The Examiner
therefore finds that the results reported in the March Shibata Declaration are
not unexpected.
Appellants contend that low (water) absorbance is not equal to high
mb-resistant water repellency, citing to portions of Declaration A and the
Specification. Reply Br. 3. Neither the cited portion of Declaration A nor
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the Specification describes any discussion of any difference between
absorbency and rub-resistant water repellency. See Decl. A 6—7; Spec 8:28—
9:7. Appellants consequently provide only attorney argument, which is
insufficient to overcome the Examiner’s prima facie case of obviousness.
See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In reDe
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellants also argue that Mhetre has not been properly cited in a
rejection. Reply Br. 3. There is no rejection depending on Mhetre, therefore
the Examiner has no cause to cite the reference in a rejection. Appellants’
complaint is irrelevant.
On the record before us, the Examiner establishes claim 1 is prima
facie obvious, and Appellants fail to submit sufficient evidence or argument
to rebut it. Dependent claims 2—6 fall with claim 1.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—6 over
Shibata as evidenced by Kotra, and over Shibata in view of Shibata II as
evidenced by Kotra 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)(l)(iv).
AFFIRMED
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