Ex Parte Hummel

Board of Patent Appeals and Interferences

Oct 27, 2000

08424223 (B.P.A.I. Oct. 27, 2000)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOSEPH HUMMEL
_____________
Appeal No. 1997-0144
Application No. 08/424,223
______________
ON BRIEF
_______________
Before CALVERT, FRANKFORT, and JENNIFER D. BAHR, Administrative
Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3, 5, 6, 11, 12, 15 through 18, 25,
26, 35 and 36. Claims 4, 7 through 10, 13, 14, 19 through 24 and
27 through 34, all of the other claims remaining in this
application, stand withdrawn from consideration under 37 CFR
§ 1.142(b) as being directed to non-elected species.
Appeal No. 1997-0144
Application No. 08/424,223
2
Appellant's invention relates to a cut-resistant yarn
suitable for machine knitting (e.g., Fig. 1 and claims 1, 17 and
25) and to such a cut-resistant yarn knitted to form an article
of protective apparel, such as a cut-resistant protective glove
(e.g., Fig. 7 and claims 35 and 36). Independent claims 1, 17
and 25 are representative of the subject matter on appeal and a
copy of those claims, as reproduced from the Appendix to
appellant's brief, is attached to this decision.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Bettcher 4,470,251 Sep. 11, 1984
Robins et al. (Robins) 4,912,781 Apr. 3, 1990
Claims 1 through 3, 5, 6, 11, 12, 15 through 18, 25, 26, 35
and 36 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Bettcher in view of Robins.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejection and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejection, we make reference to the examiner's
Appeal No. 1997-0144
Application No. 08/424,223
3
answer (Paper No. 26, mailed July 11, 1996) for the reasoning in
support of the rejection, and to appellant's substitute brief
(Paper No. 33, filed December 21, 1998) and reply brief (Paper
No. 28, filed September 5, 1996) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determination which follows.
Like the examiner, we note that Bettcher discloses a high
strength, cut-resistant, knittable yarn (e.g., Fig. 1) comprising
a core (10), a first wrapping (12) about the core and a second
wrapping (14) about the first wrapping. The core (10) is
preferably comprised of at least one strand (e.g., 16) of small
diameter flexible wire, such as stainless steel wire, preferably
annealed, and a parallel relatively non-stretchable, high
strength multi-filament synthetic fiber (20), such as a high
strength aromatic polyamide fiber, for example, Kevlar. Bettcher
Appeal No. 1997-0144
Application No. 08/424,223
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further discloses that the first or inner wrapping (12) is
preferably a high strength multi-filament aramid fiber (e.g.,
Kevlar), while the second or outer wrapping (14) is one having
low friction, light weight, a silk-like hand, that is fast
drying, resistant to light and low in cost, preferably, for
example, nylon or a polyester (e.g., Dacron). In column 2,
lines 56-62, Bettcher indicates that
[t]he core structure is designed to provide
cut resistance, knittability, flexibility and
add life to the yarn; and the windings retain
the core and create body. The Kevlar
wrapping increases the cut resistance, and
the outer wrapping of nylon which gives the
yarn an oily feel enhances the knittability
of the yarn and overcomes the abrasive effect
of the Kevlar wrapping.
In further describing the stainless steel wires (16, 18),
Bettcher notes that they each have a tensile strength of about
125,000 lb./sq. in., while the synthetic fiber (20) of the core
is relatively nonstretchable and of high strength, preferably
having a tensile strength of about 400,000 lb./sq. in. or higher
(col. 3, lines 1-9). The first wrapping (12), also formed of
Kevlar, is described as being of high strength and as preferably
being of about four hundred denier. It is noted that an outer
wrapping (14) of 200 to 630 denier can be used with satisfactory
results. At column 4, line 20, et seq., Bettcher expressly notes
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that
[t]he use of a high strength fiber strand, preferably
one having a tensile strength of not less than four
hundred thousand pounds per square inch, such as, high
strength Kevlar, for example, Kevlar 29 aramid,
preferably of the multifilament type in the core is
very advantageous. Multifilament is more linear than
spun and slides and/or flows better with the other
parts of the core during fabrication and subsequent use
of an article of apparel produced therewith. The high
strength multifilament core strand which [sic]
relatively unstretchable takes a great deal if not the
major part of the tensile load to which the yarn is
subjected during knitting. It also appears to increase
the flexibility of the core part of the yarn over an
all metal core and in turn makes the yarn more easily
knit, i.e., imparts to the yarn greater knittability.
The high strength synthetic wrapping 12 increases the
cut resistance, etc. of the yarn but produces a hard
rough, somewhat abrasive surface formed of hills and
valleys lengthwise of the yarn. It does, however
provide a desirable rigid backup surface for the outer
winding 14. The top or outer wrapping which is
preferably a white Nylon, a stretchable synthetic
fiber, tends to fill out the valleys of the wrapping
immediately therebeneath and produce a yarn having a
good appearance and a relatively smoother non-abrasive
surface. Apparel produced with yarn of the present
invention has a relatively soft non-abrasive outer
surface and maximum comfort.
The Robins patent, like Bettcher, discloses a composite yarn
construction particularly adapted for use in cut-resistant body
protective apparel. The composite yarn in Robins comprises
(e.g., Fig. 2) a high strength core yarn (11) covered or overlaid
with a knitted, cut and abrasion resistant strand (12) of
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Application No. 08/424,223
6
stainless steel or a high strength multifilament yarn (col. 3,
lines 23-27). The composite yarn may comprise a high strength
synthetic yarn as the core yarn overlaid with knitted stainless
steel, a core yarn of nylon overlaid with knitted stainless
steel, or may comprise a core of stainless steel filament
overlaid with a knitted high strength synthetic multi-filament
yarn (col. 2, lines 12-19). At column 3, lines 27-34, Robins
notes that
[t]he preferable embodiment thus far developed uses a
non-metallic yarn as the core yarn 11, for example, an
840 denier nylon multifilament yarn, with a .0045 inch
stainless steel strand as the knitted cover yarn 12
which is applied over the core yarn 11. However, other
embodiments of core yarn 11 could comprise any type of
high strength synthetic fiber material.
In describing the embodiment seen in Figure 4, Robins again
emphasizes (col. 3, lines 35-46) that the composite yarn utilizes
a single multifilament core yarn (21), preferably a high strength
multifilament, onto which is knitted a stainless steel covering
yarn (22). Over the knitted covering yarn (22) is wrapped, by a
conventional spiral wrapping process, a pair of yarns (23) and
(24) which may comprise a multifilament yarn having good
flexibility and knitting characteristics, such as nylon or
polyester. In claim 1 of the Robins patent, the invention is
Appeal No. 1997-0144
Application No. 08/424,223
7
defined as a composite yarn adapted for use in cut resistant body
protection apparel, comprising: a) a non-elastic core yarn and b)
an abrasion and cut resistant non-elastic monofilament covering
yarn knitted onto and encasing the core yarn in a series of cut
resistant loops. In claim 8, which depends from claim 1, the
core yarn is further defined as comprising "a multifilament yarn
selected from the group consisting of SPECTRA polyethylene,
VECTRAN liquid crystal polymer, KEVLAR aramide fiber, olefin,
nylon or polyester."
In rejecting the claims before us on appeal, the examiner
has urged (answer, page 4) that it would have been obvious to one
of ordinary skill in the art
to exchange the Kevlar in both the core and the first
layer in Bettcher '251 for VECTRAN liquid crystal
polymer fiber in view of Robins et al '781 so that the
yarn produced will have a greater cut or abrasion
resistance as well as other property improvements such
as flexibility and suppleness thereby providing a
higher quality glove therefrom. Note that the liquid
crystal polymer disclosed in Robins et al '781 would
inherently possess the property of a tenacity which is
no more than 10 grams per denier. If however, the
liquid crystal such as VECTRAN does not inherently
posses the property of having a tenacity of no greater
than 10 grams per denier, it would have been obvious to
utilize the type of VECTRAN M fiber which does have
this property as a matter of engineering choice of
Appeal No. 1997-0144
Application No. 08/424,223
8
materials having known properties depending upon the
cost and properties desired in the final product
produced from the yarn since VECTRAN M is less
expensive than VECTRAN HS.

On page 7 of the answer, the examiner urges that Robins
teaches the interchangeability of VECTRAN liquid crystal fiber
for KEVLAR fibers in cut-resistant yarns and that it would,
accordingly, have been obvious to one of ordinary skill in the
art to exchange the KEVLAR in both the core and first layer in
Bettcher for VECTRAN liquid crystal polymer fibers in view of
Robins. In addressing the limitation in the claims on appeal
regarding the recited liquid crystal polymer fiber being one
"having a tenacity of no more than 10 grams per denier," the
examiner urges (answer, page 8) that Robins "teaches the use of
both high and low tenacity fibers in the cut-resistant yarn and
this teaching would be used to replace the KEVLAR in Bettcher."
Like appellant (brief, pages 6-11), absent knowledge of
appellant's invention, we see nothing in Bettcher and Robins
which would have suggested their combination in the manner urged
by the examiner. In our opinion, the examiner has used
impermissible hindsight derived from appellant's own teachings to
Appeal No. 1997-0144
Application No. 08/424,223
9
reconstruct the knittable yarn of Bettcher so as to result in a
structure which is responsive to that set forth in the claims
before us on appeal. Given the strong emphasis in Bettcher that
the synthetic fiber (20) of the core and the first wrapping (12)
of the composite yarn therein be a high strength relatively
nonstretchable synthetic fiber, i.e., one having a tensile
strength of about 400,000 lbs./sq. in. and higher (col. 3, lines
3-7 and col. 4, lines 20-24), we see no reasonable basis upon
which to conclude that it would have been obvious to one of
ordinary skill in the art to replace the high strength Kevlar
core fiber (20) and high strength Kevlar first wrapping (12) of
the yarn in Bettcher with a liquid crystal polymer fiber having a
tenacity of no more than 10 grams per denier, as has been urged
by the examiner.
The mere fact that Robins with its knitted stainless steel
covering yarn (12) may be willing to place a normal strength
yarn, such as nylon, as the core (11) of a composite knittable
fiber for making cut-resistant apparel, provides no teaching or
suggestion for making that same modification in Bettcher by
replacing the core fiber (20) and first wrapping (12) therein,
which Bettcher teaches must have a tensile strength of not less
Appeal No. 1997-0144
Application No. 08/424,223
10
than 400,000 lbs./sq. in., with a fiber having a tenacity of no
more than 10g/denier. Thus, even if Robins can be said to have
been suggestive of using a liquid crystal polymer fiber having a
tenacity of no more than 10 grams per denier (e.g., VECTRAN M) in
the core of its composite yarn, a point in some considerable
doubt, we see nothing in the applied references or otherwise
which would have led one of ordinary skill in the art to make any
such substitution for the high strength Kevlar fibers in
Bettcher.
Since we have determined that the teachings and suggestions
found in Bettcher and Robins would not have made the subject
matter as a whole of claims 1 through 3, 5, 6, 11, 12, 15 through
18, 25, 26, 35 and 36 on appeal obvious to one of ordinary skill
in the art at the time of appellant's invention, we must refuse
to sustain the examiner's rejection of those claims under
35 U.S.C. § 103.
Under the authority provided us by 37 CFR § 1.196(b), we
enter the following new ground of rejection.
Claims 1, 11/1, 12/11/1, 15/1, 16/11/1, 35/1 and 36/35/1 are
Appeal No. 1997-0144
Application No. 08/424,223
1 While appellant indicates on page 13 of the brief that a
brochure on VECTRAN liquid crystal polymer fibers was submitted
to the examiner, we find no such brochure of record in the
application file.
11
rejected under 35 U.S.C. § 103 as being unpatentable over
Bettcher in view of the admittedly known normal strength fiber or
yarn VECTRAN M described in appellant's specification at pages 2-
4. Bettcher discloses a cut-resistant yarn (Fig. 1) having the
construction broadly set forth in claim 1 on appeal, with the
exception that this patent does not disclose or teach that "at
least one of" the core, first wrapping and second wrapping of the
composite yarn therein be comprised of a liquid crystal polymer
fiber having a tenacity of no more than 10 grams per denier.
However, Bettcher does teach that the yarn therein has a second
wrapping or winding (14) which is preferably one having low
friction, light weight, a silk-like hand, that is fast drying,
resistant to light and low in cost, preferably, for example,
nylon or a polyester (e.g., Dacron), both of which are recognized
as normal strength fibers. Similarly, appellant's specification
(pages 2-4) and brief (pages 13-14)1 indicate that VECTRAN M sold
by Hoechst Celanese Corp. is a normal strength fiber having good
abrasion resistance, high impermeability, excellent property
retention over a broad temperature range, low moisture
Appeal No. 1997-0144
Application No. 08/424,223
12
absorption, can be laundered at high temperatures conventionally
used for industrial fabrics, etc.. Given the nature of the known
VECTRAN M fiber vis-a-vis the other normal strength fibers (e.g.,
nylon and polyester) for use in the second wrapping (14) of
Bettcher, it is our opinion that it would have been obvious to
one of ordinary skill in the art at the time of appellant's
invention to use the normal strength synthetic fiber VECTRAN M as
one of the fibers for the second wrapping (14) of Bettcher so as
to gain the self-evident benefits thereof relative to the
underlying high strength Kevlar fiber wrapping (12) over which it
would be applied. As for the claims requiring a metal strand in
the cut-resistant yarn, we note the disclosure of Bettcher at
column 1, lines 46-58, and column 2, lines 51-55. Bettcher also
discloses (e.g., Fig. 2 and col. 4, line 48+) that the composite
yarn therein may be formed into protective apparel, such as a
cut-resistant protective glove.
In addition to the foregoing, we REMAND this application to
the examiner to consider whether other rejections of the claims
of this application would be appropriate, for example, other
prior art rejections on art of record or otherwise, or a
rejection based on 35 U.S.C. § 112, first paragraph, that the
Appeal No. 1997-0144
Application No. 08/424,223
13
scope of enablement provided to one skilled in the art by the
disclosure is not commensurate with the scope of protection
sought by the claims, see particularly, MPEP § 2164.08. While
the disclosure indicates that VECTRAN M has a tenacity in the
claimed range and a high cut resistance, we see nothing in the
disclosure that would convey to one skilled in the art that all
liquid crystal polymer fibers having a tenacity of no more than
10 grams per denier, as set forth in the claims on appeal, would
have such characteristics and function in a similar manner.
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that "a new ground
of rejection shall not be considered final for purposes of
judicial review."

37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:

(1) Submit an appropriate amendment of the claims
Appeal No. 1997-0144
Application No. 08/424,223
14
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and Interferences
upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
This application, by virtue of its "special" status,
requires immediate action, see MPEP § 708.01 (7th Edition,
Rev. 1, Feb. 2000).
REVERSED; 1.196(b) and REMANDED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF:lmb
Appeal No. 1997-0144
Application No. 08/424,223
15
WATTS, HOFFMAN, FISHER &
HEINKE CO, L.P.A
P.O. BOX 99839
CLEVELAND, OH 44199-0839

Appeal No. 1997-0144
Application No. 08/424,223
A-1
CLAIM 1
A cut-resistant yarn suitable for machine knitting,
comprising a core, a first wrapping about the core and a second
wrapping about the first, at least one of said core, first
wrapping and second wrapping being comprised of liquid crystal
polymer fiber having a tenacity of no more than 10 grams per
denier.
CLAIM 17
A cut-resistant yarn suitable for machine knitting having a
core comprised of liquid crystal polymer fiber having a tenacity
of no more than 10 grams per denier; a flexible metal strand; a
wrapping of liquid crystal polymer fiber having a tenacity of no
more than 10 grams per denier, and one or more additional
wrappings of synthetic fiber none of which has a tenacity greater
than 10 grams per denier.
Claim 25
A cut-resistant yarn suitable for machine knitting having a
core comprised of a liquid crystal polymer fiber having a
tenacity of no more than 10 grams per denier and a strand of
wire, and having wrappings comprised of a wrapping of liquid
crystal polymer fiber having a tenacity of no more than 10 grams
per denier, and two wrappings each of which is either nylon or
polyester over the liquid crystal polymer wrapping.