Ex Parte Howard et al

Patent Trial and Appeal Board

Dec 15, 2014

11593958 (P.T.A.B. Dec. 15, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDWARD GEORGE HOWARD JR.,
RALPH BIRCHARD LLOYD, RONALD JAMES MCKINNEY,
BRYAN BENEDICT SAUER, and
MARK GARY WEINBERG
____________

Appeal 2013-003428
Application 11/593,958
Technology Center 1700
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Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 2, 4, 5, 8–10, and 13. We have jurisdiction under
35 U.S.C. § 6.
We REVERSE.
Appellants claim a finished article comprising a laminate which
comprises an insoluble continuous chitosan film, a substrate and a fabric
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Application 11/593,958

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layer (sole independent claim 2).1 The article is described as being
substantially impermeable to hazardous chemical and biological agents
(Spec. 1:8–12).
A copy of representative claim 2, taken from the Claims Appendix of
the Appeal Brief, appears below.
2. A finished article comprising a laminate comprising:
(a) an insoluble continuous chitosan film,
(b) a substrate onto which the chitosan film is adhered, and
(c) at least one layer of fabric, wherein: the continuous chitosan
film and a layer of fabric are bonded discontinuously using an
adhesive that is present as an array of adhesive dots, in a pattern
of lines or in a pattern of curves, the substrate comprises a film
comprising a polar polymer or a sheet comprising a polar
polymer, wherein the polar polymer is an elastomer, glassy
polymer, or semi-crystalline material, and wherein the substrate
is incorporated into the laminate, and the fabric is woven or
nonwoven and comprises one or more members selected from
the group consisting of aramids, polybenzimidazoles, nylons,
polyesters, and cotton, said article being chemically protective
and selectively permeable to water vapor such that:
the Moisture Vapor Transport Rate is at least
2 kg/m2/24 h, the transport rate is <4.0 μg/cm2 one hour
cumulative permeation for mustard, and
the transport rate is <1.25 μg/cm2 one hour cumulative
permeation for Soman, wherein the finished article is selected
from the group consisting of:
items of apparel selected from the group consisting of
coveralls, protective suits, coats, jackets, raingear, ski pants,
gloves, socks, boots, shoe covers, boot covers, trousers, hoods,
hats, masks and shirts; shelters; and protective covers.

1 It is undisputed that the claim phrase “continuous chitosan film” means a
chitosan film having at least one nonporous surface (Spec. 3:20–21; see also
Final Action 2 and App. Br. 4).
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Under 35 U.S.C. § 103(a), the Examiner rejects independent claim 2
as unpatentable over Dutkiewicz (US 6,197,322 B1, iss. Mar. 6, 2001) in
view of Carlucci (US 2003/0023216 Al, pub. Jan. 30, 2003) and rejects
dependent claims 4, 5, 8–10, and 13 as unpatentable over these references
alone or in combination with additional prior art.
The pivotal issue in this appeal is whether a preponderance of
evidence supports the Examiner’s finding that the continuous chitosan film
of Dutkiewicz is nonporous as required by claim 2.
According to the Examiner, “Dutkiewicz does not teach that the film
is porous[, and] [t]herefore, it is reasonable for one of ordinary skill in the
art to expect that the film is nonporous, absent evidence to the contrary that
the film necessarily is not within the scope of a nonporous film” (Final
Action 3). Appellants argue that “nonporous films are not taught by the
[Dutkiewicz and other applied] references and, in the absence of an
affirmative teaching, this critical feature cannot simply be assumed by the
Examiner” (App. Br. 5).
The Examiner responds to this argument by stating “both Dutkiewicz
and Appellants’ [S]pecification teach substantially similar or identical
methods for forming chitosan films (casting from a solution comprising
chitosan, a water solvent, and an acid such as acetic acid and subsequently
drying the film)” (Ans. 5) and accordingly “it is reasonable . . . to expect that
the chitosan film of Dutkiewicz is . . . non-porous” (id.). In reply,
Appellants argue that they “do not teach that casting a film in the manner
described in the patent [application] necessarily results in a continuous
chitosan film, only that a continuous film can be obtained as taught in the
Examples of the [S]pecification” (Reply Br. 2), that they “teach various
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factors for consideration in providing a suitable film” (id. citing Spec. 8–9),
and that “simply casting a film from an acetic solution will not necessarily
provide a continuous [i.e., nonporous] film as claimed” (id. at 3).
We find persuasive merit in Appellants’ argument. Moreover, this
argument is well supported by their Specification disclosure. In this latter
regard, we emphasize that Comparative Examples A and B disclose casting
chitosan films using methods and materials which the Examiner attributes to
both Dutkiewicz and Appellants but wherein “a continuous chitosan film
had not been produced” (Spec. 27:28–29, see also id. at 28:4–5). These
Comparative Examples evince that the chitosan film of Dutkiewicz is not
necessarily or inherently nonporous, thereby refuting the Examiner’s
contrary belief.
The decision of the Examiner is reversed.

REVERSED

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