Ex Parte Lester et al

Board of Patent Appeals and Interferences

Jan 19, 2011

11178906 (B.P.A.I. Jan. 19, 2011)

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.
11/178,906 07/11/2005 Donald H. Lester JR. 2035.3A 9212
29494 7590 01/19/2011
HAMMER & ASSOCIATES, P.C.
3125 SPRINGBANK LANE
SUITE G
CHARLOTTE, NC 28226
EXAMINER
JOHNSON, JENNA LEIGH
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
01/19/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONALD H. LESTER JR. and DAVID L. LUNCEFORD
____________

Appeal 2009-009384
Application 11/178,906
Technology Center 1700
____________

Before RICHARD E. SCHAFER, SALLY G. LANE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/178,906

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision twice rejecting claims 1-26, 29, and 30. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
BACKGROUND
Appellants’ invention is directed to a loop component for a hook and
loop fastener device including a thermally bonded non-woven material
having a bottom layer and a top layer both made of bicomponent and
monocomponent fibers, the bottom layer comprising a majority of
bicomponent fibers and the top layer comprising a majority of
monocomponent fiber. (Spec. 5-6.)
Claims 1 and 29 are illustrative (emphasis added):
1. A loop component for a hook and loop fastener device
comprising:
a binder-free thermally bonded non-woven material
having a bottom layer and a top layer, said bottom layer
comprising a first bicomponent fiber and a first
monocomponent fiber, wherein said first bicomponent fiber
comprising a majority of said bottom layer based on total
weight of said bottom layer and said first monocomponent fiber
being the balance thereof, said top layer comprising a second
bicomponent fiber, and a second monocomponent fiber, said
second monocomponent fiber comprising a majority of said top
layer based on total weight of said top layer and said second
bicomponent fiber being the balance thereof.

29. A loop component for a hook and loop fastener
device consisting of:
a thermally bonded non-woven material having a bottom
layer and a top layer, said bottom layer comprising a first
bicomponent fiber and a first monocomponent fiber, wherein
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said first bicomponent fiber comprising a majority of said
bottom layer based on total weight of said bottom layer and said
first monocomponent fiber being the balance thereof, said top
layer comprising a second bicomponent fiber, and a second
monocomponent fiber, said second monocomponent fiber
comprising a majority of said top layer based on total weight of
said top layer and said second bicomponent fiber being the
balance thereof.

Appellants appeal the following rejections:
1. Claims 1-26 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the enablement requirement;
2. Claims 1-26 under 35 U.S.C. 112, second paragraph, as being indefinite;
3. Claim 29 under 35 U.S.C. § 102(b) as anticipated by Brow (U.S.
6,048,809, issued April 11, 2000); and
4. Claims 1-26, 29, and 30 under 35 U.S.C. § 103(a) as unpatentable over
Deka (U.S. 5,773, 120, issued June 30, 1998) in view of Yoshida (U.S.
4,542,060, issued Sep. 17, 1985) and Belau (US 2005/0191460 A1,
published Sep. 1, 2005).

ISSUES
The issues on appeal are:
1. Did the Examiner err in interpreting the term “binder” in “binder-
free” to include the bicomponent fibers of the recited non-woven material in
determining that claims 1 and 26 are not enabled and indefinite?
2. Did the Examiner err in finding that Brow anticipates claim 29,
where claim 29 recites a thermally bonded non-woven and includes the
closed transitional phrase “consisting of”?
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3. Did the Examiner err in concluding that the claimed “binder-free”
thermally-woven material having the relative amounts of bicomponent and
monocomponent fibers in the bottom layer and top layer recited in the
claims would have been obvious over Deka in view of Belau and Yoshida?

PRINCIPLES OF LAW
During examination, claims terms must be given their broadest
reasonable construction consistent with the Specification. In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). A necessary
requirement of the broadest reasonable construction rule is that the
construction must be reasonable in light of the specification. In re Suitco
Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010).
In construing claims
we search for the ordinary and customary meaning of a claim
term to a person of ordinary skill in the art. We determine
this meaning by looking first at intrinsic evidence such as
surrounding claim language, the specification, the
prosecution history, and also at extrinsic evidence, which
may include expert testimony and dictionaries.

L.B. Plastics, Inc. v. Amerimax Home Products Inc., 499 F.3d 1303,
1308 (Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314-
19 (Fed. Cir. 2005) (en banc)).
The transitional phrase “consisting of” excludes any element, step, or
ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255
(CCPA 1931).
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
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art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Regarding the use
of hindsight, the Court in KSR indicated that a fact finder “must be cautious
of arguments reliant upon ex post reasoning,” but went on to state that
“[r]igid preventative rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it.”
Id. at 421.

ANALYSIS
Issue #1-Rejections 1 and 2
Appellants contend that the Examiner erred in determining that
“binder” as defined in the Specification includes the recited bicomponent
fibers. (App. Br. 13 and 21.) Appellants argue that the Declaration of
Donald H. Lester Jr. (hereinafter “the Lester Declaration”) (Exhibit 1 to
Appellants’ Appeal Brief), an excerpt from Chemical Bonding (Exhibit 2 to
Appellants’ Appeal Brief), and Deka provide evidence that one of ordinary
skill in the art would understand the term “binder” does not include the
bicomponent fibers of the recited non-woven material. (App. Br. 15-19.)
We agree with Appellants that the Examiner’s interpretation of
“binder” in “binder-free” as including the recited bicomponent fibers is not
reasonable in light of the Specification. Specifically Appellants’
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Specification discloses a non-woven web including both bicomponent fibers
and monocomponent fibers. (Spec., para. bridging 21-22.) Appellants’
Specification additionally discloses that binders are materials that are used to
bind “the fibers of the non-woven web,” i.e., the recited monocomponent
and bicomponent fibers, and that with the combination of fibers recited in
the claims, “there is no need for any binders.” (Id.) Accordingly,
Appellants’ Specification clearly distinguishes “binder” and “bicomponent
fiber.”
Appellants’ use of the term binder is also consistent with the other
evidence of record. For example, Deka discloses a non-woven material
having two layers, each containing monocomponent fibers, bicomponent
fibers, and a binder. (Col. 3, l. 23 - col. 4, l. 22, col. 2, ll. 34-35, col. 5, ll. 3-
13.) In addition, the Lester Declaration states that the term “binder” is a
term of art in non-woven materials, distinct from the bicomponent fiber
recited in the claims. (Lester Decl., para. 6, 7, 9.) Further, the Chemical
Bonding excerpt provides evidence that the term “binder” is a chemical
bonding agent distinct from the fibers of a non-woven material. (Chemical
Bonding, p. 1-10.)
Thus, in light of the above discussion, we do not agree with the
Examiner that the “binder fibers” disclosed in Brow (col. 1, ll. 45-46) are
included in the term “binder” recited in the claims (Ans. 9) as the term is
used in Appellants’ claims and Specification.
As a result, the Examiner’s position that claims 1-26 are not enabled
and are indefinite with respect to the term “binder” in “binder-free” is in
error. Accordingly, we reverse the Examiner’s rejections of claims 1-26
under 35 U.S.C. § 112, 1st and 2nd paragraphs.
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Issue #2, Rejection 3
We are unconvinced by Appellants’ argument that Brow fails to
disclose a loop component for a hook and loop fastener device. Although
claim 29 is directed to a loop component for a hook and loop fastener
device, the body of claim 29 provides no further structure of the loop
component other than the arrangement and content of the layers.
Accordingly, we agree with the Examiner that because Brow discloses a
material containing at least two distinct layers with the compositional
requirements in the claims, the structure of Brow would be inherently
capable of engaging with a hook fastener due to the structural similarity of
Brow’s non-woven fabric. (Ans. 6; Brow, col. 1, l. 41 – col. 2, l. 4.)
Moreover, Appellants have failed to adequately explain how Brow’s
disclosure that a rigid material is desirable means that there are inherently no
loops in the material. (Rep.Br. 12.)
Appellants additionally argue that claim 29 recites “a thermally
bonded nonwoven material” and includes the transitional language
“consisting of” such that Brow’s methods for securing the two layers
together via needling or an adhesive layer, constitute additional elements
excluded by the claim language. (App. Br. 24-25.) However, Appellants’
Specification discloses that the webs for the bottom layer and the top layer
may be individually treated with conventional thermal bonding techniques
including infrared heat bonding or hot-through-air bonding, and then
subsequently, the top layer is place atop the bottom layer to form the non-
woven. (Spec., Para. bridging pages 22-23.) Likewise, Brow discloses that
each layer may be heated and cooled before securing to each other. (Col. 3,
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ll. 8-13.) Accordingly, Brow discloses a thermally bonded non-woven
material as required by claim 29.
In addition, Appellants have not adequately explained how securing
Brow’s two layers together by needling constitutes an additional element.
Brow discloses that needling is a known method where needles punch
through two layers to force the fibers to intermix and secure the layers
together. (Col. 2, ll. 2-4.) Thus, we agree with the Examiner that needling is
a securing technique that does not contain any additional structural elements
beyond what is recited in claim 29. (Ans. 11.)

Issue 3-Rejection 4
The Examiner found Deka discloses a loop material having a two-
layer nonwoven material including monocomponent and bicomponent
fibers. (Ans. 6.) The Examiner acknowledged that Deka fails to teach a top
layer that has a majority of thermoplastic monocomponent fibers and a
bottom layer that has a majority of bicomponent fibers. (Id.) The Examiner
stated “Yoshida et al. teaches that having less binder or bicomponent fibers
in the top layer produces a fabric which is soft to the touch and bulky, while
still having the desired strength (column 2, lines 15-50.) Based on this
finding, the Examiner concluded that it would have been obvious to use a
majority of monocomponent fibers in the top layer and a majority of
bicomponent fibers in the bottom layer of Deka’s fabric. (Ans. 7.)
Appellants contend that Yoshida does not disclose two layers having
both monocomponent and bicomponent fibers in the proportions recited in
the claims, but that in one of the layers, Yoshida discloses only a single type
of fiber. (App. Br. 34-36.)
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We have reviewed the Examiner’s rationale and like Appellants, we
are unable to find support in Yoshida for the Examiner’s findings that
adjusting the amount of bicomponent fibers would produce a fabric that is
soft to the touch and bulky, as well as of the desired strength. (See Yoshida,
Col. 2, ll. 15-50.) In addition, Yoshida discloses that ply B, containing a
majority of bicomponent fibers, is provided on the surface of ply A. (Col. 2,
ll. 25-37.) Thus, contrary to the claims on appeal, Yoshida discloses a
majority of bicomponent fibers in the top layer of the non-woven material.
Moreover, Deka discloses a majority of bicomponent fibers in both layers.
(Col. 3, ll. 53-60, col. 4, ll. 13-17.) Accordingly, because the Examiner has
not provided sufficient articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, we reverse the
Examiner’s rejection of the claims.

DECISION
We affirm the Examiner’s decision to reject claim 29 under 35 U.S.C.
§ 102(b). We reverse the Examiner’s rejections of the claims under 35
U.S.C. § 112, first and second paragraphs, and 35 U.S.C. § 103(a).

TIME PERIOD
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) (2009).
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Application 11/178,906

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ORDER
AFFIRMED-IN-PART

cu

HAMMER & ASSOCIATES, P.C.
3125 SPRINGBANK LANE
SUITE G
CHARLOTTE, NC 28226