Ex Parte Kashihara

Patent Trial and Appeal Board

Aug 29, 2013

12392156 (P.T.A.B. Aug. 29, 2013)

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.
12/392,156 02/25/2009 Emi Kashihara SY-40924/710240-4554 8367
59582 7590 08/30/2013
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
EXAMINER
MUROMOTO JR, ROBERT H
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
08/30/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EMI KASHIHARA
____________________

Appeal 2011-010548
Application 12/392,156
Technology Center 3700
____________________

Before EDWARD A. BROWN, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010548
Application 12/392,156

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-16. App. Br. 1. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 1 and 8 are independent. Claim 1 reads:
1. A textile sleeve for protecting
elongate members, comprising:
an elongate wall having warp multifilament
yarns and warp monofilament yarns woven with
fill multifilament yarns and fill monofilament
yarns, said warp multifilament yarns and said warp
monofilament yarns being woven in a warp-faced
pattern in relation to said fill multifilament yarns
and said fill monofilament yarns.

REJECTIONS
1. Claims 1-5 and 8-14 are rejected under 35 U.S.C. § 102(b) as
anticipated by James (US 2005/0185902 A1; pub. Aug. 25, 2005). Ans. 4.
2. Claims 6, 7, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over James and Gladfelter (US 6,963,031 B2; iss. Nov. 8,
2005), as evidenced by “US 2005/0016507.”
1
Ans. 5.

1
US 2005/0016507 corresponds to Tamol, Sr., published Jan. 27, 2005. We
note that the “Evidence Relied Upon” section of the Examiner’s Answer lists
Baer (US 2006/0016507; pub. Jan. 26, 2006) (Ans. 3). Also, the description
quoted at page 6, next-to-last paragraph, of the Examiner’s Answer
corresponds to the description at paragraph [0004] of Baer. As it appears
that the Examiner actually relied on Baer, not Tamol, Sr., we will treat this
rejection as being based on James and Gladfelter, as evidenced by Baer.
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3. Claims 1-5 and 8-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over James.
2
Ans. 7.
4. Claims 6, 7, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over James and Gladfelter, as evidenced by “US
2005/0016507.”
3
Ans. 8.

ANALYSIS
Rejection of claims 1-5 and 8-14 as anticipated by James
Claims 1-5
Claim 1 recites "an elongate wall having warp multifilament yarns
and warp monofilament yarns woven with fill multifilament yarns and fill
monofilament yarns." Emphasis added. The Examiner found that James
discloses both monofilament and multifilament yarns in both of the warp and
weft directions
4
(Ans. 4), and that the last sentence of paragraph [0018] of
James discloses use of both monofilament and multifilament yarns in the
weft direction (id. at 10). The Examiner stated that "[t]he lack of an
embodiment being disclosed by [James] using both types of yarn in the weft
direction" (id. at 10-11) does not overcome the following disclosure in
James:
The pull tape 18 also has weft members 24
extending in the weft direction 26 oriented

2
This is a New Ground of Rejection. Ans. 7.
3
This is also a New Ground of Rejection. Ans. 8. As discussed supra for
rejection (2), we will also treat this rejection as being based on James and
Gladfelter, as evidenced by Baer.
4
Claim 1 recites "warp" yarns and "fill" yarns. We understand that the
Examiner found James' "weft" direction corresponds to the claimed "fill."
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substantially perpendicular to the warp direction.
Preferably, the weft members 24 are also
multifilament yarns to preserve flexibility of the
pull tape and to control its cost, but as explained
below with respect to additional embodiments,
other filamentary members, such as
monofilaments, could also be used for the weft
members.
Ans. 11 (emphasis added by Examiner). Accordingly, we understand that
the Examiner interpreted the description of "other filamentary members,
such as monofilaments, could also be used for the weft members" (emphasis
added), as providing a disclosure of using both multifilament and
monofilament yarns in the weft direction of the pull tape.
Appellant contends that James does not disclose a single sleeve that
includes both fill multifilament yarns and fill monofilament yarns, and that
the Examiner’s citation to paragraph [0018] of James disregards the phrase
“as explained below” therein. App. Br. 4. Appellant contends that the only
embodiment disclosed in James that includes monofilaments in the fill
direction is described at paragraph [0027] in reference to Figure 4. This
paragraph describes that in Figure 4, “pull tape embodiment 18b is entirely
formed of monofilaments.” Emphasis added. Hence, James explicitly
discloses that pull tape 18b does not include both multifilament and
monofilament yarns in the weft direction. Rather, pull tape 18b includes
warp monofilaments 20a and 28, and weft monofilaments 24a. See James,
para. [0027]; fig. 4.
In Figure 3 of James, pull tape embodiment 18a includes warp
monofilaments 20a and 28, and weft multifilaments 24. See James, para.
[0026]. James states “[i]n this embodiment, . . . all of the weft filamentary
members 24 are multifilament yarns.” Id. (emphasis added). Hence, James
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explicitly discloses that pull tape 18a also does not include both
multifilament and monofilament yarns in its weft direction.
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). In addition, “[the] reference must clearly and
unequivocally disclose the claimed [invention] or direct those skilled in the
art to the [invention] without any need for picking, choosing, and combining
various disclosures not directly related to each other by the teachings of the
cited reference.” In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (emphasis in
original). We find that the last sentence of paragraph [0018] of James does
not clearly and unequivocally disclose an embodiment of the pull tape that
includes both multifilament and monofilament weft yarns in the same
sleeve. As discussed supra, James discloses pull tape embodiment 18a
including all weft multifilament yarns, and pull tape embodiment 18b
including all weft monofilaments. The Examiner has not identified a single
pull tape in James that includes both multifilament and monofilament weft
yarns. Rather, it appears necessary to pick weft monofilament yarns from
one embodiment and combine them with weft multifilament yarns from
another embodiment in order to result in a sleeve that includes both
multifilament and monofilament weft yarns. The Examiner did not,
however, identify any teaching in James that any particular embodiments of
the pull tape are directly related to each other and combinable. See id.
To the extent that the Examiner’s rejection is based on inherency,
"[u]nder the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates." In re
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Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations
and internal quotation marks omitted). The Examiner has not, however,
established that James’ pull tape necessarily includes both multifilament and
monofilament weft yarns. Thus, we do not sustain the anticipation rejection
of claim 1, and its dependent claims 2-5.
Independent claim 8 is directed to a method of constructing a textile
sleeve for protecting elongate members, and recites “a plurality of said
multifilament yarns and said monofilament yarns providing fill yarns
extending about a circumference of the sleeve.” Emphasis added. The
Examiner’s findings for claim 8 are the same as those discussed supra for
claim 1. Thus, we do not sustain the anticipation rejection of claim 8, and its
dependent claims 9-14 for similar reasons.

Rejection of claims 6, 7, 15, and 16 as unpatentable over James, Gladfelter,
and Baer
Claims 6, 7, and 15 depend from claim 1 or 8.
5
The Examiner’s
application of Gladfelter and Baer to the rejection of these dependent claims
(Ans. 5-6) does not cure the deficiencies of the rejections of claims 1 and 8,
as discussed supra. Hence, we also do not sustain the obviousness rejection
of claims 6, 7, 15, and 16.

Rejection of claims 1-5 and 8-14 as unpatentable over James
Initially, Appellant contends that the New Ground of Rejection is
untimely and should not be permissible, and cites to Manual of Patent

5
Claim 16 recites “[t]he method of claim 16.” It appears that claim 16
should instead depend from claim 15. We will treat claim 16 as having that
dependency. Appellant should address this typographical error in claim 16.
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Examining Procedure (“MPEP”) § 1207.03(II). Reply Br. 1. However, this
is a petitionable issue.
6
Accordingly, we do not address this issue.
Claims 1-5
Claim 1 recites "said warp multifilament yarns and said warp
monofilament yarns being woven in a warp-faced pattern in relation to said
fill multifilament yarns and said fill monofilament yarns." Emphasis added.
The Examiner found that James discloses floats on the outer surface in the
longitudinal direction, corresponding to "warp-faced," as claimed. Ans. 7.
The Examiner also found that James’ drawings “clearly show a weaving
pattern having floats of warp yarn on the surface, which is the definition of
the term 'warp faced pattern'. [James] also discloses twill and satin weaves
floating over wefts which are also in the scope of the term 'warp faced
pattern'.” Id. at 11.
Appellant contends that James does not disclose both warp
multifilament yarns and warp monofilament yarns woven in a warp-faced
pattern in relation to fill multifilament yarns and fill monofilament yarns.
App. Br. 5. We note that Appellant’s Specification describes the warp
multifilament yarns 16 and the warp monofilament yarns 18 shown in Figure
4 as being woven in a “warp-faced pattern,” and that these yarns both “float”

6
In responding to the Examiner’s Answer containing the New Grounds of
Rejection, Appellant did not request that prosecution be reopened by filing a
reply, but requested that the appeal be maintained by filing a Reply Brief.
See 37 C.F.R. § 41.39(b). In addition, MPEP § 1208.1 states “[a]ny
allegation that an examiner's answer contains an impermissible new ground
of rejection is waived if not timely (37 CFR 1.181(f)) raised by way of a
petition under 37 CFR 1.181(a). 37 C.F.R. § 1.181(f) states “[a]ny petition
under this part not filed within two months of the mailing date of the action
or notice from which relief is requested may be dismissed as untimely,
except as otherwise provided. This two-month period is not extendable.”
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over two or more fill yarns 20, 22. See Spec. para. [00018]. Appellant
contends that James only teaches providing a warp-faced pattern for warp
monofilaments 28 (citing paragraph [0019]), while teaching advantageously
weaving multifilament yarns 20 in a plain weave (citing paragraph [0025],
fig. 2). App. Br. 5. Appellant’s contentions are persuasive.
The Examiner did not identify any disclosure in James of a single pull
tape that includes warp multifilament yarns and warp monofilament yarns
woven in a warp-faced pattern, as required by claim 1. Appellant correctly
indicates that paragraph [0025] of James discloses that it is advantageous to
use a warp-faced pattern for only warp monofilaments 28. Also, the
Examiner did not provide an alternative obviousness rationale. Thus, we do
not sustain the rejection of claim 1, and its dependent claims 2-5, as
unpatentable over James.
Claims 8-10 and 14
In contrast to claim 1, claim 8 does not include any recitation of a
“warp-faced pattern.” Regarding claim 8, the Examiner stated “[a]lthough
[James] appears to disclose all of the limitations of claims instantly listed, it
does not explicitly state the use of both monofilament and multifilament
yarns in the weft direction of the fabric.” Ans. 7. The Examiner found that
James teaches that using both monofilament and multifilament in the warp
direction of the fabric results in greatly decreased surface frictional
characteristics in the warp direction as opposed to using entirely
multifilament yarns in the warp direction, and that this characteristic is very
important in a protective sleeve material to not damage the material being
protected. Id. at 8; see also James, para. [0020]. The Examiner concluded
that it would have been obvious:
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to incorporate monofilament yarns with the
multifilament yarns in the weft direction of a
protective textile sleeve, to provide the weft
direction of the textile sleeve with greatly reduced
surface frictional characteristics than the all
multifilament weft yarn arrangement disclosed by
[James, as] surface frictional characteristics are
taught as a critical property for improved
protective textile sleeves.
Ans. 8.
Appellant contends that the Examiner did not make a prima facie case
because James only addresses using multifilament and monofilaments in the
warp direction. Reply Br. 2. This contention is not persuasive. The
Examiner articulated a reason why one of ordinary skill in the art would
have modified James’ pull tape to include both multifilament and
monofilament yarns in the warp direction. Appellant has not apprised us of
any error in the Examiner’s reasoning. Thus, we sustain the rejection of
claim 8, and its dependent claims 9, 10, and 14, which Appellant does not
separately argue, as unpatentable over James.
Claims 11-13
Claim 11 depends indirectly from claim 8 and recites “further
including weaving said warp yarns in a warp-faced pattern.” Appellant
contends that James does not teach “weaving both the warp monofilaments
28 and the warp multifilaments 20 in a warp-faced pattern.” Reply Br. 2-3.
This contention is persuasive for reasons similar to those discussed supra in
regard to the rejection of claim 1. Thus, we do not sustain the rejection of
claim 11, and its dependent claims 12 and 13.

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New Ground of Rejection of claims 6, 7, 15, and 16 as unpatentable over
James, Gladfelter, and Baer
The Examiner’s application of Gladfelter and Baer to the rejection of
dependent claims 6 and 7 (Ans. 8-10) does not cure the deficiencies of the
rejection of claim 1, as discussed supra. Hence, we do not sustain the
obviousness rejection of claims 6 and 7.
Claims 15 and 16 depend from claim 8. Appellant does not provide
any argument for these dependent claims. Accordingly, we sustain the
obviousness rejection of claims 15 and 16.

DECISION
1. The rejection of claims 1-5 and 8-14 as anticipated by James is
REVERSED.
2. The rejection of claims 6, 7, 15, and 16 as unpatentable over
James and Gladfelter, as evidenced by Baer, is REVERSED.
3. The rejection of claims 1-5 and 11-13 as unpatentable over
James is REVERSED, and the rejection of claims 8-10 and 14 is
AFFIRMED.
4. The New Ground of Rejection of claims 6 and 7 as
unpatentable over James and Gladfelter, as evidenced by Baer, is
REVERSED, and the rejection of claims 15 and 16 is AFFIRMED.

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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-IN-PART

ELD