Ex Parte Harlacker

Board of Patent Appeals and Interferences

Sep 19, 2011

11012562 (B.P.A.I. Sep. 19, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN A. HARLACKER
____________

Appeal 2009-013006
Application 11/012,562
Technology Center 3700
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Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John A. Harlacker (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-4, 6, 7, 10-12, 16, 17, and 20-22.
Claims 5, 8, 9, 13-15, 18, 19, and 23-28 stand withdrawn from consideration
by the Examiner pursuant to restriction and election of species requirements.
We have jurisdiction under 35 U.S.C. § 6(b).
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The Invention
The claims on appeal relate to a hazardous duty garment system.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. An improved hazardous duty garment
system, comprising:
an abrasion-resistant, flame-resistant and
heat-resistant outer shell;
a moisture barrier attached inside the outer
shell; and
a thermal liner comprising at least one layer
of thermal insulation attached to a layer of a
vapor permeable metal mesh radiant heat thermal
barrier.

Br., Clms. Appd’x.
Independent claim 21 is identical to claim 1, except for the last
paragraph which recites “a vapor permeable metal mesh radiant heat barrier
sandwiched within a thermal liner, the thermal liner comprising two or more
layers of thermal insulation, the vapor permeable metal mesh radiant heat
barrier being comprised of a plurality of panels.” See App. Br., Clms.
Appd’x.
The Rejections
The following Examiner’s rejections are before us for review:
Claims 1-4, 6, 11, 12, 16, 17, 21, and 221 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Aldridge (U.S. Patent No. 5,136,723, issued

1 We have removed claim 5 from the ground of rejection as set forth in the
Examiner’s Answer since claim 5 is withdrawn from consideration.
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Aug. 11, 1992) and Goodloe (U.S. Patent No. 2,819,759, issued Jan. 14,
1958)2. Ans. 4-7.
Claims 10 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aldridge, Goodloe, and Grilliot (U.S. Patent No.
6,339,843 B1, issued Jan. 22, 2002). Ans. 7.
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Aldridge, Goodloe, and Smith (U.S. Patent No. 5,163,183, issued Nov. 17,
1992). Ans. 7-8.

OPINION
Obviousness based on Aldridge and Goodloe
The Examiner finds that Aldridge discloses the subject matter of
independent claims 1 and 21 substantially as claimed, except for the mesh
material being a metal mesh radiant heat barrier. Ans. 4. The Examiner also
finds the Goodloe teaches a flame barrier material having a mesh material
made from metal wire and therefore, constitutes a radiant heat barrier. Id.
The Examiner concludes that it would have been obvious to modify
Aldridge by the metal mesh material of Goodloe to “provide a garment that
creates a layer of air between the wearer and the outer shell sufficient to
protect the wearer from a high temperature external heat source and yet
promotes heat and perspiration vapor transfer from the wearer’s body, while
further provides additional protection from impact/puncture due to the wire
material as opposed to NO[MEX]/KEVLAR mesh material.” Ans. 6-7. The
Examiner also concludes that it would have been obvious “to exchange the

2 The Examiner’s Answer clarifies that this ground of rejection does not rely
upon the Grilliot reference. See Ans. 2-3.
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KEVLAR/NOMEX mesh material of Aldridge et al. with the metallic wire
fabric mesh material of Goodloe, since the metallic wire mesh material
provided in the garment of Aldridge et al., would provide a mesh material
that is flexible, allows for breathability and provides greater protection due
to the metallic wire mesh being more durable th[a]n the NOMEX/
KEVLAR.” Ans. 9.
Appellant contends that the Examiner’s combination of Aldridge and
Goodloe fails to set forth a prima facie case of obviousness for failing to
establish: (1) there is some suggestion or motivation to modify the
references; and (2) there is a reasonable expectation of success found in the
prior art. Br. 11-15 and 30-35.
Suggestion or Motivation to Combine
With respect to Appellant’s contention that there is no suggestion or
motivation to modify Aldridge by Goodloe, Appellant argues that the
Examiner’s reasoning for modifying Aldridge by Goodloe does not match
the teaching of either prior art document and thus, is the result of improper
hindsight construction. Br. 12 and 32. Appellant also contends that the
Examiner’s reason for combining Aldridge’s firefighter’s jacket with
Goodloe’s metal mesh material is flawed for two reasons. Br. 11-15 and 30-
35. First, Appellant argues that Aldridge’s firefighter’s jacket already
includes a layer of air which is associated with the non-metal mesh material
and thus, the Examiner’s reasoning of creating an air layer provides no
motivation to change the non-metal mesh into a metal mesh. Br. 12 and 32.
Second, Appellant also contends that the Examiner’s reasoning concerning
the provision of additional protection from impact or puncture due to the
wire material is without merit because neither the present specification, nor
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Goodloe, discloses any special impact or puncture resistance for the metal
mesh fabric. Br. 13 and 32-33.
Appellant’s argument appears to be holding the Examiner to the old
TSM standard; such a standard is not required. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 415 (2007) ("We begin by rejecting [TSM]"). As noted
above, the Examiner has provided a reason with rational underpinning to
support the conclusion of obviousness. Specifically, while we agree that
Aldridge already teaches an air layer associated with the non-metal mesh,
we are not persuaded that it would not be obvious to a person of ordinary
skill in the art to combine Aldridge and Goodloe in order to improve the
durability of the jacket as suggested by the Examiner in the Response to
Argument section of the Examiner’s Answer on page 9. Thus, we find that
the Examiner has articulated a reasoning with rational underpinning to
support the conclusion that the substitution of KEVLAR/NOMEX mesh
material of Aldridge with the metallic wire fabric mesh material of Goodloe
would have been obvious. Moreover, it is well settled that in determining
whether the subject matter of a claim is obvious, “neither the particular
motivation nor the avowed purpose of the [applicant] controls. What
matters is the objective reach of the claim.” If the claim extends to what is
obvious, it is unpatentable under § 103. Id., at 419.
Appellant also contends that Goodloe’s metal mesh material 10 is a
backing material and in order for Goodloe’s metal mesh material 10 to be
usable with Aldridge’s firefighter’s jacket, it would have to be disassembled
from the flame barrier with “the inconvenient extra parts, such as the circular
foil elements . . . [being] summarily discarded.” (Italics in original). Br. 14
and 34.
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We are not persuaded by Appellant’s contention with respect to the
metal mesh material 10 of Goodloe requiring disassembly from the flame
barrier prior to combination with Aldridge because we see it as a bodily
incorporation argument. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference, but rather the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. See In
re Keller, 642 F.2d 413 (CCPA 1981). Here, the fact that Goodloe teaches a
flame barrier with a metal mesh would have suggested to a person of
ordinary skill in the art that Aldridge’s non-metal mesh could be made of
metal. This would not require the disassembly of Goodloe, as suggested by
Appellant.
Finally, Appellant contends that Goodloe is directed toward a flame
barrier for aircrafts or other similar structures and is not directed to clothing
and worn garments. Br. 14 and 34. Appellant also contends that because
Aldridge is classified in class 2 directed to apparel and Goodloe is classified
in class 160 directed to flexible or portable closures, partitions, or panels, it
is not clear how a person of ordinary skill in the art “would be motivated to
look in class 160 for inspiration regarding clothing.” Id.
We consider Appellant’s contentions concerning what Goodloe’s
subject matter is directed to and Goodloe’s classification to be an argument
of non-analogous art. First, Appellant’s argument directed to the USPTO's
classification of Goodloe is not persuasive because evidence of classification
of prior art in different categories by the PTO “is inherently weak . . .
because considerations in forming a classification system differ from those
relating to a person of ordinary skill seeking solution for a particular
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problem.” In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982).
Second, the analogous-art test requires a reference to be either “in the field
of the applicant's endeavor or reasonably pertinent to the problem with
which the inventor was concerned in order to rely on that reference as a
basis for rejection.” See In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006)
(citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). “A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor's endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379-80 (Fed. Cir. 2007) (citations omitted). In the present case,
Goodloe’s flame barrier is reasonably pertinent to the problem with which
the inventor was concerned because it logically would have commended
itself to an inventor’s attention in considering the problem of radiant heat
thermal barriers. Thus, the Examiner’s rejection properly relied upon
Goodloe because common sense would teach that familiar items may have
obvious uses beyond their primary purposes. See KSR, 550 U.S. at 420.
Reasonable Expectation of Success
Appellant also contends that there is no reasonable expectation of
success in modifying Aldridge by Goodloe. Br. 14-15 and 34-35. More
particularly, Appellant argues that Aldridge and Goodloe are two very
different technologies and their combination is only possible “when Goodloe
is completely dismantled to provide a component that is lacking in
Aldridge.” Br. 15 and 34. Appellant alleges that “the disassembly of
Goodloe for subsequent reassembly indicates improper hindsight
construction.” Id.
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At the outset, we are not persuaded by Appellant’s argument that
Aldridge and Goodloe are two very different technologies because “[w]hen a
work is available in one field of endeavor, design incentives and other
market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” KSR, 550 U.S. at 417.
Furthermore, we are not persuaded by Appellant’s contention that there is no
reasonable expectation of success in the Examiner’s proposed combination
of Aldridge and Goodloe. Absolute predictability that the substitution will
be successful is not required. See In re O'Farrell, 853 F.2d 894, 903-904
(Fed. Cir. 1988). In this case, Goodloe is cited by the Examiner to
demonstrate that metal mesh layers in flame barriers were known in the art
and the known advantages that result from using metal mesh layers in flame
barriers. Ans. 4-7. Appellant has not suggested any reason why the
Examiner erred by concluding that it would have been obvious to one of
ordinary skill in the art to incorporate this known flame barrier metal mesh
layer into the known firefighter’s jacket of Aldridge in order to predictably
provide the known advantages therefrom, namely, to improve durability.
Appellant has also not suggested any reason why one of ordinary skill in the
art would not have had a reasonable expectation of success that the flame
barrier metal mesh layer when incorporated into Aldridge’s firefighter’s
jacket would not improve durability, as the Examiner opines. In addition, as
discussed supra, we see Appellant’s contention that the metal mesh material
10 of Goodloe requires disassembly from the flame barrier prior to
combination with Aldridge to be an unpersuasive bodily incorporation
argument.
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In view of the foregoing, we sustain the Examiner’s rejection of
claims 1-4, 5, 11, 1, 16, 17, 21, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Aldridge and Goodloe. Since Appellant did not separately
argue the rejection of claims 10 and 20, we also sustain the Examiner’s
rejection of claims 10 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Aldridge, Goodloe, and Grilliot.
Obviousness based on Aldridge, Goodloe, and Smith
The Examiner finds that the combination of Aldridge and Goodloe
discloses the invention substantially as claimed in claim 7, except that the
combination of Aldridge and Goodloe fails to disclose sleeve portions
including a formed, pre-bent elbow. Ans. 7-8. The Examiner also finds that
Smith discloses a fireman’s suit including left and right arm sleeves 15, 14
having pleated elbow tube portions 16, 17. Ans. 8. The Examiner concludes
that it would have been obvious to one of ordinary skill in the art to provide
the garment of the combination of Aldridge and Goodloe with the pleated
elbow tube portions of Smith in order to allow for freedom of movement of
a wearer’s arms within the sleeves. Id.
Appellant contends that the Examiner’s rejection of claim 7 fails to set
forth a prima facie case of obviousness because there is no suggestion or
motivation to combine Aldridge, Goodloe, and Smith. Br. 21. More
particularly, Appellant alleges that while Smith discloses pleated arm and
leg tubes and covering sheaths of Nomex or Kevlar, Smith does not include
any suggestion for the use of non-textile materials. Id.
We are not persuaded by Appellant’s contention that a person of
ordinary skill in the art would not have been motivated to combine the
pleated elbow as taught by Smith into the firefighter’s jacket with a metal
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mesh layer of Aldridge as modified by Goodloe. Whether or not Smith
includes any suggestion for the use of non-textile materials has no bearing
on whether a person of ordinary skill in the art would modify the
firefighter’s jacket with the metal mesh layer of Aldridge and Goodloe by
the pleated elbow of Smith. The Examiner’s reason for combining Smith’s
pleated elbows, i.e., in order to allow for freedom of movement of a wearer’s
arms within the sleeves, with the firefighter’s jacket having a metal mesh
layer of Aldridge and Goodloe articulates sufficient reasoning with some
rational underpinning as to why the combination would have been obvious
to a person of ordinary skill in the art. See KSR at 418 (holding that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.”).
In view of the foregoing, we sustain the Examiner’s rejection of claim
7 under 35 U.S.C. § 103(a) as unpatentable over Aldridge, Goodloe, and
Smith.

DECISION
We affirm the Examiner’s rejections of: claims 1-4, 6, 11, 12, 16, 17,
21, and 22 under 35 U.S.C. § 103(a) as unpatentable over Aldridge and
Goodloe; claims 10 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Aldridge, Goodloe, and Grilliot; and claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Aldridge, Goodloe, and Smith.
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
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