Ex Parte Short et al

Board of Patent Appeals and Interferences

Sep 16, 2010

11246536 (B.P.A.I. Sep. 16, 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.
11/246,536 10/07/2005 Dan C. Short 1359-001 6858
1009 7590 09/16/2010
KING & SCHICKLI, PLLC
247 NORTH BROADWAY
LEXINGTON, KY 40507
EXAMINER
NGUYEN, TRI V
ART UNIT PAPER NUMBER
1796
MAIL DATE DELIVERY MODE
09/16/2010 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 DAN C. SHORT, WOLFGANG A. STRAHL,
ELLIS DAVIS JR., and JOHN D. TURNER
____________

Appeal 2010-000652
Application 11/246,536
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 15-18, 23, 25, 63-65, 67, and 68. We

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.

Appeal 2010-000652
Application 11/246,536

have jurisdiction pursuant to 35 U.S.C. § 6. Oral arguments were presented
September 01, 2010.
Appellants’ claimed invention is directed to a fabric treated with a
specified ionizing composition. According to Appellants, the fabrics can be
wearable items, such as clothing, bandages, wraps, and/or tapes, or domestic
fabrics such as bed coverings, pillow cases, etc. (Spec. 1: ll. 6-10 and 13-16).
Appellants report that individuals wearing the treated fabric in contact with
their skin have experienced or observed endurance, reaction time and other
performance and immunity benefits (Spec. 1: l. 16 – 2: l. 4). Appellants
indicate that a person sleeping while using bedding treated with the ionizing
composition “will enjoy a deeper, more relaxing sleep and awake feeling
more rested” (Spec. 2: ll. 4-6). No evidence respecting the specialty fabric is
furnished by Appellants with the Appeal Brief (App. Br.; Evid. Appdx.)
Claim 15 is drawn to a fabric treated with Appellants’ ionization
composition wherein the composition has a pH of between 2.0 and 4 and
comprises specified amounts of: 1) cross linking agent; 2) polyolefin,
oxidized polyolefin or mixture thereof; 3) wetting agent; 4) aminofunctional
silicone; 5) choline chloride ionizing agent; and 6) catalyst with any
remainder being a carrier. Claim 15 is reproduced below.
15. A performance fabric, comprising:

a fabric substrate treated with an ionizing composition having
in weight percent:

about 0.1 to about 10.0% cross linking agent;

about 0.1 to about 5.0% of a material selected from a group
consisting of polyolefin, oxidized polyolefin and mixtures thereof;

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Application 11/246,536

about 0.1 to about 0.5% wetting agent;

about 0.0 to about 8 .0% aminofunctional silicone;

about 0.1 to about 6.0% choline chloride ionizing agent;

about 0.0 to about 2.0% catalyst; and

any remainder as a carrier;

wherein said composition has a pH of between about 2.0 to about 4.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Sesselmann 5,539,930 Jul. 30, 1996
Hartman 5,830,843 Nov. 03, 1998
Brodmann 5,910,622 Jun. 08, 1999
Trinh 7,041,630 B1 May 09, 2006

Claim 15 stands rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement of this paragraph.
Claims 15, 63-65, 67, and 68 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Trinh in view of Hartman and Brodmann. Claims
16-18, 23, and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Trinh in view of Hartman, Brodmann, and Sesselmann.

ISSUES AND CONCLUSIONS
The dispositive question is: Did the Examiner err in rejecting the
appealed claims based on 35 U.S.C. § 112, first paragraph and/or under 35
U.S.C. § 103(a) as obvious over the applied references?
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Application 11/246,536

On this record, we answer this question in the negative for the
rejection based on 35 U.S.C. § 112, first paragraph and both rejections under
35 U.S.C. § 103(a).
Accordingly, we affirm the stated rejections for reasons set forth in
the Examiner’s Answer. Our reasoning follows.

DISCUSSION
Rejection under 35 U.S.C. § 112, first paragraph
It is well settled that whether a specification complies with the written
description requirement of 35 U.S.C. § 112, first paragraph, is a question of
fact. Gentry Gallery Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir.
1998). The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph for later claimed subject
matter is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession, as of the
filing date, of the later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim language. See
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) and In
re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
The burden of showing that the claimed invention is not described in
the specification rests on the Examiner. In re Alton, 76 F.3d 1168, 1175
(Fed. Cir. 1996); In re Wertheim, 541 F.2d 257, 262-265 (CCPA 1976). The
Examiner meets his burden when he presents "evidence or reasons why
persons skilled in the art would not recognize in the disclosure a description
of the invention defined by the claims." Wertheim, 541 F.2d at 263-64.
Once the Examiner carries the burden of making out a prima facie
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Application 11/246,536

case of non-patentability, "the burden of coming forward with evidence or
argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)).
In the present appeal, the Specification provides:
In accordance with the purposes of the present invention
as described herein, a composition is provided for treating
fabric. The composition comprises in weight percent about 0.1
to about 10.0% cross linking agent, about 0.1 to about 5.0%
polyolefin, about 0.1 to about 0.5% wetting agent, about 0.0 to
about 8.0% aminofunctional silicone, about 0.0 to about 6.0%
ionizing agent, about 0.0 to about 2.0% catalyst and any
remainder as a carrier. The composition has a pH of between
about 2.0 to about 4.0 and at least some aminofunctional
silicone and/or ionizing agent is provided in the composition.
This is necessary in order to provide the desired ionization
effect to the fabric.
. . . .
In accordance with an additional aspect of the present
invention a composition for treating fabric comprises in weight
percent about 1.0 to about 4.0% cross linking agent, about 0.2
to about 4.0% aminofunctional silicone, about 0 to about 3.0%
polyolefin, about 0.1 to about 0.5% wetting agent, about 1.0 to
about 6.0% ionizing agent, about 0.5 to about 2.0% catalyst and
any remainder as a carrier. The composition has a pH of
between about 2.6 to about 4.0.

Spec. 2 and 3 (emphases added).2
The ionizing agent constituent of the composition is disclosed
as being “selected from a group consisting of choline chloride, other
reactive quaternary compounds and mixtures thereof” (Spec. 2: ll. 26-
28; 7: ll. 22-29).

2 See also, Spec. 7: ll. 1-5.
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The weight percent ranges for all of the constituents (choline chloride)
of the disclosed composition provided in the Specification, as filed, are not
identical to the weight percent ranges for all of the composition constituents
present in appealed claim 15 (Compare appealed claim 15 with Spec. 2, 3,
and 7). This fact is not in dispute.
Also, the Specification furnishes several examples of fabric-treating
compositions, one of which includes choline chloride as an ionic agent
component, albeit in a weight percent amount of 3.6 (Spec. 14: Example 2).
The Examiner has found that the Specification, as filed, does not
establish that Appellants were in possession of a fabric treating composition
that is defined, in part, by including “about 0.1 to about 6.0 %” of choline
chloride as required by appealed claim 15 (Ans. 3).3 The Examiner
maintains that Appellants’ Example 2 shows 3.6 weight percent of choline
chloride present in the exemplified composition and the Specification, as
filed, does not furnish descriptive support for the claimed range of choline
chloride in the treatment composition. The Examiner basically reasons that
the 3.6 weight percent choline chloride of the Example 2 composition
coupled with the broad disclosures (from some amount to about 6.0 weight
percent and about 1.0 to about 6.0 weight percent) for the ionizing agent
constituent (choline chloride, other reactive quaternary compounds, or
mixtures thereof) of the composition does not convey to an artisan that
Appellants were in possession of a performance fabric made via treatment
with a composition having a weight percent range of choline chloride as
recited in amended claim 15 (Ans. 3 and 8).

3 Dependent claims 16-18, 23, 25, 63-65, 67, and 68 have not been rejected
on this basis by the Examiner.
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When an Examiner reasonably determines that a later claimed
invention is not expressly disclosed in the application as filed, as is the case
here, the Examiner can shift the burden to the Applicants to produce
argument and/or evidence that such later claimed invention, including all of
the limitations pertaining thereto, is described by the Specification, as filed.
Here, Appellants do not meet this production burden.
Relying on the original generically disclosed range of 0.0 to 6.0
weight percent ionizing agent, the original disclosure that at least some
ionizing agent can be present, and the original disclosure that choline
chloride can be selected as the ionizing agent, Appellants conclusively urge
that the new range of choline chloride specified in claim 15 is supported by
the original disclosure because the new range falls within the scope of the
originally disclosed range (App. Br. 10-11; Reply Br. 1-2).
Appellants’ argument falls short of refuting the Examiner’s lack of
descriptive support rejection. Even if we agree that a composition with a
range of 0.1 to 6.0 weight percent ionizing agent falls within the originally
disclosed generic range of some amount to about 6.0 weight percent ionizing
agent, the amended claimed range of ionizing agent nevertheless represents a
range that was picked or chosen from among the multitude of ranges falling
within the originally disclosed range. See In re Blaser, 556 F.2d 534, 538
(CCPA 1977) (adequate description found for claimed operating temperature
range of 80ºC to 200ºC, with operating temperature range of 60ºC to 200ºC
disclosed and a disclosure of initially mixing the starting materials at 80ºC;
however, descriptive support not found for 0.6 to 1.6 mols water based on
disclosure of some amount up to 1.6 mols).
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Moreover, amended claim 15 requires that the newly minted range is
coupled to a selection of choline chloride as the ionizing agent from among
the ionizing agents described in the original disclosure. Appellants do not
articulate how the original disclosure conveys to an artisan that the
Applicants were in possession of a composition as employed in amended
claim 15 wherein a new weight percent range is presented, after filing, in
defining the ionizing agent of the claimed subject matter in conjunction with
a selection of choline chloride as the ionizing agent.
Appellants, at best, may have established that the original disclosure
conveys that the new weight percent range and association thereof with the
particular ionizing agent selection would have been obvious to an artisan
having the original disclosure of the Specification before him/her, not that
one of ordinary skill in the art would have recognized Appellants were in
possession of a fabric treated with a composition having the constituents and
weight percent ranges, as defined by appealed claim 15. The written
description “need not recite the claimed invention in haec verba but [it] must
do more than merely disclose that which would render the claimed invention
obvious.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1376-77
(Fed. Cir. 2009) (emphasis added).
On this record and upon due consideration of Appellants’ arguments,
we find that the weight of the evidence reasonably supports the Examiner’s
lack of written description determination with respect to claim 15.

Rejections under 35 U.S.C. § 103
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
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Application 11/246,536

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) (quoting 35
U.S.C. § 103(a)).
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR, 550 U.S. at 419-20. To
be non-obvious, the claimed subject matter must not encompass “the
predictable use of prior art elements according to their established
functions.” Id. at 417.
Concerning the Examiner’s first stated obviousness rejection of claims
15, 63-65, 67, and 68 over Trinh in view of Hartman and Brodmann,
Appellants argue the rejected claims as a group. Accordingly, we select
claim 15 as the representative claim on which we focus in deciding the
propriety of this rejection.
The Examiner has found that Trinh in combination with Hartmann
suggest a fabric treated with a composition corresponding to a fabric treated
with Appellants’ fabric treating composition with the exception of the use of
choline chloride as the ionizing agent in the composition (Ans. 3-6).4
Appellants do not dispute this determination of the Examiner on appeal.5
As to the required choline chloride content of the fabric treating
composition of Trinh, the Examiner turns to Brodmann for teaching or

4 The Examiner, without dispute, relies on Hartmann in combination with
Trinh for a teaching and suggestion of the use of polyethylene polyolefin as
a component in the composition of Trinh.
5 In this regard, arguments not timely made in the Briefs are considered to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

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suggesting that treating a fabric with a composition including choline
chloride ionizing agent in amounts overlapping the claimed amount
decreases fabric shrinkage, increases tensile strength and increases tear
strength of the fabric (Ans. 6). Appellants do not specifically refute this
factual determination of the Examiner on this appeal record (see generally
App. Br. and Reply Br.).
Based thereon, the Examiner maintains that it would have been
obvious to one of ordinary skill in the art to modify the fabric treating
composition of Trinh to include the choline chloride ionizing agent of
Brodmann to decrease the amount of fabric shrinkage and improve tensile
and tear strengths of fabrics treated with the modified formulation of Trinh
(Ans. 6).
Appellants argue that choline chloride is a cationic dye fixing agent
that increases dye uptake according to Brodmann and that Brodmann
furnishes no other rationale for an ordinary skilled artisan to employ choline
chloride in a fabric treating composition (App. Br. 11-12). Moreover
Appellants urge that Trinh teaches away from or is contradictory to such a
modification by indicating that cationic dye fixing agents are not preferred
components of their composition due to their capability of discoloring or
changing the color or hue of a treated fabric by attracting fugitive dyes in a
fabric washing and rinse cycles (App. Br. 12; Reply Br. 2 and 3; Trinh, col.
6, ll. 52-60; Brodmann, col. 1, ll. 57-66, col. 2, ll. 44-51, and col. 3, ll. 33-
47).
We do not find this argument persuasive of error in the Examiner’s
obviousness rejection. At the outset, we note that Appellants do not
specifically contest that one of ordinary skill in the art would expect to
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obtain performance benefits such as fiber strengthening, anti-shrinkage, and
improved wrinkle resistance from the use of choline chloride in Trinh’s
fabric care composition, as basically urged by the Examiner (Reply Br. 3).
Rather, Appellants assert that one of ordinary skill in the art would use
something other than the choline chloride of Brodmann for such benefits due
to expected color modification that would ensue in subsequent wash and
rinse steps after treating a fabric with choline chloride. Id.
However, Trinh’s disclosure that cationic dye fixing agents, in
general, are not preferred to be used in the fabric care composition because
fugitive dyes could be attracted in subsequent rinse and wash steps does not
specifically discourage the use of choline chloride.
Trinh is merely pointing to some of the potential issues associated
with using the not preferred option of employing cationic dye fixing agents.
These agents could result in discoloration of the treated fabric upon
subsequent wash and rinse treatments where fugitive dyes are present
according to Trinh. Trinh, however, does not require that treated fabrics
must be washed and/or rinsed in the presence of potentially discoloring
fugitive dyes. Also, the Examiner relies on Brodmann for suggesting other
benefits from employing choline chloride that Appellants do not particularly
dispute on this record as noted above.
Therefore, Trinh does not teach away from the use of choline chloride
in a fabric care composition. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994) (A reference may be said to teach away when a person of ordinary
skill in the art would be discouraged from following the path set out in the
reference or would be led in a direction divergent from the path taken by
applicant).
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After all, “a finding that the prior art as a whole suggests the
desirability of a particular combination need not be supported by a finding
that the prior art suggests that the combination claimed by the patent
applicant is the preferred, or most desirable, combination.” In re Fulton,
391 F.3d 1195, 1200 (Fed. Cir. 2004).
Thus, upon consideration of the arguments of record, we determine
that the Examiner has reasonably established that Brodmann together with
Trinh would have suggested to an ordinary skilled artisan the option of using
choline chloride in Trinh’s fabric treating composition for fiber
strengthening and shrinkage control purposes. Consequently, we affirm the
Examiner’s first stated rejection.
Appellants rely on their arguments with respect to choline chloride
made with regard to the Examiner’s first rejection in traversing the separate
rejection of dependent claims 16-18, 23, and 25 and note that Sesselmann
does not remedy this supposed inadequacy (App. Br. 13-14). Appellants do
not contest the Examiner’s additional use of Sesselmann for teaching or
suggesting that the modified fabric care composition of Trinh would have
been obviously applicable for treating non-cellulosic synthetic fabric
materials. Id. On this record, we also sustain the Examiner’s second stated
rejection.
CONCLUSION/ORDER
The Examiner’s decision to reject claim 15 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement;
claims 15, 63-65, 67, and 68 under 35 U.S.C. § 103(a) as being unpatentable
over Trinh in view of Hartman and Brodmann; and claims 16-18, 23, and 25
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under 35 U.S.C. § 103(a) as being unpatentable over Trinh in view of
Hartman, Brodmann, and Sesselmann is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

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KING & SCHICKLI, PLLC
247 NORTH BROADWAY
LEXINGTON, KY 40507
13