Global Strategies, Inc.Download PDFPatent Trials and Appeals BoardMar 16, 20222021001610 (P.T.A.B. Mar. 16, 2022) Copy Citation 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. 15/131,735 04/18/2016 Bruce A. Williams GSI 15.01 9869 27667 7590 03/16/2022 HAYES SOLOWAY P.C. 4640 E. Skyline Drive TUCSON, AZ 85718 EXAMINER PIZIALI, ANDREW T ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 03/16/2022 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): admin@hayes-soloway.com dlandau@hayes-soloway.com nsoloway@hayes-soloway.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUCE A. WILLIAMS Appeal 2021-001610 Application 15/131,735 Technology Center 1700 Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-6, 21, and 23-26 of Application 15/131,735, which constitute all the claims pending in this application. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. 1 In our Decision, we refer to the Specification (“Spec.”) of Application 15/131,735 filed Apr. 18, 2016 (“the ’735 App.”); the Final Office Action dated Apr. 7, 2020 (“Final Act.”); the Appeal Brief filed Aug. 25, 2020 (“Appeal Br.”); the Examiner’s Answer dated Nov. 2, 2020 (“Ans.”); and the Reply Brief filed Jan. 4, 2021 (“Reply Br.”). 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Global Strategies, Inc. as the real party in interest. Appeal Br. 2. Appeal 2021-001610 Application 15/131,735 2 BACKGROUND The subject matter of the invention relates to “high-strength ribbon- woven fabrics constructed of ribbon-woven recycled polyethylene terephthalate.” Spec. 3, ll. 9-10. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, illustrates the claimed subject matter: 1. A puncture-resistant fabric having a high tear strength, the fabric comprising: a sheet formed of crossed woven flat ribbons, the ribbons formed from recycled polyethylene terephthalate (RPET); and at least one non-woven laminate film formed from RPET and at least one additive, wherein the at least one additive comprises at least one of: ethylene, acrylic ester, and maleic anhydride terpolymer, and wherein the at least one non-woven laminate film is laminated to at least one side of the sheet with a heat bonding lamination process, whereby the at least one non- woven laminate film bonds to the at least one side of the sheet. REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Name Reference Date Kolouch et al. (“Kolouch”) US 4,409,167 Oct. 11, 1983 Williams et al. (“Williams”) US 7,510,327 B2 Mar. 31, 2009 Kern et al. (“Kern”) US 2006/0004114 A1 Jan. 5, 2006 Nyckowski et al. (“Nyckowski”) US 2014/0158560 A1 June 12, 2014 REJECTIONS The Examiner maintains the following rejections: Appeal 2021-001610 Application 15/131,735 3 1. Claims 1-6, 21, and 23-26 under 35 U.S.C. § 112(b) as indefinite. Final Act. 2. 2. Claims 1-6, 21, and 23-26 under 35 U.S.C. § 103 as obvious over Nyckowski in view of Williams, Kolouch, and Kern. Final Act. 3-5. 3. Claims 1-6, 21, and 23-26 under 35 U.S.C. § 103 as obvious over Williams in view of Nyckowski, Kolouch, and Kern. Final Act. 5-7. DISCUSSION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. 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 considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Rejection of claims under 35 U.S.C. § 112(b) as indefinite The Examiner finds that the phrase “high tear strength” renders the claims indefinite. Final Act. 2. The Examiner finds that Appellant’s argument that RPET has “properties that can vary substantially such that the eventual RPET fabric formed from these recycled materials would also have properties which can vary” supports the conclusion of indefiniteness, as it Appeal 2021-001610 Application 15/131,735 4 suggests that the tear strength for one RPET composition is different from the tear strength for another RPET composition. Ans. 9 (quoting Appeal Br. 10-11). Appellant argues that one of ordinary skill in the art would “recognize that the tear strength properties of the fabric are high” upon reading the Specification’s discussion of testing “in relation to grab strength per ASTM D5034, trapezoidal tear strength per ASTM D5587, burst strength per ASTM D3786, and others.” Appeal Br. 10, 11. Appellant argues that providing an exact numerical delineation of “high tear strength” “would be impractical due to the very nature of RPET” because recycled materials vary in properties. Id. at 11; see also Reply Br. 5. Appellant argues that the Examiner fails to consider the understanding or ability of one of ordinary skill in the art of fabric manufacturing using plastics. Reply Br. 4. The claim language at issue here includes a term of degree (“high tear strength”). Terms of degree are not inherently indefinite; they have long been found definite where they provided enough certainty to one of skill in the art when read in the context of the invention. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014) (internal citation omitted). We give pending claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). An applicant has the opportunity and the obligation to define his or her invention precisely during proceedings before the USPTO. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997) (burden of precise claim drafting on the applicant). Appeal 2021-001610 Application 15/131,735 5 In reviewing a claim for compliance with 35 U.S.C. § 112(b), we must consider the claim as a whole to determine whether the claim apprises one of ordinary skill in the art of its scope and, therefore, serves the notice function required by the statute by providing clear warning to others as to what constitutes infringement of the patent. See, e.g., Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000). Here, we agree with the Examiner that the meaning of “high tear strength” cannot be ascertained by one of ordinary skill in the art and is therefore indefinite. See Ans. 8-9. The language of the claim is such that one of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, making the rejection under § 112(b) appropriate. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). In the Specification, the Appellant states that the tear strength of bags constructed utilizing the woven ribbon structure is “quite high and in one embodiment is 35 warp pounds or 32 filling pounds according to ASTM 5587.” Spec. 6, ll. 18-23. Elsewhere the Specification indicates that “[a]pproximate ASTM ratings of the bag” include a trapezoid tear strength of “39 Wrap [sic] lb.” and “32 Filling lb.” Spec. 8-9, Table 1. Therefore, it appears that a numerical delineation of tear strength is possible, had Appellant chosen to employ one. Without such a limitation, in view of the Specification, it is unclear, for example, whether 32 filling pounds is the lower limit for “high” tear strength, or some value lower than 32 filling pounds qualifies as “high.” For the reasons above, we sustain the rejection of claims 1-6, 21, and 23-26 under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention. Appeal 2021-001610 Application 15/131,735 6 Rejection of claims under 35 U.S.C. § 103 as obvious The Examiner rejects claims 1-6, 21, and 23-26 as obvious over two combinations of the same references, one combination relying on Nyckowski as the primary reference, the other combination relying on Williams as the primary reference. Final Act. 3-7. Of relevance to this decision, the Examiner relies on Kolouch as teaching inclusion of the claimed additive with PET to provide improved properties, specifically increased toughness and reduced tendency to fibrillate. Id. at 3, 5; Ans. 10. Appellant argues for nonobviousness of all pending claims as a group, with the exception of claims 21 and 23. Appeal Br. 21. We select claim 1 as representative of the group. Claims 2-6 and 24-26 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). We address claims 21 and 23 separately. Claim 1 In relation to claim 1, Appellant states that “mere presence of additives such as ethylene, acrylic ester, or maleic anhydride terpolymer are not independently novel within the field of plastic composition, but using them in specific combination with RPET to form the claimed high-strength, woven bag, as claimed, is novel.” Appeal Br. 13. The question in an obviousness determination, however, is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). We must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Appeal 2021-001610 Application 15/131,735 7 Cir. 1994)). “[T]he test for combining references is not what the individual references themselves suggest but rather what the combination of disclosures taken as a whole would suggest to one of ordinary skill in the art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellant’s arguments center on the disclosures in Kolouch and how they differ from the claimed fabric. For example, Appellant argues (1) “Kolouch mentions ‘ethylene with acrylic esters and/or acrylic or methacrylic acids and their salts’” but “this teaching of Kolouch is different from the subject invention and distinct from the requirements of the subject application” (Appeal Br. 13); (2) Kolouch uses “additives with virgin or pure PET for reasons that are different from the subject invention” (id.); (3) “Kolouch’s teachings clearly contemplate a difference between virgin or pure PET and RPET, and that difference would lead one skilled in the art to recognize the complexities and difficulties involved with the Examiner’s assertion the RPET can simply be used with Kolouch to arrive at the claimed invention” (id. at 13-14; see also Reply Br. 6); (4) “[t]he chemical additives required by claim 1 may be the same as used by Kolouch, but the uses are for different purposes due to the underlying different uses of virgin or pure PET in Kolouch and RPET in the subject application” (Appeal Br. 16-17); (5) “the theoretical use of RPET with Kolouch’s teachings would deviate from Kolouch’s intended purpose” (id. at 17); (6) “if RPET were to be used [in Kolouch], the amount of carboxyl end groups would greatly increase, thus producing more gas during extrusion and effectively negating benefits and intended purpose of Kolouch’s system” (id. at 18); and (7) “[r]ecognizing the presence of undesirable properties in Kolouch (an increase in gas) by one skilled in the art if Kolouch’s teaching of an Appeal 2021-001610 Application 15/131,735 8 extrusion process with PET were employed with RPET would be relevant to the success or failure of the resulting combination” (id. at 18-19). Appellant’s arguments are unpersuasive because they address whether one of ordinary skill in the art would have modified Kolouch’s process for extruding PET by substituting RPET for PET. However, this is not the basis for the Examiner’s rejection. See Ans. 10. Instead, the Examiner determines that it would have been obvious to one of ordinary skill in the art to have modified Nyckowski’s fabric of RPET with Williams’ laminating process and Kolouch’s additive, or to have modified Williams’ laminated polypropylene fabric with Nyckowski’s RPET and Kolouch’s additive. Final Act. 3-7. Appellant fails to address either rejection. In addition, Appellant’s arguments are directed to Kolouch’s disclosure alone, without consideration of Nyckowski, Williams, or Kern. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, Appellant’s arguments regarding the knowledge and understanding of one of ordinary skill in the art is attorney argument unsupported by evidence. It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). And Appellant’s contentions that Kolouch’s additives are for a different purpose than that of the claimed invention are further unpersuasive because [i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective Appeal 2021-001610 Application 15/131,735 9 reach of the claim. If the claim extends to what is obvious, it is invalid under § 103. . . . The first error of the Court of Appeals in this case was . . . holding that courts and patent examiners should look only to the problem the patentee was trying to solve. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007); see also Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.” (citing In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992)). The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See Keller, 642 F.2d at 425. One of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR, 550 U.S. at 418 (“[A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). For the reasons above, we sustain the Examiner’s rejection of claim 1 and claims 2-6 and 24-26 over Nyckowski, Williams, and Kolouch.3 Claims 21 and 23 Claim 21 depends from claim 1, and further requires “wherein the RPET forming the sheet formed of crossed woven flat ribbons is composed of a mixture of RPET, and titanium dioxide (TiO2).” Appeal Br. 23 (Claims 3 The additional reference, Kern, is cited only against claims 21 and 23. See Final Act. 4, 6. Appeal 2021-001610 Application 15/131,735 10 App.). Claim 23 depends from claim 21, and further requires “wherein the mixture further comprises between 92-95% of RPET and between 5-8% of TiO2, and calcium carbonate.” Id. at 24. The Examiner relies on Kern as disclosing that it was known in the art to include up to 25% titanium dioxide and/or calcium carbonate as pigments. Final Act. 4, 6. The Examiner determines that it would have been obvious to add titanium oxide and/or calcium carbonate in an amount of up to 25% to RPET to provide the RPET with color. Id. Appellant argues that Kern provides no disclosure of using titanium dioxide or calcium carbonate in a composition using RPET. Appeal Br. 21. This argument is unpersuasive, as Kern is drawn to a process for production of biaxially oriented films based on crystallizable thermoplastics using recycled material (Kern Title) and states “[p]roduction of almost all biaxially oriented films uses various proportions of inherent recycled material, and this inherent recycled material is generally produced from cut film inherently produced by the process” (id. ¶ 3). PET is identified as a suitable crystallizable thermoplastic. Id. ¶ 10. Appellant also argues that all examples in Kern use PET, not RPET, and that one of ordinary skill in the art would understand that Kern’s teachings of specific formulations with PET cannot simply be substituted with other materials, such as RPET, without materially affecting key properties of the blend. Appeal Br. 21-22. These arguments are unpersuasive. “[A] reference is not limited to the disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972). In addition, disclosed examples do not constitute a teaching away from a broader disclosure. In re Susi, 440 F.2d 442, 446 n.3 (CCPA Appeal 2021-001610 Application 15/131,735 11 1971). Furthermore, as discussed supra in relation to Kolouch, Appellant directs it criticism in the wrong direction. The Examiner does not propose modifying the process of Kern with teaching from Nyckowski, Williams, and Kolouch. Appellant’s arguments improperly attack Kern individually, where the rejection is based upon the teachings of a combination of references. See Merck, 800 F.2d at 1097. And Appellant’s arguments regarding the knowledge and understanding of one of ordinary skill in the art is attorney argument unsupported by evidence. See Huang, 100 F.3d at 139- 40; De Blauwe, 736 F.2d at 705. We sustain the rejections of claims 21 and 23 over Nyckowski, Williams, Kolouch, and Kern. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 21, 23-26 112(b) Indefiniteness 1-6, 21, 23-26 1-6, 21, 23-26 103 Nyckowski, Williams, Kolouch, Kern 1-6, 21, 23-26 1-6, 21, 23-26 103 Williams, Nyckowski, Kolouch, Kern 1-6, 21, 23-26 Overall Outcome 1-6, 21, 23-26 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). Appeal 2021-001610 Application 15/131,735 12 AFFIRMED Copy with citationCopy as parenthetical citation