Ex Parte Abed et al

Patent Trial and Appeal Board

Jan 29, 2018

10599721 (P.T.A.B. Jan. 29, 2018)

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.
10/599,721 07/30/2007 Jean-Claude Abed 059459/317776 3281
826 7590
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
GOLDEN, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-CLAUDE ABED, EDUARD HERD A,
HENNING ROETTGER, and RALF SODEMANN
Appeal 2017-004869
Application 10/599,7211
Technology Center 1700
Before GEORGE C. BEST, WESLEY B. DERRICK, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections adverse to the patentability of claims 1, 3, 5—23, and 25 under 35
U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellants identify the real party in interest as Fitesa Germany, GmbH.
App. Br. 1.
Appeal 2017-004869
Application 10/599,721
SUBJECT MATTER
The claimed subject matter “relates to a spunbond polymer-fiber
fleece which has low permeability to light, liquid materials, and solid
materials” and the use of such fleece in such fields as filter technology.
Spec. 1:3-5, 14:19—22.2
Sole independent claim 1 is illustrative of the subject matter on
appeal, and is copied below with key limitations at issue in this appeal
italicized for emphasis:
1. Spunbond fleece of melt spun polymer fibers,
characterized by the fact that
the melt spun polymer fibers being stretched and having
a non-circular cross section with a trilobal fiber cross section,
the melt spun polymer fibers have a low fiber titer
between 0.5 and 5 dtex,
the spunbond fleece has a low weight per unit area of
between 7 g/m2 and 20 g/m2,
said melt spun polymer fibers being stretched and having
a non-circular cross section with a trilobal fiber cross section
have preferred directions in the spunbond fleece and are spun
and directly laid in a preferred direction perpendicular to the Z-
direction and in the machine direction and/or transverse to the
machine direction section such that the overlap of the cross
sections of the fibers is greater than fleeces with fibers of
circular cross sections at the same titer, and
the spunbond fleece exhibiting a greater reduction of light
permeability [than] a fleece having the same weight per area and
circular cross section fibers having the same titer.
App. Br. 10 (emphasis added).
2 Our reference to page and line numbers is to the page and line numbers
sequentially as the Specification as filed has neither page nor line numbers.
2
Appeal 2017-004869
Application 10/599,721
STATEMENT OF THE CASE
Claims 1, 3, 5—23, and 25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brignola3 in view of Murphy4 alone, or in
combination with other references. Final Act. 6—7;5 Ans. 2—11.
The Examiner finds that Brignola disclose all of the limitations recited
in sole independent claim 1, except for the recited “overlap of the cross
sections of the fibers is greater than fleeces with fibers of circular cross
sections at the same titer,” and the recited light permeability property. Non-
Final Act. 3^4; Ans. 3. The Examiner finds that Murphy discloses the use of
non-circular cross section fibers, such as those with a trilobal cross-section,
yields an increased surface area, which allows for either an increased
efficiency for a given weight batt or comparable efficiency with a reduced
weight batt. Non-Final Act. 4; Ans. 3. The Examiner concludes that it
would have been obvious for the skilled artisan to modify the spunbond
fleece of Brignola with the non-circular fibers of Murphy because the skilled
artisan would be “motivated by the desire to explicitly tailor the efficiency
of the final filtration media.” Non-Final Act. 5; Ans. 4. The Examiner also
determines that such modified fleece “would intrinsically provide for a
reduction of the light permeability since the spaces between the fibers of the
nonwoven fabric would essentially be minimized when compared to a fabric
of circular cross-section fibers having the same titer due to the increased
fiber surface area.” Non-Final Act. 4; Ans. 3.
3 Edward L. Brignola et al., US 5,750,151, issued May 12, 1998.
4 William F. Murphy, Jr., US 5,820,645, issued October 13, 1998.
5 The Final Office Action dated November 4, 2015 incorporates the
reasoning as set forth in the Non-Final Office Action dated March 20, 2015.
3
Appeal 2017-004869
Application 10/599,721
OPINION
We have considered Appellants’ arguments (App. Br. 3—8; Reply Br.
4—10) and are unpersuaded that Appellants have identified any reversible
error in the Examiner’s rejections. In re Jung, 637 F.3d 1356, 1365—66
(Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring an
Appellant to identify the alleged error in the Examiner’s rejection).
Therefore, we sustain the obviousness rejections before us based on the
findings of fact, conclusions of law, and rebuttals to arguments well-
expressed by the Examiner in the Non-Final Action, Final Action and in the
Answer. We add the following comments for emphasis.
Appellants spend significant portions of their primary Brief (App. Br.
4—7) arguing that the nonwoven fibers of the prior art have a random
orientation which differs from the orientation of the claimed fibers, i.e.,
“preferred directions in the spunbond fleece . . . directly laid in a preferred
direction perpendicular to the Z-direction and in the machine direction
and/or transverse to the machine direction section.” App. Br. 10 (emphasis
added). This argument fails to identify reversible error because, as correctly
found by the Examiner (Ans. 11), the recitation of a “preferred” direction of
the claimed fibers does not amount to a meaningful claim limitation because
it does not necessarily require the fibers to have the preferred orientation.
Rather, such language merely expresses a preference for a certain orientation
of the fibers.
We are likewise unpersuaded by Appellants’ arguments that the
modified Brignola fiber would not inherently provide the recited light
permeability property. App. Br. 5—8. “[T]o rely on inherency to establish
the existence of a claim limitation in the prior art in an obviousness
analysis[,] the limitation at issue necessarily must be present, or the natural
4
Appeal 2017-004869
Application 10/599,721
result of the combination of elements explicitly disclosed by the prior art.”
PAR Pharni., Inc. v. TWIPharms, Inc., 773 F.3d 1186, 1195-96 (Fed. Cir.
2014). Furthermore, to properly rely on the doctrine of inherency, “the
Examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex Parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). Once the Examiner so
provides, the burden then shifts to the patent applicant to demonstrate
otherwise. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Applying these concepts to the instant case, the Examiner finds, and
Appellants do not dispute, that Murphy teaches that trilobal fibers have an
increased surface area as compared to fibers having a circular cross-section.
Non-Final Act. 4; Ans. 3; Murphy 5:6—12. Based on this teaching, the
Examiner provides cogent technical reasoning that the increased surface area
of the trilobal fibers would necessarily minimize the spaces between such
fibers, which would, in turn, yield a fleece with reduced light permeability.
Non-Final Act. 4—5; Ans. 3^4. Accordingly, the Examiner has shifted the
burden to Appellants to demonstrate that the recited reduction in light
permeability would not have been inherent. Appellants have failed to
provide such evidence. In this regard, we note that Appellants’ sketch
diagram (App. Br. 7) is not persuasive evidence for several reasons. First, as
noted by the Examiner (Ans. 13), the sketch does not necessarily reflect an
increase in surface area of the trilobal fabric vis-a-vis the circular cross-
section fiber. Also, the sketch only represents one thread each of a circular
cross-section and trilobal fiber, and thus does not show that the spaces
between multiple trilobal fibers would not inherently be minimized.
Accordingly, Appellants’ diagram amounts to little more than attorney
5
Appeal 2017-004869
Application 10/599,721
argument, which cannot take the place of objective evidence. In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974).
Finally, we observe that each of Appellants’ arguments submitted in
the Reply Brief (Reply Br. 4—10) are untimely because Appellants have not
shown good cause regarding why these arguments could not have been
raised in the Appeal Brief. We, therefore, decline to consider them. See 37
C.F.R. § 41.37 (c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47, and
41.52, any arguments or authorities not included in the appeal brief will be
refused consideration by the Board for purposes of the present appeal.”).
See also 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the present
appeal, unless good cause is shown.”). We emphasize here that each of the
statements that Appellants attribute to the Examiner (Reply Br. 4) was first
made in the Final Rejection. Final Act. 2—5.
DECISION
The Examiner’s final decision to reject claims 1, 3, 5—23, and 25 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
6