Ex Parte Chen

Patent Trial and Appeal Board

Feb 19, 2014

11742104 (P.T.A.B. Feb. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/742,104 04/30/2007 Ming-Ming Chen SY-40433-1/710240-3492 4266
59582 7590 02/20/2014
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
COLE, ELIZABETH M
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
02/20/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MING-MING CHEN

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Appeal 2012-010261
Application 11/742,104
Technology Center 1700
____________

Before JEFFREY T. SMITH, MARK NAGUMO,
and GEORGE C. BEST, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-010261
Application 11/742,104

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1 -24. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s invention is directed to a fire retardant insulating textile
material and method of making it. App. Br. 2. Claim 1 illustrates the
subject matter on appeal and is reproduced below:
1. A fire-retardant insulating material, comprising:
at least one layer of textile fabric constructed at least in
part from at least one monofilament, said monofilament being
formed of basalt that is continuous for the entire length of said
monofilament.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Ritchie US 2002/0090871 A1 Jul. 11, 2002
Lindner US 2004/0222013 A1 Nov. 11, 2004
Morris US 6,876,797 B2 Apr. 5, 2005

Uribarri US 2005/0124249 A1 Jun. 9, 2005
Sharp GB 2 140 325 A Nov. 28, 1984
Appellant, App. Br. 3, requests review of the following rejections
from the Examiner’s final office action:
I. Claims 1-5, 8, 11, 13, 15 and 17-21 rejected under 35 U.S.C. § 103(a)
as unpatentable over Morris and Ritchie.
II. Claims 6-7, 14 and 16 rejected under 35 U.S.C. § 103(a) as
unpatentable over Morris, Ritchie and Lindner.
III. Claims 12 and 21 rejected under 35 U.S.C. § 103(a) as unpatentable
over Morris, Ritchie and Sharp.
IV. Claims 9-10 and 22-24 rejected under 35 U.S.C. § 103(a) as
unpatentable over Morris, Ritchie and Uribarri.
Appeal 2012-010261
Application 11/742,104

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OPINION
The dispositive issue on appeal is: Did the Examiner err in
determining that the combined teachings of Morris and Ritchie would have
led one skilled in the art to a fire retardant insulating textile material
comprising at least one monofilament formed of basalt that is continuous for
the entire length of the monofilament as required by the subject matter of
independent claims 1 and 13?1, 2
We AFFIRM.
Appellant argues that Ritchie discloses forming continuous fibers out
of basalt that are not analogous to monofilaments formed of basalt that are
continuous for the entire length of the monofilaments because Ritchie is
directed to basalt fiber-containing reinforcing webs preferably in the form of
a mesh or scrim comprising spaced warp and woof strands, where each
strand is made from a plurality of aligned, continuous basalt fibers and not
basalt monofilaments. App. Br. 4; Ritchie ¶ [0011].

1 Appellant only presents arguments with respect to independent claim 1
(App. Br. 3-4) and relies substantially on these arguments in addressing
independent claim 13 (id. at 4). We limit our initial discussion to
independent claim 1. Dependent claims 2-12 and 14-24 stand or fall
together with their respective independent claims.
2 A discussion of Lindner, Sharp and Uribarri, cited by the Examiner in the
respective separate rejections under 35 U.S.C. § 103(a) of dependent claims
6-7, 14 and 16 (Ans. 5-6), dependent claims 12 and 21 (id. at 6) and of
dependent claims 9-10 and 22-24 (id. at 6-7) is unnecessary for disposition
of the present appeal. The Examiner relied upon these references for
features not related to the dispositive issue, and this reliance was not
substantively challenged. See App. Br. 4-6.
Appeal 2012-010261
Application 11/742,104

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The Examiner found that Morris discloses a fire resistant protective
sleeve for a cable comprising a woven fabric of basalt monofilament yarns.
Ans. 4; Morris col. 3, ll. 15-32. The Examiner further found that Morris
does not explicitly teach the basalt monofilament yarns as continuous along
their entire length. Ans. 4. The Examiner found that Ritchie teaches a mesh
comprising a basalt monofilament that is continuous along its entire length
as claimed by Appellant. FR3 2, 5; Ans. 4-5, 8; Ritchie ¶¶ [0006], [0153].
The Examiner found that it would have been obvious to one skilled in the art
to use Ritchie’s basalt monofilaments in the fire retardant sleeve of Morris in
view of Ritchie’s disclosure. Ans. 4-5.
Appellant has not directed our attention to evidence in the record that
contradicts the Examiner’s finding that Ritchie discloses a basalt
monofilament that is continuous along its entire length as claimed.
Appellant also has not directed us to evidence that the basalt monofilaments
of Ritchie would lose their monofilamentary character when used to make a
strand as disclosed by Ritchie. Ritchie ¶ [0011].
Although the Examiner and Appellant agree that Morris does not
teach a basalt monofilament that is continuous across its length, Morris does
disclose warp yarns extending along its length. Morris col. 5, ll.48-50. The
claim limitation, “[a] textile fabric constructed at least in part from at least
one monofilament” includes textiles formed from yarns comprising
monofilaments. Thus, Morris’s disclosure suggests that Morris’
monofilament yarns are continuous for the entire length of the monofilament
as required by the subject matter of independent claims 1 and 13. We have

3 Final Rejection, mailed November 10, 2011.
Appeal 2012-010261
Application 11/742,104

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not been directed to evidence indicating that basalt monofilaments would
lose their monofilamentary character, etc., during yarn formation or
subsequent weaving.
DECISION
For the foregoing reasons, we affirm the rejections of claims 1-24
under 35 U.S.C. § 103(a).
The decision of the Examiner rejecting claims 1-24 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).

AFFIRMED

rvb