Ex Parte Groten et al

Board of Patent Appeals and Interferences

Jul 2, 2008

11145695 (B.P.A.I. Jul. 2, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT GROTEN,
LINDA MOOSHIAN, and
GEORGES RIBOULET
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Appeal 2007-4410
Application 11/145,695
Technology Center 1700
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Decided: July 2, 2008
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
JEFFFREY T. SMITH, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is in response to a request, filed March 5, 2008, for rehearing of
our Decision, mailed December 31, 2007, wherein we sustained each of the
appealed § 102, § 103, and obviousness-type double patenting rejections "for
the reasons well stated in the Examiner's Answer" (Decision 3).
Appeal 2007-4410
Application 11/145,695

Concerning the § 102 rejection based on Groten '785 and the
obviousness-type double patenting rejection based on the claims of Groten
'785, Appellants argue that Groten fails to disclose or claim several features
recited in product claim 12 such as the claim feature "the filaments being
melt-spun and drawn filaments" (Request 3, 5). However, these claim
features relate to the process by which the claim 12 product is made. As
properly indicated in the Answer, the patentability of a product does not
depend on its method of production (see, e.g., Ans. 8). This is a well
established legal principle. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985).
Appellants "respectfully submit that the Examiner's Answer or [sic]
the Board's Decision fails to provide any support for the assertion that the
fabrics of Groten ['785] have the same structure as the product of the present
invention" (Request 3). We do not agree. For the reasons detailed in the
Answer and emphasized in the Decision, a prima facie case exists for
considering the product of Groten '785 as identical to Appellants' claim 12
product, and Appellants have failed to carry their burden to prove that the
prior art product does not necessarily or inherently possess the
characteristics of the claim 12 product. See Thorpe, 777 F.2d at 698.
As for the § 103 rejection over Marmon in view of Nishijima,
Appellants argue there is no teaching or suggestion for combining these
references in the manner proposed by the Examiner (Request 4). This
argument is fully rebutted by the Examiner's reasons for combining Marmon
and Nishijima (Ans. 6-8, 13-14). Significantly, the subject Request does not
point to any specific error in the Examiner's reasoning.
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Appeal 2007-4410
Application 11/145,695

With further regard to the obviousness-type double patenting rejection
based on Groten '785, Appellants argue that patentee's claimed product
would not inherently possess the 80+ percent degree of splitting required by
appealed claim 12 because "the claim [of Groten '785] covers filaments not
split at all" (Request 5). We do not share this quoted viewpoint. The claims
of Groten '785 expressly recite elementary filaments having particular
characteristics which can only be formed by splitting the continuous or
composite filaments of the claims. Moreover, for the reasons expressed in
the Answer and emphasized in the Decision, the recited characteristics of the
elementary filaments claimed by Groten '785 reasonably support a
determination that Groten's claimed product possesses the 80+ percent
degree of splitting required by appealed claim 12.
In addition, Appellants seem to argue that the above-noted
obviousness-type double patenting rejection is improper because "[i]herency
is not an obviousness argument" (Request 5). It is well settled, however,
that the question of inherency may properly arise in the context of
obviousness. See In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995).
Finally, Appellants argue that the obviousness-type patenting rejection
based on the claims of Groten '652 is improper because patentee claims a
cleaning cloth rather than "a textile light-protective material" as recited in
appealed claim 12 (Request 6). According to Appellants, "[t]he Examiner's
Answer states a cleaning cloth 'could be used' as light-protective material,
but this is not the standard for an obviousness-type double patenting
rejection" (id.). Appellants' reasoning is not well taken. As emphasized in
our Decision, "because the product claimed by Groten '652 is structurally
identical to the claim 12 product, the former must necessarily possess the
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Appeal 2007-4410
Application 11/145,695

light-protective characteristic of the latter" (Decision 5). See In re Best,
562 F.2d 1252, 1255 (CCPA 1977) (where the claimed and prior art
products appear to be identical, an applicant has the burden to prove that the
prior art products do not necessarily or inherently possess the characteristics
of the claimed product).
In light of the foregoing, we adhere to our decision sustaining all
appealed rejections.
The Request for rehearing is denied.
DENIED

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