Ex Parte Iwata et alDownload PDFPatent Trial and Appeal BoardAug 18, 201612401292 (P.T.A.B. Aug. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/401,292 03/10/2009 Junji Iwata 52835 7590 08/22/2016 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 MINNEAPOLIS, MN 55402-1683 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 20227.0002US01 5569 EXAMINER PARAD, DENNIS J ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 08/22/2016 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): PTOMail@hsml.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUN JI IWATA and Y ASUSHI MATSUDA 1 Appeal2013-005557 Application 12/401,292 Technology Center 1600 Before LORA M. GREEN, ULRIKE W. JENKS, and TA WEN CHANG, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a stretchable laminated sheet, which have been rejected as anticipated. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. STATEMENT OF THE CASE According to the Specification, conventional hydrophilic fiber used in articles applied to human skin has "rough and hard feeling and lacks in texture and fitting feeling." (Spec. 1.) Further according to the 1 Appellants identify the Real Parties in Interest as JNC Corporation and JNC Fibers Corporation. (Appeal Br. 2.) Appeal2013-005557 Application 12/401,292 Specification, "a stretchable laminated sheet having hydrophilic properties" and "excellent feeling and stability in wearing ... when ... impregnated with [a] liquid component and ... used on ... skin" may be obtained by "partially integrating a hydrophilic short fiber layer ... with a microfiber layer having at least a certain amount of elastomer long fiber having a ... diameter of 15 µm or less." (Id. at 1-2.) Claims 1-9 are on appeal. Claim 1 is representative and reads as follows: 1. A stretchable laminated sheet, comprising: a hydrophilic short fiber layer extensible in at least one direction; and a microfiber layer comprising an elastomer long fiber having a fiber diameter of 15 µm or less in an amount of 50% or more by weight relative to the microfiber layer, wherein the hydrophilic short fiber layer and the microfiber layer are laminated and partially bonded by thermocompression, concave-and-convex parts are formed by the partial thermocompression bonding on a surface of the hydrophilic short fiber layer, wherein concave parts in the concave-and-convex parts are discontinuous and regular, the hydrophilic short fiber layer is exposed on a surface of a stretchable laminated sheet formed with the hydrophilic short fiber layer and the microfiber layer, a total area of the concave parts of the concave-and-convex parts is in a range of 3 to 40% of an area of the surface of the hydrophilic short fiber layer, and the hydrophilic short fiber layer and the microfiber layer are integrated with each other at least by softening the elastomer long fiber of the microfiber layer and consequently bonding the elastomer long fiber with a fiber constituting the hydrophilic short fiber layer in a sheet in a thickness direction of a section where the concave parts are formed. 2 Appeal2013-005557 Application 12/401,292 The claims stand rejected as follows: Claims 1-9 are rejected under 35 U.S.C. § 102(b) as being anticipated by Makihara. 2 DISCUSSION Issue The Examiner has rejected claims 1-9 under 35 U.S.C. i-f 102 as anticipated by Makihara. The Examiner finds that it is well known in the art that an "elastomer" is an elastic polymer (i.e., the polymer has stretchable or rubber-like qualities). (Ans. 4.) The Examiner finds that Makihara teaches "a stretchable laminated sheet having a hydrophilic short fiber layer ... extensible in at least one direction and a microfiber (ultrafine fiber) layer having an elastomer long fiber ... with a fiber diameter of 15 micrometers or less." (June 27, 2011 Office Act. 7 (citations omitted).) The Examiner also finds that the stretchable laminated sheet taught by Makihara contains elastomer long fiber in an amount that is 50% or more by weight of the microfiber layer, as well as a concave and convex surface on the hydrophilic short fiber layer where the total area of the concave parts is 25% of the layer surface. (Id. at 7-8.) Finally, the Examiner finds that Makihara teaches creating the surface of concave and convex parts on the hydrophilic short fiber layer via the "embossing roller method of thermocompression" and integrating the hydrophilic and microfiber layers 2 Makihara et al., WO 2006/016601 Al, published Feb. 16, 2006. ("Makihara"). Citations to Makihara herein refer to the English language equivalent US 2008/0069845 Al, published Mar. 20, 2008, which is being used as an English translation. (Final Act. 3.) 3 Appeal2013-005557 Application 12/401,292 by "softening and joining." (Id. (citations omitted).) The Examiner further concludes, however, that Makihara's stretchable laminated sheets need not be produced through thermocompression bonding in order to anticipate, because the pending claims are product-by-process claims. (Id. at 9.) Appellants contend that Makihara fails to disclose a microfiber layer comprising an "elastomer" long fiber and further fails to disclose integrating the microfiber and hydrophilic fiber layers through thermocompression bonding. (Appeal Br. 4--16.) The issues with respect to this rejection are whether Makihara discloses a microfiber layer comprising an "elastomer" long fiber and whether Makihara needs to integrate the microfiber and hydrophilic fiber layers through thermocompression in order to anticipate the claims. Findings of Fact 1. The Examiner finds that it is well known in the art that an "'elastomer"' is an elastic polymer (i.e., the polymer has stretchable or rubber-like qualities). (Ans. 4.) The Oxford Dictionary defines elastomer as "a 'natural or synthetic polymer having elastic properties, e.g., rubber"'; the Merriam-Webster Dictionary defines elastomer as "'any of various elastic substances resembling rubber"'; and the Oxford English Dictionary defines elastomer as "'any of various rubbers (esp. synthetic ones) or plastic substances resembling rubber."' (Id. at 4--5.) 2. Makihara teaches that In the application sheet of the present invention, the hydrophilic fiber layer and the ultrafine fiber layer are preferably integrated by fiber entanglement caused by hydroentanglement. In the sheet integrated 4 Appeal2013-005557 Application 12/401,292 by the hydroentanglement, a dense ultrafine fiber layer is formed and a soft feel can be achieved and a moderate stretchability and air permeability are ensured. (Makihara i-f 7; see also id. at i-f 42 (stating that, "according to the hydroentanglement treatment, ... the entire sheet has the softness and the stretchability suitable for the skin covering").) 3. Makihara teaches that "the application sheet of [its] invention can be provided in a form where stretchability is high and an elongation modulus strength is low in one direction." (Id. at i-f 12; see also id. at i-f 13.) 4. Makihara teaches that "[t]he application sheet of [its] invention ... preferably has high stretchability in one direction." (Id. at i-f 38.) In particular, Makihara teaches that "the application sheet of [its] invention preferably has an elongation percentage (that is, the rupture elongation when stretched in [one] direction) between 120% and 250% in the direction of high stretchability ... most preferably between 150% and 200%." (Id.) 5. Makihara teaches that "[t]he application sheet of [its] invention preferably also has a low modulus strength in one direction," where the modulus strength refers to "the force necessary to elongate a sheet by a prescribed amount" and is evaluated by "the forces necessary to achieve a 10% elongation and a 20% elongation in a test sample of 5 cm width." (Id. at ,-r 39.) 6. Makihara teaches that "the application sheet of [its] invention preferably has a 10%-elongation modulus strength of between 0.3N/5 cm and 3N/5 cm, or a 20%-elongation modulus strength of between 0.5N/5 cm and 5N/5 cm[ and] more preferably between 0.7N/5 cm and 4.5N/5cm." (Id. at i-f 40.) Makihara teaches that "[t]he direction in which the sheet has a low 5 Appeal2013-005557 Application 12/401,292 modulus strength generally corresponds to the ... direction of high stretchability." (Id.) 7. Makihara discloses test samples of the application sheet of its invention having elongation percentages between 137.5% to 177.0%, 10% elongation modulus strength of 0.46 to 2.30 N/5 cm, and 20% elongation modulus strength of 0.98 to 4.70 N/5 cm. (Id. at Table 1.) Makihara states that, [a]s shown in Table 1, all of [the] Test samples ... had a high elongation percentage in the lateral direction. Further, [the] Test samples ... had a 10% elongation modulus strength of at most 3N/5 cm, and a 20% elongation modulus of at most 5N/5 cm, and therefore could be stretched relatively easily with a small force. (Id. at iT 67.) Analysis Appellants do not separately argue the claims. (Appeal Br. 3.) Thus, we focus our analysis on independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Elastomeric Long Fiber Appellants contend that Makihara fails to disclose a microfiber layer comprising an "elastomeric" long fiber. (Appeal Br. 4--12, 15-16; Reply Br. 4--6.) Appellants first argue that Makihara does not explicitly teach or suggest that the ultrafine fiber making up its ultrafine fiber layer is elastomeric. (Id. at 5.) We are not persuaded. The Examiner has cited evidence supporting the construction of "elastomeric" as stretchable (Ans. 4--5, FFl), which Appellants have not persuasively rebutted. The Examiner has also cited evidence showing that the application sheet of Makihara's invention is stretchable. (Ans. 5; FF2-FF7 .) Thus, we find that the 6 Appeal2013-005557 Application 12/401,292 Examiner has established a reasonable basis for finding that Makihara's ultrafine fibers are elastomers. We note but do not find persuasive Appellants' argument that Makihara' s split conjugate fiber, from which the ultrafine fiber is derived, is not "obtained by using 'a combination of co-polymers."' (Appeal Br. 5-8.) Appellants have provided no persuasive evidence that an elastomer must be a co-polymer. We likewise note but do not find persuasive Appellants' argument that the Specification does not teach that a propylene/polyethylene mixture is necessarily an olefinic elastomer long fiber mixture. (Id. at 9-10.) Regardless of whether the Specification teaches that a propylene/polyethylene mixture is necessarily an elastomer, the Examiner has established a reasonable basis for finding that Makihara's ultrafine fibers are elastomers in light of the plain and ordinary meaning of elastomer and the stretchability of Makihara' s application sheet. Appellants further argue that Makihara teaches splitting the splittable conjugate fiber by hydroentanglement and that, because the effectiveness of such treatment would be reduced if the fiber contained an elastomeric component, a fiber containing an elastomeric component undergoing hydroentanglement treatment usually combines the elastomeric component with a non-elastomeric component. (Id. at 10-12.) Appellants argue that, in contrast, the hydroentanglement method taught in Makihara is only applicable to a splittable fiber without an elastomeric component. (Id. at 10- 11.) We are not persuaded. As discussed above, Makihara discloses that its application sheet is stretchable, and Appellants cite to no persuasive evidence supporting their characterization of Makihara's method as 7 Appeal2013-005557 Application 12/401,292 applicable only to a non-elastomeric splittable fiber. "Attorneys' argument is no substitute for evidence." Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Finally, Appellants argue that examiners in foreign patent offices, who Appellants argue are skilled in the art, have "recognized [the] absence of 'elastomeric' properties in the microfibers of [Makihara]." (Appeal Br. 15-16; Reply Br. 4--5.) We are not persuaded. Appellants have provided no persuasive evidence that examiners in foreign patent offices should be considered a person of skill in the field of the claimed invention; neither is this panel bound by the decisions of foreign patent offices. Thermocompression Appellants contend that Makihara also does not anticipate because it does not disclose laminating the ultrafine fiber layer and the hydrophilic fiber layer by thermocompression. (Appeal Br. at 11.) We are not persuaded. As the Examiner points out, the pending claims are product-by- process claims. (Ans. 9.) The patentability of the product-by-process claim is based on the product and not on its method of production. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). As discussed above, we find that the Examiner has established a reasonable basis for finding that Makihara disclosed an ultrafine fiber layer comprising elastomers, and Appellants have not otherwise shown how the product of claim 1 differs from Makihara' s application sheet. Finally, Appellants contend that the stretchable laminated sheet of claim 1 provides superior properties by using elastomer microfibers and partial thermocompression bonding. (Appeal Br. 14--15.) In particular, 8 Appeal2013-005557 Application 12/401,292 Appellants contend that there is no reason to assume that Makihara' s application sheet has the peeling resistance, excellent stretching property, "excellent feeling and stability in wearing on a skin," reduced air permeability, reduced evaporation of the liquid component of the sheet, and "efficient[] improve[ ment in] 'the effect and efficacy [of] the liquid component on the skin or other object," as the stretchable laminated sheet of claim 1. (Id. at 12-14.) Appellants cite as further support the "significantly high" air permeability of the laminated sheet of Comparative Example 3. 3 (Id. at 14.) Appellants' arguments are not persuasive. Makihara discloses that its application sheet is stretchable (FF2-FF7), and none of the other properties cited by Appellants are recited in the claims. Appellants appear to contend that these unclaimed properties are relevant to patentability as "unexpected results," arguing that "[t]hese advantageous effects are not disclosed in [Makihara], and cannot be expected from the description of [Makihara]." (Appeal Br. 15.) Arguments regarding unexpected results are inapposite in this case, however, because the rejection is one of anticipation. In re Malagari, 499 F.2d 1297, 1302 (explaining that appellant cannot overcome a § 102 rejection by showing unexpected results or teaching away, which are relevant only to an obviousness rejection). 3 According to Appellants, the laminated sheet of Comparative Example 3 was made by integrating, through hydro-entanglement, a hydrophilic short fiber layer and a microfiber layer of non-elastomer splittable conjugate fibers. (Appeal Br. 14.) 9 Appeal2013-005557 Application 12/401,292 Accordingly, we affirm the Examiner's rejection of claim 1 as anticipated by Makihara. Claims 2-9 have not been separately argued and fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). SUMMARY We affirm the rejection of claims 1-9 under 35 U.S.C. § 102(b) as being anticipated by Makihara. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 10 Copy with citationCopy as parenthetical citation