Ex Parte Howard

Patent Trial and Appeal Board

Feb 24, 2015

12177196 (P.T.A.B. Feb. 24, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD GEORGE HOWARD, JR.

Appeal 2013-004417
Application 12/177,196
Technology Center 1700
____________

Before CHUNG K. PAK, ROMULO H. DELMENDO, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant
1
appeals under 35 U.S.C. § 134 from the March 14, 2012
decision of the Primary Examiner finally rejecting claims 2, 4–6, 9, 12, 13,
15–19, and 21–23.
2
We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We affirm.

1
Appellant identifies the Real Party in Interest as E.I. DuPont de Nemours
and Company (Appeal Br. 2).
2
Hereinafter “Final Rej.”
Appeal 2013-004417
Application 12/177,196

2
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a laminate comprising an
insoluble, continuous N-alkylchitosan film, a substrate onto which the
chitosan film is adhered, and a layer of fabric. Claim 2 is representative of
the claims on appeal and is reproduced below from the Claims Appendix to
the Brief:
2. A laminate comprising . . . an insoluble continuous N-
alkylchitosan film, a substrate onto which the chitosan film is
adhered, and at least one layer of fabric, wherein:

(a) the substrate comprises a film comprising a polar
polymer or a sheet comprising a polar polymer, wherein the
polar polymer is an elastomer, glassy polymer, or
semicrystalline material; and

(b) the fabric is woven or nonwoven and comprises one or
more members selected from the group consisting of aramids,
polybenzimidazoles, nylons, polyesters, and cotton;

said article being chemically protective and selectively
permeable to water vapor such that he Moisture Vapor
Transport Rate is at least 2 kg/m
2
/24 h,
3

The Specification defines the term “continuous N-alkylchitosan film”
as an N-alkylchitosan film have at least one nonporous surface (Spec. p. 3,
ll. 19–20), and defines the term “N-alkylchitosan” as including “N-alkylated
chitosan-based moieties, including the N-alkylchitosans themselves, their

3
Claim 2, as reproduced in the Claims Appendix, ends with a “,” rather than
a “.”. Similarly, the Claims Appendix indicates (Appeal Br. 6) that appealed
claim 2 includes an extra occurrence of the word “comprising,” which we
have omitted in our reproduction of the claim.
Appeal 2013-004417
Application 12/177,196

3
salts and derivatives” where the alkyl group may be 1 to 12 carbons in
length (Spec. p. 3, ll. 10–13, emphasis added).
REJECTIONS
(1) Claims 2, 4, 6, 9, 12, 13, 15–19, 22, and 23 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Dutkiewicz
4
in view of
Nordquist,
5
Carlucci,
6
Roe,
7
and Uitenbroek.
8

(2) Claims 5 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dutkiewicz in view of Nordquist, Carlucci, Roe, and
Uitenbroek, and further in view of Uragami.
9

Appellant does not make separate arguments with respect to the
dependent claims set forth in Rejection (1). Accordingly, our analysis will
focus on independent claim 2. We will also address the argument made by
Appellant with respect to Rejection (2).

REJECTION (1)
The Examiner finds Dutkiewicz teaches each of the elements of the
claimed invention, except that it does not explicitly teach that the chitosan
film is continuous (i.e., has at least one non-porous surface), and that it does
not teach that (a) the chitosan film is an N-alkylchitosan, (b) the claimed

4
Dutkiewicz et al., U.S. Patent No. 6,197,322 B1, issued March 6, 2001.
5
Nordquist et al., U.S. Patent No. 6,756,363 B1, issued June 29, 2004.
6
Carlucci et al., U.S. Patent Pub. 2003/0023216 A1, published January 30,
2003.
7
Roe et al., U.S. Patent No. 6,399,853 B1, issued June 4, 2002.
8
Uitenbroek et al., U.S. Patent No. 6,982,231 B1, issued January 3, 2006.
9
Uragami et al., Structure of N-alkyl chitosan membranes on water-
permselectivity for aqueous ethanol solutions, 124 J. OF MEMBRANE SCI.
203–211 (1997).
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Application 12/177,196

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fabric structure, (c) the claimed polar polymer, and (d) the claimed Moisture
Vapor Transport Rate (Final Rej. 3).
With respect to the limitation that the claimed chitosan film be
“continuous,” the Examiner finds that because Dutkiewicz’s process for
preparing the film is substantially similar to the method disclosed in
Appellant’s Specification for preparing the chitosan film, it is reasonable to
expect that Dutkiewicz’s films is continuous, as that term is defined in the
Specification (Ans. 3–4).
With regards to the elements that the Examiner finds are missing from
Dutkiewicz’s disclosure, the Examiner makes the following findings:
(a) Nordquist discloses a chitosan film which falls within the scope of the
claimed “N-alkylchitosan film,” and it would have been obvious to use that
film in Dutkiewicz’s material (Final Rej. 3); (b) Carlucci discloses a fabric
structure meeting the claims which would have been obvious to combine
with Dutkiewicz’s disclosure (Final Rej. 4); (c) Roe in combination with
Uitenbroek discloses the use of a film comprising a polar polymer which
would have been obvious to use with Dutkiewicz’s material (Final Rej. 5);
and (d) the claimed MVTR rates are based on the continuous chitosan film
structure present in the cited art, and thus the cited art would be expected to
have the claimed MVTR rates, absent an demonstration of why that would
not be so from Appellant (Final Rej. 6).
In response, Appellant makes three principal arguments: (1) the
Examiner has not met his burden of showing that Dutkiewicz’s chitosan film
is “continuous” (Appeal Br. 3–5); (2) the rejection is improperly based on
improper hindsight reconstruction of the invention (Appeal Br. 5–6); (3) the
chitosan film disclosed by Nordquist is not an N-alkylchitosan as set forth in
Appeal 2013-004417
Application 12/177,196

5
claim 2 (Appeal Br. 3), and (4) Carlucci teaches away from the claimed
invention (Appeal Br. 6). We do not find Appellant’s arguments persuasive,
and address each in turn.
With regards to arguments (1) and (2) — that the Examiner has not
met his burden of showing that Dutkiewicz’s chitosan film is “continuous”
and that the rejection is improperly based on a hindsight reconstruction of
the invention — the Examiner has explained why the process used by
Dutkiewicz to prepare the chitosan film is substantially similar to the process
described in Appellant’s Specification (Ans. 3–4). Specifically, the
Examiner finds that Dutkiewicz discloses preparing the chitosan film by film
casting the chitosan from an aqueous solution including an acid (Ans. 4,
citing (Dutkiewicz, col. 3, ll. 16–26, and Sample 3 at col. 5 ll. 28–35), which
is substantially similar to the process disclosed in Appellant’s Specification
(Ans. 4).
It is well established that when claimed and prior art products are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. In re Best, 562
F.2d 1252, 1255 (CCPA 1977). This is true whether the rejection is under
35 U.S.C. § 102 (anticipation) or 35 U.S.C. § 103 (obviousness), and is
based on the fact that the PTO is not in a position to manufacture products or
to obtain and compare prior art products. Id.
In this instance, the Examiner has explained why Dutkiewicz’s
process for preparing the chitosan film is substantially similar to the process
described in Appellant’s Specification (Ans. 3–4). In response, Appellant
incorrectly contends that the Examiner’s position is that Dutkiewicz’s
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process is identical to the process described in the Specification,
10
and
asserts that the Examiner has improperly looked to Appellant’s Specification
to reconstruct the claimed invention (Reply Br. 2). This assertion is not
persuasive.
The Examiner has simply found that Dutkiewicz’s process is
substantially similar to Appellant’s process, and therefore would reasonably
be expected to produce a “continuous” chitosan film as set forth in appealed
claim 2. Placing the burden on Appellant to show that Dutkiewicz’s
chitosan film would not be “continuous” is appropriate under these
circumstances. In re Best, 562 F.2d at 1255. To the extent that Appellant
argues that casting a film in the manner described in the Specification —
and, more importantly, described in Dutkiewicz — does not necessarily
result in a continuous chitosan film (see Reply Br. 3), the burden is on
Appellant to show or explain why. Id. The variables in film preparation
cited by Appellant from the Specification are not described as affecting
whether the resulting film will be “continuous” (see Spec. 7–10), and
Appellant does not demonstrate that those variables affect the formation of a
continuous film. Indeed, after describing in some detail the production of
and drying of the chitosan film, the Specification states “the result of the
drying at this stage is a continuous film” (Spec. 10, emphasis added). The
Specification does not state that some preparations result in a continuous
film, and others do not.

10
As noted above, the Examiner finds that Dutkiewicz’s process is
“substantially similar” to the process described in Appellant’s Specification
(Ans. 4).
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On the present record, we find no error in the Examiner’s
determination that Dutkiewicz’s process is properly relied on as showing the
production of a continuous film. In re Best, 562 F.2d at 1255.
11

Appellant also argues that Nordquist’s chitosan film is not an N-
alkylchitosan as set forth in claim 2 (Appeal Br. 3). It is well established
that “the PTO must give claims their broadest reasonable construction
consistent with the specification . . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id. In this instance, the Specification explicitly
defines the claimed term “N-alkylchitosan” as including “N-alkylated
chitosan-based moieties, including the N-alkylchitosans themselves, and
their salts and derivatives” (Spec. 3, ll. 10–13) (emphasis added). The term
“derivatives”
12
is not defined in the Specification, and Appellant has not
explained why Nordquist’s N-carboxylated alkylchitosan would not be
considered to be an N-alkylchitosan derivative. Accordingly, we determine

11
Appellant also argues that the Examiner’s finding that Dutkiewicz’s
chitosan film is “continuous” is not based on evidence of record (Appeal Br.
4–5). However, as discussed above, this part of the rejection is based on the
disclosures of Dutkiewicz.
12
According to page 365 of Webster’s II New Riverside University
Dictionary copyrighted by Houghton Mifflin Company (1994), the term
“derivative” is defined as “[a] compound derived or obtained from known
or hypothetical substances and containing essential elements of the parent
substance.”
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that the broadest reasonable interpretation of “N-alkylchitosan” includes
Nordquist’s N-carboxylated alkylchitosan.
Appellant’s argument that Carlucci teaches away from the claimed
invention because it teaches absorbent articles which are the “opposite [of]
impermeable articles” (Appeal Br. 6) is not persuasive. We agree with the
Examiner that “absorbent” is not necessarily the opposite of impermeable.
Moreover, the claimed laminate does not recite impermeability, and the
definition of “continuous N-alkylchitosan film” merely recites that at least
one surface of the film is non-porous (Spec. 3, ll. 19–20), not that the entire
laminate is impermeable. In addition, Carlucci is relied upon by the
Examiner for its disclosures regarding the structure of the claimed laminate,
not the properties of the specific layers therein (Final Rej. 4).

REJECTION (2)
With regards to Rejection (2), Appellant relies on the same arguments
as made in connection with Rejection (1), with the additional argument that
Uragami teaches away from the claimed laminate because it teaches a
swellable, absorbent polymer (Appeal Br. 6). This argument is not
persuasive for the reasons outlined by the Examiner on page 8 of the
Answer.

Appeal 2013-004417
Application 12/177,196

9
CONCLUSION
We AFFIRM the rejection of claims 2, 4, 6, 9, 12, 13, 15–19, 22, and
23 under 35 U.S.C. § 103(a) as being unpatentable over Dutkiewicz in view
of Nordquist, Carlucci, Roe, and Uitenbroek.
We AFFIRM the rejection of claims 5 and 21 under
35 U.S.C. § 103(a) as being unpatentable over Dutkiewicz in view of
Nordquist, Carlucci, Roe, and Uitenbroek, and further in view of Uragami.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a) (1) (iv).
AFFIRMED

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