Ryan McEneany et al.

Patent Trials and Appeals Board

Sep 4, 2020

2019006615 (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.
13/370,952 02/10/2012 Ryan J. McEneany KCX-1772
(64797999US01)
7414
22827 7590 09/04/2020
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
TATESURE, VINCENT
ART UNIT PAPER NUMBER
1786
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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN J. MCENEANY, VASILY A. TOPOLKARAEV,
NEIL T. SCHOLL, and THOMAS A. EBY
Appeal 2019-006615
Application 13/370,952
Technology Center 1700
Before TERRY J. OWENS, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.

OWENS, 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 1–5, 7–14, 16–19, and 32–35. 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(a). Appellant identifies the real party in interest as Kimberly-Clark
Worldwide, Inc. Appeal Br. 1.
Appeal 2019-006615
Application 13/370,952

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CLAIMED SUBJECT MATTER
The claims are directed to RENEWABLE POLYESTER FIBERS HAVING
LOW DENSITY. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A fiber that is formed from a thermoplastic
composition, the thermoplastic composition comprising:
at least one rigid renewable polyester having a
glass transition temperature of about 0°C or more, wherein
the renewable polyester is polylactic acid or polyethylene
terephthalate and wherein the renewable polyester
constitutes about 70 wt.% or more of the composition,
from about 1 wt.% to about 30 wt.% of at least
one polymeric toughening additive based on the weight of
the renewable polyester,
from about 0.1 wt.% to about 20 wt.% of at least
one interphase modifier based on the weight of the
renewable polyester, and
wherein the thermoplastic composition has a
morphology in which a plurality of discrete primary domains
and voids are dispersed within a continuous phase, the
domains containing the polymeric
toughening additive and the continuous phase containing the
renewable polyester,
wherein the fiber has a density of about 1.4 grams per cubic
centimeter or less,
wherein the average percent volume of the
composition that is occupied by the voids is from about 20%
to about 80% per cubic centimeter,
wherein the composition exhibits a tensile
elongation at break of about 50% or more, measured at 23°C
according to ASTM D638-10e, and
wherein the polymeric toughening additive has
an elongation at break that is greater than the elongation at
break of the rigid renewable polyester.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hernandez US 5,458,971 Oct. 17, 1995
Miller US 2003/0153684 A1 Aug. 14, 2003
Tanaka US 2004/0038028 A1 Feb. 26, 2004
Travelute US 2005/0221075 A1 Oct. 6, 2005
MacDonald US 2009/0157022 A1 June 18, 2009
Sakamoto US 2010/0143717 A1 June 10, 2010

REJECTIONS
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
claims 1–5, 7, 11–14, 16–18, and 35 over Travelute in view of Hernandez;
claim 8 over Travelute in view of Hernandez, Tanaka, and Sakamoto;
claims 9 and 10 over Travelute in view of Hernandez and Tanaka; claim 19
over Travelute in view of Hernandez and Macdonald; and claims 32–34 over
Travelute in view of Hernandez and Miller.
OPINION
We need address only the sole independent claim, i.e., claim 1. That
claim requires a fiber formed from a thermoplastic composition comprising
about 70 wt% or more of polylactic acid or polyethylene terephthalate.
Travelute discloses fibers “comprising a polyester copolymer for
providing a greater elasticity than a corresponding monomer-based
polyester” (Para. 18). The polyester copolymer preferably is a copolymer of
polyester and polyethylene glycol with the polyethylene glycol being present
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in an amount of about 6–10 wt% (Para. 21). The preferred polyester is
polyethylene terephthalate (Para. 105). In an example, fibers are made from
a blend containing the copolymer and 0.5 wt% polyethylene terephthalate
(Para. 119).
Hernandez discloses bicomponent fibers having 10/90 to 30/70 ratios
of homopoly(ethylene terephthalate) to polyethylene terephthalate
containing tri mellitate chain-brancher (col. 7, ll. 56–62; col. 10, ll. 15–17).
The chain-brancher causes the bicomponent fibers to have a spiral crimp
which, when the fibers are used in pillows, increases pillow firmness (col. 9,
ll. 38–49).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Appellant argues that Travelute’s polyethylene
terephthalate/polyethylene glycol copolymer is not polyethylene
terephthalate as required by the Appellant’s claim 1 and that Hernandez does
not disclose the concentration of polyethylene terephthalate within a
composition but, rather, “is directed to the concentration ratio of one
polymer within one component of a bicomponent fiber to the other polymer
of the other component of the bicomponent fiber” (Appeal Br. 6, 8).
The Examiner finds that “Travelute teaches a fiber that is formed from
a thermoplastic composition comprising at least one rigid renewable
polyester with a glass transition temperature of between 50 and 75 Celsius
such as polyethylene terephthalate (Travelute, abstract, claim 1, paragraphs
[0105] and [0118])” (Non-Final Act. 2).
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Travelute’s paragraph 118 does not mention a polyester. Travelute’s
paragraph 105 states: “In preferred embodiments the polymer is polyester,
including copolymers, with copolymers of polyethylene terephthalate and
polyethylene glycol being preferred.” However, Travelute’s paragraphs 11–
13, 18, 21, 35, 38, 40, 44, 45, 48, 72, 78, 103, and claims 1, 40, 48, 55, and
58 indicate that by “polyester,” Travelute is referring to the polyester used to
form a polyester copolymer. “‘[D]uring examination proceedings, claims
are given their broadest reasonable interpretation consistent with the
specification.’” In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir.
2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The
Appellant’s Specification does not indicate that the claim term “polyethylene
terephthalate” includes polyethylene terephthalate copolymers (Spec. 6: 22–
23).
The Examiner finds that “Travelute teaches a homopolymer of PET
which is blended in the fiber forming composition in addition to the
copolymerized PET (Id., paragraph [0119])” (Ans. 4). That blend contains
0.5 wt% PET (polyethylene terephthalate) homopolymer (Para. 119). The
Examiner finds that “Hernandez teaches bicomponent voided polyester
fibers for use in fiber fill applications such as in pillows and other filled
articles (Hernandez, abstract) wherein the PET component is preferably
included in an amount greater than 70% (Id., Column 10, lines 15-17)”
(Non-Final Act. 3), and concludes that
[i]t would have been obvious to one of ordinary skill in the art at the
time the invention was made to form the fibers of Travelute, using a
higher proportion of PET such as greater than 70%, as taught by
Hernandez, motivated by the desire to form a conventional fiber
useful in fiber fill applications, comprising a demonstrably suitable
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amount of PET which would predictably result in a less elastic and
thus firmer filled material. [Non-Final Act. 3–4]

The Examiner does not establish that Hernandez’s disclosure of
bicomponent fibers having 10/90 to 30/70 ratios of homopoly(ethylene
terephthalate) to polyethylene terephthalate containing tri mellitate chain-
brancher to increase pillow firmness (col. 7, ll. 56–62; col. 9, ll. 38–49;
col. 10, ll. 15–17) would have provided one of ordinary skill in the art with
an apparent reason to use at least 70 wt% PET in Travelute’s blend
containing 0.5 wt% PET (Para. 119).
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)). The Examiner has not provided the required articulated
reasoning with rational underpinning. Accordingly, we reverse the
rejections.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7, 11–
14, 16–18,
35
103 Travelute,
Hernandez
1–5, 7, 11–
14, 16–18,
35
8 103 Travelute,
Hernandez, Tanaka
Sakamoto
8
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9, 10 103 Travelute,
Hernandez, Tanaka
9, 10
19 103 Travelute,
Hernandez,
MacDonald
19
32–34 103 Travelute,
Hernandez, Miller
32–34
Overall
Outcome
1–5, 7–14,
16–19, 32–
35

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).
REVERSED