Ex Parte Kashihara

Patent Trial and Appeal Board

Jul 27, 2015

12797798 (P.T.A.B. Jul. 27, 2015)

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.
12/797,798 06/10/2010 Emi Kashihara SY-41554/710240-5182 5603
59582 7590 07/27/2015
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
07/27/2015 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 2013-0087441
Application 12/797,7982
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–12. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Throughout this opinion, we refer to the Appeal Brief (“App. Br.,” filed
Feb. 1, 2013), the Examiner’s Answer (“Ans.,” mailed May 8, 2013), the
Reply Brief (“Reply Br.,” filed June 27, 2013), the Final Office Action
(“Final Act.,” mailed Aug. 10, 2012), and the Specification (“Spec.,” filed
June 10, 2010).
2 Appellants identify Federal-Mogul Powertrain, Inc. as the real party in
interest. App. Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention is directed to textile sleeves for protecting
elongate members. See App. Br. 2, Spec. ¶ 1.3
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A textile sleeve for routing and protecting elongate
members, comprising:
an elongate wall having opposite edges extending parallel
to a central axis of the sleeve, said wall being woven with warp
yarns extending parallel to said axis and fill yarns extending
transverse to said warp yarns, said warp yarns being provided
as monofilament yarns and said fill yarns being provided as
monofilament yarns and multifilament yarns.

REJECTIONS
Claims 1, 2, 4–8, and 10–12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over James (US 7,188,642 B2, iss. Mar. 13, 2007) and
Admitted Prior Art (Spec. ¶ 2).
Claims 1, 2, 4–8, and 10–12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over James and Koch (US 4,660,605, iss. Apr. 28, 1987).
Claims 3 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over James, Koch, and Winters (US 6,328,080 B1, iss. Dec. 11,
2001).

3 We note the Specification contains two paragraphs numbered one ([0001]).
Throughout the Decision, we refer to the second paragraph one, which is
directed to the “Technical Field” of the invention.
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ANALYSIS
Independent Claim 1
Rejection over James and Admitted Prior Art
Appellant contends the Examiner’s rejection of claim 1 as
unpatentable over James and Admitted Prior Art is in error, because the
Examiner misinterprets the Admitted Prior Art. App. Br. 5. We agree.
The Examiner finds that James discloses the limitations of claim 1
except for having the fill yarns being provided as monofilament yarns and
multifilament yarns. Final Act. 2–3. For this limitation, the Examiner relies
on the Specification that states, “[i]n order to reduce the bulk and improve
the flexibility of the sleeves, it is also known to use tightly woven
multifilament and monofilament yarns in both the warp and fill directions,”
i.e., Admitted Prior Art. Final Act. 3, Spec. ¶ 2. The Examiner determines
that the Admitted Prior Art “clearly states the obvious and well known
nature of using both types of yarns in either direction of the sleeve to reduce
bulk and improve the flexibility of the sleeves.” Final Act. 3.
Appellant argues that combining James with the Admitted Prior Art is
improper, because the Admitted Prior Art acknowledges that it was known
to have “both multifilament and monofilament warp yarns with
multifilament and monofilament weft yarns in a single sleeve.” App. Br. 5.
Appellant argues this is distinct from having one of either the warp or the
weft yarns include both monofilament and multifilament yarns. Id.
Appellant’s argument is persuasive. We find the Admitted Prior Art
acknowledges that it was known to use both types of yarns in both directions
and does not acknowledge using both types of yarns in only one direction.
Because we disagree with the Examiner’s finding that the Admitted Prior
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Art teaches having only the fill yarns comprise both monofilament and
multifilament yarns, we do not sustain the rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over James and Admitted Prior Art.

Rejection over James and Koch
Appellant contends the Examiner’s rejection of claim 1 as
unpatentable over James and Koch is in error, because James and Koch are
not analogous art as they are not directed to the same field of endeavor as the
invention nor are they reasonably pertinent to the problem faced by the
inventor. App. Br. 3–4. We disagree, and find both references to be
analogous art.
At the outset, we note that Appellant does not readily identify the field
of endeavor of the invention. At best, Appellant “maintains the teachings of
James and Koch are not from the same field of endeavor as the claimed
textile sleeve for protecting elongate members.” App. Br. 4. However, a
recitation of the preamble of a claim is not understood to be an identification
of the field of endeavor of the invention. Additionally, we note that
Appellant identifies the particular problem faced by the inventor, i.e.,
“providing a textile sleeve that is both flexible and abrasion resistant.” App.
Br. 4; see Spec. ¶ 3 (disclosing the problem of having a woven sleeve that is
adequately flexible and abrasion resistant.).
The Examiner finds that James and Koch are analogous to the claimed
invention, because they both are from the same field of endeavor as the
claimed invention of woven fabrics and both are reasonably pertinent to the
problem faced by the inventor of having adequate flexibility and stiffness.
Ans. 4, Final Act. 7.
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Appellant argues that James is not analogous art, because James is
directed to the field of endeavor of pull tapes and solves the problem of
mitigating friction to decrease the chance of pull tape failure. App. Br. 3–4.
We disagree. Initially, the Appellant’s argument fails at the outset because
Appellant does not readily identify the field of endeavor of the invention
such that a comparison can be made to the field of endeavor of the James
patent. Nonetheless, the Specification describes the “Technical Field,”
which is comparable to the field of endeavor of the invention, as textile
sleeves to protect elongate members. Spec. ¶ 1. James discloses a sleeve 14
to protect elongated items, such as cables, within which is a pull tape 18.
James, col. 3, ll. 30–36. We find James to be in the same field of endeavor
as the invention as both are directed to sleeves for protecting members.
Moreover, James addresses a problem faced by the inventor in that James’s
sleeve “provide[s] tensile strength, toughness, abrasion resistance and
flexibility.” James, col. 3, ll. 42–48. Thus, James also is reasonably
pertinent to the problem faced by the inventor of textile flexibility and
abrasion resistance.
Appellant argues that Koch is not analogous art, because Koch is
directed to a field of endeavor pertaining to seat belts for motor vehicles and
to the issues of reducing the likelihood of having the belt fold, preventing
loose spooling, and eliminating saw tooth-like edges. App. Br. 4. We agree
with Appellant that the field of endeavor of Koch pertains to seat belts for
motor vehicle, and that this is not in the same field of endeavor of conduits
for protecting members. However, we disagree with Appellant that Koch is
directed to the problems of folding and spooling, and as such, not reasonably
pertinent to the problem faced by the inventor. As discussed above, we note
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that Appellant identifies the particular problem faced by the inventor, i.e.,
“providing a textile sleeve that is both flexible and abrasion resistant.” This
problem is synonymous with the problem faced by Koch. Koch discloses
woven belts for motor vehicles (Abstract), and that a known problem with
the different kinds of woven belts in use is for the textile to have adequate
stiffness without abrasion from saw tooth-like edges. Koch, col. 1, ll. 33–41
and 46–53. We find Koch addresses the problem of having woven belts
with adequate stiffness without abrasion. Thus, Koch is analogous art,
because it is reasonably pertinent to the problem faced by the inventor of
textile flexibility and abrasion resistance.
Appellant further contends that James does not disclose the claimed
sleeve nor can the pull tape of James be modified into the claimed sleeve.
Reply Br. 3–4. The Examiner provides multiple reasons why James teaches
the claimed sleeve. The Examiner finds that the pull tape of James is
substantially identical to the claimed sleeve, because the claimed structural
limitations are disclosed or taught, and the pull tape can function as an
apparatus to “route and protect elongate members.” Final Act. 6.
Alternatively, the Examiner determines the claimed sleeve is taught by
modifying the sleeve of James with the pull tape of James as modified by
Koch. See Ans. 5, Final Act. 3–4.
Appellant’s argument that “one skilled in the art of textile sleeves
would not confuse or otherwise liken pull tapes and seat belts with textile
sleeves,” (Reply Br. 2) is unpersuasive as it is an opinion with inadequate
factual support. The Examiner cites to “paragraph 7,” i.e., column 3, lines
42–48, of James for the finding that sleeves and pull tapes have similar
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structure and properties. Ans. 5, Final Act. 7. Column 3, lines 42–48 of
James states:
Preferably, sleeves 14 are woven from polymer filaments to
provide tensile strength, toughness, abrasion resistance and
flexibility. Similarly, pull tapes 18 are preferably woven from
high-strength polymer filaments such as polyester and 45
aramids to provide adequate tensile strength to withstand the
pulling forces and yet remain flexible . . . .

Appellant does not provide adequate evidence or reasoning as to why the
pull tape with a woven elongate wall with opposite edges is not structurally
similar to the claimed sleeve nor why the pull tape cannot function to route
and protect elongate members.
Appellant’s argument that James does not provide support for
modifying the sleeve of James to use the modified fabric of the pull tape
(App. Br. 5, Reply Br. 5) is also unpersuasive. The Examiner reasons that
modifying the sleeve of James to be made from the fabric of the modified
pull tape would provide increased flexibility and decreased friction. Final
Act. 3. Further, James provides support for the reasoning in disclosing
sleeves woven from polymer filaments to provide tensile strength,
toughness, abrasion resistance and flexibility, and pull tapes that similarly
are preferably woven from high-strength polymer filaments provide
adequate tensile strength and flexibility. James, col., 3, ll. 42–48. Thus, the
Examiner has provided articulated reasoning with rational underpinning to
support a legal conclusion of obviousness. See KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007).
Appellant also contends that the combination of James and Koch does
not teach the fill yarns being monofilament and multifilament yarns. App.
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Br. 5. The Examiner finds that James teaches the limitations of claim 1
except for having the fill yarns being provided as monofilament yarns and
multifilament yarns. Final Act. 2–3. For this limitation, the Examiner relies
on Koch that discloses a fill thread having both monofilament and
multifilament yarns. Ans. 3–4, Koch, col. 2, ll. 4–10. The Examiner reasons
that one would modify James with Koch to give the textile “flexibility and
stiffness in the transverse direction without increasing longitudinal
stiffness.” Final Act. 3–4 (citing Koch, “paragraph 6,” i.e., col. 1, l. 6 – col.
2, l. 14).
Appellant argues that Koch, in increasing the stiffness of the belt in
the transverse direction, “would direct one of skill in the art away from the
art of curled or wrapped sleeves, as sleeves are intended to curl or wrap in
the transverse direction.” App. Br. 5. Thus, according to Appellant, one
skilled in the art of protective sleeves would not be motivated by the
teachings of Koch to include both monofilament and multifilament yarns to
“extend between opposite edges of the sleeve, as claimed.” App. Br. 5–6.
This is unpersuasive, because Appellant has not provided adequate evidence
or technical reasoning that the textile of Koch cannot curl or warp in the
transverse direction, i.e., that the stiffness of the textile in Koch would
prevent the textile from being set into a curled configuration.4 Appellant,
further, has not provided adequate evidence or technical reasoning that the
textile of Koch fails to disclose a textile with fill yarns provided as
monofilament yarns and multifilament yarns.

4 Appellant discloses that the textile sleeve can be set into a curled
configuration by heat. See Claim 4.
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Thus, for the reasons provided above, the rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over James and Koch is sustained.

Independent Claim 7
Independent claim 7 is directed to a method of constructing a textile
sleeve with limitations substantially similar to those of claim 1. Appellant
contends the rejection of claim 7 to be in error for the same reasons
presented for claim 1. App. Br. 6. Thus, we do not sustain the rejection of
claim 7 under 35 U.S.C. § 103(a) as unpatentable over James and Admitted
Prior Art for the same reasons as for claim 1. We sustain the rejection of
claim 7 under 35 U.S.C. § 103(a) as unpatentable over James and Koch for
the same reasons as for claim 1.

Dependent Claims 2, 4–6, 8, and 10–12
Appellant argues dependent claims 2, 4–6, 8, and 10–12 as patentable
for the same reasons presented for independent claims 1 and 7. App. Br. 6.
Thus, we do not sustain the rejection of claims 2, 4, 6, 8, and 10–12 under 35
U.S.C. § 103(a) as unpatentable over James and Admitted Prior Art for the
same reasons as for claims 1 and 7. We sustain the rejection of claims 2, 4,
6, 8, and 10–12 under 35 U.S.C. § 103(a) as unpatentable over James and
Koch for the same reasons as for claims 1 and 7.

Dependent Claims 3 and 9
Appellant argues dependent claims 3 and 9 as patentable for the same
reasons presented for independent claims 1 and 7. App. Br. 6–7. Thus, we
sustain the rejection of claims 3 and 9 under 35 U.S.C. § 103(a) as
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unpatentable over James and Koch for the same reasons as for claims 1
and 7.

DECISION
The Examiner’s rejection of claims 1, 2, 4–8, and 10–12 under 35
U.S.C. § 103(a) over James and Admitted Prior Art is REVERSED.
The Examiner’s rejection of claims 1, 2, 4–8, and 10–12 under 35
U.S.C. § 103(a) over James and Koch is AFFIRMED.
The Examiner’s rejection of claims 3 and 9 under 35 U.S.C. § 103(a)
over James, Koch, and Winters is AFFIRMED.
No time period of 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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