Ex Parte Carter et al

Board of Patent Appeals and Interferences

Jul 25, 2012

11254547 (B.P.A.I. Jul. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KARIN ELIZABETH CARTER, CHIA PEI HUNG,
REBECCA PIRKL HURD, and DOBRIANA GHENEVA
____________

Appeal 2010-007859
Application 11/254,547
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Karin Elizabeth Carter et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s rejection of claims 15-23, 26, 32, and 57.
Appellants cancelled claims 1-14, 24, 25, 27-31, and 33-56. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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THE INVENTION
Appellants’ claimed invention relates to “an article of apparel at least
partially formed from a material element that includes a substrate and a
plurality of projections.” Spec. 3, para. [04]. Claim 15 (the sole
independent claim), reproduced below, is representative of the subject matter
on appeal.
15. An article of apparel at least partially
formed from a material element, the material
element comprising:
a substrate with a first surface and an
opposite second surface; and
a plurality of projections extending from the
first surface of the substrate, the projections each
having terminal ends located opposite the
substrate,
wherein the material element has a first
permeability when the first surface has a convex
configuration, and the material element has a
second permeability when the first surface has a
concave configuration, the first permeability being
greater than the second permeability.
App. Br., Clms. App’x.

THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 15-18 and 20 are rejected under 35 U.S.C. § 102(b) as
anticipated by Peart (US 5,052,053; iss. Oct. 1, 1991). Ans. 3.
2. Claims 15 and 57 are rejected under 35 U.S.C. § 102(b) as anticipated
by Ludwikowski (US 3,296,626; iss. Jan. 10, 1967). Ans. 4.
3. Claims 15-20, 26, and 32 are rejected under 35 U.S.C. § 102(e) as
anticipated by Rowe (US 7,234,171 B2; iss. Jun. 26, 2007). Ans. 6.
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4. Claims 21-23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Peart. Ans. 8.

OPINION
Anticipation based on Peart
The Examiner determines that Peart teaches an
article of apparel at least partially formed from a
material element (50) . . . comprising: a substrate
(63/63a) with a first surface and an opposite
second surface (see figure 4 and 4C); and a
plurality of projections (97, 64/a) extending from
the first surface of the substrate (63/a) . . . wherein
the material element (50) has a first permeability
when the first surface has a convex configuration
(figure 4, 4A), and the material element has a
second permeability when the first surface has a
concave configuration (figure 4A), the first
permeability being greater than the second
permeability (inherently due to the spaced apart
configuration of the projections 64/a, 97 when in
the concave vs. convex configuration: figure 4A
shows a partial first half in a convex configuration
with projections 66a becoming spaced apart to
create greater permeability).

Ans. 3-4.

Appellants argue that “there is no teaching or suggestion of a first
surface having a convex configuration and a concave configuration, let alone
a first permeability in the convex configuration and a second permeability in
the concave configuration, as recited in claim 15” and that “there is no
teaching or suggestion in Peart of a first or second permeability, let alone a
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first permeability being greater than a second, as recited in claim 15.” App.
Br. 4.
However, a prior art reference may anticipate without disclosing a
feature of the claimed invention if that characteristic is necessarily present,
or inherent, in the single anticipating reference. Schering Corp. v. Geneva
Pharm. Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Thus, Peart can still
anticipate without specifically disclosing that “the material element has a
first permeability when the first surface has a convex configuration, and the
material element has a second permeability when the first surface has a
concave configuration, the first permeability being greater than the second
permeability,” as called for in claim 15, if that characteristic is necessarily
present or inherent.
Appellants also assert that 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.” App. Br. 4. The
Examiner responds that “all material surfaces that are flexible, are capable of
having a concave and convex configuration” and that “[a]ll material surfaces
have a permeability, therefore the convex configuration and concave
configuration would both have a permeability.” Ans. 14. The Examiner
finds that, in Peart, the convex configuration occurs when “the projections
(64/a and 97) will be spaced apart to a greater extent due to the substrate
being the inner portion of the bow/arch and the projections extending
outwardly from the substrate” and the concave configuration occurs when
“the substrate (63/a) would be curved like a lower circle/sphere so that the
projections (64/a and 97) would be brought closer together, curving upon
themselves.” Id. The Examiner then finds that the “planar substrate and
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projections of Peart et al. when in the convex position would create a greater
air permeability due to the greater exposed areas between the projections and
a lesser air permeability when in the concave position due to less area being
exposed between the projections (see figure 4A, areas 66a become exposed
when starting to configure in a convex manner and remain less exposed in
the planar and therefore concave configuration).” Ans. 15. The Examiner
also finds that “the planar structure of Peart et al. (figures 4 and 4A) and
Appellant’s invention (figure 6) have the same substrate and projection
structure as required by claim 15” and that the “permeability of the material
element is dependent upon the curvature of the substrate.” Id. Thus, the
Examiner finds that the “material type is not a factor, but the spatial
relationship between the substrate and the projections [is].” Id.
Appellants respond that “the Examiner’s Answer appears to assert,
and the Final Office Action does assert (see p. 3), that the first permeability
being greater than the second permeability is inherent due to the spacing and
configuration of the projections of Peart.” Reply Br. 2 (referring to Ans.
15). Appellants contend that “the feature of the first permeability being
greater than the second is not necessarily present in the garment of Peart”
and that “the first and second levels of permeability may be the same.”
Reply Br. 3. Appellants further contend that “spacing [t]he projections
further apart may allow more fluid into the gaps between the projections”
and that “there is no teaching or suggestion of this increased fluid passing
through the material element.” Id. Appellants assert that “the permeability
is not affected because spacing the projections apart does not affect what is
flowing through the material.” Id.
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Once a reference that teaches a product appearing to be substantially
identical is made the basis of a rejection, and the Examiner presents
evidence or reasoning tending to show inherency, the burden shifts to the
applicant to show an unobvious difference. “[T]he PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his [or her] claimed product . . . . Whether the
rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie
obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of
proof is the same,” In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting
In re Best, 562 F.2d 1252, 1255 (CCPA 1977)). The Examiner has provided
reasoning tending to show inherency based on Peart. Appellants, however,
provide no evidence against the Examiner’s reasoning and do not prove that
the garment of Peart does not necessarily or inherently possess a first
permeability when a first surface has a convex configuration, a second
permeability when the first surface has a concave configuration, and a first
permeability greater than the second permeability. Instead, Appellants’
attorney provides arguments, and the Appellants’ attorney’s arguments are
insufficient, because they alone cannot take the place of objective evidence
in the record. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appellants also argue that “the wet and dry suits of Peart teach away
from differing permeabilities since the purpose of the suit of Peart is to
prevent water from permeating the material.” App. Br. 4 and Reply Br. 2.
However, the question whether a reference “teaches away” from the
invention is inapplicable to an anticipation analysis. Celeritas Techs., Ltd. v.
Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (The prior art
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was held to anticipate the claims even though it taught away from the
claimed invention.).
Therefore, we sustain the Examiner’s rejection of claim 15 under 35
U.S.C. § 102(b) as anticipated by Peart. Appellants do not provide a
substantive argument as to the separate patentability of claims 16-18 and 20
that depend from claim 15. Accordingly, we sustain the Examiner’s
rejection of claims 15-18 and 20 under 35 U.S.C. § 102(b) as anticipated by
Peart.
Anticipation based on Ludwikowski
The Examiner determines that Ludwikowski teaches a
material element comprising: a substrate (27) with
a first surface and an opposite second surface; and
a plurality of projections (28) extending from the
first surface of the substrate (see figure
4),…wherein the material element has a first
permeability when the first surface has a convex
configuration, and the material element has a
second permeability when the first surface has a
concave configuration, the first permeability being
greater than the second permeability (inherently
when the first material is in a convex configuration
it would have a greater permeability, due to the
projections (28) extending outwardly from the
substrate (27) creating exposed spaces between the
projections.

Ans. 5. The Examiner also determines that the “concave configuration
would have a lesser permeability, due to the projections (28) overlapping
each other,” that the “convex configuration would require the permeability
to be measured between only one layer of material at the exposed areas
creating a greater first air permeability,” and that the “concave configuration
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would require the permeability to be measured between both layers, the
substrate and the projections, throughout the length of the material creating a
lesser second air permeability.” Id.
Appellants argue that “[t]here is absolutely no teaching or suggestion
in Ludwikowski of a material element having a first permeability when the
first surface has a convex configuration, and the material element having a
second permeability when the first surface has a concave configuration, let
alone the first permeability being greater than the second permeability.”
App. Br. 5-6. However, as stated supra, a prior art reference may anticipate
without disclosing a feature of the claimed invention if that characteristic is
necessarily present, or inherent, in the single anticipating reference.
Schering at 1377. Therefore, we must determine if a material element
having a first permeability when a first surface has a convex configuration
and a lesser second permeability when the first surface has a concave
configuration is necessarily present or inherent in Ludwikowski.
The Examiner finds that the substrate 27 of Ludwikowski “is made of
pre-formed, semi-rigid plastic panel with projections (28) that are formed of
plastic that can be covered with or without fabric as desired” and that the
substrate 27 “is capable of being folded into a convex or concave
configuration.” Ans. 18. The Examiner further finds that “[a]ll materials
have a permeability to air, water and light.” Id. The Examiner states that
the “substrate (27) of Ludwikowski when in the convex configuration would
provide for the projections to remain separated from each other, even more
so than, the separation as illustrated in figure 4 (Ludwikowski) above in the
planar configuration” and that the “exposed area between the
projections/flaps (28) would increase the permeability of the material
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configuration, due to less material layers to penetrate.” Ans. 19. The
Examiner further states that the “substrate (27) of Ludwikowski when in the
concave configuration would provide for the projections to fold over on
themselves covering the exposed area between the projections/flaps (28) . . .
therefore decreasing the permeability of the material configuration, due to
more material layers to penetrate.” Id.
However, Ludwikowski discloses that “there are provided pre-formed
semi-rigid plastic panels 27 of louvered construction, the overlapping flaps
28 of which extend outwardly and downwardly with slit openings for air
circulation.” Ludwikowski, col. 3, ll. 52-56. Emphasis omitted. Thus,
because the flaps 28 of Ludwikowski are described as overlapping and
extending outwardly and downwardly, the overlapping flaps 28 need not
separate so that there are less material layers to penetrate, as reasoned by the
Examiner. Instead, the overlapping flaps 28 may continue to overlap in a
convex configuration so that the number of material layers to penetrate does
not change.
Therefore, a material element having a first permeability when a first
surface has a convex configuration, a second permeability when the first
surface has a concave configuration, and a first permeability greater than a
second permeability is not necessarily present or inherent in Ludwikowski.
Accordingly, we are constrained to reverse the Examiner’s rejection of
independent claim 15, and claim 57 dependent thereon, under 35 U.S.C. §
102(b) as anticipated by Ludwikowski.

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Anticipation based on Rowe
The Examiner determines that Rowe teaches an
article of apparel at least partially formed from a
material element (10) . . . comprising: a substrate
(50) with a first surface and an opposite second
surface (figures 7 and 8); and a plurality of
projections (16) extending from the first surface of
the substrate (50), . . . wherein the material
element (10) has a first permeability when the first
surface has a convex configuration (figure 8), and
the material element (50) has a second
permeability when the first surface has a concave
configuration (figure 7), the first permeability
being greater than the second permeability (the
configuration of figure 8 would have a greater
permeability than the second configuration 7 due
to the layered structures, one layer vs. a two
layers).
Ans. 6.
Appellants argue that “that there is no teaching or suggestion of a first
surface having a convex configuration and a concave configuration, let alone
a first permeability in the convex configuration and a second permeability in
the concave configuration, as recited in claim 15” and that “[t]here is no
teaching or suggestion in Rowe of any convex or concave configuration
varying the permeability.” App. Br. 6. However, as stated supra, a prior art
reference may anticipate without disclosing a feature of the claimed
invention if that characteristic is necessarily present, or inherent, in the
single anticipating reference. Schering at 1377.
The Examiner responds that “Figure 7, of Rowe et al. teaches
substrate (50) and projections (16, 10) which would have a lesser
permeability due to the double material thickness in a concave
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configuration,” that “Figure 8, of Rowe et al. teaches a substrate (50a, b, c)
and projections (10, 16) which would have a greater permeability due to the
single material thickness at some portions in a convex configuration,” and
that “Figures 7 and 8 can be flexed into a convex/concave configuration as
desired.” Ans. 20.
In contrast to the Examiner’s finding that the pleat 16 of Rowe teaches
the projections of claim 15, Rowe discloses that “each perforation 52…is
aligned with the pleat 16 in the material 10 in such a manner that tearing of
the perforation 52 or of the panel 50 itself will enable the pleat 16 to unfold
thereby effectively lengthening the material 10.” Rowe, col. 6, ll. 19-23.
Emphasis omitted. Rowe also states that “[in] FIG. 7 it may be seen that the
material 10 will initially be in the configuration depicted, i.e., the pleat 16
will be in an initial folded orientation within the material” and that “[u]pon
application of the requisite force, the perforation 52 will fail thereby
separating the panel 50 into disparate panel sections 50a, 50b, and 50c as
depicted on FIG. 8.” Rowe, col. 6, ll. 25-31. Emphasis omitted. Figure 7 of
Rowe shows that the pleat 16 can extend from a surface of panel 50;
however, Figure 8 of Rowe shows that the pleat 16 is unfolded and nearly
straightened so as to lengthen the material 10. Figure 8 also shows that
neither the unfolded pleat 16, nor any portion of material 10, extends from a
surface of panel sections 50a, 50b, or 50c. Therefore, the Examiner’s
finding of “a plurality of projections (16) extending from the first surface of
the substrate (50), . . . wherein the material element (10) has a first
permeability when the first surface has a convex configuration (figure 8),
and the material element (50) has a second permeability when the first
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surface has a concave configuration (figure 7)” is not necessarily present or
inherent in Rowe.
Thus, because not each and every element is found, expressly or
inherently in Rowe, we are constrained to reverse the Examiner’s rejection
of independent claim 15, and claims 16-20, 26, and 32 dependent thereon,
under 35 U.S.C. § 102(e) as anticipated by Rowe.
Obviousness based on Peart
Claims 21-23 depend indirectly from independent claim 15.
Appellants do not provide any substantive arguments as to the separate
patentability of claims 21-23. Instead, Appellants rely on the same
unpersuasive arguments presented supra against the rejection of claim 15
under 35 U.S.C. § 102(b) as anticipated by Peart. App. Br. 5. Thus, for the
same reasons as discussed supra with respect to the Examiner’s rejection of
independent claim 15 under 35 U.S.C. § 102(b) as anticipated by Peart, we
sustain the Examiner’s rejection of claims 21-23 under 35 U.S.C. § 103(a) as
unpatentable over Peart.

DECISION
We affirm the Examiner’s rejection of claims 15-18 and 20 under 35
U.S.C. § 102(b) as anticipated by Peart.
We reverse the Examiner’s rejection of claims 15 and 57 under 35
U.S.C. § 102(b) as anticipated by Ludwikowski.
We reverse the Examiner’s rejection of claims 15-20, 26, and 32
under 35 U.S.C. § 102(e) as anticipated by Rowe.
We affirm the Examiner’s rejection of claims 21-23 under 35 U.S.C.
§ 103(a) as unpatentable over Peart.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED-IN-PART

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