Ex Parte Jarvis et al

Board of Patent Appeals and Interferences

Apr 15, 2010

09828715 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHRISTINE W. JARVIS,
ROBERT E. BENNETT,
and BRIAN FREDERICK
____________________

Appeal 2009-013885
Application 09/828,715
Technology Center 1700
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Decided: April 15, 2010
____________________

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 100, 101, 103-113, and 123. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
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Appellants’ invention relates to a seam between two or more
substrates including a thermoplastic tape that provides enhanced tensile
strength over conventional seams without affecting barrier properties of the
substrates (Spec. 4:26 to 5:5). Claims 100 and 123 are illustrative:
100. A five layer stitchless seam comprising a first
thermoplastic tape portion, a first substrate portion in contact
with said first thermoplastic tape portion, a second
thermoplastic tape portion in contact with said first substrate
portion, a second substrate portion in contact with said second
thermoplastic tape portion, and a third thermoplastic tape
portion in contact with said second substrate portion to provide
a flexible stitchless seam between the five layers, wherein at
least one of said first thermoplastic tape portion, said second
thermoplastic tape portion, and said third thermoplastic tape
portion is a multi-layer tape portion that runs the length of the
seam and includes a first continuous layer having a first melting
point and a second continuous layer having a second melting
point.
123. A multilayer stitchless seam comprising a first tape
portion, a first substrate portion in contact with said first tape
portion, a second tape portion in contact with said first substrate
portion, a second substrate portion in contact with said second
tape portion, a third tape portion in contact with said second
substrate portion to provide a flexible seam between the layers,
and a third substrate portion, wherein at least one of the first
substrate and the second substrate is a composite substrate
comprising at least two layers.
The Examiner relies upon the following evidence:
First Named Inventor Document No. Issue or Pub. Date
Webb
Gaylord, Jr. (Gaylord)
Obayashi
US 2,372,632
US 3,970,079
US 4,410,575
Mar. 27, 1945
Jul. 20, 1976
Oct. 18, 1983
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The Examiner maintains, and Appellants seek review of, the
following rejections:
1. The rejection of claim 123 under 35 U.S.C. § 102(b) as anticipated
by Obayashi;1 and
2. The rejection of claims 100, 101, and 103-113 under 35 U.S.C.
§ 103(a) as unpatentable over Gaylord in view of Webb.

II. DISCUSSION
A. Claim 100
With respect to the second rejection, we select independent claim 100
to represent the group of claims rejected under 35 U.S.C. § 103, none of
which are argued separately by Appellants.
1. ISSUE ON APPEAL
A first issue on appeal arising from the contentions of Appellants and
the Examiner is: have Appellants identified reversible error underlying the
Examiner’s conclusion that one of ordinary skill in the art would have used
the multi-ply tape taught by Webb as the material used for the stitchless
seam taught by Gaylord to have arrived at the invention recited in claim
100? We answer this question in the negative.
2. FACTUAL FINDINGS
Gaylord teaches the use of a seam made from a strip of a thermo-
plastic material, such as polyvinyl chloride, formed by a conventional

1 Although the Answer states the rejection as including claims 124 and 125,
Appellants and the Examiner agree that claims 124 and 125 have been
cancelled in an Amendment filed October 31, 2007 (Br. 2; Ans. 2; Office
Communication dated July 21, 2009).
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extrusion process (Gaylord, col. 2, ll. 54-57). The seam is formed by
heating and compressing the strip with the substrate fabric (Gaylord, col. 3,
ll. 52-55; col. 4, ll. 48-51).
Gaylord teaches that the strips not only serve to join the panels, but
they also provide sufficient resistance to lateral bending thereby effectively
preventing rolling of the side edges of the panels (Gaylord, col. 2, ll. 57-61).
Webb teaches the use of a tape 12 made from plastic film of the vinyl
resin type, which softens and fuses to fabric upon application of a heating
tool (Webb, p. 1, col. 2, ll. 28-33, 40-45, and 49-55).
Webb teaches that the material will form a water tight seam (Webb,
p. 1, col. 2, l. 33).
Webb teaches that Fig. 4 illustrates a tape 12 that comprises three
plies of material. According to Webb, “[t]he three plies of this strip are
fused into a single pliable tape which is easier to handle than the pure vinyl
tape as the latter, when in its form of thin strips, is subject to static
electricity.” (Webb, p. 2, col. 1, ll. 5-13.)
3. PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The question to be
asked is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 417.
Moreover, one of the ways in which a claim’s subject matter can be
proved obvious is by establishing that there existed at the time of invention a
known problem for which there was an obvious solution encompassed by the
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claims. KSR, 550 U.S. 398, 419-20. It is well settled that “[t]he significance
of evidence that a problem was known in the prior art is, of course, that
knowledge of a problem provides a reason or motivation for workers in the
art to apply their skill to its solution.” In re Nomiya, 509 F.2d 566, 572
(CCPA 1975); see also, KSR, 550 U.S. at 420 (“[T]he problem motivating
the patentee may be only one of many addressed by the patents subject
matter . . . “[A]ny 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.”).
4. ANALYSIS
The Examiner puts forth two rationales as to why one of ordinary skill
in the art would have used a multi-ply vinyl tape for forming the seams of
Gaylord. The first rationale is “to prevent moisture from seeping between
the plies of the fabric section, thus creating a water tight seam” since Webb
teaches the formation of water tight seams (Ans. 5).
Appellants argue that while a waterproof seam may be reasonable for
high-grade raincoats and other such articles as taught by Webb (Webb, p. 1,
col. 1, ll. 5-6), there is no rationale as to why one of ordinary skill in the art
would want a watertight seam in a body support such as that taught by
Gaylord, which is not disclosed as water tight or even water resistant (Br.
6-7).
Considering the evidence as a whole in light of the law of
obviousness, we determine that the evidence weighs in favor of the
Examiner’s conclusion. Webb indicates that forming a water proof seam is a
problem in some garments and teaches a solution to the problem, that is, the
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use of multi-ply vinyl resin tape. In the area of forming seams in garments,
solving the known problem of waterproofing using the known solution of
Web provides a reason for workers in the art to make the modification that
would arrive at the claimed invention.
We further cannot agree with Appellants that differences between the
intended uses of the garments of Gaylord and Webb would dissuade the
ordinary artisan from forming a seam of the multi-ply configuration of
Gaylord with the additional ply of Webb. Such seams, as evidenced by the
references, were known for use in different garments including waterproof
garments. It would have obvious to one of ordinary skill in the garment art
to use the seam in waterproof garments or any other garment requiring a
waterproof seam. Moreover, Gaylord and Webb teach substantially identical
vinyl tapes, and, since a multi-ply tape would likely be stiffer than a single
ply tape, it is reasonable to conclude that using the tape of Webb would
provide no reduction in stiffness and resistance to lateral bending over the
tape taught by Gaylord.
The Examiner’s second rationale is “to provide a tape that is easier to
handle” since Webb teaches that a multi-ply tape is easier to handle that a
single ply tape which is subjected to static electricity (Ans. 7). The
Examiner’s second rationale flows from the teachings of the prior art
references and is reasonable on its face. Moreover, Appellants have failed to
put forth any argument identifying an error in the Examiner’s second
rationale.
Accordingly, we are not persuaded of reversible error in the
Examiner’s conclusion that one of ordinary skill in the art would have used
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the multi-ply tape taught by Webb as the material used for the stitchless
seam taught by Gaylord to have arrived at the invention recited in claim 100.
B. CLAIM 123
1. ISSUE ON APPEAL
A second issue on appeal arising from the contentions of Appellants
and the Examiner is: have Appellants identified reversible err in the
Examiner’s finding that Obayashi teaches a “third substrate portion” as
recited in claim 123? We answer this question in the negative.
2. FACTUAL FINDINGS
Appellants’ Specification does not use the phrase “substrate portion”
nor does it define what is meant by the phrase “third substrate portion” (see
generally Spec.).
Appellants’ Specification teaches that the seam of the invention may
be used to join more than two substrates (Spec. 4:26-27) but provides no
examples to describe the location of the third substrate with respect to the
disclosed seams.
3. PRINCIPLES OF LAW
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). Absent claim language carrying a narrow
meaning, we only limit the claim based on the specification when the
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broader definition is expressly disclaimed. In re Bigio, 381 F.3d 1320,
1324-25 (Fed. Cir. 2004).
4. ANALYSIS
The Examiner has noted that claim 123 recites a “third substrate
portion” and not a “third substrate” and does not recite that the “third
substrate portion” is provided in any particular area with respect to the seam
(Ans. 9). As such, the Examiner finds that any part of the first fabric (first
substrate) or any part of the second fabric (second substrate) may constitute
a “third substrate portion” (id.). We agree. The term “substrate portion” has
a broader meaning than the term “substrate,” and would reasonably
encompass any “portion” of one of the substrates taught by Obayashi. The
Examiner’s claim interpretation is consistent with the broadest reasonable
interpretation read in light of the specification as it would be interpreted by
one of ordinary skill in the art. Moreover, Appellants present no arguments
to rebut the Examiner’s claim interpretation.
III. CONCLUSION
On the record before us2 and for the reasons discussed above, we
sustain the rejections maintained by the Examiner.
IV. DECISION
We affirm the Examiner’s decision.

2Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2008).
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V. TIME PERIOD FOR RESPONSE
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) (2007).
AFFIRMED

cam

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