Ex Parte Heiman

Board of Patent Appeals and Interferences

Dec 14, 2009

10686104 (B.P.A.I. Dec. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GARY L. HEIMAN
____________

Appeal 2009-005159
Application 10/686,104
Technology Center 3700
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Decided: December 14, 2009
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Before: LINDA E. HORNER, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Gary L. Heiman (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-29. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention relates to a woven terry fabric
comprised of non-moisture-transporting synthetic filament yarns in the warp
and/or fill, either along with natural yarns or exclusively. Spec. 3,
para. 0005. Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A woven terry fabric comprising:
a plurality of warp spun yarns;
a plurality of pile loops including natural fibers of cotton;
and
a plurality of fill yarns, at least one of the fill yarns
consisting essentially of non-moisture-transporting synthetic
filament and devoid of moisture transporting fiber, the warp
yarns, pile loops, and fill yarns being woven together in a three-
pick terry weave.

THE REJECTION
Appellant seeks review of the Examiner’s rejection of claims 1-29
under 35 U.S.C. § 103(a) as unpatentable over U.S. Patent No. 4,726,400 to
Heiman, issued February 23, 1988.

ISSUE
The Examiner found that Heiman discloses all aspects of the invention
of claims 1-29 except that Heiman does not expressly disclose that one of
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the warp, pile, or fill yarns1 consists essentially of non-moisture transporting
synthetic filament, devoid of moisture transporting fiber. Ans. 3-5. The
Examiner found that Heiman’s disclosure that “the fill, ground, or pile yarns
can be made of natural or synthetic fiber . . . teaches that the yarn can be
made of only natural or in the alternative only synthetic fiber.” Ans. 4. The
Examiner concluded it would have been obvious to modify the cloth of
Heiman to use a polyester yarn (a non-moisture transporting synthetic
filament, devoid of moisture transporting fiber) as the warp, pile, or fill yarn
“to take advantage of the widely known, inherent, non-moisture transporting
properties of polyester.” Ans. 5.
Appellant contends that Heiman’s disclosure and the knowledge that
polyester is non-moisture transporting would not have led a person of
ordinary skill in the art to create a woven terry fabric comprising at least one
of the yarns in the fill or in the warp “consisting essentially of non-moisture-
transporting synthetic filament and devoid of moisture transporting fiber,” as
claimed. App. Br. 9-13.
The issue before us is:
Has Appellant shown the Examiner erred in concluding that Heiman’s
disclosure and the knowledge that polyester is non-moisture transporting
would have led a person of ordinary skill in the art to create a woven terry
fabric comprising at least one of the yarns in the fill or in the warp
“consisting essentially of non-moisture-transporting synthetic filament and
devoid of moisture transporting fiber,” as claimed?

1 The Examiner uses the terms “ground warp” and “ground” as synonyms
for “warp yarn,” hereinafter referred to as “warp.” See, e.g., Ans. 3-4.
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FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Heiman discloses a terry-type cloth product comprised of ground
fill (fill), ground warp (warp), and pile warp (pile), and a method
of making the same, for use where it is desired to have a cloth
product, which provides thermal insulation. Heiman, col. 1, ll. 8-
25.
2. The cloth product 40 is made of fill, warp, and pile yarns “of any
suitable material” to include “natural or synthetic material.”
Heiman, col. 5, ll. 60-65.
3. Heiman discloses that: (1) the fill, warp, and pile may utilize any
combination of yarns, (2) the fill and warp may be selected of
appropriate materials for the desired characteristics, and (3) the
pile may be the same or different materials from the fill and warp.
Heiman, col. 5, l. 68 – col. 6, l. 5.
4. Heiman discloses that preferably the yarns are cotton, but the yarns
may also be cotton and polyester blends. Heiman, col. 5, ll. 65-67.
5. Heiman does not expressly disclose use of a yarn consisting of
exclusively cotton or exclusively synthetic fibers. Heiman,
passim.
6. While Heiman discloses the cloth product 40 may be used to
fabricate other products, such as towels, Heiman does not discuss
the moisture-transporting characteristics of the cloth product 40 or
its component yarns. Heiman, passim.
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7. According to Appellant, polyester, a synthetic fiber, is
hydrophobic and thus not moisture-transporting, unless treated to
impart moisture-transporting characteristics. Spec. 2-3, paras.
0003-0005.
8. According to Appellant, cotton, a natural fiber, is desirable for use
in woven terry fabrics because it is absorbent, (moisture-
transporting) and comfortable; however, it has less durability than
synthetic fiber (e.g. susceptible to shrinkage and deterioration).
Spec. 2, para. 0002; 3, paras. 0004-0005.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

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ANALYSIS
Independent claims 1, 9, 17, and 25 are directed to woven terry fabric
comprising a plurality of warp, pile, and fill yarns. Independent claim 1
includes the limitation that at least one of the fill yarns consist “essentially of
non-moisture-transporting synthetic filament and devoid of moisture
transporting fiber.” Independent claim 9 contains the same limitation for at
least one of the warp yarns, independent claim 17 contains the same
limitation for at least one of the warp yarns and at least one of the fill yarns,
and independent claim 25 contains the same limitation for at least one of the
warp yarns or at least one of the fill yarns.
The Examiner concluded that Heiman’s disclosure and the knowledge
of a person of ordinary skill in the art that polyester is a non-moisture
transporting fiber would have led a person of ordinary skill in the art to
make at least one of yarn of Heiman’s fill and warp yarns from exclusively
polyester. Ans. 5.
Appellant asserts that a person of ordinary skill in the art would not
have been led to modify Heiman’s cloth to be composed as claimed. App.
Br. 9-13. More specifically, Appellant contends that Heiman’s disclosure of
“any suitable material including yarns made of natural or synthetic
material”, without any suggestion to choose one type of yarn over another,
would not have led a person of ordinary skill in the art to select a yarn
“consisting essentially of non-moisture-transporting synthetic filament and
devoid of moisture transporting fiber,” as claimed. App. Br. 11.
We agree with Appellant that Heiman discloses a terry cloth designed
to provide good insulative qualities comprised of fill, warp, and pile yarns
(Fact 1). App. Br. 10. We also agree with Appellant that Heiman discloses
the fill, warp, and pile yarns of the cloth may be made of any suitable
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material, or combination of materials (to include natural or synthetic
material) as appropriate for the desired characteristics of the finished cloth
(Facts 2, 3). App. Br. 10-11. Heiman more specifically discloses that
preferably the yarns are made of cotton, and also mentions that a cotton and
polyester blend may be used (Fact 4).
We fail to see how Heiman’s disclosure of two examples that each
include cotton, a moisture-transporting fiber (Fact 8), provides a reason to
modify Heiman’s cloth to consist essentially of non-moisture-transporting
synthetic filament, devoid of moisture transporting fiber, as recited in claims
1, 9, 17, and 25. Additionally, Heiman’s disclosure that the yarns may be of
natural or synthetic fiber (Fact 2) does not lead to the conclusion that
Heiman discloses use of at least one yarn that is exclusively natural or
exclusively synthetic fibers. Heiman does not expressly make such a
disclosure (Fact 5), nor does the Examiner effectively explain how Heiman’s
broad disclosure that the yarns may be “any suitable material including yarns
made of natural or synthetic material,” leads to the more specific conclusion
that Heiman discloses use of yarns consisting of essentially cotton or
consisting essentially of synthetic fibers.
Further, Heiman is directed to a cloth providing good insulative
qualities, and while Heiman mentions the cloth may be used as a towel,
Heiman does not discuss the moisture-transporting characteristics of the
towel or of the yarn material (Facts 1, 6). We find nothing in Heiman that
would have led a person of ordinary skill in the art to select a particular
species of yarn “consisting essentially of non-moisture-transporting
synthetic filament and devoid of moisture transporting fiber” from the broad
genus of “any suitable material including yarns made of natural or synthetic
material.”
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We also fail to see why the knowledge of a person of ordinary skill in
the art that polyester is a non-moisture-transporting fiber would have led to
the proposed modification. See Ans. 4-5. While we agree with the
Examiner that untreated polyester is a non-moisture-transporting fiber
(Fact 7), the Examiner has not adequately explained what known benefit this
characteristic of polyester would have provided to the cloth of Heiman that
would have led one to have chosen a yarn consisting essentially of non-
moisture-transporting polyester fiber. Thus, absent hindsight, we see no
reason, and the Examiner has not provided an adequate articulation of a
reason, why a person of ordinary skill in the art would have been led to
select a yarn consisting essentially of non-moisture-transporting polyester
fiber from among the vast number of suitable materials for the yarn in
Heiman.
We cannot sustain the rejection of claims 1, 9, 17, and 25. Nor can
we sustain the rejection of claims 2-8, 10-16, 18-24, and 26-29 by virtue of
their dependence from independent claims 1, 9, 17, and 25.

CONCLUSION
Appellant has shown the Examiner erred in concluding that Heiman’s
disclosure and the knowledge that polyester is non-moisture transporting
would have led a person of ordinary skill in the art to create a woven terry
fabric comprising at least one of a warp and/or fill yarn “consisting
essentially of non-moisture-transporting synthetic filament and devoid of
moisture transporting fiber,” as claimed.

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DECISION
We REVERSE the Examiner’s decision to reject claims 1-29.

REVERSED

mls

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