Ex Parte Jorro de Inza et al

Patent Trial and Appeal Board

Jan 30, 2017

12815561 (P.T.A.B. Jan. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/815,561 06/15/2010 Alejandro Jorro de Inza 007643.00002 1671
22907 7590 02/01/2017
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
JUSKA, CHERYL ANN
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
eofficeaction @bannerwitcoff.com
GPD@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEJANDRO JORRO DE INZA, ADELAIDA ANTOLIN
FERNANDEZ, and GERMAN SANCHIS GRAMAGE
Appeal 2015-005896
Application 12/815,561
Technology Center 1700
Before JEFFREY T. SMITH, ELIZABETH M. ROESEL, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1,2, and 6 of Application
12/815,561 under 35 U.S.C. § 102(b) as anticipated and claims 1—8 and 17
under 35 U.S.C. § 103(a) as obvious. Final Act. (July 2, 2014). Appellants
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Grupo Antolin Ingenieria, S.A., is identified as the real party in interest.
Appeal Br. 2.
Appeal 2015-005896
Application 12/815,561
BACKGROUND
The present application generally relates to flock coatings for use in
automobile interiors. Spec. 1. More specifically, it describes a flock coating
having a decorative or informational motif formed by action of a laser beam
projected on a portion of the flock layer. Id.
Claims 1 and 17 are representative of the pending claims and are
reproduced below:
1. An inner flock coating for vehicles, said inner flock
coating comprising:
- a support,
- an adhesive layer located at least over part of the support
layer,
- a flock layer formed by a number of fibres applied by flocking
technology on at least one part of the adhesive layer, wherein
the melting or combustion temperature of the fibres forming the
flock layer is less than the degradation temperature of the
adhesive forming the adhesive layer, and
- an indicative, decorative, or indicative and decorative motif
located on a visible surface of said inner flock coating, wherein
at least part of the motif comprises a combination of at least
two visually different areas, a first area formed by part of the
flock layer where the flock layer is visible, and a second area
formed by the adhesive layer where the adhesive layer is visible
due to the elimination of part of the flock layer located on top
of the adhesive layer due to an increase in temperature at said
second area caused by action of a laser beam projected on that
part of the flock layer, wherein said inner flock coating is in an
assembly position inside a vehicle.
17. An inner flock coating for vehicles, said inner flock
coating comprising:
- a support,
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Application 12/815,561
- an adhesive layer located at least over part of the support
layer,
- a flock layer formed by a number of fibres applied by flocking
technology on at least one part of the adhesive layer, wherein
the melting or combustion temperature of the fibres forming the
flock layer is less than the degradation temperature of the
adhesive forming the adhesive layer, and
- an indicative, decorative, or indicative and decorative motif
located on a visible surface of said inner flock coating, wherein
at least part of the motif comprises a combination of at least
two visually different areas, a first area formed by part of the
flock layer where the flock layer is visible, and a second area
formed by the adhesive layer where the adhesive layer is visible
due to the elimination of part of the flock layer located on top
of the adhesive layer due to an increase in temperature at said
second area caused by action of a laser beam projected on that
part of the flock layer, and wherein the motif is made up of a
third area formed by material resulting from having heated the
fibres of the flock layer until the fibres reach a molten state.
Appeal Br. (Claims App. i, iv).
REJECTIONS
On appeal, the Examiner maintains the following rejections2:
1. Claims 1,2, and 6 are rejected under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious
over Latos et al. (US 2005/0151302 Al, pub. July 14, 2005) (“Latos”).
Final Act. 3.
2. Claims 3—5, 7, and 17 are rejected under 35 U.S.C. § 103(a) as
obvious over Latos. Id. at 6.
2 The rejection of claim 1 under 35 U.S.C. § 112, second paragraph, was
withdrawn by the Examiner. Answer 11.
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Application 12/815,561
3. Claim 8 is rejected under 35 U.S.C. § 103(a) as obvious over
Latos in view of Hayashi and further in view of Casey (US 4,018,956, iss.
Apr. 19, 1977) (“Casey”). Id. at 8.
4. Claims 1—3 and 5—8 are rejected under 35 U.S.C. § 103(a) as
obvious over Malvar et al. (US 2008/0060669 Al, pub. Mar. 13, 2008)
(“Malvar”) in view of Gueret (US 2004/0018037 Al, pub. Jan. 29, 2004)
(“Gueret”). Id. at 8.
DISCUSSION
Rejection 1.
The Examiner rejected claims 1, 2, and 6 as anticipated by, or in the
alternative, obvious over Latos. Addressing claim 1, Appellants allege this
rejection is in error on four bases. First, they assert that Latos does not teach
an adhesive layer. Appeal Br. 8—11. Second, they contend that Latos does
not suggest fibers having a melting temperature less than the degradation
temperature of the associated adhesive. Id. at 12—18. Third, they allege that
Latos does not disclose the flock “in an assembly position inside a vehicle.”
Id. at 19. Fourth, they state that Latos does not teach a motif made of a flock
layer and a visible portion of adhesive. Id. at 19—20. Appellants present no
separate argument regarding claims 2 or 6.
With regard to the first alleged error, the Examiner finds that pile
fabrics made by a flocking process as disclosed by Latos will inherently
comprise an adhesive layer and a support. Final Act. 5; see also Latos 118
(“the term ‘pile’ includes projecting fibers formed by shearing or napping,
including . . . flocking and corduroy.”). The Examiner asserts that
Appellants’ Specification provides that flocking is known to require an
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Application 12/815,561
adhesive applied on a support, over which adhesive layer short fibers called
flock are placed in order to form a flock layer. Answer 11—12 (citing Spec.
1).
Appellants argue that an adhesive layer is not inherently disclosed
because Latos teaches to use a number of pile fabrics some of which, such as
corduroy, do not utilize an adhesive. Appeal Br. 9. This argument misses
the mark. A teaching of one embodiment that omits a claimed element does
not negate the teaching of another embodiment. See generally Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior
art reference] discloses a multitude of effective combinations does not
render any particular formulation less obvious.”); see also Perricone v.
Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed. Cir. 2005) (holding, in the
context of anticipation, that “specific disclosure, even in a list,” is a
sufficient disclosure). Thus, the teaching of a corduroy embodiment does
not negate Latos’ teaching relating to flocking. In view of the foregoing,
Appellants have failed to demonstrate reversible error in the Examiner’s
finding that an adhesive layer is inherently taught by Latos.
For their second argument, Appellants contend that Latos does not
teach a flock layer where “the melting or combustion temperature of the
fibers forming the flock layer is less than the degradation temperature of the
adhesive forming the adhesive layer.” Appeal Br. 12—18.
In support of the anticipation rejection, the Examiner finds that, while
the claimed temperature relationship is not explicitly disclosed, it is inherent
to the disclosure of Latos. Appellants assert that the claimed temperature
relationship is not necessarily present and is therefore not inherently
disclosed by Latos. Id. at 12. Appellants assert that a prior rejection
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presented a hypothetical combination where the proposed adhesive had a
degradation temperature lower than that of the fiber. Id. at 13.
“Inherency may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient to establish inherency.” Scaltech Inc. v.
Retec/Tetra L.L. C., 178 F.3d 1378, 1384 (Fed. Cir. 1999). Here, the
Examiner has not shown that there is any teaching of Latos that establishes
that the claimed temperature relationship is necessarily present.
Accordingly, we do not sustain the rejection of claims 1, 2 and 6 on the basis
of anticipation.
In regard to the obviousness rejection, Appellants assert that there is
no factual support for the Examiner’s finding that the claimed relationship is
obvious in view of Latos. Appellants additionally rely upon the disclosure
of Lion (not relied upon by the Examiner in the instant rejection) for the
proposition that both the fibers and adhesive are typically removed or
degraded in the area subject to laser etching. Appeal Br. 15—18.
In this regard, the Examiner determined as follows:
[F]or a flocked fabric to be successfully laser etched by Latos'
method, the melting or combustion temperature of the flock
fibers must be less than the degradation temperature of the
adhesive. If the adhesive had a degradation temperature less
than the melting or combustion temperature of the flock fibers,
said fibers would not be successfully etched. Rather, the flock
would be lost due to degradation of the adhesive binding the
flock to the substrate.
Final Act. 5. The Examiner further determined that “the obviousness
rejection is based upon the direct teachings of Latos reference,
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Application 12/815,561
scientific principles regarding thermal properties of materials, and the
definition of a flocked fabric structure.” Answer 14.
Latos teaches an embodiment where laser etching proceeds until “no
meaningful fiber height remains.” Latos 136. It teaches another
embodiment where “the fiber height is reduced by at least 90% within the
illuminated area.” Id. This fiber reduction is taught to be achieved by
application of laser energy that results in melting or burning of the fibers.
Id. 1144, 45. The feel of the fabric is taught to be maintained. Id. 137
(“Preferably, at least 25% of the area within each given square inch of the
pile fabric 1 is maintained at the original fiber height to preserve the hand of
the fabric”) (emphasis added).
Further, Figure 4 of Latos depicts a fabric where some fibers (51) are
shortened and some are removed entirely in areas (60) where laser energy is
applied. Fibers adjacent to the areas (60) where laser energy is applied
maintain their position while the base layer remains stable for all fibers
regardless of etching.
The foregoing, taken as a whole, suggests that the base of the fiber
remains in place and the adhesive is unaffected by heat from the etching
process.
Given such disclosures and the Examiner’s findings, Appellants have
failed to demonstrate reversible error in the Examiner’s determination that a
person of ordinary skill in the art would have chosen an adhesive that
remains stable during manufacturing.
Appellants’ third argument in support of their allegation of error in the
rejection of claims 1, 2, and 6 is that Latos does not teach the flock “in an
assembly position inside a vehicle.” Appeal Br. 19.
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Initially, the Board observes that the term in question appears merely
to state an environment of use. “An intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003).
Further, as the Examiner notes, Appellants challenge the Examiner’s
findings with respect to whether Latos explicitly teaches flocking “in an
assembly position” (in support of their argument that the anticipation
rejection is erroneous) but not whether such positioning would have been
obvious. Answer 16—17; Appeal Br. 19. Accordingly, such arguments are
waived. 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Additionally, Appellants have not established reversible error in the
Examiner's determination that Latos’ teaching regarding use of materials in
“vehicle interiors,” Latos 17, would have taught a person of ordinary skill in
the art that the instant flock coating could be used in an assembly position
inside a vehicle. Final Act. 6.
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Appellants’ fourth basis for appeal of the first rejection is that Latos
does not teach the following limitation:
an indicative, decorative, or indicative and decorative motif
located on a visible surface of said inner flock coating, wherein
at least part of the motif comprises a combination of at least
two visually different areas, a first area formed by part of the
flock layer where the flock layer is visible, and a second area
formed by the adhesive layer where the adhesive layer is visible
due to the elimination of part of the flock layer
Appeal Br. (Claims App. i) (emphasis added). More particularly, Appellants
assert that Latos “never discusses creating designs having an adhesive layer
visible.” Appeal Br. 20.
In response, the Examiner notes that Latos teaches to etch a graphic or
text in a pile fabric so that no fibers remain in some portions of the flocking.
Answer 17. Specifically, Latos provides that “[t]he sculpting can be selected
to impart graphics, text, designs, logos, or patterns in the pile fabric.” Latos
111. Latos further provides that fibers may be shortened such that “no
meaningful fiber height remains after illumination with the laser.” Latos |
36, and that “substantially all of the fibers 51 in a region can be shortened,”
id. 137.
In view of the disclosure that the fibers of Latos may be etched so that
“no meaningful fiber height remains,” Appellants’ contention that Latos fails
to teach a visible adhesive layer is not persuasive of reversible error.
Accordingly, we sustain the Examiner’s rejection on the basis of
obviousness.
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Rejection 2.
The Examiner rejected claims 3, 5, 7, and 17 as obvious over Latos.
Final Act. 5. Appellants present no arguments regarding claims 3, 5 and 7
separate from the arguments regarding claim 1, which are addressed above.
Appellants do, however, present separate argument with regard to claim 17.
Appeal Br. 20.
Claim 17 is to a flock coating with a motif having a first area with a
visible flock layer, a second area with a visible adhesive area and “a third
area formed by material resulting from having heated the fibres of the flock
layer until the fibres reach a molten state.” Id. (Claims App. iv).
Appellants note that “Latos teaches preventing lumps formed from
melted fiber material.” Id. at 20 (emphasis in original) (citing Latos 143).
They argue that this amounts to a teaching away from the use of molten
material to form a part of a motif. Id.
The Examiner observes that Latos provides that laser etching
parameters “are selected to limit melting of meltable fibers below a
threshold, which would form lumps of the material upon cooling.” Latos
43. The following paragraph, however, teaches that
for synthetic materials . . . illumination of the fibers can shorten
the fibers through a melting of the fibers. As the laser energy
impinges from above the pile fabric, the melted material tends
to flow down to the base of the fabric, without bonding to
adjacent fabrics. This assists in preserving the hand of the
fabric.
Id. at 44. Additionally, Latos teaches that “[t]he melted material flows and
causes a relocation of the dye molecules within the synthetic material,
thereby causing color enhancement.” Latos 146 (emphasis added).
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Thus, the Examiner, finds, Latos does not teach away from melting
but rather provides guidance as to how to avoid formation of lumps when
using molten material. In view of the disclosure of Latos, Appellants have
not established reversible error in the rejection at issue.
Rejection 3.
The Examiner rejected claim 8 as obvious over Latos in view of
Casey. For their appeal of this rejection, Appellants rely upon their
arguments set forth in regard to the first rejection. Appeal Br. 21. As these
arguments have not been found persuasive, this rejection is sustained for the
reasons set forth above.
Rejection 4.
The Examiner rejected claims 1—3 and 5—8 as obvious over Malvar in
view of Gueret. This is an alternative basis of rejection for each of these
claims. In view of the determinations above regarding Rejections 1—3, we
need not reach this ground of appeal.
DECISION
The rejection of claims 1, 2 and 6 as anticipated is not sustained. The
rejections of claims 1—8 and 17 as obvious are sustained.
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
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