Ex Parte Hansen et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201812479258 (P.T.A.B. Feb. 27, 2018) Copy Citation 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. 12/479,258 06/05/2009 Robert A. Hansen 127507-06404 1089 141216 7590 03/01/2018 McCarter & English, LLP / Albany International 245 Park Avenue 27 th Floor New York, NY 10167 EXAMINER PIZIALI, ANDREW T ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 03/01/2018 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): NY docket @ mccarter.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT A. HANSEN and BJORN RYDIN Appeal 2017-005508 Application 12/479,258 Technology Center 1700 Before: LINDA M. GAUDETTE, WESLEY B. DERRICK, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 4, 5, 9-14, and 23—25. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In our Decision, we refer to the Specification filed June 5, 2009 (“Spec.”); Final Office Action docketed July 27, 2016 (“Final Act.”); Appeal Brief filed September 29, 2016 (“App. Br.”); Examiner’s Answer docketed December 16, 2016 (“Ans.”); and Reply Brief filed February 15, 2017 (“Reply Br.”). 2 Appellants identify “Albany International Corp.” as the real party in interest. App. Br. 3. Appeal 2017-005508 Application 12/479,258 The Claimed Invention Appellants’ disclosure relates to an “ultra-compressible/resilient structure” for various uses such as, for example, athletic shoes, regular shoes, boots, floor carpets, carpet pads, sports floors, etc. Spec. 1. According to Appellants, the claimed invention is a “shock-absorbing pad” that provides extremely elastic behavior under load with high through thickness recovery. Id. at 3. The structure includes axially and radially elastic hollow members and relatively inelastic yams in various patterns. Abstract; Spec. 3. Claim 1 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix of the Appeal Brief (App. Br. 17) (key disputed claim language italicized and bolded): 1. A compressible resilient pad, wherein the pad includes a stmcture having an original thickness, the stmcture comprising: a plurality of parallel longitudinal yams; a plurality of parallel cross-direction yams; a plurality of parallel hollow elastic members; wherein the structure is a laminated structure of independent layers not interwoven comprising: a first layer of the parallel yams mnning in either the longitudinal or the cross-direction; a second layer of the parallel hollow elastic members on one side of the first layer, the second layer's hollow elastic members mnning in the longitudinal or cross-direction different from that of the first layer; and a third layer of the parallel yams on the opposite side of the second layer as the first layer and mnning in the same direction as those of the first layer, wherein the parallel yams of the third layer are aligned such that the parallel yams of the third layer nest between the parallel yams of the first layer without 2 Appeal 2017-005508 Application 12/479,258 interfering with one another to allow the structure to compact to form a planar structure in a through thickness direction when the pad is under a pressure load; wherein the hollow elastic members are elastic in their thickness or radial direction and length or axial direction such that under the pressure load the hollow elastic members stretch and compress to conform to the nesting and, the structure springs back to substantially the original thickness after removal of the pressure load. The References The Examiner relies on the following references as evidence in rejecting the claims on appeal: Fontana (hereinafter US 4,328,840 “Fontana ’840”) May 11, 1982 Fontana (hereinafter US 4,328,841 “Fontana ’841”) May 11, 1982 Crook US 4,555,440 Nov. 26, 1985 Kuznetz US 4,569,874 Feb. 11, 1986 Renjilian US 4,569,883 Feb. 11, 1986 Westhead US 4,870,998 Oct. 3, 1989 Cederblad et al., US 6,391,420 B1 (hereinafter “Cederblad”) May 21, 2002 Hansen US 6,630,223 B2 Oct. 7, 2003 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 1, 4, 5, 9-14, and 23—25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fontana ’840 in view of Kuznetz (“Rejection 1”). Ans. 2. 3 Appeal 2017-005508 Application 12/479,258 2. Claims 1, 4, 5, 9-14, and 23—25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fontana ’840 in view of Kuznetz as applied to claims 1, 4, 5, 9-14 and 23—25 above, and further in view of Cederblad (“Rejection 2”). Ans. 5. 3. Claims 1, 4, 5, 9-14, and 23—25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fontana ’841 in view of Kuznetz (“Rejection 3”). Ans. 5. 4. Claims 1, 4, 5, 9-14, and 23—25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Fontana ’841 in view of Kuznetz as applied to claims 1, 4, 5, 9-14 and 23—25 above, and further in view of Cederblad (“Rejection 4”). Ans. 7. 5. Claims 1, 4, 5, 9-14, and 23—25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Crook in view of Westhead, and further in view of Renjilian or Hansen (“Rejection 5”). Ans. 8. OPINION Rejection 1 The Examiner determines that the combination of Fontana ’840 and Kuznetz teaches or suggests all of the limitations of claim 1 and thus, concludes that the combination would have rendered claim 1 obvious. Ans. 2-A. The Examiner relies on the Fontana ’840 reference for disclosing the “laminated structure” element of claim 1. Ans. 2. In particular, the Examiner finds that the fabric structure Fontana ’840 discloses is a “laminate comprising first, second, and third independent layers not interwoven.” Id. at 2 (citing Fontana ’840, Fig. 1, col. 2,11. 14—32, col. 4,11. 4—19). 4 Appeal 2017-005508 Application 12/479,258 Appellants argue that the Examiner’s rejection of claim 1 should be reversed because Fontana ’840 does not teach or suggest a “laminated structure,” as recited in the claim. App. Br. 5; see also Reply Br. 3. Appellants’ argument is persuasive because the Examiner has not established by a preponderance of the evidence that the cited art teaches or suggests a “laminated structure,” as required by claim 1. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the examiner bears the initial burden of establishing a prima facie case of obviousness.). Claim 1 recites that “the structure is a laminated structure of independent layers not interwoven.” App. Br. 17 (Claims App’x). The Specification discloses that the laminated structure includes “two independently woven fabric layers with the hollow elastic member layer there between.” Spec. 6,11. 12—14. Figure 10A of the Specification also shows the claimed laminated structure having the hollow elastic member 40 and functional yams 20, 30 laminated between two fabrics, as described at page 6 of the Specification. See Spec. 12,11. 19—21, Fig. 10A. The Examiner, however, does not provide an adequate technical explanation or direct us to sufficient evidence that Fontana ’840 teaches or suggest a “laminated structure,” as required by the claim. The portions of Fontana ’840 upon which the Examiner relies do not teach or suggest a laminated stmcture. See Fontana ’840 col. 2,11. 14—32 (disclosing the “fabric weave” of Figure 1 with warp comprising mbber threads and weft comprising wool threads), col. 4,11. 4—19 (disclosing that “instead of mbber threads, threads of other elastomeric material may be used” and the fabric provides the user “the advantage of using either side of the fabric in contact with the skin”), Fig. 1 (depicting a “double side fabric” stmcture). 5 Appeal 2017-005508 Application 12/479,258 Rather, as Appellants note, the cited portions of Fontana ’840 upon which the Examiner relies are directed to and merely describe a woven structure resulting from interlacing warp fibers and weft fibers in a weave pattern where the interlocking fibers hold the fabric together. App. Br. 4, 5. Indeed, the Fontana ’840 reference itself describes the structure it discloses as a “double side fabric” (Fontana ’840, Abstract, col. 1,11. 1—9) and teaches that the fabric “can be easily manufactured on looms of known type.” Id. at col. 1,11. 29—31. There is no teaching, suggestion, or even mention in Fontana ’840 of the double side fabric being a laminated structure of independent layers not interwoven, as claimed. Moreover, for the reasons provided by Appellants at pages 4—9 of the Appeal Brief and pages 3—7 of the Reply Brief and in light of the claim language and the Specification’s disclosure regarding the claimed “laminate structure” having two independently woven fabric layers with the hollow elastic member layer there between, we are not persuaded by a preponderance of the evidence that a person of ordinary skill in the art would have understood the prior art’s woven structure as corresponding to Appellants’ claimed laminate structure. The Examiner’s discussion at pages 11—19 of the Answer, without more, does not sufficiently address Appellants’ principal argument that Fontana ’840 merely discloses a woven structure — and does not teach or suggest a laminated structure, as claimed. We, therefore, cannot sustain the Examiner’s rejection because Fontana ’840 in view of Kuznetz does not disclose or suggest all of the limitations of claim 1. Because claims 4, 5, 9-14, and 23—25 each depends from claim 1, we also cannot sustain the Examiner’s rejection of these claims. 6 Appeal 2017-005508 Application 12/479,258 Accordingly, we reverse the Examiner’s rejection of claims 1, 4, 5, 9— 14, and 23—25 under 35 U.S.C. § 103(a) as obvious over the combination of Fontana ’840 and Kuznetz. Rejection 3 Because the Examiner’s Rejection 3 is based on the Fontana ’841 reference, the Fontana ’841 reference’s disclosure is similar to the disclosure of the Fontana ’840 reference (compare Fontana ’841, Fig. 1, col. 1,1. 66- col. 2,1. 12 to Fontana ’840, Fig. 1, col. 2,11. 14—32), and the Examiner’s analysis for Rejection 3 rests on principally the same flawed findings and conclusions as Rejection 1, we also reverse the Examiner’s rejection of claims 1, 4, 5, 9-14, and 23—25 under 35 U.S.C. § 103(a) as obvious over the combination of Fontana ’841 and Kuznetz (Rejection 3, stated above). Rejections 2 and 4 The foregoing deficiencies in the Examiner’s findings and conclusions regarding the Fontana ’840 (Rejection 1, stated above) and Fontana ’841 (Rejection 3, stated above) references, respectively, are not remedied by the Examiner’s findings regarding the additional references or combination of references cited in support of the second and fourth grounds of rejection. Accordingly, we also reverse the Examiner’s rejections of claims 1, 4, 5, 9-14, and 23—25 under 35 U.S.C. § 103(a) as obvious over the combination of Fontana ’840, Kuznetz, and Cederblad (Rejection 2, stated above) and the combination of Fontana ’841, Kuznetz, and Cederblad (Rejection 4, stated above), respectively. 7 Appeal 2017-005508 Application 12/479,258 Rejection 5 The Examiner determines that the combination of Crook, Westhead, and Renjilian or Hansen suggests a pad satisfying all of the limitations of claim 1 and thus, concludes that the combination would have rendered the claim obvious. Ans. 8—9. Appellants argue that the Examiner’s rejection should be reversed because one of ordinary skill in the art would not have had reason to combine the teachings of Crook and Westhead to arrive at the claimed invention. App. Br. 13—14; see also Reply Br. 12—13. In particular, Appellants argue that because Crook is concerned with compaction resistance and Westhead is directed to a woven structure to prevent fabric shrinkage, absent impermissible hindsight, one of ordinary skill in the art would not have been motivated to combine Crook’s and Westhead’s teachings. App. Br. 14—16. We agree with Appellants’ argument in this regard. On the record before us, we are not persuaded that the Examiner identifies evidence and provides reasoning sufficient to support a finding that one of ordinary skill would have had reason to combine the teachings regarding Crook’s compaction-resistant structure with the teachings regarding Westhead’s woven structure to arrive at the claimed invention. Oetiker, 977 F.2d at 1445. In particular, principally for the reasons provided by Appellants at pages 13—16 of the Appeal Brief and pages 12—13 of the Reply Brief, we concur with Appellants that because Crook discloses a structure that is intended to resist compaction (Crook, col. 1,11. 18—21, 30-31, 42-45, col. 2, 11. 40-46), the reference actually teaches away from the claimed invention, 8 Appeal 2017-005508 Application 12/479,258 which is directed to a structure that is “compressible” and “springs back to substantially the original thickness after removal of the pressure load,” as claimed. A reference teaches away when a person of ordinary skill, upon reading the reference, would have been led in a direction divergent from that chosen by Appellants. In re Haruna, 249 F.3d 1327, 1355 (Fed. Cir. 2001). The Examiner’s comments regarding Crook’s structure acting as a “shock absorber” at pages 21—22 of the Answer, without more, do not adequately address Appellants’ argument in this regard. Rather, we find that Crook’s disclosure regarding a “shock absorber,” particularly, that the plied monofilament “layer acts as a shock absorber to dampen the effects of sudden compressive forces on the felt” (i.e., to resist compaction), actually supports Appellants’ teaching away argument. Crook, col. 2,11. 44-46; see also id. at col. 2,11. 40-41. We, therefore, do not agree with the Examiner’s determination that the combination of Crook and Westhead suggests a pad satisfying all of the limitations of claim 1 and that the combination of Crook, Westhead, and Renjilian or Hansen would have rendered claim 1 obvious. Thus, we do not sustain the rejection of claim 1. Because claims 4, 5, 9-14, and 23—25 each depends from claim 1, we also do not sustain the Examiner’s rejection of these claims. Accordingly, we reverse the Examiner’s rejection of claims 1, 4, 5, 9— 14, and 23—25 under 35 U.S.C. § 103(a) as being obvious over the combination of Crook, Westhead, and Renjilian or Hansen. 9 Appeal 2017-005508 Application 12/479,258 DECISION The Examiner’s rejections of claims 1, 4, 5, 9-14, and 23—25 are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED 10 Copy with citationCopy as parenthetical citation