Ex Parte Levine et al

Board of Patent Appeals and Interferences

Jul 23, 2010

10631937 (B.P.A.I. Jul. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK J. LEVINE and JOHN VANHANDEL
____________

Appeal 2009-014757
Application 10/631,937
Technology Center 1700
____________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, 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.

Appeal 2009-014757
Application 10/631,937

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-13, 15-17, and 19-23 which are the only claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

I. BACKGROUND
Claim 1, the sole independent claim, is illustrative of the invention
and reads as follows:
1. A fabric having a fabric caliper, said fabric having a top surface
coating that encapsulates fifty percent or less of the fabric caliper and said
fabric comprising one or more guides attached to machine direction edges of
a wear surface of the fabric so as to encapsulate approximately fifty percent
or more of the fabric caliper with guide material in a region where the guide
is attached to the fabric, wherein the guides are substantially v-shaped.

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
a) claims 1-13, 15-17, and 19-21 as unpatentable over Tate2 in view of
Kiuchi3;
b) claims 22 and 23 as unpatentable over the combined prior art of
Tate, Kiuchi, and Curry4;
c) claims 1-13, 15-17, and 19-21 as unpatentable over Reilly5 in view
of Kiuchi; and
d) claims 22 and 23 as unpatentable over the combined prior art of
Reilly, Kiuchi, and Curry.

2 US Patent 5,558,926, issued Sep. 24, 1996
3 US Patent 4,559,258, issued Dec. 17, 1985
4 United Kingdom Patent GB 2106557A, issued Apr. 13, 1983
5 US Patent 4,008,801, issued Feb. 22, 1977

Appeal 2009-014757
Application 10/631,937

3
OPINION
Principles of Law
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In
order to establish a prima facie case of obviousness, the Examiner must
show that each limitation of the claim is described or suggested by the prior
art or would have been obvious based on the knowledge of those of ordinary
skill in the art. See, e.g., In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
Furthermore, “rejections 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007)).
Analysis with Factual Findings
Applying the preceding legal principles with respect to obviousness to
the factual findings in this record, we determine that the Examiner has not
properly identified factual findings and reasoning for establishing a prima
facie case of obviousness based on the applied prior art with respect to
independent claim 1.
With respect to claim 1, it is undisputed that neither Tate nor Reilly
explicitly teach the fabric structure as recited in claim 1 (see generally Ans.
4, 5; App. Br. 10-11, 16-17).
With respect to the rejection based on Tate, the Examiner’s position is
that even though Tate explicitly teaches that the coating layer 7 encapsulates
at least 85% of the fabric (Ans. 4), as opposed to the claimed “fifty percent
or less”, it would have been obvious to adjust “the depth of the coatings as

Appeal 2009-014757
Application 10/631,937

4
needed to provide a superior bond to the fabric for both coatings” based on
Kiuchi’s alleged disclosure of applying coatings equally to both sides of a
fabric (Ans. 5).
Appellants summarized their position in the Reply Br.:
Appellants can concede that using coatings to impregnate
and thereby build fabrics is known. But Kiuchi’s teaching of
applying coatings, which has nothing to do with guides, simply
cannot overcome the lack of reason to change the Tate’s utterly
contrary percentages. Absent the teachings of the Appellants,
there is absolutely no logical reason to connect the generalized
teaching of applying coatings to build fabrics to the claimed
encapsulation of guides.
(Reply Br. 15).
We agree with Appellants that the Examiner fails to articulate any
persuasive reason why an artisan would seek to modify Tate based on
Kiuchi (see also, e.g. App. Br. 14-16). Significantly, Tate’s minimum of
85% for the top surface coating encapsulation is 70% more (1.7 times
more) than the claimed maximum limit of 50% (and concomittant
maximum of 15% for the guide encapsulation is 70% less than the claimed
minimum of 50%), which teaches away from the claimed ranges. See In re
Sebek, 465 F. 2d 904, 907 (CCPA 1972) (obviousness rejection based on
optimization reversed where claimed values were outside the prior art
range and the prior art optimum resided within the range).
The Examiner’s alternative § 103 rejection based on Reilly and Kiuchi
also relies upon the Examiner’s rationale that adjusting the depth of “both of
the coatings” of Reilly is obvious in view of Kiuchi’s coatings that
encapsulate/impregnate both sides of Kiuchi’s fabric (Ans. 5). We agree
with Appellants that the Examiner’s rationale “does not make sense as

Appeal 2009-014757
Application 10/631,937

5
Reilly’s guide is adhered 9 [via an adhesive] to the belt, not impregnated,
and the impregnation of the fabric backing [of Reilly] is not relevant to
Kiuchi’s coated belt – which has no guides whatsoever.” (Reply Br. 17, 18).
The Examiner’s apparent attempt, in the Response to Argument section of
the Brief, to read the encapsulated guide fabric 32 per se of Reilly on claim
1 is also unreasonable for the reasons explained by Appellants (see, Ans. 7,
8; Reply Br. 16, 17). Notably, the Examiner found that “another layer is
located on the other side of the fabric [18]” (Ans. 5) as the “top surface
coating” required in claim 1 (id.). Accordingly, the Examiner has
determined that “the fabric” comprises both the guide fabric 32 as well as
the belt fabric 18 of Reilly. The Examiner has not identified any factual
findings sufficient to conclude that it would have been obvious that the
encapsulation of the guide fabric 32 is 50% or more of the total fabric
caliper (which must includes fabric 18 and the coating thereon, in
accordance with the Examiner’s position).
Under the circumstances recounted above, it is apparent that the only
teaching or suggestion for modifying either Tate or Reilly in such a manner
as to achieve the claimed invention is derived from Appellants’ own
Specification rather than the applied prior art. Therefore, we conclude that
the Examiner’s rejection is improperly based upon improper hindsight
reasoning. KSR, 550 U.S. at 421 (The fact finder must be aware “of the
distortion caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning”; citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the teachings
of the invention in issue”)). See also, W.L. Gore & Assocs., Inc. v. Garlock,

Appeal 2009-014757
Application 10/631,937

6
Inc., 721 F.2d 1551, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
Since the additional reference to Curry does not cure the deficiencies
of the Examiner’s rejection based on Tate or Reilly, we cannot sustain the
rejections of dependent claims 22 and 23 for substantially the same reasons
as set out above.
Accordingly, for the reasons set forth above and in the Briefs, we
cannot sustain either of the Examiner's rejections of independent claim 1,
and its respective dependent claims.
CONCLUSION/ORDER
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

sld

FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151