David Gray et al.

Patent Trials and Appeals Board

Feb 8, 2022

2021001331 (P.T.A.B. Feb. 8, 2022)

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. 15/709,448 09/19/2017 David A. Gray 4094_005US4 1831 97462 7590 02/08/2022 Mark A. Litman & Associates, P.A. 7001 Cahill Road, Ste. 15A Edina, MN 55439 EXAMINER PIERCE, JEREMY R ART UNIT PAPER NUMBER 1789 MAIL DATE DELIVERY MODE 02/08/2022 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 DAVID A. GRAY and MARK A. LITMAN Appeal 2021-001331 Application 15/709,448 Technology Center 1700 Before BEVERLY A. FRANKLIN, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-8 and 14-19. We have jurisdiction. 35 U.S.C. § 6(b). We reverse. 1 Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as David Gray. Appeal Br. 3. Appeal 2021-001331 Application 15/709,448 2 CLAIMED SUBJECT MATTER The claims are directed to fabrics containing a combination of fabric materials that are moisture-vapor porous. See independent claims 1, 14 Appeal Br. 25, 27 (Claims Appendix). The fabric comprises at least 0.5% by total weight of a superabsorbent polymer (SAP) fiber. Id.; Spec. ¶ 8. Claim 1 is illustrative of the claimed subject matter and is reproduced below with key limitations on appeal italicized: 1. A fabric for delivering active ingredients to a surface when that fabric is positioned against the surface, the fabric comprising a moist-vapor porous combination of fabric materials, and the fabric comprises at least 0.5% by total weight of at least one layer of the fabric of a superabsorbent polymer fiber, and the superabsorbent polymer fiber contains an absorbed aqueous reservoir of an aqueous liquid solution carrying the active ingredients, and wherein the superabsorbent fiber has a coating on its surface of an aqueous penetrable layer through which the liquid solution in the absorbed aqueous reservoir can migrate or flow, carrying the active ingredients onto an exposed surface of the superabsorbent polymer fiber, so that the active ingredients in the liquid solution on the surface of the superabsorbent polymer can react or interact with an environment in contact with the active ingredients in the liquid solution on the surface of the superabsorbent polymer fiber. Appeal 2021-001331 Application 15/709,448 3 REJECTIONS The Examiner maintains the following rejections under pre-AIA 35 U.S.C. § 103(a): I. Claims 1-6, 14, and 15 over Watt2 and Gray3; II. Claims 4-8 over Watt, Gray, and Keusch4; and III. Claims 16-19 over Watt, Gray, and Zhang,5 optionally in view of Keusch. OPINION The dispositive issue on appeal is whether the Gray publication-- relied upon in each rejection--is available as prior art against the subject application. Upon reviewing the positions of the Examiner and Appellant, we are not persuaded that the Examiner has established that Gray is available as prior art. We, therefore, do not sustain the appealed rejections. The Gray publication is in the priority chain of the subject application; namely, the application on appeal is a continuation-in-part application under 35 U.S.C. § 120 of US Application No. 12/977,291, which published as US 2011/0154557 A1 on June 30, 2011 (“Gray,” or “’291 application”). Spec. ¶ 1; Gray, codes (11), (21), (43). At issue here is whether the claims are entitled to a priority date that precedes Gray’s publication date. The Examiner’s position is that the claims are directed to subject matter outside of the scope disclosed in the ʼ291 application. According to the Examiner, 2 US 2007/0225663 A1, published September 27, 2007. 3 US 2011/0154557 A1, published June 30, 2011. 4 US 5,622,168, issued April 22, 1997. 5 US 2006/0004336 A1, published January 5, 2006. Appeal 2021-001331 Application 15/709,448 4 “the effective filing date of the present application is September 19, 2017, and the Gray reference, which is a publication of the parent application and is used as a secondary reference in the Section 103 rejections . . . is valid prior art.” Ans. 6-7. The Examiner cites to three limitations6 in the independent claims to evince a lack of written description support in the ̓ 291 application: 1) “a moisture-vapor porous combination of fabric materials,” 7 2) “absorbed aqueous reservoir of an aqueous liquid solution,” and 3) “aqueous penetrable layer.” Ans. 7-10. Appellant disputes the Examiner’s position regarding these three limitations, and asserts that Gray is not available as prior art. Appeal Br. 10-23. Specifically, Appellant provides citations to where it believes Gray 6 We observe that the Final Office Action and Advisory Action provide a possible fourth limitation that purportedly lacks support in the application on appeal--i.e., “the surface of the superabsorbent polymer can react or interact with an environment in contact with the active ingredient.” Final Act. 9; Adv. Act. 2. The Examiner provides no analysis to support this determination, however, and fails to maintain this assertion in the Answer. See Ans. 7 (“An analysis of three new limitations is provided below”) (emphasis added); id. at 7-9 (analyzing the three limitations that the Examiner asserts lacks support). Thus, we need not determine whether the limitation “the surface of the superabsorbent polymer can react or interact with an environment in contact with the active ingredient” has support in the Gray application. 7 In the event of further prosecution, Appellant is encouraged to correct the apparent inconsistency between independent claim 1 reciting “a moist-vapor porous combination” and independent claim 14 reciting “a moisture-vapor porous combination.” Appeal 2021-001331 Application 15/709,448 5 discloses each of the three limitations identified by the Examiner. Id. at 14- 21. We address each of these limitations infra. “a moist[ure]-vapor porous combination of fabric materials” Appellant asserts that support exists for this limitation in Gray’s Abstract and paragraphs 29 and 56. Appeal Br. 14-16. We agree. Gray recognizes that the apparel made from the fabric “is sufficiently porous as to allow a human to breath[e] comfortably through the fabric when placed over the mouth and nose.” Gray, Abstract. That disclosure is sufficient to evince written description support in Gray that the apparel made from the fabric is “moisture-vapor porous” because Gray itself recognizes that exhaled breath contains moisture. Id.; see also id. ¶¶ 26 (discussing moisture injected into the fabric “by exhalation from the wearer”), 27 (“exhalation, and the passage of humid gas expelled from the lungs of the user, provides moisture”). Additionally, Appellant is correct that Gray’s paragraphs 29 and 56 evince possession of a combination of fabric materials. For example, Gray discloses “a distinct superabsorbent polymer (SAP) fiber that is combined with conventional textile fibers,” and that such blending of SAP and conventional fibers “provides an ease of manufacture and an ease of control of the overall properties of a final fabric, including feel, drape, flexibility, and antimicrobial activity.” Gray ¶ 29. Gray discloses that the SAP is provided as a fiber or a filament and that the fibers are “usually blended with other fibers to form threads or yarns or filaments.” Id. ¶ 56. Although the Examiner acknowledges that such fiber blends to make threads or yarns would constitute “a fabric material,” the Examiner asserts that a “fabric material” can be broader in scope and can include “a woven Appeal 2021-001331 Application 15/709,448 6 fabric, a knitted fabric, or a nonwoven fabric. And a ‘combination’ of these fabric materials could encompass multiple layers of fabric.” Ans. 8. The Examiner asserts the ʼ291 application does not disclose the broader concept of a combination of fabric materials, and would only support blends of fibers. Id. The ̓ 291 application need not disclose the broadest possible scope of “a combination of fabric materials” in order to evince possession of this limitation. Here, the Examiner raises an issue of claim breadth rather than possession which is the relevant inquiry for our purposes of determining whether the claimed subject matter finds support in the ̓ 291 application. See In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (Noting that the examiner “‘bears the initial burden . . . of presenting a prima facie case of unpatentability.’ In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Insofar as the written description requirement is concerned, that burden is discharged by ‘presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.’ . . . If the applicant claims embodiments of the invention that are completely outside the scope of the specification, then the examiner . . . need only establish this fact to make out a prima facie case.” (emphasis added)). That is not the case here because the Examiner acknowledges that the ̓ 291 application “discusses blends of fibers to make threads or yarns” and that “a ‘fabric material’ can be a fiber, thread, or yarn.” Ans. 7-8. Thus, the Examiner has not established that Gray fails to disclose this limitation. Appeal 2021-001331 Application 15/709,448 7 “absorbed aqueous reservoir of an aqueous liquid solution” We begin by noting that the Examiner relies on Gray in the obviousness rejection to teach this limitation. See Final Act. 4 (asserting that it would have been obvious “to provide an absorbed aqueous reservoir for the active ingredient, as shown to be known in the art by Gray.” (emphasis added)). That finding stands in direct opposition to the Examiner’s finding that this limitation is not disclosed in Gray. Id. at 9. In any event, we have reviewed the portions of Gray cited by Appellant (Appeal Br. 16-20) and agree that this limitation is described in sufficient detail to apprise the skilled artisan of its possession. Gray ¶¶ 8, 9, 20, 73, 74. Appellant persuasively argues that “the very nature of a reservoir [is to] maintain and supply[] a liquid,” and that Gray discloses this concept. Appeal Br. 17 (emphasis omitted). We additionally note here that the Examiner provides no support for the proposition that a reservoir necessarily requires release of a liquid “when desired or necessary.” Ans. 9. Moreover, the Examiner appears to focus, improperly, on whether the term “reservoir” appears ipsis verbis within Gray. Ans. 9. Such express disclosure is not required. Alton, 76 F.3d at 1175. “an aqueous penetrable layer” Appellant asserts that support exists for this limitation in Gray’s paragraph 74. Appeal Br. 20. We agree. Gray discloses that The active compositions should comprise as a single layer or blended layer or combinations of layers at least the antimicrobial agent, a water-absorbing or water-holding component (WHA) . . . [which is preferred to be] hygroscopic, a term understood in the art as requiring that the material active[ly] withdraw moisture from air in contact with the material. Appeal 2021-001331 Application 15/709,448 8 Gray ¶ 74. (emphases added). The Examiner does not explain, nor do we discern, how such disclosure fails to evince an aqueous penetrable layer. Gray is clear that the layer contains a “water-absorbing or water-holding component” and draws the moisture out of the air in contact with the layer. Gray ¶ 74. The Examiner’s proposed definition in the Answer for “penetrable” to require “things to pass through” falls short because it is unsupported by evidence. Ans. 9. The Examiner also appears to once again improperly focus on whether the term “penetrable” is disclosed ipsis verbis in Gray, which is not the standard. Alton, 76 F.3d at 1175. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s) / Basis Affirmed Reversed 1-6, 14, 15 103(a) Watt, Gray 1-6, 14, 15 4-8 103(a) Watt, Gray, Keusch 4-8 16-19 103(a) Watt, Gray, Keusch, Zhang 16-19 Overall Outcome 1-8, 14-19 REVERSED