Ex Parte Meirowitz et al

Patent Trial and Appeal Board

Mar 9, 2017

12900377 (P.T.A.B. Mar. 9, 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.
12/900,377 10/07/2010 Randy Meirowitz 11CJ-156045 7666
30764 7590 03/13/2017
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 EL CAMINO REAL, SUITE 200
SAN DIEGO, CA 92130
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
03/13/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DOCKETING@ SHEPPARDMULLIN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDY MEIROWITZ and JAMIE A. HENDERSON
Appeal 2016-003808
Application 12/900,377
Technology Center 1700
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1—5, 9, 13, 14, 16, 18, and 19.2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Nextec Applications, Inc.
Appeal Brief filed June 1, 2015 (“Br.”), 1.
2 Claims 7, 8, 11, 12, 15, 17, and 20 stand withdrawn from consideration.
Final Office Action entered January 26, 2015 (“Final Act.”), 2.
Appeal 2016-003808
Application 12/900,377
STATEMENT OF THE CASE
The subject matter on appeal is generally directed to a multilayer
structure to be worn to reduce the incidence of hypothermia. Spec. 14.
Details of the appealed subject matter are recited in representative claims 1,
9, and 18, which are reproduced below from the Claims Appendix to the
Appeal Brief:
1. A multilayer structure to be worn by a wearer to reduce
the incidence of hypothermia, the multilayer structure
comprising:
a semi-permeable membrane; and
a polyester fabric coupled to an outside surface of the
semi-permeable membrane;
wherein the polyester fabric is encapsulated with a
polymer using an encapsulating system having two coating
blades,
wherein each blade is configured to encourage the
polymer to encapsulate the polyester fabric when the polyester
fabric passes each of the blades, and
wherein the encapsulating system applies a force model
to the blades based on initial properties of the polyester fabric.
9. A multilayer structure to be worn by a wearer to reduce
the incidence of hypothermia, the multilayer structure
comprising:
a semi-permeable membrane; and
an encapsulated fabric coupled to an outside surface of
the semi-permeable membrane;
wherein the encapsulated fabric comprises an
encapsulated fabric having a plurality of fibers and interstices,
wherein the plurality of fibers are encapsulated by a polymer,
and wherein the plurality of interstices are filled with the
polymer;
wherein the encapsulated fabric comprises a polyester
fabric having an absorption of < 5% @ 0 wash, < 15% @ 5
wash, and < 25% @ 10 wash; and
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Application 12/900,377
wherein the encapsulated fabric is encapsulated by the
polymer using an encapsulating system having two coating
blades,
wherein each blade is configured to encourage the
polymer to encapsulate the encapsulated fabric when the
encapsulated fabric passes each of the blades, and
wherein the encapsulating system applies a force model
to the blades based on initial properties of the encapsulated
fabric.
18. A multilayer structure to be worn by a wearer to reduce
the incidence of hypothermia, the multilayer structure
comprising:
a semi-permeable membrane; and
an encapsulated fabric coupled to an outside surface of
the semi-permeable membrane fabric;
wherein the encapsulated fabric has a plurality of fibers
and interstices, wherein the plurality of fibers are encapsulated
by a polymer, and wherein the plurality of interstices are filled
with the polymer;
wherein the semi-permeable membrane comprises a
planar structure that has a hydrostatic resistance of > 2 psi and
an MVTR (ASTM E-96 B) of > 1000 g/m2/day; and
wherein the encapsulated fabric is encapsulated by the
polymer using an encapsulating system having two coating
blades,
wherein each blade is configured to encourage the
polymer to encapsulate the encapsulated fabric when the
encapsulated fabric passes each of the blades, and
wherein the encapsulating system applies a force model
to the blades based on initial properties of the encapsulated
fabric.
Br. 14—17 (Claims Appendix).
Appellants request review of the final rejection of claims 1—5, 9, 13,
14, 16, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over Brown et
al. (US 6,100,208, issued August 8, 2000) and Caldwell (US 5,004,643,
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Application 12/900,377
issued April 2, 1991), maintained by the Examiner in the Answer entered
October 28, 2015 (“Ans.”).
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants’ contentions, we affirm the rejection of claims 1—5, 9, 13, 14, 16,
18, and 19 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
Action and the Answer. We add the discussion below primarily for
emphasis.
Claims 1—5, 13, 14, and 163
The Examiner finds that Brown discloses a multi-layer fabric that
comprises first and second outer layers and a (water-impervious) barrier
layer, which can be used to form outdoor apparel. Final Act. 2; Ans. 11—12;
Brown col. 6,11. 26—32, 43^49. The Examiner finds that Brown discloses
that the outer layers of the fabric comprise a woven or nonwoven web of
polyester fibers that prevent water from being held in the outer layers. Final
Act. 3; Brown col. 6,11. 56—61; col. 7,11. 54—55; col. 9,11. 3^4; col. 9,11. 16—
18; col. 10,11. 49-63. The Examiner acknowledges that Brown does not
disclose that the polyester web is impregnated with a polymer, and the
Examiner relies on Caldwell’s disclosure of a woven or nonwoven polyester
fabric web impregnated with a silicone polymer. Final Act. 3; Caldwell col.
4,11. 21—25, 32-41, 47—50; col. 57,11. 55—63. The Examiner finds that
Caldwell discloses that impregnating the polyester fabric with the polymer
3 Appellants argue claims 1—5, 13, 14, and 16 as a group. See generally Br.
8—9. Therefore, for the purposes of this appeal, we select claim 1 as
representative, and decide the propriety of the rejection of claims 1—5, 13,
14, and 16 based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv).
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Application 12/900,377
improves the water repellency of the fabric while retaining its breathability,
making the impregnated fabric suitable for use in a waterproof garment.
Final Act. 3; Caldwell col. 4,11. 21—25; col. 57,11. 55—63.
The Examiner finds that Caldwell discloses that the polyester fabric
web is impregnated with the silicon polymer via a process that involves
applying the polymer to the web while drawing the web through an
adjustable gap between two blades that apply shear force to the fabric,
causing the polymer to flow into the three-dimensional structure of the web
and envelop the fibers of the web. Final Act. 3; Ans. 9-10; Caldwell col. 14,
11. 4—13; col. 28,11. 37^15, 57-67; col. 29,11. 25-30, 45-56; col. 30,11. ^16.
The Examiner finds that Caldwell discloses that the gap between the blades
is preferably smaller than the relaxed thickness of the starting web or fabric
(an initial property of the polyester fabric), and the Examiner finds that this
impregnation process disclosed in Caldwell corresponds to applying a force
model to the blades with an encapsulating system based on initial properties
of the polyester fabric, as recited in claim 1. Final Act. 3; Caldwell col. 28,
1. 68—col. 29,1. 2. In addition, the Examiner determines, citing to In re
Thorpe, 111 F.2d 695, 698 (Fed. Cir. 1985), that because the garment
suggested by the combined disclosures of Brown and Caldwell is identical to
or only slightly different from the claimed multilayer structure, the burden
shifts to Appellants to show an unobvious difference between the claimed
multilayer structure and the garment suggested by Brown and Caldwell
because the patentability of the claimed multilayer structure is based on the
multilayer structure itself rather than on the process steps for producing the
structure recited in claim 1. Final Act. 4.
The Examiner concludes that it would have been obvious to one of
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ordinary skill in the art at the time of Appellants’ invention to utilize a
silicon-impregnated polyester fabric as disclosed by Caldwell for the outer
fabric layers of the garment disclosed in Brown to improve the water
repellency of Brown’s garment while retaining its breathability. Final Act.
3.
Appellants argue that the force model recited in claim 1 is essential
for imparting distinctive structural characteristics—including weight,
absorption rate, and breathability—to the encapsulated polyester fabric of
the claimed multilayer structure, and Appellants contend that these structural
characteristics aid in the effectiveness of the multilayer structure for
reducing hypothermia. Br. 8—9. Appellants argue that because the force
model imparts these structural characteristics the Examiner’s rejection is
clearly erroneous for failing to consider the exception to In re Thorpe set
forth in In re Ganero, 412 F.2d 276, 279 (CCPA 1979), which provides that
the structure implied by process steps should be considered when assessing
the patentability of product-by-process claims where the process steps would
be expected to impart distinctive structural characteristics to the product. Br.
8—9 citing In re Thorpe, 111 F.2d at 698.
However, contrary to Appellants’ arguments, In re Ganero does not
establish an exception to In re Thorpe. Compare In re Thorpe, 111 F.2d at
698, with In re Ganero, 412 F.2d at 279. Instead, in In re Ganero the court
construed claim language that recited “interbonded to one to another by
interfusion between the surfaces of the perlite particles” as a structural rather
than process limitation, and held that prior art failing to disclose this
particular structure did not render the claimed structure obvious. In re
Ganero, 412 F.2d at 278—279. In contrast, in the present case, the recitation
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in claim 1 that “the encapsulating system applies a force model to the blades
based on initial properties of the polyester fabric” is not a structural
limitation, but instead recites a process step in the process of preparing the
polyester fabric, and therefore only limits claim 1 to the extent that it limits
the actual structure of the polyester fabric. In re Brown, 459 F.2d 531, 535
(CCPA 1972) (“[I]t is the patentability of the product claimed and not of the
recited process steps which must be established.”); In re Hallman, 655 F.2d
212, 215 (CCPA 1981) (Process steps are to be given weight in a product
claim only to the extent they distinguish the claimed product over the prior
art product).
The characteristics asserted by Appellants to be imparted to the
polyester fabric by the force model (weight, absorption rate, and
breathability) are not recited in claim 1. Br. 8—9. Rather, the only
affirmatively recited structural requirements for the polyester fabric included
in claim 1 are that the fabric is encapsulated with a polymer, and is coupled
to an outside surface of a semi-permeable membrane. Nor are the particular
parameters for the force model recited in claim 1, and there is no convincing
evidence on this record that any and all force models result in a structural
difference. Accordingly, we cannot say that Appellants provide convincing
evidence that using a force model to encapsulate the polyester fabric with a
polymer as recited in claim 1 patentably distinguishes the claimed multilayer
structure from the prior art structure.
Appellants further argue that Caldwell does not disclose or suggest a
force model in which blade force is based on initial fiber characteristics in
controlling fiber encapsulation and creates and encapsulated fiber that can be
incorporated into a multilayer structure to be worn by a wearer to reduce the
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incidence of hypothermia, as recited in claim 1. Br. 8.
However, as discussed above, Caldwell discloses a polyester fabric
web in which the fibers of the web are enveloped with a silicone polymer,
and Caldwell discloses that the fiber-enveloped fabric is produced by
applying the polymer to the fabric web and then drawing the web through an
adjustable gap between two blades that apply shear force to the fabric,
causing the polymer to flow into the three-dimensional structure of the web
and envelop the fibers of the web. Caldwell col. 14,11. 4—13; col. 28,11. 37—
45, 57-67; col. 29,11. 25-30, 45-56; col. 30,11. ^H16.
We agree with the Examiner that the polyester fabric enveloped with a
silicon polymer disclosed in Caldwell appears to be the same or substantially
the same as the polyester fabric encapsulated with a polymer recited in claim
1, and the burden therefore shifts to Appellants to establish an unobvious
difference between the encapsulated fabric recited in claim 1 and Caldwell’s
enveloped fabric. In reMarosi, 710 F.2d 799, 803 (Fed. Cir. 1983)
(“[wjhere a product-by-process claim is rejected over a prior art product that
appears to be identical, although produced by a different process, the burden
is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product.”).
Appellants do not identify any structural distinction, or unobvious
difference, between the polyester fabric enveloped with a silicon polymer
disclosed in Caldwell and the polyester fabric encapsulated with a polymer
recited in claim 1. Br. 8—9. In addition, Appellants do not show that the
process by which the encapsulated polyester fabric recited in claim 1 is
produced imparts any limiting structural characteristics recited in claim 1
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Application 12/900,377
that distinguish it from the polyester fabric enveloped with a silicon polymer
disclosed in Caldwell. Id. Although Appellants assert that the encapsulated
fiber recited in claim 1 can be incorporated into a multilayer structure to be
worn by a wearer to reduce the incidence of hypothermia, this recitation in
claim 1 is directed to the intended function of the multilayer structure. Id. It
is well-settled that language in a product claim directed to the function and
intent-of-use of the product, which does not structurally limit the claimed
product or patentably differentiate it from an otherwise identical prior art
product, will not support patentability. See, e.g., In re Schreiber, 128 F.3d at
1477—79 (“Schreiber’s contention that his structure will be used to dispense
popcorn does not have patentable weight if the structure is already known”
and “the Board [correctly] found that the Harz dispenser [for dispensing
lubricating oil] would be capable of dispensing popcorn in the manner set
forth in claim 1 of Schreiber’s application.”) Nevertheless, claim 1 recites
only reducing the incidence of hypothermia, and does not specify any level
of reduction. Accordingly, one of ordinary skill in the art reasonably would
have understood that Caldwell’s water repellent impregnated polyester
fabric would reduce the incidence of hypothermia to at least some extent in
someone wearing a multilayer structure that includes the impregnated fabric.
Caldwell col. 4,11. 21-25.
Moreover, we find no error in the Examiner’s finding that Caldwell’s
disclosure of applying a silicone polymer to a polyester fabric web and
drawing the web through an adjustable gap between two blades that apply
shear force to the fabric, and Caldwell’s disclosure that the gap is preferably
smaller than the relaxed thickness of the starting web or fabric (an initial
property of the polyester fabric), corresponds to encapsulating a polyester
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fabric using a force model applied to the blades based on initial properties of
the polyester fabric, as recited in claim 1. Final Act. 3; Ans. 11; Caldwell
col. 28,11. 37-45, 57-67; col. 28,1. 68-col. 29,1. 2; col. 29,11. 25-30, 45-
56; col. 30,11. ^16.
Accordingly, Appellants’ arguments are unpersuasive of reversible
error, and we sustain the Examiner’s rejection of claims 1—5, 13, 14, and 16
under 35 U.S.C. § 103(a).
Claim 9
As set forth above, independent claim 9 recites that the encapsulated
fabric comprises a polyester fabric having an absorption of < 5% @ 0 wash,
< 15% @ 5 wash, and < 25% @10 wash. The Examiner finds that because
Caldwell discloses a polyester fabric enveloped with a silicon polymer that
is substantially identical to the encapsulated fabric recited in claim 9,
Caldwell’s fabric would inherently possess the absorption recited in claim 9.
Final Act. 3^4; Ans. 12.
Appellants argue that the Examiner’s finding of inherency is
unsupported by any fact or technical reasoning. Br. 9—11. However,
Appellants’ Specification indicates that the absorption of a polyester fabric
differs from the absorption of a nylon fabric, and also differs from the
absorption of a cotton fabric, reasonably indicating that the absorption of a
particular fabric, including polyester fabric, is an inherent characteristic of
the fabric itself. Spec. §51.
Moreover, as discussed above, the Examiner finds that Caldwell
discloses a polyester fabric web in which the fibers of the web are enveloped
with a silicone polymer using a process that corresponds to the process
recited in claim 9 (and claim 1). Final Act. 3; Ans. 11; Caldwell col. 28,11.
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37—45, 57-67; col. 28,1. 68-col. 29,1. 2; col. 29,11. 25-30, 45-56; col. 30,
11. 4—16. Because the polyester fabric enveloped with a silicone polymer
disclosed in Caldwell appears to be the same or substantially the same as the
polyester fabric encapsulated with a polymer recited in claim 1, and appears
to be produced using the same process, the Examiner has a reasonable basis
for finding that Caldwells’s enveloped polyester fabric would have an
absorbency as recited in claim 1. In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (“Where ... the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”); In re Crish, 393 F.3d 1253, 1259 (Fed. Cir. 2004)
(“[W]hen the prior art evidence reasonably allows the PTO to conclude that
a claimed feature is present in the prior art, the evidence ‘compels such a
conclusion if the applicant produces no evidence or argument to rebut it.’”
(quoting In re Spada, 911 F.2d 705, 708 n.3 (Fed. Cir. 1990)).
Therefore, the burden shifts to Appellants to show that the structure of
the polyester fabric enveloped with a silicone polymer disclosed in Caldwell
is materially different from the structure of the encapsulated polymer recited
in claim 9. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). As discussed
above, Appellants do not meet this burden because they do not identify any
structural distinction, or unobvious difference, between the polyester fabric
enveloped with a silicon polymer disclosed in Caldwell and the polyester
fabric encapsulated with a polymer recited in claim 9 (and claim 1). Br. 8—
11.
Appellants further argue that even if the Examiner provides sufficient
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evidence of similarity between the encapsulated fabric recited in claim 9 and
the enveloped fabric disclosed in Caldwell so as to shift the burden to
Appellants to demonstrate a structural difference between them, the
Examiner fails to provide any evidence that the characteristics or benefits of
the absorption recited in claim 9 were known or recognized in the prior art.
Br. 11.
However, recognition in the prior art of the absorption of the polyester
fabric recited in claim 9 is not required to establish the obviousness of the
fabric where a reasonable exists for believing that the absorption is an
inherent feature of the fabric (as discussed above). In re Omeprazole Patent
Litig., v. Andrx Pharms, Inc., 483 F.3d 1364, 1373 (Fed. Cir. 2007)
(recognition in the prior art is not necessary when the claimed characteristic
or function is inherently present in the prior art); Ex parte Obiaya, 227
USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious.”)
Therefore, Appellants’ arguments are unpersuasive of reversible error,
and we sustain the Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a).
Claims 18 and 19-
Independent claim 18 recites that the semi-permeable membrane has a
4 Appellants argue claims 18 and 19 as a group. See generally Br. 11—12.
Therefore, for the purposes of this appeal, we select claim 18 as
representative, and decide the propriety of the rejection of claims 18 and 19
based on claim 18 alone. 37 C.F.R. § 41.37(c)(l)(iv).
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hydrostatic resistance of > 2 psi and an MVTR (ASTM E-96 B) of > 1000
g/m2/day.
The Examiner finds that Brown discloses that the barrier layer of the
multi-layer fabric taught in the Brown preferably has an MVTR of at least
about 100 g/m2/day, and even more preferably at least about 800 g/m2/day,
and has a hydrostatic head (resistance) of at least about 100 mbar or 1.4 psi.
Final Act. 7; Brown col. 9,11. 46—50; col. 10,11. 17—21. The Examiner finds
that Brown thus teaches a barrier layer having an MVTR and hydrostatic
resistance as recited in claim 18. Final Act. 7.
Appellants argue that the Examiner clearly erred by ignoring the
requirement in claim 18 for the semi-permeable membrane to have a
hydrostatic resistance of > 2 psi and an MVTR (ASTM E-96 B) of > 1000
g/m2/day. Br. 11—12. However, as discussed above, the Examiner does not
ignore this limitation, and we agree with the Examiner that Brown’s
disclosure of a barrier layer in a multi-layer fabric having an MVTR of
preferably at least about 800 g/m2/day and a hydrostatic head (resistance) of
at least about 1.4 psi would have suggested a semipermeable membrane for a
multilayer garment having an MVTR and hydrostatic resistance as recited in
claim 18, within the meaning of 35 U.S.C. § 103(a). In re Peterson, 315
F.3d 1325, 1329-30 (Fed. Cir. 2003) (“In cases involving overlapping
ranges, we and our predecessor court have consistently held that even a
slight overlap in range establishes a prima facie case of obviousness . . . .”).
Because Appellants do not provide evidence demonstrating the
criticality of the ranges of MVTR and hydrostatic resistance recited in claim
18 (Br. 8—11), Appellants’ arguments are unpersuaded of reversible error in
the Examiner’s rejection. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
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1990) (indicating that in cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims,
the applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.).
We accordingly sustain the rejection of claims 18 and 19 under 35
U.S.C. § 103(a).
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the rejection claims 1—5, 9, 13, 14, 16, 18, and 19 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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