Ex Parte Wu et al

Board of Patent Appeals and Interferences

Jun 4, 2009

10104725 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAI-CHUAN WU,
DALE EUGENE ROBINSON,
and RICHARD ARNOLD BRADFORD
____________

Appeal 2009-001601
Application 10/104,7251
Technology Center 1700
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Decided:2 June 4, 2009
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Before EDWARD C. KIMLIN, MARK NAGUMO, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

1 Application 10/104,725, Breathable and Elastic Composite Materials and
Methods, filed 22 March 2002. The Specification is referred to as the
“725 Specification,” and is cited as “Spec.” The Real Party in Interest is
listed as Clopay Plastic Products Company, Inc. (Revised Appeal Brief,
filed 15 October 2007 (“Br.”), 1.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001601
Application 10/104,725

DECISION ON APPEAL
A. Introduction
Pai-Chuan Wu, Dale Eugene Robinson, and Richard Arnold Bradford
(“Wu”) timely appeal under 35 U.S.C. § 134(a) from the final rejection3 of
claims 1-24 and 38-64. Claims 25-37, the other pending claims, have been
withdrawn from consideration by the Examiner. We have jurisdiction under
35 U.S.C. § 6. We AFFIRM-IN-PART.
The subject matter on appeal relates to breathable elastic composite
materials made of an elastomeric film extrusion laminated on at least one
side to a nonwoven web. The composite film is then subjected to
“incremental stretching,” which is said to result in “macroholes” about 5 μm
to about 100 μm in diameter randomly located in the film. A critical aspect
of the invention is said to be the substantial absence of “pore-forming filler”
in the elastomeric film.
Representative Claim 21 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
21. A breathable, incrementally stretched elastic composite
material, comprising
an elastomeric film extrusion-laminated to a nonwoven
web at one or both of the film surfaces,
wherein the elastomeric film has a random pattern of
incremental stretch-formed macroholes having an
average diameter of from about 10 μm to about 100 μm
therein, and

3 Office action mailed 21 August 2006 (“Final Rejection”; cited as “FR”).
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Application 10/104,725

wherein the elastic film contains an insufficient amount
of pore-forming filler to render the film microporous
upon incremental stretching due to microvoid formation
adjacent the filler.
(Claims App., Br. 31; paragraphing and indentation added.)
Independent claims 1 and 17 are similar, but both require that a
nonwoven web be laminated to both surfaces of the elastomeric film; and
claim 17 specifies the composition of the elastomeric film and the nonwoven
layers. Independent claims 62-64 correspond to claims 1, 17, and 21,
respectively, and specify that the elastomeric film contains less than about
20 weight percent of pore-forming filler.
The Examiner has maintained the following grounds of rejection:4
A. Claims 1-8, 11-24, 38-52, and 62-64 stand rejected under
35 U.S.C. § 102(e), alternatively under 35 U.S.C. § 103(a), in
view of Walton.5
B. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Walton and Mackay.6
C. Claims 53, 56, and 59 stand rejected under 35 U.S.C. § 103(a)
in view of Walton.
D. Claims 1, 17, 21, and 53-64 stand rejected under
35 U.S.C. § 102(e), alternatively under 35 U.S.C. § 103(a), in
view of Bruce.7

4 Examiner’s Answer mailed 18 December 2007. (“Ans.”).
5 Glynis Allicia Walton et al., Styrenic Block Copolymer Breathable
Elastomeric Films, U.S. Patent 6,794,024 B1 (21 September 2004), based on
an application filed 25 October 2000.
6 John H. Mackay, Process for Producing Polyolefin Microporous
Breathable Film, U.S. Patent Application Publication US 2001/0042938 A1
(22 November 2001), which claims the benefit under 35 U.S.C. § 120 of an
application filed 14 October 1999.
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Application 10/104,725

With respect to the rejections based on Walton, Wu argues, inter alia,
that Walton neither teaches nor suggests the claimed subject matter because
Walton requires the presence of a pore-forming filler. (Br. 9-10.)
With respect to the rejection based on Bruce, Wu argues that the
evidence of record, namely a Declaration submitted by Dr. Pei-Chuan Wu,
one of the inventors, “establishes that mechanical perforating techniques as
employed by Bruce typically form holes or apertures having an average
diameter of 200 μm or significantly greater.” (Br. 19.)
B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
1. Elastic sheets laminated to nonwoven webs are said to provide a soft
feel. (Spec. 1, ll. 17-20.)
2. According to the 725 Specification, breathable elastic films are
typically provided, with difficulty, by mechanical microvoids formed by hot
needle punching and similar processes, and by adding pore-forming fillers
such as calcium carbonate to the polymer followed by stretching of the films
to form microvoids in areas next to the filler. (Spec. 2, ll. 1-10.)
3. The 725 Specification defines the term “breathable” as “exhibit[ing]
air permeability.” (Spec. 4, ll. 20-21.)
7 Stephen D. Bruce et al., Breathable Elastic Laminates, WO 00/23273
(1999).
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Application 10/104,725

4. The term “elastic” means “stretchable under force and recoverable to
an original or essentially original form upon release of the stretching force.”
(Spec. 5, ll. 2-4.)
5. The term “incrementally stretched” means that “the composite
material includes alternating stretched zones and non-stretched zones across
its length.” (Spec. 5, ll. 10-12.)
6. Films may be incrementally stretched by passing them through a pair
of intermeshing gear-like elements mounted on parallel shafts. (Spec. 12,
ll. 16-17.)
7. Incremental stretching is said to be applied in the cross direction
(perpendicular to the travel direction of the film) (Spec. 12, ll. 15-16), but
may also be applied in the machine direction (id. at 14, ll. 7-12.)
8. According to the 725 Specification, “extrusion lamination tightly
bonds the elastomeric film to the nonwoven web or webs,” meaning that the
elastomeric film cannot be peeled apart from the nonwoven web. (Spec. 6,
ll. 5-8.)
9. In the words of the 725 Specification, “[a]s a result of the tight
bonding between these layers of the composite material, fibers from the
nonwoven web are embedded into the film and, upon incremental stretching,
a random pattern of macroholes or pinholes is produced in the elastomeric
film to render the composite materials breathable.” (Spec. 6, ll. 10-14.)
10. The 725 Specification states that “it is not necessary to include any
type of pore-forming filler in the elastomeric film.” (Spec. 9, ll. 19-20.)
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11. In specific embodiments, the elastomeric film of the invention is said
to contain less than about 20 weight percent pore-forming filler, and in other
embodiments, less than about 10, less than about 5, and less than
about 1 weight percent of the pore-forming filler. (Spec. 9, l. 25 through 10,
ll. 4.)
12. The 725 Specification states that the term “substantially free of pore-
forming filler” means that “the elastomeric film contains an insufficient
amount of pore-forming filler to render the film microporous upon
incremental stretching due to microvoid formation adjacent the filler.”
(Spec. 9, ll. 22-25.)
13. Walton describes films said to have “high breathability and high
elastic stretch and recovery which is capable of high biaxial stretching.”
(Walton, col. 3, ll. 1-3.)
14. According to Walton, such breathable films are provided by “blending
or compounding a high performance elastomer with a low performance
elastomer, at least one of which is filled with particles suitable for pore
formation upon stretching of the film.” (Walton, col. 3, ll. 41-43.)
15. Walton describes fillers as materials that will not chemically interfere
with or adversely affect the film, having “irregular shapes with average
particle sizes of about 0.50 to about 8 microns.” (Walton, col. 8, ll. 57-63.)
16. Filled films of the invention are said to usually contain in the range of
about 10 to 65 weight percent filler based on the total weight of the film
layer. (Walton, col. 8, ll. 63-67.)
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17. According to Walton, stretch-thinning such a film forms “a plurality
of micropores throughout the stretch-thinned film.” (Walton, col. 3,
ll. 55-57.)
18. Bruce describes laminates of elastic film and nonwoven material
having high water vapor transmission rates (“WVTR”) made by a lamination
process that contemporaneously perforates the laminate, “rendering the
laminate both stretchable and breathable.” (Bruce, 3, ll. 2-3 and ll. 11-15.)
19. According to Bruce, perforation may be accomplished by needles,
ultrasound, heat, and the like. (Bruce, 3, l. 23 to 4, l. 1.)
20. Fusion lamination is said to be preferred, “wherein energy
concentrated in small areas (approximately 10 × 10 μm) causes the layers of
non-woven fabric and elastic film to fuse, along with creating a microvoid.”
(Bruce, 8, ll. 14-17.)
21. Lamination processes in addition to fusion lamination are said to
include heat lamination, thermo-mechanical bonding, and hot needle
lamination. (Bruce, 11, ll. 3-5.)
22. Hot needle lamination is said to be exemplified in the Examples
sketched in Figures 1A through 1D. (Bruce, 9, l. 20, through 10, l. 10.)
23. According to Bruce, the average peel force required to separate the
layers is greater than about 150 g/m2, most preferably greater than about
300 g/m2. (Bruce, 8, ll. 22-23.)
24. Dr. Pai-Chuan Wu testifies that “[t]he term ‘mechanical microvoids’
is typically used to describe apertures which are formed by hot needle
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Application 10/104,725

punching, hot roll calendaring, ultrasonic perforation, laser aperturing, or the
like.” (Wu Declaration, 2, ¶ 5.)
25. In Dr. Wu’s words, “[w]hile the term ‘mechanical microvoids’ does
not per se indicate to one skilled in the art the size of the holes which are
formed, thee mechanical techniques are known in the art to form apertures
having sizes of about 200μm or greater.” (Wu Declaration, 2, ¶ 5.)
26. Wu provides copies of SEM micrographs said to show a hot needle
punched film and a laser apertured film in Figures 1 and 2 in the
Declaration. (Wu Declaration, 3-4, ¶ 6.)
27. Figure 1 of the Wu Declaration shows a fine white roughly elliptical
outline against a black background, and a scale bar labeled “400 μm” in the
lower left corner. (Wu Declaration, 3, ¶ 6.)
28. Figure 2 of the Wu Declaration shows two or three fine white roughly
elliptical outlines against a black background, and a scale bar labeled
“400 μm” in the lower left corner. (Wu Declaration, 4, ¶ 6.)
29. The 400 μm scale bar is comparable to the minor axis of the structures
visible in the Figures.
30. According to the Wu Declaration, the film is a composite of a linear
low density polyethylene film and a styrene-isoprene-styrene block
copolymer about 4 μm+ 65 μm thick. (Wu Declaration, 3, ¶ 6.)
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31. Dr. Wu refers to U.S. Patent 5,422,1728 as “Wu '172,” and states that
the techniques and results described in the Wu Declaration are comparable
to those used in the Wu '172 patent. (Wu Declaration, 4, ¶ 7.)
32. The Wu Declaration does not describe the diameter of the hot needle
punch or the diameter of the laser beam used to make the microvoids.
33. The Wu Declaration does not describe or refer to the Bruce
publication.
C. Discussion
As the Appellant, Wu bears the procedural burden of showing harmful
error in the Examiner’s rejections. See, e.g., Gechter v. Davidson, 116 F.3d
1454, 1460 (Fed. Cir. 1997) ("[W]e expect that the Board's anticipation
analysis be conducted on a limitation by limitation basis, with specific fact
findings for each contested limitation and satisfactory explanations for such
findings.") (emphasis added).
The independent claims on appeal all contain the requirement that the
elastic film be substantially free of pore-forming filler: “wherein the elastic
film contains an insufficient amount of pore-forming filler to render the film
microporous upon incremental stretching due to microvoid formation
adjacent the filler.” (Claim 21). Walton requires fillers to make breathable
films. (See, e.g., Walton, col. 3, ll. 41-43.) Although the Examiner takes the
position “that Walton’s film contains ‘an insufficient amount [of filler to
render the film microporous]’” (FR 3), the Examiner has not directed our

8 Pai-Chuan Wu, Elastic Laminated Sheet of an Incrementally Stretched
Nonwoven Fibrous Web and Elastomeric Film and Method, U.S. Patent
5,422,172 (1995), based on an application filed in 1993.
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attention to a film described by Walton as being “breathable” that does not
have enough filler to form “a plurality of micropores throughout the stretch-
thinned film.” (Walton, col. 3, ll. 55-57.) Indeed, a film without sufficient
filler is one that Walton would characterize as not being within the scope of
its invention. Nor has the Examiner directed our attention to a film
described by Walton prepared in a manner that would indicate that, more
likely than not, it is breathable, despite not having filler particles sufficient
to induce void formation. Thus, the Examiner’s reliance on Wu’s disclosure
that, in some embodiments, a film may have as much as 20 weight percent
filler, and not have “macroholes” due to the filler, and on Walton’s
disclosure that, in some embodiments, a film may have as little as 10 weight
percent filler, and still have “micropores,” is error. The Examiner assumed,
without credible supporting evidence, that Walton’s films shared common
members with Wu’s films.
The remaining rejections involving Walton do not correct these
fundamental flaws.
The rejection over Bruce stands differently. Wu does not dispute that
Bruce describes films that, although not made in the same way, meet the
compositional limitations of the rejected claims, and that are “breathable.”
The Wu Declaration does not establish that the methods used by Bruce,
which was filed in 1998, were the same or substantially the same as the
methods used in Wu’s earlier patent, Wu '172, which was filed in 1993. Nor
does the Wu Declaration establish that the needles or laser beams used to
make the holes illustrated in Figures 1 and 2 concentrated energy in
approximately 10 × 10 μm areas. We, therefore, have no reasonable basis to
find that the holes made by Bruce, more likely than not, have sizes
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comparable to those shown in the Wu Declaration. It is settled law that
“[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
The practice is fair because, “[a]s a practical matter, the Patent Office is not
equipped to manufacture products by the myriad of processes put before it
and then obtain prior art products and make physical comparisons
therewith.” In re Brown, 459 F.2d 531, 535 (CCPA (1972).
On the present record, we conclude that Wu has not carried the burden
of coming forward with evidence showing that Bruce is, like Wu '172,
distinguished from the presently claimed breathable laminates.
D. Order
We REVERSE the rejection of claims 1-8, 11-24, 38-52, and 62-64
under 35 U.S.C. § 102(e), alternatively under 35 U.S.C. § 103(a), in view of
Walton.
We REVERSE the rejection of claims 9 and 10 under
35 U.S.C. § 103(a) in view of the combined teachings of Walton and
Mackay.
We REVERSE the rejection of claims 53, 56, and 59 under
35 U.S.C. § 103(a) in view of Walton.
We AFFIRM the rejection of claims 1, 17, 21, and 53-64 under
35 U.S.C. § 102(e), alternatively under 35 U.S.C. § 103(a), in view of Bruce.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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