Ex Parte Bowers

Board of Patent Appeals and Interferences

Jan 30, 2012

10970820 (B.P.A.I. Jan. 30, 2012)

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.
10/970,820 10/21/2004 Charles Edward Bowers 30-2138 CIP2-D1 6192
7590 01/31/2012
Richard S. Roberts
Roberts & Roberts, LLP
P.O. Box 484
Princeton, NJ 08542-0484
EXAMINER
HURLEY, SHAUN R
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
01/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES EDWARD BOWERS
____________

Appeal 2009-014446
Application 10/970,820
Technology Center 3700
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/970,820

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STATEMENT OF THE CASE
Charles Edward Bowers (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-3, 10, 11, 14-24, 26, 27, and
29-36 under 35 U.S.C. § 103(a) as unpatentable over Lofquist (US
5,478,624, issued Dec. 26, 1995) and Lawrence (Carl A. Lawrence, Ph.D.,
Fundamentals of Spun Yarn Technology, 261-262, (2003)) and under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1-20 of Bowers (US 7,189,295 B2, issued Mar. 13,
2007). Claims 4-9, 12, 13, 25, and 28 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a yarn including a base fiber and a
binder fiber having a melting point substantially below that of the base fiber.
Spec. 1, ll. 11-16.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A wrap spun yarn produced by a process comprising the steps
of:
a. forming a bundle of fiber;
b. wrap spinning the bundle of fiber with a second fiber
comprising a heat-activated binder material having a melting point
range of about 105° to 190°C under ambient conditions to form a yarn;
c. twisting two or more of the yarns to form a plied yarn
comprising 0.1 to 12 weight percent of the binder material;
d. heating the plied yarn sufficiently to melt the binder material;
followed by
e. cooling the plied yarn to solidify the binder material.

SUMMARY OF DECISION
We AFFIRM.
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ANALYSIS
The obviousness rejection over Lofquist and Lawrence
Appellant argues the rejection under 35 U.S.C. §103(a) of claims 1-3,
10, 11, 14-24, 26, 27, and 29-36 together as a group. App. Br. 6 and 9.
Therefore, in accordance with 37 C.F.R. 41.37(c)(1)(vii), we have selected
claim 1 as the representative claim to decide the appeal, with claims 2, 3, 10,
11, 14-24, 26, 27, and 29-36 standing or falling with claim 1.
The Examiner found that Lofquist discloses a spun yarn having a base
fiber and a binder fiber having a melting point substantially below that of the
base fiber. Ans. 3. Appellant argues that the structure of Lofquist’s yarn is
different from the claimed yarn structure. App. Br. 6. Pointing to Lofquist’s
comingling of the binder fiber and the base fiber, Appellant opines that since
the binder fiber of Lofquist is dispersed throughout a bundle of base fibers,
whereas in the claimed yarn the binder fiber is wrap or ring spun around the
bundle of base fibers, the resulting yarn structures will be different. App.
Br. 6-7. See also, Reply Br. 2-3. According to Appellant, the binder fiber in
Lofquist will melt within the yarn, whereas in the claimed yarn the binder
fiber will melt around the yarn. Reply Br. 4.
In response, the Examiner takes the position that although there is a
difference in the structure of Lofquist’s yarn and the claimed yarn before the
heating phase, after heating the yarns will have the same structure because of
the binder fibers’ flow. Ans. 6. Specifically, the Examiner notes that:
Flow occurs when the yarn is heated, and is the
entire basis for utilizing binder fibers with base
fibers. When the yarn is heated, the binder fibers
melt, and the material flows between the base
fibers, interlocking them to one another. If the
binder did not flow, then it would not bind the base
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fibers together. The binder fiber absolutely must
flow.
Id.
According to the Examiner, “the final product of Lofquist and
Applicant will be the same; mainly a plurality of base fibers encapsulated
and bound together by the melted binder fiber by means of flow.” Ans. 7.
We agree with the Examiner’s position. It is well settled that the
USPTO has the initial burden of providing a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic reasonably flows from the teachings of the applied prior art.
See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once the USPTO
establishes a prima facie case of anticipation based on inherency, the burden
shifts to the applicant to prove that the prior art does not possess the
characteristic at issue. See Id. This is the case whether the rejection is based
on inherency under 35 U.S.C. § 102, prima facie obviousness under 35
U.S.C. § 103, or both jointly or alternatively. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977). In this case, Appellant’s Specification states that:
[The binder fibers] will flow to intersecting points
of base fiber and upon subsequent cooling will
encapsulate and bind fibers and yarn together,
thereby retaining the twist in the twist set yarn for
subsequent tufting to form cut-pile carpets.

Spec. 5, ll. 22-25. Emphasis added.
Similarly, Lofquist describes that:
…standard heat conditions … will cause the binder
fiber to melt sufficiently so that it loses its
structural identity as a fiber and is capable of
flowing. The molten copolyamide from the binder
fiber will flow to intersecting points of base fiber
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and upon subsequent cooling will encapsulate and
bond intersecting points of the base fiber.

Lofquist, col. 4, ll. 11-18. Emphasis added.
Hence, in contrast to Appellant’s position, Lofquist specifically
describes a flow pattern of the molten binder fibers similar to the flow
pattern of the binder fibers of Appellant’s yarn structure. In both cases, the
molten binder fibers flow to “intersecting points” of the base fibers and upon
cooling will encapsulate and bond the “intersecting points” of the base
fibers. As such, we find that Lofquist’s teachings of a similar flow pattern
of the molten binder fibers would suggest to a person of ordinary skill in the
art that after heating, the yarn of Lofquist will have the same structure as
Appellant’s claimed yarn. For the above reasons, we conclude that the
disclosure of Lofquist reasonably supports the Examiner’s determination
that after heating, the yarn of Lofquist will have the same structure as
Appellant’s claimed yarn, so as to shift the burden to Appellant to show that
this is not the case. Appellant has not come forward with any evidence to
satisfy this burden. An attorney's arguments in a brief (the flow pattern of
Lofquist’s binder fibers is different from the flow pattern of the binder fibers
of the claimed yarn) cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
Appellant also argues that the Examiner has not provided an adequate
reason to ring spin or wrap spin the bundle of fibers of Lofquist with a heat-
activated binder fiber. App. Br. 8. See also, Reply Br. 4-5. We are not
persuaded by Appellant’s argument for the following reasons.
As previously noted, the Examiner found that Lofquist discloses a
spun yarn having a base fiber and a binder fiber having a melting point
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substantially below that of the base fiber. Ans. 3. The Examiner further
found that Lawrence discloses both wrap spinning and ring spinning as
known methods “to further process fibers into spun yarns.” Id.
Furthermore, the Examiner found that although the binder fibers of Lofquist
are comingled with the bundle of base fibers, the resulting yarn structure is
not different from Appellant’s claimed yarn that has a bundle of base fibers
ring or wrap spun with binder fibers. Ans. 6-7. For the reasons set forth
above, we agree with the Examiner that the resulting yarn structure of
Lofquist is the same as that of Appellant’s claimed yarn. Hence, whether the
binder fibers are comingled (as per Lofquist) or ring or wrap spun (as per
Appellant’s claimed yarn), with the bundle of base fibers, does not appear to
impart any different structure on the resulting yarn because the flow pattern
of the binder fibers is similar. As such, after heating, the yarn of Lofquist
will have the same structure as Appellant’s claimed yarn, regardless of
whether the binder fibers were comingled (as per Lofquist) or ring or wrap
spun (as per Appellant’s claimed yarn), with the bundle of base fibers.
Accordingly, we agree with the Examiner that:
The only difference between Lofquist and
Applicant is that Lofquist blends the base and
binder to a degree, while Applicant keeps them
separate [by ring or wrap spinning]. But this
separation is BEFORE heat setting. Once the heat
setting occurs, the binder, as admitted by
Applicant and well known in the art, flows to bind
the base fibers together, and it is Examiner's
opinion that after flow occurs, the structures will
be identical; mainly a plied base fiber structure
with binder fiber melted therethrough.
Ans. 7.
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Since neither ring nor wrap spinning appears to impart any different
structure on the resulting yarn, using ring spinning or wrap spinning as
taught by Lawrence to form the yarn of Lofquist, as the Examiner proposes,
is merely the predictable use of prior art elements according to their
established functions. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007). Hence, we agree with the Examiner that, “[i]t would have been
obvious to one of ordinary skill in the art, at the time the invention was
made, to have utilized such well known spinning methods [ring or wrap
spinning] so as to create a twisted yarn for plying as is required by
Lofquist.” Ans. 3.
In conclusion, for the foregoing reasons, the rejection of claim 1, and
claims 2, 3, 10, 11, 14-24, 26, 27, and 29-36 standing or falling with claim 1,
under 35 U.S.C. §103(a) as unpatentable over Lofquist and Lawrence is
sustained.

The obviousness-type double patenting rejection over
claims 1-20 of Bowers
As in the obviousness rejection over the combined teachings of
Lofquist and Lawrence, the Examiner found that although there is a
difference in the structure of the yarn of claims 1-20 of Bowers and the
claimed yarn before the heating phase, after heating the yarns will have the
same structure because of the binder fibers’ flow. See Ans. 7. However, the
Examiner has not provided any evidence to show that the flow pattern of the
molten binder fibers in the yarn of claims 1-20 of Bowers, in which the
binder fiber is introduced at a twisting stage, and is twisted with at least two
ring spun fibers, is similar to the flow pattern of the binder fibers of
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Appellant’s yarn structure. Hence, the Examiner’s conclusion that the yarns
of claims 1-20 of Bowers and Appellant will have the same structure
because of the binder fibers’ flow is mere speculation and conjecture based
on an unfounded assumption that the flow patterns of the binder fibers of
Appellant’s yarn and that of claims 1-20 of Bowers are similar. Since
speculation and conjecture cannot form the basis for concluding
obviousness, the rejection of independent claims 1 and 22 and dependent
claims 2, 3, 10, 11, 14-21, 23, 24, 26, 27, and 29-36 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1-20 of Bowers cannot be sustained. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).

SUMMARY
The Examiner’s decision to reject claims 1-3, 10, 11, 14-24, 26, 27,
and 29-36 is affirmed.
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

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