Jean-Francois Lecostaouec et al.

Patent Trials and Appeals Board

Dec 30, 2019

13412321 - (D) (P.T.A.B. Dec. 30, 2019)

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.
13/412,321 03/05/2012 Jean-Francois Lecostaouec 66181.7900 1830
85628 7590 12/30/2019
SNELL & WILMER L.L.P. (UTC)
ONE ARIZONA CENTER
400 E. VAN BUREN STREET
PHOENIX, AZ 85004-2202
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
dgilden@swlaw.com
ipdocket@swlaw.com
tjessop@swlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEAN-FRANCOIS LECOSTAOUEC
and
PAUL PEREA

Appeal 2019-001956
Application 13/412,321
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision to reject claims 1–3, 6–10, and 21–24.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies “Goodrich Corporation” as the
real party in interest (Appeal Brief filed September 4, 2018 (“Appeal Br.”)
at 1).
2 See Appeal Br. 7–16; Non-Final Office Action entered March 5, 2018
(“Non-Final Act.”) at 2–8; Examiner’s Answer entered November 2, 2018
(“Ans.”) at 3–12.
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I. BACKGROUND
The subject matter on appeal relates to a textile (Specification filed
March 5, 2012 (“Spec.”) ¶ 7). Annotated Figures 2A and 2B, which are
reproduced from the Drawings filed March 5, 2012, illustrate embodiments
of the claimed subject matter, as follows:

Figures 2A and 2B above show a textile 200 comprising a primary warp tow
206 with an interlocking yarn 202 and weft tow groups 208, 204, and 210,
wherein the interlocking yarn is disposed below weft tow group 208, above
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tow group 204, and below weft tow group 210 (id. ¶ 37). As shown in
Figures 2A and 2B, the interlocking yarn 202 extends, at least partly, in the
warp direction next to or near (i.e., adjacent) the primary warp tow 206,
following the layout of the primary warp tows relative to the weft tow
groups.
Representative claim 1, the sole independent claim on appeal, is
reproduced from the Claims Appendix to the Appeal Brief, as follows:
1. A textile, comprising:
a first interlocking warp yarn;
a first weft tow;
a second weft tow; and
a first primary warp tow,
wherein the first weft tow, the second weft tow, and the
first primary warp tow comprise a carbon fiber precursor,
wherein the first primary warp tow comprises from about
6 thousand (K) to 50 K fibers,
wherein the first weft tow comprises from about 6 K to 50
K fibers,
wherein the second weft tow comprises from about 6 K to
50 K fibers,
wherein the first primary warp tow passes below the first
weft tow and above the second weft tow,
wherein the first interlocking warp yarn passes above the
first weft tow and below the second weft tow,
wherein the first interlocking warp yarn is adjacent to
the first primary warp tow in a warp direction,
wherein the first interlocking warp yarn has a diameter that
is less than the diameter of the first primary warp tow,
wherein the first interlocking warp yarn is sacrificial and
consists of at least one of cotton, wool, linen, polyester, silk,
nylon, rayon, polypropylene, and acrylic.
(Appeal Br. 18 (emphases added)).

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II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections, as follows:
A. Claims 1–3, 6–10, and 21–24 under pre-AIA 35 U.S.C.
§ 112, ¶ 2, as indefinite;
B. Claims 1–3, 9, 10, and 21–24 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Clarke et al.3 (“Clarke”)
and Levan;4
C. Claims 6–8 under 35 U.S.C. § 103(a) as unpatentable
over Clarke, Levan, and Parker et al.5 (“Parker”);
D. Claims 1, 3, 9, 10, and 22–24 under 35 U.S.C. § 103(a)
as unpatentable over Clarke and Jahn;6 and
E. Claims 6–8 under 35 U.S.C. § 103(a) as unpatentable
over Clarke, Jahn, and Parker.
III. DISCUSSION
Rejection A (Indefiniteness). The Examiner points out that claim 1
was amended on August 23, 2017 to recite “wherein the first interlocking
warp yarn is adjacent to the first primary warp tow in a warp direction”
(Ans. 9 (emphasis omitted)). Citing a dictionary defining the term
“adjacent” as “lying near, close, or contiguous”
(http://www.dictionary.com/browse/adjacent), the Examiner concludes “[i]t
is unclear what distance the first interlocking warp yarn must be to the

3 US 5,952,075, issued September 14, 1999.
4 US 4,861,575, issued August 29, 1989.
5 US 4,506,611, issued March 26, 1985.
6 US 3,917,884, issued November 4, 1975.
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primary warp tow to be considered adjacent” (id. at 3). In addition, the
Examiner states that “it is not clear how a warp yarn and a warp tow can be
adjacent in a warp direction” (id. (analogizing that “a motel may be adjacent
a highway, but it’s not clear how a motel may be adjacent a highway in the
highway direction”)). Moreover, the Examiner states that the term
“adjacent” has two different meanings—i.e., (a) immediately preceding or
following or (b) not distant—and, therefore, under Ex parte Miyazaki, No.
2007-3300, 2008 WL 5105055, at *5 (BPAI 2008) (precedential), the claim
is indefinite as being amenable to two or more plausible claim constructions
(id. at 8).
The Appellant acknowledges that the Specification uses the term
“adjacent” in the context of describing, e.g., a weft tow group 204 that is
adjacent a weft tow group 208 in a warp direction (Appeal Br. 8 (citing
Spec. ¶ 37); see also Figs. 2A and 2B above). But the Appellant further
contends that “[t]he dictionary definitions [for ‘adjacent’] do not require the
recitation of a particular distance, but merely that two objects are
‘immediately preceding or following’ or ‘not distant[]’” (Appeal Br. 10). In
support of this contention, the Appellant relies on https://www.merriam-
webster.com/dictionary/adjacent (id. at 13–14 n. 24). The Appellant argues
that “the first interlocking warp yarn may be construed to be ‘immediately
preceding or following’ or ‘not distant’ from the primary warp tow when
traveling in the warp direction” and, “[t]hus, the plain meaning of the term
adjacent and the usage in the [S]pecification make this definite” (id. at 10).
We agree with the Appellant. Contrary to the Examiner’s position,
the definiteness requirement under 35 U.S.C. § 112, ¶ 2, does not require the
term “adjacent” to be limited to a specific distance. As our reviewing court
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explained, the definiteness “requirement, applied to the real world of modern
technology, does not contemplate in every case a verbal precision of the kind
found in mathematics.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014).
“Rather, how much clarity is required necessarily invokes some
standard of reasonable precision in the use of language in the context of the
circumstances.” Id. Here, we conclude that, in the context of the
Specification and Drawings absent an express definition for the term, the
disclosure would have reasonably indicated to a person having ordinary skill
in the art that the term “adjacent” has its ordinary meaning (i.e., lying near,
close, or contiguous; immediately preceding or following—i.e., not having
any other object between the primary warp tow and the first interlocking
yarn tow; or not distant). Therefore, we conclude that the Specification and
Drawings would have reasonably apprised a person having ordinary skill in
the art as to the meaning of the language “wherein the first interlocking warp
yarn is adjacent to the first primary warp tow in a warp direction” as recited
in claim 1.
The Examiner’s reliance on Miyazaki is misplaced. Miyazaki does not
stand for the proposition that the usage of a term with multiple definitions
automatically renders a claim indefinite. Under the standard urged by the
Examiner, most claims—if not all—would be indefinite as most words have
multiple dictionary meanings. Instead, Miyazaki concerned a situation in
which the applicant attempted to claim the height of the paper feeding unit in
relation to a user of a specific height who is performing operations on the
printer without specifying a positional relationship of the user and the printer
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to each other, thus resulting in multiple inconsistent claim constructions.
Miyazaki at *7.
Here, the multiple definitions proffered by the Examiner and the
Appellant for the term “adjacent” are not so inconsistent among one another
such as to create an ambiguity that warrants an indefiniteness rejection.
When the claim language is construed in light of the Specification and
Drawings, we conclude that the person having ordinary skill in the art would
have understood its meaning.
For these reasons, we do not sustain the Examiner’s rejection on this
ground.
Rejections B and C (Obviousness Based on Clarke & Levan). The
Examiner finds that Clarke describes a textile including most of the
limitations recited in claim 1 but acknowledges that “Clarke does not appear
to mention overwrapping the tows” (Ans. 4) (citing, e.g., “entire document
including Figure 4, column 4, lines 10-33, column 5, line 41 through column
6, line 24, and column 8, lines 9-31”). To resolve this perceived difference,
the Examiner relies on Levan (Ans. 4). Specifically, the Examiner finds that
Levan teaches overwrapping a tow with a small diameter cotton or rayon
fiber to provide tows having better visual quality and reduced fraying (id.
(citing Levan, col. 2, l. 46–col. 3, l. 23; Fig. 1)). According to the Examiner,
“[t]he warp overwrap fiber corresponds to the [Appellant’s] claimed first
interlocking warp yarn having a diameter that is less than the diameter of the
first primary warp tow” (id.). Based on these findings, the Examiner
concludes that “it would have been obvious to one having ordinary skill in
the art . . . to wrap the (warp and weft) tows of Clarke with an overwrap
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fiber, as taught by Levan, motivated by a desire to provide tows with better
visual quality and reduced fraying” (id.).
The Appellant contends that Levan teaches wrapping fiber “around”
the tows, whereas the claimed invention requires interlocking yarns (Appeal
Br. 12–13). The Appellant argues that “Levan’s ‘overwrapped . . . around a
tow’ . . . cannot be reasonably construed to be a ‘first interlocking warp yarn
. . . adjacent to the first primary warp tow in a warp direction’ . . . as
presently recited in claim 1” (id. at 13).
We agree with the Appellant. Levan’s Figure 1 (annotated) is
reproduced as follows:

Levan’s Figure 1 above depicts a perspective view of a multifilament tow 10
overwrapped with a single thread 12 (Levan, col. 2, ll. 5–6, 30–40, 47–55;
see also Fig. 5). The Examiner does not adequately explain how Levan’s
overwrapping thread 12 can be considered to be an interlocking yarn as
required by claim 1.
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Therefore, we cannot sustain the Examiner’s rejection of claim 1 (and
claims dependent thereon) based on the combined teachings of Clarke and
Levan.
Rejections D & E (Obviousness Based on Clarke & Jahn). The
Examiner’s rejections based on Clarke and Jahn are also flawed for the same
reason discussed above for Rejections B and C. Consistent with the
Appellant’s argument (Appeal Br. 11), the Examiner does not explain how
Clarke and Jahn collectively would have suggested an interlocking yarn as
required by claim 1 (and claims dependent thereon).
Accordingly, we also do not sustain Rejections D and E.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. §  Reference(s)/
Basis
Affirmed Reversed
1–3, 6–10, 21–24 112, second
paragraph 
Indefiniteness 1–3, 6–10, 21–24
1–3, 9, 10, 21–24 103(a) Clarke, Levan 1–3, 9, 10, 21–24
6–8 103(a) Clarke, Levan,
Parker
6–8
1, 3, 9, 10, 22–24 103(a) Clarke, Jahn 1, 3, 9, 10, 22–24
6–8 103(a) Clarke, Jahn,
Parker
6–8
Overall
Outcome
1–3, 6–10, and 21–
24

REVERSED