Alvarado Chacon, Fresia et al.

Patent Trials and Appeals Board

Jun 1, 2020

2019004947 (P.T.A.B. Jun. 1, 2020)

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.
13/978,050 07/02/2013 Fresia Alvarado Chacon 157925 6688
25944 7590 06/01/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
FIGG, LAURA B
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRESIA ALVARADO CHACON, RICHARD VISSER, and
ERNST MICHAEL WINKLER
____________

Appeal 2019-004947
Application 13/978,050
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision rejecting claims 1, 3, 4, 7–9, 11–14, 16, and 18–23.1 A
hearing was held on May 13, 2020, a transcript of which will be made of
record in due course. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies TEIJIN ARAMID B.V. as the real party in
interest. Appeal Br. 1.
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BACKGROUND
The invention relates to technical paper. Spec. 1. According to the
Specification, use of microfilaments having “stipulated parameters” provides
increased strength relative to paper of the same weight comprising fibers.
Id. at 1–2. Claim 1 is the sole independent claim and reads as follows:
1. A paper with a grammage of 10-100 g/m2 comprising:
at least 20 wt.% of microfilaments, and
at least 30 wt.% of a non-resinous binder, wherein
the microfilaments have an average filament length in the
range of 2-25 mm and a titer of 0.5-1.3 dtex,
the non-resinous binder comprises fibrids,
the microfilaments are para-aramid microfilaments and
the fibrids are aramid fibrids, and
the paper comprises at least 30 wt.% of fibrids as the
non-resinous binder.

Appeal Br. A-1 (Claims Appendix).
REJECTIONS
I. Claims 1, 7–9, 12–14, 18–20, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Naruse2 and Levit.3
II. Claims 3, 4, 16, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Naruse, Levit, and Kinsley.4
III. Claims 11 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Naruse, Levit, and Abramovici.5

2 US 2007/0167101 A1, published July 19, 2007.
3 US 2007/0137818 A1, published June 21, 2007.
4 US 2004/0140072 A1, published July 22, 2004.
5 US 2008/0217379 A1, published September 11, 2008.
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OPINION
Rejection I: obviousness over Naruse and Levit
With regard to the Examiner’s Rejection I, Appellant argues the
rejected claims as a group, focusing on claim 1. We select claim 1 as
representative; claims 7–9, 12–14, 18–20, and 23 stand or fall with claim 1.
Relevant to Appellant’s arguments on appeal, the Examiner finds
Naruse discloses paper comprising microfilaments having a titer in the range
of 0.1–2 dtex, which encompasses the recited range of 0.5–1.3 dtex. Final
Act. 4. The Examiner determines one of ordinary skill in the art would have
had a reason to select microfilaments of any titer within Naruse’s disclosed
range, including values within the encompassed range of 0.5–1.3 dtex. Id.
Appellant contends that paper having the features recited in claim 1
exhibits an unexpected improvement in tensile strength that is neither
described nor suggested in the relied-upon prior art. Appeal Br. 5.
When claimed ranges overlap or lie inside ranges disclosed by the
prior art, a prima facie case of obviousness is typically established. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d
1465, 1469–70 (Fed. Cir. 1997). The law is replete with cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims. These cases have consistently held that the
burden is on the Appellant to show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990).
Here, Appellant relies on comparative test data presented in two
Declarations as evidence that the claimed microfilament titer range achieves
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unexpected results. Appeal Br. 5–7. In the May 1 Declaration,6 Appellant
identifies four paper samples, each comprising 30% microfilaments. May 1
Decl. 2. Sample papers 2 and 3 included microfilaments having a titer
within the range recited in claim 1, and reportedly exhibited greater tensile
index and breaking strength relative to paper samples 1 and 4 which
included microfilaments having a titer outside the recited range. Id. at 2,
Table 1. In the June 6 Declaration, Appellant identifies seven paper
samples, each comprising 30% microfilaments. June 6 Decl. 2.7 In this
second Declaration, Sample papers 2–5 included microfilaments having a
titer within the range recited in claim 1, and reportedly exhibited greater
tensile index relative to paper samples 1, 6, and 7 which included
microfilaments having a titer outside the recited range. Id. at 2, Table 1.
The Examiner finds Appellant’s evidence unpersuasive, in part
because the information contained in the above-mentioned Declarations does
not demonstrate that the reported change in paper properties was attributable
to changes in microfilament titer. Advisory Act. 3. We agree.
The Specification explains that paper strength is “[d]ue to the use of
microfilaments,” and “[t]he microfilaments in the paper according to the
invention are individual threads with the stipulated parameters.” Spec. 2
(emphasis added). The Specification goes on to identify certain
microfilament parameters, including length, diameter, homogeneity, aspect
ratio, and material, in addition to titer. Id. at 2–4. However, other than titer,
none of the above-listed microfilament parameters is provided in Appellant’s

6 Declaration Under 37 C.F.R. §1.132, dated April 18, 2017, filed May 1,
2017.
7 Declaration Under 37 C.F.R. §1.132, dated April 25, 2017, filed June 6,
2018.
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evidence. See May 1 and June 6 Decl. ¶ 5 (“All papers comprise 70%
fibrids (Type 8016 produced by Teijin Aramid) and 30% of (micro)filaments
having filament titers varying between 0.39 dtex and 1.68 dtex.”). Indeed,
Appellant acknowledges that the papers tested in the May 1 and June 6
Declarations differ “with regard to starting materials,” Appeal Br. 7, and that
factors other than microfilament titer affect paper properties, id. at 9. See
also Reply Br. 2 (“Appellant has never argued that the titer recited in claim 1
is the single factor that controls the tensile index.”). Absent evidence of
these other property-affecting parameters in the tested papers, it is
impossible to determine from the evidence submitted that the reported paper
strengths were attributable to microfilament titer. Accordingly, we find
Appellant’s contention that the microfilament titer recited in claim 1
achieves an unexpected paper strength is not sufficiently supported by the
evidence presented. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) (“It is well settled that unexpected results must be established by
factual evidence. Mere argument or conclusory statements in the
specification does not suffice.”) (citing In re Lindner, 457 F.2d 506, 508
(CCPA 1972)).
For the foregoing reasons and those the Examiner presents, based on
the totality of the record, we determine that the preponderance of evidence
weighs in favor of obviousness, giving due weight to Appellant’s arguments
and evidence. Accordingly, Rejection I is sustained.

Rejections II and III: obviousness of claims 3, 4, 11, 16, 21, and 22
Appellant does not separately argue the Examiner’s rejection of
claims 3, 4, 11, 16, 21, and 22 except to rely on the arguments discussed
above in connection with claim 1. See Appeal Br. 13–14. Accordingly, we
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sustain Rejections II and III for the reasons given above in connection with
Rejection I.

CONCLUSION
The Examiner’s decision rejecting claims 1, 3, 4, 7–9, 11–14, 16, and
18–23 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 7–9, 12–
14, 18–20,
23
103(a) Naruse, Levit 1, 7–9,
12–14,
18–20, 23

3, 4, 16, 22 103(a) Naruse, Levit,
Kinsley
3, 4, 16,
22

11, 21 103(a) Naruse, Levit,
Abramovici
11, 21
Overall
outcome
1, 3, 4, 7–
9, 11–14,
16, 18–23

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).

AFFIRMED