10678996 (B.P.A.I. Jul. 14, 2008)

Ex Parte Kimbrell

Board of Patent Appeals and InterferencesJul 14, 2008

10678996 (B.P.A.I. Jul. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WILLIAM C. KIMBELL ____________ Appeal 2008-3408 Application 10/678,996 Technology Center 1700 ____________ Decided: July 14, 2008 ____________ Before BRADLEY R. GARRIS, PETER F. KRATZ, and JEFFREY T. SMITH, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1-27, 29, and 39-43. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. Appeal 2008-3408 Application 10/678,996 Appellant claims a hydrolizable polymer-containing textile article that has been chemically modified by branched chain amine treatment to achieve improved pilling resistance. Further details regarding this claim subject matter are set forth in representative claim 1, the sole independent claim on appeal, which reads as follows: 1. A hydrolizable polymer-containing textile article that has been chemically modified by branched chain amine treatment to achieve improved pilling resistance, wherein said branched chain amine is an alkyl amine selected from the group consisting of Isodecyloxypropyl-1,3- diaminopropane, Isododecyloxypropyl-1,3-diaminopropane and Isotridecyloxypropyl-1,3-diaminopropane. The references set forth below are relied upon by the Examiner as evidence of obviousness: Kimbrell WO 96/22416 Jul. 25, 1996 Andersen 5,997,584 Dec. 7, 1999 Tomah Products, Inc. (Tomah), "Ever Evolving Chemistry â€¦ Everlasting Quality" General Product Catalog -0199, pp. 1-10. All appealed claims are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Andersen in view of Kimbrell and further in view of Tomah. The dependent claims have not been separately argued by Appellant in this appeal. Accordingly, they will stand or fall with sole independent claim 1. We sustain this rejection for the reasons expressed in the Answer and below. The facts relevant to the rejection of claim 1 are not disputed. 2 Appeal 2008-3408 Application 10/678,996 Andersen discloses a polyester (i.e., a hydrolizable polymer) fabric (i.e., a textile article) that has been treated with a polyester hydrolytic enzyme and a detergent for reducing the pilling propensity of the fabric (Abstract) wherein detergent is synonymous with surfactant (col. 3, ll. 52-53) and includes branched chain amines. While Andersen generically teaches using branched chain amines, patentee does not disclose the specific branched chain amines required by claim 1. However, each of the claim 1 amines is disclosed by Tomah as a surfactant or detergent (third and fourth pages). In light of these facts, the Examiner concludes that it would have been obvious for one with ordinary skill in this art to use the aforementioned specific branched chain amines of Tomah as the generically disclosed branched chain amines employed by Andersen for treating polyester fabrics in order to reduce pilling (Ans. 4). Appellant expresses disagreement with this obviousness conclusion by asking: "While Tomah teaches the particularly claimed branched chain amines for use as surfactants in detergents, what motivation is provided to one of ordinary skill in the art to utilize those particular amines to achieve improved pilling resistance as claimed by Appellant"? (Br. 7, third para.). As correctly explained by the Examiner (Ans. 4), an artisan would have been motivated to use Tomah's amines in Andersen's pilling-reduction treatment because Andersen teaches that branched chain amines generically are effective for this purpose. This generic teaching would have given the artisan a reasonable expectation that Tomah's specific branched chain amines would be successful in Andersen's treatment. See Pfizer v. Apotex, 3 Appeal 2008-3408 Application 10/678,996 480 F.3d 1348, 1364 (Fed. Cir. 2007) (The expectation of success need only be reasonable, not absolute). Furthermore, as recently explained by the Supreme Court, when the question is whether a claim to a combination of prior art elements is obvious, a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR Int'l. Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740 (2007). Here, the combination of Tomah's amines with Andersen's pilling-reduction treatment yields no more than the predictable use of the Tomah amines according to their established surfactant function is an environment where a surfactant function is desired, namely, the treatment of Andersen. Appellant also argues that Kimbrell teaches away from the claimed invention by disclosing pilling-reduction via straight chain amines, rather than the claimed branched chain amines, in contravention of the subject Specification (App. Br. 8, Reply Br. 3-4). In response to this argument, the Examiner correctly points out that Kimbrell is relied on to evince obviousness, not for the use of specific amines, but for the use of particular fabrics required by certain dependent claims1 (Ans. 5). In addition, we point out that Kimbrell's disclosure of straight chain amines does not in any way discourage the use of branched chain amines and, therefore, does not teach away from Appellant's claimed invention. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A reference may be said to teach away when a person of ordinary skill in the art would 1 Because the Examiner has not relied on Kimbrell to evince obviousness for any of the independent claim features, there was no need to address the disclosure of this reference in the above review of the Examiner's prior art combination vis-Ã -vis the rejection of claim 1. 4 Appeal 2008-3408 Application 10/678,996 be discouraged from following the path set out in the reference or would be led in a direction divergent from the path taken by applicant). For the reasons stated above and in the Answer, we sustain the Â§ 103 rejection of all appealed claims as being unpatentable over Andersen in view of Kimbrell and further in view of Tomah. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED cam LEGAL DEPARTMENT (M-495) P O BOX 1926 SPARTANBURG, SC 29304 5