Ex Parte Allison et al

Board of Patent Appeals and Interferences

Aug 18, 2009

10888963 (B.P.A.I. Aug. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte T. J. ALLISON, CARROLL OWENBY, and JACK DAVIS
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Appeal 2009-002744
Application 10/888,963
Technology Center 1700
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Decided: August 18, 2009
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Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 33-37, 39, 40, and 42. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

Appeal 2009-002744
Application 10/888,963

STATEMENT OF THE CASE
Claim 33 is illustrative of the subject matter on appeal and is
reproduced below (emphasis added):

33. A porous tufted carpet, comprising:

a backing layer of fibrous material having opposite first and second
sides and a plurality of fiber tufts that extend outwardly from the first
side, wherein the backing layer is formed by applying a layer of
heated thermoplastic material to a side of a layer of fibrous material
having a plurality of yarn tufts extending outwardly from an opposite
side thereof, wherein the heated layer of thermoplastic material
penetrates about 90% of a thickness of the layer of fibrous material;
and

a plurality of air channels formed in the backing layer that extend
between the first and second sides of the backing layer and that
terminate at respective apertures in the backing layer first and second
sides.

The Examiner relied upon the following prior art references:

Sorells 4,112,161 Sep. 05, 1978
Price 6,821,597 B1 Nov. 32, 2004

Von Moody & Howard L. Needles, Tufted Carpe; Textile Fibers,Dyes,
Finishes and Processes 125-131 (William Andrew Publ’g 2004) (hereinafter
Moody) 1.

The Examiner rejected claims 33-37, 39, and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Sorrells. To reject dependent claim 42 under

1 The Examiner relies upon Moody as intrinsic evidence in support of
inherency of a claimed feature.
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35 U.S.C. § 103(a), the Examiner relied upon the combination of Sorrells
and Price.
Appellants argue the claims as a group and focus on claim 33 (App.
Br. 3-8; Reply Br. 1-5). They do not present separate arguments for any of
the dependent claims, nor do they present any additional arguments for the
rejection of claim 42 (App. Br. 8).
Accordingly, we will focus our discussion on independent claim 33.
ISSUE
Have Appellants shown reversible error in the Examiner’s
determination that it is inherent that the hot melt adhesive penetrates into the
woven or nonwoven backing layer of the tufted carpet of Sorrells? If not,
have Appellants shown reversible error in the Examiner’s determination that
it would have been prima facie obvious to optimize the degree of penetration
to “about 90%” as recited in claim 33?
On this record, we answer both of these questions in the negative.
FINDINGS OF FACT (FF)
We adopt the Examiner’s findings of fact with respect to independent
claim 33 as set forth on pages 3-6 of the Answer, as well as the Examiner’s
analysis in the “Response to Argument” section as set out on pages 8-14 of
the Answer, as our own.
Appellants’ Specification describes that the heated thermoplastic
material 16 applied to the backing layer 12 may be
polyethylene (e.g., linear low density polyethylene (LLDPE),
low density polyethylene (LDPE), medium density
polyethylene (MDPE), high density polyethylene (HDPE)),
ethylene vinyl acetate (EVA), polyester, polyolefin, and blends
thereof, as well as other polymers capable of meeting the
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process requirements for extrusion and reheat, including TPO
(thermoplastic olefin), TPE (thermoplastic elastomer), and ESI
(ethylene styrene interpolymer), and blends thereof. An
exemplary secondary layer 16 material is a 220 melt index low
density polyethylene, such as AT 192, available from AT
Polymers, Brampton, Ontario - Canada. The secondary layer
16 material may have a melt index range of between about 4
and about 500 melt index. However, lower or higher melt
indexes may be used if they meet process requirements.

(Spec. 8:13-26; emphasis added)

Sorrells describes that the “hot melt adhesive” (18) applied to
adhesively secure the secondary backing layer (16) to the primary
backing layer (14) may be a combination of an “aromatic
thermoplastic hydrocarbon resin”, “ethylene-vinyl acetate copolymer”
and “a filler” (Sorrells, col. 6, ll. 15-23).
The hot melt adhesive material (16) as described in Appellants’
Specification encompasses the hot melt adhesive material 18 as
exemplified in Sorrells.
PRINCIPLES OF LAW
It is well settled that reliance upon inherency is not improper even
though a rejection is based on 35 U.S.C. § 103 instead of § 102. In re
Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (“The inherent teachings of a
prior art reference, a question of fact, arises both in the context of
anticipation and obviousness.” (citation omitted)).
Appellants have chosen to describe the invention, in part, in terms of
certain physical characteristics of the resulting product produced by the
process described in their specification. Merely choosing to describe the
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invention in terms of variables not present in the prior art does not render the
claimed subject matter patentable. In re Skoner, 517 F.2d 947, 950 (CCPA
1975).
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re
Swinehart, 439 F.2d 210, 213 (CCPA 1971)). See also, In re Best, 562 F.2d
1252, 1255 (CCPA 1977):
Whether the rejection is based on ‘inherency’ under 35 U.S.C.
§ 102, on ‘prima facie obviousness' under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO's inability to manufacture
products or to obtain and compare prior art products.

The discovery of an optimum value of a variable in a known process
or product is usually a matter of obviousness for one of ordinary skill in the
art. Cf. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368-69 (Fed. Cir. 2007).
This is the kind of situation that requires an Appellant to show secondary
considerations such as unexpected results or criticality to overcome the
prima facie case. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980); see
also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellants’ attorney’s arguments do not take the place of evidence in
the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).

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ANALYSIS
The major focus of Appellants’ contentions is that the Examiner has
not established that it is inherent that the hot melt adhesive penetrates the
backing layer 14 of Sorrells. We disagree for the reasons thoroughly
discussed by the Examiner (Ans. 3-6, 8-14). We add the following primarily
for emphasis.
Appellants do not dispute that their secondary layer 16 is a hot melt
adhesive. The hot melt adhesive layer of Sorrells is made of similar
materials as Appellants’ secondary layer 16 (see FF). The primary backing
layer 14 of Sorrells may be a material similar to that described in
Appellants’ Specification as their primary layer 12 (compare Spec. 7:5-18
with Sorrells, col. 5, ll. 5-11, col. 7, ll. 35-41). This further bolsters the
Examiner’s sound reasoning that it is inherent that some of the liquified hot
melt adhesive 18 of Sorrells penetrates the primary backing layer 14 of
Sorrells when it is applied in a heated form under pressure as taught in
Sorrells (Ans. 3-4). Moreover, Appellants have not argued that the materials
utilized in forming the claimed porous tufted carpet are not similar to those
of Sorrells.
We agree with the Examiner, that once it is reasonably established
that some penetration of the backing layer 14 by the hot melt adhesive of
Sorrells is inherent, as here, it follows that optimizing the amount of
penetration to “about 90%” of the backing layer yarns would have been
within the level of ordinary skill in the art (Ans. 5-6). Appellants have not
argued that a person of ordinary skill in the art utilizing the material and
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methods disclosed in Sorrells would not have been capable of achieving
penetration to “about 90%” of the backing layer (see generally App. Br.).
Furthermore, where the Examiner establishes a reasonable basis to
conclude that the claimed invention would have been obvious, as here, (that
is, based on optimizing the degree of penetration) the burden shifts to the
Appellants to rebut the prima facie case by providing evidence of
unexpected results or a showing that the prior art teaches away from the
claimed invention in any material respect. See In re Geisler, 116 F.3d 1465,
1469-70 (Fed. Cir. 1997). Appellants have not directed us to any evidence
to refute the Examiner’s reasonable position that some penetration of the
backing layer of Sorrells occurs when the hot melt adhesive is applied.
Furthermore, Appellants have also not contended that penetration of “about
90%” provides unexpected results (see generally App. Br.; Reply Br.).
Accordingly, Appellants have not shown reversible error in the
Examiner’s determination that it would have been obvious to optimize the
degree of penetration to “about 90%” as claimed.
Appellants make no additional arguments regarding the rejection of
claim 42 on appeal (Br. 8). Accordingly, Appellants have not shown error in
the Examiner’s factual findings and obviousness analysis of claim 42 (Ans.
7).

ORDER
The Examiner’s rejection of claims 33-37, 39, and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Sorrells is affirmed.
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The Examiner’s rejection of claim 42 under 35 U.S.C. § 103(a) as
unpatentable over Sorrells and Price is affirmed.
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
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