Ex Parte Rose et al

Patent Trial and Appeal Board

Sep 29, 2017

13568692 (P.T.A.B. Sep. 29, 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.
13/568,692 08/07/2012 Samuel D. Rose G4500 1030US.1 6776
26158 7590 10/03/2017
WOMBLE CARLYLE SANDRIDGE & RICE, LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
MCKINNON, LASHAWNDA T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
IPDocketing@WCSR.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL D. ROSE,
GARY D. ZUMSTEIN, and TONY L. ALLEN
Appeal 2016-007232
Application 13/568,6921
Technology Center 1700
Before JEFFREY T. SMITH, MARKNAGUMO,
and MICHAEL G. McMANUS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—34. We have jurisdiction under 35 U.S.C. § 6.
1 According to Appellants, the real party in interest is Glen Raven, Inc. See
App. Br. 1.
Appeal 2016-007232
Application 13/568,692
Appellants’ invention relates generally to anti-static fabric and apparel
that meets nationally-recognized standards for conspicuity and flame-
resistance. (Spec. 7,11. 6—9). Claim 1 is illustrative of the subject matter on
appeal:
1. A fabric for use in safety apparel, comprising:
(a) a first set of yams in which each yam comprises at least 60
percent modacrylic fibers;
(b) a second set of yams in which each yam includes at least
one continuous antistatic carbon filament;
(c) yams from the second set being a minority of the yams in
the fabric and introduced in spaced intervals in the fabric along
with yams from the first set;
(d) the fabric having a dye applied thereto that meets the
America National Standard Institute standard ANSI/ISEA-107-
2010 minimum conspicuity level class requirements for
occupational activities for high-visibility safety apparel;
(e) wherein, the fabric also meets the Federal Test Method
Standard 191 A, Method 5931 for electrostatic decay, the
Electrostatic Discharge Association Advisory ADVI 1.2-1995
voltage potential, and the vertical flame test of ASTM F 1506-
10a (2000).
Claims Appendix to App. Br.
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Application 13/568,692
Appellants (see App. Br., generally) request review of the
following rejections under 35 U.S.C. § 103(a):
I. Claims 1, 4—10, 16—21, 24, 26—28, and 34 rejected as
unpatentable over the combined teachings of Gibson et al.
(US 7,419,922) in view of Mallen et al. (US 5,288,544).
II. Claims 2 and 22 rejected as unpatentable over the combined
teachings of Gibson, Mallen and Campbell et al. (US
6,946,412).
III. Claims 3, 23 and 25 rejected as unpatentable over the
combined teachings of Gibson, Mallen and Samuelson (US
5,202,185).
IV. Claims 11—15 and 29-33 rejected as unpatentable over the
combined teachings of Gibson, Mallen and Campbell
V. Claims 1—2, 4, 6—17, 20-22, 24, 26—34 rejected as
unpatentable over the combined teachings of Campbell,
Mallen and Kuhn et al. (US 5,030,508).
VI. Claims 3 and 23 rejected as unpatentable over the combined
teachings of Campbell, Mallen, Kuhn and Samuelson.
VII. Claim 5 rejected as unpatentable over the combined
teachings of Campbell, Mallen, Kuhn and Gibson.
OPINION
After consideration of Appellants’ arguments and evidence and the
Examiner’s position in the Final Office Action and Answer we AFFIRM the
obviousness determinations.
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Rejections I—IV over Gibson and Mallen.2
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have not identified reversible error in the
Examiner’s determination that the subject matter recited in claims 1—34
would have been obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103(a). Accordingly, we sustain rejections I—IV.
The complete statement of the rejections I—IV appear in the final
office action. (Final Act. 2—8). The Examiner found Gibson teaches an anti­
static yam formed from a blend of carbon anti-static fibers and other fibers.
(Gibson, col. 5,11. 10—14). The Examiner found Gibson teaches the fibers
used are staple and filament, but not continuous filament. (Final Act. 4; col.
3,11. 14—17). The Examiner found Mallen teaches fabric articles comprising
continuous filament fibers used in continuous form to prevent linting.
(Mallen, col. 2,11. 54—58). Mallen also discloses the conductive fiber is in
the continuous filament form. (Mallen, claim 8, col. 6,11. 33—34). The
Examiner determined it would have been obvious to a person skilled in the
art to use a conductive fiber in the continuous filament form in anti-static
yam such as described by Gibson to prevent linting.
2 Appellants presented substantial arguments for Rejection I, directed to
independent claims 1 and 21, and Rejection III. Appellants did not present
substantial arguments addressing dependent claims 2, 4—20, 22 and 24-40
and rely on the arguments presented for independent claim 1 for these
claims. (App. Br. 10). We select independent claim 1 as representative of
Rejection I and limit our initial discussion to independent claim 1. We will
also address separately argued claims 3 and 23, in Rejection III.
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Appellants argue, neither Gibson nor Mallen expressly teach the use
of continuous carbon filament and thus fail to teach each and every feature
of the claim. Appellants argue Mallen is not analogous art because Mallen
seeks to reduce linting of surgical fabrics achieved by using synthetic fiber
in continuous filament form. (App. Br. 9—10). Appellants’ arguments are
not persuasive of reversible error. Mallen seeks to reduce linting of surgical
fabrics achieved by using fibers in continuous filament form. This includes
both continuous synthetic and conductive filaments. (Mallon, col. 2,11. 54—
58; Claim 8, col. 6,11. 33—34). Mallen also teaches carbon fiber can be
utilized to render the fabric conductive. (Mallon, col. 2,1. 66— col. 3,1. 5).
The Examiner has identified Mallen which evidences that fabric articles
comprising continuous conductive filament fibers were known. A person of
ordinary skill in the art would have reasonably expected that known
continuous carbon conductive filament fibers would have been suitable for
anti-static yam, such as described by Gibson. A person of ordinary skill in
the art would have sufficient skill to form an anti-static yam comprising
known continuous carbon conductive filament fibers. See, e.g., KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a
stmcture already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result”); In re Siebentritt, 372 F.2d
566, 567-68 (CCPA 1967) (express suggestion to interchange methods
which achieve the same or similar results is not necessary to establish
obviousness); see also In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir. 2006); In
re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness
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under § 103, all that is required is a reasonable expectation of success.”
(citations omitted)).
Mallen, like the present invention, and Gibson is concerned with anti­
static fabric. Thus, Appellants’ argument that Mallen is not analogous art is
unavailing.
Appellants argue that claims 3 and 23 recite the specific use of a
trilobally shaped carbon core, as the continuous carbon component,
surrounded by a polyester sheath. Appellants argue the Examiner is relying,
in effect, upon an attempt to modify the continuous filaments of Mallen by
first substituting the filaments of Samuelson. Thus, the Examiner’s rejection
is based on impermissible hindsight because there is no teaching or
motivation to replace the Mallen filaments with the Samuelson filaments.
(App. Br. 10-11).
Contrary to Appellants’ position, it is not necessary to first physically
incorporate the filaments of Samuelson for the conductive filaments of
Mallen to render obvious the claimed invention. See In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”); see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc)
(“Etter’s assertions that Azure cannot be incorporated in Ambrosio are
basically irrelevant, the criterion being not whether the references could be
physically combined but whether the claimed inventions are rendered
obvious by the teachings of the prior art as a whole.”); “The test for
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obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.... Rather, the
test is what the combined teachings of [those] references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425, (CCPA 1981). See also Sneed, 710 F.2d at 1550, supra', and In re
Nievelt, 482 F.2d 965, 968, (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
As stated above, a person of ordinary skill in the art would have reasonably
expected that known continuous carbon conductive filament fibers, such as
described by Samuelson, would have been suitable for anti-static yam, such
as described by Gibson. A person of ordinary skill in the art would have had
sufficient skill to form an anti-static yam comprising known continuous
carbon conductive filament fibers.
For the reasons stated above, and the reasons presented by the
Examiner, we sustain the rejections I—IV.
Rejections V—VII over Campbell, Mallen and Kuhn.3
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have not identified reversible errors in the
3 Appellants present substantial arguments for Rejection V, directed to
independent claims 1 and 21, and Rejection VI. Appellants did not present
substantial arguments addressing dependent claims 2, 4—20, 22 and 24-40
and rely on the arguments presented for independent claim 1 for these
claims. (App. Br. 13). We select independent claims 1 as representative of
Rejection V and limit our initial discussion to independent claim 1. We will
also address separately argued claims 3 and 23, in Rejection VI.
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Examiner’s determination that the subject matter recited in claims 1—34
would have been obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103(a). Accordingly, we sustain rejections V—VII.
The complete statement of the rejections V—VII appears in the final
office action. (Final Act. 8—13). The Examiner found that Campbell teaches
a fabric for use in safety apparel comprising a first set of yams comprising
modacrylic fibers, and a second set of yams comprising anti-static fibers.
(Campbell, col. 4,11. 1—23). The Examiner found Campbell teaches the
fibers used are staple and filament, but not a continuous filament. (Final
Act. 9; Campbell, col. 3,11. 14—17). The Examiner recognized that
Campbell discloses metallic and non-metallic antistatic conductive fibers
that were suitable for the safety apparel. (Final Act. 9; col. 5,11. 9—15). The
Examiner found Mallen teaches fabric articles comprising continuous
filament fibers used in continuous form to prevent linting. (Mallen, col. 2,
11. 54—58). Mallen also discloses the conductive fiber is in the continuous
filament form. (Mallen, claim 8, col. 6,11. 33—34). Mallen also teaches
carbon fiber can be utilized to render the fabric conductive. (Mallon, col. 2,
1. 66— col. 3,1. 5). The Examiner found Kuhn discloses using carbon fiber in
garments to impart anti-static properties. (Final Act. 10; col. 1,11. 39-41).
The Examiner determined it would have been obvious to a person skilled in
the art to use a conductive fiber in the continuous filament form in anti-static
yam such as described by Campbell.
Appellants argue, neither Campbell nor Mallen expressly teach the
use of continuous carbon filament and thus fail to teach each and every
feature of the claim. Appellants argue Mallen is not analogous art because
Mallen seeks to reduce linting of surgical fabrics achieved by using synthetic
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fiber in continuous filament form. (App. Br. 11—12). Appellants argue
Kuhn provides no preference for carbon over steel and thus does not provide
the motivation suggested by the Examiner. (App. Br. 12). Appellants
further argue the teachings of Mallen and Kuhn teach away from one
another because Mallen teaches a preference for carbon and stainless steel as
the conductive materials. (App. Br. 12).
Appellants’ arguments are not persuasive of reversible error.
Appellants’ arguments regarding the combination of Campbell and Mallen
essentially repeat the arguments presented for the combination of Gibson
and Mallen. These arguments are unpersuasive substantially for the reasons
provided above. We incorporate our response provided to these arguments
from above. Consequently, we determine a person of ordinary skill in the art
would have reasonably expected that known continuous carbon conductive
filament fibers would have been suitable for anti-static yam, such as
described by Campbell. A person of ordinary skill in the art would have
sufficient skill to form an anti-static yam comprising known continuous
carbon conductive filament fibers.
Mallen, like the present invention, Campbell and Kuhn is concerned
with anti-static fabric. Thus, Appellants’ argument that Mallen is not
analogous art is unavailing.
Appellants’ argument that Mallen and Kuhn teach away from one
another because Kuhn teaches that black stripe fabrics and stainless steel-
containing fabrics are expensive’ and Mallen teaches a preference for carbon
and stainless steel as the conductive materials, is also unavailing. The fact
that Kuhn provides a discussion regarding the expense of the materials does
not provide a disincentive to utilize either carbon or steel. The discussion
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appearing in Mallen provides a preference for carbon and steel is based on a
comparison to other expensive metals including platinum and gold and
silver. (Mallen, col. 3,11. 33—38). This discussion does not detract from
what the teachings would have suggested to a person of ordinary skill in the
art. Specifically the person of ordinary skill in the art would have
recognized the suitability of utilizing either carbon or steel in antistatic
fabrics.
Appellants argue claims 3 and 23 recite the specific use of a trilobally
shaped carbon core, as the continuous carbon component, surrounded by a
polyester sheath. Appellants argue the Examiner is relying, in effect, upon
an attempt to modify the continuous filaments of Mallen by first substituting
the filaments of Samuelson. Thus, the Examiner’s rejection is based on
impermissible hindsight because there is no teaching or motivation to
replace the Mallen filaments with the Samuelson filaments. (App. Br. 13—
14).
Appellants have substantially repeated the arguments presented for
claims 3 and 23 above. As stated above, a person of ordinary skill in the art
would have reasonably expected that known continuous carbon conductive
filament fibers, such as described by Samuelson, would have been suitable
for anti-static yam.
For the reasons stated above, and the reasons presented by the
Examiner, we sustain the rejections V—VII.
ORDER
The rejections of claims 1—34 under 35 U.S.C. § 103(a) are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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