Kay Bernhard et al.

Patent Trials and Appeals Board

Jan 3, 2020

13122760 - (D) (P.T.A.B. Jan. 3, 2020)

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.
13/122,760 04/06/2011 Kay Bernhard 2017.14 2470
29494 7590 01/03/2020
HAMMER & ASSOCIATES, P.C.
3125 SPRINGBANK LANE
SUITE G
CHARLOTTE, NC 28226
EXAMINER
VAZQUEZ, ELAINE M
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
01/03/2020 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 PATENT TRIAL AND APPEAL BOARD
Ex parte KAY BERNHARD, JÖRG DAHRINGER,
MICHAEL KLANERT, and WERNER STEFANI
Appeal 2019-002577
Application 13/122,760
Technology Center 1700
Before ROMULO H. DELMENDO, JULIA HEANEY, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–6, and 8–14. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Trevira
GmbH. Appeal Br. 3.
Appeal 2019-002577
Application 13/122,760

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a bi-component fiber
enriched with superabsorbent polymer (SAP) that has good mechanical
stability and good water absorption capacity. Spec. 1. The material could
be used, for example, in the hygiene industry or for medicine. Id. Claim 1
is illustrative:
1. A superabsorbent bi-component fiber comprising:
a component A containing at least one thermoplastic
polyester polymer, and a component B consisting of a mixture
of at least one thermoplastic base polyolefin polymer and at
least one superabsorbent polymer (SAP), said thermoplastic
base polyolefin being selected from the group consisting of
polyethylene homopolymer, polypropylene homopolymer,
copolymers of ethylene and propylene and mixtures thereof, the
bi-component fiber has a core-sheath structure in which the
component A is the core and the component B is the sheath,
a melting point of the thermoplastic polyester polymer
comprised by the component A is at least 20°C higher than a
melting point of the thermoplastic base polyolefin polymer
comprised by the component B,
an average particle size D90 of the SAP is 1 to 10 μm, a
portion of the SAP particles having a particle size of more than
15 μm does not exceed 1 % by weight, and
the fiber has an SAP content of 0.5 to 40% by weight.

2 In this Decision, we refer to the Final Office Action dated June 2, 2017
(“Final Act.”), the Appeal Brief filed September 28, 2017 (“Appeal Br.”),
the Examiner’s Answer dated November 28, 2017 (“Ans.”), and the Reply
Brief filed January 9, 2018 (“Reply Br.”).
Appeal 2019-002577
Application 13/122,760

3
REJECTION AND REFERENCES
On appeal, the Examiner maintains the rejections of claims 1, 4–6,
and 8–14 under 35 U.S.C. § 103 as obvious over Dahringer et al., US
2005/0093197 A1, May 5, 2005 (“Dahringer”) in view of Wagner, DE 102
32 078 A1, July 15, 2002 (“Wagner”).3

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues all claims as a group. See Appeal Br. 9. Consistent
with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit our
discussion to claim 1, and all other claims on appeal stand or fall together
with claim 1.
The Examiner finds that Dahringer teaches a bi-component fiber
comprising, inter alia, a thermoplastic polyester polymer as a core
component. Ans. 2. The Examiner finds that Dahringer fails to teach a skin

3 We refer to the same translation of Wagner as the Examiner.
Appeal 2019-002577
Application 13/122,760

4
component consisting of a superabsorbent polymer (SAP) with particle size
recited by claim 1. Id. at 3. The Examiner finds, however, that Wagner
teaches a superabsorbent bi-component fiber that can be used in hygiene
products that includes a SAP component with particle size less than 7.5
microns. Id. The Examiner determines that it would have been obvious to
one of ordinary skill in the art at the time of the invention to have
Dahringer’s skin component comprise Wagner’s SAP in order to obtain high
water absorption. Id. at 3–4.
Appellant argues that Wagner does not teach use of polyester in the
core of a bi-component fiber and does not teach use of its particle size with a
polyester. Appeal Br. 7–8. Appellant also argues that Dahringer does not
teach use of a SAP. Id. at 8. The Examiner, however, relies on Dahringer
(not Wagner) as teaching the polyester as a core component and relies on
Wagner (not Dahringer) as teaching use of a SAP. Ans. 2–3. Appellant’s
arguments are unpersuasive because they address the references individually
rather than addressing the combined teachings of the references. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant also argues that Wagner does not teach claim 1’s recited
SAP size distribution. Appeal Br. 8. Wagner, however, provides two
examples where its SAP particles are sieved to a size less than 7.5 microns.
Ans. 6; see also Wagner 6, 7. Wagner, therefore, suggests a SAP particle
size within the range recited by claim 1. See In re Lamberti, 545 F.2d 747,
750 (CCPA 1976) (“all disclosures of the prior art, including unpreferred
embodiments, must be considered”).
Appeal 2019-002577
Application 13/122,760

5
Appellant further argues that the references do not teach how the
claimed invention could have been made. Appeal Br. 8–9. This argument,
however, is unpersuasive because Appellant provides no persuasive
technical reasoning or evidence as to why the Examiner’s proposed
combination of the teachings of Dahringer and Wagner could not be
combined with a reasonable expectation of success. Rather, Appellant cites
the September 28, 2017, Declaration of named inventor Jörg Dahringer as
evidence (“the Dahringer Declaration”), but the Dahringer Declaration only
indicates that SAP particle sizes outside “the claimed range . . . cannot be
melt-spun in continuous operations for producing filament fiber.” Dahringer
Declaration 3. Meanwhile, Wagner includes examples that use appropriately
small SAP particles (Wagner 6–7), and the Examiner’s rejection relies on
these small particles (Ans. 3). Appellant does not persuasively contend that
a reasonable expectation of success would be lacking for such particles.
The preponderance of the evidence, including the similarity of the
Dahringer and Wagner fibers, indicates that a person of skill in the art would
have had a reasonable expectation of success in combining the art’s
teachings. Dahringer Abstract (suggesting use of melt-spinning to create
fiber for a non-woven fabric); Wagner 3 (indicating that its teachings are
applicable to a melt spinning process); see also, e.g., PAR Pharm., Inc. v.
TWI Pharms., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014). (“The reasonable
expectation of success requirement for obviousness does not necessitate an
absolute certainty for success.”).
In the Reply Brief, Appellant argues that Wagner teaches away from
use of polyester. Reply Br. 1–2. Appellant, however, does not identify any
teachings of Wagner that discourage use of polyester. Wagner’s teaching of
Appeal 2019-002577
Application 13/122,760

6
non-polyester embodiments is not the same as a teaching away. In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.”).
Because Appellant does not identify harmful error, we sustain the
Examiner’s rejection.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–6, 8–14 103 Dahringer, Wagner 1, 4–6, 8–
14

Overall
Outcome
1, 4–6, 8–
14

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