Ex Parte Tanaka et al

Patent Trials and Appeals Board

Mar 27, 2019

13203582 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/203,582 10/14/2011 Jiro Tanaka
22850 7590 03/29/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
380906US99PCT 8808
EXAMINER
MCKINNON, LASHAWNDA T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIRO TAN AKA and TSUYOSHI YAMASAKI
Appeal2017-006790
Application 13/203,582
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-006790
Application 13/203,582
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1, 3, 10-15, and 21. We have jurisdiction under 35 U.S.C. § 6(b ). A hearing
was held on March 12, 2019.
We affirm-in-part.
CLAIMED SUBJECT MATTER
"The present invention relates to glossy artificial leathers and a
production method thereof and also relates to entangled filament webs
comprising microfine fiber forming filaments." Spec. ,r 1. 3 Claims 1 and 10,
reproduced below, are illustrative of the claimed subject matter:
1. An artificial leather, comprising:
a base layer; and
a surface layer formed on one surface of the base layer,
wherein
the base layer comprises at least one bundle of at least
one microfine filament and an elastic polymer consisting
essentially of a polyurethane elastomer,
the surface layer comprises at least one microfine
filament or comprises at least one microfine filament and the
elastic polymer,
the surface layer is substantially free of bundles of the at
least one microfine filament,
the microfine filament in the surface layer is oriented in
the same direction, and
1 The real party in interest is identified as "Kuraray Co., Ltd." Appeal Brief
of October 10, 2016 ("Br."), 1.
2 Final Office Action of May 18, 2016 ("Final Act."). In this Opinion, we
also refer to the Examiner's Answer of January 26, 2017 ("Ans.") and the
Reply Brief of March 27, 2017 ("Reply Br.").
3 Application No. 13/203,582, Artificial Leather, Entangled Web of Long
Fibers Filaments and Processes for Producing These ("Spec.").
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Application 13/203,582
the artificial leather has metallic gloss and satisfies
an equation:
X/Y 2: 1.5
where
X is the number of cut ends of the at least one microfine
filament in a region from a surface to a 20 µm depth in a first
cross section of the artificial leather,
Y is the number of cut ends of the at least one microfine
filament in a region from a surface to a 20 µm depth in a second
cross section perpendicular to the first cross section, and
X>Y.
10. A method of producing an artificial leather, the
method comprising, sequentially:
(1) producing a filament web comprising at least one
microfine fiber-forming filament;
(2) producing an entangled filament web by entangling
the filament web;
(3) producing an entangled non-woven fabric by
converting the at least one microfine fiber-forming filament in
the entangled filament web to bundles of at least one microfine
filament;
( 4) impregnating an elastic polymer consisting essentially
of a polyurethane elastomer into the entangled non-woven
fabric; and
( 5) forming a surface layer by napping the at least one
microfine filament in the bundles on a surface of the entangled
non-woven fabric to obtain at least one napped microfine
filament and then ordering the at least one napped microfine
filament, or by ordering the bundles on the surface of the
entangled non-woven fabric and then napping the at least one
microfine filament in the bundles, such that the artificial leather
has metallic gloss,
wherein the napping and the ordering are conducted by
brushing the surface of the entangled non-woven fabric with a
roll comprising a brushing tool having a roughness
corresponding to 280 to 1200 mesh of a sandpaper, thereby
winding up the entangled nonwoven fabric at a speed of 3 to 20
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m/min while rotating the roll at a speed of 200 to 800 rpm, such
that the surface layer comprises the at least one microfine
filament or comprises the at least one microfine filament and
the elastic polymer, that the surface layer is substantially free of
bundles of the at least one microfine filament, that the
microfine filament in the surface layer is oriented in the same
direction, and that the surface layer satisfies an equation:
X/Y?. 1.5
where
Xis the number of cut ends of the at least one micro fine
filament in a region from a surface to a 20 µm depth in a first
cross section of the artificial leather,
Y is the number of cut ends of the at least one microfine
filament in a region from a surface to a 20 µm depth in a second
cross section perpendicular to the first cross section, and
X>Y.
Claims Appendix.
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Derville
Thomaschefsky
Yasuda
Fujisawa
Tanaka
Nakayama
us 3,860,472
US 2005/0136777 Al
WO 2005/124002 Al
WO 2007 /069628 Al
WO 2006/040992 Al
WO 2007/040144 Al
REJECTIONS
Jan. 14, 1975
June 23, 2005
Dec. 29, 2005
June 21, 2007
Apr. 20, 2006
Apr. 12, 2007
Claims 1, 3, 10, 11, and 15 are rejected underpre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Nakayama in view of Thomaschefsky.
Final Act. 3.
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Claims 12-14 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Nakayama in view of Thomaschefsky, in further view of
Fujisawa, Derville, and Tanaka. Final Act. 6.
Claims 10 and 21 are rejected underpre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Yasuda in view of Thomaschefsky as evidenced by
Nakayama. Final Act. 8.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections.")). After having
considered the evidence presented in this Appeal and each of Appellants'
contentions, we are not persuaded that Appellants identify reversible error,
and we affirm the Examiner's§ 103 rejections for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
Rejection of Claim 10 over Nakayama in view ofThomaschefsky 4
A process claim - such as claim 10 at issue here - is patentably
distinguished when the record shows that the prior art does not teach or
suggest all the process steps. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir.
4 Because Appellants do not argue claims 11 and 15 separately, they stand or
fall with claim 10 for the rejection over Nakayama in view of
Thomaschefsky. Br. 3-11, 14--15; see also 37 C.F.R. § 4I.37(c)(l)(iv).
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1988). In this case, Appellants do not dispute the Examiner's finding that
Nakayama teaches all the process steps in claim 10 including the step of
"forming a surface layer by napping the at least one microfine filament in
the bundles on a surface of the entangled non-woven fabric .... " Compare
Final Act. 3--4, with Br. 7-9; compare Ans. 11-12 (citing various parts of
Nakayama including ,r 12), with Reply Br. 2-3. Appellants, however, argue
that the Examiner reversibly erred in rejecting claim 10 because the prior art
reference Nakayama "would not be conducted to provide" an artificial
leather with the "metallic gloss" satisfying the recited characteristic X/Y 2:
1.5. Br. 7; see also Reply Br. 2 (arguing that Nakayama does not teach or
suggest a method "to obtain the specific results as recited").
Where, as here, "the claimed and prior art products ... are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product." In re Best, 562 F.2d
1252, 1255 (CCPA 1977). This Appellants have not shown. The
comparative sample of artificial leather provided by Appellants is not
produced by the method described in Nakayama and therefore cannot
distinguish Nakayama. See Ans. 11 (finding that "the comparative sample is
not that of the prior art of record and therefore is not relevant"). 5 The
declaration by inventor Mr. Jiro Tanaka merely states that "the artificial
leathers described in Nakayama are similar to those of Comparative
Examples 1 and 2 of the specification" and that "Nakayama does not
5 Samples were presented during oral argument and counsel for Appellants
acknowledged that the comparative sample was not manufactured using
Nakayama's process.
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describe that the artificial leather has metallic gloss, nor does it mention or
suggest any relationship between metallic gloss and bundles of microfine
filaments or orientation of microfine filaments in the artificial leather."
Declaration by Mr. Jiro Tanaka ,r 6. The declaration therefore does not
distinguish the process steps, nor does it show that an artificial leather with
the recited characteristics is not necessarily produced by Nakayama's
modified process.
We further note that the Specification at issue here provides that
"[t]he method of napping the microfine filaments in the fiber bundles and
ordering the napped microfine filaments simultaneously is not particularly
limited[.]" Spec. ,r 68. The Specification goes on to provide that devices
such as "sandpaper [is] used as the brushing tool" and "the surface of the
entangled non-woven fabric is brushed by a roll wound with a brushing
tool." Id. The Examiner's undisputed finding that Nakayama teaches the
recited step of "forming a surface layer by napping the at least one microfine
filament in the bundles on a surface of the entangled non-woven fabric" is
therefore supported by Appellants' own Specification. See Final Act. 3--4
(citing Nakayama example 8, ,r,r 46, 83, 85, 86 for the use of sandpaper to
nap and arrange the fabric surface and other teachings).
Appellants likewise do not dispute the Examiner's finding regarding
Nakayama's teaching that "the average cross-sectional area of microfine
mono fibers, the average cross-sectional area of bundles of microfine fibers
and the existence density of bundles of microfine fibers" are "important"
parameters of the artificial leather. See Nakayama ,r,r 41--43; compare Final
Act. 4 (citing Nakayama ,r,r 11, 13, 17, 31, 73), with Br. 6-9. We are
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therefore unpersuaded that reversible error has been identified in the
Examiner's evaluation of Nakayama.
Appellants also do not dispute the Examiner's finding that
Thomaschefsky teaches the recited napping conditions. Compare Final Act.
5 (citing various parts in Thomaschefsky), with Br. 10-11. Appellants'
argument regarding whether a skilled artisan would combine Nakayama with
Thomaschefsky does not address ( and therefore does not dispute) the
Examiner's finding that both references are directed to abrading (e.g.,
sanding) a non-woven fabric for character treatment. Compare Final Act. 5,
with Br. 10-11. Appellants do not respond to the Examiner's analysis that
the use of Thomaschefsky's fabric as a wipe would not preclude the skilled
artisan from combining with Nakayama the teaching of the specific napping
conditions. Compare Ans. 14, with Reply Br. 2-5. Because the Examiner's
"articulated reasoning with some rational underpinning" in support of the
rejection is unchallenged, we are unpersuaded that reversible error has been
identified. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ( quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Appellants next argue that the Examiner reversibly erred in finding
that "impregnating an elastic polymer consisting essentially of a
polyurethane elastomer" recited in claim 10 is taught by Nakayama's
disclosure of using 30 to 100 mass% of a polymer of ethylenically
unsaturated monomer in combination with polyurethane. Br. 11; see also
Nakayama ,r 73. Appellants argue that Nakayama teaches away from "an
elastic polymer consisting essentially of a polyurethane elastomer" because
it states certain disadvantages if the polymer of ethylenically unsaturated
monomer is less than 30 mass%. Id.
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To the extent Appellants' argument is that "consisting essentially of'
should be construed to exclude the 30 to 100 mass% of a polymer of
ethylenically unsaturated monomer, Appellants have not established that
including 30 to 100 mass% of a polymer of ethylenically unsaturated
monomer materially affects the basic and novel properties of the invention.
See PPG Indus. v. Guardian Indus. Corp, 156 F.3d 1351, 1354 (Fed. Cir.
1998) ("By using the term 'consisting essentially of,' the drafter signals that
the invention necessarily includes the listed ingredients and is open to
unlisted ingredients that do not materially affect the basic and novel
properties of the invention."). We are therefore not persuaded that the
Examiner reversibly erred here.
Rejection of Claim 1 over Nakayama in view of Thomaschefsky 6
In rejecting claim 1 over Nakayama and Thomaschefsky, the
Examiner finds that "Nakayama discloses making the artificial leather by the
claimed process using the same materials" and concludes that "it would be
reasonable to expect the artificial leather of Nakayama would satisfy the
claimed equation" as recited in claim 1. Final Act. 4. As we noted earlier,
where, as here, "the claimed and prior art products ... are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product." In re Best, 562 F.2d at
1255.
6 Because Appellants do not argue claim 3 separately, it stands or falls with
claim 1 for the rejection over Nakayama in view of Thomaschefsky. Br. 12-
15; see also 37 C.F.R. § 4I.37(c)(l)(iv).
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Appellants' various arguments that Nakayama's process "will likely"
lead to certain outcomes are not supported by evidence. See Br. 13-14 (for
example, asserting that the microfine filaments in Nakayama's process "will
likely not be separated," that "the elastic polymer will likely strongly adhere
to the fibers" and that "[i]t would be expected that the microfine filaments in
Nakayama's artificial leather ... are fixed to each other"). Such attorney
arguments do not constitute evidence and thus do not support a finding that
the claimed method is patentably distinct from Nakayama's method, as
modified by Thomaschefsky. Johnston v. IVAC Corp., 885 F.2d 1574, 1581
(Fed. Cir. 1989) ("Attorneys' argument is no substitute for evidence.").
Appellants' arguments are therefore unpersuasive of reversible error.
Rejection of Claims 12-14
Appellants' sole argument for claims 12-14 is that the additional cited
references "do not remedy the deficiencies" of Nakayama and
Thomaschefsky. Br. 15. For the reasons set forth above, there are no
deficiencies in the combination of Nakayama and Thomaschefsky that
require curing by any of the additional cited references. Therefore, we
sustain the rejection of claims 12-14 based on the analysis for claims 1 and
IO supra.
Rejection of Claim 10 over Yasuda, Nakayama, and Thomaschefsky
Appellants' sole argument for the rejection of claim 10 over Yasuda,
Nakayama, and Thomaschefsky is that none of the references teaches or
suggests the step of "forming a surface layer by napping the at least one
micro fine filament in the bundles on a surface of the entangled non-woven
fabric" to produce an artificial leather satisfying the recited correlation of
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"X/Y 2: 1.5." Br. 15-16. We sustain the rejection of claim 10 based on the
analysis for claim 10 over Nakayama and Thomaschefsky supra.
Rejection of Claim 21 over Yasuda, Nakayama, and Thomaschefsky
Claim 21 depends from claim 10 and further recites "wherein the
method consists of the producing (1 ), the producing (2), the producing (3),
the impregnating (4), and the forming (5)." Appellants state that Nakayama
teaches the prior art "fibers are buffed before and after being impregnated
with an elastic polymer." Br. 16. Thus, "[u]pon viewing Nakayama,"
Appellants argue that "a skilled artisan would not have been motivated to
produce an artificial leather solely by the steps of ( 1) to ( 5)," so that buffing
is only performed after impregnation as recited in claim 21. Br. 17.
The record before us lacks evidence in support of the rejection of
claim 21. See Final Act. 8-10 (rejecting claims 10 and 21 as a group without
separately addressing the claim limitation "consisting of' of claim 21 ); see
also Ans. 16 (stating that "the fibers ofNakaya would not be expected to be
fixed to each other and would be ordered based on the teachings of
Nakayama without specifically addressing the claim limitation "consisting
of' of claim 21 ). We accordingly do not sustain the rejection of claim 21.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the
Examiner bears the initial burden of presenting a prima facie case of
unpatentability ).
DECISION
The Examiner's decision to reject claims 1, 3, and 10-15 is affirmed.
The Examiner's decision to reject claim 21 is reversed.
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AFFIRMED-IN-PART
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