Ex Parte Shteiyer

Patent Trial and Appeal Board

Jul 21, 2017

12624493 (P.T.A.B. Jul. 21, 2017)

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.
12/624,493 11/24/2009 Yaakov Shteiyer 047052/379262 8432
826 7590 07/25/2017
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
MCKINNON, LASHAWNDA T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
07/25/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YAAKOV SHTEIYER
Appeal 2016-007387
Application 12/624,4931
Technology Center 1700
Before BEVERLY A. FRANKLIN, DONNA M. PRAISS, and
JANE E. INGLESE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4—12, 14—18, and 27—31 as obvious under
1 J. B. Martin Company, Inc. is identified as the real party in interest. App.
Br. 1.
2 In this decision, we refer to the Specification filed Nov. 24, 2009 (“Spec.”),
the Final Office Action dated Nov. 20, 2014 (“Final Act.”), the Appeal Brief
filed June 15, 2015 (“App. Br.”), the Examiner’s Answer dated May 20,
2016 (“Ans.”), and the Reply Brief filed July 20, 2016 (“Reply Br.”).
Appeal 2016-007387
Application 12/624,493
35 U.S.C. § 103(a) over Goff3 in view of Stanhope4 and secondary
references. App. Br. 4—5; Final Act. 3—10.5
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal relates to “a fabric that incorporates
stretchable and non-stretchable yams into a unitary, one-layer, lightweight,
stretchable fabric.” Spec. 14. Claim 1 is illustrative (disputed matter
italicized):
1. A single-layer stretchable fabric configured for
reinforcing high-stress areas of a garment including garment
elbows, knees, pockets, or seat areas, the fabric comprising:
a plurality of weft yams;
a plurality of first warp yams interwoven with the weft
yams, wherein at least some of the first warp yams comprise a
stretchable core yam and a texturized non-stretchable wrap yam
wrapped around the stretchable core yam; and
a plurality of second warp yams interwoven with the weft
yams, wherein the second warp yams consist of texturized non-
stretchable yams;
wherein at least some of the plurality of first warp yams
are configured to achieve a contracted state upon activation of
the first warp yams in which the activated first warp yams are
stretchable, such that the fabric is stretchable in a warp direction
upon activation of at least some of the plurality of first warp
yams, and
wherein the second warp yarns are selected to
aesthetically match a remainder of the garment so as to provide
the garment as a whole with a cohesive appearance when the
3 Goff, Jr. et al., US 3,965,943, iss. June 29, 1976 (“Goff’).
4 Stanhope et al., US 5,964,981, iss. Dec. 9, 1997 (“Stanhope”).
5 The rejection of the pending claims as indefinite under 35 U.S.C. § 112 12
stands withdrawn by the Examiner. Ans. 2.
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Application 12/624,493
fabric is used to form at least part of an outer surface of the
garment.
App. Br. 14 (Claims App’x).
OPINION
The Examiner finds that claims 1,2, 4—12, 14—18, and 27—31 would
have been obvious to one of ordinary skill in the art at the time of the
invention for the reasons stated on pages 2—10 of the Final Action and 2—11
of the Answer.
Appellant does not separately argue the patentability of claims 1, 2, 4—
12, 14—18, and 27—31. App. Br. 10. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), claims 2, 4—12, 14—18, and 27—31 will stand or fall
together with independent claim 1.
Appellant argues that the Examiner erred in rejecting the claims over
the combination of Goff and Stanhope because “Goff is not properly
combinable with Stanhope, as no one skilled in the art would consider these
references analogous to each other.” App. Br. 7. Appellant’s non-analogous
art argument is based on two reasons: (1) Goff is directed to a waistband and
does not suggest a single-layer stretchable fabric {id. at 7—10) and (2)
Stanhope is not directed to waistbands or garment fabric (id. at 10—11).
According to Appellant, Goff is not directed to fabric for reinforcing
particular areas of a garment because:
anyone skilled in the art would recognize that narrow elastic
bands are not only made using different equipment than bolts of
fabric used for garment outer surfaces, but narrow elastic fabric
as described in Goff are entirely unsuitable for reinforcing areas
of garments such as those described in Appellant’s specification
and recited in the claims.
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App. Br. 8. Appellant also asserts that Goffs waistband is not on an outer
surface of trousers, but, rather, “it is sewn to an outer fabric 30” because
Goff is concerned with discomfort to the wearer due to rough edges that
would not be a problem if the waistband were on the outside. Id. at 9
(emphasis omitted) (citing Goff 4:58—68, Fig. 3). Appellant further argues
that the Examiner’s position that Goffs waistband is a garment because “it
is used to cloth[e] and reflects an outward appearance” (id. (quoting
Advisory Action dated Mar. 24, 2015, 2)) is an unreasonably broad
interpretation of the term “garment” that would absurdly classify a thread or
a zipper as a garment. Id. at 9-10.
Regarding Stanhope, Appellant argues that it “has nothing to do with
[a] waistband and instead describes a stretchable flame resistant fabric 10
that includes flame resistant warp yams 11 interwoven with a series of
filling yams 12.” Id. at 11. According to Appellant, Stanhope’s method
involves core yams made of an elastic material and warp yams made of a
flame resistant material, which are pulled closer together during Stanhope’s
finishing step that serves to shrink Stanhope’s fabric. Id. Appellant argues
that the Examiner’s stated reason for combining Stanhope with Goff to
control the degree of stretch of the elastic fabric to give the final elastic yam
the desired cover and appearance of the final fabric, “has nothing to do with
the stated purpose [of] Stanhope of the described finishing step.” Id. ft is
Appellant’s position that “Stanhope and Goff are directed to two different
kinds of fabric aimed at accomplishing different goals” and the Examiner’s
combination is impermissibly based on the teachings of Appellant’s
Specification. Id.
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The Examiner responds that Goff is not restricted to a waistband
because it broadly teaches “[tjhough the narrow elastic fabric of the present
invention may be used, either by itself or in combination with other fabrics,
in the body encircling portions of articles of apparel. . . Ans. 9 (quoting
Goff 1:1—14). The Examiner also finds that even if Goff is limited to a
waistband, such a fabric still meets the claims because the equipment used is
irrelevant to the claims. Id. The Examiner further finds that the claims do
not require that the outer surface be shown on the outside of the garment,
but, rather, “only that the fabric forms at least an outer part of a garment
which Goff teaches.” Id. at 10. The Examiner additionally finds that the
second warp yams of Goff are selected to match a remainder of the garment
with a cohesive appearance, Figures 1 and 3 of Goff evidence a single layer,
and Goffs teaching of gripping areas to aid in holding shirts and blouses in
trousers is considered to be reinforcing areas. Id.
Regarding Stanhope, the Examiner finds that both Stanhope and Goff
are directed toward woven stretch fabrics and have the identical
classification. Id. Because Stanhope teaches how to control the degree of
stretch in a fabric with wrapped fibers, Stanhope provides motivation to
arrive at the claimed invention. Id. at 11.
In the Reply Brief, Appellant argues that because “Goffs invention is
a narrow elastic fabric for use in body encircling portions of articles of
apparel... it would not have been evident to a person of ordinary skill in the
art to use this ‘body encircling’ fabric to create a stretchable fabric used for
patches for reinforcing high-stress areas of a garment.” Reply Br. 2
(emphasis omitted). Appellant also argues that Goff, considered in its
entirety, from its title to its claims, would lead away from the claimed
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invention because it provides no basis for concluding a fabric other than a
stretchable band of material is described. Id. According to Appellant, the
Examiner’s interpretation of “outer surface of a garment” is overly broad
because “[i]f the ‘outer surface’ is not shown on the outside of the garment,
as the Examiner asserts, then ‘aesthetics’ and ‘appearance’ are meaningless”
because these characteristics are perceived visually by the human eye. Id. at
3. Appellant argues that “Goff describes only matching the binder yam to
the face yams of the elastic fiber on the narrow elastic fabric, and not
matching to other fabrics or fibers in the garment.” Id. (emphasis omitted)
(citing Goff 3:61—68). In addition, Appellant contends that because Goff
describes the “settable yam may then be covered with other types of yams
such as cotton, rayon, or synthetic yams to give the final elastic yam ... the
desired cover and appearance in the final fabric,” this means “Goffs fabric
is covered, and the ‘appearance’ that is described is that of the ‘final fabric,’
including the [covering].” Id. (emphasis omitted) (quoting Goff 2:38^42).
Appellant contends that Figures 1 and 3 of Goff do not show that the
waistband is used alone, but, rather, show an enlarged plan view of a
portion, and a combination with other materials to form a garment,
respectively. Id. at 3^4. Appellant further argues that “the claimed
invention is used to reinforce or strengthen areas of a garment that are likely
to experience increased wear and tear . . . where the garment typically
experience more stress” and that has nothing to do with keeping shirts and
blouses tucked into trousers and is necessarily “spaced from the waistband
of trousers.” Id. at 4 (emphasis omitted).
Regarding the Examiner’s finding that Goff and Stanhope are
analogous art because they have the same classification as woven stretch
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fabrics, Appellant argues that classification alone is not sufficient to support
a reason to combine references to show obviousness. Id. at 5. Appellant
also argues that Goff and Stanhope do not share the same subclass
classification with each other or Appellant’s application. Id.
We are not persuaded by Appellant’s arguments that the Examiner
reversibly erred in rejecting the claims over the cited prior art for the reasons
stated by the Examiner. We add the following for emphasis.
The Examiner’s finding that Goff and Stanhope are analogous art is
supported by the record. Appellant does not dispute that both Goff and
Stanhope are directed to woven stretch fabrics, and concedes that the
references share the characteristic of being restorative (elastic) (Reply Br. 5).
Moreover, even if Goff and Stanhope are not in the same field of endeavor,
Appellant has not shown under the two-step “test” for “analogous” art that
the references are not pertinent to the problem with which the inventor was
concerned. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) ((“[I]t is
necessary to consider ‘the reality of the circumstances, ’—in other words,
common sense—in deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem facing the
inventor.” (quoting In re Wood, 599 F.2d 1032, 1036 (CCPA 1979))). In
other words, “familiar items may have obvious uses beyond their primary
purposes.” KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007).
Appellant’s argument that Goff differs from Stanhope in terms of
Goff’s fabric being characterized as body encircling and narrow and
Stanhope’s fabric being characterized as flame resistant (id. at 4—5) is not
persuasive for a number of reasons. First, one cannot show nonobviousness
by attacking references individually where the rejections are based on
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combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Second, Appellant does not dispute that Stanhope discloses controlling the
degree of stretch in a fabric with wrapped fibers. This is the Examiner’s
rationale for combining Stanhope with Goff (Final Act. 4), not simply the
shared classification number as argued by Appellant (Reply Br. 4—5). Thus,
the Examiner’s rationale for combining Goff with Stanhope, which both
describe the use of their fabrics in the context of clothing (Goff 4:40-44;
Stanhope 6:15—31), is reasonable and supported by the record. Final Act. 4.
Moreover, Goff discloses that transverse stiffness and resiliency, i.e., degree
of stretch, are a feature of its fabric. Goff 2:59—63 (“The above described
combination of yams, weave and number of ribs produces a fabric having
transverse stiffness and resiliency coupled with uniform elongation, power
and recovery properties and good washing and dry cleaning
characteristics.”); id. at 2:7—8 (“Our improved waistband is stiff in the
widthwise direction and has excellent resiliency or spring-back.”).
Appellant’s argument that it would not have been evident to an
ordinarily skilled artisan to use Goff’s “‘body encircling’ fabric to create a
stretchable fabric used for patches for reinforcing high-stress areas of a
garment” is not persuasive because the claims are not limited to a “patch”
and do not recite any particular dimensions that would patentably distinguish
the disclosure of a woven stretch fabric that is narrow, such as Goff. Nor
does Appellant adequately explain why a waistband portion of a garment is
not “a high-stress area” as recited in the preamble to claim 1. Even if the
preamble were to be limiting, the preamble is not limited to the elbow,
knees, pockets, or seat areas of a garment. Moreover, Appellant concedes
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that “Goff is not limited to a waistband” (Reply Br. 2) and contends Goff
discloses “a narrow elastic fabric for use in body encircling portions of
articles of apparel” {id. (emphasis omitted)). However, Appellant does not
adequately explain why such body encircling portions do not suggest such
high-stress areas of a garment as knee and elbow areas (App. Br. 1; Spec.
Abstr., | 60). Nor does Appellant adequately explain why a narrow woven
elastic fabric would not inform a skilled artisan about a woven elastic fabric
that is not narrow. To the extent that the only difference is the method or
equipment used to manufacture such fabrics, it is not disputed that such
equipment differences are not claimed (Ans. 9).
Appellant’s argument that Goff does not teach its fabric is used alone
or in a single layer for forming a garment is also unpersuasive because it is
not supported by the record. Reply Br. 4. Goff explicitly states “[o]ur
improved waistband, though preferably used alone, may be used in
combination with other fabrics to form a trouser waistband. Our improved
waistband is especially suitable for use in trousers made from stretch
materials such as double knit fabrics.” Goff 2:13—17; Ans. 4 (“Goff teaches
a waistband used alone (single-layer) to form a trouser waistband (seat area)
and provides aesthetic affect to the final garment (providing a cohesive
appearance) (C2, LI5—20).”); cf. App. Br. 8—9. The Examiner further cites
Figures 1 and 3 of Goff as demonstrating a single layer. Ans. 10. Appellant
does not dispute that Figure 1 illustrates a single layer. Reply Br. 3^4.
Instead, Appellant argues that the figures do not indicate this specific portion
could be used alone to form a garment. Id. at 4. The problem with
Appellant’s argument is that Goff explicitly states that its fabric, and Figure
1 depicts Goffs “narrow elastic waistband fabric” (Goff 3:15—16), is
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“preferably used alone” (Goff 2:13—14). That Figure 3 depicts an alternate
embodiment where Goff’s fabric is used “with other fabrics to form a trouser
waistband” (Goff 2:14—15) does not negate Goff’s disclosure of using the
fabric alone. In a determination of obviousness, a reference may be relied
upon for all that it would have reasonably suggested to one having ordinary
skill in the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir.
1989) (“That the [prior art] patent discloses a multitude of effective
combinations does not render any particular formulation less obvious.”).
Appellant’s argument that Goff does not select yam to aesthetically
match a remainder of the garment as required by the claims 1 and 11 (App.
Br. 10) is not persuasive because Goff explicitly teaches that “aesthetic
affects in the final garment” are achieved using the disclosed fabric (Goff
2:17—20; Final Act. 4, 5—6). Appellant’s argument that Goff’s waistband is
not on an outer surface of the trousers because it is sewn to another fabric to
form the trouser waistband (App. Br. 9) is not persuasive because it does not
address Goffs disclosure that its fabric is “preferably used alone” as
compared to being used “with other fabrics to form a trouser waistband”
(Goff 2:13—15). In addition, the Examiner finds that “the second warp yams
of Goff are considered to be selected to match a remainder of the garment
with a cohesive appearance.” Ans. 10. Appellant’s argument that “Goff
describes only matching the binder yam to the face yams of the elastic fiber
on the narrow elastic fabric, and not matching to other fabrics or fibers in the
garment” (Reply Br. 3 (emphasis omitted) (citing Goff 3:61—68)) is not
persuasive because Appellant acknowledges that Goff is selective in the
yams used to constmct the fabric. In addition, Goff discloses incorporating
decorative patterns “in the waistband to provide aesthetic affects in the final
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garment” (Goff 2:17—20). Appellant does not adequately explain why it
would not have been obvious to a person having ordinary skill in the art to
make the decorative pattern disclosed by Goff “aesthetically match a
remainder of the garment” as recited in claims 1 and 11.
In sum, we affirm the Examiner’s rejection of claims 1,2, 4—12, 14—
18, and 27—31 as obvious over the combination of Goff in view of Stanhope
and additional references.
CONCLUSION
We affirm the Examiner’s rejections of claims 1, 2, 4—12, 14—18, and
27—31 as obvious under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision is affirmed.
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).
AFFIRMED
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