Ex Parte Muthanandam et al

Patent Trial and Appeal Board

Dec 14, 2018

13671342 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/671,342 11/07/2012
26875 7590 12/18/2018
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Saravan Muthanandam
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
STAN-62US 3325
EXAMINER
MCCONNELL, MARLA D
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARA VAN MUTHANANDAM
and RICHARD STEWART
Appeal2018-000573
Application 13/671,342
Technology Center 1700
Before DONNA M. PRAISS, A VEL YN M. ROSS, and LILAN REN,
Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-7, 9, and 10 under 35 U.S.C. § 102(b) based upon
a prior public use and under 35 U.S.C. § 103(a) as unpatentable over
Stewart3 as evidenced by Celanese. 4 Appeal Br. 3; Final Act. 2.
1 In this Decision, we refer to the Specification filed Nov. 7, 2012 ("Spec."),
the Final Office Action entered Dec. 1, 2016 ("Final Act."), the Appeal Brief
filed June 28, 2016 ("Appeal Br."), the Examiner's Answer entered Aug. 22,
2017 ("Ans."), and the Reply Brief filed Oct. 23, 2017 ("Reply Br.").
2 Appellant is the Applicant, Standard Textile Co., Inc., which is also
identified as the real party in interest. Appeal Br. 7.
3 Stewart et al., US 2009/0193584 Al, published Aug. 6, 2009.
4 Celanese Acetate LLC, Complete Textile Glossary (2001).
Appeal2018-000573
Application 13/671,342
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
The invention relates to "top covers for use on a bed mattress made up
with linens such as in place of a bed spread." Spec. ,r 1. According to the
Specification, heavy bed spreads may be uncomfortable and represent higher
costs in handling and laundering than those associated with linen sheets. Id.
,r 2. Current top covers are described in the Specification as being thicker
and heavier than linen sheets while also being thinner and lighter than the
bed spreads they replace, however, they still require additional processing
beyond washing such as ironing and pressing. Id. Appellant's invention is
said to avoid the need for additional processing by providing "a wash
activated patterning to the woven web" of elastomeric yams and non-
elastomeric yams which results in "a permanent and irreversible
textured/wrinkled pattern." Id. ,r 3. Claim 1 is illustrative (paragraphs and
emphasis added to highlight disputed limitations):
1. A top cover for use over a made-up bed mattress,
the top cover comprising
a woven web of warp yams and fill yams in a rectangular
configuration and hems so as to be of a size to be used over a
made-up bed mattress,
the warp yams or the fill yams including
a first cluster of a first plurality of non-spandex,
non-core spun elastomeric yarns and
a second cluster of a second plurality of non-
elastomeric yarns, wherein
the warp yams or fill yams comprise an alternating
sequence of the first and second clusters,
whereby the first clusters of non-spandex, non-core spun
elastomeric yams will shrink more when laundered than
2
Appeal2018-000573
Application 13/671,342
the second clusters of non-elastomeric yams to provide a
top cover having a wash activated patterning so as to
have a bulky look or texture.
Appeal Br. 32 (Claims Appendix).
OPINION
The Examiner determines that claims 1-7, 9, and 10 are unpatentable
as barred by the public use of the claimed top cover by a hotel chain for the
reasons stated on pages 2-3 of the Final Office Action. The Examiner also
determines that claims 1-7, 9, and 10 would have been obvious to one of
ordinary skill in the art at the time of the invention for the reasons stated on
pages 4--8 of the Final Office Action. Appellant argues the claims as a
group. Appeal Br. 11-30. Accordingly, claims 2-7, 9, and 10 will stand or
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long
been the Board's practice to require an applicant to identify the alleged error
in the examiner's rejections."). After review of the arguments and evidence
presented by both Appellant and the Examiner, we are not persuaded that the
Examiner erred in rejecting claims 1-7, 9, and 10 for the reasons stated in
the Final Office Action and the Answer. Regarding each of the rejections
separately argued by Appellant, we add the following primarily for
emphasis.
Claim 1: Prior Use
Appellant argues that the Examiner erred in rejecting claim 1 under
§ 102(b) because the public use of the claimed top cover qualifies as an
experimental use based on an objective evaluation of the facts surrounding
3
Appeal2018-000573
Application 13/671,342
the transaction and the experimentation. Appeal Br. 17-19. Appellant
contends that the invention was not actually reduced to practice before the
critical date of November 7, 2011 because testing "under actual working
conditions" was required to demonstrate the utility of the invention for its
intended purpose. Id. at 20-22. In support of its contention, Appellant relies
upon the Declarations of Richard Stewart, a named inventor, dated May 29,
2013 ("First Stewart Deel.") and January 27, 2016 ("Second Stewart Deel.")
as well the Declaration of Scott Mitchell, Director of Rooms Design and
Development for Marriott International, dated October 7, 2016 ("Mitchell
Deel."), which state that discussions about final design details of the
Cumulus Pattern Top Cover with ongoing with the hotel chain as of
November 7, 2011 and that testing was necessary to confirm that the fabric
would survive repeated processing in a hotel laundry facility and use by
hotel guests. Appeal Br. at 21-22 ( citing Mitchell Deel. ,r 7, First Stewart
Deel. ,r,r 8, 9, Second Stewart Deel. ,r 6).
Appellant also contends that the following factors support the public
use at Marriott hotels being experimental: ( 1) conditions of hotel use are not
readily reproducible in a laboratory, (2) the extent of supervision and control
maintained by the inventor over the period of experimentation consisting of
the Marriott Hotel representative monitoring the prototype top covers for 6
weeks at three test hotels, (3) the nature of the invention is a top cover for
use in the hospitality industry, (4) the length of the test, (5) no payment was
received for the test covers, ( 6) secrecy of information relating to the
prototype test covers was maintained by not removing the covers from test
properties, (7) commercial benefit from the testing was incidental to the
need for testing, (8) no commercial documents were prepared for the
4
Appeal2018-000573
Application 13/671,342
prototype covers, (9) no price quotations or lists were before November 7,
2011, (10) display of the prototypes was only in connection with the testing
itself, (11) the demonstration of the top covers to the hotel chain was not of
the type to generate sales, (12) no fees were charged for the prototypes, and
(13) no advertising of the prototype top covers was conducted. Id. at 22-30.
The Examiner responds that experimental use ends with actual
reduction to practice and because improved wrinkle appearance is a
subjective quality, it cannot serve as an exception to public use. Ans. 6. The
Examiner further finds that the field of the invention is not limited to hotels
and that the device would have worked as a top cover without testing. Id. at
7. Regarding the factors addressed by Appellant, the Examiner notes that
none of the declarations was accompanied by any other evidence and that
the declarations fail to explain why hotel laundering needed to be performed
in public and why testing could not have been done in a house by Appellant
given the field of use is not limited to hotels. Id. at 8-10.
Regarding the factor of inventor control over the experiment, the
Examiner finds no evidence of inventor control as the only aspect of control
in the record is that the covers not be removed from the properties. Id. at 10.
The Examiner also notes that the declarations do not include details of how
the testing was conducted and what variables were controlled and by whom,
such as the number of nights the top cover was in use overall or between
laundering cycles, the type of guests ( e.g. single occupant, family, etc.) who
used the top cover, the number of laundering cycles, the conditions of the
laundering cycle itself was controlled ( wash temperature, time, detergent,
etc.). Id. at 11.
5
Appeal2018-000573
Application 13/671,342
Regarding secrecy and control, the Examiner further notes that the
declarations themselves are inconsistent as to the number of properties to
which the covers were restricted (two or three). Ans. 11. The Examiner
finds that use of the prototype top covers was controlled by Marriott and not
the inventor. Id. The Examiner points out that there is no evidence that the
guests were under any obligation to keep the covers in confidence and at the
property or that the hotel staff was under any obligation not to disclose the
covers apart from not removing them from the property. Id. at 12. The
Examiner determines that Appellant presents some evidence of secrecy and
that the length of time for testing is reasonable on the basis of 7 5 laundering
cycles would take a minimum of 150 days, but based on the lack of details
and the inconsistencies in the declarations, the public use by a customer of
Appellant was not primarily for experimentation. Id.
In the Reply Brief, Appellant argues that pertinent case law does not
require that the environment in which the invention is contemplated to be
useful be positively recited in the claims. Reply Br. 11-12 (citing Field v.
Knowles, 183 F.2d 593 (CCPA 1950)). Appellant contends that the
hospitality industry is a contemplated use for the invention and that it differs
significantly from home use for purposes of testing, thus, necessitating the
demonstration. Id. at 12-13. Appellant asserts that case law requires testing
under actual working conditions to indicate its utility "so long as the
inventor is engaged, in good faith, in testing its operation." Id. at 13
(quoting City of Elizabeth v. American Nicholson Pavement Co., 97 US 126,
134--35 (1878)). Appellant also argues customer awareness of the
experimentation is critical to establishing experimental use and that benefit
6
Appeal2018-000573
Application 13/671,342
to the hotel from the experimental use is of no consequence and
acknowledged in City of Elizabeth, 97 U.S. at 135. Id. at 14--15.
Appellant's arguments are not persuasive of error. The Examiner's
decision is supported by the preponderance of the evidence in the cited
record in this Appeal. Appellant acknowledges that permissible public use
engages the inventor in testing the operation of the invention under actual
working conditions to demonstrate utility. Reply Br. 13 ( quoting City of
Elizabeth, 97 U.S. 134--35) ("such use is not a public use, within the
meaning of the statute, so long as the inventor is engaged, in good faith, in
testing its operation."). The evidence presented, however, does not reflect
any role of the inventors themselves in designing, conducting, overseeing,
collecting data from, or analyzing any data from the alleged experimentation
at the hotel properties that used the prototype top covers. Mr. Stewart, an
inventor, characterizes the testing as Marriott's testing, not his own in the
First Stewart Declaration. First Stewart Deel. ,r 9 ("It was not until after
November 7, 2011 that the hotel chain had expressed sufficient satisfaction
with their testing of the various Cumulus Pattern Top Cover samples .... ")
( emphasis added).
The Mitchell Declaration also provides no evidence of inventor
involvement with the alleged experimentation. At most the Mitchell
Declaration establishes that one or more representatives of Appellant
occasionally visited the three hotels where the top covers were in use.
Mitchell ,r 6 ("On occasion a Standard textile representative( s) accompanied
the Marriott representatives at the three test hotels."). Such evidence
suggests that no documentation of these visits was made or maintained and
no records of any data or observations from the prototype test covers in use
7
Appeal2018-000573
Application 13/671,342
were made or collected at these visits that might show some technical
evaluation beyond mere customer satisfaction that one might expect from
test marketing a product. As noted by the Examiner, none of the
declarations include corroborating documentation to support the
characterization of the public use by Marriott hotels as an experimental use.
The Examiner correctly finds (Ans. 11 ), no evidence in this record of
continual or systemic feedback on the use of the top covers and no evidence
that any data regarding the conditions of use were controlled or tracked by
the inventor, the Appellant, or the hotel.
Appellant does not address the inconsistencies in the declarations
concerning where the alleged experimentation occurred. The Second
Stewart Declaration states that the experimentation was restricted to two
hotel properties while the Mitchell Declaration states that the prototype top
covers were used at three properties. Second Stewart Deel. ,r 4; Mitchell
Deel. ,r 6. This inconsistency as to where the public use took place supports
the Examiner's finding that Marriott controlled the use of the prototype top
covers, not the inventors. It also undercuts the alleged secrecy and control
of the use because if Marriott was not permitted to remove the prototype top
covers from the two permitted properties as stated in the Second Stewart
Declaration, the record reflects that it violated that restriction by using the
top covers elsewhere. Second Stewart Deel. ,r 4 ("The hotel chain was
instructed that the prototype top covers were not to be removed from the two
test properties.").
The evidence presented also does not adequately demonstrate the
necessity of the public use by Marriott hotels. The First Stewart Declaration
characterizes the goal of the public use by Marriott hotels as addressing the
8
Appeal2018-000573
Application 13/671,342
hotel's "concerns and dissatisfaction with the performance of an existing top
cover we were selling to them" with the result being the hotel's expression
of "sufficient satisfaction." First Stewart Deel. ,r,r 5, 9. The Mitchell
Declaration adds no further detail, vaguely describing the property being
evaluated by the testing as "sufficient durability" without any particular
measurements or scales from which this might be assessed objectively.
Mitchell Deel. ,r 7. Given that the ultimate decider of the suitability of the
product was the hotel, Appellant's evidence and arguments do not
adequately rebut the Examiner's finding that the activities described are
typical of a trader's and not an inventor's experiment (Ans. 9-10).
According to Mr. Stewart, a named inventor, "it was unknown if the
prototype top covers could go through a complete cycle of use on a large
scale while successfully addressing the expressed wrinkling and appearance
problems" of the existing top covers. Second Stewart Deel. ,r 5. Mr.
Stewart states that the service life of a top cover is 7 5 laundering cycles that
would take at least 150 days to evaluate. Second Stewart Deel. ,r,r 6-7. The
testing by the Marriott hotels, however, was for a period of six weeks ( 42
days), which is less than 150 days. Mitchell Deel. ,r 6 ("The three test hotels
used the prototype top covers for approximately 6 weeks."). Thus the
expressed need for the testing is not supported by the evidence since the
record does not show that any one top cover was subjected to 75 laundering
cycles.
Mr. Stewart also asserts that testing by Marriott hotels was needed
because "lauder[ing] in the hotel's laundry facilities, fold[ing], and stor[ing]
in a folded condition until the top covers are eventually distributed to
rooms" is a process that "is not easily replicated in a laboratory setting."
9
Appeal2018-000573
Application 13/671,342
Second Stewart Deel. ,r 5. Mr. Stewart further describes guest use of the top
covers in the hotel environment as sitting and laying on the top cover,
placing feet, with and without shoes, on the top cover, and placing luggage
of varying type on the top cover. Id. The laundering and use of a top cover
as described in the Second Stewart Declaration thus depends on the top
cover's contact with a washing machine, shoes, and luggage. The Second
Stewart Declaration does not adequately explain why exposure of the top
cover to the general public and hotel employees was necessary to test such
laundering and use of the top covers. Folding and storage of the top covers
likewise has not been shown to require public access. Thus, the
preponderance of the evidence supports the Examiner's findings (Ans. 9-
10), that the record shows no clear reason or need for the hotel laundering to
have been performed in public and no evidence to show that the ability of
the top cover to stand up to the rigors of guest use could not have been
conducted by Appellant in a home.
In sum, we are not persuaded by Appellant that the Examiner erred in
finding Appellant's top sheets covered by claim 1 to be in public use prior to
November 7, 2011.
Claim 1: Obviousness
Appellant argues that the Examiner erred in rejecting claim 1 over
Stewart because Stewart does not disclose (1) an alternating sequence of first
clusters of non-spandex, non-core elastomeric yams and second clusters of
non-elastomeric yams in the warp yams or the fill yams, and, consequently,
(2) does not inherently disclose a wash activated patterning. Appeal Br. 13.
According to Appellant, Stewart discloses a multifilament yam and not a
cluster of more than one yam because the term "cluster of yams" does not
10
Appeal2018-000573
Application 13/671,342
read on a "nmltifilament yam." Id. at 16. Appellant relies on the Second
Stewart Declaration to support its argument that a multifilament yam is not a
cluster of yams as understood by a person having ordinary skill in the art.
Id. at 17 ( citing Second Stewart Deel. ,r 9).
The Examiner responds that Stewart discloses the use of both non-
spandex, non-score spun elastomeric yams and non-elastomeric yams for
both the fill yams and the warp yams, including combinations and/or blends
thereof. Ans. 4 (citing Stewart ,r,r 15-17). The Examiner cites paragraph 3
of Appellant's Specification for the property of elastomeric yams to shrink
or crinkle more when laundered than will the non-elastomeric yams to
provide a wash activated patterning to the woven web. Id. ( citing Spec. ,r 3).
Because both Stewart and Appellant utilize the same combination of non-
spandex, noncore spun elastomeric yams and a non-elastomeric yam, there
is substantial similarity between the product of the invention and the prior
art. Id. The Examiner further finds that Appellant's Specification does not
establish that any particular weave is necessary to provide a wash activated
patterning. Id. at 4--5 (citing Spec. ,r,r 3, 4). Regarding the term "cluster of
yams," the Examiner finds that the term is not defined in the Specification
and that a multifilament yam is a cluster of single yams because it contains
more than one filament or fiber and a single filament is a fiber and a yam by
definition. Id. at 5---6 ( citing Celanese).
In the Reply Brief, Appellant argues that the Second Stewart
Declaration is supported by the definition of "multifilament" provided in
Celanese. Reply Br. 7. Appellant's reasoning is that because a
multifilament is a yam made up of continuous filaments or strands, it is not a
"cluster of yams" because a "cluster of yams" connotes more than one yam.
11
Appeal2018-000573
Application 13/671,342
Appellant also asserts that "physical documentation of concepts that are
'well understood' in an industry are neither always available, nor necessary"
therefore Mr. Stewart's declaration should be credited and persuasive on the
meaning of the term "cluster." Id. at 8. Regarding whether a particular
weave is necessary to provide a wash activated patterning, Appellant
contends that the Examiner fails to consider the entire application including
Figure 2 and the alternating pattern described in paragraph 14 that results in
the wash activated pattern described in paragraph 15 and shown in Figure 3.
Id. at 8-9. Because Stewart does not disclose alternating clusters of
elastomeric and non-elastomeric yams (elements 16' and 16" in Figure 2),
Appellant contends that Stewart cannot also disclose wash activated
patterning. Id. at 10.
Appellant's arguments are not persuasive because Appellant would
have us read into the claim the weave pattern illustrated in Figure 2 of the
Specification. We determine the scope of the claims in patent applications
based on the claim language, giving claims "their broadest reasonable
interpretation consistent with the specification" and "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)
( citation omitted). We must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim."). The challenge is to interpret
12
Appeal2018-000573
Application 13/671,342
claims in view of the specification without unnecessarily importing
limitations from the specification into the claims. See E-Pass Techs., Inc. v.
3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Accordingly, we are
not persuaded by Appellant that the term "cluster of yams" requires the
arrangement of fibers shown in Figure 2, nor are we persuaded that "cluster
of yams" precludes multiple single fiber yams as the Examiner applies that
term to the prior art.
Thus, Appellant does not adequately distinguish the claimed structure
over the cited prior art based on the recited "cluster." During examination of
a patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Prater, 415 F.2d 1393,
1404---05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1364.
It is the Appellant's burden to precisely define the invention, not the PTO' s.
In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellant always has
the opportunity to amend the claims during prosecution, and broad
interpretation by the examiner reduces the possibility that the claim, once
issued, will be interpreted more broadly than is justified. In re Prater, 415
F.2d at 1404---05.
Even if we were to construe "cluster of yams" to require more than a
single multifilament yam, Appellant does not adequately rebut the
Examiner's finding that it would have been obvious to a person of ordinary
skill in the art to alternate the elastomeric yams with the non-elastomeric
yams taught by Stewart for both the warp and fill yams "based on the desire
to provide a balanced fabric with respect to mechanical properties." Final
Act. 5. The Examiner's determination that such an alternating sequence to
provide a balanced fabric with respect to mechanical properties would have
13
Appeal2018-000573
Application 13/671,342
been obvious to a skilled artisan based on Stewart is further supported by
Stewart's teaching to provide a plurality of the warp yams and fill yams that
are non-spandex, non-core spun elastomeric yams so that the woven fabric is
stretchable in both the widthwise direction and the lengthwise direction.
Stewart ,r 28.
In sum, we are not persuaded by Appellant that the Examiner erred in
rejecting claim 1 over the teachings of Stewart as evidenced by Celanese.
CONCLUSION
We affirm all of the Examiner's rejections of claims 1-7, 9, and 10.
DECISION
We affirm the Examiner's decision to reject claims 1-7, 9, and 10
under 35 U.S.C. §§ 102(b) and 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).
AFFIRMED
14