Ex Parte Ueno et al

Patent Trials and Appeals Board

Apr 3, 2019

12531817 - (D) (P.T.A.B. Apr. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/531,817 09/17/2009
23122 7590
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
04/05/2019
FIRST NAMED INVENTOR
Masaru Ueno
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TOR-141US 2936
EXAMINER
PIERCE, JEREMY R
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
04/05/2019 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASARU UENO, Y ASUHIRO ISHIKURA, and
T AKAAKI TAGUCHI
Appeal2018-006166
Application 12/531,817
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to fmally reject claims 4, 6, 8, and 9. We have
jurisdiction over this appeal under 35 U.S. C. § 6(b ).
We AFFIRM.
1 Appellants identify Toray Industries, Inc. as the real party in interest.
Appeal Brief filed November 27, 2017 ("App. Br."), 2.
Appeal 2018-006166
Application 12/531,817
STATEMENT OF THE CASE
Independent claim 4 illustrates the subject matter on appeal and is
reproduced below with italics added to highlight contested subject matter:
4. A stretch sheet including
woven or knitted material including thread composed of
a composite fl ber such that two kinds or more of polyethylene
terephthalate polymers different in intrinsic viscosity are stuck
together in a side-by-side type along the fiber length direction
and/or of a core-in-sheath type composite fiber such that two
kinds or more of polyethylene terephthalate polymers different
in intrinsic viscosity form an eccentric core-in-sheath structure,
an ultra fme fiber with an average single fiber fmeness of
0.001 dtex or more and 0.5 dtex or less, and
an elastomer having polyurethane as a main component,
in which the thread composing woven or knitted material
has a structure having a cavity in its inside,
wherein the cavity is formed by heating under a condition
of 110°C or more,
wherein the elastomer is partially joined to the thread
having a cavity when being joined to the thread and a gelation
point of the polyurethane is 2.5 ml or more and 6 ml or less;
and
a napped surface is formed and a fiber of the woven or
knitted material is exposed to a surface of the stretch sheet,
wherein the content of the polyurethane is 10% by weight
or more and 40% by weight or less with respect to the total
weight of the ultra fme fiber and the woven or knitted material.
App. Br. 14--15 (Claims Appendix) (emphasis and spacing added).
The Examiner sets forth the following rejections in the Final Office
Action entered June 15, 2017 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered March 28, 2018 ("Ans."):
I. Claims 4, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable
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overTanaka2 in view ofHoriguchi3 and Yakake4; and
II. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Tanaka
in view of Horiguchi, Yakake, and Hanaoka et al., US 2004/0241346 Al,
published December 2, 2004.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we affrrm the Examiner's rejections of
claims 4, 6, 8, and9under35U.S.C. § 103(a)forthereasonssetforthin the
Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellants provide for each ground of rejection
the Appellants contest. 37 C.F.R. § 41.37( c )(1 )(iv); Ex parte Frye, 94
USPQ2d 1072, 107 5 (BP AI 2010) (precedential) ( cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the
examiner had failed to make a prima facie case, "it has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections")).
2 Tanaka et al., US 2005/0118394 Al, published June 2, 2005.
3 Horiguchi et al., WO 2006/013804, published February 9, 2006.
Appellants do not contest the Examiner's reliance on Horiguchi et al., US
2009/0130371 Al, published May 21, 2009, as an English equivalent of the
international application. Citations to "Horiguchi" in this decision thus refer
to the published US application.
4 Yakake, WO 2005/095706, published October 13, 2005. Appellants do
not contest the Examiner's reliance on Yakake et al., US 2007/0197116 Al,
published August 23, 2007, as an English equivalent of the international
application.
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Rejections I and II
Appellants argue claims 4, 6, 8, and 9 together on the basis of claim 4,
to which we accordingly limit our discussion. App. Br. 3-12; 37 C.F.R.
§ 41.37( C )(1 )(iv).
Tanaka discloses an artificial leather sheet substrate comprising at
least one nonwoven fabric layer A, a knitted or woven fabric layer B, and an
elastic polymer C. ,r 17. Tanaka discloses that the nonwoven fabric layer A
is formed of microfine fibers having a single fiber fineness of 0. 0003 to 0.4
dtex. ,r 18. Tanaka discloses that suitable elastic polymers for the elastic
polymer component C include urethane polymers, and Tanaka discloses that
the elastic polymer is preferably 5% to 45% by mass of the artificial leather
sheet substrate. ,r,r 39, 75. Tanaka discloses that the knitted or woven fabric
layer B is formed of randomly and slightly crimped microfme filaments. ,r
19. Tanaka discloses that "conventionally used knitted or woven fabrics
made of hard twist fibers are not suitable" for use in the knitted or woven
fabric layer B, and Tanaka explains that "preferably usable is a knitted or
woven fabric made of raw fibers having a twist number of 10 to 650
twists/m." ,r 61.
The Examiner fmds that "Tanaka does not disclose that the woven or
knitted fabric layer comprises a composite fiber using two kinds or more of
polyethylene terephthalate polymers different in intrinsic viscosity in a side-
by-side or eccentric core-sheath relation," and the Examiner relies on
Horiguchi for suggesting this feature. Final Act. 3--4.
Horiguchi discloses a leather-like sheet in which a nonwoven fabric A
is laminated to a woven or knitted fabric B comprising a conjugate fiber in
which two or more polyesters are adhered side-by-side or in an eccentric
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sheath-core relationship. ,r,r 10, 22. Horiguchi discloses that the nonwoven
fabric A comprises ultra-fme fibers having an average single fiber fmeness
of about 0.0001 to about 0. 5 dtex. ,r 20. Horiguchi discloses that the
conjugate fiber used for the woven or knitted fabric B is formed of a
combination of a low intrinsic viscosity polyester and a high intrinsic
viscosity polyester that exhibits a higher heat shrinkage than the low
viscosity polyester. ,r 23. Horiguchi discloses that this difference in heat
shrinkage results in development of a crimp in the conjugate fiber when the
fiber is subjected to a relaxation (heat) treatment. ,r,r 23, 73. Horiguchi
discloses that the fibers of the conjugate fiber constitute a multi-filament,
and a group of the multi-filaments forms a spiral structure with a hollow
center space along the length direction. ,r 27. Horiguchi discloses that "to
obtain this preferable structure," the twist number of the multi-filament
should be about 500 to about 3000 T Im (twists/m). ,r 28. Horiguchi
discloses that the woven or knitted fabric B imparts an excellent repulsive
feeling (or hand feel) to Horiguchi's leather-like sheet. ,r,r 10, 22, 27.
The Examiner concludes that it would have been obvious to one
ordinary skill in the art at the time of Appellants' invention to use the
conjugate fiber disclosed in Horiguchi in the woven or knitted layer B of
Tanaka's artificial leather sheet substrate because Horiguchi discloses that
such a conjugate fiber is suitable for use in a woven or knitted layer of a
multi-layered artificial leather composite, particularly when combined with a
nonwoven layer A ofultrafme fiber having a dtex of less than 0.5, and the
conjugate fiber imparts improved hand feel to a leather-like sheet. Final
Act. 4.
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Appellants argue that the "materials disclosed by Tanaka and
Horiguchi take divergent paths with respect to both the fibers used and the
structure ofthematerials"-forthe reasons discussed below-and,
therefore, one of ordinary skill in the art would not have had a "reason to
combine the teachings of Tanaka and Horiguchi as suggested by the
Examiner," and would not have had a "reasonable expectation of success
when combining individual elements in the divergent teachings of Tanaka
and Horiguchi when those elements are specifically selected to satisfy the
needs of the specific combination of elements in which they are used." App.
Br. 8, 11-12.
As to the "divergent paths" of the materials disclosed by Tanaka and
Horiguchi, Appellants argue that Horiguchi expressly disparages use of
polymer elastomers such as polyurethane in a leather-like sheet, but in
contrast, Tanaka discloses including an elastic polymer such as urethane in
Tanaka's artificial leather sheet. App. Br. 8. Appellants also argue that
Tanaka expressly teaches that a conjugate fiber as disclosed in Horiguchi is
unsuitable for use in Tanaka's artificial leather sheet because "Tanaka
teaches that knitted or woven fabrics made of hard twist fibers are not
suitable," and expressly states that the fibers constituting the knitted or
woven fabric layer B of Tanaka's artificial leather sheet have random and
slight crimps. App. Br. 8-11.
Appellants' arguments are unpersuasive of reversible error in the
Examiner's rejection of claim 4 for reasons discussed below.
We first address Appellant's argument that Horiguchi disparages use
of polymer elastomers such as polyurethane in a leather-like sheet, while
Tanaka discloses including a urethane polymer in Tanaka's artificial leather
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sheet. Although Horiguchi describes numerous drawbacks of including
polymer elastomers such as polyurethane in leather-like sheets (,r,r 4--8), as
discussed above, Horiguchi discloses that the conjugate fiber described in
the reference in which two polyesters having different intrinsic viscosities
are adhered side-by-side, or in an eccentric sheath-core relationship, imparts
excellent hand feel to a leather-like sheet. One of ordinary skill in the art
would have understood that forming an artificial leather sheet substrate as
disclosed in Tanaka, which includes an elastic polymer, using the conjugate
fiber disclosed in Horiguchi for the fibers of the woven or knitted layer B of
the artificial leather sheet substrate, would have both advantages and
disadvantages. Nonetheless, any disadvantages of forming such an artificial
leather sheet substrate due to the presence of the elastic polymer would not
negate Horiguchi's explicit disclosure that the conjugate fiber imparts
excellent hand feel, thus providing a reason to utilize such a conjugate fiber
in the woven or knitted layer B of an artificial leather sheet as disclosed in
Tanaka, which one of ordinary skill in the art reasonably would have
expected would successfully impart excellent hand feel. See Allied Erecting
& Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381
(Fed. Cir. 2016) ("Although modification of the movable blades may impede
the quick change functionality disclosed by Caterpillar, ' [a] given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine."' (quotingMedichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006))); Winner Int'l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
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the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another"); see also In re Kubin, 561 F.3d 1351, 1360
(Fed. Cir. 2009) ("[ o ]bviousness does not require absolute predictability of
success ... all that is required is a reasonable expectation of success.")
(emphasis omitted, citing In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988)).
We next address Appellants' argument that Tanaka expressly teaches
that the conjugate fiber disclosed in Horiguchi is unsuitable for use in
Tanaka's artificial leather sheet because "Tanaka teaches that knitted or
woven fabrics made of hard twist fibers are not suitable," and Tanaka
discloses that the fibers of the knitted or woven fabric layer B of Tanaka's
artificial leather sheet have random and slight crimps. App. Br. 11.
Although Tanaka does disclose that hard twist fibers are not suitable
for use in the knitted or woven fabric layer B of Tanaka's artificial leather
sheet substrate, Tanaka discloses that the knitted or woven fabric layer B is
"made of raw fibers having a twist number of 10 to 650 twists/m." ,r 61. As
discussed above, Horiguchi discloses that the twist number of the multi-
filament conjugate fibers of the woven or knitted fabric B ofHoriguchi's
leather-like sheet is about 500 to about 3000 twists/m. Thus, as the
Examiner fmds (Ans. 8), one of ordinary skill in the art would have
recognized that Horiguchi' s conjugate fiber having a twist number of about
500 to about 3000 twists/m would be suitable for use as the fiber of
Tanaka's knitted or woven fabric layer B because the twist number of
Horiguchi's conjugate fiber overlaps the range disclosed in Tanaka as
suitable for the fibers of Tanaka's knitted or woven fabric layer B.
Accordingly, contrary to Appellants' arguments, Tanaka does not teach that
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the twist number of Horiguchi' s conjugated fiber renders the conjugated
fiber unsuitable for use in the knitted or woven fabric layer B of Tanaka's
artificial leather sheet substrate.
Therefore, considering the totality of the evidence relied upon in this
appeal, a preponderance of the evidence weighs in favor of the Examiner's
conclusion of obviousness. We accordingly sustain the Examiner's
rejections of claims 4, 6, 8, and 9 under35 U.S.C. § 103(a).
DECISION
We affrrm the Examiner's rejections of claims 4, 6, 8, and 9 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C. F. R. § 1. 13 6( a).
AFFIRMED
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