Ex parte Dugan et al.

Board of Patent Appeals and Interferences

Feb 16, 2000

07983002 (B.P.A.I. Feb. 16, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEFFREY S. DUGAN, JOHN A. HODAN
and JAMES R. LISK, JR.
_____________
Appeal No. 1995-2802
Application 07/983,002
______________
ON BRIEF
_______________
Before KIMLIN, WALTZ and KRATZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1 through 12, which are the only claims in this
application.
According to appellants, the invention is directed to a
thermoplastic fiber which has moisture wicking properties due
1995-2802
Application No. 07/983,002
2
to one or more internal lengthwise open channels. Each open
channel has an opening and at least one groove which has a
defined mouth. The mouth has a width such that the average
transverse
cross-sectional area of the groove is greater than or equal to
B(width) /8 and a durable hydrophilic surface modifier is2
associated with the channel (Brief, page 2).
Claim 1 is illustrative of the subject matter on appeal
and is reproduced below:
1. A thermoplastic fiber demonstrating moisture wicking
properties comprising:
a) a fiber surface defining an outer boundary and
one or more internal lengthwise open channels each having an
opening and at least one groove having a longest dimension, a
deepest point and a mouth, said mouth defined by moving a line
which is perpendicular to said longest dimension from said
deepest point along said longest dimension until a largest
convex set is defined, said mouth having a width wherein the
average transverse cross-sectional area of the groove is
greater than or equal to (B(width) )/8; and 2
b) a durable hydrophilic surface modifier
associated with said channel.
The examiner has relied upon the following references as
evidence of obviousness:
1995-2802
Application No. 07/983,002
This reference is incorrectly cited as U.S. Patent No.1
4,791,021 on page 4 of the Answer.
This reference is incorrectly cited as “Largmar” on page2
4 of the Answer and “Langman” on pages 5 and 8 of the Answer.
3
Belitsin et al. (Belitsin) 4,054,709 Oct. 18,
1977
Reinehr et al. (Reinehr) 4,163,078 Jul. 31,
1979
Masuda et al. (Masuda) 4,381,325 Apr. 26,
1983
Sato et al. (Sato) 4,639,397 Jan. 27,
1987
Yoshimoto et al. (Yoshimoto) 4,791,026 Dec. 13,1
1988
Largman et al. (Largman) 5,057,368 Oct. 15,2
1991
Claims 1-7 and 9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Masuda in view of Sato or Belitsin or
Reinehr or Yoshimoto (Answer, page 5). Claims 8 and 10-12
stand rejected under 35 U.S.C. § 103 as unpatentable over the
references as applied above further in view of Largman (Id.).
We reverse all of the examiner’s rejections for reasons which
follow.
OPINION
The thermoplastic fiber recited in claim 1 on appeal
comprises a fiber surface with one or more internal lengthwise
open channels with at least one groove where the defined mouth
1995-2802
Application No. 07/983,002
4
has a width such that the average transverse cross-sectional
area of the groove is greater than or equal to (B(width) )/8. 2
The thermoplastic fiber also has a “durable hydrophilic
surface modifier associated” with each channel.
1995-2802
Application No. 07/983,002
5
Appellants and the examiner disagree as to the scope of
the claimed “durable hydrophilic surface modifier associated”
with each channel. Appellants argue that “durable” is defined
in the specification and would not include the Masuda
treatment of the fibers with alkali to render the fiber
surface hydrophilic in a physical rather than a chemical way
(Brief, pages 5-6). The examiner states that Masuda teaches a
hydrophilic surface modifier but “[t]he question remains if
said patented modifier is durable.” (Answer, page 9). The
examiner states that appellants have failed to define what
constitutes “durable” in the specification and claims (Id.).
The examiner also concludes that there is reason to believe
the modifier of Masuda is “durable” because Masuda teaches the
intention to produce “durable” products (Answer, paragraph
bridging pages 9-10, citing Masuda, column 5, lines 64-66).
Implicit in our review of the examiner’s obviousness
analysis is that the claim must first have been correctly
construed to define the scope and meaning of each contested
limitation. Gechter v. Davidson, 116 F.3d 1454, 1457, 1460
n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir. 1997).
Accordingly,
1995-2802
Application No. 07/983,002
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 3
1027 (Fed. Cir. 1997).
Specification, page 1, lines 8-10.4
6
we must construe the scope and meaning of the contested phrase
“durable hydrophilic surface modifier associated” with each
channel. Our reviewing court has stated:3
[T]he PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of
the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of
definitions or otherwise that may be afforded by
the written description contained in the
applicant’s specification.
As noted by appellants on page 5 of the Brief, the term
“durable” is defined in the specification as follows:4
As used herein, the term “durable” with
reference to surface modification means wicking
performance after wet-processing, such as dyeing, or at
least ten launderings that is superior to
wicking performance without the surface modification.
The written description in appellants’ specification sets
forth what is meant by hydrophilic surface modification
associated with each channel (page 7, lines 1-14, of the
specification). Appellants explain that the hydrophilic
surface modification may be accomplished by application of a
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Application No. 07/983,002
7
hydrophilic finish or
co-extrusion or grafting of a hydrophilic component with the
fiber-forming base polymer. Appellants state that the
modification remains present in the channel as suitable
modifiers should be “durable.”
1995-2802
Application No. 07/983,002
8
Suitable hydrophilic finishes include sulphonated polyesters
and ethoxylated polyamides.
In view of this claim construction, we determine that the
applied prior art on this record fails to disclose, suggest or
teach the “durable hydrophilic surface modifier associated
with said channel” as recited in claim 1 on appeal. Masuda
teaches that “the fiber material surface is rendered
hydrophilic by corrosion [due to alkali treatment] and fine
convexities and concavities are imparted to the surface.”
(Column 5, lines
38-40). The examiner has presented no evidence or reasoning
as to why the artisan would have expected the physical surface
modification of Masuda to be equivalent to the chemical
modification described by appellants and to be “durable” as
defined by appellants. The examiner points to the disclosure
of Masuda that the fiber “has excellent durability against
rubbing” (column 5, lines 64-65) but has failed to show that
this disclosure would have suggested the “durable” modifier
recited in the claims on appeal and as defined in the
specification.
Reinehr also discloses surface modification of fibers by
1995-2802
Application No. 07/983,002
9
adding a substance such as glycerin to the spinning solvent to
enhance the hydrophilic nature of the fibers produced (column
1, lines 48-51; column 2, line 60; column 3, lines 7-12).
However, Reinehr teaches removal of this substance by
post-treatment rinsing (column 2, lines 61-65; column 3, lines
38-41; column 4, lines 16-42).
Additionally, the examiner has not established that the
limitation of claim 1 on appeal regarding the average
transverse cross-sectional area was disclosed, suggested or
taught by the applied prior art. The examiner applies Sato,
Belitsin, Reinehr or Yoshimoto to “teach the particular cross-
section claimed by appellant” since the only requirement to
meet this limitation is “a fiber with the general shape as
that claimed.” (Answer, page 9). However, the examiner has
not presented any evidence or reasoning to support this
conclusion. The examiner states that appellants have not
assigned an upper or lower limit to the “longest dimension”
but fails to explain why this would affect the fiber shape or
the equation that calculates the area Id.). Furthermore, if
mere similarity in fiber shape is sufficient to meet the area
limitation of claim 1 on appeal, the examiner has not
1995-2802
Application No. 07/983,002
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explained why the fiber shapes in Masuda closest to the
claimed shapes (see Figure 5 of Masuda and appellants’ Figures
1-3) are “two other cross-sectional fiber shapes with which
difficulty is encountered in accordance with this invention.”
(Column 2, lines 44-46).
For the foregoing reasons, we determine that the examiner
has failed to establish a prima facie case of obviousness in
view of the reference evidence of Masuda, Sato, Belitsin,
Reinehr and Yoshimoto. The citation of Largman to show it is
known in the art to form wicking thermoplastic fibers with
bicomponent filaments (Answer, sentence bridging pages 5-6)
does not remedy the deficiencies in the evidence noted above.
Accordingly, the rejection of claims 1-7 and 9 under § 103
over Masuda in view of Sato, Belitsin, Reinehr, or Yoshimoto
is reversed. Similarly the rejection of claims 8 and 10-12
under § 103 over the references as applied above further in
view of Largman is reversed.
The decision of the examiner is reversed.
REVERSED
)
EDWARD C. KIMLIN )
1995-2802
Application No. 07/983,002
11
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
PETER F. KRATZ )
Administrative Patent Judge )
TAW:hh
Karen M. Dellerman
BASF Corporation
Sand Hill Road
Enka, NC 28728