Ex Parte Breuer et al

Board of Patent Appeals and Interferences

Mar 8, 2012

11009157 (B.P.A.I. Mar. 8, 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.
11/009,157 12/10/2004 Hans-Peter Breuer 930069-2016 3719
20999 7590 03/09/2012
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
EXAMINER
MUROMOTO JR, ROBERT H
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
03/09/2012 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 HANS-PETER BREUER, JESUS PEREZ, and
WILLIAM LUCIANO
____________

Appeal 2009-015188
Application 11/009,157
Technology Center 3700
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015188
Application 11/009,157

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STATEMENT OF THE CASE
Hans-Peter Breuer et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-9 under 35 U.S.C. § 103(a)
as unpatentable over Bowen (US 5,449,548, issued Sep. 12, 1995), Rydin
(US 6,302,155 B1, issued Oct. 16, 2001), and Keller (US 5,597,646, issued
Jan. 28, 1997). Appellants present additional evidence in the Declaration of
William Luciano (hereafter the “Luciano Declaration”) filed under 37 C.F.R.
§ 1.132 on Nov. 7, 2008. We have jurisdiction over this appeal under 35
U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to papermaking fabric including a pintle
or connecting element 2 that is inserted into channel 22 formed from
interdigitating spirals 14, 16 of the fabric such that pintle or connecting
element 2 can deform under compression or tension. Spec. 4, ll. 12-13;
Spec. 5, ll. 18-19; and fig. 3.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. An industrial fabric comprising a plurality of links, coils or
loops, which are joined and held together by a pintle yarn placed in a
channel formed between successive links, coils or loops,
wherein said pintle yarn includes a center portion and a portion
thereof which is deformable under compression or tension,
wherein said deformation occurs towards a central axis of said
center portion, thereby creating a circular or continuous yarn shape.

SUMMARY OF DECISION
We REVERSE.
Appeal 2009-015188
Application 11/009,157

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ANALYSIS
Independent claim 1 requires a pintle yarn including “a center portion
and a portion thereof that is deformable under compression or tension,
wherein said deformation occurs towards a central axis of said center
portion.” Br., Claims Appendix. The Examiner found that because Bowen
discloses a papermaking fabric including filaments that are designed to “flex
and distort,” the filaments “would inherently deform in a direction toward
the central axis of the yarn as the myriad of forces during the papermaking
process will cause the yarn to flex and distort i[n] all directions.” Br. 4. See
also Bowen, figs. 10 and 13. In other words, the Examiner appears to take
the position that merely because the filaments of Bowen are flexible and the
yarn deforms in all directions, Bowen’s filaments will necessarily deform
towards a central axis of a center portion of the filament. We disagree.
“The inherent teaching of a prior art reference, a question of fact,
arises both in the context of anticipation and obviousness.” In re Napier, 55
F.3d 610, 613 (Fed. Cir. 1995). However, the fact that a certain result or
characteristic may occur or be present in the prior art is not sufficient to
establish the inherency of that result or characteristic. See In re Rijckaert, 9
F.3d 1531, 1534 (Fed. Cir. 1993). “In relying upon the theory of inherency,
the examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
In this case, Bowen discloses a papermaking fabric yarn containing
filaments that are designed to “flex and distort” having two or more finned
extensions that incorporate a reduced cross-section “hinge” area from the
Appeal 2009-015188
Application 11/009,157

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center outward. Bowen, col. 3, ll. 10-16 and figs. 10 and 13. While the
Examiner correctly points out that the filaments of Bowen are designed to
“flex and distort,” this in no way demonstrates that the filaments of Bowen
deform towards a central axis of a center portion of the filament. In other
words, just because the filaments of Bowen are flexible and can deform, it
does not necessarily mean that the “deformation occurs towards a central
axis of said center portion,” as called for by independent claim 1. Bowen
specifically discloses that, “[b]y remaining extended where there is no fiber
to fiber crushing action, the fins fill the fabric interstitial spaces and control
fabric porosity.” Bowe, Abstract. Emphasis added. Hence, we agree with
Appellants that the hinge design of Bowen’s filaments allows the fins to
bend off-axis at the hinge portion (away from a central axis of the center
portion) into voids to better fill those voids. Br. 12. We further agree with
Appellants that “[i]f the fins were adapted to deform toward the central axis,
as opposed to flexing at the hinges, the fins would not fill the voids.” Id. As
such, the Examiner’s finding that the filaments of Bowen deform towards a
central axis of a center portion of the filament is mere speculation and
conjecture based on an unfounded assumption that Bowen’s filaments flex
and distort in all directions.
The Examiner’s proposed modification of Bowen with the teachings
of Rydin and Keller does not remedy the deficiencies of Bowen as described
above. 1

1 Because we have determined that the Examiner failed to show that the
filament of Bowen, Rydin, and Keller necessarily deforms towards a central
axis of a center portion of the filament, we do not need to reach the evidence
of the Luciano Declaration.

Appeal 2009-015188
Application 11/009,157

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Accordingly, the rejection of independent claim 1, and its dependent
claims 2-9, under 35 U.S.C. § 103(a) as unpatentable over Bowen, Rydin,
and Keller cannot be sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed.
Cir. 1988).

SUMMARY
The decision of the Examiner to reject claims 1-9 is reversed.

REVERSED

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