Ex Parte Sheppard

Board of Patent Appeals and Interferences

Jun 30, 2009

10314794 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES M. SHEPPARD, JR.
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Appeal 2009-001515
Application 10/314,794
Technology Center 2800
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Decided:1 June 30, 2009
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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).
Appeal 2009-001515
Application 10/314,794

Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 21-30. Claims 1-20 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellant’s invention relates to a method for making a textile article
comprising providing a two-sided Jacquard woven textile and transferring a
graphic impression on the textile. The first embodiment has a dark color
border with a light color central section. (Spec. 4.) Claim 21, which is
representative of the claims on appeal, reads as follows:
21. The method of making a printed textile article comprising:
providing a two-sided Jacquard woven fibers textile, said textile
having a border and a central area within said border, on both sides of
said textile, wherein said textile has a dark color border and a light
color central area on one side, and a light border and a dark color
central area on the other side, and transferring a graphic impression in
said central area on said one side on said textile; wherein said border
on said one side is capable of masking said graphic impression that
may overlap onto said 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 other 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:
Terrasse US 2,163,769 Jun. 27, 1939
Stark US 3,669,818 Jun. 13, 1972
Otto US 4,769,879 Sep. 13, 1988

Appellant’s Admitted Prior Art (AAPA), Spec. 2:9-22.

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Application 10/314,794

Claims 21 and 25 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over Terrasse and Stark.
Claims 22, 23, 26-28, and 30 stand rejected as being unpatentable
under 35 U.S.C. § 103(a) over Terrasse and Stark, and further in view of
AAPA.
Claims 24 and 29 stand rejected as being unpatentable under
35 U.S.C. § 103(a) over Terrasse, Stark, and AAPA, further in view of Otto.
We refer to the Briefs (Appeal Brief filed Apr. 2, 2008 and Reply
Brief filed Jul. 29, 2008) and the Answer (mailed Jun. 30, 2008) for their
respective details.
ISSUE
Appellant argues that one of ordinary skill in the art would not have
found it obvious to print a graphic impression onto the textile of Terrasse
according to the teachings of Stark (App. Br. 8). The Examiner responds
that the border area in Terrasse is capable of masking the overlapped color,
whether the print is out of register with the central area or not (Ans. 8).
Therefore, the issue before us is as follows:
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 Terrasse and Stark or the combination of Terrasse and Stark
with AAPA or Otto teaches or suggests the claimed subject matter?
Specifically, whether one of 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 border on said
one side is capable of masking said graphic impression that may overlap
onto said border and the darker central area on the back is capable of
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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.
Terrasse
1. Terrasse relates to a woven fabric of a reversible pattern. (Col.
1, ll. 1-8.)
2. Terrasse shows in Figures 1 and 2 the two sides of the fabric
having a pattern forming a border and a central area.
3. Terrasse discloses a 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.)
Stark
4. 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.)
5. Stark discloses color printing 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. 22-25.)
6. 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.)
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7. 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.)

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,
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.”
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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 In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

ANALYSIS
Claim Rejection over Terrasse and Stark
The Examiner proposed combining the reverse border/central area
pattern of Terrasse with the printed pattern of Stark (Ans. 3-5). The
Examiner found that Terrasse teaches a woven fabric of a reversible pattern
composed of two colors forming a border and central area having opposite
colors (FF 1-3). The Examiner, however, did not identify any teaching in
Terrasse that would provide a reason to one of ordinary skill in the art to
combine such pattern with the printed pattern of Stark. The Examiner
characterized the limitation of “capable of masking the graphic impression”
as a functional limitation and stated that such recitation does not delimit the
claim since the claim does not require that the printed pattern actually
overlap the border area (Ans. 4). The Examiner asserted that even if such
limitation is considered a process requirement of the claim, the claimed
article would not function differently from the article of Terrasse (Ans. 4-5).
We disagree with the Examiner’s reasoning and find that neither
reference is concerned with masking the overlap or bleed through of the
printed graphic impression by the darker border and the darker central area
on the back. We also agree with Appellant (App. Br. 9) that the only
relationship between the woven and the printed patterns required in Stark is
an out of registry design (FF 7). Additionally, we find that Stark’s woven
patterns (FF 4) and the color print superimposed on the fabric (FF 5-6) are
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positioned intentionally out of registry with no regard for placing the print
on the dark area in contrast to the light area (FF 7). On the other hand, while
Terrasse discloses a woven border and central area in two difference colors
(FF 1-3), no indication is made in the reference that any color printing is
done on the lighter color central area.
In that regard, we find that 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 transferred graphic
impression by the dark color border or to mask the bleed through by any
dark area on the back. In fact, as argued by Appellant (App. Br. 9-10), the
only reasoning provided by the Examiner is tainted with impermissible
hindsight rather than supported by articulated reasoning that the claimed
relationship between the woven and printed areas would have been obvious.
Neither Terrasse, nor Stark gives any direction as to how the many
possibilities of placing printed designs over woven patterns 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 and 25 over Terrasse and Stark was not
made on this record.
Claim Rejection over Terrasse and Stark, in view of AAPA and Otto
The Examiner cited AAPA for disclosing jacquard weaving and cited
Otto for disclosing a method of shearing and blooming the woven textile
(Ans. 5-7). However, the Examiner did not point to any specific teachings
in the applied art, nor set forth an articulated reasoning that would provide a
rationale for combining Terrasse and Stark. For the reasons discussed
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above, we conclude that a prima facie case for obviousness with respect to
the rejection of claims 22, 23, 26-28, and 30 over Terrasse, Stark, and
AAPA, or of claims 24 and 29 over Terrasse, Stark, AAPA, and Otto was
not made on this record.

CONCLUSION
The record does not establish that 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 combine the references to arrive at the subject
matter of independent claims 21, 22, and 27. In that regard, the combination
does not teach or suggest how to make a printed textile article in which a
border having a first darker color is woven on one side leaving a lighter
color central area wherein the border on said one side is capable of masking
a transferred graphic impression that may overlap onto said border and the
darker central area on the back is capable of masking any potential bleed
through from the lighter color central area. We, therefore, will not sustain
any of the 35 U.S.C. § 103 rejections of claims 21, 22, and 27, as well as
claims 23, 25-26, and 28-30 dependent thereof.

ORDER
The decision of the Examiner rejecting claims 21, 22, and 24-27 is
reversed.

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REVERSED

ELD

GREGORY N. CLEMENTS
DOUGHERTY, CLEMENTS, HOFER & BERNARD
1901 ROXBOROUGH ROAD
SUITE 300
CHARLOTTE, NC 28211
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