Ex Parte BöhringerDownload PDFPatent Trial and Appeal BoardSep 26, 201813202907 (P.T.A.B. Sep. 26, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/202,907 11/07/2011 Bertram Bohringer 77741 7590 09/28/2018 Brannon Sowers & Cracraft PC 47 South Meridian Street Suite 400 Indianapolis, IN 46204 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. 78-10975 2918 EXAMINER CHRISS, JENNIFER A ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 09/28/2018 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): docket@bscattorneys.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERTRAM BOHRINGER1 Appeal2017-010476 Application 13/202,907 Technology Center 1700 Before MARK NAGUMO, JEFFREY R. SNAY, and JANEE. INGLESE, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Bertram Bohringer ("Bohringer") timely appeals under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 16-22, 25-34, and 36. We have jurisdiction. 35 U.S.C. § 6. We reverse. 1 The real party in interest is identified as Blucher GmbH. (Appeal Brief, filed 24 March 2017 ("Br."), 3.) 2 Office Action mailed 18 November 2016 ("Final Rejection"; cited as "FR"). Appeal2017-010476 Application 13/202,907 A. Introduction 3 OPINION The subject matter on appeal relates to textile sheet materials having stab- and ballistic- (e.g., bullet) resistance. (Spec. 12, 11. 14--33.) The sheets comprise a layer, preferably woven (id. at 19, 11. 23-25), of aramids (e.g., KEVLAR®) or ultra-high molecular weight polyethylenes (id. at para. bridging 20-21 ), and an absorption layer of activated carbon particles (id. at 35, 11. 20-24.) In embodiments, additional layers such as carrier layers (id. at 13, 1. 24--15, 1. 16) and cover layers (id. at 25, 1. 14--28, 1. 13) may be provided. According to the '907 Specification, "the presence of the additional adsorption layer based on discrete particles of adsorbent leads to an amplification of the stability of the stab- and/or ballistic-resistant layer." (Id. at 10, 11. 10-14.) The Specification speculates that this result is due to "the inherent hardness of the adsorbents and from the targeted interaction of the adsorption layer with the stab- and/or ballistic-resistant layer." (Id. at 11. 14--17.) Furthermore, the presence of the activated carbon particle layer is said to reversibly imbibe, store, and gradually release large amounts of moisture, preventing the moisture from coming into contact with the stab- and/ or ballistic-resistant layer and reducing its protective effect. (Id. at para, bridging 11-12; see also experimental results summary at 35-37.) 3 Application 13/202,907, Textile material having increased mechanical strength, in particular having increased resistance to piercing or shooting, filed 7 November 2011, claiming the benefit of an application filed in Germany on 23 February 2009. We refer to the "'907 Specification," which we cite as "Spec." 2 Appeal2017-010476 Application 13/202,907 Claim 16 is representative and reads: A textile sheet material having stab resistance and ballistic resistance, and offering protective performance against chemical or biological poisons and warfare agents, wherein the textile sheet material has a multilayered construction, wherein the multilayered construction comprises: (a) at least one stab-resistant and ballistic-resistant layer, wherein the stab-resistant and ballistic-resistant layer is a textile fabric and has a basis weight of 0.5 kg/m2 to 8 kg/m2 and wherein the stab-resistant and ballistic-resistant layer comprises or consists of fibers or yams based on a material selected from the group consisting of aramids and ultra high molecular weight polyethylenes (UHMWPE' s ), wherein the fibers or yams have a fiber linear density of 50 to 5,000 denier; and (b) at least one adsorption layer based on discrete particles of adsorbent, wherein the adsorbent particles of the adsorption layer are based on activated carbon in the form of activated carbon particles wherein the amount of activated carbon particles is 50 g/m2 to 500 g/m2; wherein the adsorbent particles of the adsorption layer have a median diameter of at least 0.1 mm and less than 1. 0 mm and wherein the adsorbent particles of the adsorption layer have a bursting pressure per individual adsorbent particle of at least 5 Newtons and up to 20 Newtons, wherein the textile sheet material has a stab-resistance of more than 10 Newtons according to DIN EN 388:2003, and a breaking strength of more than 10 Newtons according to DIN EN 388:2003, and wherein the textile sheet material comprising the at least one adsorption layer exhibits greater stab resistance than the textile sheet material without an adsorption layer. 3 Appeal2017-010476 Application 13/202,907 (Claims App'x., Br. 42; some indentation, paragraphing, and emphasis added.) Remaining independent claim 36 is nearly identical, specifying further that the adsorbent particles of the absorbent particle layer are supported by a support layer, and that the absorbent particles are secured to the stab- resistant and ballistic-resistant layer or to the support layer. (Id. at 46.) The Examiner maintains the following grounds of rejection 4, 5 : A. Claims 6-22, 25-29, 31-34, and 36 stand rejected under 35 U.S.C. § I03(a) in view of the combined teachings of Bansal, 6 Howard, 7 Chiou, 8 and Bohringer '114. 9 4 Examiner's Answer mailed 1 June 2017 ("Ans."). 5 Because this application was filed before the 16 March 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 6 Vishal Bansal and Clare Rosemary King, Glove having chemical and biological particulate barrier properties, U.S. Patent Application Publication 2007 /0134486 Al (2007). 7 Edward George Howard, Jr., N-aklylchitosan films and laminates made therefrom, U.S. Patent Application Publication 2008/0289088 Al (2008). 8 Minshon J. Chiou, Flexible spike/ballistic penetration-resistant articles, U.S. Patent Application Publication 2005/0003727 Al (2005). 9 Bertram Bohringer and Anna Varga-Molnar, Adsorption filter material, particularly for producing ABC protective clothing having improved wearing physiology, WO 2008/134114 A2 (13 November 2008); U.S. Patent Application Publication 2010/0212071 Al (2010) is used, without objection, as a translation. 4 Appeal2017-010476 Application 13/202,907 Al. Claim 30 stands rejected under 35 U.S.C. § I03(a) in view of the combined teachings of Bansal, Howard, Chiou, Bohringer '114, and Carroll. 10 B. Discussion The Board's findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Initially, we find that Bohringer presents arguments for patentability based on limitations found in claim 16. Accordingly, we focus our attention on this claim. The Examiner finds that Bansal describes gloves comprising multiple layers, one of which comprises activated carbon. Bansal describes the gloves as having chemical- and particulate-barrier properties, but does not disclose stab- or ballistic-resistance or the breaking strength of the gloves. (FR 3, ,r,r 6-7.) The Examiner finds that Howard teaches that "articles may incorporate materials for functional reasons such as ballistic resistance." (Id. at ,r 8, citing Howard, ,r 55.) The Examiner finds that Chiou teaches spike and ballistic protection based on aramid (KEVLAR®) fabrics. (Id. at 3, ,r 11.) The Examiner finds that Bohringer '114 teaches the use of activated carbon having the size and properties recited in claim 16 as an absorption layer in a textile material. (Id. at ,r 14.) The Examiner reasons that it would have been obvious to combine these teachings to modify Bansal and arrive at a textile sheet meeting the requirements of parts a) 10 Todd R. Carroll and John D. Langley, Garments preventing transmission of human body odor, U.S. Patent Application Publication 2006/0147698 Al (2006). 5 Appeal2017-010476 Application 13/202,907 and b) of claim 16. As for the final three property recitations, which are not disclosed in the prior art, the Examiner determines that "[i]t is reasonable to conclude that the above properties are inherent to modified Banal. Support for said presumption is found in the use of like materials which would result in the claimed property." (FR 4, 11. 14--15.) Dr. Bertram Bohringer, the inventor, and Mr. Donald W. McQuigg, both of whom have extensive experience in fields relevant to the invention, filed declarations on 1 7 October 2016, in which they testify that prior art references Wang 11 and Breukers 12 show that, inter alia, imparting stab or ballistic resistance to textiles required materials significantly harder than activated carbon particles. In response, the Examiner states that "it cannot be said that the benefit shown by applicant would have been expected." (FR 10, ,r 41, last sentence.) "[H]owever," the Examiner continues, "the rejection is still not overcome as the claims are not commensurate with the unexpected showing (discussed above and below in detail)." (Id. at ,r 42; see also (id. at 13, ,r 58, "Applicant has [not?] provided a sufficient showing that the inclusion of carbon particles does in fact unexpectedly increase stab resistance.") 11 Yunzhang Wang and Thomas E. Mabe, Puncture resistant composite, US 2007/0105471 (Al) (2007). 12 Joseph Judith Breukers, Stab-resisting material, a coated carrier to be used therewith, and clothing made of said materials, U.S. Patent Application Publication 2003/0190850 (2003). (This reference is cited incorrectly in the Office Action mailed 17 June 2016 (at 12, ,r 60, where it and Wang appear to have been cited for the first time), in the declarations, and in the Appeal Brief as 2003/019085; but it is cited correctly in the Reply Brief.) 6 Appeal2017-010476 Application 13/202,907 Bohringer does not appear to contest the Examiner's findings that the various materials with the associated properties recited in parts a) and b) of claim 16 are disclosed in the prior art cited by the Examiner. Indeed, Bohringer states that "[t]he general elements required are known in the cited art." (Br. 31, 11. 24--25.) "[H]owever," Bohringer continues, "nothing in the prior art teaches or suggests how to select component for a textile sheet material in order to impart specific stab- and ballistic-resistant properties, as well as the improved ability to maintain these properties in the presence of moisture." (Id. at 11. 25-27.) It is well-settled that the reasons for combining prior art references need not be the same as the reasons applicant made his invention. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ("The first error of the Court of Appeals in this case was to foreclose [an obviousness] reasoning by holding that ... patent examiners should look only to the problem the patentee was trying to solve.") Thus, it should not be concluded too swiftly that the Examiner erred harmfully in holding that it would have been prima facie obvious to combine teachings of the references. However, applying an inherency analysis in an obviousness rejection, in which the purportedly inherent property arises from the combination of two or more elements that are not disclosed together in an embodiment in the prior art is at best a delicate matter. The difficulty, as our reviewing court has often explained, is that "[t]hat which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown." In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (quoting In re Spormann, 7 Appeal2017-010476 Application 13/202,907 363 F.2d 444, 448 (CCP A 1966). 13 The particular difficulty with the Examiner's analysis, is that the Examiner has not come forward with adequate evidence and explanation supporting the reasonableness of the conclusion that "above properties [stab-resistance and breaking strength] are inherent to modified Banal." The only "evidence" supporting the inherency of these properties comes from the disclosures in the '907 Specification; but these disclosures regarding the properties of multilayers of KEVLAR® and activated carbon are not prior art. The Examiner's reliance on these disclosures would be relevant if the basis of rejection were anticipation, but they are not relevant for obviousness. As Bohringer argues, the Examiner has not identified evidence in the prior art that the properties of the claimed multilayers would have been predictable, or that those properties would have been expected. Indeed, the only prior art disclosures of record regarding adding particles as a coating to a material to increase its puncture resistance require relatively hard particles-much harder than particles of activated carbon-as both declarants testify. (Bohringer Deel. 4--5, ,r 9; McQuigg Deel. 7-10.) Moreover, as McQuigg testifies, Breukers indicates that, "[t]o be effective, the hardness of the abrasive particles must be greater than that of the stab weapon." (McQuigg Deel., para. bridging 8-9.) As our reviewing court has explained, "'differences in degree' of a known and expected property are not as persuasive in rebutting obviousness as differences in 'kind'-i.e., a new property dissimilar to a known property." Bristol-Myers Squibb Co. v. Teva 13 The Examiner's reliance (Ans. 14) on Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342 (Fed. Cir. 1999) is inapposite because Atlas is concerned with anticipation, not obviousness. 8 Appeal2017-010476 Application 13/202,907 Pharm. USA, Inc., 752 F.2d 967 (Fed. Cir. 2014) (reh'g en bane denied (by a divided court), 760 F.3d 339 (Fed. Cir. 2014)). The difference-here, an improvement in stab- and ballistic-resistance due to a softer material as a coating-is like a difference in kind. Whether results would have been unexpected is a question of fact. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). Questions of fact are resolved according to the preponderance of the evidence. In the present case, all of the credible prior art evidence relating to stab-resistance of multilayers of KEVLAR® and activated carbon multilayers supports Bohringer. Thus, whether the increased stab- and ballistic-resistance due to the activated carbon layer in combination with the KEVLAR® is regarded as an unpredictable property or as an unexpected result, it weighs in favor of patentability. The Examiner determines that Bohringer's arguments against a reasonable expectation of success are not persuasive "[b ]ecause Applicant has failed to present evidence that there would not have been any reasonable expectation of success in producing a predictable resultant product." (Ans. 11, last sentence.) But all of the factors involved in evaluating obviousness must be evaluated and weighed against one another. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.") It is improper to decline to consider negative evidence merely because there is some positive evidence. 9 Appeal2017-010476 Application 13/202,907 Bohringer provides an extensive discussion explaining why the evidence proffered are reasonably commensurate in scope with the ranges recited in the appealed claims. (Br. 37--41.) The Examiner, however, has not come forward with evidence and an explanation why the properties of the materials would have been expected to vary in an unpredictable manner, or to not satisfy the property requirements, such that a person having ordinary skill in the art would have doubted Bohringer's reasoning. The Examiner also determines that Bohringer has not compared to the closest prior art, which, the Examiner finds, is Bansal. (Ans. 17, 11. 1-2.) However, as Bohringer demonstrates in the Reply 14 at pages 2-5, the weight of the evidence is that the light-weight, flexible glove described by Bansal is not particularly close to the claimed invention. Cf Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1370-71 (Fed. Cir. 2007) (evidence must support the factual finding of what is the closest prior art). (The extensive discussion in the Reply is understandable given the extent of new arguments raised, apparently for the first time, in the Examiner's Answer.) For the foregoing reasons, we conclude that Bohringer has demonstrated harmful error in the appealed rejections. We therefore reverse. C. Order It is ORDERED that the rejection of claims 16-22, 25-34, and 36 is reversed. REVERSED 14 Reply Brief filed 1 August 2017 ("Reply"). 10 Copy with citationCopy as parenthetical citation