Ex Parte Levine et al

Board of Patent Appeals and Interferences

Sep 3, 2008

10280865 (B.P.A.I. Sep. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARK J. LEVINE, DAVID GRAHAM, BILL HOUFEK, and
THOMAS L. ISRAEL
__________

Appeal 2008-2643
Application 10/280,865
Technology Center 3700
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Decided: September 3, 2008
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Before ERIC GRIMES, RICHARD M. LEBOVITZ, and MELANIE L.
MCCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a fabric
and a method for forming a fabric. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2008-2643
Application 10/280,865

STATEMENT OF THE CASE
Claims 1-39 are pending and on appeal. The claims subject to each
rejection have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). We will focus on claims 14, 22, and
25, which are representative and read as follows:
14. A method for forming a fabric on which a spun-bond web is
produced for use in combination with an apparatus for the formation of
spun-bond webs, comprising the step of weaving said fabric such that air
flow through said fabric is prevented in a direction substantially
perpendicular to the surface plane of said fabric.
22. A method as claimed in claim 14, wherein said fabric includes
one or more conductive yarns.
25. A method as claimed in claim [14, wherein said fabric includes a
pin seam], wherein said pin seam is a low mark double loop double pin
seam.
Claims 1-3, 6, 7, 14, 15, 24, and 27-29 stand rejected under 35 U.S.C.
§ 103(a) as obvious over MacBean (US 4,438,789, Mar. 27, 1984) in view
of the background of the invention provided in Appellants’ Specification
(Ans. 3).
Claims 4, 5, 8-11, 13, 16-23, 26, 30-37, and 39 stand rejected under
35 U.S.C. § 103(a) as obvious over MacBean, citing Tyler (US 5,164,249,
Nov. 17, 1992) as evidence (Ans. 4).
Claims 12, 25, and 38 stand rejected under 35 U.S.C. § 103(a) as
obvious over MacBean in view of Kuckart (US 5,601,120, Feb. 11, 1997)
(Ans. 6).
The Examiner relies on MacBean for teaching “industrial dryer
fabrics woven entirely of monofilament polymeric warp and weft strands
and more particularly to joining the ends of such fabric with a woven pin
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seam to form an endless belt” (Ans. 3). The Examiner finds that MacBean
“shows a 4-shed duplex weave pattern identical to the pattern in the
applicant[s’] drawings showing a so called ‘4B pattern’” (id.). The
Examiner also finds that “any fabric, especially the fabric of [MacBean]
used in industrial dryer applications to some extent ‘prevent’ airflow in a
perpendicular direction of the plane of the fabric” (id.). In addition, the
Examiner finds that “the limitation, ‘on which a spun bond web is
produced’, does not give any structural limitations to the instant invention”
and that, “[e]ven if it is considered a structural limitation, there is nothing in
the fabric of [MacBean] that would prevent it from being used in spun-bond
web production” (id. at 3-4).
The Examiner additionally finds that MacBean “doe[s] not
specifically teach the fabric to be used in combination with a spun-bond
production apparatus,” but that Appellants “clearly state[] in the instant
background of invention that it is well known to use a ‘circulating sieve belt’
as the forming surface for a spun-bond production process” (id. at 4).
Therefore, the Examiner concludes that it would have been obvious “to use
an endless-seamed woven fabric with controlled porosity as it is a type of
circulating sieve belt, in combination with a spun-bond production
apparatus” (id.).
Appellants contend that MacBean’s fabric does not have all of the
limitations of the claimed fabric and that it would not have been obvious to
use MacBean’s fabric to form spun-bond webs (App. Br. 7-10; Reply Br. 8-
11).
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ISSUES
The issues are whether Appellants have shown that the Examiner
erred in concluding that the preamble recitation “on which a spun-bond web
is produced” is not a limitation of the claim and erred in concluding that
MacBean’s fabric meets the limitations of the claimed fabric.
FINDINGS OF FACT
1. The Specification states that “[t]here presently exists apparatus
for the production of spun-bond webs or fabrics formed from filaments or
fibers typically made from a thermoplastic resin” (Spec. 1: 15-17).
2. The Specification also states that the thermoplastic filaments
are typically “deposited upon a continuously circulating sieve belt for
collecting the interentangled filaments and forming a web thereon” (id. at 1:
22-26).
3. In addition, the Specification states that, with high-speed
spinning, small diameter fibers will “bleed though the sieve belt or fabric,
due to their small size relative to fabric open area” (id. at 2: 6-9).
4. The Specification also states that “[c]urrent fabrics or belts used
in high-speed spun-bond manufacturing lines are a compromise between
good hold down and excessive bleed through” (id. at 2: 17-19).
5. “[R]ather than using a circulating sieve belt for collecting the
stretched filaments and forming the web,” the Specification discloses using
“a fabric having a 4-shed double layer with support shute weave design” (id.
at 3: 14-17).
6. The Specification states that this “fabric is commonly referred
to as a 4B weave and 4B weave with stuffer in center” (id. at 3: 17-18).
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7. A portion of Specification Figure 5 is reproduced below:

Specification “Figure 5 shows the weave pattern of a 4B weave” (Spec. 4:
11).
8. The Specification discloses that the “use of such a fabric in the
spun-bonding process provides for high fiber hold down” and that
“[m]inimal fiber bleed through occurs as a result of the absence of straight
paths for air flow through the fabric” (id. at 3: 20-24).
9. The Specification also states that “fabrics having this type of
weave have found applications in the harsh conditions of papermaking,
particularly in the dryer section of papermaking machines” (id. at 5: 30 to
6: 2).
10. MacBean discloses “a woven all-synthetic monofilament dryer
fabric for use in a paper-making machine” (MacBean, col. 3, ll. 40-42).
11. Specifically, MacBean discloses “dryer fabrics woven entirely
of monofilament polymeric warp and weft strands and . . . joining the ends
of such fabric with a woven pin seam to form an endless belt” (id. at col. 1,
ll. 11-14).
12. MacBean states that, “[i]n making a pin seam . . . , it is usual
practice for pairs of consecutive warps to form retainer loops and alternate
pairs of consecutive warps to form pintle loops” (id. at col. 2, ll. 46-49).
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13. MacBean also states that, “[i]n a symmetrical mesh pattern,
such as for example, a 4-shed duplex weave pattern having two layers of
weft, the weaving back of the looped warp strands is not too difficult” (id. at
col. 2, ll. 49-52).
14. However, MacBean states that, “[i]n the case of some meshes,
. . . weaving back and maintaining even loop sizes is prevented by
substantial differences in crimp configuration at the loop. This difficulty is
particularly apparent, for example, in 6-shed double layer-fabric in which
the weaving pattern is repeated every third pair of warp strands.” (Id. at
col. 2, ll. 57-63.)
15. MacBean also states that it has “been found that when the warp
is flattened . . . it can be woven back into the added weft strands of the end
portion of the fabric without regard to the crimp configuration. . . . The
present invention therefore is to provide a single pintle woven pin seam in
all-monofilament dryer fabric having flattened warp strands.” (Id. at col. 3,
ll. 4-12.)
16. MacBean Figure 1 is reproduced below:

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MacBean Figure 1 is a “side view of an end portion of a 6-shed duplex dryer
fabric with flattened warp prepared for a pin seam” (MacBean, col. 4, ll. 43-
46).
ANALYSIS
Claim 14 is directed to a method for forming a fabric comprising
weaving the fabric such that air flow through the fabric is prevented in a
direction substantially perpendicular to the surface plane of the fabric.
MacBean discloses “fabrics woven entirely of monofilament polymeric warp
and weft strands (Finding of Fact (FF) 11). In particular, MacBean discloses
a 6-shed duplex fabric (FF 16). MacBean also discloses a 4-shed duplex
fabric (FF 13), also known as a 4B weave (FF 5-6).
MacBean does not state that its fabrics are woven “such that air flow
through the fabric is prevented in a direction substantially perpendicular to
the surface plane of the fabric.” However, in view of the fact that the
Specification describes using a 4B weave to achieve this property (FF 5-8),
we agree that the Examiner has set forth a prima facie case that MacBean’s
fabrics are woven such that they achieve this property.
The preamble of claim 14 recites that the fabric is “a fabric on which a
spun-bond web is produced for use in combination with an apparatus for the
formation of spun-bond webs.” We agree with the Examiner that this
preamble language only sets forth the intended use for the fabric formed by
the recited method and is therefore not a claim limitation. Rowe v. Dror,
112 F.3d 473, 478 (Fed. Cir. 1997) (“Where . . . a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention, the preamble is not a
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claim limitation.”). Thus, claim 14 does not require that the fabric be used
to form spun-bond webs.
Appellants argue, however, that “the preambles for the instant claims
are more than a statement of use. In other words, the present claims are
directed to and limited to forming fabrics for nonwoven or spun-bond webs.
This is not a mere intended use. This is a specific article. Without it, the
claim would be lacking in meaning.” (App. Br. 7.)
We are not persuaded by this argument. Claim 14 is directed to “a
method for forming a fabric on which a spun-bond web is produced. . . . ”
Unlike in Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d
1251, 1257 (Fed. Cir. 1989), Appellants have not shown that the preamble of
claim 14 gives “life and meaning” to the claim. In particular, Appellants
have not shown that spun-bond webs could not be formed on any fabric
woven according to the method of claim 14.
In addition, the Examiner finds that “there is nothing in the fabric of
[MacBean] that would prevent it from being used in spun-bond web
production” (Ans. 4). As discussed further below, Appellants have not
shown that MacBean’s fabric is incapable of having a spun-bond web
produced upon it. Therefore, to the extent that the preamble of claim 14
provides a claim limitation, Appellants have not shown that MacBean’s
fabrics do not meet this limitation.
Appellants also argue that “the forming fabric of the instant invention
and the dryer fabric of MacBean are functionally very different” (App.
Br. 8). In addition, Appellants argue that “an industrial dryer fabric would
not be suitable for the purpose of a fabric for use in spun-bonding process
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due to its inherent permeability” (Reply Br. 8). In particular, Appellants
argue that “a dryer fabric such as described in MacBean must allow
relatively free passage of hot, moisture laden air through its structure while
supporting the paper sheet it is conveying through the paper machine drying
section” (id. at 9).
In addition, Appellants argue that the MacBean fabric does not
prevent “air flow through the fabric . . . in a direction substantially
perpendicular to the surface plane of the fabric” (id. at 10). Appellants also
argue:
MacBean does not teach the use of a 4B weave pattern, but on
the contrary, teaches the use of a 6-shed repeat pattern duplex
dryer fabric. . . . While MacBean’s fabric has long floats on the
face and back of the fabric, the warp yarns in the instant
invention do not form any floats on the fabric body, due to
which, the present fabric is tighter and has less porosity,
blocking off through air paths.
(Id.)
We are not persuaded by these arguments.
[I]t is elementary that the mere recitation of a newly discovered
function or property, inherently possessed by things in the prior
art, does not cause a claim drawn to those things to distinguish
over the prior art. Additionally, where the Patent Office has
reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (quoting In re Swinehart, 439
F.2d 210, 212-13 (CCPA 1971)). As discussed above, we agree that the
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Examiner has set forth a prima facie case that MacBean describes fabrics
having the functional properties recited in claim 14.
We agree with Appellants that MacBean specifically discloses a
6-shed duplex fabric (FF 16). However, Appellants have not provided any
evidence that MacBean’s 6-shed duplex fabric would not prevent air flow
through the fabric in a direction substantially perpendicular to the surface
plane of the fabric, nor have they shown that this fabric is incapable of
having a spun-bond web produced on it. “Attorney’s argument in a brief
cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
In addition, although MacBean focuses on a 6-shed duplex fabric,
MacBean also discloses 4B weaves (FF 13). Appellants do not demonstrate
that these 4B weaves would not prevent air flow through the fabric in a
direction substantially perpendicular to the surface plane of the fabric, nor
have they shown that this fabric is incapable of having a spun-bond web
produced on it. In fact, Appellants’ own Specification states that “fabrics
having this type of weave have found applications in the harsh conditions of
papermaking, particularly in the dryer section of papermaking machines”
(FF 9), suggesting that fabrics used in the dryer section of papermaking
machines can be used in forming a spun-bond web. Therefore, Appellants
have not demonstrated that MacBean’s fabric differs from the fabric formed
in claim 14.
Appellants also argue that, “since the dryer fabric of MacBean is
being modified for use as a forming fabric for spun-bond nonwovens in view
of the instant application’s specification, the Examiner is using
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impermissible hindsight and the modification is therefore unobvious” (App.
Br. 9). In addition, Appellants argue:
[I]t was through a series of trials with different fabrics and
weave patterns that the Appellants surprisingly and
unexpectedly discovered that a fabric having a 4B weave
fulfilled the requirements of the instantly claimed forming
fabric. . . . Such a fabric and its known characteristics as a paper
making dryer fabric would not have been an obvious solution
because of the previously discussed differences between the
requirements for the dryer fabric of MacBean and the
requirements of instant forming fabric.
(Id.) Appellants also argue that, even if the claim would have been prima
facie obvious, “the instant specification rebuts such a holding since the cited
art does not suggest that Appellants’ invention would exhibit such superior
and unexpected results when used as a forming fabric for spun-bond
nonwovens” (id. at 10).
We are not persuaded by this argument. The Examiner does not
appear to be arguing that MacBean’s dryer fabric is “modified for use as a
forming fabric for spun-bond nonwovens” (App. Br. 9). Instead, the
Examiner argues that it would have been obvious to use MacBean’s dryer
fabric “in combination with a spun-bond production apparatus” to form
spun-bond webs thereon (Ans. 4).
However, as discussed above, claim 14 does not require that the fabric
be used to form spun-bond webs. Therefore, for claim 14 to be obvious, the
Examiner need not show that it would have been obvious to have used
MacBean’s fabric to form a spun-bond web. In addition, Appellants have
not shown that the claimed fabric differs from MacBean’s fabric, much less
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provided sufficient evidence that this difference provides for unexpectedly
superior results.
We conclude that the Examiner has set forth a prima facie case that
claim 14 would have been obvious over MacBean,* which Appellants have
not rebutted. We therefore affirm the rejection of claim 14 under 35 U.S.C.
§ 103(a). Claims 1-3, 6, 7, 15, 24, and 27-29 fall with claim 14.
Claim 22 depends from claim 14 and additionally requires that the
fabric includes one or more conductive yarns. The Examiner relies on
MacBean as discussed above and relies on Tyler as evidence that the
additional limitation of claim 22 would have been obvious (Ans. 5-6).
Appellants argue that Tyler does not overcome the shortcomings of
MacBean discussed above (App. Br. 10). However, as discussed above,
Appellants have not overcome the Examiner’s prima facie case that claim 14
would have been obvious over MacBean. Thus, we do not find Appellants’
argument persuasive. We therefore affirm the rejection of claim 22 under 35
U.S.C. § 103(a). Claims 4, 5, 8-11, 13, 16-21, 23, 26, 30-37, and 39 fall
with claim 22.
Claim 25 indirectly depends from claim 14 and additionally requires
that the fabric includes a low mark double loop double pin seam. The
Examiner relies on MacBean as discussed above and relies on Kuckart for
the additional limitation recited in claim 25 (Ans. 6-7). Appellants argue
that Kuckart fails to overcome the shortcomings of MacBean discussed
above (App. Br. 11). However, as discussed above, Appellants have not

* We merely rely on the Specification as evidence that MacBean’s fabrics
have the functional properties recited in claim 14.
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overcome the Examiner’s prima facie case that claim 14 would have been
obvious over MacBean. Thus, we do not find Appellants’ argument
persuasive. We therefore affirm the rejection of claim 25 under 35 U.S.C.
§ 103(a). Claims 12 and 38 fall with claim 25.
CONCLUSION
The Examiner’s position is supported by the preponderance of the
evidence of record. We therefore affirm the rejection of claims 1-39 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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