Ex Parte CanoDownload PDFBoard of Patent Appeals and InterferencesSep 24, 200810452779 (B.P.A.I. Sep. 24, 2008) Copy Citation 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 _______________ 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. 2 Appeal 2008-4350 Application 10/452,779 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)). 3 Appeal 2008-4350 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 4 Appeal 2008-4350 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 5 Appeal 2008-4350 Application 10/452,779 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. 6 Appeal 2008-4350 Application 10/452,779 “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). 7 Appeal 2008-4350 Application 10/452,779 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. 8 Appeal 2008-4350 Application 10/452,779 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 9 Appeal 2008-4350 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 10 Appeal 2008-4350 Application 10/452,779 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’ 11 Appeal 2008-4350 Application 10/452,779 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 cam WOMBLE CARLYLE SANDRIDGE & RICE, PLLC ATTN: PATENT DOCKETING 32ND FLOOR P.O. 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