Ex Parte Taylor

Board of Patent Appeals and Interferences

May 29, 2012

12642550 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID STIRLING TAYLOR
____________

Appeal 2012-005137
Application 12/642,5501
Patent 6,743,325 B1
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 35 through 44, 49, 55 through 57, and 60 through 74, all

According to Appellant at page 3 of the Appeal Brief, “[t]his is a reissue
application of U.S. Patent 6,743,325 [B1](issued [to Taylor on] Jun. 1, 2004)
and is a continuation application of reissue patent application 11/269,919
filed November 8, 2005…which has issued as RE 41396.”
1
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Application 12/642,550

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of the claims pending in the above-identified application.2 An oral hearing
was held on May 8, 2012. We have jurisdiction under 35 U.S.C. § 6.

STATEMENT OF THE CASE
Details of the appealed subject matter are recited in illustrative claims
35, 40, 56, 61, and 62 which are reproduced below:
35. An article of protective apparel comprising:
a plurality of separate resiliently compressible foam elements, the
compressible elements having a first surface to provide a plurality of top
surfaces configured to face outwardly from a wearer of the apparel, and a
second surface to provide a plurality of bottom surfaces configured to face
towards the wearer of the apparel, the elements in an adjacent relation with
spaces of about 2 mm between the elements;
a first resiliently stretchable fabric portion overlying and bonded to
the top surfaces; and
a second resiliently stretchable fabric portion overlying and bonded to
the bottom surfaces, the bonded surfaces holding the elements in spaced
apart relation, the bonding selected from the group consisting of adhesively
bonding and welding, the first and second fabric portions not bonded to each
other between the elements, the top surfaces effective for receiving impacts
and the elements effective for absorbing impacts, providing resiliently
compressible apparel and protecting the wearer of the apparel from the
impacts and wherein there are from about 250 to about 8000 elements/m2
between the fabric portions.

40. An article of protective resiliently compressible material
comprising:
a first resiliently stretchable fabric substrate;
a plurality of separate resiliently compressible elements having top
surfaces and bottom surfaces, the first resiliently stretchable fabric overlying
and adhesively bonded to the top surfaces; and

2 See Appeal Brief (“App. Br.”) filed November16, 2011, 3; Examiner’s
Answer (“Ans.”) filed January11, 2012, 3.
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a second resiliently stretchable fabric substrate overlying and
adhesively bonded to the bottom surfaces, the resiliently compressible
elements between the first and second fabric substrates providing a
resiliently compressible protective material, the surfaces of the elements
adhesively bonded to the substrates holding the elements adjacently spaced
apart with a spacing of about 2 mm without the substrates being bonded to
each other in the spacing, the elements arrayed in a density of from about
4000 to about 6000 elements/m2.

56. An article of protective resiliently compressible material
comprising:
a first resiliently stretchable fabric substrate;
a plurality of separate resiliently compressible elements having a top
surface and a bottom surface, the top and bottom surfaces of the plurality of
separate resiliently compressible elements in a top and bottom array in
which adjacent elements are spaced apart about 2 mm, the top array
adhesively bonded to the first resiliently stretchable fabric substrate; and
a second resiliently stretchable fabric substrate adhesively bonded to
the bottom array of bottom surfaces, the fabric substrates overlying the top
and bottom arrays in an adhesively affixed and abutting relation with the
arrays, adjacent resiliently compressible elements in the arrays spaced apart
from each other with the fabric substrates not bonded to each other in spaces
between the elements, the resiliently compressible elements having a size
and being spaced from each other to provide an element density of from 250
to 8000 elements/m2 to provide a resiliently compressible protective
material.

61. A garment which includes protective resiliently compressible
material, the protective resiliently compressible material comprising:
a first resiliently stretchable knitted fabric substrate;
a plurality of separate resiliently compressible foam elements having a top
surface and a bottom surface, the top and bottom surfaces of the plurality of
separate resiliently compressible foam elements in a top and bottom array in
which the adjacent elements are spaced apart about 2 mm, the top array
adhesively bonded to the first resiliently stretchable knitted fabricsubstrate,
the spaced apart elements provided by cutting a sheet of foam completely
through; and
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a second resiliently stretchable knitted fabric substrate adhesively
bonded to the bottom array of bottom surfaces, the fabric substrates
overlying the top and bottom arrays in an adhesively affixed and abutting
relation, adjacent resiliently compressible foam elements in the arrays
spaced apart from each other with the fabric substrates not bonded to each
other in spaces between the elements, the resiliently compressible foam
elements having a size and being spaced from each other to provide an
element density of from 250 to 8000 elements/m2 to provide the protective
resiliently compressible material and garment, one of the knitted fabric
substrates adapted to be adjacent the surface of a person wearing the
garment and the garment which includes the protective resiliently
compressible material effective for providing protection to a person wearing
the garment from knocks and injury.

62. A resiliently compressible material which includes:
a first resiliently stretchable knitted fabric substrate;
a plurality of separate resiliently compressible foam elements having a
top surface and a bottom surface, the top and bottom surfaces of the plurality
of separate resiliently compressible foam elements in a top and bottom array
in which the adjacent elements are spaced apart about 2 mm, the top array
adhesively bonded to the first resiliently stretchable knitted fabric substrate,
the spaced apart elements provided by cutting a sheet of foam completely
through; and
a second resiliently stretchable knitted fabric substrate adhesively
bonded to the bottom array of bottom surfaces, the fabric substrates
overlying the top and bottom arrays in an adhesively affixed and abutting
relation, adjacent resiliently compressible foam elements in the arrays
spaced apart from each other with the fabric substrates not bonded to each
other in spaces between the elements, the resiliently compressible foam
elements having a size and being spaced from each other to provide an
element density of from 250 to 8000 elements/m2 to provide a resiliently
compressible material, one of the substrates adapted to be adjacent the
surface of a person wearing the resiliently compressible material and the
resiliently compressible material effective for providing protection to the
person wearing it from knocks and injury.

In support of unpatentability of the appealed subject matter, the
Examiner relies upon the following evidence (Ans. 4-5):
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Habib US 3,285,768 Nov. 15, 1966
Balliet US 3,404,406 Oct. 8, 1968
Edelson US 3,465,364 Sep. 9, 1969
Sawatzki US 4,538,301 Sep. 3, 1985
Krent US 5,168,576 Dec. 8, 1992
Farrell US 6,295,654 B1 Oct. 2, 2001

Appellant seeks review of the following grounds of rejection set forth
by the Examiner at pages 3 through 9 of the Answer:
1) Claims 35, 36, 40 through 42, 49, 55 through 57, 60, 73, and 743
under 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of
Habib, Sawatzki, Balliet, and Farrell;
2) Claims 37 through 39, 43, and 44 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Habib, Sawatzki, Balliet,
Farrell, and Krent;
3) Claims 61 through 64, 68, 69, 71, and 72 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Habib, Sawatzki, Balliet,
Farrell, and Edelson; and
4) Claims 65 through 67 and 70 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Habib, Sawatzki, Balliet,
Farrell, Edelson, and Krent. (See App. Br. 12 and Reply Brief (“Reply Br.”)
filed February 16, 2012, 1.)

3 The Examiner, at page 3 of the Answer, identifies claim 74, in addition to
the other pending claims, as a rejected claim. Although the Examiner does
not provide any reason for rejecting claim 74 in the Answer, Appellant
asserts at page 3 of the Appeal Brief that the Examiner agreed that claim 74
was rejected “on grounds similar to that of the rejection of claims 56 and
70.” Appellant then goes onto include claim 74 in this rejection as if it is
rejected on the same ground as claims 56 and 70. (See App. Br. 12.) Thus,
we will presume that claim 74 is included in this rejection.
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DISCUSSION
The Examiner has correctly found that Habib describes a polyurethane
foam backed fabric useful for outerwear insulation garments, comprising a
first flexible, resilient fabric portion and a plurality of separate resiliently
compressible polyurethane foam elements spaced apart from one another,
with their top surfaces bonded to the first fabric portion.4 (See Ans. 5 and
Habib, col. 1, ll. 10-30.) However, as acknowledged by the Examiner at
pages 5 through 7 of the Answer, Habib does not teach, inter alia,
employing “a second resiliently stretchable fabric portion overlying and
bonded to the bottom surfaces [of the polyurethane foam elements], [with]
the bonded surfaces holding the [polyurethane foam] elements in spaced
apart relation …[and] the first and second fabric portions not bonded to each
other between the [foam] elements” and “250 to about 8000 [foam]
elements/m2” or “4000 to about 6000 [foam] elements/m2” between the first
and second fabric portions as required by claims 35, 40, 56, 61, and 62.
To remedy the above deficiencies of Habib, the Examiner relies upon
Sawatzki for employing a second elastic fabric portion, Balliet for
adhesively bonding the bottom and top surfaces of foam elements to the first
and second fabric portions without bonding the first fabric portion to the
second fabric portion, and Farrell for providing 100 to 8000 foam elements/
m2 between two resilient, stretchable fabrics. (See Ans. 6-7.) On the other
hand, Appellant contends that the Examiner has not demonstrated that the

4 Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more
weight to prior publications than to subsequent conclusory statements by
experts [in a declaration], the Board acted well within [its] discretion.”).

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collective teachings of Habib, Sawatzki, Balliet, and Farrell would have led
a person having ordinary skill in the art to arrive at the claimed subject
matter. (See App Br. 26.)
Thus, the dispositive question raised here is: Has the Examiner
demonstrated that the collective teachings of Habib, Sawatzki, Balliet, and
Farrell would have led a person having ordinary skill in the art to employ the
second elastic fabric and the number of foam elements per m2 recited in
claims 35, 40, 56, 61, and 62 in the manner claimed to modify Habib’s foam
backed fabric useful for outerwear insulation garments to arrive at the
claimed subject matter within the meaning of 35 U.S.C. § 103(a)? On this
record, we answer this question in the negative.
It is well settled that “[a] patent composed of several elements is not
proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 418-19 (2007). There must be some apparent reason that would
have prompted one of ordinary skill in the art to combine the elements to
arrive at the claimed subject matter. Id. The Examiner has the initial burden
of supplying such reason for establishing a prima facie case obviousness
under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(“[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.”)
Here, as correctly pointed out by Appellant at pages 16 through 21 of
the Appeal Brief, Sawatzki, Balliet, and Farrell do not indicate that the
certain aspects of their features relied upon by the Examiner are useful for
the outerwear insulation garments of the type described in Habib. Nor do
they teach or suggest not bonding first and second fabrics between
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compressible foam elements as required by independent claims 35, 40, 56,
61, and 62. Id. Sawatzki, for instance, teaches a protective device for a
body sensitive to impacts or blows from a certain direction, comprising a
stratus corresponding to the claimed first fabric portion joined to a plurality
of compressible elements and an elastic protective layer corresponding to the
claimed second fabric portion not joined to the compressible elements but is
joined to the stratus corresponding to the claimed first fabric portion for the
purpose of retaining the flexibility to one side. (See App. Br. 16-17 and
Sawatzki, col. 1, ll. 5-27 and col. 5, ll. 1-35.) Similarly, Farrell teaches a
protective garment for contact sports, wherein two resilient fabric layers are
bonded to one another and bonded to the top and bottom surfaces of
protective elements. (See App. Br. 20-21 and Farrell, col. 1, ll. 15-18, col. 3,
ll. 25-45, and col. 4, ll. 12-32.) Although Balliet is directed to an insulation
garment, it is directed to a special underwarter insulation garment having a
different purpose than the one taught by Habib. (See App. Br. 18-19 and
Balliet, col. 1, ll. 10-16 and col. 3, ll. 43-74.) In particular, Balliet teaches
employing “a continuous flexible outer skin within which is a cellular core
material possessing low thermal conductivity and which is substantially
incompressible at great depths” to form “[a] thermally insulated underwater
garment.” (See col. 1, ll. 10-16.)
Accordingly, the Examiner, on this record, has not proffered a
sufficient factual basis and explanation to support a conclusion that one of
ordinary skill in the art would have been led to select only certain features of
Sawatzki’s and Farrell’s protective device or protective clothing for contact
sports and only certain features of Balliet’s underwater insulation garment to
modify the outerwear insulating garments of the type described in Habib to
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arrive at the claimed subject matter within the meaning of 35 U.S.C. §
103(a). See also In re Beattie, 974 F.2d 1309, 1311-12 (Fed. Cir.
1992)(emphasis added)(“When determining the patentability of a claimed
invention which combines…known elements, the question is whether there
is something in the prior art as a whole to [teach or] suggest…[such]
combination.”)
Because the Examiner’s reasoning as to the independent claims
is not sufficient, it follows that the same reasoning is likewise
insufficient for the dependent claims. We need not discuss any of the
other prior art references relied upon by the Examiner because they
have not been applied to remedy the above discussed deficiencies of
Habib.
For these reasons, we cannot sustain any of the Examiner’s
§ 103(a) rejections.
CONCLUSION
In view of the foregoing, the decision of the Examiner is reversed.

REVERSED

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