Ex Parte Baqai et alDownload PDFPatent Trial and Appeal BoardDec 13, 201612942628 (P.T.A.B. Dec. 13, 2016) Copy Citation 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. 12/942,628 11/09/2010 Navaid Baqai 026903.087911 2036 61494 7590 12/13/2016 Ober, kaler, Grimes & Shriver 100 Light Street BALTIMORE, MD 21202 EXAMINER DODDS, SCOTT ART UNIT PAPER NUMBER 1746 MAIL DATE DELIVERY MODE 12/13/2016 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 NAY AID BAQAI and PAUL WEEDLUN Appeal 2015-006470 Application 12/942,628 Technology Center 1700 Before LINDA M. GAUDETTE, JEFFREY W. ABRAHAM, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-006470 Application 12/942,628 Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claims 1, 3, 5, 6, and 19.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The invention relates to a method of making a textile embellishment (e.g., patches, emblems, appliques, labels, etc.) that can be permanently bonded to waterproof or waterproof-breathable fabrics such as Gore-Tex®, Sympatex™ and other fabrics having durable water repellant (“DWR”) finishes. Specification filed Nov. 9, 2010 (“Spec.”), 2:10—14. Claim 1 is representative of the claimed invention, and is reproduced below: 1. A method of providing an integrated textile embellishment on a waterproof and/or waterproof-breathable textile based product, comprising the steps of: (a) providing a base substrate of textile fibers formed into a woven, knit or nonwoven sheet having a first side and a second side, said base substrate being decorated on said first side; (b) bonding a second layer of polyester film material having a thickness within a range of from 0.0025 to 0.005 inches by a first side thereof to the second side of the base substrate to expose a second side of said second layer of material having a smooth, non water soluble surface with a known low surface energy; (c) laminating a urethane based adhesive on said second exposed side of said second layer of material to provide a wash durable, sustainable bond, said laminated urethane based adhesive layer being 1 Appellants identity the real party in interest as Fion Brothers Co., Inc. Appeal Brief filed Mar. 26, 2014 (“Br.”), 1. 2 Final Office Action mailed July 25, 2013. 3 Claims 13 and 15 are also pending and stand finally rejected under 35 U.S.C. § 103(a). See Br. 2; Examiner’s Answer mailed June 4, 2014 (“Ans.”), 3. Appellants expressly state, however, that they do not appeal the rejections of claims 13 and 15. Br. 2. An after-final amendment cancelling claims 2, 7—12, 14, 20, and 21 (filed December 26, 2013) was entered by the Examiner in an advisory action mailed January 3, 2014. 2 Appeal 2015-006470 Application 12/942,628 within a range of from 0.003 to 0.006 inches thick and having an activation temperature of approximately 310° F; and (d) adhering said base substrate to said waterproof and/or waterproof-breathable textile based product by said laminated urethane based adhesive using a combination of heat and pressure to completely bond said urethane based adhesive, second layer material, and base substrate to said waterproof and/or waterproof- breathable textile based product; whereby said adhered textile embellishment can withstand at least twenty laundering cycles without degradation of said bond. Br. 12 (App’x A).4 The claims stand rejected under 35 U.S.C. § 103(a) as follows: 1. claims 1, 3, and 19 over Haigh (US 4,981,742, iss. Jan. 1, 1991) in view of Stahl (US 6,015,604, iss. Jan. 18, 2000), and as further evidenced by Tuftane (Tuftane Thermoplastic Polyurethane, Material Comparison : Tuftane - Permali Gloucester, http://www.tuftane.com/material-comparison); and 2. claims 5 and 6 over Haigh in view of Stahl and Tuftane, and as further evidenced by PETG ( VIVAK® PETG (Polyethylene Terephthalate Glycol), Plastics International Distributor to the World, http://www.plasticsintl.com/datasheets/PETG.pdf). Appellants present separate arguments in support of patentability of independent claims 1 and 19. See generally Br. 6—11. Appellants expressly state that claims 3,5, and 6 stand or fall with claim 1. Id. at 5. 4 We note that in the last paragraph of claim 19, the only other independent claim on appeal, the term “said base substrate” lacks antecedent basis. We further note that the first paragraph in the body of the claim uses the term “applique” and the last paragraph uses the term “embellishment” to refer to the same feature. Id. at 13. Appellants should consider amending claim 19 to correct these inconsistencies in the event of further prosecution. 3 Appeal 2015-006470 Application 12/942,628 We have considered the arguments made by Appellants in their Appeal Brief, but are not persuaded of reversible error in the fact finding and reasoning relied on by the Examiner in determining the invention, as recited in claims 1 and 19, would have been obvious over Haigh and Stahl, as further evidenced by Tuftane. Rather, in the Final Office Action and the Answer, the Examiner has demonstrated that a preponderance of the evidence on this appeal record favors a conclusion of obviousness as to appealed claims 1, 3, 5, 6, and 19. See Final Act. 6—10; Ans. 3—7. The Examiner also has addressed fully the arguments advanced by Appellants in their Appeal Brief, and we agree with the Examiner’s explanation of why these arguments are not convincing, e.g., Appellants attempt to distinguish the claimed invention from the prior art based on unclaimed features and/or arguments that are not supported by persuasive evidence. Ans. 7—12. We, therefore, adopt the Examiner’s fact finding and reasoning (Final Act. 6—10; Ans. 3—12) in sustaining the Examiner’s rejections of claims 1, 3, 5, 6, and 19. We add the following comments regarding Appellants’ attempt to distinguish the claimed invention from the prior art based on features that are not recited explicitly in the claims. Appellants’ primary argument is that the Examiner erred in finding Appellants’ claimed second layer/polyester film reads on Haigh’s glycol-modified polyethylene terephthalate polymer (PETG) layer. See generally Br. 6—10; Final Act. 7. Appellants argue the present invention requires a polyester film that is capable of creating a sustainable bond between an applique and a polyurethane adhesive layer, while Haigh requires a material that prevents transference of dyestuffs to garments from thermally applied patches, etc. Br. 6—7. Appellants argue “[t]he melting temperature of [Haigh’s PETG] is within the range of from 4 Appeal 2015-006470 Application 12/942,628 428 - 554 F, far too high to melt concurrently with Appellant’s urethane-based tertiary adhesive at its activation temperature of approximately 310 F.” Id. at 7. The Specification discloses that compatibility of the second layer/polyester film to the adhesive layer is “critical in creating a sustainable bond between the textile embellishment and the waterproof and/or waterproof-breathable product [] to which it is applied.” Spec. 7:18—21 (emphasis added); see also id. at 8:7—10. However, Appellants have not identified, nor do we find, any disclosure in the Specification indicating that in order to meet this compatibility requirement, the layers must have similar melting temperatures, or temperatures that allow concurrent melting at the 310 °F activation/glue line temperature of the urethane based adhesive layer recited in claims 1 and 33 (see Br. 12—13 (App’x A)). To the contrary, a second layer/polyester film having a 300 °F glue-line temperature is described merely as preferred when an adhesive layer having a glue-line temperature of 310 °F is used. Id. at 9:4—7. In sum, for the reasons expressed in the Answer and above, Appellants’ arguments are not persuasive of reversible error in the Examiner’s conclusion of obviousness. Accordingly, we sustain the rejections of claims 1, 3, 5, 6, and 19 based on the fact finding and reasoning set forth in the Final Office Action and the Answer. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. §1.136(a)(l)(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation