Hyung-jin Son et al.

Patent Trials and Appeals Board

Dec 14, 2021

2021000052 (P.T.A.B. Dec. 14, 2021)

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. 13/981,216 05/22/2014 Hyung-jin Son 1195-3 4571 46302 7590 12/14/2021 RYAN, MASON & LEWIS, LLP 2425 Post Road Suite 204 Southport, CT 06890 EXAMINER LOPEZ, RICARDO E. ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 12/14/2021 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): ctoffice@rml-law.com kmm@rml-law.com mjc@rml-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HYUNG-JIN SON, JAE-HUN JUNG, TAE-WON SON, and CHANG-MOK SON ____________ Appeal 2021-000052 Application 13/981,216 Technology Center 1700 ____________ Before TERRY J. OWENS, JENNIFER R. GUPTA, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 5, 6, 10, 11, 16, 23-25, and 27 of Application 13/981,216, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). 1 In our Decision, we refer to the Specification (“Spec.”) of Application No. 13/981,216 filed July 23, 2013; the Final Office Action dated Oct. 29, 2019 (“Final Act.”); the Appeal Brief filed Mar. 2, 2020 (“Appeal Br.”); and the Examiner’s Answer dated July 23, 2020 (“Ans.”). Appellant did not file a Reply Brief. 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as G. Clo Inc. Appeal Br. 1. Appeal 2021-000052 Application 13/981,216 2 For the reasons set forth below, we REVERSE. The subject matter of the invention relates to a method for producing an antimicrobial heat-retaining fiber which includes dispersing carbon particles and inorganic particles in a resin by using a metal alkoxide coupling agent to prepare a spinning solution. Spec. 1, ll. 8-10. According to the Specification, it is an object of the invention to provide a method for producing a fiber in which a spinning solution including carbon particles and optionally adding inorganic is used to prevent fiber breakage during spinning while imparting a heat-retaining function or both heat-retaining and antimicrobial functions to the fiber without deterioration of wash fastness. Id. 4, ll. 20-25. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, represents the claimed subject matter: 1. A method for producing an antimicrobial heat-retaining fiber, comprising: preparing a spinning solution from a mixture comprising: (i) 2.0% of the spinning solution, by weight, of graphite powder particles, (ii) 0.2 to 2.0% of the spinning solution, by weight, of a metal alkoxide coupling agent comprising a mixture of one or more silicates, one or more aluminates, and one or more titanates, (iii) 0.5 to 3.0% of the spinning solution, by weight, of inorganic particles comprising a mixture of a ceramic powder and a metal powder, wherein the inorganic particles have a diameter of between 20 nanometers and 100 nanometers, and wherein the ceramic powder comprises a zinc oxide powder, and (iv) 89-98.3% or [sic] the spinning solution, by weight, of a resin comprising polyethylene terephthalate; and Appeal 2021-000052 Application 13/981,216 3 melt-spinning the spinning solution to form the antimicrobial heat-retaining fiber. REFERENCES The Examiner relies on the following prior art in rejecting the claims: Name Reference Date Jacobson et al. (“Jacobson ’585”) US 5,180,585 Jan. 19, 1993 Jacobson et al. (“Jacobson”) US 5,503,840 Apr. 2, 1996 Ashida et al. (“Ashida”) US 2009/0075018 A1 Mar. 19, 2019 Terada et al. (“Terada”) US 2010/0096769 A1 Apr. 22, 2010 Chen et al. (“Chen”) US 2011/0047718 A1 Mar. 3, 2011 Isshiki3 JP 07268723 A Oct. 17, 1995 Kobayashi JP 2002 363380 A Dec. 18, 2002 Schulte et al. (“Schulte”) EP 2 266 786 A1 June 23, 2009 3 Appellant did not challenge the Examiner’s use of machine translations of Isshiki, Kobayashi, and Schulte, thus waived any objection to their evidentiary value. See In re Orbital Tech. Corp., 603 Fed. Appx. 924, 930 (Fed. Cir. 2015) (Appellant waived claims it might have had related to machine translation by pursuing appeal on that record.). Appeal 2021-000052 Application 13/981,216 4 REJECTIONS The Examiner maintains the rejection of claims under 35 U.S.C. § 103(a)4 as follows: (1) claims 1, 5, 6,5 10, 11, and 23 over Isshiki in view of Chen, further in view of Schulte, Ashida, and Jacobson which incorporates Jacobson ’585; (2) claim 16 over Isshiki in view of Chen, Schulte, Ashida, Jacobson, Jacobson ’585, and Terada; (3) claims 24 and 25 over Isshiki in view of Chen, Schulte, Ashida, Jacobson, Jacobson ’585, and Kobayashi; and (4) claim 27 over Isshiki in view of Chen, Schulte, Ashida, Jacobson, Jacobson ’585, Kobayashi, and Terada. Final Act. 2-10. DISCUSSION All of the pending claims are rejected over a combination of at least Isshiki, Chen, Schulte, Ashida, and Jacobson. Final Act. 2-10. To resolve the present appeal, we need consider whether the Examiner reversibly errs in determining that it would have been obvious to one of ordinary skill in the art at the time of filing to combine the cited art to achieve the claimed invention. The Examiner finds that Isshiki teaches a melt spinning method for producing a fiber containing carbon in a fine powdery state, which is good in heat retaining properties, and Chen teaches use of polyethylene terephthalate 4 Because this application was filed before the March 16, 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 5 Paragraph 4 of the Final Office Action does not include claim 6 in the obviousness rejection, however, paragraph 5 does. Final Act. 2, with id. at 3. We consider claim 6, dependent from claim 1, being rejected for the same reasons as given for claim 1. Appeal 2021-000052 Application 13/981,216 5 (PET) as the preferred polyester for fiber formation. Final Act. 3. The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of invention to select PET as the polyester fiber forming polymer in Isshiki’s melt spinning method in order to provide the advantages stated in Chen of satisfactory thermal stability, elasticity, and endurance. Id. The Examiner finds that Schulte teaches a method for producing a composite material comprising PET as the matrix polymer, and graphite as the thermally active filler. Id.; Ans. 13. The Examiner determines that it would have been obvious to substitute Isshiki’s carbon particles with Schulte’s graphite as the conductive component, motivated by the desire to produce a mechanically stable, chemically stable, and/or thermally stable fiber, as suggested by Schulte. Final Act. 4; Ans. 13. The Examiner finds that Isshiki teaches that it is preferable to use carbon particles having a diameter of less than 100 nanometers6 to avoid plugging the spinning nozzle, thus it would have been obvious to select a particle size for the graphite powder that overlaps the claimed range of “between 20 nanometers and 100 nanometers.” Final Act. 4; see Appeal Br. 11 (Claims App.). Ashida teaches a colored polyamide fiber composed of a polyamide resin, a carbon black pigment, and coupling agent. Ashida, Abst. The Examiner finds that Ashida discloses that the dispersion stability of the pigment is improved by addition of a coupling agent such as titanate coupling agent, silane coupling agent, or aluminum coupling agent to the 6 The Examiner finds that Isshiki teaches 100 microns or less, but the reference discloses “100 mmicro,” which is millimicrons, equal to nanometers. See Final Act. 4. Appeal 2021-000052 Application 13/981,216 6 polyamide resin. Final Act. 4 (citing Ashida, ¶ 32). According to the Examiner, it would have been obvious to use any of the known coupling agents taught by Ashida in the melt spinning process of Isshiki when it is desired to improve the dispensability of the carbon black particles in the fiber forming composition. Id.; Ans. 14-15. In addition, the Examiner determines that it would have been obvious to one of ordinary skill in the art to pursue known options within his or her technical grasp, and select a silicate based coupling agent as one of the components in the coupling agents mixture. Final Act. 5; Ans. 15. The Examiner finds that Jacobson teaches an antimicrobial composition that includes zinc oxide particles, and that the composition is easily dispersible within a polymer matrix and can be virtually transparent. Id. at 5-6; Ans. 13. The Examiner determines that it would have been obvious to one of ordinary skill in the art to select Jacobson’s zinc oxide particles as functional particles in lsshiki’s method when it is desired to provide the fibers with antimicrobial properties. Id. Appellant argues, inter alia, that the Examiner fails to provide sufficient motivation to combine the cited art. Appeal Br. 5. 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. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (discussing the initial burden is on the PTO to set forth the basis for any rejection so as to put the patent applicant on notice of the reasons why the applicant is not entitled to a patent on the claim scope that they seek). If a prima facie case of obviousness is shown, the burden of Appeal 2021-000052 Application 13/981,216 7 going forward shifts to the applicant, who must produce evidence and/or argument rebutting the case of unpatentability. See Frye, 94 USPQ2d at 1075. The Examiner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis.”). We “cannot accept general conclusions about what is ‘basic knowledge’ or ‘common sense’ as a replacement for documentary evidence for core factual findings in a determination of patentability.” K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) (citing In re Zurko, 258 F.3d 1379, 1385- 86 (Fed. Cir. 2001)). When the references cited by the Examiner fail to establish a prima facie case of obviousness, the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Here, the reasoning for combining either Ashida or Jacobson with the other references is not supported by the requisite “rational underpinning.” See Kahn, 441 F.3d at 988. Although the Examiner indicates that a skilled artisan, having combined Isshiki with Chen and Schulte, could “improve the dispensability of the carbon black particles in the fiber forming composition,” (Ans. 14-15), there is no reason given as to why one would seek to include carbon black particles in the composition in the first place. See generally Final Act.; Ans. The Examiner’s conclusion that “it would also have been obvious to one of skill in the art to pursue the known options within his or her technical grapsp” lacks explicit and clear reasoning providing some rational underpinning why common sense compels a finding Appeal 2021-000052 Application 13/981,216 8 of obviousness. See KSR, Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). The Examiner’s reasoning “ seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention.” PersonalWeb Techs., LLC, v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (citing Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”)). The Examiner’s proffered motivation to combine Jacobson with the other references is no more convincing. The Examiner relies on Jacobson to teach the antimicrobial element of the claims “when it is desired to provide the fibers with antimicrobial properties.” Final Act. 6. However, the crucial issue that is not addressed by the Examiner is why the skilled artisan would have been motivated to provide the fibers of Isshiki (as modified by Chen and Schulte) with antimicrobial properties, not merely whether it was possible to make the combination. See PersonalWeb Techs., 848 F.3d at 993. The Examiner fails to show a prima facie case of obviousness of any of the claims because no sufficient motivation is provided to combine at least Isshiki, Chen, Schulte, Ashida, and Jacobson. Appeal 2021-000052 Application 13/981,216 9 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 10, 11, 23 103(a) Isshiki, Chen, Schulte, Ashida, Jacobson, Jacobson ’585 1, 5, 10, 11, 23 16 103(a) Isshiki, Chen, Schulte, Ashida, Jacobson, Jacobson ’585, Terada 16 24, 25 103(a) Isshiki, Chen, Schulte, Ashida, Jacobson, Jacobson ’585, Kobayashi 24, 25 27 103(a) Isshiki, Chen, Schulte, Ashida, Jacobson, Jacobson ’585, Kobayashi, Terada 27 Overall Outcome 1, 5, 10, 11, 16, 23-25, 27 REVERSED