INVISTA TECHNOLOGIES S.À R.L.

Patent Trials and Appeals Board

Aug 13, 2021

2020004907 (P.T.A.B. Aug. 13, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/029,360 04/14/2016 Sundar Mohan RAO 008530-1252479-004700US 4162
23342 7590 08/13/2021
Kilpatrick Townsend & Stockton LLP - Winston-Salem
Mailstop: 22 - IP Docketing
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
EMRICH, LARISSA ROWE
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
08/13/2021 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUNDAR MOHAN RAO and JOHN PAUL RYAN
Appeal 2020-004907
Application 15/029,360
Technology Center 1700
Before JEFFREY B. ROBERTSON, GEORGIANNA W. BRADEN, and
JANE E. INGLESE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 17–19, 21–23, and 30. See Appeal
Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 This Decision includes citations to the following documents:
Specification filed April 14, 2016 (“Spec.”); Final Office Action mailed
August 22, 2019 (“Final Act.”); Appeal Brief filed February 24, 2020
(“Appeal Br.”); Examiner’s Answer mailed April 17, 2020 (“Ans.”), and
Reply Brief filed June 17, 2020 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Invista North
America S.À R.L. Appeal Br. 1.
Appeal 2020-004907
Application 15/029,360

2
CLAIMED SUBJECT MATTER
Appellant states the invention relates to composite films that are liquid
impermeable and moisture vapor permeable. Spec. ¶ 1. Claim 17,
reproduced below, is illustrative of the claimed subject matter (Appeal Br.,
Claims Appendix, 8):
17. A carpet pad comprising:
a) a carpet cushion having an upper and lower surface
thereon, and
b) a composite film bonded to said upper surf ace
comprising one or more barrier layers and one or more
dimensionally stabilizing layers, wherein the composite film
has a moisture vapor transmission rate (MVTR) of at least 14.6
g/24hr/m2 according to ASTM E96B and a robustness of
greater than about 1.49 pound force, wherein the total thickness
of the one or more barrier layers is less than 0.5 mils.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Johns et al. (“Johns”) US 4,581,274 Apr. 8, 1996
Vinod US 2003/0198802 A1 Oct. 23, 2003

REJECTION
The Examiner rejected claims 17–19, 21–23, and 30 under 35 U.S.C.
§ 103 as unpatentable over Vinod and Johns. Final Act. 3–10.
OPINION
Appellant does not present separate arguments with respect to the
claims subject to the rejection appealed. See Appeal Br. 3–7. We select
Appeal 2020-004907
Application 15/029,360

3
claim 17 as representative for disposition of this rejection. 37 C.F.R.
§ 41.37(c)(1)(iv)(2019).

The Examiner’s Rejection
The Examiner found Vinod discloses a carpet pad that is
simultaneously impermeable to liquid deposited onto the pad and permeable
to moisture vapor transmitted through the pad. Final Act. 3–4. The
Examiner found Vinod discloses the carpet pad comprises a cushion, which
has an upper surface covered by a barrier film. Id. at 4. The Examiner
found Vinod discloses the barrier film has a thickness in the range of 0.5 to
1.5 mils and Vinod discloses thickness is not a critical dimension so long as
the film contributes to the requisite moisture impermeability and
breathability of the pad. Id., citing Vinod ¶ 37.
The Examiner determined “it would have been obvious to the ordinary
skilled artisan that the film could be any desired thickness, such as 0.5 mils
or lower, as long as the moisture impermeability and breathability of the pad
are maintained.” Final Act. 4. In addition, the Examiner determined the
claimed range and the prior art range are close enough that one of ordinary
skill in the art would have expected them to have the same properties,
rendering the claims obvious. Id. at 4–5, citing Titanium Metals Corp. of
America v. Banner, 778 F.2d 775 (Fed. Cir. 1985).
The Examiner also found Vinod does not disclose a carpet pad with
one or more dimensionally stabilized aperture layers. Final Act. 5. The
Examiner then found Johns discloses a quiet carpet underlay including a pad
and a perforated plastic film overlying the pad, which the Examiner equated
to the dimensionally stabilizing layer recited in the claims. Id. The
Appeal 2020-004907
Application 15/029,360

4
Examiner found Johns’ perforated film is formed of a nylon material that
provides slip, adhesion, and flame retardant characteristics. Id. at 6. The
Examiner determined it would have been obvious to have modified the
carpet pad of Vinod to further include a perforated plastic film as disclosed
in Johns for the benefits disclosed in Johns. Id. The Examiner determined
when attached to Vinod’s carpet pad, Johns’ perforated layer would provide
integrity to the barrier film, and as a result, would be a “dimensionally
stabilizing layer” as such layer is described in the Specification. Id. citing
Spec. ¶ 38.

Appellant’s Contentions3
Appellant contends Vinod does not disclose or render obvious one or
more barrier layers having a total thickness of less than 0.5 mils as recited in
claim 17, because this range does not overlap Vinod’s barrier film thickness
range. Appeal Br. 4. Appellant argues the Examiner’s reliance on Titanium
Metals is misplaced and constitutes legal error. Id. at 4–6. Appellant
contends also the Examiner’s position that Vinod’s barrier film thickness is

3 We do not consider any new argument Appellant raises for the first time in
the Reply Brief that Appellant could have raised in the Appeal Brief,
because Appellant does not show good cause for raising any argument for
the first time in the Reply Brief. 37 C.F.R. § 41.37(c)(1)(iv); 37 C.F.R.
§ 41.41(b)(2) (arguments raised for the first time in the Reply Brief that
could have been raised in the Appeal Brief will not be considered by the
Board unless good cause is shown). See Reply Br. 2–5, 10–15. Even if we
were to consider Appellant’s belated arguments, such arguments would not
be sufficient to demonstrate a reversible error on the part of the Examiner in
view of the Examiner’s articulated reasoning (Final Act. 4–10) and our
discussion infra.
Appeal 2020-004907
Application 15/029,360

5
not critical conflicts with established interpretation of prior art numerical
end points. Id. at 6.
Appellant argues additionally Johns is silent regarding the ability of
the perforated plastic film to provide dimensional stabilization. Appeal
Br. 6. Appellant contends because Johns discloses thicknesses of the plastic
films to be on the order of 0.6 mils, “the skilled artisan would have little, if
any expectation of success in such a film providing dimensional stability to
the Vinod barrier layer.” Id. at 6–7.

Issues
Did the Examiner err in determining a carpet pad including one or
more barrier layers “wherein the total thickness of the one or more barrier
layers is less than 0.5 mils” and including “one or more dimensionally
stabilizing layers” as recited in claim 17 would have been obvious over
Vinod and Johns?

Discussion
Barrier Layer Thickness
We are not persuaded by Appellant’s arguments that Vinod fails to
render obvious the recitation in claim 17 of “the total thickness of the one or
more barrier layers is less than 0.5 mils.” In particular, Appellant’s
argument with respect to Titanium Metals is based on an incorrect
interpretation of that decision. That is, Appellant asserts incorrectly the
decision in Titanium Metals “is entirely silent as to non-overlapping ranges.”
Appeal Br. 5 (emphasis omitted). Appellant’s interpretation is based largely
Appeal 2020-004907
Application 15/029,360

6
on In re Patel, 556 Fed. Appx. 1005 (Fed. Cir. 2014) (non-precedential). Id.
at 5–6.
However, as discussed in In re Brandt, 886 F.3d 1171, 1177–78 (Fed.
Cir. 2018), “Patel recognized . . . that prima facie rejections may be
appropriate ‘where there is a teaching in the prior art that the end points of a
prior art range are approximate, or can be flexibly applied.’” Brandt, 886
F.3d at 1177 (quoting Patel, 556 Fed. Appx. at 1010). Indeed, in Brandt, the
Federal Circuit affirmed the Board’s decision that a claimed range and a
prior range that abut one another were prima facie obvious absent a
meaningful distinction between the two, citing Titanium Metals, 778 F.2d at
783. Brandt, 886 F.3d at 1177–78; see also In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (“We have also held that a prima facie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties.” (citing Titanium Metals, 778
F.2d 783)). Accordingly, we are not persuaded by Appellant’s argument
that the Examiner’s interpretation of Titanium Metals is in error.
Further, we are of the view the Examiner’s position is entirely
consistent with the above discussed case law as applied to the facts of this
case. That is, Vinod discloses the barrier film has a thickness “in the range
of 0.5 to 1.5 mils . . . although thickness is not a critical dimension so long
as the film contributes to the requisite moisture impermeability and
breathability of the pad.” Vinod ¶ 37. This disclosure is consistent with the
discussion in Brandt, namely, it is a teaching that the range “can be flexibly
applied.” Brandt, 886 F.3d at 1177 (quoting Patel, 556 Fed. Appx. at 1010).
Appeal 2020-004907
Application 15/029,360

7
In this regard, Appellant’s argument that Vinod’s statements only
apply to thicknesses within the disclosed range (Appeal Br. 6, Reply Br. 6–
7, 15–16) is not persuasive. Vinod discloses a range of thicknesses and then
expressly states “although thickness is not a critical dimension” further
discussing the characteristics of “moisture permeability and breathability of
the pad” as being the properties that are important to the barrier film. Vinod
¶ 37. Thus, this disclosure would have informed the ordinary skilled artisan
that the thickness range of 0.5 to 1.5 mils is a preferred range, and the
thickness can be varied as long as the disclosed characteristics of the barrier
film are met. See Ans. 12–13.
We further observe the Specification assigns no particular criticality
to the thickness of the barrier layer(s), expressly disclosing:
[i]n nonlimiting embodiments of the present invention, the total
thickness of the one or more barrier layers range from about 0.25
to about 2.0 mils. In nonlimiting embodiments of the present
invention, the total thickness of the one or more barrier layers is
less than about 0.5 mils.
Spec. ¶ 43. In this regard, although we agree with Appellant the term
“about” employed by the Examiner in discussing claim 17 does not appear
in the barrier layer thickness range in claim 17 (Reply Br. 6, 16; see Final
Act. 4, Ans. 5 “(less than about 0.5 mils)”), this difference does not impact
the thrust of the Examiner’s analysis as discussed above (see Ans. 14), and
as a result, is harmless error.
“Dimensionally Stabilizing Layers”
We also are not persuaded by Appellant’s argument that Johns’
perforated plastic film is not a “dimensionally stabilizing” layer as the term
is defined in the Specification. As the Examiner explains (Ans. 15), the
Appeal 2020-004907
Application 15/029,360

8
Specification defines a “dimensionally stabilizing” layer “to include a
material which provides integrity to the barrier layer. This includes, but is
not limited to, materials that provide support, prevent tearing, and maintain
the barrier structure of the barrier layer.” Spec. ¶ 38. We agree with and
adopt the Examiner’s position that the broad definition for “dimensionally
stabilizing,” which includes merely providing “integrity” and “support” to
the barrier layer does not distinguish the perforated plastic film of Johns.
Furthermore, as to Appellant’s argument Johns discloses a nylon film
that improves slippage, adhesion, and flame retardant characteristics of the
pad, but is silent as to the ability of the perforated plastic film to provide
dimensional stability (Appeal Br. 6; Reply Br. 8–9, 16–17), we observe the
Examiner relied on this disclosure in Johns as a reason for including Johns’
perforated plastic film in Vinod’s carpet pad. Final Act. 5–6; Ans. 15–16.
It is well established that Appellant’s purpose for adding a particular
element does not control the obviousness inquiry. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007) (“[i]n determining whether the subject matter
of a patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under § 103.”).
Thus, the Examiner’s position with respect to the improved slippage,
adhesion, and flame retardant characteristics relates to the reason to add the
perforated plastic film of Johns to the pad of Vinod, and not for support in
satisfying the “dimensionally stabilizing” aspect of claim 17.
Appellant’s position appears also to depend on a potential difference
in thickness between Johns’ perforated plastic layer and the dimensionally
stabilizing layer recited in claim 17. Appeal Br. 6–7. However, the
Appeal 2020-004907
Application 15/029,360

9
Specification states “the total thickness of the one or more dimensionally
stabilizing layers range from about 0.5 mils to about 2.5 mils.” Id. at ¶ 44.
Thus, Appellant’s attorney argument that one of ordinary skill in the art
would not have expected the perforated plastic films of Johns having
thicknesses on the order of 0.6 mil to provide dimensional stability, is not
consistent with the thicknesses disclosed in the Specification for the
dimensionally stabilized layer. See Ans. 15–16.
Accordingly, we affirm the Examiner’s rejection of claim 17, as well
as the claims dependent therefrom, as unpatentable over Vinod and Johns.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
17–19, 21–
23, 30
103 Vinod, Johns 17–19, 21–
23, 30

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED