Ex Parte Kohlman et al

Board of Patent Appeals and Interferences

Aug 30, 2007

10651687 (B.P.A.I. Aug. 30, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RANDOLPH S. KOHLMAN, ALLAN W. SMITH,
THOMAS E. GODFREY, CHARLES E. WILLBANKS,
and ALLEN M. SMITH
____________

Appeal 2007-1373
Application 10/651,687
Technology Center 1700
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Decided: August 30, 2007
____________

Before CHUNG K. PAK, THOMAS A. WALTZ, and CATHERINE Q.
TIMM, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 73 through 83, which are the
only claims pending in this application. We have jurisdiction pursuant to 35
U.S.C. § 6(b).
Appeal 2007-1373
Application 10/651,687

According to Appellants, the invention is directed to a textile
composite for constructing a bag used in non-immersion dry cleaning, where
the composite comprises a textile substrate and a polymer facing with
specified Kawabata stiffness values and surface friction values for the walls
of the bag (Br. 2). Independent claim 73 is illustrative of the invention and a
copy of this claim is reproduced below:
73. A textile composite for constructing an inherently two-dimensional
containment bag that, when constructed, has an interior surface and an
exterior surface, said bag being suitable for use in a non-immersion dry
cleaning process, wherein said composite is comprised of a textile substrate
and a polymer facing, said composite having a minimum average Kawabata
stiffness value of at least about 0.6 gms (force) cm2 /cm. and a maximum
average Kawabata stiffness value of about 3.0 gms (force) cm2/cm., and
wherein the surface carrying said polymer facing has a maximum average
Kawabata surface friction value of about 0.35.

The Examiner has relied on the following prior art references as
evidence of unpatentability:
Feitlowitz US 3,809,573 May 07, 1974
Drelich US 3,889,024 Jun. 10, 1975
Cross US 5,534,298 Jul. 09, 1996
Scholz US 6,159,877 Dec. 12, 2000

ISSUES ON APPEAL
Claims 73-80 stand 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 Feitlowitz
(Answer 3).
Claims 73-79 and 81 stand 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 Cross (Answer 4).
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Application 10/651,687

Claims 81 and 82 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Feitlowitz in view of Scholz (id.).
Claim 83 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Feitlowitz in view of Drelich (Answer 5).
Appellants contend that Feitlowitz is limited to the impregnation of a
set of stiffening compositions to 100% polyester fabrics, and it is open to
speculation by the Examiner whether these fabrics might have Kawabata
stiffness values within the claimed ranges, much less the specified Kawabata
surface friction values (Br. 6).
Appellants contend that Cross is directed to the application of an
aerated or foamed latex compound to a fabric in a manner that does not
result in the penetration of the compound to the opposite side of the fabric
(Br. 8). Appellants further contend that Cross uses dissimilar materials and
processes to those claimed, and thus there is no reason to presume any
inherent characteristics (id.).
Appellants contend that Scholz is not directed to the issue of surface
friction, but is drawn to fabrics intended for use as orthopedic casting
materials having a stiffness exceeding those claimed (Br. 10). With regard
to Drelich, Appellants merely contend that this reference does not overcome
the shortcomings of Feitlowitz (Br. 12).
Although the Examiner admits that neither Feitlowitz nor Cross
discloses the Kawabata stiffness values or surface friction values as claimed
by Appellants, the Examiner contends that it is reasonable to presume that
these properties are inherent in the reference composites since both
references teach the use of similar starting materials and similar production
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Application 10/651,687

steps to those of Appellants (Answer 3-4 and 6-7). Alternatively, the
Examiner contends that the claimed stiffness values would have been
obvious in view of the teachings in both references of adjusting the stiffness
level (id.).
The Examiner contends that Scholz teaches that desirable elastic
stretch yarns for a backing material that is impregnated with a resin should
have a low denier that is no greater than about 500 denier (Answer 4).
Accordingly, the issues presented from the record in this appeal are as
follows: (1) although neither Cross nor Feitlowitz disclose any Kawabata
values for stiffness or surface friction, has the Examiner established a
reasonable basis that these values would have been inherent or at least
obvious to one of ordinary skill in this art?; and (2) has the Examiner
identified a proper reason for the combination of Scholz with Feitlowitz?
We determine that the Examiner has established a prima facie case of
anticipation and obviousness in view of Cross or Feitlowitz, which prima
facie case has not been adequately rebutted by Appellants’ arguments. We
further determine that the Examiner has established a prima facie case of
obviousness in view of Feitlowitz, Drelich, and Scholz, which prima facie
case has not been adequately rebutted by Appellants’ arguments. Therefore,
we AFFIRM all grounds of rejection presented in this appeal essentially for
the reasons stated in the Answer, as well as those reasons set forth below.

OPINION
We determine the following factual findings from the record in this
appeal:
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Application 10/651,687

(1) Feitlowitz discloses an improved product produced by
impregnation of a polyester fabric with a stiffening agent mixture
to overcome the problem of lack of retention of initial stiffness,
where the stiffness of the material can be controlled to find a
balance between proper stiffness and proper hand (col. 1, ll. 54-66;
col. 2, ll. 42-48 and 55-60);
(2) Cross discloses a woven synthetic fabric coated with a latex
compound to form a stiff fabric, where the latex compound is
applied so that the compound passes into the interstices of the
fabric but remains substantially clear of the face side (Abstract;
col. 2, ll. 50-58; and col. 3, ll. 20-38);
(3) Cross desires sufficient stiffness in the fabric such that it is self-
supporting, and only marginally aerates or foams the latex
compound to achieve the desired stiffening characteristics (col. 1,
ll. 25-26, 37-39; col. 2, ll. 12 and 23; col. 2, l. 65-col. 3, l. 1; and
col. 4, ll. 50-56);
(4) Cross teaches that a predetermined stiffness is desired, as well as a
test for measuring stiffness, while exemplifying a fabric backing
of polyester yarn of 150 denier (col. 3, ll. 51-52, 60-65; col. 5, ll.
7-11, 27-32; and col. 6, ll. 20-27);
(5) Drelich teaches that “common textile-length fibers” used as a
conventional base starting material vary in length from
approximately ½ inch to about 2 ½ inches (col. 2, ll. 36-40); and
(6) Scholz teaches a backing material with resin impregnation
desirably is warp knit yarn of low denier, preferably no greater
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Appeal 2007-1373
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than about 500 denier (col. 2, ll. 45-48; col. 7, ll. 57-58; and col. 8,
ll. 31-35).
“Appellants have chosen to describe their invention in terms of certain
physical characteristics of the roughened substrate surface.” Merely
choosing to describe their invention in terms of variables not present in the
prior art does not render the claimed subject matter patentable. In re Skoner,
517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975). “Where, as here, the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. [Citation
omitted]. Whether the rejection is based on ‘inherency’ under 35 U.S.C.
§ 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.” In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430,
433-34 (CCPA 1977); see also In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1657-58 (Fed. Cir. 1990). The Examiner’s analysis supporting
obviousness should be made explicit and should “identify a reason that
would have prompted a person of ordinary skill in the art to combine the
elements” in the manner claimed. KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct.
1727, 1731, 82 USPQ2d 1385, 1389 (2007). Discovery of the optimum
value of a result-effective variable is ordinarily within the skill in the art.
See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); and
In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
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Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has properly
established a prima facie case of anticipation and obviousness, which prima
facie case has not been adequately rebutted by Appellants’ arguments. As
shown by factual findings (1) through (3) listed above, and not contested by
Appellants, we determine that Feitlowitz and Cross disclose a textile
composite comprising a textile substrate and a polymer facing. As
established by the Examiner (Answer 6-7), we determine that Feitlowitz and
Cross disclose textile substrates and polymers as well as methods of
impregnating the polymers into the textile substrate that are the same or
similar to those disclosed by Appellants (e.g., see factual findings (1), (2),
and (4) listed above as compared to claim 79 on appeal). As admitted by the
Examiner, the claimed values of Kawabata stiffness and surface friction are
not disclosed by Feitlowitz or Cross (Answer 3-4). However, we determine
that the Examiner has established that the products of the prior art
reasonably appear to be the same or substantially similar to those claimed.
Thus the burden has been shifted to Appellants to prove that the claimed
products are not the same or similar to the prior art products. See In re Best,
supra; In re Spada, supra. We determine that Appellants have not met this
burden. Merely reciting variables in the claims that are not found in the
prior art does not render a product patentable. See In re Skoner, supra.
Additionally, as shown by factual findings (1), (3), and (4) listed above, we
determine that Feitlowitz and Cross teach the control and testing of stiffness
to achieve the desired result, and thus the determination of optimum or
desired values would have been well within the ordinary skill in the art.
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Appellants do not contest the Examiner’s findings and combination of
Drelich with Feitlowitz other than to repeat their arguments against the
primary reference (Br. 12). Accordingly, we adopt the findings and
conclusion of law as stated in the Answer (see factual finding (5) listed
above). With regard to Appellants’ arguments against Scholz (Br. 10), we
note that Scholz was merely applied to show a similar textile fabric
impregnated with a resin to achieve a controlled stiffness, with a teaching
that desired yarns have a low denier of no greater than 500 denier (see
factual finding (6) listed above). We also note that Cross exemplifies a
product the same as or similar to the claimed product where the backing
material is made from a textile with a denier of 150 (see factual finding (4)
listed above). Accordingly, we determine that selection of the appropriate
denier for the textile backing or substrate of the Feitlowitz product would
have been suggested to one of ordinary skill in the art from the teachings of
Scholz.
For the foregoing reasons and the reasons stated in the Answer, we
affirm all grounds of rejection presented in this appeal. The decision of the
Examiner is affirmed.

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Application 10/651,687

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

PL/LT initials:

SLD/LS

LEGAL DEPARTMENT (M-495)
P.O. BOX 1926
SPARTANBURG, SC 29304
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