Ex Parte Sheppard

Board of Patent Appeals and Interferences

Sep 27, 2010

09747529 (B.P.A.I. Sep. 27, 2010)

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.
09/747,529 12/22/2000 James M. Sheppard JR. 2827 2077
7590 09/27/2010
DOUGHERTY & CLEMENTS & Hofer
Suite 300
1901 Roxborough Road
Charlotte, NC 28210
EXAMINER
JOHNSON, JENNA LEIGH
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
09/27/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAMES M. SHEPPARD JR.
____________________

Appeal 2009-015288
Application 09/747,529
Technology Center 1700
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
The Appellant’s claims being twice-rejected, the Appellant appeals
under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 21, 22,
24-27, 29, 30, 32-34 and 36 under 35 U.S.C. § 103(a) as being unpatentable
over Terrasse (US 2,163,769, issued Jun. 27, 1939) and Stark (US
3,669,818, issued Jun. 13, 1972); and rejecting claims 28 and 35 under
§ 103(a) as being unpatentable over Terrasse, Stark and Sherrill (US
3,721,273, issued Mar. 20, 1973). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Claim 21, a product-by-process claim, is illustrative:
21. A towel having a graphic impression,
comprising:
weaving a towel on a jacquard loom using at least
two different colors of yarn, such that
a border having a first dark color is woven
adjacent each edge of said towel, on one
side thereof, and
a border having a second lighter color is
woven adjacent each edge 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 is woven with said first
darker color on said other side
said central area is woven with said second
lighter color on said one side;
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
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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.

ISSUES
The Appellant presents an argument for the patentability of
independent claim 29 separate from the argument presented by the Appellant
in favor of the patentability of claim 21. Nevertheless, a comparison of the
two arguments indicates that the Appellant’s argument in favor of the
patentability of claim 29 presents no issues separate from the issues arising
in connection with the argument in favor of the patentability of claim 21.
(Compare Br. 23 (setting out the argument in favor of the patentability
of claim 29) with Br. 11 (stating the issues raised in connection with the
patentability of claim 21 as perceived by the Appellant)). Therefore, the
patentability of claims 21 and 29 will be addressed together. Since the
pertinent limitations of claims 21 and 29 are virtually identical, only the
limitations of claim 21 will be expressly discussed.
The Appellant expressly waives, for purposes of this appeal only, any
argument for the patentability of dependent claims 22, 24-27, 30, 32-34 and
36 separately from the patentability of independent claims 21 and 29. (Br.
23). The Appellant does argue the patentability of dependent claims 28 and
35 separately. Claim 28 is representative to claims 28 and 35. See 37
C.F.R. § 41.37(c)(1)(vii).

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This appeal turns on five issues:
First, would the subject matter of representative claim 21
have been prima facie obvious?
Second and more specifically, would a towel as recited in
claim 21, in which a border of a first darker color on a first side
was capable of masking a graphic impression that might
overlap onto the border from a central area of the first side,
have been prima facie obvious?
Third, would a towel as recited in claim 21, and a textile
as recited in claim 29, in which a central area of the first darker
color on the second side was capable of masking any potential
bleed through of the graphic impression from the central area of
the first side have been prima facie obvious?
Fourth, would the subject matter of representative claim
28 have been prima facie obvious?
Fifth, does the probative value of the evidence of
obviousness produced by the Examiner outweigh the evidence
of non-obviousness produced by the Appellant?

FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. We adopt and incorporate by reference the Examiner’s findings
at page 3, line 3 through page 4, line 11.
2. The Appellant concedes that “towels that have the color pattern
required by claim 21 were known.” (Br. 11). In other words, it is
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undisputed that a towel, woven on a jacquard loom using at least two
different colors of yarn, such that a border having a first dark color is woven
adjacent each edge of said towel, on one side thereof, and a border having a
second lighter color is woven adjacent each edge 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 is woven with said first darker
color on said other side, said central area is woven with said second lighter
color on said one side, would have been known to one of ordinary skill in
the art.
3. The Examiner is correct as a matter of common sense in finding
that “applying designs to white or light colored backgrounds [was] well
known and commonly done” among lay persons, as well as by one of
ordinary skill in the art, “because the design usually stands out best on a
light background.” (See Ans. 4).

PRINCIPLES OF LAW
In order to reject a claim under section 103(a), an examiner must
establish at least a “prima facie” case that the claimed subject matter would
have been obvious. Once the examiner produces prima facie evidence that
the claimed subject matter would have been obvious, the applicant may
present additional evidence tending to rebut the examiner’s conclusion that
the claimed subject matter would have been obvious. If the applicant
presents additional evidence to rebut the examiner’s conclusion, the
examiner must consider all of the evidence anew. If the evidence presented
by the examiner and any evidence presented by the applicant, considered
anew, demonstrate that the claimed subject matter would have been obvious
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to one of ordinary skill in the art, the claim is properly rejected under section
103(a). In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
In order to establish a prima facie case of obviousness, an examiner
must undertake the factual inquiries listed in Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). In addition, the examiner must articulate some
“reasoning with some rational underpinning to support the legal conclusion
of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). This
reasoning must show that “there was an apparent reason to combine the
known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007). The apparent reason need not appear in, or be
suggested by, one or more of the references on which the examiner relies.
Instead, the examiner when analyzing the evidence may employ common
sense not inconsistent with the ordinary level of knowledge and skill in the
art. Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir.
2009).
Claims 21, 28 and 29 recite products. Claims 21 and 28 recite towels
while claim 29 recites a textile. Although claims 21 and 28 define
the claimed towels in terms of methods for making those towels, the
determination of whether the claimed towels would have been obvious
must be made on the basis of the towels and their properties rather than
the method steps by which the towels were produced. “If the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985);
see also SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317
(Fed. Cir. 2006).
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Where claimed and prior art products are identical or substantially
identical,
the [Patent and Trademark Office] can require an
applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics
of [the] claimed product. Whether the rejection is
based on ‘inherency’ under 35 U.S.C. § 102, on
‘prima facie obviousness’ under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and
compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted); see also
In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990)(“[W]hen the PTO shows
sound basis for believing that the products of the applicant and the prior art
are the same, the applicant has the burden of showing that they are not.”)

ANALYSIS
First Issue
Turning to claim 21, it is undisputed that a towel, woven on a
jacquard loom using at least two different colors of yarn, such that a border
having a first dark color is woven adjacent each edge of said towel, on one
side thereof, and a border having a second lighter color is woven adjacent
each edge 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 is woven with said first darker color on said other side said
central area is woven with said second lighter color on said one side, would
have been known to one of ordinary skill in the art. (FF 2). One such towel
was disclosed by Terrasse. (FF 1).
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Stark discloses that it was known in the art to print patterned pile
fabrics in registry with sections of an existing pattern. (FF 1). More
specifically, Stark discloses forming patterns on the surfaces of towels by
high and low pile areas, or pile and no pile areas, on the surface of the towel.
(Stark, col. 1, ll. 33-35). Stark also teaches that such patterns may be
accented by employing yarns of different colors to produce various parts or
sections of the fabrics during construction of the fabrics. (Stark, col. 1, ll.
40-42). According to Stark, “[i]t is also known to print such patterned pile
fabrics with various colors to accept [sic, accent] the pattern design in the
fabric and further enhance the aesthetics of the product. Such printing is
superimposed on the fabric in registry with sections of existing pattern in the
surface of the fabric.” (Stark, col. 1, ll. 43-47).
“[I]f a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its
application is beyond his or her skill.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007). Terrasse’s woven fabric and Stark’s terry towel are
similar devices in the sense that both are textiles formed by processes
including weaving. The teachings of Stark imply that one of ordinary skill
in the art would have known to improve the aesthetics of a woven textile
by the technique of printing a pattern design superimposed on a fabric in
registry with a section or sections of an existing surface pattern formed from
high and low pile areas, the use of different colored threads during weaving,
or both. The Appellant provides no persuasive evidence that the technique
of forming a graphical impression on a jacquard woven textile would have
been beyond the level of ordinary skill in the art. As the Examiner expresses
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it, it would have been obvious “to add a printed design as disclosed by Stark
to the patterned fabric taught by Terrasse since Stark teaches that woven
patterned fabrics can be enriched by applying a printed pattern to the fabric
which enhances the desirability of the end product.” (Ans. 4).
One of ordinary skill in the art also would have had reason to form a
pattern design or graphic impression specifically on the lighter colored (that
is, white) central area of the towel disclosed by Terrasse.
Common sense implies that even a lay person, much less one of ordinary
skill in the art, would have known to apply such a pattern design to a white
or light colored background because the design would have stood out best on
a light background. This would particularly have been true of a design
including a darker color. This common sense would have provided one of
ordinary skill in the art reason to apply the pattern design or graphic
impression to the largest white or lighter colored background available on
the surface of the towel, namely, the lighter colored central portion on the
side of the towel depicted in Figure 1 of Terrasse.
The Examiner’s reliance on Terrasse and articulation of the basis for
this common sense reason distinguishes this appeal from an earlier appeal in
the same underlying application. In the opinion issued in Appeal 2009-
1029, the Board agreed with the Appellant that both of the two references
on which the Examiner relied in the earlier appeal failed to disclose
borders adjacent each edge of a towel or textile
product and a central area within and surrounded
by the borders, which central area on one side of
the towel or textile product receives a graphic
impression, and the failure of either of the applied
patents to teach or suggest the particular color

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arrangement of the borders and central areas
required in the claims on appeal.
(Ex Parte Sheppard, Appeal No. 2009-1029, Appl’n 09/747,529 slip op. at 4
(July 14, 2004)). Here, Terrasse discloses “the particular color arrangement
of the borders and central areas required in the claims on appeal.” The
Board further criticized “the examiner’s bald conclusion that ‘it would have
been obvious to one of ordinary skill in the art to choose various printed
designs, as well as choose where to place the printed image on the [prior art]
product . . .’.” (Id. at 4-5). Here, the Examiner has provided technical
reasoning to support the conclusion of obviousness.

Second and Third Issues
As the Examiner notes, claim 21 recites a towel in which the “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.” Likewise, the “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 Appellant’s Specification further discusses these features:
Placing the graphic impression in the center area of
the preferred embodiment (dark border with light
central area) provides advantages produced by the
Jacquard woven process, namely, that on the front
side of the Jacquard woven article, a light color
area will appear, and on the reverse side of a
Jacquard woven textile, the opposite color pattern
would appear, that is, the central area would be
dark in color with a light color border. This
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permits transferring the graphic impression on the
front side of the preferred embodiment in the light
color central area to be as intense as is desired and
in as many colors as is desired and should the
printing pigments, inks, dyes, etc., bleed through to
the reverse or back side of the textile article, the
dark color would mask the bleed through such that
it is not seen. If both sides of the textile article are
screen printed, image dyed, digital imaging, or
heat transferred one must be careful to prevent the
dye, pigment, or paint employed on the back side
of the textile article from bleeding through to the
light color front side.
(Spec. 8). The Specification identifies white as a suitable light color and
blue as a suitable dark color for the borders and central areas. (Spec. 7).
These disclosures imply that the property of the border whereby the
border 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” flows naturally from the color pattern required by claim 21 and the
formation of the graphic impression on the lighter colored central area of
the one side. Likewise, the property of the central area whereby the central
area is “capable of masking any potential bleed through of said graphic
impression from said central area of said one side,” flows naturally from
the same combination of features. Since one of ordinary skill in the art
had reason to combine the color pattern required by claim 21 with a graphic
impression formed on the lighter colored central area of the one side, the
towel of claim 21 as a whole would have been obvious in view of the
combined teachings of Terrasse and Stark. See Ex Parte Obiaya, 227 USPQ
58, 60 (BPAI 1985)(“The fact that appellant has recognized another
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advantage which would flow naturally from following the suggestions of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious.”).
At the least, the towel obvious in view of the combined teachings of
Terrasse and Stark would have been structurally identical, or substantially
structurally identical, to the embodiments described in the Specification.
This identity, or substantial identity, implies that the Examiner has a sound
basis for belief that a towel combining the color pattern required by claim 21
with a graphic impression formed on the lighter colored central area of the
one side necessarily would have a border and a central area possessing the
capabilities recited in the latter part of claim 21. This sound basis for belief
shifts the burden of production to the Appellant to show that a towel
combining the color pattern required by claim 21 with a graphic impression
formed on the lighter colored central area of the one side would not
necessarily have a border and a central area possessing the capabilities
recited in the latter part of claim 21. See Best. The Appellant has produced
no persuasive evidence to meet this burden. The Examiner correctly
concludes that a towel meeting the limitations of claim 21 as a whole would
have been obvious.
Two decisions of the Board in related appeals, cited by the Appellant
in the Appeal Brief (see Br. 3), are also distinguishable. In Appeal 2009-
001515, the representative claim recited a method of making a printed textile
article. (See Ex Parte Sheppard, Appeal 2009-001515, Appl’n 10/314,794
slip op. at 2 (BPAI Jun. 30, 2009)). At issue in Appeal 2009-001515 was
whether the steps of the recited method were obvious. Appeal 2009-001515
raised no issue as to whether capabilities of a claimed a towel or textile
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product might flow naturally, or might be inferred to be inherent, from
identity or substantial identity with a prior art towel or textile product. Since
the issues in the present appeal differ from those in Appeal 2009-001515, the
holding of Appeal 2009-001515 is neither binding nor persuasive here.
In Appeal 2009-002790, the representative claim claimed a towel
produced by recited method steps. (Ex Parte Sheppard, Appeal 2009-
002790, Appl’n 09/837,094 slip op. at 2-3 (BPAI Jun. 18, 2009)). The
representative claim was rejected under § 103(a) as being unpatentable over
Stark, Parker (US 1,925,459, issued Sep. 5, 1933), Terasse and Sherrill. (Id.
at 3). In reversing this rejection, the Board commented as follows:
We identify two problems with [the
Examiner’s] 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.
(Id. at 7). The Board also concluded that the Examiner “cited Terrasse for
teaching a woven fabric of a reversible pattern composed of two colors . . .
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.” (Id. at 8).
The evidence and technical reasoning underlying the rejection of
claim 21 in this appeal differ from those at issue in Appeal 2009-002790.
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For example, the primary reference here is Terrasse rather than Stark. The
Examiner relies on the color pattern shown in Figures 1 and 2 of Terrasse;
technical reasoning explaining why it would have been obvious to form the
graphical impression in the lighter colored central area shown in Figure 1 of
Terrasse; and an inference as to the capabilities of the darker colored border
depicted in Figure 1 of Terrasse and the darker colored central area depicted
in Figure 2 of Terrasse, as evidence supporting the conclusion of
obviousness. Since the evidence and reasoning on which the Examiner
relies in the present appeal differs from those at issue in Appeal 2009-
002790, the holding of Appeal 2009-002790 is neither binding nor
persuasive here.

Fourth Issue
With respect to representative claim 28, the Appellant argues that
Sherrill fails to remedy perceived deficiencies in the combined teachings of
Terrasse and Stark. (Br. 24). Since no such deficiencies exist, the argument
is not persuasive.
Claim 28 depends from claim 21 and recites that “said towel is
sheared and bloomed.” In the Appeal Brief, the Appellant states that:
Sherrill does describe a shearing step. See,
e.g., col. 1, line 54-col. 2, line 3. See also col. 3,
lines 61-col. 4, line 9 that explains that after the
rayon loops are sheared they are free to spread out
and splay (bloom). Thus, the Examiner’s concern
in regard to considering the Sheppard affidavits in
regard to the independent claims since the
affidavits discuss the towels having been sheared
is not relevant in considering claims 28 and 35 as
these claims call for shearing. Note also that
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Sherrill describes blooming to be a natural
consequence of shearing. Reversal of the rejection
is requested.
(Br. 24).
To the extent that this statement can be understood to be an argument
that the prima facie case of obviousness against claim 28 is erroneous, the
statement is not persuasive. The Appellant concedes that Sherrill teaches
shearing. The Appellant appears to concede that Sherrill teaches the fibers
being bloomed as a natural consequence of shearing. The Appellant does
not contest the combination of the teachings of Sherrill with the teachings of
Terrasse and Stark. In short, the Appellant provides no reason not to sustain
the rejection of representative claim 28.

Fifth Issue
Inasmuch as we have concluded that the subject matter of claims 21,
22, 24-30 and 32-36 would have been prima facie obvious, and since the
Appellant has submitted evidence in rebuttal of obviousness, we now turn to
consider this evidence. When such evidence is presented it is our duty to
consider the evidence anew. See, e.g., In re Eli Lilly & Co., 902 F.2d 943,
945 (Fed. Cir. 1990). We also are mindful that objective evidence of
nonobviousness in any given case may be entitled to more or less weight
depending on its nature and its relationship with the merits of the invention.
Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983).
The Appellant presents two affidavits, an “Affidavit under 37 C.F.R.
1.132” [“Affidavit”] and a “Supplemental Affidavit under 37 C.F.R. 1.132”
[“Supplemental Affidavit”], both executed by the Appellant.
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The Affidavit describes a commercial product, the EDGE towel. The
Appellant does not aver that the EDGE towel is within the scope of any
claim on appeal, although the Appellant’s counsel refers to the EDGE towel
in the Appeal Brief as “the towel of claim 21.” (See, e.g., Br. 17). In the
words of the Appellant’s counsel, the Appellant in the Affidavit “explains
why the towel of claim 21 was counterintuitive in that it would not have
been obvious to add further cost to a high cost towel by applying a graphic
image. The prior art taught that graphic images were printed on low end
towel, not high end jacquard woven towels as in claim 1.” (Id.)
The Appellant’s statement that the discovery that “the graphic image
was more crisp and sharp” on the EDGE towel than on other towels was an
“unexpected benefit” (Affidavit 2) is entitled to little weight as evidence of
an unexpected result. The statement is conclusory and without comparative
data to explain or support it. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997)(“[I]t is well settled that unexpected results must be established by
factual evidence.”). Neither has the Appellant provided persuasive evidence
that the claimed subject matter solves a long felt need. The Appellant’s
statement that “[w]e haven’t had a customer who has been able to figure
out how we have produced this product which I believe contributes to its
uniqueness and is an indication of the nonobviousness of the invention” also
is entitled to little weight. The Affidavit does not describe level of skill of
these customers.
The Affidavit also alleges commercial success. More specifically, the
Appellant states in the Affidavit that “[t]his product has been immensely
successful and in three short years it now dominates 50 percent of total
production, competing with 300 other different products in the Devant line
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including jacquard woven and image dyed products.” (Affidavit 1-2). The
Appellant in the Supplemental Affidavit states that the EDGE towels have a
greater margin of profitability than Devant’s remaining products.
(Supplemental Affidavit at 1). The Supplemental Affidavit provides a table
supporting these statements. Nevertheless, while the Appellant’s
commercial evidence is entitled to some weight, that evidence is not entitled
to persuasive weight.
The weight of the Appellant’s commercial evidence is discounted by
the Appellant’s failure to show a nexus between the EDGE towel and the
claimed subject matter. See Ex Parte Jellá, 90 USPQ2d 1009, 1015 (BPAI
2008)(precedential)(concluding that an applicant has a burden to establish a
nexus between the claimed subject matter and any evidence of secondary
indicia of obviousness). The Appellant does not even describe the EDGE
towel so that it might be compared to the limitations of the claims on appeal.
The weight of the Appellant’s commercial evidence is further discounted
because the Appellant provides evidence of its own sales figures but no
context in which to compare those sales figures to those of others in the
market. The Appellant has not shown that the Appellant’s sales of the
EDGE towel were a substantial quantity in a relevant market. See id. at
1017 (concluding that evidence of sales without a showing that the sales
were a substantial quantity in the relevant market is, at best, a weak showing
of commercial success). The percentage of sales of EDGE towels as
opposed to other products within Devant’s business is a statistic at least
partially within Devant’s control which might reflect other factors (such as
investment of manufacturing capacity or advertising resources) unrelated to
the non-obviousness of the claimed subject matter.
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Finally, the Appellant presents two letters, one from the Appellant to a
competitor and one from another competitor to the Appellant, as evidence of
copying. While this evidence is also entitled to some weight, its weight is
discounted by the lack of any description by which to determine whether the
alleged copies met the limitations of the claims on appeal. The weight of
the evidence is also discounted by the Appellant’s failure to produce any
evidence, apart from the Appellant’s own speculation, that the competitors
copied the EDGE towel due specifically to the subject matter of the claims
on appeal. Although the accused copyists appear to have agreed to stop
producing the alleged copies, this may have been due to the threat that
Devant might enforce extant patent rights rather than recognition that the
non-obviousness of the subject matter of the claims which are the subject of
the present appeal. It is not clear from either letter than the accused copyists
even had access to the claims on appeal at the time the letters were written.
Having now considered all of the evidence of non-obviousness
presented by the Appellant and after weighing the evidence anew, we
conclude that the probative value of the evidence of obviousness outweighs
the probative value of the evidence of non-obviousness. The Appellant
has not established any secondary indicium of non-obviousness by a
preponderance of the evidence. Although the Examiner’s reasoning in
support of the conclusion of obviousness relies on common sense and
inferences drawn from comparison of the prior art structures with the
claimed subject matter, the Examiner has provided sufficient evidentiary
underpinnings to justify the Examiner’s reliance on these factors. In view of
the Appellant’s failure to provide evidence probative of a nexus between the
Appellant’s evidence and the claimed subject matter, as well as the other
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discounting factors discussed above, the weight of the evidence as a whole
supports the Examiner’s conclusion of obviousness.

CONCLUSIONS
The subject matter of representative claim 21 would have been prima
facie obvious.
More specifically, a towel as recited in claim 21, in which a border
of a first darker color on a first side was capable of masking a graphic
impression that might overlap onto the border from a central area of the first
side, would have been prima facie obvious.
A towel as recited in claim 21, in which a central area of the first
darker color on the second side was capable of masking any potential bleed
through of the graphic impression from the central area of the first side,
would have been prima facie obvious.
The subject matter of representative claim 28 would have been prima
facie obvious.
The probative value of the evidence of obviousness produced by the
Examiner outweighs the evidence of non-obviousness produced by the
Appellant.
We sustain the rejections of claims 21, 22, 24-27, 29, 30, 32-34 and
36 under § 103(a) as being unpatentable over Terrasse and Stark; and the
rejections of claims 28 and 35 under § 103(a) as being unpatentable over
Terrasse, Stark and Sherrill.

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DECISION
We AFFIRM the Examiner’s decision rejecting claims 21, 22, 24-30
and 32-36.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

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AFFIRMED

JRG

DOUGHERTY & CLEMENS & HOFER
SUITE 300
1901 ROXBOROUGH ROAD
CHARLOTTE, NC 28210
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