Ex Parte Lubker

Board of Patent Appeals and Interferences

May 22, 2012

11212357 (B.P.A.I. May. 22, 2012)

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.
11/212,357 08/26/2005 John W. Lubker II 7327
56356 7590 05/22/2012
PACTIV CORPORATION
c/o NIXON PEABODY LLP
300 S. Riverside Plaza
16TH FLOOR
CHICAGO, IL 60606
EXAMINER
COLE, ELIZABETH M
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
05/22/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN W. LUBKER, II
____________________

Appeal 2010-009246
Application 11/212,357
Technology Center 1700
____________________

Before ANDREW H. METZ, CATHERINE Q. TIMM, and MARK NAGUMO,
Administrative Patent Judges.

METZ, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134 from the adverse decision of the
Examiner finally rejecting claims 1 through 4 and 6 through 16 of Appellant’s
application, which are all the claims in the application
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.

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THE INVENTION
Appellant’s invention is directed to a laminate useful as protective
drainage wrap comprising a mesh having materials extending in a first direction
and materials extending in a second direction and a coating formed on the mesh
to form interstices. The interstices facilitate transfer of water vapor through the
protective drainage wrap, but liquid water does not pass through the drainage
wrap. See paragraphs 5 and 6 of the June 11, 2008, declaration of John W.
Lubker under 37 C.F.R. § 1.132. The wrap is useful for protecting buildings
against the infiltration of air and prevents moisture build-up in buildings.
Claim 1, the only independent claim before us for review, is set forth
fully below to facilitate an understanding of Appellant’s invention.
1. A protective drainage wrap including:

a mesh having a material extending in a first direction and in a second
direction, the material in the first direction including a polyolefin,
polyester, nylon or combinations thereof, the material in the second
direction including a polyolefin, polyester, nylon or combinations thereof
and

a coating applied to the mesh to form a plurality of interstices, the
interstices being configured to facilitate transfer of water vapor
therethrough, the coating having a thickness between about 0.5 mil and
about 2.0 mils to assist in forming natural vapor transmission through the
interstices, the coating being on an outermost surface of the protective
drainage wrap so as to assist in forming a natural vapor transmission.

The references of record which are being relied upon by the Examiner as
evidence of lack of novelty and as evidence of obviousness are:
Kato et al. (Kato) 4,857,393 Aug. 15, 1989
Porter et al. (Porter) 5,552,207 Sept. 3, 1996
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Anwyll, Jr. (Anwyll) 5,773,123 June 30, 1998
Doyle et al. (Doyle) 6,133,168 Oct. 17, 2000

THE REJECTIONS
Claims 1, 2, 7, 11, 12, and 14 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Kato.
Claims 1, 2, 7, and 12 stand rejected under 35 U.S.C. §§ 102(a) and (e) as
being anticipated by Doyle.
Claims 3, 4, and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined disclosures of Doyle and Anwyll.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Doyle or Kato.
Claims 3, 4, and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined disclosures of Kato and Anwyll.
Claims 8, 10, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined disclosures of Doyle and Porter.
Claims 8, 10, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined disclosures of Kato and Porter.
The rejection of claims 1 through 4 and 6 through 14 as failing to comply
with 35 U.S.C. § 112, first paragraph, has been withdrawn by the Examiner and,
accordingly, forms no issue in this appeal (Ans. 2).

THE REJECTION UNDER 35 U.S.C. § 102 0VER KATO

Appellant does not challenge the Examiner’s finding that Kato’s
disclosure of a coated fabric describes a “mesh having material extending in a
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first direction and in a second direction” and having a coating applied to the
mesh or that Kato describes the same materials as claimed for the materials
extending in the first and second directions. Neither does Appellant challenge
the Examiner’s finding that Kato discloses coating the disclosed fabric with the
same materials as claimed by Appellant for the coating applied to the mesh.
Rather, appellant’s sole argument assigning error to the Examiner’s conclusion
that Kato describes, in the sense of 35 U.S.C. § 102, the subject matter of claim
1 is that Kato fails to “disclose, teach or suggest” that their coating forms a
plurality of interstices on the fabric being coated. We disagree.
The only disclosure in Appellant’s Specification describing how the
claimed interstices are formed may be found at page 11, line 31 through
page 12, line 4 and page 12, lines 11 through 32. Therein it is disclosed that the
interstices claimed are formed by coating the “mesh” with sufficient material to
form a coating of from 0.5 mils to about 2.0 mils thickness. While Appellant’s
Specification discloses that the interstices are “configured to facilitate transfer
of water vapor therethrough” (Spec. 3: 3-6) the only method described for
“configuring” the interstices is by forming such a coating by extrusion-coating
molten resin from a hopper on to the mesh below and controlling the process
variables to obtain the “desired thickness.”
We agree with the Examiner’s conclusion that because Kato discloses a
process for coating its fabric with the same materials appellant uses to coat the
claimed “mesh” and by the same method, that is, extrusion-laminating molten
resin on the fabric and in a thickness which includes the claimed thickness then
it follows reasonably that Kato obtains a product that is the same or
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substantially the same as claimed by Appellant. In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990. )
We have not overlooked Appellant’s argument (Br. 8, 9) that Kato’s
coated fabric is used as a waterproof fabric for a windbreaker or for medical
purposes and thus, cannot be said to describe the claimed “drainage wrap.” We
find Appellant’s argument to be founded on an unduly narrow reading of Kato
and an unduly narrow reading of the claimed subject matter.
Appellant’s claims require a laminate useful as a drainage wrap
comprising a mesh having materials extending in first and second directions,
that is a woven fabric, said materials “including” a polyolefin, polyester, nylon
or combinations thereof and having applied to the mesh a coating on the
outermost surface and having a thickness between about 0.5 mil and about 2.0
mils and which forms a plurality interstices. The intended use recited in claim 1
for Appellant’s coated laminate does not describe any structure beyond what is
specifically claimed thereafter that distinguishes the claimed coated mesh from
the coated mesh described by Kato. Kato discloses at column 4, lines 54
through 57 that their laminated structure has good waterproof properties and
water vapor permeability. One of the intended uses for the laminated structure
described by Kato is described as a “water-vapor-permeable material for a
wrapping material.” See column 1, lines 13 through 15 of Kato. Kato prepares
their laminate by extrusion coating a base material such as a woven fabric with
a resin such as a polyester or polyamide and the thickness of the coating
includes the claimed thickness. Appellant has not shown that Kato’s method
for coating its fabric would not have been expected to form interstices as
claimed.
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Because Appellant has made no meaningful argument concerning the
patentability of claims 2, 7, 11, 12, and 14, all of which depend from claim 1,
and because we find the subject matter of claim 1 to be described by Kato we
shall affirm the rejection of claims 1, 2, 7, 11, 12, and 14 as being unpatentable
from the disclosure of Kato.

THE REJECTION UNDER 35 U.S.C. § 102 OVER DOYLE

Appellant argues that Doyle does not describe a coated mesh as claimed
because Doyle’s extrusion-coated substrate, including woven fabrics (column 2,
lines 43 through 55), allows the passage of water vapor there through but is
substantially impervious to liquid water and, therefore, “does not disclose, teach
or suggest “a coating applied to the mesh to form a plurality of interstices” as
recited in claim 1.” Brief 10, ll. 14-15. We find no merit in Appellant’s
argument.

Doyle coats their fabric by extrusion-coating a layer of a synthetic resin
on the substrate which can be a woven fabric and uses the same polymers to
coat the same substrate that Appellant claims. As a woven fabric the substrate
of Doyle has materials extending in first and second directions as claimed. The
thickness of the polymer coating obtained by Doyle is from 0.0002 to 0.005
inches (0.2 to 5 mils), which overlaps to 0.5 to 2.0 mil coating thickness taught
by Appellant (Spec. p.3, l’s 19-20; p.4, l’s 14-15; p. 11, l 31 through p. 12, l 4).
Accordingly, since Appellant prepares his “wrap” by the exact same method as
Doyle and uses the same materials as Doyle we agree with the Examiner’s
conclusion that Doyle’s coating on the woven fabric must form interstices and,
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therefore, describes, in the sense of the statute, the subject matter of claim 1.
Other than observing that claims 2, 7, and 12 depend from claim 1, Appellant
has made no argument concerning their separate patentability. Accordingly, we
shall affirm the Examiner’s rejection of claims 1, 2, 7, and 12 as being
anticipated by Doyle.

THE REJECTION OF CLAIMS 3, 4, AND 9 UNDER 35 U.S.C.
§ 103 OVER KATO OR DOYLE CONSIDERED WITH ANWYLL

Anwyll is directed to an air infiltration barrier laminate useful as a wrap
for residential and commercial buildings. The laminate comprises a polyolefin
fabric coated with a resin by extrusion-coating the fabric and subsequently
adhering a polyolefin film to the resin coating and perforating the laminated
structure with apertures or perforations. The polyolefin film imparts
dimensional stability and the perforations improve the laminate’s water vapor
permeability. The size, number, shapes, and locations of the perforations may
be varied over wide limits. Woven fabrics prepared from tapes are specifically
exemplified.
We agree with the Examiner’s conclusion that the routineer in this art
would have been motivated to utilize the particular but well known woven
fabric of Anwyll employing tapes as the woven fabric in either Kato or Doyle
because Anwyll describes such fabrics as useful for that purpose and each of
Kato and Doyle describe woven fabrics as useful for preparing their laminated
structures. We also find that because Anwyll prepares his laminated structure
by extrusion-coating a woven fabric with the same resins and in the same
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thickness as Appellant that the laminated structures of Anwyll would be
expected to exhibit interstices. Accordingly, we shall affirm the rejection of
claim 9 under 35 U.S.C. § 103.
Claims 3 and 4 modify the subject matter of claim 1 by requiring, in
addition to interstices, a plurality of perforations. According to Appellant’s
disclosure, the claimed laminate may or may not require physical perforations
to meet building code requirements for water vapor transmission and that
perforation may be utilized “to enhance natural vapor transmission.” While we
are persuaded that Anwyll alone is sufficient motivation to a person of ordinary
skill in the art to perforate a laminated woven fabric useful as a building wrap
for the purpose of increasing its water vapor permeability, we find no error in
the Examiner’s reliance on Anwyll as motivation to perforate the laminates of
either Kato or Doyle for the express purpose of increasing the laminates’ water
vapor permeability.
We recognize that Doyle discloses that high moisture vapor transmission
rates are obtained without the need for perforating the laminate, however, rather
than teaching away from perforating his laminates if additional water vapor
permeability were desired, this disclosure provides evidence that perforating
was known in the art. Perforating had known results and one of ordinary skill
in the art would have perforated the laminate when those known results were
desirable. We also find unpersuasive Appellant’s argument that perforating
Doyle’s laminate would render it “unsatisfactory for its intended purpose” or
“change the principle of operation” of Doyle’s laminate. A person of ordinary
skill in the art would expect from Anwyll’s disclosure that perforating Doyle’s
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laminate or Kato’s laminate would increase the laminates’ water permeability,
the same reason Appellant discloses for perforating the claimed laminates.
Accordingly, the rejection of claims 3 and 4 as unpatentable because at
the time Appellant’s invention was made the subject matter claimed therein
would have been obvious is affirmed.

THE REJECTION OF CLAIM 6 UNDER 35 U.S.C. § 103

Claim 6 further modifies the subject matter of claim 1 by requiring that
the combined thickness of the “first direction material” and the coating is
between about 8 and 10 mils. The Examiner relies on Doyle or Kato as
evidence of obviousness.
Specifically, the Examiner reasons that while Doyle is silent as to the
specific thickness of the combined thickness of the “first direction material” and
the coating the routineer in this art would have selected a thickness that would
provide the final laminate with the desired properties of strength, flexibility and
permeability. Likewise, the Examiner recognizes that Kato does not describe
the combined thickness of the “first direction material” and the coating recited
in claim 6 but argues that the routineer would have selected a thickness
necessary to yield the desired properties of strength, flexibility and
permeability.
Rather than address the Examiner’s stated rationale, Appellant recites the
limitations of claim 6 and pronounces that neither Doyle nor Kato discloses a
mesh having the claimed thickness for the coating. Thereafter, Appellant
repeats his argument that neither Doyle nor Kato discloses, teaches or suggests
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a coating applied to the mesh to form a plurality of interstices, an argument we
have already rejected for reasons set forth fully above. Finally, Appellant
resurrects his argument about the meaning of “interstices” vis-a-vis the claim
language “perforations.”
We find that Doyle discloses that the thickness of the polymer coating
may vary over wide limits, from about 0.0002 to 0.005 inches (0.2 to 5 mils) or
even from 0.25 mils to 1,000 mils (0.00025 to 1 inch) (see column 3, line 67
through column 4, line 2; and claim 7). Because the thicknesses of the
breathable polymer set forth are for the polymer itself it necessarily follows that
the combined thickness of the polymer and the “material in the first direction”
must be greater than the thickness of the polymer alone. Because the disclosure
of Doyle for the polymer thickness alone completely includes the limitation of
claim 6 for both the polymer and material in the first direction, we agree with
the Examiner’s conclusion that selecting the desired combined thickness for the
material in the first direction and the polymer coating would depend on the
ultimate desired property of the coated mesh. Accordingly, we also agree with
the Examiner’s conclusion that selecting a thickness within the broad range
disclosed by Doyle would be entirely within the skill of the routineer in the art.
Therefore, we affirm the rejection of claim 6 under 35 U.S.C. § 103.
Kato discloses coating the woven fabrics used to prepare their wraps with
a layer of polymer ranging in thickness from “several microns” (col. 4, ll. 6-14)
up to 40 microns and that the coated fabric’s properties such as water vapor
permeability, porosity and feeling vary depending on the thickness of the
coating. Thus, we agree with the Examiner’s conclusion that the routineer in
this art would have been motivated to choose a combined thickness for the “first
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direction material” and the coating which yielded the desired properties for a
particular application. Accordingly, we shall affirm the rejection of claim 6
under 35 U.S.C. § 103.

THE REJECTIONS OF CLAIMS 8, 10, AND 13 UNDER 35 U.S.C. § 103

Claims 8, 10, and 13 further modify the laminate claimed in claim 1.
Claim 8 requires that the “mesh” in claim 1 is cross-laminated. Such cross-
laminating is shown in Figures 3 and 4. That is, “the material extending in the
first direction” and “the material extending in the second direction” are overlaid
not woven (Spec. 6: 29-31). Claim 10 requires that the thickness of “the
material extending in the second direction” is at least twice as thick as the
thickness of “the material extending in the first direction.” Claim 13 requires
that the first and second direction materials of the laminate of claim 1 are
different materials.
The Examiner relies on the disclosure of Porter, which is directed to an
open mesh fabric, as evidence that each of these further limitations to the
laminate of claim 1 was well known in the art. The Examiner concludes that it
would have been obvious at the time Appellant’s invention was made to have
used the particular open mesh fabric disclosed by Porter as the fabric required
by either Kato or Doyle.
Appellant argues there would have been no reason to combine the
teaching of Porter with either of Kato or Doyle because unlike Kato and Doyle,
Porter is directed to an open grid fabric useful for reinforcing wall systems,
particularly stucco on rigid foam insulation boards, by providing impact
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resistance to the wall. Appellant argues that the openings in the open mesh
fabric of Porter permit the stucco material to be pushed through the fabric and
make contact with the insulation boards. The Appellant urges that the use for
the fabrics of Doyle and Kato have nothing to do with reinforcing the strength
of wall systems but are directed to polymer coated fabrics useful as air and
water permeable barriers. Accordingly, Appellant concludes that a person of
ordinary skill in this art would not have been motivated to use Porter’s
reinforcing mesh in the air and water vapor permeable fabrics of Kato and
Doyle. While conceding that Porter is not drawn to the same type of coated
scrims as those disclosed in Kato, Doyle, and Anwyll, the Examiner concludes
that Porter would nevertheless be “relevant” to the inventions of Kato, Doyle,
and Anwyll.
We shall not sustain these rejections. The fact that Porter is directed to
an application of a wall system utilizing stucco does not in and of itself provide
evidence supporting a conclusion of nonobviousness. Appellant discloses that
in the embodiment of his invention using yarns that if the channels formed
between adjacent strands is blocked by stucco then the water may be absorbed
by the yarn (Spec. 13: 19-23). Further, Appellant discloses that the laminates
of the claims may be used as stucco drainage wraps in which the protective
coating wraps are covered by stucco (Spec. 23: 14-20). Nevertheless, we agree
with Appellant that Porter’s disclosed utility for their fabric as a reinforcing
material for forming a wall system where stucco is forced through the openings
of the fabric until it contacts rigid foam insulation boards beneath the fabric
would not have suggested to the person of ordinary skill in this art that it would
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have been expected to be useful in Appellant’s air and water vapor permeable
laminate, a polymer coated fabric.
Accordingly, we shall reverse the rejection of claim 8, 10 and 13.

SUMMARY
The rejections of claims 1 through 4, 6, 7, 9, 11, 12, and 14 are affirmed.
The rejections of claim 8, 10, and 13 are reversed.
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)(iv).
AFFIRMED-IN-PART

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