Ex Parte Sadato

Patent Trial and Appeal Board

Jun 27, 2018

12441024 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/441,024 11/12/2009
28596 7590 06/27/2018
W. L. GORE & ASSOCIATES, INC.
551 PAPER MILL ROAD
P. 0. BOX 9206
NEWARK, DE 19714-9206
FIRST NAMED INVENTOR
Hiraki Sadato
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.
FA/328 8529
EXAMINER
JOHNSON, JENNA LEIGH
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
06/27/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte HIROKI SADA TO
Appeal2017-000147
Application 12/441,024
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER L. OGDEN,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1 and 11-30 of Application
12/441,024 under 35 U.S.C. § 103(a). Final Act. 2---6 (mailed Sept. 30,
2015). Appellant1 seeks reversal of the rejection pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The present application generally relates to an abrasion resistant
fabric. Spec. ,r 1. The fabric described in the application has a surface
1 Japan Gore-Tex Inc. is identified as the real party in interest. Appeal Br. 2.
Appeal2017-000147
Application 12/441,024
coated with small polymer dots which impart abrasion resistance without
impairing the appearance of the fabric. Id. ,r 6.
Claim 1 is representative and is reproduced below:
1. A fabric having a surface which is coated with polymer
dots,
wherein the fabric is a woven or a knitted fabric which
has concavities and convexities on its surface, in a woven fabric
wherein at least one of the intersections where warps are
stacked on wefts and intersections where wefts are stacked on
warps forms the convexities on the surface of the woven fabric
and in a knitted fabric wherein at least one of yam intersections
and yam loops forms the convexities of the surface of the
knitted fabric and wherein the convexities are coated with the
polymer dots, wherein the polymer dots are made from a
material selected from the group consisting of polyamide resins,
polyester resins, polyurethane resins, polyolefin resins, and
acrylic resins,
wherein the surface-coating amount of the polymer dots
ranges from 0.2 g/m2 to 3.0 g/m2,
wherein the average interval among the polymer dots is
less than or equal to 0.5 mm, and
wherein the polymer dots have an average maximum
diameter ranging from 0.03 mm to 0.3 mm.
Appeal Br. 16 (Claims App.).
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Application 12/441,024
REJECTION
The Examiner maintains the following rejection:
1. Claims 1 and 11-30 are rejected under 35 U.S.C. § I03(a) as
obvious over Langley et al. 2, Rock et al. 3, Halley et al. 4, J aglowski
et al. 5, and Sadato. 6 Final Act. 2---6.
DISCUSSION
Appellant alleges error on several bases. First, Appellant argues that
the cited references fail to teach the claimed surface-coating amount.
Appeal Br. 4--7. Second, Appellant argues that one of skill in the art would
not have had a reasonable expectation of success in using from 0.2 g/m2 to
3.0 g/m2 of polymer. Id. at 7-10. Third, Appellant argues that the
Examiner relies upon hindsight in combining the cited references. Id. at 10-
14.
"Surface-Coating Amount of the Polymer Dots
Ranges from 0. 2 g/m2 to 3. 0 glm2"
Claim 1 requires a fabric having a surface coated with polymer dots
where "the surface coating amount of the polymer dots ranges from 0.2 g/m2
to 3.0 g/m2. Appeal Br. 16 (Claims App.). The Examiner found that
Jaglowski teaches to add a coating only to the high spots on a fabric so as to
maintain permeability. Final Act. 4. The Examiner further found that
2 US 2004/0116022 Al, published June 17, 2004.
3 EP 1 529 864 Al, published May 11, 2005.
4 US 2002/0197924 Al, published Dec. 26, 2002.
5 US 2004/0126544 Al, published July 1, 2004.
6 EP 1 568 485 Al, published Aug. 31, 2005.
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Application 12/441,024
Halley teaches a dot coating using small dots having similar diameters,
heights, and spacing as claimed. Id. More specifically, the Examiner
determined that Halley teaches dots having a diameter of 100 to 1000
microns, a spacing of 200 to 2000 microns, and a height of 10 to 200
microns. Id. at 3. According to the Examiner, "[b]y using small dots in a
similar size and pattern as the applicant, Halley et al. would direct one of
ordinary skill in the art to produce a coated fabric with similar amounts of
coating added to the fabric." Id. at 4. Moreover, the Examiner found that a
skilled artisan would have had reason to optimize the amount of coating "so
that the fabric is still lightweight, flexible, and ha[ s] the desired permeability
and breathability, while adding a sufficient amount of coating so that the
fabric will be abrasion resistant." Id.
Appellant argues that such findings are insufficient. First, Appellant
argues that the substrate of Halley is flat and cannot be equated with an
irregular woven or knitted fabric. Appeal Br. 6. Appellant contends that, in
the case of knits and wovens, some of the coating applied to the fabric "may
soak into and among the individual yams," thus, the amount of coating
adhering to the convexities is less than the total amount applied. Id. ( citing
Rock ,r 4). Appellant cites Rock in support of the proposition that the
irregular structure of woven or knitted fabric would diminish the amount of
the polymer dot which adheres to the convexity. Id. The cited portion of
Rock, however, refers only to "discrete coating segments of coating material
that binds individual yam fibers together." This is inadequate to support
Appellant's inference, because the Examiner's rejection is based not on
Rock alone, but in combination with references including Jaglowski, which
teaches adding the coating only to the raised regions of the woven fabric,
and Halley, which teaches that using a raised dot pattern helps maintain both
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Application 12/441,024
abrasion resistance and flexibility of the material. Answer 6; see also In re
Keller, 642 F.2d 413,425 (CCPA 1981) ("The test for obviousness is ...
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.").
Second, Appellant argues that the pattern of the weave or knit will
determine the location of the convexities (knuckles), thus, the pattern taught
by Halley may not coincide with the convexities. Appeal Br. 6. The
Examiner, however, does not rely on Halley as teaching to apply the
polymer dots to the convexities. Rather, the Examiner relies upon Jaglowski
as teaching to add polymer only to the high spots of the fabric so as to
increase wear resistance while maintaining acceptable air permeability.
Final Act. 3. Halley indicates that the distribution and size of polymer dots
taught therein is consistent with adequate permeability. Halley ,r 20.
Moreover, "[ n ]on-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Further, we agree with the Examiner that it is within the
skill of the art to have the number of convexities appropriate for the desired
polymer dot pattern. Answer 6-7.
Third, Appellant argues that, even if Halley teaches a surface coating
area similar to the claims, that does not equate to a similar surface coating
weight per area. Appeal Br. 6-7. Appellant asserts that one would need to
know at least the thickness and density of the polymer dots of Halley in
order to calculate the weight per square meter of the surface area coating.
Id. at 7 n.4. Halley, however, teaches that the polymer dots "may have a
height in the range [ of] 10-200 microns." Halley ,r 48. This overlaps with
the Specification which provides that "the maximum height of the polymer
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Application 12/441,024
dots which coat the fabric surface is equal to or less than 0.3 mm [300
microns]." Spec. ,r 27. Further, claim 1 requires that the polymer dot be
"selected from the group consisting of polyamide resins, polyester resins,
polyurethane resins, polyolefin resins, and acrylic resins." Appeal Br. 16
(Claims App.). This overlaps with Halley, which teaches that the polymeric
dots may be formed from the following materials:
The polymeric material may be applied to selected areas of the
substrate in liquid form from a hot melt, by solution coating or
by emulsion coating. The liquid polymeric material may include
a prepolymer which cures in situ, a UV light curable polymer, a
room temperature vulcanising polymer, or a thermoplastic
polymer. Suitable elastomeric polymers include polyesters,
polyvinylchloride, polyamides, silicones, polyurethanes, or
polyurethane-polyester composites. Reactive polyurethanes,
such as blocked polymers, whose reactive groups unblock above
a certain temperature are especially useful.
Halley ,r 40 ( emphasis added). Further, the Examiner determined that
Sadato teaches to use cross-linked polyamide as an abrasion resistant
coating. Final Act. 4.
In the Reply Brief, Appellant asserts that "there is no evidence that the
amounts of coating disclosed in Halley and Jaglowski are even different
from the amount in Rock, much less significantly lower." Id. at 3. We
disagree. Halley's teaching to use polymer dots of a diameter, spacing,
height, and material similar to that claimed is evidence that such dots were
known to be applied in an amount as claimed.
Accordingly, in view of the similarity of the disclosure of Halley
relating to the diameter, spacing, height, and polymer as well as the
disclosure of Sadato relating to the use of cross-linked polyamide as a
discontinuous abrasion resistant layer, Appellant has failed to show error in
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Application 12/441,024
the Examiner's finding that the cited references would have taught the
claimed weight per area to one of skill in the art.
Reasonable Expectation of Success
Appellant additionally argues that a person of ordinary skill in the art
would not have had a reasonable expectation of success that the claimed
amount of surface covering would be of sufficient quantity to impart
abrasion resistance. Appeal Br. 7-10. Appellant asserts that Rock teaches a
discontinuous coating having a weight of 17 g/m2 to 204 g/m2. Id. at 8.
Appellant further asserts that no other cited reference teaches to use a lesser
amount. Id.
Appellant additionally argues that a reference must be considered in
its entirety, therefore, Rock's teaching may not be ignored although not cited
by the Examiner. Id. at 8-9. Finally, Appellant argues that the low amount
of surface coating claimed was intended to provide abrasion resistance while
keeping the coating visually inconspicuous. Id. at 9. Appellant asserts that
none of the cited references teach "any need to keep the coating from being
visible or any other motivation to reduce the amount of coating disclosed by
Rock." Id.
"An obviousness determination requires that a skilled artisan would
have perceived a reasonable expectation of success in making the invention
in light of the prior art." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d
1340, 1362 (Fed. Cir. 2009). "The reasonable expectation of success
requirement refers to the likelihood of success in combining references to
meet the limitations of the claimed invention." Intelligent Bio-Sys., Inc. v.
Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). "[O]ne
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must have ... a reasonable expectation of achieving what is claimed in the
patent-at-issue." Id.
As above, Halley teaches a dot pattern which overlaps claim 1 in
polymer dot diameter, spacing, and material. Halley ,r 48. Moreover,
Halley teaches a dot height which overlaps that taught by the Specification
(the claim is silent as to dot height). Id. This suggests it was known, and
not unexpected, to apply polymer dot coatings in the quantity per area as
claimed. The Examiner need not show that the dots have a surface area that
makes the dots less visible - that is not claimed.
Moreover, Appellant's argument is, at root, that Rock teaches away
from the claimed coating amount. A prior art reference evidences teaching
away if it "criticize[s], discredit[s], or otherwise discourage[s] the solution
claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant
does not cite to any portion of Rock that criticizes, discredits, or otherwise
discourages use of the claimed quantity.
Accordingly, Appellant fails to show error in the Examiner's
determination that a person of ordinary skill in the art would have had a
reasonable expectation of success in combining the teachings of the claimed
references.
Hindsight
Appellant additionally argues that the Examiner's motivation to
combine the cited references could have come only from the Appellant's
disclosure. Appeal Br. 10-14.
In regard to hindsight, the Federal Circuit has held as follows:
Measuring a claimed invention against the standard established
by section 103 requires the oft-difficult but critical step of
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Application 12/441,024
casting the mind back to the time of invention, to consider the
thinking of one of ordinary skill in the art, guided only by the
prior art references and the then-accepted wisdom in the field.
In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999). "[T]he best defense
against hindsight-based obviousness analysis is the rigorous application of
the requirement for a showing of a teaching or motivation to combine the
prior art references." Ecolochem, Inc. v. S. Calif. Edison Co., 227 F.3d
1361, 1371 (Fed. Cir. 2000).
In arguing that the Examiner engaged in improper hindsight,
Appellant contends that there is no adequate showing that a person of
ordinary skill in the art would have combined the teachings of Langley and
Rock. Appeal Br. 12. Appellant asserts that Langley teaches that a
desirable durability is imparted by a tightly woven or knitted construction.
Id. Appellant argues that the Examiner determines that one of skill in the art
would have combined the teachings of Langley and Rock (regarding
increasing abrasion resistance) "with no explanation." Id.
In the Final Rejection, the Examiner determined that
it would have been obvious to one having ordinary skill in the
art to add a protective, discontinuous abrasion resistant coating,
as taught by Rock et al., to the outer surface of the composite
fabric of Langley et al. to increase the abrasion resistance and
thus the durability of the finished fabric.
Final Act. 2-3. Appellant's argument-that there is no teaching that
additional abrasion resistance would be desirable - lacks merit. Both
Langley and Rock teach that abrasion resistance is desirable. See Langley
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,r 24; Rock ,r 21. Rock teaches that such abrasion resistance may be
achieved by a discontinuous coating. Rock ,r 4.
Second, Appellant argues that nothing in J aglowski, which teaches to
coat only the knuckles of the fabric, provides that such coating would
require less polymer than the discontinuous coating of Rock. Appeal Br.
12-13, 14. The Examiner determines that there is reason to combine the
teachings of the two references "since adding the dots only to the high points
of the fabric would increase the wear resistance of the fabric while
maintaining an acceptable air permeability." Ans. 3--4, 9; Jaglowski ,r 33
(improved air permeability "effected by coating only the raised portions,
knuckles"). The Examiner does not rely upon Jaglowski as teaching the
amount (size, spacing, height) of surface coating polymer. Nor does
Appellant argue that Jaglowski teaches away from the claim. Accordingly,
in arguing that Jaglowski does not teach to use less polymer than Rock,
Appellant does not show error in any determination of the Examiner.
Third, Appellant argues that the Examiner does not adequately explain
why a person motivated to enhance abrasion resistance of a woven or knitted
fabric would look to Halley, which teaches application of polymer dots to
"an essentially flat flexible substrate." Appeal Br. 13. In the Final
Rejection, the Examiner determines that "it would have been obvious to one
having ordinary skill in the art to use a discontinuous dot pattern, as taught
by Halley et al. to maintain breathability and flexibility while providing
abrasion resistance to the composite." Final Act. 3. Thus, the Examiner
determines that one of skill in the art would look to Halley for its teachings
regarding imparting abrasion resistance to a fabric that is also air permeable
and flexible. Appellant does not specifically address this determination.
Similarly, Appellant's argument that Langley explicitly discourages
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the use of expanded polytetrafluoroethylene does not rebut any specific
finding (and is not supported by citation to any portion of Langley). Appeal
Br. 13. Moreover, Langley teaches that expanded PTFE is undesirable
because it is expensive. That is not relevant to the obviousness analysis.
See Orthopedic Equip. Co., Inc. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir.
1983) ("[T]he fact that the two disclosed apparatus would not be combined
by businessmen for economic reasons is not the same as saying that it could
not be done because skilled persons in the art felt that there was some
technological incompatibility that prevented their combination. Only the
latter fact is telling on the issue of nonobviousness"); see also In re
Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983).
Appellant additionally takes issue with the Examiner's finding that
one of skill in the art would optimize the coating amount to "maximize the
amount of abrasion resistance while still maintaining opposite properties
such as permeability, flexibility, and fabric hand or texture." Reply Br. 5
( citing Answer 7). Appellant asserts that there would be no balancing of
competing priorities (permeability, etc.) but only an increase in the amount
of coating used. Reply Br. 5. This is an insufficient response to the
Examiner's determination and does not show error. See In re Young, 927
F.2d 588, 591 (Fed. Cir. 1991) ("When prior art contains apparently
conflicting references, the Board must weigh each reference for its power to
suggest solutions to an artisan of ordinary skill" and, in so doing, "consider
the degree to which one reference might accurately discredit another").
Accordingly, Appellant has failed to show that the Examiner relies
upon impermissible hindsight.
In view of the foregoing, Appellant has failed to show that claim
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1 was rejected in error. Appellant argues that claims 11-30 depend from
claim 1 and are patentable for the same reasons as claim 1. Appeal Br. 7,
9-10, and 14. In view of our determination regarding claim 1, we find such
argument unpersuasive.
CONCLUSION
The rejection of claims 1, and 11-30 as obvious over Langley, Rock,
Halley, Jaglowski, and Sadato is affirmed for the reasons set forth above and
in the Final Rejection and Examiner's Answer.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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