Ex Parte Takaoka

Board of Patent Appeals and Interferences

Feb 3, 2009

10221568 (B.P.A.I. Feb. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NOBUYUKI TAKAOKA
__________

Appeal 2008-4886
Application 10/221,568
Technology Center 1700
____________

Decided:1 February 03, 2009
____________

Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims

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 2008-4886
Application 10/221,568

2, 3, 11, 22-24, and 28. We have jurisdiction over the appeal pursuant to 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.2
INTRODUCTION
Appellant claims a three-dimensional netted structure (e.g., claim 2).
The three-dimensional netted structure may be used as cushioning material,
but may be used for a variety of other uses, such as moisture absorbing
material, sound absorbing material, wall surface material, or a roof garden
material (Spec. 1, 13).
Claims 2, 3, 11, and 28 are illustrative:
2. A three-dimensional netted structure comprising:

a netted structure being manufactured by preparing a thermoplastic
resin as a raw material or a main raw material; and

a plurality of hollow portions which are spaced apart and formed in
said netted structure,

wherein said hollow portions extend within said netted structure from
one end to another end of said netted structure,

wherein said resin is formed into a plurality of helically and randomly
entangled, partly and thermally bonded filaments by extrusion molding,

wherein said filaments are cooled with a liquid so as to obtain said
netted structure having said hollow portions arranged continuously in a
material extruding direction, and

wherein said netted structure is a three-dimensional plate type netted
structure having an apparent density of 0.02 to 0.9 g/cm3.

3. A three-dimensional netted structure comprising:

2 An oral hearing was held in this appeal on January 15, 2009.
2
Appeal 2008-4886
Application 10/221,568

a netted structure being manufactured by preparing a thermoplastic
resin as a raw material or a main raw material; and
a sheet which is included in an internal portion of said netted
structure,

wherein said sheet is formed in a wavy pattern and extends from one
end to another end of said netted structure,

wherein said resin is formed into a plurality of helically and randomly
entangled, partly and thermally bonded filaments by extrusion molding,

wherein said filaments are cooled with a liquid so as to obtain said
netted structure which includes said sheet having a percentage of void of
zero continuously in a material extruding direction, thereby forming said
sheet into said wavy pattern in said netted structure in said material
extruding direction, and

wherein said netted structure is a three-dimensional plate type netted
structure having an apparent density of 0.02 to 0.9 g/cm3.

11. A three-dimensional netted structure comprising:

a netted structure being manufactured by preparing thermoplastic
resin as a raw material or a main raw material containing a brittleness-
causing raw material,

wherein said resin is formed into a plurality of helically and randomly
entangled, partly and thermally bonded filaments by extrusion molding,

wherein said filaments are extruded along a plane in a single direction
to form said netted structure,

wherein said filaments upon being extruded are cooled with a liquid
so as to obtain a netted structure having hardened filaments, and

wherein said netted structure is brittle and can be fractured by
applying an external force of a predetermined amount thereto.

3
Appeal 2008-4886
Application 10/221,568

28. A three-dimensional netted structure comprising:
a netted structure being manufactured by preparing a thermoplastic
resin as a raw material or a main raw material,

wherein said netted structure includes an inner region having a
predetermined apparent density and an outer peripheral region adjacent said
inner region having an apparent density higher than said predetermined
apparent density,

wherein said resin is formed into a plurality of helically and randomly
entangled, partly and thermally bonded filaments by extrusion molding,

wherein said filaments are cooled with a liquid so as to obtain said
netted structure having said inner region and said outer peripheral region
arranged continuously in a material extruding direction, and

wherein said netted structure is a three-dimensional plate type netted
structure having said predetermined apparent density and said apparent
density greater than said predetermined apparent density of 0.02 to 0.9
g/cm3.

The Examiner relies on the following prior art reference as evidence
of unpatentability:
Isoda 5,639,543 Jun. 17, 1997

The rejections provided by the Examiner are as follows:
1. Claim 3 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
2. Claim 3 is rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the subject matter

4
Appeal 2008-4886
Application 10/221,568

which applicant considers to be the invention.3
3. Claims 2, 3, 11, 22-24, and 28 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 Isoda.

Appellant argues all the claims separately. Accordingly we address each
rejection with respect to each separately argued claim.

35 U.S.C. § 112, FIRST PARAGRAPH, REJECTION: LACK OF
WRITTEN DESCRIPTION & 35 U.S.C. § 112, SECOND PARAGRAPH,
REJECTION: INDEFINITENESS

The Examiner contends that the phrase “a sheet which is included in
an internal portion of said netted structure” lacks written description and
renders claim 3 indefinite (Ans. 3). With regard to the written description
issue, the Examiner contends that there is no disclosure with regard to
providing a separate sheet (Ans. 3). With regard to the indefiniteness issue,
the Examiner contends that it is unclear if the “sheet” feature provides an
additional layer within the three-dimensional netted structure or provides for
a variation in density (Ans. 3).
Appellant argues that the Specification describes that the sheet is a
non-void carrying region which is part of the netted structure (App. Br. 6).
Appellant further argues that its clear from the claims and the Specification
what is intended by Appellant’s “sheet” feature of claim 3 (App. Br. 7).

3 The Examiner withdrew the 35 U.S.C. § 112, second paragraph, rejection
of claim 11 (Ans. 2).
5
Appeal 2008-4886
Application 10/221,568

ISSUE
Has Appellant shown that the Examiner reversibly erred in
determining that the claim feature “a sheet which is included in an internal
portion of said netted structure” fails to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph, and fails to particularly
point out the subject matter which Appellant regards as the invention as
required by 35 U.S.C. § 112, second paragraph? We answer these questions
in the affirmative.

PRINCIPLES OF LAW
The fundamental factual inquiry in determining whether a claimed
invention satisfies the written description requirement of 35 U.S.C. § 112,
first paragraph, is whether the specification conveys with reasonable clarity
to those skilled in the art that, as of the filing date sought, the applicant was
in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The claimed subject matter need
not be described in haec verba in the specification in order for that
specification to satisfy the description requirement. In re Smith, 481 F.2d
910, 914 (CCPA 1973). The PTO has the initial burden of presenting
evidence or reasons why persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the claims. In re
Wertheim, 541 F.2d 257, 263-64 (CCPA 1976).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
6
Appeal 2008-4886
Application 10/221,568

FACTUAL FINDINGS (FF)
1. The Specification discloses the Figure 3A and 3B embodiments in
which a “sheet 9A (non-void-carrying region)” is formed in a
predetermined widthwise extending inner portion of the three-
dimensional netted structure (Spec. 16).
2. The Specification further discloses that “[a]round the sheet 9A,
filaments (resin threads) are entangled with one another” (Spec. 16).
3. The Specification further discloses that the sheet 9A may be in a wave
form as show in Figure 3B (Spec. 16).
4. The sheet 9A can be provided partly in a predetermined position in the
lateral direction in the embodiment by forming the sheet and the other
region by different extrusion molding machines through different
paths (Spec. 29).

ANALYSIS
The Examiner’s § 112, first paragraph, rejection is based on the
Specification being devoid of “literal support” for the “sheet” feature (Ans.
6). However, the claimed subject matter need not be described in haec
verba in the Specification in order to satisfy the description requirement.
Smith, 481 F.2d at 914. The claimed subject matter may be supported by
express, implicit or inherent disclosure in the Specification.
In fact, Appellant’s Specification describes that the sheet is a non-void
carrying region and may be formed by a separate extrusion process with the
netted structure being formed on either side of the extruded sheet (FF 1-4).
Accordingly, we determine that Appellant’s Specification conveys that
7
Appeal 2008-4886
Application 10/221,568

Appellant had possession of the “sheet” claim feature at the time the
invention was made.
Likewise, based on FF 1 to 4, we determine that one of ordinary skill
in the art would understand what is being claimed with regard to the “sheet”
feature so as to comply with 35 U.S.C. § 112, second paragraph.
Specifically, one of ordinary skill in the art would understand that a sheet
(i.e., a non-void carrying region) may be formed by an extruder and the
entangled filaments are attached to the sheet (FF 2 and 4).
Accordingly, we reverse the Examiner’s § 112, first paragraph,
rejection of claim 3 as failing to comply with the written description
requirement and the § 112, second paragraph, rejection of claim 3 as failing
to particularly point and distinctly claim the subject matter which Appellant
regards as the invention.

35 U.S.C. §§ 102(b)/103(a) REJECTIONS OVER ISODA

CLAIMS 2, 22, 11, 24
With regard to claims 2 and 22, Appellant argues that Isoda fails to
teach or suggest the claimed apparent density range or the claimed plurality
of hollow portions (App. Br. 8 and 9). With regard to claims 11 and 24,
Appellant argues that the following claim features are not taught or
suggested by the prior art: (1) the apparent density range4; (2) the filaments
are extruded along a plane to form the netted structure; and (3) the hardened

4 Appellant’s argument regarding the apparent density range and claim 11
appears misplaced because claim 11 contains no recitation of an apparent
density range.
8
Appeal 2008-4886
Application 10/221,568

filaments which cause the netted structure to be brittle in a manner to permit
it to be fractured by applying an external force of a predetermined amount
thereto (App. Br. 8-10).
The Examiner contends that Isoda discloses an apparent density range
that overlaps with Appellant’s claimed range (Ans. 4 and 7). The Examiner
further contends the claimed “hollow portions” include the spaces formed
between the entangled filaments of Isoda’s structure because no size or
shape of the hollow portions is claimed (Ans. 7-8).
With regard to claims 11 and 24, the Examiner contends that Isoda
illustrates extruding filaments in a single direction, and that Isoda’s net
structure with thermoplastic filaments is capable of fracturing with the
application of sufficient external force (Ans. 8-9).

ISSUE
Based upon Appellant’s arguments and the Examiner’s contentions,
the issue presented is: did Appellant show that the Examiner reversibly
erred in determining that Isoda taught or suggested the argued claim features
(i.e., apparent density, the hollow portions, and the brittle material)? We
answer this question in the negative.

PRINCIPLES OF LAW
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Anticipation is the
‘epitome of obviousness’. In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982).
9
Appeal 2008-4886
Application 10/221,568

The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). For a prima facie case of
obviousness all of the claim features must be taught or suggested by the
applied prior art. In re Royka, 490 F.2d 981, 985 (CCPA 1974).

FACTUAL FINDINGS (FF)
5. Isoda discloses a cushioning net structure made from thermoplastic
elastomer which is superior in durability and cushioning property
(col. 1, ll. 5-10).
6. Isoda discloses the net structure has an apparent density of 0.005-
0.20 g/cm3 (col. 2, ll. 33-34).
7. Isoda’s Examples 4, 5, and 6 of the net structure have apparent
densities that fall within the claimed apparent density range (col. 11-
col. 12, Table 2).
8. Isoda discloses that the net structure is made of fibers formed into
three-dimensional random loops which are heat bonded together
(col. 2, ll. 34-40).
9. Isoda discloses that the loops (3) of the fibers are bonded to one
another and the sectional shape may have a hollow profile (col. 6,
ll. 35-40, 65-67; Fig. 1).
10. Isoda discloses that the net structure may be formed by discharging
(e.g., extruding) molten thermoplastic elastomer in a downward
10
Appeal 2008-4886
Application 10/221,568

direction through a nozzle 5 with a plurality of orifices and solidifying
the fibers with a cooling unit (col. 7, ll. 37-45; Fig. 2).
11. Isoda discloses the netted structure may be made of a blend of
thermoplastic elastomer and non-elastic thermoplastic polymer as
desired (col. 3, ll. 19-25; col. 4, ll. 43-45; col. 7, ll. 40-42).
12. Isoda discloses that the non-elastic materials undergo plastic
deformation and recovery cannot be achieved (i.e., they undergo
permanent deformation) (col. 6, ll. 45-49).

ANALYSIS
Based on the above findings of fact, we agree with the Examiner that
Isoda anticipates or would have rendered obvious the claimed invention.
Specifically, contrary to Appellant’s argument, Isoda discloses an apparent
density range (i.e., 0.005-0.2 g/cm3) that overlaps with Appellant’s claimed
range (i.e., .02 to 0.9 g/cm3) (FF 6). Moreover, Isoda discloses specific
examples having apparent densities that fall within the claimed range (FF 7).
Accordingly, we determine that Appellant’s argument regarding the apparent
density lacks persuasive merit.
Appellant argues that Isoda fails to teach the “hollow portions” claim
feature. However, the Examiner makes a reasonable interpretation that the
looped structure of Isoda’s net structure would constitute “hollow portions”
that satisfy the claim requirements (Ans. 7-8). As the Examiner correctly
indicates, the claim does not require any size for the claimed “hollow
portions” (Ans. 7). We further note that the Specification does not define
“hollow portions.” Accordingly, the Examiner’s interpretation of “hollow
11
Appeal 2008-4886
Application 10/221,568

portions” appears reasonable, and Appellant has not persuaded us that the
“hollow portions” claim feature is not taught or suggested by Isoda.
Regarding claim 11, Appellant argues that Isoda fails to teach
extruding filaments along a plane in a single direction to form the net
structure (App. Br. 9). However, Isoda plainly discloses discharging
filaments and subsequently entangling them to form the net structure
(FF 10). Appellant’s argument is without persuasive merit.
Regarding the argued “brittle” feature of claim 11, the Examiner
properly finds that Isoda’s filaments need only be capable of fracturing upon
application of a predetermined external force (Ans. 9). Additionally the
Examiner properly construes the claim 11 phrase “preparing a thermoplastic
resin as a raw material or a main raw material containing a brittle-causing
raw material”(emphasis added) as requiring the net structure be made of
either a thermoplastic resin or a main raw material containing a brittle-
causing raw material (Ans. 9). In other words, the Examiner determines that
the net structure may be made of a thermoplastic material without brittle-
causing raw material that would break or fracture when a sufficient external
force of a predetermined amount is applied thereto.5 Appellant has not
shown any error with the Examiner’s claim construction. Accordingly, we
agree with the Examiner’s construction.
We add that Isoda discloses that the net structure may be made of
elastic and non-elastic thermoplastic materials (FF 11). Isoda discloses that
non-elastic materials undergo plastic deformation and recovery cannot be
achieved (FF 12). In other words, Isoda discloses that the non-elastic

5 Appellant conceded at the hearing that claim 11 includes the Examiner’s
claim construction (Transcript 7-8).
12
Appeal 2008-4886
Application 10/221,568

materials undergo permanent deformation, which reasonably includes
breakage of the material when a sufficient predetermined force is applied.
For this additional reason, we determine that Isoda teaches or would have
suggested the argued claim feature.
Therefore, we affirm the Examiner’s §§ 102(b)/103(a) rejections of
claims 2, 11, 22, and 24 over Isoda.

CLAIMS 3, 23, AND 28
Appellant argues that Isoda does not teach or suggest within an
internal portion of the netted structure, a sheet which is formed in a wavy
pattern and extends from one end to the other end of the netted structure as
recited in claims 3 and 23 (App. Br. 9). Appellant further argues that Isoda
does not teach or suggest inner and outer peripheral regions having apparent
different densities in the netted structure as recited in claim 28 (App. Br. 10-
11).
With regard to claims 3 and 28, the Examiner determines that it would
have been obvious to vary the density in the inner and outer regions of the
three-dimensional netted structure to suit the desired use of the netted
structure (Ans. 8 and 9). The Examiner cites to column 9, lines 13-40 as
teaching to vary different parameters of the device depending upon the
purpose of the end use (Ans. 8) and relies on In re Aller, 220 F.2d 454
(CCPA 1955) to support that such density and pattern variation would have
been obvious.

13
Appeal 2008-4886
Application 10/221,568

ISSUE
Did Appellant show that the Examiner reversibly erred in determining
that the disputed features of claims 3, 23, and 28 would have been obvious
based on Isoda’s teaching to vary different parameters to suit the desired end
use? We answer this question in the affirmative.

PRINCIPLES OF LAW
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.
Schreiber, 128 F.3d at 1477.
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.
Oetiker, 977 F.2d at 1445. For a prima facie case of obviousness all the
claim features must be taught or suggested by the applied prior art.
Royka, 490 F.2d at 985

FACTUAL FINDINGS (FF)
13. Isoda at column 9, lines 13-40 discloses resin material, fineness, loop
diameter and bulk density should be selected depending on the
purpose of use and where the net structure cushioning material is to be
used (col. 9, ll. 13-40).

ANALYSIS
With regard to the § 102(b) portion of the rejection of claims 3, 23,
and 28, the Examiner has not established that Isoda discloses the “sheet”
(claims 3 and 23) or peripheral density variation (claim 28) features so as to
14
Appeal 2008-4886
Application 10/221,568

anticipate the claims. Rather, the Examiner plainly bases unpatentability on
the obviousness of the invention recited in claims 3, 23, and 28 (Ans. 4, 5, 8,
and 9). Accordingly, we must reverse the Examiner’s § 102 rejection of
claims 3, 23, and 28 over Isoda.
Regarding the § 103 rejection of claims 3, 23, and 28, the Examiner’s
prima facie case of obviousness is premised on varying the pattern or density
of the net structure based on the end use (Ans. 4, 5, 8, and 9). However, the
column 9, lines 13-40 portion of Isoda cited by the Examiner as supporting
the variation in density refers to the “bulk density” (i.e., the overall density)
of the net structure, not a variation in density within portions of the net
structure as would be required to achieve a “sheet” or variation in density
from inner to outer portions as required by claims 3 and 28, respectively.
The Examiner has failed to cite to any portion of Isoda that establishes
that it would have been obvious to vary the density within the net structure
to form a “sheet” or a variation in the apparent density from an inner and
outer portion of the net structure. Moreover, the Examiner’s reliance on
Aller as a basis for optimizing the variation in density is misplaced because
the Examiner has not established that the general conditions of the claim are
disclosed in Isoda.
For the above reasons, we determine that the Examiner has failed to
establish a prima facie case of obviousness because all of the claim features
have not been shown to be disclosed by Isoda. Accordingly, we reverse the
Examiner’s § 103 rejection of claims 3, 23, and 28 over Isoda.

15
Appeal 2008-4886
Application 10/221,568

DECISION
We reverse the Examiner’s § 112, first paragraph, rejection of claim 3
as failing to comply with the written description requirement.
We reverse the Examiner’s § 112, second paragraph, rejection of
claim 3 as failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention.
We affirm the Examiner’s §§ 102(b)/103(a) rejection of claims 2, 11,
22, and 24 over Isoda.
We reverse the Examiner’s §§ 102(b)/103(a) rejection of claims 3, 23,
and 28 over Isoda.
The Examiner’s decision is Affirmed-In-Part.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED-IN-PART

ssl

MATTINGLY, STANGER, MALUR & BRUNDIDGE, P.C.
1800 DIAGONAL ROAD
SUITE 370
ALEXANDRIA, VA 22314
16