Ex Parte Sheppard

Board of Patent Appeals and Interferences

Jun 17, 2009

09837094 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES M. SHEPPARD JR.
____________

Appeal 2009-002790
Application 09/837,094
Technology Center 1700
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Decided:1 June 18, 2009
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT,
and ROBERT E. NAPPI, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 09/837,094

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Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 21, 22, and 24-27. Claims 1-20 and 23 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to a method for making a textile article
comprising the steps of providing a two-sided multicolor Jacquard or Dobby
woven textile and transferring a graphic impression on said textile. The first
embodiment has a dark color border with a light color central section.
(Spec. 5.) Claim 21, which is representative of the claims on appeal, reads
as follows:
21. A towel having a graphic impression, produced by:
weaving a towel on a Dobby loom using at least two
different colors of yarn, such that a border having a first darker
color is woven adjacent each edge of said towel, on one side
thereof, and a border having a second lighter color is woven
adjacent of said towel on the other side, said towel having a
central area woven within said borders on both said one side
and said other side, said central area on said other side is woven
with said first darker color, said central area on said one side is
woven with said second lighter color,
shearing said one side to a height of about 75 to about
95% of the height of said other side;
blooming said one side such that a graphic impression
can be intensely applied thereto;
forming a graphic impression in said central area on said
one side, wherein said towel retains its preprinted water
absorbency characteristics; and
wherein said border on said one side is capable of
masking said graphic impression that may overlap onto said
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border from said central area on said one side, eliminating the
need for precise alignment of said graphic impression within
said central area of said one side; and wherein said central area
on said second side is capable of masking any potential bleed
through of said graphic impression from said central area of
said one side.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Parker US 1,925,459 Sep. 5, 1933
Terrasse US 2,163,769 Jun. 27, 1939
Stark US 3,669,818 Jun. 13, 1972
Sherrill US 3,721,273 Mar. 20, 1973
Claims 21, 22, and 24-27 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over Stark, Parker, and Sherrill.
Claims 21, 22, and 24-27 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over Stark, Parker, Terrasse, and Sherrill.
Claims 21, 22, and 24-27 stand provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 21-36 of copending Application No. 09/747,529.
We refer to the Briefs (Appeal Brief filed Mar. 31, 2008, and Reply
Brief filed Aug. 11, 2008) and the Answer (mailed Jun. 11, 2008) for their
respective details.

ISSUE
Has Appellant shown error in the Examiner’s conclusion that
substantial evidence before us shows that under 35 U.S.C. § 103, the
combination of Stark, Parker, and Sherrill or the combination of Stark,
Parker, Terrasse, and Sherrill teaches or suggests the claimed subject matter?
Specifically, Appellant and the Examiner disagree as to whether one of
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ordinary skill in the art would have combined the reference teachings to
show a border having a first darker color woven on one side leaving a lighter
color central area, wherein the darker border is capable of masking the
graphic impression that may overlap onto the border and the darker central
area on the back is capable of masking any potential bleed through from the
lighter color central area, as recited in claim 21.

FINDINGS OF FACT
The following findings of fact (FF) are relevant to the issue involved
in the appeal.
Stark
1. Stark relates to textile products where various patterns may be
produced in the surface of the fabric itself by varying the construction of the
pile surface of the fabric. (Col. 1, ll. 26-31.)
2. Stark discloses color print designs superimposed on the fabric
in registry with sections of existing pattern in the surface of the fabric. (Col.
1, ll. 43-47; col. 2, ll. 22-24.)
3. Stark describes constructing the surface pattern of the fabric by
using high or low loop pile yarns, as well as cut pile yarns. (Col. 2, ll. 28-
31.)
4. Stark further describes one of the possible print designs as
superimposed on the pattern pile fabric, so long as the pile pattern and the
printed design are out of registry with one another. (Col. 2, ll. 39-46.)

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Sherrill
5. Sherrill describes a woven terry towel having cut pile surface
which is not only soft, but also more suitable for color printing on its flat
surface. (Col. 4, ll. 9-27.)
Parker
6. Parker is concerned with weaving terry fabrics having patterns
woven in a contrasting yarn. (P. 1, ll. 1-4.)
7. Parker discloses colored patterns in the form of stripes (p. 1, ll.
12-14), while the colors of the pattern and background on the face are the
reverse of those on the back (p. 1, ll. 19-20, 28-34).
Terrasse
8. Terrasse relates to a woven fabric having a reversible pattern.
(Col. 1, ll. 1-8.)
9. Terrasse discloses the reverse pattern as areas of white and
blue color where each color on one side is matched to the other color on the
other side for each pattern area. (Col. 2, ll. 49-55.)

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
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on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
A step in the obviousness analysis is to “determine whether there was
an apparent reason to combine the known elements in the fashion claimed.”
KSR, 550 U.S. at 418. A rejection for obviousness must include
“‘articulated reasoning with some rational underpinning to support the legal
conclusion.’” Id. (quoting Kahn, 441 F.3d at 988). The proper question to
ask is whether a person of ordinary skill in the art would have seen a benefit
to combining the prior art teachings. KSR, 550 U.S. at 424.

ANALYSIS
Claim Rejection over Stark, Parker, and Sherrill
The Examiner proposed combining the reverse pattern of Parker and
the cut pile yarn of Sherrill with the printed pattern of Stark (Ans. 3-5). The
explanation given for why one of skill in the art would have thought it
desirable to combine the references was “[h]ence, the different colored
sections in the fabric taught by Parker et al. can be enriched by applying a
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printed pattern to the fabric” (Ans. 4). The Examiner further characterizes
the limitations regarding the locations of the different color regions and the
printed pattern as related “purely to ornamentation,” which “do[es] not effect
[sic] the function of the fabric itself” (Ans. 6). Thus, the Examiner did not
give patentable weight to the limitations requiring that the first colored
region form a border and the second color region form a central area (id.).
We identify two problems with this reasoning: (1) the Examiner has
not pointed to any evidence of record that Stark provides for masking the
overlap or bleed through of the printed graphic impression by the darker
border and the darker central area on the back, and (2) the Examiner has not
pointed to any evidence of record that Sherrill is concerned with
misalignment or bleeding of the printed pattern on the cut pile surface. We
also disagree with the Examiner’s characterization of the functional
limitations recited in claim 21 as merely related to the appearance and
ornamentation of the fabric.
The specific claimed requirements related to the relative position of
the print pattern with respect to the darker border and the darker central area
on the back correspond to the reverse pattern and coloring of the woven
fabric and selecting the lighter color central area for printing. As argued by
Appellant (App. Br. 8), such an arrangement eliminates the need for precise
alignment of the graphic impression on the front side while the darker
pattern on the reverse side masks any bleed through of the printed pattern.
Additionally, we find that Stark’s woven patterns (FF 1) and the color
print superimposed on the fabric (FF 2-3) are positioned intentionally out of
registry with no regard for placing the print on the dark area in contrast to
the light area (FF 4). Sherrill also provides a mere suggestion for using the
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cut pile surface for printing (FF 5) with no specific suggestion for masking
the pattern by the dark areas. We also find that Parker’s disclosure is limited
to woven color patterns (FF 6-7). However, the Examiner has not identified
any disclosure that the cited references selected the dark and light colors for
the woven border and the central area in order to mask the printed pattern by
the dark color border or to mask the bleed through by a dark area on the
back. We also agree with Appellant (App. Br. 7; Reply Br. 3) that the only
relationship between the woven and the printed patterns required in Stark is
an out of registry design (FF 4).
Therefore, the Examiner has not articulated sound reasons for
concluding that the claimed relationship between the woven and printed
areas would have been obvious. The prior art gives no direction as to how
the many possibilities of combining woven patterns and printed designs
would have resulted in the claimed requirement for the colored woven
pattern on two sides of the towel and the specific relational positioning of
the border and the central area. We conclude that a prima facie case for
obviousness with respect to the rejection of claims 21, 22, and 24-27 over
Stark, Parker, and Sherrill was not made on this record.
Claim Rejection over Stark, Parker, Terrasse, and Sherrill
The Examiner rejected claim 21, 22, and 24-27 based on Stark,
Parker, Terrasse, and Sherrill (Answer 8-10). The Examiner, however, cited
Terrasse for teaching a woven fabric of a reversible pattern composed of two
colors (FF 8-9) and pointed to nothing in the reference that would provide a
reason to combine such teachings with Stark, Parker, and Sherrill, or to
compensate for the deficiencies of the combination discussed above. For the
reasons discussed above, we also conclude that a prima facie case for
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obviousness with respect to the rejection of claims 21, 22, and 24-27 based
on the teachings of Stark, Parker, Terrasse, and Sherrill was not made on this
record.

CONCLUSION
The record does not establish there was a reason for a person of
ordinary skill in the art, informed by the reference disclosures and their own
knowledge of the art, to produce a towel in which a border having a first
darker color is woven on one side leaving a lighter color central area
wherein the border on that side is capable of masking a graphic impression
that may overlap onto the border and the darker central area on the back is
capable of masking any potential bleed through from the lighter color central
area, as recited in claim 21. We, therefore, do not sustain any of the
35 U.S.C. § 103(a) rejections of claims 21, 22, and 24-27.
With respect to the rejection of the claims under obviousness-type
double patenting, Appellant concedes the propriety of the rejection by
indicating Appellant’s willingness to file a terminal disclaimer (App. Br.
12). We therefore, sustain the provisional rejection of claims 21, 22, and 24-
27 under the judicially created doctrine of obviousness-type double
patenting.

ORDER
Since we have sustained at least one rejection of all of the appealed
claims, the decision of the Examiner rejecting claims 21, 22, and 24-27 is
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(a)(1)(iv).

AFFIRMED

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DOUGHERTY, CLEMENTS & HOFER
GREGORY N. CLEMENTS
1901 ROXBOROUGH ROAD
CHARLOTTE, NC 28211