Parkdale, Incorporated

Patent Trials and Appeals Board

Mar 3, 2020

14667027 - (D) (P.T.A.B. Mar. 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.
14/667,027 03/24/2015 Robert Alton Usher JR. 2720.008 7453
118935 7590 03/03/2020
Summa PLLC
501 W. John Street
Matthews, NC 28105
EXAMINER
MESH, GENNADIY
ART UNIT PAPER NUMBER
1763
MAIL DATE DELIVERY MODE
03/03/2020 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 ROBERT ALTON USHER, JR
Appeal 2019-000781
Application 14/667,027
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
JANE E. INGLESE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 and 3–6.3
We REVERSE.

1 This Decision includes citations to the following documents: Specification
filed Mar. 24, 2015 (“Spec.”); Final Office Action dated Nov. 15, 2017
(“Final”); Appeal Brief filed May 24, 2018 (“Appeal Br.”); Examiner’s
Answer dated Sept. 17, 2018 (“Ans.”); and Reply Brief filed Nov. 7, 2018
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Parkdale, Incorporated. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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CLAIMED SUBJECT MATTER
The “invention relates to the manufacture of synthetic fibers, and
more particularly to [a] method for producing polymer fibers dyeable with
reactive dyes.” Spec. ¶ 1. According to the Specification, yarns made from
synthetic fibers “are often blended with natural (i.e. cellulosic) fiber yarns,
such as cotton, to produce fabrics having desirable characteristics in terms of
strength, feel, etc.” Id. ¶¶ 2–3. “Cotton yarns are typically dyed using a
direct or reactive dye chemistry at atmospheric pressures and relatively low
temperatures,” whereas “polyester yarns are typically dyed using a disperse
dye chemistry in a process taking place at elevated temperatures and
pressures.” Id. ¶ 4. The invention is said to eliminate the need to subject
blended fabric to two completely separate dyeing processes by providing a
polymer fiber dyeable with direct or reactive dyes of the types more
typically associated with dying natural fibers. Id. ¶¶ 5, 7, 12.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A dyed polyester fiber consisting essentially of:
between about 9 and 16 mole percent of DEG
[(diethylene glycol)] based on the amount of polyester;
between about 3.5 and 7 mole percent of adipic acid
based on the amount of polyester;
between about 200 and 2000 ppm by weight
pentaerythritol based on the amount of polyester; and
a dye selected from the group consisting of direct dyes
and reactive dyes.
Claims filed January 16, 2018.4

4 Claims 1 and 6, as they appear in the Claims Appendix, do not include the
term “about.” The Appellant notes that in an Amendment filed October 23,
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REJECTIONS
1. Claims 1 and 3–6 are rejected under 35 U.S.C. § 112(b) as
indefinite.
2. Claims 1 and 3–6 are rejected under 35 U.S.C. § 103 as
unpatentable over Davis (US 3,636,131, issued January 18, 1972), as
evidenced by the Appellant’s admitted prior art (Spec. ¶ 12 (“the AAPA”)),
and in further view of Branum (US 2003/0134117 A1, published July 17,
2003).
OPINION
As an initial matter, we note that the Appellant presents arguments
pertaining to matters that are not properly before the Board and, therefore,
we decline to consider those arguments. The Appellant argues that the
Examiner improperly objects to the Abstract. Appeal Br. 12–13. We direct
the Appellant to Manual of Patent Examining Procedure Section 706.01,
which states, in relevant part, that “[t]he practical difference between a
rejection and an objection is that a rejection, involving the merits of the
claim, is subject to review by the [PTAB], while an objection, if persisted,
may be reviewed only by way of petition to the Director of the USPTO.”
The Appellant also presents arguments relating to the Examiner’s
alleged objection to the claim term “about.” See Appeal Br. 14–15. As noted
above, objections are not subject to review by the Board. Moreover, the
Examiner did not object to the term “about,” but merely explained how the

2017, it stated that claims 1 and 6 were amended to delete the term “about.”
Appeal Br. 14. However, the Appellant inadvertently failed to make this
amendment. Id. Accordingly, we consider the appeal as to the claims in the
last, entered amendment, filed January 16, 2018.
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term was interpreted for purposes of examination. See Final 3–4. The
Appellant does not dispute the Examiner’s interpretation of the term
“about.” See Appeal Br. 14–15.
The Appellant argues that the Final Office Action “includes dozens of
grammar errors, inconsistencies, and omissions and is so poorly drafted that
it undermines the notice purposes of [35 U.S.C. §] 132.” Appeal Br. 16. We
agree with the Examiner (see Advisory Action dated February 5, 2018) that
the Appellant has not shown persuasively that the rejections are so
uninformative that the Appellant is unable to recognize and counter the
grounds for rejection. See Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir.
1990) (explaining the criteria for a violation of Section 132).
Indefiniteness Rejection
The Examiner determined that independent claims 1 and 6 are
indefinite for the following reasons: (1) “[i]t is unclear how to calculate
mole % based on amount of polyester [without] indication of all compounds/
components present in [the] final polyester”; (2) it is unclear what dyes are
claimed because the Specification does not define or provide examples of
“direct dyes” and “reactive dyes”; and (3) “[i]t is . . . unclear, how polyester
will react with ‘reactive’ dye, as the claimed polyester does not require [the]
presence of any specific functional groups capable to react with ‘reactive’
dye, except terminal carboxyl or hydroxyl groups of the polyester.” Final 5–
6. For the reasons discussed in detail below, the Appellant has argued
persuasively that the Examiner erred reversibly in determining that the
claims are indefinite.
A claim is indefinite under 35 U.S.C. § 112 when it contains words or
phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309 (Fed.
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Cir. 2014). “[T]he definiteness of the language employed must be
analyzed—not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art.” In re Moore,
439 F.2d 1232, 1235 (CCPA 1971). “Therefore, the specification need only
disclose adequate defining structure to render the bounds of the claim
understandable to an ordinary artisan.” Telcordia Techs., Inc. v. Cisco Sys.,
Inc. (Fed. Cir. 2010). Applying these principles, we turn first to the
Examiner’s contention that it is unclear how to calculate mole percent based
on the amount of polyester.
The Examiner argues that the scope and actual makeup of the claimed
polyester is unclear because the only working example in the Specification
describes a final material having an approximate composition in mole
percentages of “80 TA [(terephthalic acid)], 12 DEG, 5 adipic acid, and 3
EG [(ethylene glycol)],” yet adipic acid and EG are not described as reaction
components Ans. 9–10. The Examiner further contends that the sum of all
glycols (12 mole % DEG + 3 mole% EG = 15 mole%) and sum of all diacids
(80 mole% TA + 5 mole% Adipic = 85 mole%) cannot satisfy the general
principal of polycondensation reaction stoichiometery which requires a 1 to
1 ratio, i.e. 50 mole% of all acids to 50 mole% of all diols based on 100
mole% of all monomers. Id. at 10.
The Appellant and the Examiner agree that the ordinary artisan at the
time of the invention would have understood that the basic stoichiometry for
the reaction of terephthalic acid and ethylene glycol to produce polyethylene
terephthalate is the following:

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n C6H4(COOH)2 + n HOCH2CH2OH →
[(CO)C6H4(COOCH2CH2O)]n + 2n H2O
Ans. 9; see Reply Br. 3. The Appellant argues that “[t]he skilled person
knows that the smaller amount (expressed in moles) of either the glycol or
the acid will determine the molar amount of polyester produced.” Reply Br.
3; see also Appeal Br. 5 (“From the claims, it is clear to the skilled person
that the smaller amount (expressed in moles) of either the glycol or the acid
will determine the molar amounts of polyester and water produced.”). The
Appellant argues further that working examples in the Specification are not
required for compliance with 35 U.S.C. § 112(b), and that the ordinary
artisan would understand the scope of the claims, as well as the
Specification’s working example, from Specification paragraphs 10–15,
which describe the difference between the methods of producing the claimed
and conventional polyester fibers from terephthalic acid. Appeal Br. 6.
The Appellant’s arguments are persuasive. The Specification discloses
that “a known process for producing conventional polyesters such as
polyethylene terephthalate (‘PET’) is esterification followed by
condensation of a starting mixture consisting essentially of terephthalic acid
(‘TA’) or dimethyl terephthalate (‘DMT’), ethylene glycol (as monoethylene
glycol or ‘MEG’), and optionally a catalyst.” Spec. ¶ 11. The Specification
discloses that in “the present invention, the starting mixture of the prior art
process is modified by substitution of diethylene glycol (‘DEG’) for MEG
and inclusion of a large amount of adipic acid, well beyond commonly-
accepted amounts. This results in an end product with significantly increased
levels of DEG.” Id. The Specification discloses that “the final composition
should also include adipic acid at about 3.5 mol% to about 7 mol%.” Id.
¶ 15. Given this description in the Specification, and the Examiner’s
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acknowledgement that the ordinary artisan would have understood the basic
stoichiometry for the reaction of terephthalic acid and ethylene glycol to
produce polyethylene terephthalate, we are persuaded that the ordinary
artisan would understand how to calculate mole percentages of the fiber’s
components based on the amount of polyester.
The Examiner contends that claims 1 and 6 are indefinite because it is
unclear what dyes are claimed, as the Specification does not define or
provide examples of “direct dyes” and “reactive dyes.” Final 6. As noted
above, the Appellant argues that specific examples in the Specification are
not required. Appeal Br. 6. The Appellant provides definitions of basic,
disperse, direct and reactive dyes from Phyllis G. Tortora & Robert S.
Merkel, Fairchild’s Dictionary of Textiles (7th ed. 2009)5 (see Appeal Br. 9–
10), which evidence that the ordinary artisan at the time of the invention was
familiar with these textile dyes. See also Spec. ¶ 12 (distinguishing between
conventional, disperse dyes and direct or reactive dyes). Accordingly, we
determine that the claim recitation of “a dye selected from the group
consisting of direct dyes and reactive dyes” is, at most, broad, but not
indefinite. See In re Miller, 441 F.2d 689, 693 (CCPA 1971) (“[B]readth is
not to be equated with indefiniteness.”).
The Examiner also argues that the claims are indefinite because there
is no description of specific functional groups that are capable of reacting
with a reactive dye. Final 5–6. As noted above, a claim is indefinite “when it
contains words or phrases whose meaning is unclear.” Packard, 751 F.3d at
1309. The Examiner has not identified language that is unclear, but seems to

5 Relevant pages were submitted with the Appellant’s After-Final Response,
filed January 16, 2018.
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conflate the definiteness requirement of 35 U.S.C. § 112(b) with the
enablement requirement of 35 U.S.C. § 112(a). See In re Wright, 999 F.2d
1557, 1561 (Fed. Cir. 1993) (“[T]o be enabling, the specification of a patent
must teach those skilled in the art how to make and use the full scope of the
claimed invention without ‘undue experimentation.’”).
In sum, for the reasons discussed above, we do not sustain the
Examiner’s indefiniteness rejection of claims 1 and 3–6 under 35 U.S.C.
§ 112(b).
Obviousness Rejection
The Examiner rejected claims 1 and 3–6 under 35 U.S.C. § 103 as
unpatentable over Davis, as evidenced by the AAPA, and in further view of
Branum. Davis “relates to polyethylene terephthalate fiber and film-forming
polyester having an affinity for basic type dyes without loss of valuable
physical properties.” Davis 1:22–25. Davis is said to have “discovered that a
basic dyeable polyester fiber and film-forming polymer may be produced by
incorporating in the polymer, minor amounts of a metal salt of isethionic
acid together with minor amounts of a dye opener.” Id. at 1:46–50. Davis
defines “dye opener” as “a di-functional compound selected from the group
consisting of diols and ethers thereof, di-carboxylic acids and esters thereof,
mono-hydroxycarboxylic acids and combinations of any of the foregoing
compounds.” Id. at 1:51–55. Davis discloses that adipic acid is an especially
suitable dicarboxylic acid. Id. at 2:1–2. Davis further discloses that DEG
content preferably is maintained within the range of 3 to 15 mole%. Id. at
2:37–39.
The Examiner found that Davis discloses a fiber containing 3 to 17
mole% adipic acid, which encompasses the Appellant’s claimed range, and
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DEG in an amount that overlaps the claimed range. Final 8. The Examiner
found that the ordinary artisan would have included 500 to 4000 ppm
pentaerythritol in Davis’s fibers to obtain fibers with reduced tendency to
pill, as taught by Branum. Id. at 8–9 (citing Branum ¶¶ 13, 48, 50, 51, 55).
The Examiner found that Davis’s fibers, as modified by Branum, would
have included the same essential components in the same amounts claimed
and, therefore, would have been capable of being dyed with the same types
of dyes claimed by the Appellant, “or at least with direct dye as . . . admitted
by the [Appellant]. Id. at 8 (quoting Spec. ¶ 12 (the AAPA) (“While it is
known that increased levels of DEG and/or addition of adipic acid improve
dye uptake in polyester fibers, this refers to conventional disperse dyes.” (the
Appellant’s emphasis omitted))).
The Appellant argues that the Examiner erred reversibly in finding
that Davis’s fiber includes a direct dye or a reactive dye. See Appeal Br. 8.
The Appellant cites Fairchild’s Dictionary of Textiles as evidence that the
basic dyes described in Davis are not direct or reactive dyes as required by
the claims. See id. at 9–10. In response, the Examiner argues that because
Davis’s fiber, as modified by Branum, would have included the same
amount of adipic acid, DEG, and pentaerythritol as claimed, the fiber would
have been capable of undergoing a dyeing process with direct and reactive
dyes. Ans. 13.
The Appellant’s argument is persuasive of reversible error in the
Examiner’s conclusion of obviousness. Specifically, the Examiner’s finding
that Davis’s modified fiber would have been capable of being dyed with a
direct dye or a reactive dye is insufficient to support a conclusion of
obviousness because the claims do not recite a “dyeable” fiber, but explicitly
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require a “dyed polyester fiber consisting essentially of . . . a dye selected
from the group consisting of direct dyes and reactive dyes.” See Claims filed
January 16, 2018. The Examiner has not refuted the Appellant’s evidence
that Davis’s basic dye is not a direct dye or a reactive dye as claimed. Nor
has the Examiner explained why one of ordinary skill in the art would have
used a direct dye or a reactive dye in producing Davis’s fiber.
Accordingly, we do not sustain the rejection of claims 1 and 3–6
under 35 U.S.C. § 103 as unpatentable over Davis, as evidenced by the
AAPA, and in further view of Branum.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6 112(b) indefiniteness 1, 3–6
1, 3–6 103 Davis, the AAPA,
Branum
1, 3–6
Overall
Outcome
1, 3–6

REVERSED