Ex Parte Cabrey

Board of Patent Appeals and Interferences

Jan 29, 2003

09399890 (B.P.A.I. Jan. 29, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

Paper No. 10

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JENNIFER M. CABREY
__________

Appeal No. 2002-0983
Application No. 09/399,890
___________

ON BRIEF
___________

Before LIEBERMAN, DELMENDO, and JEFFREY T. SMITH, Administrative
Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2002) from the examiner’s final rejection of claims 1 through
8, which are all of the claims pending in the above-identified
application.
The subject matter on appeal relates to a laminate
composite material having a water vapor transmission rate (WVTR)
exceeding 1 perm (grains/hr ft2 in Hg). According to the
appellant, the claimed laminate composite material substantially
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Application No. 09/399,890

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blocks the flow of air and liquid water but allows the
transmission of water vapor and is especially useful as a
building wrap or roof underlayment. (Specification, page 1,
lines 7-11 and page 5, lines 11-14.) Further details of this
appealed subject matter are recited in representative claim 1,
the only independent claim on appeal, reproduced below:
1. A laminate composite material comprising:
a) a layer of an open weave supporting fabric;
b) a layer of breathable resin film, said resin
film layer being substantially impervious to air and
water and permeable to water vapor; and
c) a layer of a thermoplastic resin blended
with a high temperature volatile particulate extruded
between said layer of fabric and said layer of
breathable resin film wherein the laminate composite
material has a water vapor transmission rate exceeding
1 perm of water vapor.

The examiner relies on the following prior art references
as evidence of unpatentability:
Topolkaraev et al. 6,117,438 Sep. 12, 2000
(Topolkaraev) (filed Dec. 31, 1997)

Doyle et al. 6,133,168 Oct. 17, 2000
(Doyle) (filed Oct. 20, 1998)

Claims 1 through 8 on appeal stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Doyle in view of Topolkaraev.
(Examiner’s answer of Dec. 18, 2001, paper 9, pages 3-4.)
We reverse.
“Where claimed subject matter has been rejected as obvious
in view of a combination of prior art references, a proper
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Application No. 09/399,890

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analysis under § 103 requires, inter alia, consideration of two
factors: (1) whether the prior art would have suggested to those
of ordinary skill in the art that they should make the claimed
composition or device, or carry out the claimed process; and (2)
whether the prior art would also have revealed that in so making
or carrying out, those of ordinary skill would have a reasonable
expectation of success.” In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991)(citing In re Dow Chemical
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
Both the suggestion and the reasonable expectation must be
founded in the prior art, not in the applicant’s disclosure.
Id. In the present appeal, it is our judgment that neither the
suggestion nor the reasonable expectation of success is founded
in the prior art.
Doyle describes a coated substrate, which is useful as a
building wrap, having a moisture vapor transmission rate (MVTR)
greater than about 5 perms and comprising: a substrate; a
monolithic, extrusion coated layer of a breathable polymer; and
a primer layer intermediate and adhered to the substrate and the
monolithic, extrusion coated breathable polymer layer. (Column
1, lines 14-55.) According to Doyle, suitable substrates
include open weave fabrics. (Column 2, lines 56-62.) Doyle
further teaches that the primer layer, which is a polyamine or a
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Application No. 09/399,890

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polyacetate, is critical to ensure the adhesion of the extrusion
coated breathable polymer onto the substrate. (Column 3, lines
29-54.)
In contrast to the invention recited in the appealed
claims, Doyle does not describe “a layer of a thermoplastic
resin blended with a high temperature volatile particulate,”
i.e. layer c).
Topolkaraev discloses a microlayer polymer film useful for
making flushable personal care items comprising a plurality of
coextruded microlayers including a non-degradable layer
comprising a non-water degradable, melt-extrudable polymer and a
degradable layer comprising a water-degradable, melt-extrudable
polymer. (Column 1, lines 44-59.) Topolkaraev further teaches
that both the water degradable and non-water degradable layers
may include a particulate filler material to enhance the water
vapor permeability of the film. (Column 7, line 40 to column 8,
line 18.)
The examiner’s basic position is that the particulate
filler described in Topolkaraev is a “high temperature volatile
particulate” as recited in the appealed claims and that “it
would have been obvious to add the filler of Topolkaraev et al.
to the primer layer of Doyle et al. motivated by the desire to
enhance the water vapor permeability of the laminate composite
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Application No. 09/399,890

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material.” (Answer, page 4.) The examiner further alleges that
“metal oxides, calcium carbonate, and high melting polymers are
all considered high temperature volatile particles because they
give off vapors at high temperatures.”
The examiner’s position lacks discernible merit. The
present specification expressly defines the “high temperature
volatile particulate” materials as particles that volatilize and
form numerous cells created by expansion of gas within the
molten resin. (Page 6, lines 24-30.) Here, the examiner has
not identified any evidence to support the allegation that the
fillers described in Topolkaraev are in fact “high temperature
volatile particulate” materials as recited in the appealed
claims. Additionally, we find no teaching, motivation, or
suggestion in the prior art that would have led one of ordinary
skill in the art to combine the teachings of Topolkaraev, which
is directed to flushable personal care items, with the teachings
of Doyle, which is directed to building wraps. Moreover, the
examiner has not pointed to any evidence to establish that the
polymers disclosed in Topolkaraev for flushable personal care
items (column 5, line 20 to column 7, line 26), when combined
with the disclosed fillers, would be operable as a primer layer
in a building wrap as described in Doyle.
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Viewing the rejection in the light most favorable to the
examiner, it might have been obvious for one of ordinary skill
in the art to try the examiner’s proposed modification of Doyle.
Our reviewing court, however, has made it clear that “obvious to
try” is not the proper test under 35 U.S.C. § 103. In re
Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
For these reasons and those set forth in the appeal brief,
we reverse the examiner’s rejection under 35 U.S.C. § 103(a) of
appealed claims 1 through 8 as unpatentable over Doyle in view
of Topolkaraev.

Appeal No. 2002-0983
Application No. 09/399,890

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The decision of the examiner is reversed.
REVERSED

Paul Lieberman )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Jeffrey T. Smith )
Administrative Patent Judge )

RHD/kis
Appeal No. 2002-0983
Application No. 09/399,890

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