Ex Parte Cano

Board of Patent Appeals and Interferences

Sep 24, 2008

10452779 (B.P.A.I. Sep. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte CARLOS ALBERTO CANO
______________

Appeal 2008-4350
Application 10/452,779
Technology Center 1700
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Decided: September 24, 2008
_______________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
KAREN M. HASTINGS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 2, 8, 9, 23, and 24 in the Office Action
mailed February 12, 2007. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.
§ 41.31(a)(2007).
We affirm the decision of the Primary Examiner.

Appeal 2008-4350
Application 10/452,779
Claim 1 illustrates Appellant’s invention of a method of forming a
garment trim, and is representative of the claims on appeal:
1. A method of forming a garment trim comprising:
folding a peripheral edge of a fabric to a selected position to form a
cavity;
inserting a binding in said cavity;
securing said binding in said cavity and said peripheral edge in said
selected position with a seam; and
exposing said fabric to a heat level sufficient to cause said binding to
bond to said cavity and said seam to dissipate.
The Examiner relies upon the evidence in these references (Ans. 3):
Halden US 2,539,244 Jan. 23, 1951
Baxter US 3,690,277 Sep. 12, 1972
Payen 1 FR 2 477 583 A1 Sep. 11, 1981
The Examiner advances these grounds of rejection under 35 U.S.C.
§ 103(a):
claims 1, 2, 8, 9, 23, and 24 over Baxter in view of Halden (Ans. 4); and
claim 8 over Baxter in view of Halden, the admitted prior art at Specification
pages 1-2, ¶ 0004 and Payen (Ans. 7).
Appellant acknowledges both grounds of rejection but requests review
of only the first ground of rejection, stating the appealed claims stand or fall
together. Br. 2 and 4. Appellant submits argument on the affect of the
admitted prior art in the Specification and Payen with respect to the
Examiner’s position in the first ground of rejection. Br. 7 and 10.
Thus, we decide this appeal based on claim 1 as representative of the

1 We refer to the translation of Payen prepared for the USPTO by The
McElroy Translation Company (PTO 08-2796 March 2008). See the Office
Communication mailed March 17, 2008.
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grounds of rejection and Appellant’s arguments. 37 C.F.R.
§ 41.37(c)(1)(vii)(2007).
The principal issue in this appeal is whether the Examiner has carried
the burden of establishing a prima facie case of obviousness in the first
ground of rejection advanced on appeal which, of course, turns on the issues
addressed below.
The issues require that we first interpret the language of claim 1 by
giving the terms thereof the broadest reasonable interpretation in their
ordinary usage in context as they would be understood by one of ordinary
skill in the art in light of the written description in the Specification unless
another meaning is intended by Appellant as established therein, and without
reading into the claim any disclosed limitation or particular embodiment.
See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004), and cases cited therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed.
Cir. 1997). “[T]he best sources for understanding a technical term is the
specification from which it arose.” Phillips v. AWH Corp.,
415 F.3d 1303, 1315-1316 (Fed. Cir. 2005) (en banc) (quoting Multiform
Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998)).
“[W]hile extrinsic evidence ‘can shed useful light on the relevant art,’ we
have explained that it is ‘less significant’ than the intrinsic record in
determining ‘the legally operative meaning of claim language.’” Phillips,
415 F.3d at 1318 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 383 F.3d
858, 862 (Fed. Cir. 2004), quoting Vanderlande Indus. Nederland BV v. Int’l
Trade Comm’n, 366 F.3d 1311, 1318 (Fed. Cir. 2004); citing Astrazeneca
AB v. Mutual Pharm. Co., 384 F.3d 1333, 1337 (Fed. Cir. 2004)).
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Application 10/452,779
The plain language of claim 1 specifies a method of forming any
manner of garment trim comprising at least the steps of, among other things,
securing a folded peripheral edge of a fabric to that fabric with any manner
of “seam” and exposing the fabric to sufficient heat to “cause . . . said seam
to dissipate.” Prior to forming the “seam,” any “binding” material capable
of bonding the peripheral edge of the fabric to that fabric upon exposure to
heat is inserted into the fold cavity.
With respect to the claim language “seam” and “cause . . . said seam
to dissipate,” we find the following disclosure in the Specification
instructive. Appellant illustrates an embodiment of the claimed method
wherein peripheral edge 12 of garment blank 10 is folded over onto side 16
of garment blank 10 to form curved edge 24. Spec. 4-5, ¶¶ 0017-0019 and
0028, and Figs. 3-4; see also ¶ 0010. The fold is held in place by seam 30
which is “formed” by “sewing” with “a yarn . . . that dissipates upon further
processing,” such as a heat liable yarn that forms “a heat labile seam that
dissipates upon the application of heat.” Spec. 5-6, ¶¶ 0022-0024,
0026-0028, and 0031, and Fig. 5 and 6 (emphasis supplied); see also
¶ 0011. Appellant specifies that “[a]s used herein, the term ‘dissipate’
means that the seam substantially disappears both visually and tactilely.”
Spec. 6, ¶ 0024 (emphasis supplied).
We determine that one skilled in this art would understand from the
written description in the Specification that the term “seam” is used to
describe the structure formed by the stitches resulting from “sewing” edge
12 to garment blank 10 with heat liable yarn. Indeed, it is clear from the
Specification that it is the heat liable yarn used that forms the stitches which
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Application 10/452,779
“dissipates,” that is, “substantially disappears both visually and tactilely,”
upon application of heat, and thus the “seam” which is the stitches
“dissipates.”
We further determine that the term “substantially” in the phrase
“substantially disappears both visually and tactilely” in the disclosed
definition of the claim term “dissipate,” is one of degree for which the
Specification does not provide a definition or some standard of measuring
that degree. See, e.g., Seattle Box Co., Inc. v. Industrial Crating & Packing,
Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (“Definiteness problems arise when
words of degree are used. That some claim language may not be precise,
however, does not automatically render a claim invalid. When a word of
degree is used . . . [it] must [be determined] whether the patent’s
specification provides some standard for measuring that degree.”); cf. In re
Marosi, 710 F.2d 799, 802-03 (Fed. Cir. 1983) (general guidelines and
examples in the specification were sufficient to permit one of ordinary skill
in the art to “draw the line between unavoidable impurities in starting
materials and essential ingredients” with respect to the claim phrase “silicon
dioxide sources that is essentially free of alkali metal”). We are of the
opinion that, in the context of the disclosure in the Specification, the term
“substantially” would have its ordinary, dictionary meaning of “largely but
not wholly.” See, e.g., York Prods., Inc. v. Central Tractor Farm & Family
Ctr., 99 F.3d 1568, 1572-73, (Fed. Cir. 1996) (“In this case, the patent
discloses no novel uses of claim words. Ordinarily, therefore, ‘substantially’
means ‘considerable in . . . extent,’ American Heritage Dictionary Second
College Edition 1213 (2d ed. 1982), or ‘largely but not wholly that which is
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specified,’ Webster’s Ninth New Collegiate Dictionary 1176 (9th ed.
1983).”). Thus, we determine that the disclosed definition of the claim term
“dissipate” permits the claim to encompass methods in which the “seam” of
heat liable yarn stitches largely but not wholly “disappears both visually and
tactilely.”
Our interpretation of the claim term “seam” is essentially the same as
the Examiner’s interpretation, albeit the Examiner relies on a dictionary
definition of the term which specifies, among other things, “to join by
sewing.”2 Ans., e.g., 4, 6, 7, 9-10, and 12-14. Our interpretation and that of
the Examiner is also essentially the same as the second part of Appellant’s
position that a “seam is a line where two or more fabrics are joined and that
the term describes the composite result of fabrics being stitched.” Br. 4
(italics emphasis supplied); see also Br. 4-6. Indeed, as Appellant points
out, a “seam” is a structure and thus more than a mere “line.” This is made
clear in the definition of “SEAM” in “the online textile dictionary available
from Resil Chemicals Pvt Ltd., Inc.,” cited by Appellant in his Declaration
under 37 C.F.R. § 1.132 (“Declaration”).3 Declaration ¶¶ 6-7. Indeed, the
definition from the “abstract of the forthcoming Resil’s Textile Dictionary
by Mr. Vik McField” 4 specifies a “seam” is a “Joining line” and that “[t]he
term seam is used to describe the composite result of fabric being stitched,”
which is a “joining” method for a “seam.” This comports with the definition

2 See, e.g., seam, Webster’s new Collegiate Dictionary 1041 (New York.
G. & C. Merriam Co. 1977).
3 The Declaration was submitted with the Amendment filed June 29, 2005,
and entered by the Examiner in the Office Action mailed October 25, 2005.
4 www.resil.com/dictionary/s. 2001.
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“Seam: According to Federal Spec 751a entitled “Stitches, Seams &
Stitchings”, a seam is a series of stitches used to join two or more plies of
fabric together,” in the “Glossary of Textile Terms, STU, of American &
Efird, Inc. (A&E),”5 adduced by the Examiner as well as other dictionary
definitions.6 Ans. 12-13.
In any event, our interpretation of “seam” as it would be understood
by one of ordinary skill in the art in light of the written description in the
Specification as set forth above, is controlling over the extrinsic evidence
adduced by the Examiner and Appellant.
We find Baxter would have disclosed to one of ordinary skill in this
art a method of forming a garment trim in a fabric, such as a hem, by the
steps of, among other things, securing folded bottom edge 22 to fabric 20 by
sewing a temporary seam of stitches with basting thread 34, and thereafter
the seam of stitches of basting thread 34 are “then removed.” Baxter, e.g.,
col. 2, ll. 52-56, col. 4, ll. 24-32, and 46-48, col. 5, ll. 10-18, and Figures
5-11. Before the stitches of basting thread 34 are removed, folded bottom
edge 22 is secured to fabric 20 by applying heat, generally in the range of
about 230º F. to about 330º F., in the vicinity of stitches 24 of heating
fusible, thermoplastic thread 26 which can be, among other things, cellulose
acetate. Baxter, e.g., col. 1, l. 47 to col. 2, l. 5, col. 2, l. 60 to col. 3, l. 17,
col. 4, ll. 33-37, Example 1, and Figs. 1, 2, and 4-11.
We find Halden evinces that it was known in the garment making arts

5 www.amefird.com/stu_glossary.htm. August 27, 2001.
6 See, e.g., seam, The American Heritage Dictionary of The English
Language 1570 (4th ed., Boston, Houghton Mifflin Company, 2000).
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that a fold in a piece of fabric can be temporarily secured by a temporary
seam of stitches of a basting thread until permanently secured, after which
the seam of basting stitches are removed by hand. Halden col. 1, ll. 5-15.
We find Halden would have disclosed to one of ordinary skill in this art a
method of forming a garment trim by the steps of, among other things,
temporarily securing folded edge 16 to fabric 14 by sewing a seam of
stitches of chemically treated basting thread 12, which stitches can be caused
to disintegrate thus readily removing the seam from fabric 14 after the
folded edge has been permanently attached. Halden, e.g., col. 1,
ll. 18-23, col. 1, l. 49 to col. 2, l. 3, col. 2, ll. 21-47, and Fig. 2. Halden
teaches the basting thread can be formed by treating a suitable thread which
can be, among other things, cellulose acetate, with a solution of sulfuric acid
and dried. Halden, e.g., col. 1, ll. 45-49, and col. 3, ll. 6-22.
Halden teaches the basting thread stitches can be removed by placing
the fabric in a warm oven or room maintained at above about 100º F and
preferably above about 130º F., “until such time the basting thread 12
becomes disintegrated to such an extent that it may readily be removed from
the fabric by rubbing” and “without leaving a stain or other traces.” Halden,
e.g., col. 2, ll. 45-53, and col. 3, ll. 3-5. “Under certain conditions it may be
preferred to accelerate this disintegration by the application of a hot iron to
the basted fabric. When this is done the basting thread 12 will disintegrate
or decompose very rapidly.” Halden col. 2, l. 54 to col. 3, l. 3.
A discussion of the admitted prior art in Appellant’s Specification and
of Payen is unnecessary to our decision.
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We determine the combined teachings of Baxter and Halden, the
scope of which we determined above, provide convincing evidence
supporting the Examiner’s case that the claimed invention encompassed by
claim 1, as we interpreted this claim above, would have been prima facie
obviousness to one of ordinary skill in the garment making arts familiar with
methods using basting threads to temporarily sew a seam of stitches to hold
a fold in a fabric and the removal of the basting thread stitches after the fold
is secured. On this record, we agree with the Examiner’s determination that
one of ordinary skill in this art would have modified Baxter’s method by
replacing the basting thread thereof with the chemically treated basting
thread of Halden in sewing the temporary seam of basting thread stitches in
the reasonable expectation of reasonably dissipating the basting thread
stitches with heat such that the seam formed of the stitches is dissipated to
the extent it substantially disappears both visually and tactilely, thus
increasing the operational efficiency of Baxter’s method. Ans., e.g., 4-7. In
this respect, the Examiner determines Halden suggests disintegrating the
seam of basting thread stitches by heating followed by rubbing which breaks
the thread into small particles, thus dissipating the seam as claimed. Ans.,
e.g., 6.
We are reinforced in our view by Halden’s disclosure that fabric with
a temporary seam of stitches of sulfuric acid treated basting thread can be
heated until the basting thread stitches disintegrate or decompose without
rubbing or until the basting thread stitches can be readily removed by
rubbing without leaving a stain or other traces. In this respect, Baxter
discloses that a fold in a cellulose acetate thread containing fabric can be
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Application 10/452,779
secured by heating the fabric at temperatures suggested by Halden for
disintegrating or decomposing a sulfuric acid treated cellulose acetate
basting thread without resort to rubbing. Indeed, Halden alone would have
taught one of ordinary skill in this art that the seam of basting thread stitches
temporarily joining an edge with the fabric, would dissipate upon the
application of heat as claimed because the stitches, without and with
rubbing, and thus the seam of such stitches, at least largely but not wholly
disappears both visually and tactilely because only some particles resulting
from rubbing remain which do not leave a stain or other traces.
Accordingly, we are of the opinion that one of ordinary skill in this art
routinely following the combined teachings of Baxter and Halden would
have reasonably arrived at the claimed method of forming a garment trim,
including all of the limitations thereof arranged as required therein, without
recourse to Appellant’s Specification. See, e.g., KSR Int’l Co. v. Teleflex
Inc., 127 S. Ct. 1727, 1739 (2007) (a patent claiming a combination of
elements known in the prior art is obvious if the improvement is no more
than the predictable use of the prior art elements according to their
established functions); In re Kahn, 441 F.3d 977, 985-88, (Fed. Cir. 2006);
In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness
under § 103, all that is required is a reasonable expectation of success.”
(citations omitted)); In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“[T]he
test [for obviousness] is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”); In re Sovish,
769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of
ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA
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1969)(“Having established that this knowledge was in the art, the examiner
could then properly rely, as put forth by the solicitor, on a conclusion of
obviousness ‘from common knowledge and common sense of the person of
ordinary skill in the art without any specific hint or suggestion in a particular
reference.’”).
Upon reconsideration of the record as a whole in light of Appellants’
contentions, we are of the opinion that Appellant has not successfully
rebutted the prima facie case. Appellant submits Halden discloses methods
that use a rubbing step which results in “particles of the basting thread . . .
still in the fabric” do not “teach a heating operation that is sufficient to
dissipate the basting thread” in the manner the claim term “dissipate” is
defined in the Specification. Br. 7-8, citing Spec. ¶ 0024 and Halden col. 2,
ll. 47-55. In this respect, Appellant argues the particles of Halden’s bastings
thread remain in the fabric “such that the seam is still present both visually
and tactilely.” Br. 8.
We cannot subscribe to Appellant’s position. The claim term
“dissipate” as defined in the Specification encompasses basting thread
stitches, and thus seams, which have at least largely but not wholly
disappeared visually and tactilely. Thus, the term “dissipate” describes the
result of Halden’s methods that include rubbing fabric that has been heated,
because the seam of basting thread stitches has dissipated without leaving a
stain or other traces.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Baxter and Halden alone with Appellants’
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countervailing evidence of and argument for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 1, 2, 8, 9, 23,
and 24 would have been obvious as a matter of law under 35 U.S.C.
§ 103(a).
We likewise affirm the ground of rejection of appealed claim 8
advanced on appeal because Appellant relies on the same arguments
advanced with respect to the combined teachings of Baxter and Halden.
The Primary Examiner’s decision 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)(iv).
AFFIRMED

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