Maytex Mills, Inc.

Patent Trials and Appeals Board

Sep 4, 2020

15197213 - (D) (P.T.A.B. Sep. 4, 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.
15/197,213 06/29/2016 David M. Baines MAY-52A 1492
29694 7590 09/04/2020
Leech Tishman Fuscaldo & Lampl
525 William Penn Place
28th Floor
PITTSBURGH, PA 15219
EXAMINER
JACYNA, J CASIMER
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
09/04/2020 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):
IPDocket@leechtishman.com
dstevenson@leechtishman.com
trath@leechtishman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID M. BAINES
____________

Appeal 2020-004255
Application 15/197,213
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–19, 21, and 22 as unpatentable under 35 U.S.C. § 103
over Rubin (US 7,531,219 B2, iss. May 12, 2009), and Chung
(US 2016/0037974 A1, pub. Feb. 11, 2016). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM and designate our affirmance of claims 10 and 18 as a
NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Maytex Mills, Inc. as the applicant
and real party in interest. Appeal Br. 1.
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THE INVENTION
Appellant’s invention relates to shower curtains. Spec. ¶ 2. Claim 1,
reproduced below with paragraph indentation added, is illustrative of the
subject matter on appeal.
1. A laminated shower curtain comprising:
an antimicrobial pre-treated fabric layer comprising a first
antimicrobial agent; and
an antimicrobial liquid impermeable film layer bonded to
and in contact with the antimicrobial pre-treated fabric layer
comprising a polymeric material and a second antimicrobial
agent,
wherein the antimicrobial liquid impermeable film layer
comprises a composite layer including a polymeric matrix with
molecules or particles of the second antimicrobial agent
dispersed therein.
OPINION
Claim 1
The Examiner finds that Rubin discloses the invention substantially as
claimed except for the second antimicrobial agent being actually “dispersed
in” the film layer, for which the Examiner relies on Chung. Final Act. 2–3.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of invention to disperse Rubin’s agent
“within” the film layer, as taught by Chung. Id. at 3. According to the
Examiner, a person of ordinary skill in the art would have done this to better
protect the shower curtain against microbes. Id.
Appellant argues that Chung fails to disclose an antimicrobial agent
dispersed within a film layer as claimed. Appeal Br. 7–9. Appellant
characterizes the Examiner’s finding that polyurethane is not naturally
antimicrobial as “unsupported.” Id. at 8–9.
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Appellant further criticizes the Examiner for citing literature that is
not explicitly relied on as applied art in the rejection. Appeal Br. 8–9.
Appellant challenges the Examiner to provide a “detailed explanation” as to
why such literature teaches a film layer that includes a polymeric matrix
with a second antimicrobial agent dispersed therein. Id. at 9. Appellant
contends that Chung’s film layer “naturally” exhibits antimicrobial
properties, without the necessity of adding antimicrobial materials. Id.
According to Appellant, “one skilled in the art would not consider adding a
separate antimicrobial agent to a TPU material that already exhibits mould-
proof and antibacterial properties as taught by Chung.” Id.
In response, the Examiner states that it is generally well-known that
polyurethane, in and of itself, is not antimicrobial. Ans. 5–6. The Examiner,
therefore, concludes that, in order for Chung’s thermoplastic polyurethane
(TPU) layer to have antimicrobial properties as taught in paragraph 15 of
Chung, an antimicrobial agent necessarily must have been added to the
polyurethane. Id. at 6.
[A]s noted by the cited articles regarding the formation of
polyurethane, it is generally well known in the art that
polyurethane is only antimicrobial or antibacterial when an
agent is added to the polyurethane. Consequently, the teaching
in paragraph 15 of Chung of a polyurethane with antimicrobial
or antibacterial properties is the teaching of a polyurethane with
an antimicrobial or antibacterial agent added to it as claimed.
Id. (referring to articles cited at Final Act. 6–8).
In reply, Appellant disputes the Examiner’s findings and reasoning
and reiterates that Chung fails to disclose antimicrobial molecules or
particles “dispersed in” a polymeric matrix. Reply Br. 5.
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Rubin discloses a water resistant and water repellant treated textile
fabric. Rubin, col. 2, ll. 33–43. Rubin teaches a process of topically treating
a fabric with an aqueous composition that includes one or more
antimicrobial agents. Id. col. 4, ll. 4–13; col. 6, ll. 28–32. Next, a polymeric
film is secured to one side of the fabric. Id. col. 2, ll. 43–44. After the
polymeric film has been adhered to the fabric, a secondary treatment process
is applied that entails coating the film with a polymeric latex, a
flourochemical treating agent, and antimicrobial agents. Id. col. 2, ll. 44–46;
col. 9, ll. 13–49.
Chung discloses a multi-layer shower curtain. Chung, Abstract. In
Chung, a first water-proof layer and a second water-proof layer are attached
respectively to the first and second sides of a lace fabric. Id. The water
proof layers are comprised of a thermoplastic polyurethane (TPU) material.
Id. ¶ 14. Chung further discloses that the TPU layers have antibacterial
capabilities. Id. ¶ 15. Chung does not specify how such antibacterial
capability is imparted to the TPU layers. See generally Chung. However,
the details given concerning how the shower curtain is produced leads to a
reasonable inference that antibacterial material is not added as a coating to
the TPU layers. Id. We base this inference, in large part, on the disclosures
of paragraphs 14 and 15 which describe how first TPU layer 31 is adhered to
lace fabric 10 with adhesive and then pressed by a heater roller. Id. ¶ 15.
The lace fabric 10 is then turned upside down and the second TPU layer 41
is adhered to the other side of lace fabric 10 by adhesive and, once again,
pressed and heated. Id. If the antibacterial capability was imparted to the
TPU layers by coating, given the remaining context of the disclosure, we
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would reasonably expect that Chung would have disclosed this to be the
case.
The issue presented, therefore, is how does Chung acquire
antibacterial capabilities? The Examiner finds that antibacterial material
necessarily is dispersed into the polyurethane to impart such capability.
Appellant counters that Chung’s polyurethane is naturally antibacterial and,
therefore, there is no reason to believe that antibacterial material has been
dispersed into it. The Examiner, in turn, counters that it is well-known that
polyurethane is not, by nature, antibacterial. Thus, as we understand the
rejection, the Examiner concludes that dispersing an antibacterial agent into
Chung’s polyurethane layers is the only reasonable interpretation of the
evidence.
In deciding disputed issues of fact, we are reconciled to the reality that
absolute certainty is not generally obtainable in every case. Thus, we are
directed to decide disputed issues of fact based on the preponderance of the
evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). After
weighing the competing positions of the Examiner and Appellant, the
Examiner’s position that polyurethane is not, by its nature, antibacterial is
supported by evidence in the record. Final Act. 6–8. In contrast,
Appellant’s opposing position relies entirely on unsubstantiated attorney
argument, which is entitled to little or no weight. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and
conclusory statements that are unsupported by factual evidence are entitled
to little probative value).
Furthermore, the Examiner provides a sound basis for believing that
Chung’s polyurethane layers necessarily have antibacterial material
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dispersed therein. “[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). Similarly, where the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977). In the instant case, the Examiner provides a sufficient basis
to shift the burden of proof on the issue to Appellant. Appellant, however,
provides insufficient evidence to carry a burden of proof that Chung’s
polyurethane layers lack antibacterial material dispersed therein. Indeed,
apart from nakedly asserting that polyurethane is “naturally” antimicrobial,
Appellant fails to even offer a superficially plausible alternative explanation
as to how antibacterial properties are imparted to Chung. The
preponderance of evidence lies with the Examiner.
Appellant’s contention that the Examiner may not rely on published
literature apart from the applied references in a rejection is contrary to
prevailing law. The Federal Circuit not only permits, but affirmatively
encourages us to consider evidence beyond applied references insofar as it
aids in the understanding of the background knowledge of the person of
ordinary skill in the art. Randall Mfg. v. Rea, 733 F.3d 1355, 1361–1363
(Fed. Cir. 2013). Moreover, in the Final Action, the Examiner finds that it is
generally “well known” in the art that antibacterial properties are only
imparted to polyurethane by means of adding an antibacterial agent. Final
Act. 5. Having challenged this finding in the Appeal Brief, Appellant will
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not be heard to complain that the Examiner cannot support a position by
citing to literature that is available to the person of ordinary skill in the art.
This Appeal provides Appellant with a full and fair opportunity to refute the
Examiner’s case with presentation of conflicting evidence. No such
conflicting evidence has been presented by Appellant.
Finally, Appellant argues that products embodying the claimed
invention have achieved commercial success. Appeal Br. 10. Appellant
supports this position with a declaration from David Baines. Id., Baines
Decl. Mr. Baines is the inventor and the President of Appellant, Maytex
Mills. Id. The declaration provides dollar amounts of sales of figures for
so-called “Inventive Shower Curtains” and offers a comparison to sales
figures for “Predecessor Shower Curtains” also made and sold by Appellant.
The declaration shows that Appellant has experienced a greater volume of
sales with its “Inventive” vis-à-vis its “Predecessor” curtains.”
Commercial success of a product embodying an invention tends to
show nonobviousness when “the commercial success . . . results from the
claimed invention” and is “due to the merits of the claimed invention beyond
what was readily available in the prior art.” J.T. Eaton & Co. v. Atl. Paste &
Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997). Commercial success can
be demonstrated by significant sales of the claimed product in a relevant
market. Id. However, sales volume alone is insufficient to establish
commercial success. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed.
Cir. 1991). Moreover, evidence of commercial success is only significant if
there is a nexus between the claimed invention and the commercial success.
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006).
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In the instant case, the Examiner correctly discounts Appellant’s
evidence of purported commercial success. The Baines Declaration merely
compares Appellant’s product sales to that of its own prior product. There is
no attempt to define the relevant market for shower curtains and there is no
attempt to demonstrate whether Appellant’s market penetration within such
undefined market is significant. We have been given no evidence by which
to evaluate whether Appellant’s “Inventive” product is competitive in the
market vis-à-vis third party competitors. We are not given enough
information to evaluate whether Appellant’s comparatively higher sales of
the “Inventive” product is attributable solely to the relative advantages and
disadvantages of the “Inventive” and “Predecessor” products as opposed to
in relation to the relevant market. Without accurate and persuasive evidence
as to the relevant market, mere evidence of sales volume carries little
probative value. Baxter, supra.
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner’s unpatentability rejection of claim 1.
Claim 10
Claim 10 depends from claim 1 and adds the limitation: “wherein the
antimicrobial liquid impermeable film layer comprises a coextrusion of the
polymeric material and the second antimicrobial agent.” Claims App.
(emphasis added). To better understand the claim scope, Appellant offers
the following definition of “coextrusion.”
As used herein, the term “coextrusion”, when referring to the
antimicrobial liquid impermeable film layer, means that the
polymer and the second antimicrobial agent are extruded
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together into a film comprising a polymeric matrix and the
second antimicrobial agent dispersed therein.
Spec. ¶ 28.
Ordinarily, during examination of a patent application, pending claims
are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). However, when a patent applicant sets out a definition and acts
as its own lexicographer, we will give effect to such definition. Aventis
Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). “To act
as its own lexicographer, a patentee must ‘clearly set forth a definition of the
disputed claim term’ other than its plain and ordinary meaning.” Thorner v.
Sony Computer Entm’t Am., 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
2002)).
Here, Appellant offers a definition that departs from the ordinary and
customary meaning of “coextrusion.” Normally, in a coextrusion, two or
more separately identifiable layers are extruded simultaneously. Here,
Appellant defines the term to mean almost the exact opposite, namely, that
two substances are mixed and dispersed into a single, extrusion layer. In the
overall context of claim 1, from which claim 10 depends, this is necessarily
so as the composite layer has the second antimicrobial agent “dispersed
therein.” Claims App., claim 1. Thus, Appellant’s definition of co-
extrusion actually just means a single extrusion layer that includes an
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additive mixed into the hopper of polymeric material prior to extrusion. In
claim 10, the additive is the second antimicrobial agent. Claims App.
Appellant argues that neither Rubin nor Chung teaches an extrusion
process as claimed. Appeal Br. 13–16. In response, the Examiner states that
Rubin discloses the method step of extruding the film and then hot melt
laminating the fabric and film layers together. Ans. 10. The Examiner finds
that such laminating step meets the claim limitation directed to coextrusion.
Id.
The Examiner’s finding is erroneous. A person of ordinary skill in the
art would not confuse extrusion with laminating or vice versa. However,
that does not end our inquiry.
Rubin teaches that its polymeric film is formed by extrusion. Rubin,
col. 7, ll. 36–38. Chung discloses that it is known that polyurethane film
may be given anti-bacterial properties. Chung ¶ 15. Appellant’s
Specification provides essentially no enabling disclosure regarding how the
antimicrobial agent is dispersed into the film layer. Spec. ¶¶ 28, 29. The
inference to be drawn from this lack of teaching disclosure is that a person
of ordinary skill in the art is presumed to already know how to mix
additives, such as silver and copper particles, into the hopper of extrusion
machinery. This is entirely permissible as a patent need not teach, and
preferably omits, what is well known in the art. Streck, Inc. v. Research &
Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012). The fact that
mixing additives to polymeric materials in an extrusion process is well
known in the art is confirmed by generic literature on the subject of plastic
extrusion. Appendix A (https://en.wikipedia.org/wiki/Plastic_extrusion).
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It would have been obvious to a person of ordinary skill in the art at
the time of the invention to add antimicrobial particles to the hopper used in
extruding Rubin’s film layer. Rubin col. 5, ll. 50 (copper compounds). An
artisan would have done this to simplify the manufacturing process by
reducing the number of coating steps.
Accordingly, we sustain the Examiner’s rejection of claim 10.
However, because our findings and analysis arguably change the thrust of
the Examiner’s original rejection, we designate our affirmance as a NEW
GROUND OF REJECTION. See In re Biedermann, 733 F.3d 329, 337
(Fed. Cir. 2013) (explaining that Appellant is entitled to fair opportunity to
react to the thrust of a rejection).
Claim 13
Claim 13 depends from claim 1 and adds the limitation: “wherein the
second antimicrobial agent may comprise at least one metal, at least one
metal compound, at least one organic compound, or a combination thereof.”
Claims App. Here, Rubin unmistakably discloses metal as an antimicrobial
agent. Rubin, col. 5, ll. 50–55. Appellant’s arguments concerning whether
the metal is “dispersed” as claimed (Appeal Br. 16) are resolved adversely to
Appellant in our treatment of claims 1 and 10 above.
We sustain the Examiner’s rejection of claim 13.
Claim 14
Claim 14 depends from claim 1 and adds the limitation: “wherein the
amount of the second antimicrobial agent comprises from 1 to 20 weight
percent based on the total weight of the polymeric material of the
antimicrobial liquid impermeable film layer and the weight of the second
antimicrobial agent.” Claims App. Appellant argues that the applied art
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does not disclose the claimed amount. Appeal Br. 16–17. In response, the
Examiner states that it would have been obvious to use any amount of
antimicrobial agent that an artisan deemed effective and that such is well
within the scope of ordinary skill in dealing with a typical design
consideration. Ans. 12.
We agree with the Examiner. Once it is determined to use an
antimicrobial agent, determining the amount to be used entails no more than
routine optimization that is within the ambit of ordinary skill. In re Applied
Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012). “[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” Id.,
quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955). Here, Appellant
provides no evidence that the claimed amounts are critical or produce
unexpected results. Applied Materials, 692 F.3d at 1297 (noting that
patentee provided no evidence of criticality or unexpected results).
We sustain the rejection of claim 14.
Claim 15
Claim 15 depends from claim 1 and adds the limitation: “wherein the
first antimicrobial agent and the second antimicrobial agent comprise
different antimicrobial materials.” Claims App. Appellant argues that the
applied art fails to disclose this limitation. Appeal Br. 17. It is unclear
whether Appellant is arguing that the art fails to disclose two different
antimicrobial agents or whether the art fails to disclose that they are
“dispersed” as claimed. Id. We have previously dealt with Appellant’s
“dispersed” argument and find it no more persuasive here than it was when it
was advanced against the rejection of claim 1.
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With respect to using two different antimicrobial agents, the Examiner
notes that Rubin discloses a plurality of antimicrobial agents. Ans. 12
(citing Rubin, col. 5, ll. 46–55). The Examiner finds that a person of
ordinary skill in the art would have understood that the same agent is not
required to be applied to both layers.
We agree that it would have been obvious to use a first antimicrobial
agent on the fabric layer and a second antimicrobial agent on (or in) the film
layer. We sustain the Examiner’s rejection of claim 15.
Claim 18
Claim 18 is an independent claim that is substantially similar in scope
to claim 10 except that it recites a method. Claims App. In traversing the
rejection, Appellant relies on the same unpersuasive arguments advanced
against the rejection of claim 10 which are equally unpersuasive here.
Appeal Br. 13–15. We sustain the Examiner’s rejection of claim 18.
Claims 2–9, 11, 12, 16, 17, 19, 21, and 22
These claims depend directly from either claim 1 or claim 18 and are
not separately argued. Consequently, we sustain the Examiner’s rejection of
claims 2–9, 11, 12, 16, 17, 19, 21, and 22. See 37 C.F.R. § 41.37(c)(1)(iv)
(failure to separately argue claims constitutes a waiver of arguments for
separate patentability).
CONCLUSION
Claims
Rejected
§ References Affirmed Reversed New
Ground
1–19, 21, 22 103 Rubin, Chung 1–19, 21, 22 10, 18

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FINALITY OF DECISION
This decision contains a new ground of rejection. 37 C.F.R.
§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED; 37 C.F.R. § 41.50(b)