Ex Parte Harris et al

Patent Trial and Appeal Board

Oct 17, 2017

13104508 (P.T.A.B. Oct. 17, 2017)

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.
13/104,508 05/10/2011 David A. Harris 710240-5608 1358
59582 7590 10/17/2017
DTrKTNSON WRIGHT PT T C EXAMINER
2600 WEST BIG BEAVER ROAD MCKINNON, LASHAWNDA T
SUITE 300
TROY, MI 48084-3312 ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
10/17/2017 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 DAVID A. HARRIS and
ERIC K. STAUDT
Appeal 2017-003417
Application 13/104,5081
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 2, 4—9, 17—21, and 45.2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and also enter NEW GROUNDS OF
REJECTION under 37 C.F.R. § 41.50(b) for claim 45.
1 According to Appellants, the real party in interest is Federal-Mogul
Powertrain, Inc. (Appeal Br. 1).
2 Claims 22-44 are withdrawn from consideration due to a restriction
requirement. Final Act. 2.
Appeal 2017-003417
Application 13/104,508
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added):
1. A self-wrapping, non-woven sleeve for routing and
protecting elongate members, comprising:
an elongate non-woven wall having opposite sides
extending along a longitudinal axis of said sleeve in
overlapping relation with one another, said non-woven wall
being heat-set to bring said sides into a self-wrapped
configuration about said longitudinal axis with said opposite
sides being biased into said overlapping relation with one
another to provide a tubular cavity in absence of an externally
applied force, said sides being extendable away from one
another under an externally applied force to expose said cavity
for insertion of the elongate members, said sides returning to
their self-wrapped configuration upon removal of the externally
applied force; and
said nonwoven wall having discrete first regions of a
heat-set first material having a first melt temperature and
discrete second regions of a non-heat-set second material
having a second melt temperature that is higher than said first
melt temperature, said heat-set first material being formed of
low melt staple length fibers providing said first regions of said
nonwoven wall with increased hoop strength and biasing said
nonwoven wall into said self-wrapped configuration and said
non-heat-set second material providing said second regions
with increased flexibility relative to said first regions.
The Examiner maintains3 the following rejections under 35 U.S.C.
§ 103(a):
(a) claims 1,17, and 45 as unpatentable over Yamaguchi et al. (US
2008/0006432 Al, published Jan. 10, 2008) (“Yamaguchi”) in view of
Lassig et al. (US 2005/0136781 Al, published June 23, 2005) (“Lassig”);
3 The rejection of claims 1 and 17 under 35 U.S.C. § 103(a) over Sellis et al.
(US 2007/0166495 Al, published July 19, 2007) (“Sellis”) has been
withdrawn by the Examiner (Ans. 18).
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(b) claims 1, 2, 4, 6—9, and 17—19 as unpatentable over Sellis in view
of Pithouse et al. (US 4,803,103, issued Feb. 7, 1989) (“Pithouse”) as
evidenced by INEOS (INEOS entry for “Typical Engineering Properties of
Polypropylene,”
http://www.ineos.com/Global/01efms%20and%20Polymers%20USA/Produ
cts/Technical%20information/Engineering%20Properties%20of%20PP.pdf
(last visited January 27, 2014)) (“INEOS”) and DuPont (“Technical Guide,
Kevlar®, Aramid Fiber,” DuPont, 19924) (“DuPont”);
(c) claim 5 as unpatentable over Sellis in view of Pithouse and further
in view of Baer (US 7,216,678 B2, issued May 15, 2007) (“Baer”);
(d) claim 20 as unpatentable over Sellis in view of Pithouse and
further in view of Conaghan et al. (US 4,929,478, issued May 29, 1990)
(“Conaghan”);
(e) claim 21 as unpatentable over Sellis in view of Pithouse and
further in view of Wenstrup (US 7,157,137 B2, issued Jan. 2, 2007)
(“Wenstrup”);
(f) claims 1 and 17—19 as unpatentable over Lindner (EP 1 063 747
Al, published Dec. 27, 2000) (“Lindner”)5 in view of Pithouse as evidenced
by INEOS and DuPont;
(g) claim 20 as unpatentable over Lindner in view of Pithouse and
further in view of Conaghan;
4 The Examiner lists a date of 1992 for DuPont in the Notice of Reference
cited for the Office Action mailed March 23, 2015. Appellants do not
dispute this date on appeal.
5 For the specification of Lindner, we refer to a machine-prepared English
language translation of Lindner provided with the Office Action dated Feb
19, 2014.
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(h) claim 21 as unpatentable over Lindner in view of Pithouse and
further in view of Wenstrup;
(i) claims 2, 4, and 6—9 as unpatentable over Lindner in view of Sellis
and Pithouse as evidenced by The Williams Dictionary of BioMaterials
(D.F. Williams, The Williams Dictionary of Biomaterials, 215, Liverpool
University Press, 1969 (“The Williams Dictionary”)); and
(j) claim 5 as unpatentable over Lindner in view of Sellis and
Pithouse and further in view of Baer.
ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of claims 1,2, 4—
9, and 17—21 are unpatentable over the applied prior art for rejections (b)-
(j). We sustain rejections (b)—(j) of claims 1, 2, 4—9, and 17—21 essentially
for the reasons set out by the Examiner in the Answer. We add the
following primarily for rejection (a), which we do not sustain, and emphasis
for rejections (b)—(j).
For reasons stated below, the § 103(a) rejection of claims 1, 17, and
45 over Yamaguchi and Lassig (rejection (a)) is not sustained. However, we
include claim 45 in the § 103(a) rejections over Sellis and Pithouse; Lindner
and Pithouse; and Lindner, Sellis, and Pithouse (rejections (b), (f), and (i)),
as discussed below. We therefore designate the rejections of claim 45 in
rejections (b), (f), and (i) as new grounds.
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Rejection (a)
Claims 1,17, and 45 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamaguchi in view of Lassig.
The Examiner finds Yamaguchi discloses a self-wrapping non-woven
sleeve including an elongate non-woven wall that is heat-settable so opposite
sides of the wall can extend in overlapping relation with one another (Ans.
2). The Examiner finds Yamaguchi discloses the use of low-melt
polyethylene terephthalate (PET) and standard PET but does not disclose
discrete regions and staple fibers (id, at 2—3). The Examiner finds Lassig
discloses a method to form a nonwoven having alternating regions (i.e.,
discrete regions) of a first fiber type and a second fiber type that produce a
web with a plurality of physical properties (id. at 3). The Examiner
concludes it would have been obvious “to use the discrete regions of Lassig
et al, in Yamaguchi et ai, in order to impact the properties of the nonwoven
and produce a web with a plurality of physical properties via the method of
Lassig et al. and thereby arrive at the claimed invention” (id.).
Appellants’ principal argument concerning claim 1 is that one of
ordinary skill in the art would not have considered Lassig when considering
a modification of Yamaguchi and there would have been no reason to
modify Yamaguchi in view of Lassig (Appeal Br. 7—8).
Appellants’ arguments are persuasive. “[A] patent composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the prior art” (KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)). Moreover, ‘“rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
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underpinning to support the legal conclusion of obviousness’” (id. at 418
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, the Examiner has not provided articulated reasoning with some
rational underpinning why one of ordinary skill in the art would have
modified Yamaguchi in view of Lassig. As argued by Appellants (Appeal
Br. 7), Lassig concerns nonwoven fibrous webs for medical care garments
and products, protective wear garments, mortuary and veterinary products,
and personal care products (Lassig Tflf 1, 20). A first region of the web may
have a majority of a first fiber type and a second region of the web may have
a majority of a second fiber type (id. 4, 30-31). The Examiner finds
Lassig discloses its nonwoven web is not limited to medical and health care
uses (Ans. 19—20). It appears to be implicit in the Examiner’s finding that
Lassig’s nonwoven web could be used in other applications, such as the
sleeve of Yamaguchi for protecting elongate members of vehicles
(Yamaguchi || 3, 5).
Regardless of whether Lassig suggests its nonwoven web could be
used for other applications or whether Lassig discloses the nonwoven web
may be used in other medical care garments and products, protective wear
garments, mortuary and veterinary products, and personal care products than
those examples expressly disclosed by Lassig (as argued by Appellants
(Reply Br. 2—3)), the Examiner does not explain why one of ordinary skill in
the art would have modified the sleeve of Yamaguchi to include regions of
different properties. Even if a reference such as Lassig generally suggests it
may be used for other applications, there must still be some articulated
reasoning to explain why one of ordinary skill in the art would have used the
regions of different fiber types disclosed by Lassig in the sleeve of
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Yamaguchi—e.g., whether it would have been to address a problem existing
in the art, to address a challenge faced by one of ordinary skill when using
the sleeve of Yamaguchi in a vehicle, or another reason that would have
been apparent to one of ordinary skill and knowledge in the art. In view of
this deficiency, the Examiner has not set forth a prima facie case of
obviousness and it follows that the Examiner has engaged in impermissible
hindsight when rejecting claims 1, 17, and 45 over Yamaguchi and Lassig.
Therefore, on the record before us, we do not sustain the Examiner’s
§ 103 rejection of claims 1,17, and 45 over Yamaguchi and Lassig.
Rejections (b), (f), and (i)
Claims 1, 2, 4, 6—9, and 17—19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Sellis in view of Pithouse as evidenced by INEOS and
DuPont.
Claims 1 and 17—19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lindner in view of Pithouse as evidenced by INEOS and
DuPont.
Claims 2, 4, and 6—9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lindner in view of Sellis and Pithouse as evidenced by
The Williams Dictionary.
Because these rejections raise common issues, we address them
together. Nevertheless, Appellants argue claims 1 and 17—19 as a group and
claims 2, 4, and 6—9 as a group (Appeal Br. 9-11, 13—16). We address these
groups separately below.
We enter new grounds of rejection for claim 45 by including claim 45
in each of the rejections over Sellis in view of Pithouse (rejection (b)) and
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over Lindner in view of Pithouse (rejection (f)). We include the new
grounds of rejection for claim 45 in the discussion of claim 1 below.
Claims 1 and 45
In the rejection over Sellis in view of Pithouse, the Examiner finds
Sellis discloses a scrim layer 52 that can be attached to a nonwoven layer
and that the scrim layer 52 includes heat-settable plastic material that allows
the scrim layer 52 to be shaped into a self-wrapping sleeve, as recited in
claim 1 (Ans. 4—5).
Sellis discloses a sleeve 50 including a scrim layer 52, an inner layer
54 of non-woven insulative material and an outer layer 56 having a
refractive (e.g., metallic) surface (Sellis Tflf 27—29). The scrim layer 52
includes first filamentary members 14 woven or interlaced with second
filamentary members 18 that can include a heat-settable core 28 and an outer
heat-fusible sheath 30 {id. 127). Therefore, the disclosure of Sellis supports
the Examiner’s findings.
In the rejection over Lindner in view of Pithouse, the Examiner finds
Lindner discloses a nonwoven tubular sheath and Figure 2 suggests that the
sheath is formed into a self-wrapped configuration in order to assume its
tubular shape (Ans. 11).
Lindner discloses a protective sheath for elongated flexible articles
and discloses the sheath can include nonwoven material (Lindner ^ 1,6,
27). Figure 2 of Lindner depicts the sheath in a wrapped configuration and
paragraph 25 of Lindner discloses the sheath is brought into the tubular or
sheath-like form. Therefore, the disclosure of Lindner supports the
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Examiner’s findings. In fact, Appellants do not dispute that the sheath of
Lindner provides a self-wrapped configuration (Appeal Br. 13).
The Examiner finds Sellis and Lindner do not disclose the first and
second regions6 recited in claim 1 (Ans. 5, 11).
Similar to claim 1, claim 45 recites, among other things, that the
nonwoven wall includes first regions of a first material having a first melt
temperature and discrete second regions of a second material having a
second melt temperature that differs from the first melt temperature. The
first material of claim 45 is formed of heat-set low melt staple length fibers
that provide the first region with increase hoop strength and bias the wall
into the self-wrapped configuration. The second material provides the
second regions with increased flexibility relative to the first regions so the
nonwoven wall can be routed around comers. Therefore, the Examiner’s
findings concerning Sellis and Lindner are applicable to claim 45 as well.
The Examiner finds Pithouse discloses a sleeve having zones of
different recovery ratios due to regions of different fiber mixtures, which
may include heat-set staple fibers (Ans. 5, 11). The Examiner finds Pithouse
discloses polypropylene as a type of fiber for a first region and Kevlar® as a
type of fiber for a second region and cites INEOS and DuPont as evidence
6 Claim 1 recites the first regions include a heat-set first material having a
first melt temperature and the discrete second regions include a non-heat-set
second material having a higher second melt temperature, among other
things. Claim 2 recites that first and second regions include different
materials and provide a non-woven wall with non-uniform properties,
among other things. Claim 45 recites that the first region includes a heat-set
first material having a first melt temperature and the discrete second regions
include a non-heat-set second material having a different, second melt
temperature, among other things. Thus, claims 1, 2, and 45 do not limit the
structure of the first and second regions to adjacent regions.
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that these materials have different melt temperatures (id. ). The Examiner
concludes it would have been obvious to modify Sellis in view of Pithouse
and Lindner in view of Pithouse to include the regions of Pithouse, which
provide increased hoop strength (id. at 6, 12).
Pithouse discloses a sleeve having zones of different recovery ratios
that are achieved by providing zones of different fiber types, such as
polypropylene and Kevlar®, which may be in the form of monofilaments,
multifilaments, or spun staple yams (Pithouse 2:54—68, 7:21—31, 8:6—32).
Pithouse further discloses that the sleeve is heat-shrinkable and heat-
recoverable (id. at 3:1—34). Therefore, the disclosure of Pithouse supports
the Examiner’s findings.
The Examiner’s findings and conclusions regarding Pithouse are also
applicable to modifying Sellis or Lindner to provide the sleeve of claim 45.
With regard to the recitation in claim 45 that the second material provides
increased flexibility so the nonwoven wall can be routed around comers, we
find Pithouse discloses its sleeve addresses the problem of sleeves splitting
over sharp transitions and that the sleeve provides greater flexibility (id. at
2:27-43, 5:11—15, 8:6—10). Therefore, modifying the sleeves of each of
Sellis and Lindner in view of Pithouse would provide the second material
recited in claim 45.
Appellants contend there would have been no reason to modify Sellis
or Lindner in view of Pithouse because each of Sellis and Lindner already
provides a stmcture that is sufficient by itself to maintain a protective
coating in a wrapped configuration without further assistance (Appeal Br. 9—
10, 13; Reply Br. 4—6).
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This argument is unpersuasive. The Examiner has provided a
rationale to modify Sellis or Lindner in view of Pithouse, i.e., to provide
zones of different recovery or hoop strength (Ans. 6, 12). The disclosure of
Pithouse supports this rationale by disclosing zones of different recovery
ratios, which provide enhanced flexibility, due to regions of different fiber
types (Pithouse 2:38-46, 7:21—45, 8:6—32). To the extent the Examiner’s
rationale differs from Appellants’ reason to provide the claimed invention,
“the motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness.” In re Kemps, 97
F.3d 1427, 1430 (Fed. Cir. 1996). Indeed, “any need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR,
550 U.S. at 420. See also KSR, 550 U.S. at 417 (“if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill”).
Appellants further argue that Pithouse does not disclose heat-set fibers
because Pithouse only teaches the use of spun staple yam and this is not the
same as a heat-set staple fiber used in a nonwoven material (Appeal Br. 10,
13). The Examiner finds that Pithouse discloses its fibers may be
monofilaments, multifilaments, or spun staple yams (which is disclosed in
column 8, lines 6—8, of Pithouse) and thus one of ordinary skill in the art
would have understood that staple fibers are disclosed by Pithouse (Ans. 21,
25). With regard to heat-set fibers, the Examiner finds Pithouse discloses
the fibers may be heated and then cooled (id. at 22, 25). Pithouse supports
this finding by disclosing its material may be stretched, cross-linked, heated
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above its crystalline melting or softening point, and deformed into a
desirable shape so that later application of heat permits the article to resume
its original shape (Pithouse 3:21—36).
In response, Appellants argue:
Pithouse teaches a standard mechanism for providing a heat-
recoverable or shrinkable fabric, which is known to involve
cross-linking to place the heat-shrinkable material into a heat-
unstable state, such that upon being subsequently heated, the
material then returns (shrinks) to its heat-stable state. This is not
the same as being “heat-set,” and thus, the fibers of Pithouse are
not in fact heat-set, as claimed, which point would not be lost on
one possessing ordinary skill [in] the art.
(Reply Br. 5). This argument is unpersuasive because it merely asserts that
the fibers of Pithouse are not heat-set without citing evidence or persuasive
technical arguments to explain such a difference. For instance, Appellants
do not cite to their disclosure to show that they have defined “heat-set” in a
manner that would exclude the fibers of Pithouse. As a result, Appellants’
arguments do not identity a reversible error in the Examiner’s rejections of
claims 1 and 17—19. Moreover, as noted above, we set forth new grounds of
rejection for claim 45 for the reasons discussed above.
Claim 2
In the rejection over Sellis in view of Pithouse, the Examiner finds
Sellis discloses a scrim layer 52 that functions as a monolithic lattice that
can be attached to a nonwoven layer (Ans. 4). The Examiner finds the scrim
layer 52 includes heat-settable plastic material that allows the scrim layer 52
to be shaped into a self-wrapping sleeve, as recited in claim 2 {id. at 4—5).
In the rejection over Lindner in view of Sellis and Pithouse, the
Examiner finds Lindner discloses a nonwoven tubular sheath and Figure 2
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suggests that the sheath is formed into a self-wrapped configuration in order
to assume its tubular shape {id. at 13—14).
These findings are similar to those made in the rejections of claim 1.
As discussed above with regard to claim 1, the disclosures of Sellis and
Lindner support the Examiner’s findings.
The Examiner finds Sellis and Lindner do not disclose the first and
second regions recited in claim 1 {id. at 5, 15). The Examiner finds Pithouse
discloses a sleeve having zones of different recovery ratios due to regions of
different fiber mixtures, which may include heat-set staple fibers, and
concludes it would have been obvious to modify Sellis and Lindner in view
of Pithouse (Ans. 5—6, 15—16). As discussed above with regard to the
rejection of claim 1, the disclosure of Pithouse supports these findings.
For the rejection over Lindner in view of Sellis and Pithouse,
Appellants contend there would have been no reason to further modify
Lindner because its material is sufficient by itself to maintain a wrapped
configuration without further assistance (Appeal Br. 15; Reply Br. 7). As
discussed above with regard to the rejection of claim 1, this argument is
unpersuasive because the Examiner has provided a rationale for modifying
Sellis or Lindner in view of Pithouse and the disclosure of Pithouse supports
the Examiner’s findings.
With regard to a non-woven wall including a non-woven layer and an
extruded monolithic lattice, as recited in claim 2, the Examiner finds the
scrim layer 52 of Sellis functions as a monolithic lattice that is connected to
a non woven layer (Ans. 4, 14). The Examiner further finds the term
“extruded” is a product-by-process recitation and, despite this reasonable
finding, Appellants have not demonstrated that the product produced by the
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applied references differs chemically or physically from that of claim 2 (id.
at 6, 16).
Appellants assert the scrim layer 52 of Sellis is not a monolithic piece
of material because it includes interlaced first filamentary members 14 and
second filamentary members 18 and Figures 8 and 8 A of Appellants’
disclosure demonstrate that a monolithic structure cannot be woven, as
taught by Sellis (Appeal Br. 11, 15; Reply Br. 5—6).
Appellants’ arguments are unpersuasive because the broadest
reasonable interpretation of “monolithic” in view of Appellants’
Specification encompasses the scrim layer 52 of Sellis. Specifically,
paragraph 49 of Appellants’ Specification states:
As shown, by way of example, the lattice 38 has warp-wise
(extending along the length of the sleeve 210) extending
thermoplastic multifilaments 234, such as PET, by way of
example, interlaced with weft-wise extending low-melt
monofilaments 232, wherein separate weft-wise extending low-
melt monofilaments 232 are knit between adjacent
multifilaments and sinusoidal fashion to form the monolithic
lattice 38 structure.
This arrangement is depicted in Appellants’ Figure 6, which is reproduced
below.
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Figure 6 depicts a non-woven, self-wrapping thermal sleeve
Similarly, paragraph 51 of Appellants’ Specification states:
According to a further aspect of the invention, as shown in
Figures 7 and 8, by way of example and without limitation, the
aforementioned physical properties of a sleeve 410 can be
provided by constructing a pair of a non-woven layers 412', such
as in an airlaying process, for example, and a monolithic lattice
network of standard thermoplastic material 434 and/or low melt
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material 432, which can include bicomponent fibers as discussed
above (referred to hereafter simply as lattice 438) can be
sandwiched between the non-woven layers 412'.
As depicted in Appellants’ Figure 8, which is reproduced below,
lattice 438 includes thermoplastic material 434 extending in one direction
(e.g., a warp direction) and low melt material 432 extending in another
direction (e.g., a weft direction).
Figure 8 depicts a non-woven, self-wrapping thermal sleeve
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Thus, Appellants’ Specification states that a monolithic lattice can
include first and second elements extending in different directions. In
comparison, Sellis discloses the scrim layer 52 includes first filamentary
members 14 oriented in a first direction (e.g., along the length of a sleeve)
and second filamentary members 18 oriented in a second direction (e.g.,
along the width of the sleeve) (Sellis 127). This structure is similar to those
described in paragraphs 49 and 51 of Appellants’ Specification and depicted
in Figures 6 and 8 above. As a result, Appellants’ Specification supports an
interpretation of “monolithic” that encompasses filamentary members
arranged in different directions, as disclosed by Sellis for the scrim layer 52.
Appellants further contend the scrim layer 52 of Sellis is not extruded,
which is not a product-by-process recitation, and that “an ‘extruded’
monolithic lattice provides a structure that would be unobtainable via
weaving, as taught by Sellis” (Appeal Br. 11, 15). These arguments are
unpersuasive because Appellants do not cite any evidence or persuasive
technical reasoning in their briefs to support their argument that the product
of the applied references differs from that of claim 2 or that the term
“extruded” is not a product-by-process recitation.
As a result, Appellants’ arguments do not identity a reversible error in
the rejections of claims 2, 4, and 6—9.
For these reasons and those set forth in the Examiner’s Answer, we
sustain the Examiner’s § 103(a) rejections of claims 1, 2, 4, 6—9, and 17—19
over Sellis in view of Pithouse; Lindner in view of Pithouse; and Lindner in
view of Sellis and Pithouse. Furthermore, we include claim 45 in the
rejections over Sellis in view of Pithouse and Lindner in view of Pithouse
and designate these rejections of claim 45 as new grounds.
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Rejections (c)—(e), (g), (h), and (j)
For the rejections of claims 5, 20, and 21, Appellants note these
claims depend from independent claim 1 or 2 and cite the arguments
asserted for claims 1 and 2 (Appeal Br. 11—12, 14, 16). Therefore,
Appellants do not argue the rejections for claims 5, 20, and 21 separately
from the rejections for claims 1 and 2. As discussed above, Appellants have
not identified a reversible error in the Examiner’s rejections of claims 1 and
2. As a result, we sustain the Examiner’s § 103(a) rejections of claims 5, 20,
and 21.
C. DECISION
On the record before us, we:
A. do not sustain the Examiner’s decision to reject claims 1, 17,
and 45 under 35 U.S.C. § 103(a) as unpatentable over Yamaguchi and
Lassig;
B. sustain the Examiner’s decision to reject claims 1, 2, 4, 6—9,
and 17—19 under 35 U.S.C. § 103(a) as anticipated by Sellis in view of
Pithouse as evidenced by INEOS and DuPont;
C. sustain the Examiner’s decision to reject claim 5 under
35 U.S.C. § 103(a) as unpatentable over Sellis in view of Pithouse and
further in view of Baer;
D. sustain the Examiner’s decision to reject claim 20 under
35 U.S.C. § 103(a) as unpatentable over Sellis in view of Pithouse and
further in view of Conaghan;
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E. sustain the Examiner’s decision to reject claim 21 under
35 U.S.C. § 103(a) as unpatentable Sellis in view of Pithouse and further in
view of Wenstrup;
F. sustain the Examiner’s rejection of claims 1 and 17—19 under
35 U.S.C. § 103(a) as being unpatentable over Lindner in view of Pithouse
as evidenced by fNEOS and DuPont;
G. sustain the Examiner’s decision to reject claim 20 over Lindner
in view of Pithouse and further in view of Conaghan;
H. sustain the Examiner’s decision to reject claim 21 under
35 U.S.C. § 103(a) as unpatentable over Lindner in view of Pithouse and
further in view of Wenstrup;
I. sustain the Examiner’s decision to reject claims 2, 4, and 6—9
under 35 U.S.C. § 103(a) as unpatentable over Lindner in view of Sellis and
Pithouse as evidenced by The Williams Dictionary; and
J. sustain the Examiner’s decision to reject claim 5 under
35 U.S.C. § 103(a) as unpatentable over Lindner in view of Sellis and
Pithouse and further in view of Baer.
We include claim 45 in the § 103(a) rejections over Sellis and
Pithouse and Lindner and Pithouse and designate these rejections of claim
45 as new grounds of rejections.
19
Appeal 2017-003417
Application 13/104,508
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) as to claim 45 only.7 This section provides that “[a] new ground
of rejection . . . shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
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-IN-PART;
37 C.F.R. § 41.50(b)
7 See M.P.E.P. § 1214.01 (“The new ground of rejection raised by the Board
does not reopen prosecution except as to that subject matter to which the
new rejection was applied.”).
20