Ex Parte Lapierre

Board of Patent Appeals and Interferences

Jul 21, 2005

10383781 (B.P.A.I. Jul. 21, 2005)

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written for publication and is not binding precedent of the Board.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 FRANCOIS LAPIERRE
_____________
Appeal No. 2005-1487
Application No. 10/383,781
______________
ON BRIEF
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Before WARREN, WALTZ and JEFFREY T. SMITH, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 9 and 10, which are the only claims
pending in this application. We have jurisdiction pursuant to
35 U.S.C. § 134.
According to appellant, the invention is directed to a dyed
fabric blend of aramid and flame resistant (FR) cellulosic fibers
having improved abrasion resistance and thermal shrinkage
properties (Brief, page 2). Appellant states that claims 9 and
Appeal No. 2005-1487
Application No. 10/383,781
2
10 “stand together as a group” (Brief, page 4). Accordingly, we
select claim 9 from this grouping and decide the ground of
rejection in this appeal on the basis of this claim alone. See
37 CFR § 1.192(c)(7)(2003). Representative independent claim
9 is reproduced below:
9. A dyed fabric blend comprising:
20-80% aramid fibers
80-20% flame retardant cellulosic fibers and said
fibers being dyed to a single shade of color and said dye
penetrating into said fibers and said fabric having an
abrasion resistance (ASTM D-3884) of 250 cycles or better.
The examiner has relied on Lunsford et al. (Lunsford), U.S.
Patent No. 6,132,476, issued Oct. 17, 2000, as the sole evidence
of unpatentability. Claims 9 and 10 stand rejected under
35 U.S.C. § 102(b) as anticipated by Lunsford (Answer, page 3).
We affirm the examiner’s rejection essentially for the
reasons stated in the Answer, as well as those reasons set forth
below.
OPINION
The examiner finds that Lunsford discloses fabric blends of
inherently flame resistant fibers and flame resistant cellulosic
fibers, teaching that these dyed fabrics exhibit excellent flame
resistance, minimal shrinkage when laundered, and exemplifying
Appeal No. 2005-1487
Application No. 10/383,781
3
blends of aramid and FR rayon such as a 50/50, 65/35 or 35/65
blend of NOMEX IIIA® and FR rayon (Answer, page 3). The examiner
finds shrinkage values in accordance with AATCC Test Method 135-
1992 from Lunsford to be comparable to appellant’s shrinkage
values based on NFPA 1975-1999 (id.). The examiner recognizes
that Lunsford does not explicitly teach the abrasion resistance
recited in claim 9 on appeal, but concludes that it is reasonable
to believe that such a value is inherent to the fabric of
Lunsford since the dyed fabric blends include the same amounts
and types of materials (id.) as well as common properties
(Answer, page 5).
Appellant argues that an anticipation rejection based on
inherency must show that the allegedly inherent characteristic
necessarily flows from the prior art teachings (Brief, page 5;
Reply Brief, page 2). Appellant argues that the examiner’s
position takes no account of the different process for dyeing the
fabric, which produces a material and unobvious impact upon its
physical characteristics as shown by Table 1 (Brief, page 5;
Reply Brief, page 3; see Table 1 on page 4 of the specification
or page 3 of the Brief). Finally, appellant argues that our
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Application No. 10/383,781
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reviewing court has rejected the proposition used by the examiner
(Reply Brief, pages 2-3, citing Crown Operations Int’l, Ltd. v.
Solutia Inc., 289 F.3d 1367, 1377, 62 USPQ2d 1917, 1922-23 (Fed.
Cir. 2002)).
It is well settled patent law that the discovery of a new
property of a previously known composition or product can not
impart patentability to claims to the known composition or
product. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433
(CCPA 1977); and In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990). We determine that the examiner has met
the initial burden of proof in establishing a prima facie case of
anticipation, since the examiner has established a reasonable
belief that the products of Lunsford and the claimed products are
identical or substantially identical. The examiner has found,
and appellant has not disputed, that the fabrics of Lunsford
include the same amount and types of fibers as recited in claim
9 on appeal, as well as dyeing to a “single shade of color” with
dye penetrating into said fibers (see the findings discussed
above and in the Answer, page 3).
Appellant’s argument that the dyeing process to form the
claimed product differs from the dyeing process of Lunsford is
not persuasive. Appellant, although “not wishing to be bound to
Appeal No. 2005-1487
Application No. 10/383,781
1We note that the case cited by appellant (Crown, supra) on
pages 2-3 of the Reply Brief concerns an invalidity action with
entirely different burdens of proof and standards of evidence
than in ex parte prosecution (see 289 F.3d at 1377, 62 USPQ2d at
5
this theory,” believes that the use of higher dyeing temperatures
under low agitation forms dyed fabric fibers with greater
strength and durability (Brief, page 4; Reply Brief, page 3).
However, the dyeing temperatures taught by Lunsford include
temperatures used in appellant’s dyeing process (see Lunsford,
col. 6, ll. 58-60; col. 7, ll. 54-56 and Table II; compare with
appellant’s specification, page 4, l. 2). Furthermore, Lunsford
teaches many types of dyeing processes and is not restricted to
“dye jets” (col. 5, l. 31) or other “high” agitation processes
(see col. 3, ll. 31-42 and 50-52; and col. 5, ll. 20-32). It is
also noted that both Lunsford and appellant use dye assistants in
their processes (Lunsford, abstract; appellant’s specification,
page 7). Accordingly, it was reasonable for the examiner to
infer that the dyeing by both Lunsford and appellant of identical
materials in identical amounts, employing the same or
substantially the same dyeing process, would produce fabric
blends having the identical composition, and thus necessarily the
same properties. See Spada, 911 F.2d at 708, 15 USPQ2d at 1657-
58.1 We note that each case is determined on its own merits;
Appeal No. 2005-1487
Application No. 10/383,781
1923). Furthermore, under the holding in Spada, supra, more than
mere identity of structure has been established.
6
allowed claims in other applications are not considered in
reviewing the rejection on appeal (see the Reply Brief, page 4).
See In re Gyurik, 596 F.2d 1012, 1018 n.15, 201 USPQ 552, 558
n.15 (CCPA 1979).
Since we determine that the examiner has met the initial
burden of proof, this burden thus shifts to appellant to show
that the products are not the same. See Spada, 911 F.2d at 708,
15 USPQ2d at 1658. Therefore we consider appellant’s evidence,
submitted as Table I on page 3 of the Brief (reproduced from page
4 of appellant’s specification), as the showing which attempts to
establish that the product of Lunsford is not the same as the
claimed product. However, this evidence is not persuasive for
several reasons. First, as correctly noted by the examiner
(Answer, page 4), the results in Table I are from only a
comparison of a 65/35 blend of aramid (Nomex) and FR rayon while
claim 9 on appeal (and Lunsford) are not so limited (see
Lunsford, col. 5, ll. 17-19). Secondly, appellant provides no
explanation of the results in Table 1, giving the comparative
results little or no meaning. Appellant does not identify the
processes by which the products of the “Invention” and the “Prior
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Art” are made, e.g., what dyeing temperatures, times, dye/liquor
ratios, and agitation are used. Additionally, we note that
appellant preferably uses a dye-assistant (an aryl ester) that is
not employed as a dye-assistant as taught by Lunsford
(specification, page 7; Lunsford, col. 3, ll. 18-30). Appellant
does not disclose what, if any, dye-assistants are used in the
processes of Table I. Finally, appellant does not specify the
type of Nomex fiber used in Table I, and the type of fiber can
have an effect on the results (see the specification, page 5; and
Lunsford, col. 4, ll. 9-25).
For the foregoing reasons and those stated in the Answer, we
determine the examiner has established a prima facie case of
anticipation in view of the reference evidence which has not been
adequately rebutted by appellant’s arguments and evidence.
Therefore we affirm the examiner’s rejection of claim 9, and
claim 10 which stands or falls with claim 9, under 35 U.S.C.
§ 102(b) over Lunsford.
Appeal No. 2005-1487
Application No. 10/383,781
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv)(effective Sep. 13, 2004; 69 Fed. Reg. 49960
(Aug. 12, 2004); 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)).
AFFIRMED
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY T. SMITH )
Administrative Patent Judge )
TAW:hh
Appeal No. 2005-1487
Application No. 10/383,781
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ROBERT H. HAMMER, III, P.C.
3121 SPRINGBANK LANE
STE. I
CHARLOTTE, NC 28226