Robert A. Hansen et al.

Patent Trials and Appeals Board

Nov 22, 2019

12479258 - (D) (P.T.A.B. Nov. 22, 2019)

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.
12/479,258 06/05/2009 Robert A. Hansen 127507-06404 1089
141216 7590 11/22/2019
McCarter & English, LLP / Albany International
Worldwide Plaza, 825 Eighth Ave.,
31st Floor
New York, NY 10019
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
11/22/2019 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):
NYdocket@mccarter.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT A. HANSEN and BJORN RYDIN
____________

Appeal 2019-001799
Application 12/479,258
Technology Center 1700
____________

Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 4, 5, 9–14, and 23–35.3 We have jurisdiction
under 35 U.S.C. § 6(b).

1 In this Decision, we refer to the Specification filed June 5, 2009 (“Spec.”);
Non-Final Office Action mailed May 9, 2018 (“Non-Final Act.”); the
Appeal Brief filed July 13, 2018 (“Appeal Br.”); the Examiner’s Answer
mailed Nov. 2, 2018 (“Ans.”); and the Reply Brief filed Dec. 27, 2018
(“Reply Brief”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Albany International Corp. as the real
party in interest. Appeal Br. 3.
3 Claims 2, 3, 6–8, 15–22, and 26–48 are withdrawn or canceled. Appeal
Br. 4.
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We REVERSE.
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a laminated pad structure, which
includes axially and radially elastic hollow members and relatively inelastic
yarns in various patterns. Abstract, Spec. 3:4–7, 4:24–30, 6:11–15.
Regarding the “laminated structure” recitation of the claimed subject
matter, the Specification discloses that the pad’s structure includes, for
example, two independently woven fabric layers with a hollow elastic
member layer there between and a binder yarn system weaving between the
layers of the laminate. Spec. 6:11–15. Figure 10A of the Specification also
shows the claimed laminated structure with the hollow elastomeric member
40 and functional yarns 20 and 30 laminated between two fabrics, as
described at page 6 of the Specification. Spec. 16:17–24, Figs. 10A, 10B.
The structure is also said to have a high degree of both compressibility under
an applied normal load and excellent recovery (resiliency or spring back)
upon removal of that load. Spec. 1:11–13, 3:1–8, Abstract.
Claim 1 illustrates the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief
(Appendix I):
1. A compressible resilient pad, wherein the pad
includes a structure having an original thickness, the
structure comprising:
a plurality of parallel longitudinal yarns;
a plurality of parallel cross-direction yarns;
a plurality of parallel hollow elastic members;
wherein the structure is a laminated structure of
independent layers not interwoven comprising;
a first layer of the parallel yarns running in either
the longitudinal or the cross-direction;
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a second layer of the parallel hollow elastic
members on one side of the first layer, the second layer’s
hollow elastic members running in the longitudinal or
cross-direction different from that of the first layer; and
a third layer of the parallel yarns on the opposite
side of the second layer as the first layer and running in
the same direction as those of the first layer, wherein the
parallel yarns of the third layer are aligned such that the
parallel yarns of the third layer nest between the parallel
yarns of the first layer without interfering with one
another to allow the structure to compact to form a planar
structure in a through thickness direction when the pad is
under a pressure load;
wherein the hollow elastic members are elastic in
their thickness or radial direction and length or axial
direction such that under the pressure load the hollow
elastic members stretch and compress to conform to the
nesting and, the structure springs back to substantially the
original thickness after removal of the pressure load.
Appeal Br. 20 (Claims Appendix I) (key disputed claim language italicized
and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Scott US 3,095,258 June 25, 1963
Rohlig US 3,630,824 Dec. 28, 1971
Gaffney US 3,723,218 Mar. 27, 1973
Wiegand US 4,088,805 May 9, 1978
Basse et al. (“Basse”) US 5,436,052 July 25, 1995
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REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1, 4, 5, 9–14, and 23–25 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Basse in view of Scott and/or
Rohlig, as evidenced by Gaffney (“Rejection 1”). Ans. 3–5.
2. Claims 1, 4, 5, 9–14, and 23–25 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Basse in view of Wiegand,
Scott, and/or Rohlig, as evidenced by Gaffney (“Rejection 2”). Id. at 6–8.
3. Claims 1, 4, 5, 9–14, and 23–25 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Wiegand in view of Basse,
Scott, and/or Rohlig (“Rejection 3”). Id. at 9–11.
OPINION
Rejection 1
The Examiner rejects claims 1, 4, 5, 9–14, and 23–25 under § 103(a)
as obvious over the combination of Basse, Scott, and Rohlig (Ans. 3–5),
which we refer to as Rejection 1.
The Examiner determines that the combination of Basse, Scott, and
Rohlig suggests a pad satisfying all of the limitations of claim 1 and
concludes the combination would have rendered the claim obvious. Id.
at 3–5. Regarding the “laminated structure” recitation of claim 1, the
Examiner relies on Basse, as evidenced by Gaffney, for teaching or
suggesting that element of the claim. Id. at 4 (citing Basse 2:43–51,
4:22–39; Gaffney 1:12–21, 1:45–48).
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Appellant argues the Examiner’s rejection of claim 1 should be
reversed because the cited art does not teach or suggest a “laminated
structure,” as recited in the claim. Appeal Br. 7–10; Reply Br. 2–3.
Appellant contends that, in contrast to the claimed laminated structure,
Basse teaches a net made up of three layers of offset strands wherein the
strands in the outer planes are connected to strands in the middle plane at
points of intersection. Appeal Br. 9–10 (citing Basse, Abstract, 2:47–51,
2:67–3:2).
Appellant’s argument is persuasive because the Examiner has not
established by a preponderance of the evidence that the cited art teaches or
suggests a “laminated structure,” as claimed. The Examiner also has not
provided adequate reasoning or directed us to persuasive evidence in the
record sufficient to establish one of ordinary of skill would have combined
the cited art to arrive at the claimed invention. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) (holding the examiner bears the initial burden of
establishing a prima facie case of obviousness).
The portions of Basse the Examiner cites and relies upon in the
rejection do not teach or suggest a “laminated structure,” as required by the
claim. See Ans. 3–5. Rather, as Appellant correctly points out (Appeal
Br. 9–10), Basse is directed to and teaches a net and, in particular, a spacing
net with strands arranged in three planes and strands in two planes oriented
equidirectionally. Abstract, 1:26–29, 2:43–46. Although Basse teaches that
the inner strands of the net may be elastically deformable and have good
resilience (Basse 1:40–45, 1:50–52), Basse does not teach or suggest that the
net is a laminated structure, as claimed.
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Although the Examiner cites and relies on Gaffney as an evidentiary
reference (Ans. 4), Gaffney does not cure the deficiencies in Basse’s
disclosure. Like Basse, Gaffney does not teach or suggest a laminated
structure, as recited in the claim. Rather, Gaffney is directed to a method for
manufacturing net and net-like products and discloses an extrusion process
for forming an “extruded net” from molten polymer and that the nets can be
bonded during co-extrusion. Gaffney 1:3–4 (Title), 1:10–21 (Abstract),
Figs. 1, 2. Although Gaffney discusses co-extruding a plurality of strands or
continuous sheets from molten polymer via multiple die members and
contacting them to cause bonding to form a net (Gaffney 1:14–21, 1:26–31),
there is no teaching or suggestion that the net structure formed via Gaffney’s
co-extrusion process is a laminated structure, as recited in the claims.
Thus, for principally the same reasons provided by Appellant at pages
7–10 of the Appeal Brief and pages 2–3 of the Reply Brief, and in light of
the claim language and the Specification’s disclosure regarding the claimed
laminated structure having two independently woven fabric layers with a
with the hollow elastic member layer there between and a binder yarn
system weaving between the layers of the laminate (Spec. 6:11–15), we are
not persuaded the Examiner has established by a preponderance of the
evidence that the net taught by Basse falls within the scope of or would have
reasonably suggested to one of ordinary skill a laminated structure as
claimed.
Based on Basse’s disclosures, we are also not persuaded Basse is
analogous art to the claimed invention. Two separate tests define the scope
of analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
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field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Klein, 647 F.3d. 1343, 1348 (Fed. Cir. 2011) (citing In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004)). “A reference is reasonably pertinent if, even
though it may be in a different field from that of the inventor’s endeavor, it
is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Here, the claimed invention is directed to a laminated structure
having, for example, two independently woven fabric layers with a hollow
elastic member layer there between and a binder yarn system weaving
between the layers of the laminate. Spec. 6:11–15, 16:17–24, Figs. 10A,
10B. The Specification discloses the claimed laminated structure as being a
fabric structure, which conforms under pressure and springs back to
substantially the original thickness after removal of the pressure, for use as a
pad in, for example, sports shoes, running shoes, boots, and heels/soles for
athletic shoes. Id. at 1:10–13, 1:21–23, 3:8–9. In contrast to the claimed
invention, however, Basse is in the field of netting and, as previously
discussed above, directed to nets and netting structures. See Basse, Abstract,
2:47–51, 2:67–3:2.
Moreover, based, for example, on Basse’s teachings regarding a net
for use as a spacing net or protective net for highly finished surfaces
(Basse 1:9–10), we are not persuaded that Basse logically would have
commended itself to an inventor’s attention in considering the problem
addressed by the claimed invention. Given the clear differences between
Basse’s net and netting structures and the claimed laminate structure in the
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form of a fabric having woven layers with a hollow elastomeric layer there
between, it is not apparent why one of ordinary skill in the art would have
been led to Basse’s disclosures regarding netting in considering, for
example, the problem of developing a shock-absorbing laminated pad
structure for use in sports and running shoes.
Thus, on the record before us, we are not persuaded that Basse is
analogous art.
We, therefore, do not sustain the Examiner’s rejection of claim 1 and
determination that it would have been obvious to combine the teachings of
the cited art to arrive at the subject matter recited in the claim. Because
claims 4, 5, 9–14, and 23–25 depend from claim 1, we also do not sustain
the Examiner’s rejection of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 1, 4, 5,
9–14, and 23–25 under 35 U.S.C. § 103(a) as obvious over the combination
of Basse, Scott, and/or Rohlig.
Rejections 2 and 3
The Examiner rejects claims 1, 4, 5, 9–14, and 23–25 under § 103(a)
as obvious over the combination of Basse, Wiegand, Scott, and/or Rohlig
(Ans. 6–8), which we refer to as Rejection 2, and the combination of
Wiegand, Basse, Scott, and/or Rohlig (Ans. 9–11), which we refer to as
Rejection 3.
The foregoing deficiencies in the Examiner’s findings and analysis
regarding the Basse reference discussed above in reversing the Examiner’s
Rejection 1, including our determination that Basse is non-analogous art, are
not remedied by the Examiner’s findings regarding the additional references
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or combination of references cited in support of the second and third
grounds of rejection.
Accordingly, for principally the same reasons stated above for
reversing Rejection 1, we reverse the Examiner’s rejections of claims 1, 4, 5,
9–14, and 23–25 under 35 U.S.C. § 103(a) as obvious over the combination
of Basse, Wiegand, Scott, and/or Rohlig, and the combination of Wiegand,
Basse, Scott, and/or Rohlig.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 4, 5, 9–14,
23–25
103(a) Basse, Scott, Rohlig 1, 4, 5, 9–14,
23–25
1, 4, 5, 9–14,
23–25
103(a) Basse, Wiegand,
Scott, Rohlig
1, 4, 5, 9–14,
23–25
1, 4, 5, 9–14,
23–25
103(a) Wiegand, Basse,
Scott, Rohlig
1, 4, 5, 9–14,
23–25
Overall
Outcome
1, 4, 5, 9–14,
23–25
REVERSED