Ex Parte Cheung

Patent Trial and Appeal Board

Dec 23, 2016

12824183 (P.T.A.B. Dec. 23, 2016)

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.
12/824,183 06/27/2010 Jacky CHEUNG DGBP01-3US 9454
50163 7590
WANG & HO
66 HILLTOP ROAD
MILLINGTON, NJ 07946
12/28/2016 EXAMINER
PIERCE, JEREMY R
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
12/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
georgewang@bei-ocean.com
georgewang.hk @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACKY CHEUNG
Appeal 2015-000184
Application 12/824,183
Technology Center 1700
Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
BRIAN D. RANGE, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on the Request for Rehearing (“Req. Reh’g”) by
Appellant of the Decision on Appeal issued Aug. 31, 2016 (“DO A”) setting
forth a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) of claims
12-19.
Claim 12, the only independent on appeal is directed to a “laminated
clothing component, comprising an upper layer, a lower layer, and a middle
layer, said middle layer being a knitted fabric made of substantially 100%
spandex.” The Board reversed the Examiner’s rejection of claim 12, and
dependent claims 13—19. DO A 4. A new ground of rejection of claims 12—
19 was set forth under 35 U.S.C. § 103(a). The claims were determined to
Appeal 2015-000184
Application 12/824,183
be obvious in view of Fleischman,1 Falla,2 and Selle.3 Id. Falla was newly
cited. Id.
The Board found that Fleischman describes a garment with three
layers as required by claim 12, including a middle spandex layer. Id. at 6—7.
The Board acknowledged that “Fleischman does not describe its garment as
‘laminated’ or that the spandex is a ‘knitted fabric’ as required by claim 12.
However, Falla was cited for its teaching of laminated multi-layered
garments and the reason to laminate a garment. Id. at 7. To reach the
claimed requirement of a “‘middle layer being a knitted fabric made of
substantially 100% spandex,”’ the Board cited teachings in Fleischman and
Falla of spandex in a multi-layered laminate. Id. at 8. Selle was cited for its
teaching of knitted spandex. Id. The Decision relied on the Examiner’s
reasoning that it would have been obvious to have utilized Selle’s knitted
spandex in Fleischman’s garment since it was known to be used in a
garment. Id. Furthermore, it was reasoned:
Each of Fleischman, Falla, and Selle describes utilizing
spandex in a brassiere. FF1, FF4, FF9. Selle teaches that its
spandex fibers, including the knitted 100% spandex fabric, have
desirable characteristics. FF8. Consequently, one of ordinary
skill in the art would have had reason to have utilized Sella’s
[sic] spandex in Fleischmann’s [sic] garments for its predictable
properties. KSR, 550 U.S. at 417. The prior art does not have to
contain an express statement to use Selle's material as the
middle layer in Fleischman.
Id. at 9.
1 Fleischman-Ament et al., US 5,873,768, issued Feb. 23, 1999
(“Fleischman”)
2 Falla, US 6,837,771 B2, issued Jan. 4, 2005.
3 Selle et al., US 2005/0165200 Al, published July 28, 2005 (“Selle”).
2
Appeal 2015-000184
Application 12/824,183
Request
On page 1 of the Request, Applicant makes two statements (numbered
1 and 2) that certain factors are “undisputed” and “undisputable.” Such
statements do not reference the cited publications nor the facts determined in
the Decision. Appellant makes such statements without alleging an error in
the Decision. In fact, contrary to Appellant’s unsupported allegation that it
is “undisputed that Fleischman does not teach or suggest any three-layer
fabric structure with a 100% spandex fabric in the middle” (Req. Reh’g 1),
the Board made a factual finding (“FF2”) which establishes that a fabric
structure with a middle layer of spandex is described by Fleischman:
FF2.
The garment of the invention utilizes a third layer of
fabric, which is a power-netted layer of fabric in segment 48 of
the elastic fabric panel 20, which is positioned between the
lining preferably made of Cool Max™ and the exterior fabric
layer preferably made of Meryl™, which layer will be
discussed hereinbelow. This third layer of fabric may be any
power-netted fabric such as a nylon Lycra™, or spandex.
Fleischman, col. 8, 11. 28—35 (emphasis added).
Appellant’s subsequent argument is based on its factually-flawed
understanding of Fleischman. Req. Reh’g 1. The argument is therefore not
supported by a preponderance of the evidence.
Appellant also asserts that the “rejection based on [ ] Fleischmann,
[sic] Falla and Selle is improper in light of the legal standard mandated by
the Supreme Court in the [KSR] case” in which it is “important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
Id. at 2. Appellant asserts that “no reason” was provided to support the
rejection. Id.
3
Appeal 2015-000184
Application 12/824,183
We do not agree. The Board provided express reason to combine the
elements of the claim found in Fleischman, Falla, and Selle. The pertinent
parts of the Decision are reproduced below:
However, both laminates and knitted spandex had been
used in garments of the same type described in Fleischman.
FF1, FF 4, FF7.
Specifically, Falla describes laminated multilayered
garments. FF4. The layers are glued together to make a
laminate. FF4 and FF5. Falla teaches that gluing the layers
together to form a laminate “permit[s] body shaping garments
to be substantially fabricated from a single main piece of
material or blank cut from the multi-layered fabric laminate and
which has finished edges which do not require separate binding
or narrow edge finishing.” FF5. Falla thus provides an express
reason as to why a one of ordinary skill in the art would have
produced Fleischman’s garment by lamination instead of
stitching the layers together by “basting” (FF3).
DO A 7.
The claimed “clothing component” comprises a “middle
layer being a knitted fabric made of substantially 100%
spandex.” Fleischman describes a middle layer made of
spandex. FF2. Falla describes a fabric layer “which has a yam
which incorporates a spandex material.” FF6. Thus, the use of
spandex in a multilayered laminate was known in the art as
established by Falla.
Selle describes spandex was knit to form 100% spandex
fabric. FF10, FF11. The Examiner provided a fact-based reason
to use Selle’s fabric as the middle layer of Fleischman:
Selle teaches that the spandex fabrics disclosed therein
are useful in garments, including sportswear, swimsuits,
and bras . . . [FF9]. It would have been obvious to one
having ordinary skill in the art at the time the invention
was made to use the knitted fabric made of 100%
spandex fibers disclosed in Selle [FF11] as the elastic
middle layer component in the garment disclosed by
Fleischman, since Fleischman [and Falla] teach[ ] that a
4
Appeal 2015-000184
Application 12/824,183
fabric manufacture from spandex can be used [FF2, FF6,
FF7], since Selle teaches that such fabrics are known to
be useful in garment applications such as bras [FF9], and
because it has been held to be within the general skill of a
worker in the art to select a known material on the basis
of its suitability and desired characteristics. In re Leshin,
227 F.2d 197 (CCPA 1960).
Answer 3.
DO A 8.
Appellant did not identify an error in this reasoning, but merely
erroneously stated that such reasoning was absent.
Appellant asserts:
Selle cannot be said to have planted a seed for the idea of
laminating the 100% spandex fabric between two other fabrics.
Similarly, Fleischman and Falla cannot be said to have planted
such seed either (as neither even mentioned 100% spandex). As
such, the idea of laminating the 100% spandex fabric cannot
just come out of thin air to render the claimed invention
obvious.
Req. Reh’g 2—3.
Appellant’s argument does not persuasively identify an error in the
Decision. As explained above, and in the Decision on page 8, Selle was not
relied upon to “plant” the seed of a multi-laminate garment with spandex in
the middle. A multi-laminate garment is described in Fleischman. See DOA
4; FF 2. The idea of laminating a garment comprising spandex did not “just
come out of thin air” (Req. Reh’g 3) but materialized from specific teachings
in Falla of a “fabric laminate material [that] incorporates two layers of fabric
at least one of which has a yam which incorporates a spandex material, thus
imparting elastomeric characteristics to the fabric.” FF6; DOA 5.
As Appellant did not demonstrate error in the Decision, the Request
for Rehearing is denied.
5
Appeal 2015-000184
Application 12/824,183
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED
6