Ex Parte Barak et alDownload PDFPatent Trial and Appeal BoardJan 24, 201811951736 (P.T.A.B. Jan. 24, 2018) 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. 11/951,736 12/06/2007 Yehuda Barak 7640-X07-043CIP 8928 27317 7590 01/25/2018 Fleit Gibbons Gutman Bongini & Bianco PL 21355 EAST DIXIE HIGHWAY SUITE 115 MIAMI, EL 33180 EXAMINER CHEVALIER, ALICIA ANN ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 01/25/2018 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 YEHUDA BARAK and MONDER MOIS Appeal 2016-004763 Application 11/951,736 Technology Center 1700 Before CATHERINE Q. TIMM, BRIAN D. RANGE, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellants1 request our review under 35 U.S.C. § 134(a) of the Examiner’s decision to finally reject claims 1—6, 8—10, 13—17, 19-21, and 23—25. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE2 Appellants claim a process for manufacturing a cotton- or cellulose- 1 Appellants identify Delta Galil Industries, Ltd. as the real party in interest. Appeal Brief filed August 31, 2015 (“App. Br.”), 3. 2 We heard oral arguments from Appellants’ representative on January 17, 2018. Appeal 2016-004763 Application 11/951,736 containing fabric that exhibits improved moisture management compared to fabric not manufactured by the process, the moisture management further improving with repeated washing of the fabric. App. Br. 3—6. Appellants also claim a process for manufacturing hydrophobized yam. Claims 1 and 24 illustrate the subject matter on appeal and are reproduced below: 1. A process for manufacturing a cotton- or cellulose- containing fabric which exhibits improved moisture management compared to fabric not manufactured by the process, the moisture management further improving with repeated washing of the fabric, the process consisting of three consecutive steps: i) a hydrophilization step including treating cotton or cellulose fibers with a strongly defatting composition containing a mixture of a strong alkali and a detergent, the composition added to the fibers to clear the fibers of oily and waxy materials and other impurities, thereby decreasing hydrophobicity of the fibers and converting the fibers to super- hydrophilic filaments; ii) a hydrophobization step including treating the super- hydrophilic filaments resulting from carrying out step i) with a composition containing nanoparticles of silicone to encapsulate the super-hydrophilic filaments in silicone, wherein the treating includes immersing the superhydrophilic filaments in a suspension comprising silicone nanoparticles bringing each individual super-hydrophilic filament of the super-hydrophilic filaments in contact with the silicone nanoparticles, thereby obtaining hydrophobized yam; and iii) a production step including tightly weaving or knitting the hydrophobized yam obtained from carrying out step ii) into a fabric, the tight weaving or knitting forming inter-fiber capillaries in the fabric; wherein the improved moisture management is essentially achieved by wicking moisture through the inter-fiber capillaries, which further open into channels as extra silicone particles inhabiting the inter-fiber capillaries wash-off with repeated washing of the fabric. 2 Appeal 2016-004763 Application 11/951,736 24. A process for manufacturing hydrophobized yam, the process comprising consecutive steps of: immersing cotton or cellulose fibers in a composition including strong base and detergent, the composition added to the fibers to clear the fibers of oily and waxy materials and other impurities, thereby decreasing hydrophobicity of the fibers and converting the fibers to super-hydrophilic filaments; and immersing the super-hydrophilic filaments in a suspension comprising silicone nanoparticles and bringing each individual super-hydrophilic filament of the super- hydrophilic filaments in contact with the silicone nanoparticles, thereby encapsulating the super-hydrophilic filaments in silicone and obtaining hydrophobized yam. App. Br. 56, 60 (Claims Appendix) (emphasis added). The Examiner sets forth the following rejections in the Final Office Action entered March 31, 2015 (“Final Act.”), and maintains the rejections in the Examiner’s Answer entered February 10, 2016 (“Ans.”): I. Claims 1—6, 8, 13, 14—17, 19-21, and 23—25 under 35 U.S.C. § 103(a) as unpatentable over Downing (US 2,033,819, issued March 10, 1936) in view of the Merriam-Webster Online Dictionary {detergent, Merriam-Webster Online Dictionary, https://www.merriam- webster.com/dictionary/detergent, accessed September 16, 2014), Soane (US 2003/0013369 Al, published January 16, 2003), and Johnson (US 3,511,699, issued May 12, 1970); and II. Claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over Downing in view of the Merriam-Webster Online Dictionary, Soane, Johnson, and W. E. Morton & J. W. S. Hearle {Physical Properties of Textile Fibres, The Textile Institute (1993)). 3 Appeal 2016-004763 Application 11/951,736 DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellants’ contentions, we reverse the Examiner’s rejections of claims 1—6, 8—10, 13—17, 19—21, and 23—25 under 35 U.S.C. § 103(a) for the reasons set forth in the Appeal Brief and below. Independent claims 1, 23, and 24 each require the claimed process to include immersing super-hydrophilic filaments in a suspension comprising silicone nanoparticles, and bringing each individual super-hydrophilic filament in contact with the silicone nanoparticles, thereby encapsulating the super-hydrophilic filaments in silicone. Appellants’ Specification explains that “this encapsulation is conducted essentially by bringing each individual fiber in contact with silicone nano-particles, also termed nano-silicone. Preferably, this contact takes place by immersing the fibers in [a] particulate silicone suspension, thus ensuring maximal silicone coverage of each fiber surface area.” Spec. 8,11. 14—18 (emphasis added). Appellants’ Specification further explains that the two consecutive steps of hydrophilization and hydrophobization “lead to the encapsulation of said super hydrophilic filament with a surface of silicone nanoparticles.” Spec. 6,11. 11—12 (emphasis added). Appellants’ Specification also refers to the “defatted fibers coated with particulate silicone of nano-scale size” of Appellants’ invention. Spec. 6,1. 31 (emphasis added). Accordingly, under a broadest reasonable interpretation consistent with Appellants’ Specification, “silicone nanoparticles” are nano-sized particles of silicone. Moreover, encapsulating the super-hydrophilic filaments in silicone, as required by in claims 1, 23, and 24 refers to forming 4 Appeal 2016-004763 Application 11/951,736 a surface coating of particulate silicone of nano-scale size on individual super-hydrophilic filaments by bringing each individual filament into contact with the nano-sized silicone particles, preferably by immersing the filaments in a suspension comprising the silicone nanoparticles. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (during prosecution of patent applications, “the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.”) (Citation omitted). The Examiner finds that Soane discloses payload nanoparticles comprising a textile-reactive surface coating that forms strong chemical bonds with fibers or fabric. Final Act. 11 (citing Soane | 5). The Examiner finds that Soane discloses permanently attaching the payload nanoparticles to fibers or fabric by soaking or dipping the fiber or fabric in an aqueous solution of the textile-reactive payload nanoparticles. Final Act. 12 (citing Soane Tflf 94, 95). The Examiner finds that Soane discloses that fibers or fabric treated with the textile-reactive nanoparticles exhibit a greatly improved retention or durability of the payload agent and its activity, even after multiple washings. Final Act. 11 (citing Soane 10, 92). The Examiner finds that Soane discloses that the payload of the nanoparticles may include dyes, pigments, and fabric softeners. Final Act. 11—12 (citing Soane 113). The Examiner finds that Johnson discloses treating cellulose textile fabrics with modified epoxy silicones to provide improved softness that is durable to laundering. Final Act. 13 (citing Johnson col. 1,11. 25—35; col. 3, 11. 10-15; col. 4,11. 73—75). The Examiner finds that it would have been 5 Appeal 2016-004763 Application 11/951,736 obvious to one of ordinary skill in the art at the time of Appellants’ invention to utilize the modified epoxy silicone disclosed in Johnson as the payload of Sloane’s nanoparticle, so as to form soft textile materials durable to laundering. Final Act. 14. However, Soane discloses nanoparticles comprising a payload agent surrounded by a synthetic polymer shell, contained within a synthetic polymer matrix, or coated with a polymeric surface coating. 15. Soane discloses that the surface of the polymeric encapsulator, matrix, or coating includes functional groups that bind to fibers, filaments, or structural components of treated textiles or webs, so as to permanently attach the payload to the fibers. 1 6. Soane discloses that the “architecture of the polymeric encapsulator of the nanoparticle can be formulated and fine-tuned to exhibit controlled release of the entrapped payload, ranging from constant but prolonged release ... to zero release.” 19. Soane discloses soaking or dipping a fiber or fabric in a solution or dispersion/emulsion of the textile- reactive payload nanoparticles to “prepare webs having a permanently attached payload.” 194. Using the epoxy-modified silicones of Johnson as the payload agent of Soane’s nanoparticles as the Examiner proposes would not result in “silicone nanoparticles” as required by the claims because modified epoxy silicones are not nano-sized particles of silicone, and incorporating the modified epoxy silicones into Soane’s nanoparticles would not produce nano-sized particles of silicone. Nor can it be said that Soane discloses contacting the epoxy-modified silicone payload agent with filaments in a step of obtaining hydrophobized yam. If fibers were dipped into a solution or dispersion/emulsion of 6 Appeal 2016-004763 Application 11/951,736 nanoparticles as disclosed in Soane, the polymeric shell, matrix, or coating of the nanoparticles would contact the fibers, and functional groups on the surface of the polymeric material would form chemical bonds with the fibers. Because the payload is encapsulated within the polymeric material, it would not contact the fibers. Consequently, even if epoxy-modified silicone as disclosed in Johnson were used as the payload agent in Soane’s nanoparticles as the Examiner proposes, if fibers were dipped into a solution or dispersion/emulsion of such proposed nanoparticles, the individual fibers would not be brought into contact with nano-size silicone particles to form a surface coating of the nano-size silicone particles on the individual fibers, so to encapsulate the fibers in the silicone, as required by claims 1, 23, and 24 as we have interpreted these claims. The Examiner asserts in the Answer that “the payload as disclosed by Soane [] would indeed be capable of contact with the filaments/fibers/fabric when a controlled release of the payload from the polymeric encapsulator is desired.” Ans. 3, 13. However, the Examiner does not provide a reasoned explanation supported by objective evidence establishing that controlled release of epoxy-modified silicone as disclosed in Johnson from a polymeric encapsulator, matrix, or coating bound via functional groups to fibers of a textile that was dipped into a solution or dispersion/emulsion of the nanoparticles as disclosed in Soane, would bring each individual fiber into contact with nano-sized silicone particles to form a surface coating of the nano-size silicone particles on the individual fibers so to encapsulate the fibers in the silicone, as required by claims 1, 23, and 24. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie 7 Appeal 2016-004763 Application 11/951,736 case of unpatentability”). Accordingly, the Examiner fails to establish that the combined disclosures of the applied prior art would have suggested bringing individual fibers into contact with particulate nano-size silicone to form a surface coating of the nano-size silicone on the individual fibers, so to encapsulate the fibers in the silicone, as required by claims 1, 23, and 24. Therefore, the Examiner’s evidence and explanation are insufficient to establish a prima facie case of obviousness of the subject matter recited in claims 1, 23, and 24. Consequently, we do not sustain the Examiner’s rejections of claims 1—6, 8—10, 13—17, 19—21, and 23—25 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 1—6, 8—10, 13—17, 19— 21, and 23—25 under 35 U.S.C. § 103(a). REVERSED 8 Copy with citationCopy as parenthetical citation