Ex parte Swoboda et al.

Board of Patent Appeals and Interferences

Sep 24, 1998

07868037 (B.P.A.I. Sep. 24, 1998)

Application for patent filed April 13, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PETER SWOBODA
and PETER KRIX
_____________
Appeal No. 95-3828
Application 07/868,0371
______________
ON BRIEF
_______________
Before GARRIS, OWENS and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 16 through 25, as presented
in the amendment after final rejection dated Nov. 29, 1993
(Paper No. 8) and entered as per the advisory action dated
Appeal No. 95-3828
Application 07/868,037
2
Dec. 9, 1993 (Paper No. 10). Claims 11 through 15, the only
other claims remaining in this application, stand withdrawn
from consideration by the examiner (brief, page 2).
According to appellants, the invention is directed to an
uncoated gas-permeable fabric with the desired strength,
extensibility, and thickness needed for the gas-releasing part
of an airbag (brief, page 4). Claim 16 is illustrative of the
subject matter on appeal and is reproduced below:
16. An uncoated gas-permeable fabric having
sufficient gas-permeability, flatness, fabric strength, fabric
extensibility, and tongue tear resistance for use, without
modification, as the gas-releasing part of an airbag, said
uncoated gas-permeable fabric comprising: a synthetic
multifilament yarn with a tenacity of more than 60 cN/tex
having a filament linear density of 4 dtex or less and a yarn
count within the range from 250 to 550 dtex in an uncoated,
gas-permeable crepe or modified huckaback weave, the gas-
permeable, modified huckaback weave having warp-weft crossings
with essentially the same number of warp-weft crossing points,
said gas-permeable fabric having a thickness not exceeding
0.35 mm.
The examiner has relied upon the following references as
evidence of obviousness:
Belitsin et al. (Belitsin) 4,054,709 Oct.
18, 1977
Krummheuer et al. (Krummheuer I) 5,093,163 Mar.
3, 1992
Appeal No. 95-3828
Application 07/868,037
As appellants note on pages 4 and 5 of the brief, Krummheuer II is apparently2
being relied upon as a secondary reference. This reference was inadvertently omitted by
the examiner in the statement of the rejection in the final rejection (page 2 of Paper
No. 6) but was discussed on page 4 of the final rejection. Furthermore, the examiner
incorporated the “reasons of record in Paper No. 4, paragraph 18" in the final rejection
(page 2 of Paper No. 6). The office action of Paper No. 4 expressly states that
Krummheuer II is applied as a secondary reference (paragraph 18, page 5). As surmised
by appellants and correctly stated by the examiner in the answer, the rejection
currently before us under § 103 is Krummheuer I in view of Krummheuer II and Belitsin.
The new ground of rejection contained in the examiner’s answer (page 5) has3
been withdrawn by the examiner in view of appellants’ amendment dated Sept. 19, 1994
submitted with the reply brief (Paper No. 15). See the Supplemental Answer dated Dec.
7, 1994 (Paper No. 16).
3
Krummheuer et al. (Krummheuer II) 5,131,434 Jul.
21, 1992
(filed Sep. 9,
1991)
Claims 16-25 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
appellants regard as the invention (answer, page 3). Claims
16-25 are rejected under 35 U.S.C. § 103 as unpatentable over
Krummheuer I in view of Krummheuer II and Belitsin (id.). We2
reverse both stated rejections for reasons which follow.3
OPINION
A. The Rejection Under 35 U.S.C. § 112, Second Paragraph
The examiner finds that the claimed phrase “modified
Appeal No. 95-3828
Application 07/868,037
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).4
4
huckaback” does not describe how the fabric differs from
“normal” huckaback thus rendering the claims vague and
indefinite (answer, page 3).
The legal standard for definiteness under paragraph two
of 35 U.S.C. § 112 is whether a claim reasonably apprises
those of skill in the art of its scope. See In re Warmerdam,
33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
Even imprecise terms can be definite if they are defined
properly in the specification. See Seattle Box Co. v.
Industrial Crating and Packing, Inc., 731 F.2d 818, 826, 221
USPQ 568, 574 (Fed. Cir. 1984).
Appellants’ specification discloses that huckaback weaves
are “known to the person skilled in the art” (page 3, lines
15-16). The specification then discloses the characteristics
of a normal huckaback weave (page 3, lines 17-21) and defines
a modified huckaback weave (page 3, lines 22-27).
As stated by our reviewing court in In re Oetiker , “the4
examiner bears the initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of
Appeal No. 95-3828
Application 07/868,037
5
unpatentability.” Here the examiner has not met the initial
burden of explaining why, given the definition of “modified
huckaback” in the specification, one of ordinary skill in the
art would not be apprised of the scope of the claim.
Accordingly, the rejection of claims 16 through 25 under 35
U.S.C. § 112, second paragraph, is reversed.
B. The Rejection Under 35 U.S.C. § 103
The fabric of claim 16 is required to be gas-permeable
and useful, without modification, as the gas-releasing part of
an airbag (see also claims 20, 21, 24 and 25). Krummheuer I,
the examiner’s primary reference, is directed to yarn and
fabric for the production of a one-part airbag of low air
permeability (column 3, lines 5-21, 49-51, 67-68, and column
4, lines 1-2).
The examiner attempts to combine the dense, low air
permeability yarn and fabric of Krummheuer I with the
teachings of Krummheuer II (answer, page 4). However,
Krummheuer II is directed to a two-part airbag with a low air
permeability fabric being used for the contact part of the
airbag and a high air permeability fabric being used for the
Appeal No. 95-3828
Application 07/868,037
6
filter part of the airbag (column 7, lines 31-37). A
huckaback weave is disclosed for the “windows” or zones in the
filter part of the airbag of Krummheuer II in order to produce
various air permeabilities (column 4, lines 30-52). There is
no disclosure, suggestion or teaching in the Krummheuer
references to use the yarn and fabric of Krummheuer I, with
its specified properties and low air permeability, in the high
air permeability filter part of the airbag of Krummheuer II
that would have led the artisan to appellants’ claimed gas-
permeable, gas-releasing fabric part of an airbag in a crepe
or modified huckaback weave. “It is well established that
before a conclusion of obviousness may be made based on a
combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those
references.” Pro-Mold and Tool Co. v. Great Lakes Plastics,
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir.
1996).
Belitsin teaches the use of a huckaback weave for yarns
in dress and shirt manufacture (see Example 5) but does not
provide any reasons or suggestions for combining the two
Appeal No. 95-3828
Application 07/868,037
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Krummheuer references. It is further noted that the filament
linear density and a modified huckaback weave, as recited in
appealed claim 16, are not found in the applied prior art (see
the answer, pages 4 and 5). On this record, appellants and
the examiner have not established whether a “modified”
huckaback weave is known in the art (see the specification,
page 3, lines 15-27).
For the foregoing reasons, we find that the examiner has
failed to meet the initial burden of establishing a prima
facie case of obviousness. See In re Oetiker, supra.
Accordingly, the rejection of claims 16-25 under 35 U.S.C. §
103 as unpatentable over Krummheuer I in view of Krummheuer II
and Belitsin is reversed.
C. Summary
The rejection of claims 16-25 under 35 U.S.C. § 112,
second paragraph, is reversed. The rejection of claims 16-25
under 35 U.S.C. § 103 as unpatentable over Krummheuer I in
Appeal No. 95-3828
Application 07/868,037
8
view of Krummheuer II and Belitsin is reversed.
REVERSED
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW:yrt
CONNOLLY & HUTZ
P.O. Box 2207
Appeal No. 95-3828
Application 07/868,037
9
Wilmington, DE 19899