Ex Parte Wang et al

Board of Patent Appeals and Interferences

Mar 15, 2012

10785445 (B.P.A.I. Mar. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/785,445 02/24/2004 Yunzhang Wang 5602 8505
7590 03/15/2012
Brenda D. Wentz
Legal Department, M-495
PO Box 1926
Spartanburg, SC 29304
EXAMINER
MATZEK, MATTHEW D
ART UNIT PAPER NUMBER
1786
MAIL DATE DELIVERY MODE
03/15/2012 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 YUNZHANG WANG, DANIEL T. MCBRIDE, and
RANDOLPH S. KOHLMAN
____________

Appeal 2010-002754
Application 10/785,445
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
DEBORAH KATZ, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

Appeal 2010-002754
Application 10/785,445

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DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision
finally rejecting claims 1-5, 8-27, 32, 33, and 40-45. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the claimed subject matter1:
1. A fiber-containing substrate with a first surface and a second
surface having integral microscopic surface structures upon at least a
portion of at least one of its surfaces, wherein said integral
microscopic surface structures have projections substantially
normal to the plane of said fiber-containing substrate, said at least one
surface comprised of:

(a) portions having a plurality of substantially unbroken fibers
comprising surface structures along at least part of the length of said
fibers, and wherein said fibers have a Roughness Factor greater than
or equal to about 1.10; and

(b) a repellent component selected from the group consisting of
fluorocarbon-containing chemicals, silicones, waxes, and
combinations thereof; and wherein said integral microscopic surface
structures are achieved through exposure of the fiber-containing
substrate to mechanical face-finishing which utilizes diamond grit
having an average grit size of from about 600 to about 1200.

The Examiner maintains, and Appellants request review of, the following
grounds of rejection under 35 U.S.C. §103(a) (Br. 4):

1 The remaining independent claims 32, 40, and 44 all similarly recite a fiber
containing substrate having: “portions having a plurality of substantially unbroken
fibers”, “a Roughness Factor greater than or equal to about 1.10”, “a repellent
component”, and that are prepared via a finishing process that “utilizes diamond
grit having an average grit size of from about 600 to about 1200.”
Appeal 2010-002754
Application 10/785,445

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1. claims 1-5, 8-27, 32 and 33 as unpatentable over Otto (US 4,316,928, issued
Feb. 23, 1982) in view of Nun (US 2003/0013795 A1, published Jan. 16, 2003);
2. claims 40-45 as unpatentable over the combined prior art of Otto, Nun, and
Morrison (US 4,343,853, issued Aug. 10, 1982).
Appellants’ arguments in support of patentability are directed to limitations
common to the independent claims. (See Br. 4-10; e.g., Ans. 5.) We therefore
focus on discussion on claim 1 as representative.
Main Issues on Appeal
Did the Examiner reversibly err in determining that the fiber-containing
substrate of claim 1 would have been obvious because, as alleged by Appellants,
a) “Otto fails to teach the use of diamond grit” (Br. 7), or
b) Otto fails to teach “[portions] having a plurality of substantially unbroken
fibers” (Br. 8), or
c) Otto and Nun are not “from the same field of endeavor” (Br. 8) such that
there is no motivation or apparent reason to combine the references (Br. 9)?
Opinion
We have considered each of the issues raised by Appellants, but are not
convinced of reversible error in the Examiner’s obviousness determination for
substantially the reasons aptly set forth by the Examiner in the Answer, including
the Response to Argument section. We add the following primarily for emphasis.
Claim 1 is directed to the product of a fiber-containing substrate. The
recitation of a “mechanical face-finishing which utilizes diamond grit” is a product
by process limitation. It has been well established that, when a product recited in
product-by-process format reasonably appears to be the same as or obvious from a
product of the prior art, the burden is on applicant to show that the prior art product
Appeal 2010-002754
Application 10/785,445

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is in fact different from the claimed product, even though the products may be
made by different processes. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
We agree with the Examiner that with respect to the product of claim 1,
Appellants have not met their burden to show that mechanical face finishing by the
use of a diamond grit of grit size 600 results in a patentably distinct product over a
product mechanically finished by the use of sandpaper of a grit size of 600 as
exemplified in Otto in a process of preparing the Otto/Nun product (see Ans. 6-9;
generally Br.; no responsive brief has been filed). See In re Thorpe, 777 F.2d at
697. Arguments and conclusions unsupported by factual evidence carry no
evidentiary weight. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Lindner, 457 F.2d 506, 508 (CCPA 1972).2
Likewise, Appellants have not provided any persuasive technical rationale or
evidence to rebut the Examiner’s reasonable position that Otto’s fabric and the
resultant Otto/Nun fabric would possess portions “having a plurality of
substantially unbroken fibers” (see, e.g., Ans. 10), especially as this language
encompasses as few as two portions of undefined areas having as few as two
substantially unbroken fibers.
Appellants’ contention that the ordinary artisan would not have been
motivated to combine Otto and Nun (App. Br. 9) because Nun is non-analogous art
is likewise unavailing. In order for an examiner to rely on a reference as a basis
for rejection, the reference must be “either in the field of the applicant's endeavor
or reasonably pertinent to the problem with which the inventor was concerned.” In
re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006); see also, In re Clay, 966 F.2d 656,

2 It also appears that Appellants are in the best position to provide such evidence as
Otto shares a common assignee with the present case on appeal (that is, Milliken
Research Corporation, now Milliken & Company).
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Application 10/785,445

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658-59 (Fed. Cir. 1992) (A reference in a different field from that of the inventor’s
endeavor is still reasonably pertinent if the matter with which it deals “logically
would have commended itself to an inventor’s attention in considering his
problem.”).
The Examiner pointed out that both Otto and Nun are both directed to the
treatment of fabrics (Ans. 6, 11). In further response to Appellants’ argument, the
Examiner also stated that “[i]t is readily apparent that textile fabrics [such as Otto]
would benefit from becoming self-cleaning [by adding a repellent coating as
exemplified in Nun for umbrellas and other objects] in that they would be soil and
liquid resistant [as taught by Nun]” (Ans. 10-11). Appellants have not explained
why these findings are insufficient to establish that the ordinary artisan would have
considered both Otto and Nun in attempting to provide a textile having self-
cleaning properties (Spec. 1:9-10; noting no responsive brief has been filed).
Appellants have also not explained why the ordinary artisan would not have
possessed the requisite skills to modify Otto’s fabric to be water repellent. An
improvement in the art is obvious if "it is likely the product not of innovation but
of ordinary skill and common sense." KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 421
(2007). See also, Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009) (“hold[ing] that while an analysis of obviousness always
depends on evidence that supports the required Graham factual findings, it also
may include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any reference
or expert opinion.”)
Appellants’ argument that there is no reasonable expectation of success in
combining Otto and Nun (Br. 9-10) are likewise unavailing for reasons set forth by
the Examiner (Ans. 11). “For obviousness under § 103, all that is required is a
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Application 10/785,445

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reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed.
Cir. 1988)(citations omitted); see also, PharmaStem Therapeutics, Inc. v. ViaCell,
Inc., 491 F.3d 1342, 1364 (Fed. Cir. 2007) (quoting Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1367–69 (Fed. Cir. 2007) (“[T]he expectation of success need only be
reasonable, not absolute.”)).
In sum, Appellants’ arguments are not persuasive of error in the Examiner’s
obviousness determination because Appellants have not convincingly shown it was
unreasonable for the Examiner to find that Otto reasonably appears to disclose a
fabric with portions having a plurality substantially unbroken fibers, with a
Roughness Factor as claimed, and to then conclude that one of ordinary skill in the
art would have been motivated to provide a repellent component as exemplified in
Nun to a fabric as exemplified in Otto.
Appellants do not present any further arguments specific to claims 40-45,
and relies upon arguments specific to the first ground of rejection (Br. 11;
“Morrison fail[s] to provide for these deficiencies [of Otto and Nun]”).
Accordingly, we affirm the Examiner’s decision to reject all the claims on
appeal.
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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